Sonos Inc v. Google LLC

1. Case Identification

• Case #: IPR2021-00964
• Patent #: 10,229,586
• Filed: May 20, 2021
• Petitioner(s): Sonos, Inc.
• Patent Owner(s): Google LLC
• Challenged Claims: 1-5, 7-12, 14-16, 18, 20

2. Patent Overview

• Title: Relaying Communications in a Wireless Sensor System
• Brief Description: The ’586 patent specification discloses a wireless residential fire and security alarm system comprising sensors, repeaters, and a base station. However, the challenged claims are directed more broadly to "audio-enabled wireless devices" configured for bidirectional communication in a "wireless mesh network," where devices relay communication packets to one another.

3. Grounds for Unpatentability

Ground 1: Claims 1, 5, 8-9, and 14-15 are obvious over Baker and Bruckert.

• Prior Art Relied Upon: Baker (Application # 2006/0120433) and Bruckert (EP 0 416 732 B1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Baker taught the core elements of the independent claims. Baker disclosed a wireless mesh network of audio-enabled consumer electronic devices (e.g., TVs, audio systems) that use packet-based communication. Each device in Baker’s network acted as a node, relaying packets to other nodes using locally stored routing tables to forward data, thus teaching the claimed packet reception, comparison, and relaying steps. While Baker did not explicitly disclose a "reset element," Petitioner asserted that Bruckert remedied this. Bruckert taught that all data processing systems required a reset capability for initialization and error recovery, making the inclusion of a reset element in Baker's devices an obvious design choice to a person of ordinary skill in the art (POSITA).
  • Motivation to Combine: A POSITA would combine Baker and Bruckert because Baker’s consumer electronic devices were data processing systems of the type described by Bruckert. A POSITA would have recognized the benefit of incorporating the standard reset functionality taught by Bruckert into Baker's devices to ensure reliable operation, handle errors, and facilitate the addition or removal of devices from the network.
  • Expectation of Success: Petitioner contended there was a high expectation of success because Bruckert described reset elements as a routine, standard feature in all data processing systems, and implementing such a feature in Baker's devices would have been a straightforward application of known engineering principles.

Ground 2: Claims 2-4, 7, 10-12, 16, 18, and 20 are obvious over Baker and Bruckert in further view of McMillin.

• Prior Art Relied Upon: Baker (Application # 2006/0120433), Bruckert (EP 0 416 732 B1), and McMillin (Patent 7,027,773).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon Ground 1 to address dependent claims requiring collision avoidance techniques. Petitioner argued that McMillin taught the specific limitations of listening to a channel before transmitting ("listen-before-talk") and waiting a determined (and often random) delay value if the channel is busy. McMillin explicitly described these techniques to avoid message collisions and reduce traffic in a wireless network of transceiver nodes, which was the same type of network disclosed by Baker. Other dependent claims related to Internet connectivity were also addressed, as McMillin taught using a "gateway device" to connect a wireless network to the Internet.
  • Motivation to Combine: A POSITA would combine McMillin with Baker/Bruckert to improve the performance and reliability of Baker's wireless mesh network. Since Baker’s network involved multiple independent transmitters, it was susceptible to the exact message collision problems that McMillin’s techniques were designed to solve. Applying McMillin's established collision avoidance methods was an obvious way to enhance the robustness of Baker's system.
  • Expectation of Success: Success was expected because McMillin's techniques were specifically designed for the type of packet-based, multi-node wireless network taught by Baker. The combination represented the application of a known solution to a known problem.

Ground 3: Claims 1-5, 7-12, 14-16, 18, and 20 are obvious over Marman and Shoemake.

• Prior Art Relied Upon: Marman (WO 00/21053A1) and Shoemake (Application # 2002/0122413).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner presented this as an alternative ground where Marman, like the ’586 patent’s specification, taught a wireless fire/security alarm system. Marman’s system was an "interactive multi-path loop system" (a mesh network) where audio-enabled sensors (with sounders) used two-way transceivers to relay messages from sensor-to-sensor. Marman also disclosed routing tables for message forwarding and collision avoidance techniques. Petitioner argued Marman taught every element of the claims, but to the extent Marman did not explicitly detail a standard packet structure, Shoemake did. Shoemake described the standard components of wireless data packets (preamble, header with addresses, payload, checksum) used in technologies like IEEE 802.11.
  • Motivation to Combine: A POSITA would have been motivated to use the standard packet structure from Shoemake in Marman’s system to ensure interoperability and reliability. Since Marman’s system was already packet-based, employing a well-understood, standard packet format as taught by Shoemake would have been a predictable and logical design choice.
  • Expectation of Success: There was a strong expectation of success in applying Shoemake's standard packet structure to Marman's system, as Marman's packets already performed the same basic functions (synchronization, addressing, error control) as the standard packets described by Shoemake.

4. Key Claim Construction Positions

• Preambles (Claims 1, 9, 15): Petitioner argued the preambles were not limiting. For example, in claim 1, the phrase "wireless mesh network" was contended to merely state an intended use for the "audio-enabled wireless device," as the claim body recited a structurally complete invention without relying on the preamble for life, meaning, or vitality.
• "Reset element": Petitioner proposed that a POSITA would understand this term broadly to mean "an element that functions to place the controller in a prescribed state." This construction would encompass common hardware switches or software-initiated reset functions, which Petitioner argued were disclosed or made obvious by the prior art.

5. Arguments Regarding Discretionary Denial

• §314(a) (Fintiv): Petitioner argued against discretionary denial under Fintiv, stating that the factors weighed in favor of institution. Key reasons included that no trial date had been scheduled in the co-pending district court litigation, the trial was likely years away, and minimal investment had been made in the court case regarding the ’586 patent’s invalidity. Petitioner also asserted the petition was substantively strong.
• §325(d): Petitioner argued denial would be inappropriate because the primary references, Baker and Bruckert, were not cited or considered by the Examiner during prosecution. Furthermore, although a reference related to Marman was of record, the Examiner never substantively applied it and allegedly erred by allowing claims directed to the same broad subject matter the Examiner had previously found unpatentable over Marman in related applications.

6. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 7-12, 14-16, 18, and 20 of the ’586 patent as unpatentable.