Google LLC v. Sonos, Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
GOOGLE LLC,
Appellant
v.
SONOS, INC.,
Appellee
______________________
2023-1259
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2021-
00964.
______________________
Decided: May 23, 2024
______________________
D ANIEL C. T UCKER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Reston, VA, argued for appellant.
Also represented by ERIKA A RNER, K ELLY H ORN, Washing-
ton, DC; CORY C. BELL , Boston, MA.
ELIZABETH M OULTON, Orrick, Herrington & Sutcliffe
LLP, San Francisco, CA, argued for appellee. Also repre-
sented by ALYSSA MARGARET C ARIDIS , Los Angeles, CA;
MARK S. D AVIES , Washington, DC; P ARTH SAGDEO, Boston,
MA; EMILY VILLANO, New York, NY.
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GOOGLE LLC v. SONOS, INC. 2
______________________
Before L OURIE, P ROST , and STARK, Circuit Judges.
P ROST , Circuit Judge.
Google LLC (“Google”) appeals a Patent Trial and Ap-
peal Board (“Board”) final written decision concluding that
claims 1‒5, 7‒12, 14‒16, 18, and 20 of U.S. Patent No.
10,229,586 (“the ’586 patent”) are unpatentable. Sonos,
Inc. v. Google LLC, No. IPR2021-00964, 2022 WL 5265117
(P.T.A.B. Oct. 6, 2022) (“Decision”). For the reasons below,
we affirm.
BACKGROUND
Sonos, Inc. (“Sonos”) filed a petition for inter partes re-
view of the ’586 patent, including review of claims 3, 4, 11,
12, and 20 (the “delay-value claims”). The ’586 patent “re-
lates to a wireless sensor unit system providing bi-direc-
tional communication between a sensor . . . and a repeater
or base unit.” ’586 patent col. 1 ll. 38‒41. In an embodi-
ment with more than one repeater, there is a “possibility
that two repeaters . . . could try to forward packets for the
same sensor unit” at the same time, causing messages to
collide and become corrupted or garbled. Id. at col. 11
ll. 34‒36. To “reduc[e] the chance of packet collisions,” a
“delay period is programmed into each repeater.” Id. at
col. 11 ll. 38‒42.
Sonos presented three grounds of unpatentability in its
petition: (1) obviousness in view of Baker1 and Bruckert,2
(2) obviousness in view of Baker, Bruckert, and McMillin,3
1 U.S. Patent App. Pub. No. 2006/0120433 (“Baker”);
J.A. 1225‒52.
2 European Patent App. No. 0416732 (“Bruckert”).
3 U.S. Patent No. 7,027,773 (“McMillin”);
J.A. 2195‒2259.
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GOOGLE LLC v. SONOS, INC. 3
and (3) obviousness in view of Marman4 and Shoemake.5
J.A. 134. Relevant to this appeal are grounds 2 and 3.
With respect to ground 2, the Board determined that
claims 2‒4, 7, 10‒12, 16, 18, and 20 would have been obvi-
ous. Decision, 2022 WL 5265117, at *10–11. With respect
to ground 3, the Board determined that claims 1, 2, 4, 5,
7‒12, 14‒16, 18, and 20 would have been obvious but that
claim 3 was not shown to have been obvious. Id. at *12–
17.
In its petition, Sonos argued that a person of ordinary
skill in the art (“POSITA”) would have been motivated to
combine McMillin’s collision-avoidance techniques with
Baker’s network configuration to reduce “the risk of mes-
sage collision, garbling, and corruption.” J.A. 183‒85. In
response, Google argued that Sonos failed to provide an
“explanation for why a POSITA would have combined the
particular feature of McMillin with the hypothetical
Baker/Bruckert combination.” J.A. 335 (emphasis in orig-
inal). Google did not dispute that the network in Baker is
subject to the same collision problem that McMillin ad-
dresses, that McMillin teaches using delays to avoid mes-
sage collision, or that a POSITA would have understood
McMillin’s collision-avoidance techniques could improve
Baker’s system. Compare J.A. 183‒85, with J.A. 335‒37.
The Board found that Sonos and its expert had shown a
close similarity between Baker and McMillin and ad-
vantages for combining these references that demonstrated
why a POSITA would have been motivated to combine the
references. Decision, 2022 WL 5265117, at *10–11. The
Board then concluded that the delay-value claims would
have been obvious over Baker, Bruckert, and McMillin.
4 PCT App. No. WO 00/21053 (“Marman”);
J.A. 1306‒69.
5 U.S. Patent App. Pub. No. 2002/0122413 (“Shoe-
make”).
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GOOGLE LLC v. SONOS, INC. 4
Google timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
D ISCUSSION
Google appeals the Board’s determination of obvious-
ness in grounds 2 and 3 with respect to the delay-value
claims. First, Google argues that substantial evidence does
not support the Board’s finding that a POSITA would have
been motivated to combine Baker and Bruckert with
McMillin for claims 3, 4, 11, 12, and 20. Second, Google
argues that the Board erred in determining that claims 4,
11, 12, and 20 would have been obvious over Marman and
Shoemake because the Board’s determination that claim 3
was not shown to have been obvious required a determina-
tion that the “substantively identical” delay-value claims
were also nonobvious. Appellant’s Br. 28. We address each
argument in turn.
I
Whether a POSITA would have been motivated to com-
bine prior-art references is a factual question that we re-
view for substantial evidence. Intel Corp. v. PACT XPP
Schweiz AG, 61 F.4th 1373, 1378 (Fed. Cir. 2023). “Sub-
stantial evidence is such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.”
Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1324
(Fed. Cir. 2017) (cleaned up).
Google argues that substantial evidence does not sup-
port the Board’s finding that a POSITA would have been
motivated to combine Baker and Bruckert with McMillin
because Sonos’s motivation to combine is too generic and
“untethered to the specific language of the delay value
claims.” Appellant’s Br. 22. In Google’s view, motivations
to combine must be articulated on a claim-by-claim basis.
Oral Arg. at 1:55‒3:44, No. 23-1259, https://oralargu-
ments.cafc.uscourts.gov/default.aspx?fl=23-1259_0506202
4.mp3. We disagree.
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GOOGLE LLC v. SONOS, INC. 5
Google’s argument that Sonos’s motivation to combine
is too generic is not supported by the teachings of KSR.
KSR rejected “rigid rule[s] that limit[] the obviousness in-
quiry” in favor of “an expansive and flexible approach” to
obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415, 419 (2007). “[T]he analysis need not seek
out precise teachings directed to the specific subject matter
of the challenged claim . . . .” Id. at 418. A motivation-to-
combine “rationale is not inherently suspect merely be-
cause it’s generic in the sense of having broad applicability
or appeal.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797
(Fed. Cir. 2021). Rather, “generic” or “conclusory” analysis
is insufficient when it bears “‘no relation to any specific
combination of prior art elements . . . from specific refer-
ences’ and [does]n’t explain why a skilled artisan would
have combined them ‘in the way the claimed invention
does.’” Id. (emphasis in original) (quoting ActiveVideo Net-
works, Inc. v. Verizon Commc’ns, Inc., 694 F.3d 1312, 1328
(Fed. Cir. 2012)).
For example, in ActiveVideo, the purported motivations
to combine were wholly generic and divorced from any spe-
cific reason why a POSITA would be motivated to make the
proposed combination of prior-art references. There, the
expert merely alleged that a POSITA would have been mo-
tivated to combine prior-art references “to build something
better,” to make a system “more efficient, cheaper, or . . .
ha[ve] more features,” to be “more attractive to your cus-
tomers,” and to “do something new.” ActiveVideo, 694 F.3d
at 1328. Unlike ActiveVideo, Sonos and its expert “indi-
cated precisely how and why a skilled artisan would have
combined the references.” Intel, 21 F.4th at 797. Sonos
proposed how to combine Baker’s network with McMillin’s
collision-avoidance techniques, and there is no dispute that
Baker and McMillin disclose each of the elements of the
delay-value claims. Appellant’s Br. 24‒26; J.A. 335‒37.
Sonos further explained why a POSITA would have been
motivated to combine known collision-avoidance
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GOOGLE LLC v. SONOS, INC. 6
techniques from McMillin with Baker’s network—i.e., be-
cause it would reduce “the risk of message collision, gar-
bling, and corruption.” J.A. 184 (citing J.A. 1157 ¶ 391).
Google also argues that Sonos’s proposed motivation is
conclusory, invoking the notion that “knowledge of a prob-
lem and motivation to solve it are entirely different from
motivation to combine particular references to reach the
particular claimed method.” Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008); see also Appel-
lant’s Br. 24. In Innogenetics, we concluded that expert tes-
timony that “merely list[ed] a number of prior art
references and then conclude[d] with the stock phrase ‘to
one skilled in the art it would have been obvious to perform
the [claims]’” was insufficient to support a determination
of obviousness. 512 F.3d at 1373. We have distinguished
the facts of Innogenetics, which involved wholly conclusory
motivations to combine, from motivations providing more
than mere listings of the prior art and conclusions of obvi-
ousness. See Meyer Intell. Props., Ltd. v. Bodum, Inc., 690
F.3d 1354, 1375 (Fed. Cir. 2012) (finding expert report not
conclusory where “one skilled in the art would have been
motivated based on familiarity with the prior art” and
“common sense”); Norgren Inc. v. ITC, 699 F.3d 1317, 1327
(Fed. Cir. 2012) (“[T]he Commission properly found the
claims obvious based on evidence of known problems and
an obvious solution.”). Indeed, KSR stated that “[o]ne of
the ways in which a patent’s subject matter can be proved
obvious is by noting that there existed at the time of inven-
tion a known problem for which there was an obvious solu-
tion encompassed by the patent’s claims.” 550 U.S. at
419–20. The motivations to combine here are unlike those
in Innogenetics. Not only was there knowledge of the prob-
lem and motivation to solve it, but Sonos and its expert ex-
plained that Baker and McMillin have similar network
structures, that both networks (absent collision-avoidance
techniques) would suffer from the same problem, and that
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GOOGLE LLC v. SONOS, INC. 7
McMillin disclosed solutions to the collision problems.
J.A. 183–85; J.A. 1156‒57 ¶¶ 383‒90.
Google further argues that motivations to combine
must be presented on a claim-by-claim basis. We have
never mandated that such a rigid motivation-to-combine
analysis is necessary in every case. “[T]he law has always
evaluated the motivation to combine elements based on the
combination of prior art references that together disclose all
of the elements of the invention.” Gen. Elec. Co. v. Ray-
theon Techs. Corp., 983 F.3d 1334, 1352 (Fed. Cir. 2020)
(emphasis in original). There is no need to establish a mo-
tivation to combine on a claim-by-claim basis when the pro-
posed motivation logically applies to all of the claims at
issue, as Sonos’s proposed motivation for the delay-value
claims does here. See J.A. 183‒85 (applying the same mo-
tivation to combine to all the delay-value claims). In this
context, the Board’s findings are supported by substantial
evidence. Decision, 2022 WL 5265117, at *10–11 (citing
J.A. 1156‒57 ¶¶ 383‒90).
The Board’s finding of a motivation to combine Baker
and Bruckert with McMillin is supported by substantial ev-
idence. We thus affirm the Board’s determination that the
delay-value claims would have been obvious over Baker,
Bruckert, and McMillin.
II
Google also appealed the Board’s determination that
claims 4, 11, 12, and 20 are unpatentable in view of Mar-
man and Shoemake. Because we affirm the Board’s deter-
mination of unpatentability on these same claims in view
of Baker, Bruckert, and McMillin, we do not consider
Google’s arguments regarding Marman and Shoemake.
CONCLUSION
We have considered Google’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we
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GOOGLE LLC v. SONOS, INC. 8
affirm the Board’s determination that claims 3, 4, 11, 12,
and 20 are unpatentable.
AFFIRMED
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