Sonos Inc v. Google LLC

1. Case Identification

• Case #: IPR2021-00962
• Patent #: 10,140,375
• Filed: May 20, 2021
• Petitioner(s): Sonos, Inc.
• Patent Owner(s): Google LLC
• Challenged Claims: 1-11 and 13-20

2. Patent Overview

• Title: Personalized Network Searching
• Brief Description: The ’375 patent discloses methods and systems for synchronizing a user's web browser bookmarks (termed "favorite items") across multiple client devices via a remote server. The system also enables personalized searching by generating a combined set of search results that includes items from both the user's synchronized bookmarks and a general web index.

3. Grounds for Unpatentability

Ground 1: Obviousness over Mendez and Jain - Claims 1-11 and 13-19 are obvious over Mendez in view of Jain.

• Prior Art Relied Upon: Mendez (Patent 6,023,708) and Jain (Patent 6,480,853).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Mendez taught all elements of the challenged claims related to synchronizing bookmarks across multiple user devices. Mendez disclosed a system where modifications to bookmarks on one client device (e.g., a desktop) initiate a synchronization process with a remote "global server," which in turn updates the bookmarks on a user's other devices (e.g., a laptop or PDA). However, Mendez did not expressly teach integrating a search function that queries both bookmarks and the general web. Petitioner asserted that Jain supplied this missing element. Jain described a search engine that, in response to a single user query, searches both the user's locally stored bookmarks and a general web index, then presents a combined, unified set of results to the user in their web browser.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Mendez and Jain to improve the functionality of Mendez's system. Mendez's synchronization could create a large and unwieldy set of merged bookmarks, making it difficult for a user to find a specific item. Jain's search functionality provided a known solution to this problem, allowing users to efficiently search their bookmarks. Combining the two would save user time by merging the separate tasks of searching bookmarks and searching the web into a single, streamlined action, resulting in a more useful and efficient browser experience.
  • Expectation of Success: A POSITA would have had a high expectation of success because both Mendez and Jain described functionalities for conventional web browsers (specifically mentioning Netscape Navigator and Internet Explorer) and operated on the same type of data (browser bookmarks). The integration was portrayed as a predictable combination of known elements to achieve a predictable result.

Ground 2: Obviousness over Mendez, Jain, and Nakagawa - Claim 20 is obvious over Mendez and Jain in further view of Nakagawa.

• Prior Art Relied Upon: Mendez (Patent 6,023,708), Jain (Patent 6,480,853), and Nakagawa (Application # 2004/0107236A1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner established the base combination of Mendez and Jain as teaching the system for synchronizing and searching bookmarks recited in the underlying claims. Claim 20 further required displaying "an indication of modification of bookmark information" on a second client device after a change was synchronized. While the Mendez/Jain system resulted in the modified bookmark appearing on the second device, it did not explicitly teach a separate indication that a modification occurred. Petitioner argued Nakagawa taught this feature. Nakagawa described a data synchronization system (including for bookmarks) that expressly notified the user of an update via a "display," an "icon," or other notification, drawing the user's attention to the newly synchronized data.
  • Motivation to Combine: A POSITA would combine Nakagawa's teaching with the Mendez/Jain system to improve the user experience. Providing an explicit notification of a successful synchronization, as taught by Nakagawa, would confirm to the user that a new or modified bookmark is available on their second device, preventing them from wasting time searching for an item that has not yet finished synchronizing. Petitioner contended this was a routine and well-known software design principle used to provide user feedback.
  • Expectation of Success: Success would have been reasonably expected, as both Mendez and Nakagawa described functionally similar client-server systems for synchronizing user data, including bookmarks. Adding a notification feature from one system to another was presented as a straightforward and compatible modification.

4. Key Claim Construction Positions

• "Favorite Items": Petitioner argued this term should be construed to mean "bookmarks, which are Web page locations (URLs) saved by a user for quick reference." This construction was based on the patent's interchangeable use of the terms and the ordinary meaning in the art.
• "[I]ndication of modification": For claim 20, Petitioner asserted this requires a "visual indication (e.g. highlight or symbol) that information has changed that is distinct from the changed information itself." This construction was argued to be necessary because simply displaying the modified bookmark itself would not constitute an "indication of modification."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) based on Fintiv factors would be inappropriate. The key reasons asserted were:
  • The trial date in the parallel district court litigation was not yet scheduled and was projected to be years away, well after the statutory deadline for a Final Written Decision (FWD) in the inter partes review (IPR).
  • The parties and the court had invested minimal resources in the parallel proceeding concerning the ’375 patent, with substantive discovery yet to occur.
  • The petition was substantively strong and raised issues based on prior art that the Patent Office had not previously considered, making review efficient and in the interest of the patent system.

6. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-11 and 13-20 of the ’375 patent as unpatentable.