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, 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 (or "favorite items") across multiple client devices using a remote server. The system also combines search results from the user's synchronized bookmarks with results from a general web search into a single, unified list for the user.

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 the combination of Mendez and Jain teaches all limitations of the challenged claims. Mendez was asserted to teach a system for automatically synchronizing "workspace elements," including web browser bookmarks, between multiple client devices (e.g., a desktop and a remote terminal like a smartphone) via a central, remote server. This process is initiated when a user modifies bookmarks on one device, ensuring the set of bookmarks remains consistent across all of the user's devices. While Mendez teaches the synchronization framework, it does not explicitly disclose combining bookmark searches with general web searches. Petitioner asserted Jain remedies this by teaching a search engine that, in response to a single user query, searches both a user's locally stored bookmarks and a general web index, then presents the results in a combined list.
  • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine Jain's search functionality with Mendez's synchronization system to solve a known problem. Mendez's system could create a very large, merged set of bookmarks, making it difficult for a user to find a specific item. A POSITA would recognize that Jain's method of searching bookmarks provides a direct solution, improving the usability and efficiency of the Mendez system by allowing users to quickly search rather than manually browse their extensive bookmark list. This combination would also improve user efficiency by merging two distinct actions (searching bookmarks and searching the web) into a single, integrated step.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because both Mendez and Jain describe technology for the same web browsers (e.g., Netscape Navigator, Internet Explorer) and operate on the same type of data (browser bookmarks). The combination was presented as a predictable integration of complementary, known browser functionalities.

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: This ground built upon the combination of Mendez and Jain from Ground 1, which established the core system of synchronizing bookmarks and providing combined search results. Claim 20 adds the requirement to "display... an indication of modification of bookmark information" on a second client device after a change is made on a first. Petitioner argued that while Mendez discloses the result of synchronization (i.e., the modified bookmark appearing on the second device), it does not explicitly teach a separate indication of that change. Nakagawa was introduced to teach this missing element. Nakagawa describes a similar file synchronization system where, after data is updated on a client device from a server, the system can notify the user of the update via a "display," an "icon," or other notification.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Nakagawa's notification feature with the Mendez/Jain system to improve the user experience. The notification would serve to confirm for the user that a bookmark added on one device has successfully synchronized and is now available on another device. This would prevent the user from wasting time looking for a newly created bookmark before the synchronization process is complete and would immediately draw the user's attention to the newly available item, which was a well-known software design principle.
  • Expectation of Success (for §103 grounds): The combination was argued to be predictable. Both Mendez and Nakagawa describe functionally similar client-server synchronization systems for user data, including bookmarks. Adding a standard update notification feature, as taught by Nakagawa, to the system of Mendez was presented as a routine and compatible software enhancement.

4. Key Claim Construction Positions

• "Favorite Items": Petitioner argued this term is used interchangeably with "bookmark" in the ’375 patent and should be construed to mean "bookmarks, which are Web page locations (URLs) saved by a user for quick reference." This construction was central to mapping the claims onto prior art that explicitly discusses bookmarks.
• "Stored ... in a client-side storage": Petitioner contended this requires the data to be "retained in a computer-readable medium of the client device for later retrieval by the user," meaning it must be non-transitory and accessible. This construction was used to argue that the synchronization taught by Mendez, which involves persistent storage on client devices, meets the claim limitation.
• "[I]ndication of modification": For claim 20, Petitioner argued this requires a "visual indication (e.g. highlight or symbol) that information has changed that is distinct from the changed information itself." This narrow construction was key to arguing that Mendez and Jain alone were insufficient, necessitating the addition of Nakagawa to teach a distinct notification.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate.
  • Against §314(a) Denial (Fintiv): Petitioner asserted that the co-pending district court case was in its very early stages, with no trial date scheduled and significant work remaining before trial. It was argued that the PTAB proceeding would conclude well before any potential trial date, and that the parties and the court had invested minimal resources in the parallel litigation at the time of filing.
  • Against §325(d) Denial: Petitioner argued that the petition raised new invalidity arguments based on prior art (Mendez, Jain, and Nakagawa) that was never cited or considered by the Examiner during the original prosecution of the ’375 patent. Therefore, the petition did not present the same or substantially the same arguments previously considered by the USPTO.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-11 and 13-20 of the ’375 patent as unpatentable.