Sonos Inc v. Google LLC

1. Case Identification

• Case #: IPR2023-00806
• Patent #: 11,050,615
• Filed: April 5, 2023
• Petitioner(s): Sonos, Inc.
• Patent Owner(s): Google LLC
• Challenged Claims: 1-3, 5-12, 15-19

2. Patent Overview

• Title: APPARATUS AND METHOD FOR SEAMLESS COMMISSIONING OF WIRELESS DEVICES
• Brief Description: The ’615 patent discloses systems and methods for commissioning a new device onto an existing wireless local area network (WLAN). The technology allows an already-connected "smart wireless device" to transmit network configuration data, such as the network name and security key, to the new "target device" via a secondary, short-range communication channel (e.g., Bluetooth, NFC) that is independent of the primary WLAN.

3. Grounds for Unpatentability

Ground 1: Claims 1-3, 5-12, and 15-19 are obvious over Roberts in view of Asokan.

• Prior Art Relied Upon: Roberts (Patent 7,616,594) and Asokan (Application # 2006/0251256).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Roberts teaches a user-friendly system where a "registrar" device already on a wireless network (the claimed "wireless device") transmits necessary configuration settings to a new "enrollee" device (the claimed "target device"). Roberts was asserted to disclose the necessary hardware, including a microprocessor ("processing unit 14") and commissioning logic (stored "programs" or "instructions"). While Roberts does not use the exact phrase "wireless radio," its detailed description of devices communicating over a Wi-Fi network using modulated RF signals renders the presence of a radio obvious to a person of ordinary skill in the art (POSITA). Roberts further teaches transmitting configuration data packets containing the network SSID and an encryption key. Critically, Roberts discloses that this transfer can occur over an "out of band" communication channel, such as Bluetooth, which establishes the claimed "short-range signal transmission path... independently of the communication network." The enrollee then decodes this data to join the network.
  • Motivation to Combine: Although Roberts presents both in-band and out-of-band communication as viable options, Petitioner contended that Asokan provides a compelling motivation for a POSITA to specifically select the out-of-band method. Asokan explicitly teaches that using a separate out-of-band channel (e.g., Bluetooth, NFC) for commissioning is preferable as it overcomes significant problems with in-band methods, such as the risk of man-in-the-middle attacks and accidental pairing with unintended devices. Asokan explains that this approach simplifies the setup process, enhances security by substantially reducing the physical transmission range, and improves overall usability.
  • Expectation of Success: A POSITA would have a high expectation of success in combining the references. Both Roberts and Asokan address the identical problem of simplifying device commissioning and both identify out-of-band channels like Bluetooth as a solution. Applying Asokan's clear rationale for preferring an out-of-band channel to the system already disclosed in Roberts would be a predictable, straightforward, and beneficial modification.

Ground 2: Claims 1-3, 5-12, and 15-19 are obvious over Suumäki.

• Prior Art Relied Upon: Suumäki (Patent 9,288,228).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Suumäki alone teaches all elements of the challenged claims. Suumäki describes commissioning a new device ("device B") by having a user physically touch it to an existing network device ("device A"). This action creates an out-of-band Near Field Communication (NFC) link, which is independent of the primary WLAN and serves as the "short-range signal transmission path." Suumäki discloses that the devices are equipped with processors, wireless radios (for both WLAN and NFC), and commissioning logic. The NFC touch event, which triggers a handover request, constitutes the "request to initiate commissioning." Network configuration data is then transmitted from device A to device B in a "predetermined data format," specifically an NDEF (NFC Data Exchange Format) message. This message is composed of NDEF records functioning as "packets" that convey authentication information and network credentials, including security keys. Device B then decodes this data and uses its primary wireless radio to join the WLAN.
  • Motivation to Combine: This ground does not combine primary references. Instead, Petitioner argued a POSITA would be motivated to consult the industry standards that Suumäki explicitly incorporates by reference. For example, Suumäki references the ISO/IEC 18092 standard, which specifies modulation schemes like Amplitude-Shift Keying (ASK), a basis for the claimed "on-off keying (OOK)." Following Suumäki's direction to these standards would lead a POSITA directly to the specific technical implementations required by the dependent claims.
  • Expectation of Success: As a single-reference ground, the expectation of success lies in the ability of a POSITA to implement the system described. Given that Suumäki provides a detailed system description and points to established industry standards for implementation details, a POSITA would have every reason to expect successful implementation.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. Under §314(a) and the Fintiv factors, Petitioner asserted that the co-pending ITC proceeding should not bar institution because the Fintiv analysis is directed at district court litigation, not ITC investigations. Furthermore, the related district court case is stayed pending the ITC outcome, meaning no trial date is set, no claim construction has occurred, and no significant discovery has taken place.
• Under §325(d), Petitioner contended that the asserted prior art (Roberts, Asokan, and Suumäki) was neither cited nor considered by the Examiner during prosecution. This art was argued to be substantively different from and stronger than the art of record, as it specifically teaches a target device with a microprocessor that receives and processes WLAN configuration packets—a key feature the Examiner previously found lacking in the cited art.

5. Relief Requested

• Petitioner requests that the Board institute an inter partes review and cancel claims 1-3, 5-12, and 15-19 of Patent 11,050,615 as unpatentable.