Sonos, Inc. v. Google LLC

• Court: Court of Appeals for the Federal Circuit
• Decided: June 18, 2025
• Docket: 23-2040
• Status: Unpublished

Opinion

Case: 23-2040 Document: 44 Page: 1 Filed: 06/18/2025

NOTE: This disposition is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

SONOS, INC., Appellant

v.

GOOGLE LLC, Appellee ______________________

2023-2040 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. IPR2021- 01563. ______________________

Decided: June 18, 2025 ______________________

ERIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP, Washington, DC, argued for appellant. Also represented by JONAS WANG; EDMUND HIRSCHFELD, EMILY VILLANO, New York, NY; ELIZABETH MOULTON, San Francisco, CA; GEORGE I. LEE, COLE BRADLEY RICHTER, MATTHEW SAMPSON, I, RORY PATRICK SHEA, JOHN DAN SMITH, III, SEAN MICHAEL SULLIVAN, Lee Sullivan Shea & Smith LLP, Chicago, IL.

ERIKA ARNER, Finnegan, Henderson, Farabow, Garrett Case: 23-2040 Document: 44 Page: 2 Filed: 06/18/2025

& Dunner, LLP, Washington, DC, argued for appellee. Also represented by UMBER AGGARWAL, DANIEL C. TUCKER, Reston, VA; CORY C. BELL, Boston, MA; KARA ALLYSE SPECHT, Atlanta, GA. ______________________

Before PROST, LINN, and STOLL, Circuit Judges. STOLL, Circuit Judge. Google LLC successfully petitioned for inter partes re- view of claims 1–2, 6–14, 18–25, and 27–29 of U.S. Patent No. 9,967,615 owned by Sonos, Inc. The Patent Trial and Appeal Board held that Google had demonstrated by pre- ponderant evidence that all challenged claims are un- patentable as obvious. On appeal, Sonos argues that certain findings by the Board lack substantial evidence support. For the reasons that follow, we disagree and af- firm the Board’s decision. BACKGROUND As the parties are familiar with the facts of this case, we recite here only those facts necessary to frame and de- cide the issues presented on appeal. The ’615 patent is titled “Networked Music Playback” and discloses “[s]ystems, methods, apparatus, and articles of manufacture to facilitate connection to a multimedia playback network.” U.S. Patent No. 9,967,615 Title, Ab- stract (capitalization normalized). The patent “is related to consumer electronics and, more particularly, to provid- ing music for playback via one or more devices on a play- back data network.” ’615 patent col. 1 ll. 13–15. Claims 1 and 9 are representative and provided below with the dis- puted limitations emphasized. 1. A method comprising: Case: 23-2040 Document: 44 Page: 3 Filed: 06/18/2025

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. . . detecting, via the control device, a set of inputs to transfer playback from the control device to a particular playback device . . . . . . causing playback to be transferred from the control device to the particular playback device, wherein transferring playback from the control de- vice to the particular playback device comprises: (a) causing one or more first cloud servers to add multimedia content to a local playback queue on the particular playback device, wherein adding the multimedia content to the local playback queue comprises the one or more first cloud servers adding, to the local playback queue, one or more re- source locators corresponding to respective loca- tions of the multimedia content at one or more second cloud servers of a streaming content service; (b) causing playback at the control device to be stopped; and . . . causing the particular playback device to play back the multimedia content, wherein the particu- lar playback device playing back the multimedia content comprises the particular playback device retrieving the multimedia content from one or more second cloud servers of a streaming content service and playing back the retrieved multimedia content. 9. The method of claim 1, wherein causing one or more first cloud servers to add the multimedia con- tent to the local playback queue on the particular playback device comprises sending a message to the streaming content service that causes the one or more first cloud servers to add the multime- dia content to the local playback queue on the par- ticular playback device. Case: 23-2040 Document: 44 Page: 4 Filed: 06/18/2025

’615 patent cols. 17–19 (emphases added to distinguish claim limitations in dispute). Three prior art references are pertinent on ap- peal: Al-Shaykh, 1 Qureshey, 2 and Phillips. 3 Relevant here, the Board concluded that Google had demonstrated that claims 1, 6–13, 18–25, and 27–29 of the ’615 patent are unpatentable under 35 U.S.C. § 103 based on a combi- nation of some or all of these three prior art references. Sonos appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A). DISCUSSION Our court reviews “the Board’s obviousness determina- tion de novo, but its factual findings for substantial evi- dence.” Volvo Penta of the Ams., LLC v. Brunswick Corp., 81 F.4th 1202, 1208 (Fed. Cir. 2023). What a reference teaches is a question of fact. TriMed, Inc. v. Stryker Corp., 608 F.3d 1333, 1341 (Fed. Cir. 2010). “Whether a skilled artisan would have been motivated to combine references” is also a question of fact that we review for substantial ev- idence. Elekta Ltd. v. ZAP Surgical Sys., Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023). “Substantial evidence means ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” Id. at 1373 (quoting In re Gartside, 203 F.3d 1305, 1312 (Fed. Cir. 2000)). On appeal, Sonos challenges various findings by the Board involving the three aforementioned prior art refer- ences: (1) that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Al-Shaykh and Qureshey to meet the “one or more first cloud servers” limitation of claim 1; (2) that a person of

1 U.S. Patent Application Publication No. 2011/0131520. 2 U.S. Patent No. 8,050,652. 3 U.S. Patent No. 8,799,496. Case: 23-2040 Document: 44 Page: 5 Filed: 06/18/2025

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ordinary skill in the art would have been motivated to com- bine the relevant teachings of Al-Shaykh and Qureshey to meet the “sending a message to the streaming content ser- vice” limitation of claim 9; and (3) that Al-Shaykh teaches “causing playback at the control device to be stopped” as recited in claim 1, or, in the alternative, that a person of ordinary skill in the art would have been motivated to com- bine the relevant teachings of Al-Shaykh and Phillips to meet this limitation. We address each challenge in turn. I We first address Sonos’s contention that substantial evidence does not support the Board’s finding that a person of ordinary skill in the art would have been motivated to modify Al-Shaykh in view of Qureshey to meet claim 1’s “one or more first cloud servers” limitation. For the follow- ing reasons, we uphold the Board’s finding. Al-Shaykh is titled “System and Method for Transfer- ring Media Content From a Mobile Device to a Home Net- work,” J.A. 3273 (capitalization normalized), and “relates to a system and a method which enable a media application on the mobile device to share media content with rendering devices [i.e., playback devices, e.g., a television, stereo, or personal computer (PC)] in the home network.” J.A. 3284 ¶¶ 77, 81. Qureshey is titled “Method and Device for an Internet Radio Capable of Obtaining Playlist Content from a Content Server” and discloses a “network-enabled audio device that provides a display device that allows the user to select playlists of music much like a jukebox.” J.A 3298 (capitalization normalized). Qureshey’s disclosure “relates to the field of audio file transfers and, more particularly, relates to the field of management and distribution of audio files over a computer network such as the Internet.” J.A. 3350 at 1:21–24. As the Board recognized: [I]n the combined Al-Shaykh-Qureshey system, when a set of inputs to transfer playback from the mobile device to the particular rendering device is Case: 23-2040 Document: 44 Page: 6 Filed: 06/18/2025

detected, as disclosed in Al-Shaykh, then the sys- tem would cause a first cloud server (i.e., Qureshey’s [Internet Personal Audio Network (IPAN)] server) to add [Uniform Resource Locators (URLs)] associated with the locations of the audio files to the storage space [] (as disclosed in Qureshey) in Al-Shaykh’s rendering devices. J.A. 37 (first alteration in original) (citation omitted). Sonos begins its argument by asserting that “[t]he Board failed to cite substantial evidence that a skilled ar- tisan looking to improve Al-Shaykh would have considered Qureshey at all.” Appellant’s Br. 44. We reject this con- tention. It is undisputed that Al-Shaykh and Qureshey are analogous art to the ’615 patent. See J.A. 122–34, 443, 3129 ¶ 78 (Google and its expert explaining that Al-Shaykh and Qureshey are analogous art to the ’615 patent); J.A. 296 (Board explaining in its decision to institute that Google’s showing, including on analogous art, was “unop- posed”); J.A. 353–420, 463–89 (Sonos raising no dispute re- lated to analogous art in its Patent Owner Response and Sur-Reply). And “[w]hen the references are all in the same or analogous fields, knowledge thereof by the hypothetical person of ordinary skill is presumed.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Based on the disclosures of Al-Shaykh and Qureshey and the Declaration of Google’s expert Dr. Harry Bims, the Board found that Al-Shaykh and Qureshey “are in the same field of endeavor, deal with similar devices, and are directed to . . . solving the same or similar problems.” J.A. 42–43. Contrary to Sonos’s contentions on appeal— and to the extent that Sonos has not forfeited them—sub- stantial evidence supports this finding. For example, Dr. Bims provided detailed testimony that a person of or- dinary skill in the art would have understood that Al- Shaykh and Qureshey “enable users to transfer playback Case: 23-2040 Document: 44 Page: 7 Filed: 06/18/2025

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to various devices and playback content on those devices from the Internet, which, a [skilled artisan] would under- stand to provide much greater accessibility to content than traditional systems that were limited to playback of con- tent locally stored on the network.” J.A. 3125–26 ¶ 72. He further testified that a person of ordinary skill in the art “would understand that both references describe net- worked media playback systems that include a control de- vice (such as a PC or mobile device) and one or more rendering devices.” J.A. 3126 ¶ 73. Moreover, Sonos con- ceded that Qureshey’s system and approach were “‘well- known’ by Al-Shaykh’s era.” Appellant’s Reply 15; J.A. 43, 384–86. And, as the Board noted, we have held that “[t]here is a motivation to combine when a known tech- nique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would im- prove similar devices in the same way, using the prior art elements according to their established functions.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (citations omitted) (internal quotation marks omitted); see also In re Inland Steel Co., 265 F.3d 1354, 1362 (Fed. Cir. 2001) (“The motivation to combine particular references may come from the nature of the problem to be solved, leading inventors to look to the refer- ences relating to possible solutions to that problem.” (inter- nal quotation marks and citation omitted)). Sonos next asserts that the Board “erroneously found that a skilled artisan looking to improve Al-Shaykh would have incorporated Qureshey’s IPAN server in particular.” Appellant’s Br. 58. Again, we disagree. Al-Shaykh discloses: (1) that the mobile device may in- struct the target rendering device (e.g., a PC) to obtain the media content directly from the media server in the home network, J.A. 3286 ¶ 96; (2) that the home network may provide a connection to the Internet, J.A. 3284 ¶ 80; and (3) that metadata associated with audio media content may be provided, J.A. 3285 ¶ 87. But Al-Shaykh does not Case: 23-2040 Document: 44 Page: 8 Filed: 06/18/2025

disclose further detail on this functionality. Qureshey, on the other hand, discloses this functionality and provides further detail not included in Al-Shaykh. For example, Qureshey discloses: The user accesses the server site via a PC and the Internet. From the server site, the user obtains a list of the devices in his or her Internet Personal Audio Network (IPAN) and what songs are on those devices. The IPAN includes an IPAN server, an IPAN client, and IPAN software stored on the network-enabled audio device. . . . The IPAN client and the IPAN server store the name of the song and the associated Uniform Resource Locator (URL). J.A. 3351 at 3:34–48; see also, e.g., J.A. 3314, 3352, 3357– 58 at 16:56–17:31 (describing a computing environment of a network-enabled audio device configuration). Qureshey further provides that each network-enabled audio device can store a playlist, associated URLs, and songs within the playlist. J.A. 3360 at 21:43–50. Dr. Bims explained that a skilled artisan “would have modified Al-Shaykh’s system to include features from Qureshey’s system. Specifically, . . . Al-Shaykh’s system would incorporate Qureshey’s first cloud server (i.e., the IPAN server).” J.A. 3145 ¶ 101. He continued: [A skilled artisan] would have been motivated to incorporate the back-end server functionality that enables a rendering device to directly retrieve con- tent from the Internet to play back, as taught by Qureshey, into Al-Shaykh’s system . . . . Al-Shaykh’s rendering devices can directly retrieve media content from a remote server for playback but Al-Shaykh does not explain the details on the back-end functionality that facilitates this transac- tion. Thus, it is my opinion that a [skilled artisan] would have looked to similar references in the art for further disclosures of networked playback Case: 23-2040 Document: 44 Page: 9 Filed: 06/18/2025

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systems to determine how playback devices within the systems are able to directly retrieve content from remote sources, and, thus, a [skilled artisan] would have found it obvious to combine Al-Shaykh and Qureshey in this way. . . . [A skilled artisan] would have been motiv[at]ed to implement Qureshey’s back-end server function- ality to improve the system by preventing any dis- connection or failure of a mobile control device to impact ongoing playback on the rendering device. That is, a [skilled artisan] would understand that the added functionality enables storage of URLs on the rendering device such that the rendering device can retrieve the content to be played back without assistance from the mobile control device. It is my opinion that a [skilled artisan] would recognize that such a combination would vastly improve the user experience by minimizing playback stoppages at the rendering device. J.A. 3146–47 ¶¶ 102–03 (citations omitted). This expert testimony is not conclusory or otherwise defective, is supported by disclosures in Al-Shaykh and Qureshey themselves, and the Board was within its discre- tion to give the expert testimony considerable weight. Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1376 (Fed. Cir. 2020) (determining that expert testi- mony constituted substantial evidence of a motivation to combine prior art references). Accordingly, we hold that substantial evidence supports the Board’s finding that a skilled artisan would have been motivated to combine the relevant teachings of Al-Shaykh and Qureshey, including Qureshey’s IPAN server, to meet claim 1’s “one or more first cloud servers” limitation. Case: 23-2040 Document: 44 Page: 10 Filed: 06/18/2025

II Next, we next address Sonos’s contention that substan- tial evidence does not support the Board’s finding that a person of ordinary skill in the art would have been moti- vated to combine the relevant teachings of Al-Shaykh and Qureshey to meet claim 9’s “sending a message to the streaming content service” limitation. Sonos argues that “[t]he Board’s motivation-to-combine analysis was insufficient twice over,” Appellant’s Br. 69, but Sonos never raised an argument to the Board related to motivation-to-combine for claim 9. In its Patent Owner Response, Sonos argued only that Al-Shaykh’s disclosure “simply does not amount to the specific functionality re- quired by claim 9.” J.A. 419–20. In its Sur-Reply, Sonos argued only that “Al-Shaykh combined with Qureshey does not satisfy claim 9.” J.A. 489. Accordingly, we agree with Google that Sonos forfeited the motivation-to-combine ar- gument it now raises on appeal. “A party forfeits an argu- ment that it failed to present to the Board because it deprives the court of the benefit of the Board’s informed judgment.” Schwendimann v. Neenah, Inc., 82 F.4th 1371, 1380 (Fed. Cir. 2023) (quoting In re NuVasive, Inc., 842 F.3d 1376, 1380 (Fed. Cir. 2016)) (internal quotation marks omitted). We thus decline to consider this argument for the first time on appeal. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371, 1378 (Fed. Cir. 2023). III Finally, we turn to Sonos’s argument that substantial evidence does not support (1) the Board’s finding that Al-Shaykh teaches “causing playback at the control device to be stopped” as recited in claim 1, or (2) its alternative finding that a person of ordinary skill in the art would have been motivated to combine the relevant teachings of Al-Shaykh and Phillips to meet this limitation. For the reasons that follow, we uphold the first finding by the Board and, thus, we need not reach the second. Case: 23-2040 Document: 44 Page: 11 Filed: 06/18/2025

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The Board credited the testimony of Dr. Bims and found that, “[a]s disclosed in the paragraphs of Al-Shaykh . . . , Al-Shaykh stops rendering of the media content on the device currently rendering the media con- tent when the media content is transferred to a new ren- dering device.” J.A. 48–49. Al-Shaykh discloses: [A]n advantage of the present invention is to pro- vide a system and a method for transferring media content from a mobile device to a home network which enable a user to use the mobile device to start and stop external rendering of the media con- tent currently selected in a media application exe- cuted by the mobile device. J.A. 3283 ¶ 53. Among other things, Al-Shaykh further provides: If the transfer of the media content [] is enabled, the user [] may . . . select a new target rendering device. As a result, the transfer to and/or the ren- dering of the media content [] on the initial target rendering device may be stopped, and/or the trans- fer to and/or the rendering of the media content [] on the new target rendering device may begin. J.A. 3293 ¶ 156. Based on these disclosures in Al-Shaykh, Dr. Bims provided detailed testimony that “Al-Shaykh dis- closes transferring playback from the control device to the particular playback device further comprising causing playback at the control device to be stopped (e.g., enabling transfer of media content to rendering device stops play- back at the mobile device).” J.A. 3147–48 ¶¶ 104–06. Based on the above quoted language in Al-Shaykh and Dr. Bims’ testimony, we hold that substantial evidence supports the Board’s finding that Al-Shaykh teaches “caus- ing playback at the control device to be stopped” as recited in claim 1. As such, we need not reach the Board’s alterna- tive finding. Case: 23-2040 Document: 44 Page: 12 Filed: 06/18/2025

CONCLUSION We have considered Sonos’s remaining arguments and are unpersuaded. For the foregoing reasons, we affirm the decision of the Board. AFFIRMED