Google LLC v. Sonos, Inc.

Filing 36

ORDER STAYING CASE. SIGNED BY JUDGE ALSUP. (whalc2, COURT STAFF) (Filed on 11/20/2020)

Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 1 of 6

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOOGLE LLC,
Plaintiff,

United States District Court
Northern District of California

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No. C 20-06754 WHA

v.
SONOS, INC.,

ORDER STAYING CASE

Defendant.

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INTRODUCTION

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In this action for declaratory judgment of patent noninfringement, the patent holder moves

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to dismiss this case in favor of its own action, filed elsewhere a few hours later. For the

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following reasons, this case is STAYED.
STATEMENT

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This complaint for declaratory relief opens yet another theater in the ongoing global patent

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war between accused infringer Google LLC and patent owner Sonos, Inc. The specifics of the

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disputed technology, however, do not come into play on this order.

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With our parties already embroiled in the ITC, this district, and in Canada, France,

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Germany, and the Netherlands, at 12:52 p.m. on September 28, patent owner’s counsel sent

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Google an email:

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Attached please find a courtesy copy of the complaint that we will
file Tuesday, September 29th in the United States District Court.
In this lawsuit, Sonos will focus on Google’s infringement of U.S.

Case 3:20-cv-06754-WHA Document 36 Filed 11/20/20 Page 2 of 6

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Patents 9,967,615; 10,779,033; 9,344,206; 10,469,966; and
9,219,460 . . . .

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Enclosed was an eighty-seven page complaint delineating the allegations of infringement to be

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filed, according to the caption, in the United States District Court for the Western District of

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Texas, Waco Division. In response, at 11:41 p.m. that evening, Google filed its own thirteen-

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page complaint for declaratory relief of noninfringement of the same five patents here in the

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Northern District of California (Dkt. No. 1).

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As promised, patent owner filed its complaint a few hours later on September 29 in the
Western District of Texas, Waco Division. Sonos, Inc. v. Google LLC, No. C 20-00881 ADA

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(W.D. Tex.) (Judge Alan D. Albright). Patent owner now moves to dismiss this declaratory

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action in favor of the Texas action. This order follows full briefing and oral argument (held

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United States District Court
Northern District of California

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telephonically due to COVID-19).

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ANALYSIS
Our case presents two matters of discretion. On the one hand, the Declaratory Judgment

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Act provides courts a “unique and substantial discretion in deciding whether to declare the

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rights of litigants.” Wilton v. Seven Falls Co., 515 U.S. 277, 286–88 (1995). “[W]ell-founded

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reasons for declining to entertain a declaratory judgment action” will be found within “the

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purposes of the Declaratory Judgment Act and the principles of sound judicial administration.”

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See Comm’cns Test Design, Inc. v. Contec, LLC, 952 F.3d 1356, 1361 (Fed. Cir. 2020). On the

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other hand, judicial comity counsels deference (via stay, transfer, or dismissal) to the first-filed

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of two actions presenting identical parties and issues to avoid conflicting decisions and promote

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judicial efficiency, unless a party’s bad faith or improper purpose, the convenience of the

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forum, and the “considerations of judicial and litigant economy, and the just and effective

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disposition of disputes” counsel otherwise. Where these two instances join, “district courts

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enjoy a ‘double dose’ of discretion: discretion to decline to exercise jurisdiction over a

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declaratory judgment action and discretion when considering and applying the first-to-file rule

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and its equitable exceptions.” Id. at 1362–63; Elecs. For Imaging, Inc. v. Coyle, 394 F.3d 1341,

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1347 (Fed. Cir. 2005); Alltrade, Inc. v. Uniweld Prods., Inc., 946 F.2d 622, 628 (9th Cir. 1991).

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In the acute circumstance apparent here, Google’s choice of forum carries no weight, nor
does the fact that it managed to file first, for the following reasons.

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First, the manifest purpose of Google’s suit was to beat the clock and defeat the patent

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owner’s choice of venue. On September 28 just after noon, patent owner shared “a courtesy

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copy of the complaint that we will file Tuesday, September 29th in the United States District

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Court.” Leaving no good deed unpunished, Google turned around and filed its own complaint

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at the twelfth hour, purely to beat patent owner to a courthouse — not even by a full day, but by

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a matter of hours.

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Second, Google’s complaint utterly fails to meet the standard for obtaining declaratory
relief because it does not explain how its accused products avoid infringement of the asserted

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United States District Court
Northern District of California

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patents. As the undersigned has held consistently since the abrogation of Form 18, a

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declaratory relief complaint must explain “how each accused product or service specifically

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does not meet at least one claim limitation, such that it does not infringe the asserted patent.”

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Comcast Cable Comm’cns, LLC v. OpenTV, Inc., 319 F.R.D. 269, 273 (N.D. Cal. 2017); see

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also, Bot M8 v. Sony, No. C 19-07027 WHA, 2020 WL 418938, at *1 (N.D. Cal. Jan. 27, 2020);

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see also Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S. 544,

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555 (2007). True, the Federal Circuit has construed this burden as minimal in a case of “simple

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technology,” a term surely inapplicable here, yet even there the adequate complaint contained

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some factual matter (e.g., photographs of the accused product) to be compared to the claim

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language. See Disc Disease Solutions v. VGH Solutions, Inc., 888 F.3d 1256, 1260 (Fed. Cir.

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2018).

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Google’s complaint stumbles under this minimal burden. It offers no allegations of fact in

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support of its five claims of noninfringement. This order repeats, to emphasize that this is not

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an exaggeration, that Google’s complaint offers no allegation of fact in support of the claims of

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noninfringement. Five times, the complaint alleges “Google does not directly or indirectly

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infringe the [relevant] patent, either literally or under the doctrine of equivalents, at least

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because the Google Accused Products do not comprise [a word-for-word recitation of the claim

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language].”
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In stark contrast, patent owner’s eighty-seven page Texas complaint details how the

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accused products infringe each element of each asserted claim in nearly sixty pages of claim

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charts. It is again manifest that Google and its attorneys threw this ramshackle complaint

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together in a matter of hours just to beat the clock and try to “file first” in its hometown.

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Google does not seriously contest this. Rather, it contends that patent owner already had

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notice of the issues in this case, as patent owner started the dispute. That’s not good enough, for

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Google was required to affirmatively explain why its accused products omitted one or more of

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each claim limitation in suit. Google’s argument, in essence, concedes that its declaratory

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complaint means nothing without reference to patent owner’s Texas complaint, which again

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United States District Court
Northern District of California

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counsels deference to that proceeding.
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Google’s choice of forum is entitled to no weight. Rather, the proper course is to stay this

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case and defer to Judge Albright’s ruling on Google’s just-filed motion to transfer under Section

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1404 and its factors, such as any forum select clause, the convenience of the parties, the

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comparative time to trial, the interests of justice, and whether any of the many hundreds of

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engineers Google apparently employs in the Western District will be called as witnesses. If the

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judge grants such a motion, the undersigned will take the case. If he denies such motion then

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our case will remain stayed indefinitely in favor of the Texas action.

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It is, of course, certainly possible that Sonos is just as guilty of forum shopping here as

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Google. At the hearing, counsel for Sonos maintained that they filed in the Western District of

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Texas because that district has continued to hold patent trials despite the pandemic, whereas our

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own district has largely ceased holding jury trials. Indeed, counsel represented, Judge Albright

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had just finished another patent trial in recent weeks. At least at first glance, the Court saw

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some logic in this response, although by now there may be dozens of patent cases standing in

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line to Judge Albright’s courtroom.

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Shortly after the hearing, however, the undersigned learned otherwise by way of a writ of

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mandamus from the Court of Appeals for the Federal Circuit directing Judge Albright to

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transfer a case to this district which, coincidentally, has come before the undersigned. The
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court of appeals, we have now learned, has rejected Sonos’s argument that a “court’s suggestion

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that it could more quickly resolve [a] case based on its scheduling order” be given dispositive

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weight:

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The [court congestion] factor concerns whether there is an
appreciable difference in docket congestion between the two
forums. Nothing about the court’s general ability to set a schedule
directly speaks to that issue.

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In re Adobe Inc., 823 Fed. App’x 929, 932 (Fed. Cir. 2020) (citations omitted). Nevertheless,

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the proper course remains to stay the present action until Judge Albright can rule on Google’s

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motion to transfer. The judge will no doubt account for the Federal Circuit’s recent direction.

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In the meantime, Google shall amend its complaint. To be clear, this amendment does not

United States District Court
Northern District of California

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cure Google’s failures detailed above or alter the analysis of which suit ought to proceed. That

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would reward Google’s litigation gimmick, to anchor venue with a bare bones complaint and

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then fix it up by amendment. Cf. Foman v. Davis, 371 U.S. 178, 182 (1962). Rather, this

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amendment will ensure that we are prepared to proceed at pace in the event that Judge Albright

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decides this case should go forward.

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CONCLUSION

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This action and the accompanying international campaign are emblematic of the worst

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aspects of patent litigation. In just nine months, these parties have managed to escalate their

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dispute seemingly without bound, filing suits in the ITC, twice in this district, in the Central

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District of California, in the Western District of Texas, in Canada, France, Germany, and the

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Netherlands, all about home speaker systems. The resources invested into this dispute already

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are doubtless enormous. By the end, our parties’ legal bills will likely have been able to build

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dozens of schools, pay all the teachers, and provide hot lunches to the children.

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This case is STAYED except that Google SHALL move for leave to file a first amended

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complaint that meets the standard articulated above by DECEMBER 11 AT NOON. That is,

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Google shall specify, for every accused product for which it seeks a declaration of

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noninfringement, how the product fails to satisfy at least one limitation of every challenged

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claim. Meanwhile, the parties SHALL keep the Court apprised of material updates in the Texas
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proceedings and promptly provide Judge Albright a copy of this order. A further status

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conference is SET for MARCH 25, 2021 AT 11:00 A.M.

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IT IS SO ORDERED.

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Dated: November 20, 2020.

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WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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United States District Court
Northern District of California

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