One of the most interesting patent disputes to watch over the course of the past year has been the multifront battle between Google and home-audio darling Sonos. There is a lot at stake, particularly for Sonos, whose CEO testified before Congress earlier this year and decried Google’s embrace of “efficient infringement” at the expense of smaller innovators like his own company. Add in the bitterness engendered by former partnering companies turned competitors/litigation adversaries, and it is no surprise that the dispute has escalated significantly over the past year. From filings in multiple countries and in multiple venues in the U.S., to each side deciding to add more of their own patents to the fray, there is no doubt that both companies are doing their utmost to extract every possible litigation advantage they can.
When I first issued a Markman Advisors blog post on the hostilities back in late June, I noted how even in the first round of moves and countermoves between the combatants, venue was a contested issue. At that point, Google had already made clear its intentions to proceed in San Francisco on its own patent infringement claims against Sonos, “as a counterbalance to Sonos’ filing in Los Angeles.” Google’s desire to keep things in the Northern District of California whenever possible also manifested itself in various Google legal maneuverings over the past few months. In late September, for example, Google filed a declaratory judgment action to try to head off Sonos’ assertion of additional patents in a second infringement case against Google. (More on that filing below.) Moreover, Google tried to have its NDCA infringement case against Sonos related to the declaratory judgment filing. But that effort was rejected by the presiding judge in Google’s affirmative case, the Hon. Edward Chen, who denied Google’s motion to relate the cases in late October.
While Google was trying to get the cases it filed in the NDCA related, Sonos was doing its part to try to get Google’s declaratory judgment filing in the NDCA dismissed, in favor of Sonos’ affirmative case asserting the same patents that was filed the day after in the plaintiff-friendly Western District of Texas. That motion was decided on November 20, 2020, with the NDCA’s Hon. William Alsup electing to stay Google’s declaratory judgment case, pending resolution of Google’s motion to transfer Sonos’ WDTX case to the NDCA. But Alsup did more than just order a stay pending developments in another jurisdiction dealing with the same patents. Why? Because, in his view, Google’s filing of a bare-bones declaratory judgment complaint to try to head off Sonos’ WDTX filing was a blatant example of forum shopping.
Indeed, Alsup made plain that he considered the whole Sonos-Google mutual escalation strategy as “emblematic of the worst aspects of patent litigation.” Noting that “the resources invested into this dispute already are doubtless enormous,” the court made no bones about the fact that it thought those resources could instead have been used to more socially beneficial ends — anticipating that by the time all the legal proceedings concluded “our parties’ legal bills will likely have been able to build dozens of schools, pay all the teachers, and provide hot lunches to the children.” Bromides about wasteful litigation spending aside, Alsup focuses most of his criticism on “Google’s litigation gimmick, to anchor venue with a bare bones complaint and then fix it up by amendment.” As a consequence, the court’s order requires Google to file for leave to file an amended complaint by December 11, with beefed-up noninfringement allegations to support the request for declaratory judgment of noninfringement as to Google’s accused products. While Google assuredly has the resources to pay for that work to get done, it is less than ideal for the company to have its initial approach to seeking declaratory judgment jurisdiction called out so negatively by the judge presiding over the matter.
While Alsup had no qualms about effectively sanctioning Google for its attempt at forum shopping, he also reserved judgment on whether “Sonos is just as guilty of forum shopping here as Google.” At the same time, he expresses some skepticism that Sonos will be able to keep its case in the WDTX in light of Google’s motion to transfer and the recent Federal Circuit decision in In re Adobe — a decision that seemed to involve similar facts and resulted in transfer of a case from the WDTX to the NDCA, just as Google is seeking against Sonos. Content to wait for resolution of Google’s motion, Alsup entered the stay, while ordering that the “parties SHALL keep the Court apprised of material updates in the Texas proceedings and promptly provide Judge Albright a copy of this order” (emphasis in original).
Ultimately, this recent order is just one of many that will issue from various courts handling parts of the global Sonos-Google patent dispute. But it also is indicative of the interconnected nature of the ongoing disputes, as well as the primacy both sides continue to place on litigating before what each party hopes is a favorable venue. They are not alone on that front, of course, since venue is a critical component of patent litigation, from pre-suit seeking of litigation funding to post-filing motion practice. At the same time, Alsup’s willingness to hold Google to its obligations as a responsible litigant, coupled with Chen’s unwillingness to relate Google’s filings, at least indicates that the NDCA may not present the home court advantage Google was hoping for. There is still a long way to go in the worldwide dispute between Google and Sonos, of course. But at least before Alsup, Google’s attempts to stay home have been met with a resounding “not so fast….”
Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.
