Federal Circuit Affirms ITC Divided Opinion in Sonos v. ITC

by Dennis Crouch
In a non-precedential opinion, the Federal Circuit has affirmed the US International Trade Commission’s (ITC) final determination in the patent infringement dispute between Sonos and Google involving smart speaker technology. Sonos, Inc. v. Int’l Trade Comm’n , Nos. 2022-1421, 2022-1573 (Fed. Cir. Apr. 8, 2024) .  The ITC had issued a split opinion – finding that Google infringed a number of Sonos speaker patents, but concluded that Google’s proposed work-around was non-infringing.  Both sides appealed and the Federal Circuit’s deferential standard of review resulted in a full affirmance. The outcome then is that Google can continue to import its speaker systems (with the work-around implemented), but Sonos will likely take this decision as influential in a parallel district court case seeking infringement damages.
Note: We are also covering the Sonos v. Google appeal of Judge Alsup’s determination that several Sonos patents are unenforceable due to prosecution laches.  That case involves a separate set of patents and so is not directly impacted here. Google also has a separate infringement suit pending against Sonos, and both parties have attacked opposition patents via inter partes review. 
Background and ITC Decision
Sonos filed a Section 337 action with the ITC alleging that Google was its rights by importing audio players and controllers that infringed five Sonos patents covering various aspects of smart speaker technology. U.S. Patent Nos. 10,439,896,
9,195,258, 9,219,959, 10,209,953, and 8,588,949. In 2022, the ITC issued a final determination holding that certain originally-accused Google products infringed each asserted patent, but Google’s proposed redesigns did not infringe. Both parties appealed, but the Federal Circuit affirmed the ITC decision in its entirety.
The opinion here is a bit of a hodge-podge of issues and so below I focus on a few that I find most interesting:
ITC’s Authority Over Post-Importation Infringement
The ITC’s power is generally associated with importation and the general question is whether a product infringes as of its importation.  In this case, some of the infringement analysis involved user-interaction with the accused product that occur after importation.  Google argued that ITC lacked authority over allegedly infringing features added after importation. The Federal Circuit rejected that argument and reaffirmed its en banc holding in Suprema, Inc. v. Int’l Trade Comm’n “that the Commission’s authority under section 337 is not limited to articles that infringe at the time of importation.” 796 F.3d 1338, 1350 (Fed. Cir. 2015) (en banc). The court explained it was “bound by this precedent” to reject Google’s challenge to the ITC’s power to address post-importation infringement.  Google’s argument here appears to be setting up potential Supreme Court review.
Prosecution History Disclaimer

During prosecution of the ‘949 patent, Sonos amended the claims and made statements distinguishing the prior art “Isely” in a way that potentially led to prosecution disclaimer. Specifically:

Sonos amended the claims to require “independent” playback devices, in view of the Isely prior art reference.
The examiner summarized an interview with Sonos, stating that “Applicant distinguished the individual operation over the tethered or interdependent operation of [Isely].”
Sonos summarized an interview, stating “Applicants’ representative discussed the Isely reference and reiterated that the reference did not disclose or suggest independent playback devices.”
In the Reasons for Allowance, the examiner again distinguished Isley because it “controls volume in an interdependent manner”

Google argued that based on these statements, Sonos disclaimed all “tethered or interdependent operation” of the playback devices during prosecution. However, the ITC found that Sonos did not clearly and unmistakably disclaim all tethered or interdependent operation, but rather only disclaimed the specific interdependent volume control described in Isely. In appeal, the Federal Circuit affirmed, noting that sonos only disclaimed the specific interdependent volume control system described in the Isely reference, not all grouped or linked playback devices.  This outcome demonstrates a fairly high bar for finding prosecution history disclaimer and the need for care and precision in characterizing prior art during prosecution.

‘896 Patent – Claim Construction and Infringement
For the ‘896 patent, the asserted claim requires:

transmitting … at least a second message containing network configuration parameters, wherein the network configuration parameters comprise an identifier of the secure WLAN and a security key for the secure WLAN;

One question in the appeal was whether this clause requires that a single message contain both the Identifier and also the Key. The court affirmed the ITC’s determination that it must be the same “second message.”  The court reasoned that the claim language “makes clear that ‘at least a second message’ has the network configuration parameters and that the network configuration parameters include both” the identifier and key. The specification provided “strong support” for this interpretation, while Sonos’ proposed construction lacked specification support.  In particular the specification included both descriptions and examples showing the identifier and key being sent together in a single message. Whereas nothing in the specification indicated sending the two in separate messages.