Judge Throws Out $32.5 Million Award in Sonos v. Google

U.S. District Court Judge William Alsup ruled that two Sonos patents behind a $32.5 million damages award are unenforceable. Accordingly, he ordered that the damages award be tossed out.

“The essence of this order is that the patents issued after an unreasonable, inexcusable, and prejudicial delay of over thirteen years by the patent holder, Sonos,” the judge writes in his ruling. “Sonos filed the provisional application from which the patents in suit claim priority in 2006, but it did not file the applications for these patents and present the asserted claims for examination until 2019. By the time these patents [were] issued in 2019 and 2020, the industry had already marched on and put the claimed invention into practice.”

This order casts the original timeline of this story into a new light. We were told that Google approached Sonos for a partnership and that after Sonos explained how its whole house audio technologies and smart speakers worked, Google then walked away from the deal and copied the Sonos features in its own products and services. That narrative remains unchanged, but here’s the nuance: Google approached Sonos for a partnership in 2014, which was five years before Sonos filed its patents. So no matter the circumstances, Sonos was trying to play the patent system against Google, probably to force the partnership to fruition.

Judge Alsup does not mince words in describing this act. Yes, Sonos invented the technologies in question, but it never thought to patent any of it until Google showed up and then left.

“This was not a case of an inventor leading the industry to something new,” he writes. “This was a case of the industry leading with something new and, only then, an inventor coming out of the woodwork to say that he had come up with the idea first — wringing fresh claims to read on a competitor’s products from an ancient application. Even if the provisional application Sonos filed in 2006 or the corresponding nonprovisional application Sonos filed in 2007 had actually disclosed the invention, that would be all the more reason to [rule that] Sonos waited too long to claim it.”

The 55-page ruling provides many details about what Sonos did and did not invent, and when, but the damning bits, of course, concerns its attempts to add new features to prior patents after the fact, with the express aim of tripping up Google. What’s not clear is whether Google acted in good faith: By the time it approached Sonos for a potential partnership, the smartphone era had begun, and it had launched its Google Play Music service. Google was apparently “fawning” over Sonos during this time, the judge noted, and so Sonos opened the kimono, so to speak, and spilled the beans on its proprietary secrets.

It’s possible—likely, even—that Google aggressively did copy at least some of Sonos’ work: The firm came back to Sonos later and offered to turn the partnership on its head by letting Sonos join its “Cast for Audio” program, which was backed by a lot of brand new Google patents related to existing and coming features, some of which Sonos had previously shared (and, to be fair, some that were new). But Sonos, in a way, was victimized as much by its naivete as it was by Google, a powerful tech giant that perhaps better understood how to use the patent system to its advantage.

“Sonos was guilty of unreasonable and inexcusable delay in its prosecution of the patents in suit,” Alsup continues. Yes, Sonos had invented some of the technologies that Google later used, but “the earlier [Sonos patent] applications never disclosed the invention.” In short, the original Sonos patents at the heart of this case were very narrow and Sonos tried to bulk them up after Google had walked away from its partnership.

Whatever the details, in an ideal world these firms would still partner to ensure that Google’s services work properly with the Sonos ecosystem and vice versa. They share many customers, and any partnership would only increase the number of people who could mix and match between the two. But this ruling has really muddied the waters, which could be an issue for any future deal: Where Sonos clearly had the moral high ground before, now it’s not so clear. And while no one likes to see Big Tech wipe out yet another small player, Sonos has pretty much pulled a Netscape here in that some of its own mistakes are just as problematic as anything the competition did.

I’m curious what’s next in this case.