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Google v. Sonos: Google’s Patent Invalidated Under §101

Reports Patent

Google LLC v. Sonos, Inc., No. 20-cv-03845-EMC (N.D. Cal. 2020).

In January 2020, Sonos sued Google in the Northern District of California for infringing patents related to its home speaker technology. Five months later, Google countersued, alleging that Sonos infringed five of its own patents. Sonos moved to dismiss the cause of action asserting U.S. Patent No. 8,583,489 (the ‘489 patent). The court granted the motion on November 2, 2020 on the ground that the patent is invalid under Section 101 of the Patent Act, which has been interpreted by courts to prohibit the patenting of laws of nature, natural phenomena, and abstract ideas.

Google’s ‘489 patent, titled “Generating Media Content Availability Notification,” relates generally to determining if media content is available from different content sources and notifying a user when the availability of the media content changes. For example, movies may become available at theaters, as DVDs, on television, and on Netflix at different times, which can be confusing for consumers. The patent, specifically claim 15, lays out a 4-step process to solve this problem: (1) receiving the user’s account data and preferences for media content and sources, (2) requesting content availability data over a network, (3) receiving the content availability data, and (4) generating a notification on the user’s device indicating the availability.

In Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), the Supreme Court established a two-step test for analyzing patent eligibility under §101, which the court in this case followed. The first step is to determine whether the claims are directed to a patent-ineligible concept, and if so, the second step is to determine if the claims recite an inventive concept, transforming the claims into a patent-eligible application.

Sonos cited, among other cases, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), in which the patent at issue claimed a method for detecting and analyzing events on an electric power grid in real time. The court first held that collecting and analyzing information, then presenting the results is directed to an abstract idea. The court then found no inventive concept because the patent “merely call[ed] for performance of the claimed information collection, analysis, and display functions ‘on a set of generic computer components’ and display devices,” thereby invalidating it.

Google cited, among other cases, Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), in which the patent at issue claimed a method for filtering information at a remote server while allowing for individually customizing the filter for each end user. While the court held that filtering content is an abstract idea, it acknowledged that the inventive concept arose from the ordered combination of generic computer components. The court stated that the claims recite “a specific, discrete implementation of the abstract idea of filtering content” and that the “particular arrangement of elements is a technical improvement over prior art ways of filtering such content, ” thereby holding the patent valid under §101.

Against this backdrop of recent Federal Circuit cases, the district court ruled that Google’s ‘489 patent is invalid under §101. At the first step, the patent is “directed to collecting information, analyzing it, and providing a notification,” and Electric Power held that this is directed to an abstract idea. At the second step, the court rejected Google’s argument that the patent has two inventive concepts: (1) “targeted searching of aggregated content” and (2) notification of when desired content becomes available. It reasoned that both fail under Electric Power, which noted that “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes.”

The court also rejected Google’s argument that, because the patent provides an architecture for achieving the desired result, it has an inventive concept. Federal Circuit precedents have ratified the requirement of sufficient specificity, as it prevents the monopolization of basic tools of scientific and technological work. In this case, the court argued that the ‘489 patent fails to provide sufficient specificity as to how the desired result is achieved. While Sonos’s motion to dismiss was granted, there are still other patents asserted by Google at issue and the lawsuit will likely continue to garner attention as the ITC is also investigating the tension between the two companies.