• HQ H326593
• Sep 30, 2022

• Type : 19 U.S.C. § 1337; Unfair Competition • HTSUS :
•  Related:   H324813; H315645; H284032   

OT:RR:BSTC:EOE H326593 JW/ACC

Mr. Kevin Chu
Quinn Emanuel Urquhart & Sullivan, LLP
1300 I Street NW, Suite 900
Washington, D.C. 20005-3314

VIA EMAIL: [email protected]; [email protected]; [email protected]

RE: Ruling Request; U.S. International Trade Commission; Limited Exclusion Order; Investigation No. 337-TA-1191; Certain Audio Players and Controllers, Components Thereof, And Products Containing the Same

Dear Mr. Chu:

Pursuant to 19 C.F.R. Part 177, the Exclusion Order Enforcement Branch (“EOE Branch”), Regulations and Rulings, U.S. Customs and Border Protection (“CBP”) issues this ruling letter in response to Google LLC’s (“Google”) request for an administrative ruling. Google is “request[ing] a ruling that Google’s Pixel smartphones, tablets, laptops, and other ‘controllers’ (‘Pixel devices’) installed with the Google Device Utility app … do not infringe U.S. Patent No. 10,439,896[.]” Ruling Request at 1. We find that Google has met its burden to show that its Pixel devices installed with the Google Device Utility application (“DUA”) do not infringe claims 1, 5, 6, and 12 of U.S. Patent No. 10,439,896 (“the ‘896 patent”). Thus, CBP’s position is that Google’s Pixel devices with the DUA (“the articles at issue”) are not subject to the limited exclusion order (“LEO”) the U.S. International Trade Commission (“ITC” or “Commission”) issued on January 6, 2022, in Investigation No. 337-TA-1191 (“the underlying investigation” or “the 1191 investigation”), pursuant to section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337 (“Section 337”).

We further note that determinations of the Commission resulting from the underlying investigation or a related proceeding under 19 C.F.R. Part 210 are binding authority on CBP and, in the case of conflict, will by operation of law modify or revoke any contrary CBP ruling or decision pertaining to Section 337 exclusion orders. This ruling letter is the result of a request for an administrative ruling from CBP under 19 C.F.R. Part 177, which was conducted on an inter partes basis, upon agreement of the parties. See, e.g., EOE Branch Email to Parties, dated July 5, 2022. The process involved the two parties with a direct and demonstrable interest in the question presented by the ruling request: (1) your client, Google, the ruling requester and respondent in the 1191 investigation; and (2) Sonos, Inc. (“Sonos”), complainant in the 1191 investigation. See, e.g., 19 C.F.R. § 177.1(c).

The parties were asked to clearly identify confidential information, including information subject to the administrative protective order in the underlying investigation, with [[red brackets]] in all of their submissions to the CBP. See, e.g., EOE Branch Email to Parties, dated July 5, 2022; see also 19 C.F.R. §§ 177.2 and 177.8. If there is additional information in this ruling letter not currently bracketed in red [[ ]] that either party believes constitutes confidential information, and should be redacted from the published ruling, then the parties are asked to contact CBP within ten (10) working days of the date of this ruling letter. See, e.g., 19 C.F.R. § 177.8(a)(3).

Please note that disclosure of information related to administrative rulings under 19 C.F.R. Part 177 is governed by, for example, 6 C.F.R. Part 5, 31 C.F.R. Part 1, 19 C.F.R. Part 103, and 19 C.F.R. § 177.8(a)(3). See, e.g., 19 C.F.R. § 177.10(a). In addition, CBP is guided by the laws relating to confidentiality and disclosure, such as the Freedom of Information Act (“FOIA”), as amended (5 U.S.C. § 552), the Trade Secrets Act (18 U.S.C. § 1905), and the Privacy Act of 1974, as amended (5 U.S.C. § 552a). A request for confidential treatment of information submitted in connection with a ruling requested under 19 C.F.R. Part 177 faces a strong presumption in favor of disclosure. See, e.g., 19 C.F.R. § 177.8(a)(3). The person seeking this treatment must overcome that presumption with a request that is appropriately tailored and supported by evidence establishing that: the information in question is customarily kept private or closely-held and either that the government provided an express or implied assurance of confidentiality when the information was shared with the government or there were no express or implied indications at the time the information was submitted that the government would publicly disclose the information. See Food Marketing Institute v. Argus Leader Media, 139 S. Ct. 2356, 2366 (2019) (concluding that “[a]t least where commercial or financial information is both customarily and actually treated as private by its owner and provided to the government under an assurance of privacy, the information is ‘confidential’ within the meaning of exemption 4.”); see also U.S. Department of Justice, Office of Information Policy (OIP): Step-by-Step Guide for Determining if Commercial or Financial Information Obtained from a Person is Confidential Under Exemption 4 of the FOIA (updated 10/7/2019); and OIP Guidance: Exemption 4 after the Supreme Court’s Ruling in Food Marketing Institute v. Argus Leader Media (updated 10/4/2019).

BACKGROUND

ITC Investigation No. 337-TA-1191

The Violation Phase

The Commission instituted Investigation No. 337-TA-1191 on February 11, 2020, based on a complaint filed by Sonos, Inc. Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. ID 762093, Public Commission Opinion (Feb. 1, 2022) (“Comm’n Op.”) at 3 (citing 85 Fed. Reg. 7783 (Feb. 11, 2020)). The complaint alleged a violation of Section 337 by reason of infringement of certain claims of U.S. Patent Nos. 9,195,258; 10,209,953; 8,588,949; 9,219,959; and 10,439,896. Comm’n Op. at 3. The notice of investigation named Google LLC of Mountain View, California and Alphabet Inc. of Mountain View, California as respondents. Id. at 3. The Commission’s Office of Unfair Import Investigations (“OUII”) was also a party to the investigation. Id. at 3.

On August 13, 2021, the presiding Chief Administrative Law Judge (“CALJ”) issued his final initial determination (“FID”) finding a violation of Section 337. Id. at 5. Specifically, the CALJ determined that a violation of Section 337 occurred in the importation into the United States, the sale for importation, or the sale within the United States after importation, of certain audio players and controllers, components thereof, and products containing the same with respect to the ’258 patent, ’953 patent, ’959 patent, ’949 patent, and the ’896 patent. Id. at 5-7. The CALJ also determined that one redesign for each of the five asserted patents did not infringe. Id. at 180-182. On November 19, 2021, the Commission issued a notice in which it determined to review in part the FID. Comm’n Op. at 8 (citing 86 Fed. Reg. at 67492). In the notice, the Commission determined to review the FID’s analysis of whether the products accused of infringing the ’258 patent and ’953 patent are articles that infringe at the time of importation. Id. at 8. The Commission also determined to correct two typographical errors on pages 24 and 84 of the FID. Id. at 8-9. The Commission notice also requested written submissions on remedy, the public interest, and bonding. Id. at 9. The Commission affirmed the FID’s finding that the accused products infringed the ’258 patent and the ’953 patent at the time of importation. Id. at 21. Thus, the Commission found a violation of Section 337 as to claims 17, 21, 24, and 26 of the ’258 patent; claims 7, 14, and 22-24 of the ’953 patent; claim 10 of the ’959 patent; claims 1, 2, and 5 of the ’949 patent; and claims 1, 5, 6, and 12 of the ’896 patent. Id. at 21-22.

On January 6, 2022, the Commission issued a LEO and a cease and desist order in the 1191 investigation. Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. 759897, Limited Exclusion Order (Jan. 6, 2022) (“1191 LEO”); Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191, EDIS Doc. 759899, Cease and Desist Order for Google LLC (Jan. 6, 2022). The 1191 LEO expressly carved out from the scope of the exclusion order Google’s redesign products that the Commission found did not infringe the asserted patent claims. 1191 LEO at 2-3 (“Covered articles shall not include the Google redesign products that were adjudicated in this investigation and found to be non-infringing (i.e., (i) as to the ’258 patent, the redesign ’258 NIA No. 1; (ii) as to the ’953 patent, the redesign ’953 NIA No. 1; (iii) as to the ’959 patent, the redesign ’959 NIA No. 4; (iv) as to the ’949 patent, the redesigns submitted for adjudication by Google with respect to the ’949 patent; and (v) as to the ’896 patent, the redesign ’896 NIA No. 2”).

The Legacy and Redesigned Products in the Violation Phase

The legacy products in the underlying investigation were certain “networked speaker devices, and devices (for example, mobile phones and laptops) capable of controlling these devices.” FID at 2. In particular, Sonos accused Google’s Home Mini, Nest Mini, Home, Nest Audio, Home Max, Home Hub, Nest Hub, Nest Hub Max, Nest Wifi Point, Chromecast, Chromecast Audio, Chromecast Ultra, and Chromecast with Google TV, Pixel smartphones (i.e., Pixel 3, Pixel 3 XL, Pixel 3a, Pixel 3a XL, Pixel 4, Pixel 4 XL, and Pixel 4a phones); the Pixel Slate tablet; and Pixel computers (i.e., the Pixelbook and Pixelbook Go laptops installed with the Google Home app, the YouTube Music app, or the Google Play Music app); and Google’s Hub displays (i.e., the Home Hub, Nest Hub, and Nest Hub Max installed with Home/Nest software) of infringing the asserted claims of the patents at issue. Id. at 2-3

Google also introduced redesigned products for adjudication during the underlying investigation. The CALJ found, and the Commission affirmed, that at least one redesign for each underlying patent was non-infringing. Comm’n Op. at 4-7. Specifically, with respect to the redesign related to the ‘896 patent, the Commission found no infringement because the redesign (i.e., ’896 Non-Infringing Alternative (“NIA”) No. 2) modified the Google controller such that it “[[

]]” such that the redesign does not satisfy limitation 1.7 of the ’896 patent, as recited below. FID at 164.

The Patents and Claims in the 1191 LEO

The 1191 LEO prohibits the entry for consumption of audio players and controllers, components thereof, and products containing the same that infringe one or more of claims 17, 21, 24, and 26 of the ’258 patent; claims 7, 14, and 22-24 of the ’953 patent; claim 10 of the ’959 patent; claims 1, 2, and 5 of the ’949 patent; and claims 1, 5, 6, and 12 of the ’896 patent and are manufactured abroad by or on behalf of, or imported by or on behalf of Google LLC or any of its affiliated companies, parents, subsidiaries, agents, or other related business entities, or its successors or assigns. See ¶ 1 of 1191 LEO.

a. Claims 1, 5, 6, and 12 of the ’896 Patent

The ’896 patent is titled “Playback Device Connection,” and in general relates to “techniques for connecting various devices to a network for secure communications with a minimum of human interaction and technical ability.” FID at 150 (citation omitted); see also ‘896 Patent Abstract. Claim 1 of the ’896 patent is an independent claim and claims 5, 6, and 12 are dependent claims that depend from independent claim 1. See ’896 patent, col. 17:61-19:22.

The text of claim 1 of the ’896 patent is reproduced below:

[1.0] A computing device comprising:

[1.1] a user interface;

[1.2] a network interface;

[1.3] at least one processor;

[1.4] a non-transitory computer-readable medium; and program instructions stored on the non-transitory computer-readable medium that, when executed by the at least one processor, cause the computing device to perform functions comprising:

[1.5] while operating on a secure wireless local area network (WLAN) that is defined by an access point, (a) receiving, via a graphical user interface (GUI) associated with an application for controlling one or more playback devices, user input indicating that a user wishes to set up a playback device to operate on the secure WLAN and (b) receiving a first message indicating that a given playback device is available for setup;

[1.6] after receiving the user input and receiving the first message, transmitting a response to the first message that facilitates establishing an initial communication path with the given playback device, wherein the initial communication path with the given playback device does not traverse the access point;

[1.7] transmitting, to the given playback device via the initial communication path, at least a second message containing network configuration parameters, wherein the network configuration parameters comprise an identifier of the secure WLAN and a security key for the secure WLAN;

[1.8] after transmitting at least the second message containing the network configuration parameters, detecting an indication that the given playback device has successfully received the network configuration parameters; and

[1.9] after detecting the indication, transitioning from communicating with the given playback device via the initial communication path to communicating with the given playback device via the secure WLAN that is defined by the access point.

See ’896 patent, col. 17:61-18:35; FID at 150-151.

During the 1191 investigation, the CALJ construed six terms in the ’896 patent, which the Commission adopted. Comm’n Op. at 13. These six terms were construed as follows:

Term Claim Construction  “playback device” “data network device configured to process and output audio”  “network interface” “physical component of a device that provides an interconnection with a data network”  “security key” Plain and ordinary meaning  “while operating . . .”/ “after receiving . . .” Plain and ordinary meaning, which includes a sequence of steps  “program instructions . . .” Plain and ordinary meaning  “at least a second message containing network configuration parameters, wherein the network configuration parameters comprise an identifier of the secure WLAN and a security key for the secure WLAN” “at least one second message containing network configuration parameters, wherein the network configuration parameters comprise an identifier of the secure WLAN and a security key for the secure WLAN”   See FID at 151.

The Modification Proceeding

As noted above, see FN 2, on August 9, 2022, the Commission determined to institute a modification proceeding in response to Google’s petition for modification of the limited exclusion order and cease and desist order. Certain Audio Players and Controllers, Components Thereof, and Products Containing Same, Inv. No. 337-TA-1191 (Modification), EDIS Doc. ID 777452, Commission Order (Aug. 9, 2022) at 3-4. In its petition Google alleged that “its Pixel smartphones, tablets, laptops, and other ‘controllers’ (‘Pixel devices’) installed with an allegedly new Device Utility app … do not infringe any of claims 1, 5, 6, and 12 of the ‘896 patent.” Id. at 3. The Commission’s current target date for completion of the modification proceeding is May 15, 2023. See Certain Audio Players and Controllers, Components Thereof, and Products Containing the Same, Investigation No. 337-TA-1191 (Modification), EDIS Doc. No. 780994, Order No. 69: Modifying the Procedural Schedule at 2 (September 26, 2022).

19 C.F.R. Part 177 Ruling Request

Procedural History

a. Sonos’s Initial Ruling Request

Prior to the instant ruling request from Google, on March 24, 2022, Sonos submitted to the EOE Branch a request for an administrative ruling pursuant to 19 C.F.R. Part 177. See HQ H324813 (dated June 3, 2022) at 16. Sonos specifically “request[ed] a ruling that audio players, controllers, components thereof, and products containing the same currently imported by Google, LLC [] are not the same as the redesigned products that were adjudicated as not infringing” and, given this, such products “that have not been adjudicated as non-infringing should be excluded until and unless Google seeks a ruling of non-infringement from the Commission or obtains a Part 177 ruling from CBP that such products are outside the scope of the Limited Exclusion Order.” Id. (citing Sonos Ruling Request at 1 (quotation omitted)). As a result of this ruling request, that was administered on an inter partes basis with Google, CBP issued HQ H324813. Id. at 2. HQ H324813 found, inter alia, that:

Google has not met its burden to show that the articles at issue incorporate only the features or functionalities of the redesigned product that the Commission adjudicated not to infringe U.S. Patent No. 10,439,896[.] Thus, CBP’s position is that the relevant articles at issue are subject to exclusion from entry for consumption on the basis of the 1191 LEO until Google either: (1) disables or renders inoperable the Device Utility app addressed in this ruling such that it can no longer be used with the relevant articles at issue and provides notice as to that disabling or inoperability; or (2) receives a non-infringement determination pursuant to an ancillary proceeding at the Commission or a ruling in an inter partes proceeding from CBP under 19 C.F.R. Part 177 that addresses operation of the Device Utility app on the articles at issue. Google may concurrently pursue options (1) and (2) above.

Id. at 2.

Accordingly, the EOE Branch determined that the articles at issue were not outside the scope of the 1191 LEO and would be subject to exclusion from entry until Google disabled the DUA, such that it can no longer be used with the articles at issue, and provided notice of this action or established non-infringement for the articles at issue. Id. at 47.

b. Google’s Subsequent Ruling Request

On June 30, 2022, Google submitted a letter to CBP requesting an administrative ruling pursuant to 19 C.F.R. Part 177, which included Exhibits 1 to 4 (collectively, “Ruling Request”). Google is “request[ing] a ruling that Google’s Pixel smartphones, tablets, laptops, and other ‘controllers’ (‘Pixel devices’) installed with the Google Device Utility app … do not infringe [the ‘896 patent][.]” Ruling Request at 1. Concurrently, Google also provided a public copy of the Ruling Request to counsel for Sonos. See Google Email to Sonos, dated June 30, 2022.

On July 5, 2022, the EOE Branch had an initial conference call with Google and Sonos where both parties agreed to conduct the ruling request process on an inter partes basis administered by the EOE Branch. See EOE Branch Email to Parties, dated July 5, 2022.

On July 7, 2022, the parties noted that they could not come to an agreement on the schedule for this inter partes proceeding, and thus, on July 13, 2022, the EOE Branch provided the parties with a schedule for this inter partes proceeding. See Google Email to EOE Branch, dated July 7, 2022; Sonos Email to EOE Branch, dated July 7, 2022; EOE Branch Email to Parties, dated July 13, 2022.

On July 18, 2022, Sonos notified the EOE Branch that “Google petitioned the Commission to modify its LEO in the 1191 Investigation” and that “Google’s ITC petition raises the exact same issues as Google’s 177 Petition to Customs” such that “[i]n light of this new action by Google, Sonos respectfully requests that the EOE Branch terminate or stay Google’s 177 Proceeding to allow the Commission to rule, as Google has requested.” Sonos Email to EOE Branch, dated July 18, 2022 (emphasis in the original). In response, the EOE Branch held a call with the parties on July 20, 2022, to discuss their views with respect to whether the EOE Branch should continue with this inter partes proceeding. See EOE Branch Email Invitation to Parties, dated July 19, 2022. After taking the parties’ views into consideration, the EOE Branch concluded that “this inter partes proceeding should continue[.]” EOE Branch Email to Parties, dated July 20, 2022. In particular, the EOE Branch noted:

This approach is consistent with past practice. For example, the EOE Branch continued to administer an inter partes proceeding and issued HQ H315645 despite a concurrent advisory proceeding at the U.S. International Trade Commission (“ITC” or “Commission”) initiated by the same party that requested the ruling under 19 C.F.R. 177.  See HQ H315645 (dated March 11, 2021) at 2, and Certain Moveable Barrier Operator Systems and Components Thereof, Inv. No. 337-TA-1118 (Advisory Proceeding), EDIS Doc. 745751, Initial Advisory Opinion Amending Order No. 44 (Public) at 3-4 (May 24, 2021). Specifically, in that case, respondents from the underlying investigation submitted a ruling on December 15, 2020, and subsequently filed its request for an advisory opinion with the Commission on December 18, 2020.  Id. CBP did not consider that request to present an instance where issuing a ruling was contrary to the sound administration of the Customs and related laws.  Indeed, CBP was able to facilitate legitimate trade by issuing its ruling letter on March 11, 2021, finding that the products at issue were not subject to the exclusion order, which was consistent with the Commission’s subsequent determination on June 23, 2021. See HQ H315645 at 24-5, and 86 Fed. Reg. 34279 (June 29, 2021). 

Id.

On July 27, 2022, Sonos provided its response to the Ruling Request, which included Exhibits A to D (collectively, “Sonos Response”). On August 3, 2022, Google provided its reply to the Sonos Response, which included Exhibits 1 to 3 (collectively, “Google Reply”). On August 10, 2022, Sonos provided its sur-reply, which included an additional declaration (collectively, “Sonos Sur-Reply”) to the Google Reply. On August 15, 2022, in line with the schedule, an oral discussion was held with the EOE Branch. See e.g., EOE Branch email to Parties dated July 20, 2022. The oral discussion was held remotely by video conference, and the parties provided their respective presentation materials to the EOE Branch on August 15, 2022 (hereinafter, “Google Presentation” and “Sonos Presentation”). A rough copy and final copy of the oral discussion transcript were provided to the EOE Branch on August 15, 2022, and August 16, 2022, respectively (hereinafter, the final copy of the oral discussion transcript will be referred to as “Oral Discussion Transcript”). On August 22, 2022, both Google and Sonos provided their post oral discussion submissions (Sonos’s post oral discussion submission additionally included Exhibits F and G) (respectively, “Google Post Discussion Submission” and “Sonos Post Discussion Submission”). On September 6, 2022, Google notified the EOE Branch regarding the Federal Circuit’s recent issuance of INVT SPE LLC v. ITC, No. 2020-1903, 2022 U.S. App. LEXIS 24531 (Fed. Cir. Aug. 31, 2022). See Google Email to EOE Branch, dated September 6, 2022. On September 7, 2022, Sonos provided a response with its views of the case in question. See Sonos Email to EOE Branch, dated September 7, 2022. The Articles at Issue

The articles at issue in the Ruling Request are Google’s Pixel smartphones, tablets, laptops, and other controllers installed with the DUA (“articles at issue”). Ruling Request at 1. Google explains that it released the DUA to help a subset of its consumers set up their Google Assistant-enabled smart-home devices, e.g., Google smart home speakers (“Google Home Devices”) that were “(1) . . . imported before January 6, 2022 and (2) . . . not yet connected . . . to the Internet when Google released the updated firmware[.]” Ruling Request at 7 (citing Exhibit 2 of Ruling Request (“Herman Decl.”), ¶ 24) (emphasis in the original). Specifically, Google notes that the DUA is a new and independent application that “performs just one function: it connects an older Google Home Device to the Internet for the first time [and] [a]fter that, most Google Home Devices (other than very old devices that are no longer supported) should download a firmware update, and the consumer will never have to use the DUA again).” Id. (citing Herman Decl. ¶¶ 21-22). Google further clarifies that the DUA and the Google Home application implementing ‘896 NIA No. 2 (“GHA”) that the Commission previously found not to infringe the asserted claims of the ‘896 patent are two separate applications. Ruling Request at 7.

Google points out that “a user could download the DUA and use it to connect an older Google Home Device running pre-January 6, 2022 firmware without ever downloading the GHA.” Ruling Request at 7-8. Google states that “[i]n particular, when the DUA app is launched, it first requires that the user disconnect the controller device from all WLANs or disable Wi-Fi entirely.” Id. at 11 (citing Jeffay Decl. ¶¶ 15-16, 18-19; Herman Decl. ¶¶ 25-31) (emphasis in the original). Google further emphasizes that “[o]nly after the WLAN connection is disabled or Wi-Fi is turned off does the DUA [[

]] Id. (citing Jeffay Decl. ¶¶ 15-16; 18-19; 39-41; Herman Decl. ¶ 35) (emphasis in the original).




Id.

Google explains that “[t]he same is true even if a user first launches the GHA and then leaves GHA and launches the DUA after being informed that setup cannot be completed using GHA.” Id. at 12. If a user first attempts to set up one of these older Google Home Devices using the GHA (instead of the DUA), the GHA will display the following screen:




See Exhibit 1 to Ruling Request (“Jeffay Decl.”) ¶ 27; see also Google Presentation at 69; see also Ruling Request at 15-16. This screen displays a “Set up Google Home Mini” button on the graphical user interface (“GUI”). Ruling Request at 15-16.

After the user presses the “Set up Google Home Mini” button on the GHA’s GUI and chooses a speaker, “the GHA displays the following screen directing the user to [ ] visit a separate webpage, which in turn instructs the user to download the DUA:”




Ruling Request at 8. If the user downloads and launches the DUA, Google states that “the DUA then begins a separate process – independent of the GHA – to connect the device to a wireless network:”




After a user presses the “Next” button on the DUA “Welcome” screen, the Google controller running the DUA displays a screen that requires the user to disconnect the smartphone or other device running the DUA from all WLANs or disable any Wi-Fi network:





Jeffay Decl. ¶ 15; Herman Decl. ¶ 25; see also Ruling Request at 11-12.

After a user disables any Wi-Fi network and presses the “Done” button, the Google controller running the DUA will display the following “Device Found Screen” screen asking the user if they “[w]ould like to start activation of this device?”:




Jeffay Decl. ¶ 15; Herman Decl. ¶ 25; see also Ruling Request at 17-18.

After the user presses the “Start” button on the “Device Found Screen” screen, the Google controller running the DUA executes program instructions to establish a Bluetooth connection with the Google Home Device and the DUA displays the following “Connect to Wi-Fi” screen:




Jeffay Decl. ¶¶ 36-37.

Once the Google Home Device is connected to the Internet, the DUA instructs the user to leave the DUA, open the GHA and, as shown below, states that the DUA can be deleted if the user does not have other devices that require these extra activation steps. Ruling Request at 9.




Id.

ISSUE

Whether Google has met its burden to show that the articles at issue do not infringe claims 1, 5, 6, and 12 of the ’896 patent, and thus are not subject to the 1191 LEO. See, e.g., Ruling Request at 1.

LAW AND ANALYSIS

Section 337 Exclusion Order Administration

The Commission shall investigate any alleged violation of Section 337 to determine, with respect to each investigation conducted by it under this section, whether there is a violation of this section. See 19 U.S.C. § 1337(b)(1) and (c). If the Commission determines, as a result of an investigation under this section, that there is a violation of this section, it shall direct that the articles concerned, imported by any person violating the provision of this section, be excluded from entry into the United States unless the Commission finds based on consideration of the public interest that such articles should not be excluded from entry. See 19 U.S.C. § 1337(d)(1).

When the Commission determines there is a violation of Section 337, it generally issues one of two types of exclusion orders: (1) a limited exclusion order or (2) a general exclusion order. See Fuji Photo Film Co., Ltd. v. ITC, 474 F.3d 1281, 1286 (Fed. Cir. 2007). Both types of orders direct CBP to bar infringing products from entering the country. See Yingbin-Nature (Guangdong) Wood Indus. Co. v. ITC, 535 F.3d 1322, 1330 (Fed Cir. 2008). “A limited exclusion order is ‘limited’ in that it only applies to the specific parties before the Commission in the investigation. In contrast, a general exclusion order bars the importation of infringing products by everyone, regardless of whether they were respondents in the Commission's investigation.” Id. A general exclusion order is appropriate only if two exceptional circumstances apply. See Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1356. A general exclusion order may only be issued if (1) “necessary to prevent circumvention of a limited exclusion order,” or (2) “there is a pattern of violation of this section and it is difficult to identify the source of infringing products.” 19 U.S.C. § 1337(d)(2); see Kyocera, 545 F.3d at 1356 (“If a complainant wishes to obtain an exclusion order operative against articles of non-respondents, it must seek a GEO [general exclusion order] by satisfying the heightened burdens of §§ 1337(d)(2)(A) and (B).”).

In addition to the action taken above, the Commission may issue an order under 19 U.S.C. § 1337(i) directing CBP to seize and forfeit articles attempting entry in violation of an exclusion order if their owner, importer, or consignee previously had articles denied entry on the basis of that exclusion order and received notice that seizure and forfeiture would result from any future attempt to enter articles subject to the same. An exclusion order under § 1337(d)—either limited or general—and a seizure and forfeiture order under § 1337(i) apply at the border only and are operative against articles presented for customs examination or articles conditionally released from customs custody but still subject to a timely demand for redelivery. See 19 U.S.C. §§ 1337(d)(1) (“The Commission shall notify the Secretary of the Treasury of its action under this subsection directing such exclusion from entry, and upon receipt of such notice, the Secretary shall, through the proper officers, refuse such entry.”); id., at (i)(3) (“Upon the attempted entry of articles subject to an order issued under this subsection, the Secretary of the Treasury shall immediately notify all ports of entry of the attempted importation and shall identify the persons notified under paragraph (1)(C).”).

Significantly, unlike district court injunctions, the Commission can issue a general exclusion order that broadly prohibits entry of articles that violate Section 337 of the Tariff Act of 1930 without regard to whether the persons importing such articles were parties to, or were related to parties to, the investigation that led to issuance of the general exclusion order. See Vastfame Camera, Ltd. v. ITC, 386 F.3d 1108, 1114 (Fed. Cir. 2004). The Commission also has recognized that even limited exclusion orders have broader applicability beyond just the parties found to infringe during an investigation. See Certain GPS Devices and Products Containing Same, Inv. No. 337-TA-602, Comm’n Op. at 17, n. 6, Doc ID 317981 (Jan. 2009) (“We do not view the Court’s opinion in Kyocera as affecting the issuance of LEOs [limited exclusion orders] that exclude infringing products made by respondents found to be violating Section 337, but imported by another entity. The exclusionary language in this regard that is traditionally included in LEOs is consistent with 19 U.S.C. § 1337(a)(1)(B)–(D) and 19 U.S.C. § 1337(d)(1).”).

Moreover, “[t]he Commission has consistently issued exclusion orders coextensive with the violation of Section 337 found to exist.” See Certain Erasable Programmable Read Only Memories, Inv. No. 337-TA-276, Enforcement Proceeding, Comm’n Op. at 11, Doc ID 43536 (Aug. 1991) (emphasis added). “[W]hile individual models may be evaluated to determine importation and [violation], the Commission's jurisdiction extends to all models of [violative] products that are imported at the time of the Commission’s determination and to all such products that will be imported during the life of the remedial orders.” See Certain Optical Disk Controller Chips and Chipsets, Inv. No. 337-TA-506, Comm’n Op. at 56–57, USITC Pub. 3935, Doc ID 287263 (July 2007).

Patent Infringement

Determining patent infringement requires two steps. Advanced Steel Recovery, LLC v. X-Body Equip., Inc., 808 F.3d 1313, 1316 (2015). The first is to construe the limitations of the asserted claims and the second is to compare the properly construed claims to the accused product. Id. To establish literal infringement, every limitation recited in a claim must be found in the accused product whereas, under the doctrine of equivalents, infringement occurs when there is equivalence between the elements of the accused product and the claimed elements of the patented invention. Microsoft Corp. v. GeoTag, Inc., 817 F.3d 1305, 1313 (Fed. Cir. 2016). One way to establish equivalence is by showing, on an element-by-element basis, that the accused product performs substantially the same function in substantially the same way with substantially the same result as each claim limitation of the patented invention, which is often referred to as the function- way-result test. See Intendis GmbH v. Glenmark Pharms., Inc., 822 F.3d 1355, 1361 (Fed. Cir. 2016). As for the first step above, “claim construction is a matter of law.” SIMO Holdings, Inc. v. H.K. uCloudlink Network Tech., Ltd., 983 F.3d 1367, 1374 (Fed. Cir. 2021). Moreover, the ultimate construction of a claim limitation is a legal conclusion, as are interpretations of the patent’s intrinsic evidence (the patent claims, specifications, and prosecution history). UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 822 (Fed. Cir. 2016) (citing Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841, 190 L. Ed. 2d 719 (2015).14

“Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “In some cases, the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges.” Id. at 1314. In others, courts look to public sources such as “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.

“To begin with, the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314 (“To take a simple example, the claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). The context in which a claim term is used also includes the full chain of dependence as well as the remaining suite of claims and the written description. See Inline Plastics Corp. v. EasyPak, LLC, 799 F.3d 1364, 1371 (Fed. Cir. 2015) (“Since the specification explicitly mentions the ‘alternative’ . . . there can be no debate concerning the application of the doctrine of claim differentiation.”).

The second step to establish infringement involves a comparison of the claims, as properly construed, to the accused product, which is a question of fact. Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1040 (Fed. Cir. 2016) (en banc).

Infringement Analysis

The infringement question related to the articles at issue centers on claim 1 of the ‘896 patent and more specifically, the claim limitations emphasized below:

[1.0] A computing device comprising:

[1.1] a user interface;

[1.2] a network interface;

[1.3] at least one processor;

[1.4] a non-transitory computer-readable medium; and program instructions stored on the non-transitory computer-readable medium that, when executed by the at least one processor, cause the computing device to perform functions comprising:

[1.5] while operating on a secure wireless local area network (WLAN) that is defined by an access point, (a) receiving, via a graphical user interface (GUI) associated with an application for controlling one or more playback devices, user input indicating that a user wishes to set up a playback device to operate on the secure WLAN and (b) receiving a first message indicating that a given playback device is available for setup;

[1.6] after receiving the user input and receiving the first message, transmitting a response to the first message that facilitates establishing an initial communication path with the given playback device, wherein the initial communication path with the given playback device does not traverse the access point;

[1.7] transmitting, to the given playback device via the initial communication path, at least a second message containing network configuration parameters, wherein the network configuration parameters comprise an identifier of the secure WLAN and a security key for the secure WLAN;

[1.8] after transmitting at least the second message containing the network configuration parameters, detecting an indication that the given playback device has successfully received the network configuration parameters; and

[1.9] after detecting the indication, transitioning from communicating with the given playback device via the initial communication path to communicating with the given playback device via the secure WLAN that is defined by the access point.

See Ruling Request at 10-11.

To start, there is no dispute that the articles at issue would not infringe the asserted claims of the ‘896 patent if only the DUA were installed. Similarly, if a Google controller only had installed the GHA implementing ‘896 NIA No. 2, which the Commission already determined not to infringe, there would likewise be no dispute, for purposes of this inter partes proceeding, that the articles at issue would be non-infringing. See e.g., Sonos Response at 7 (“If all Google did was implement ‘896 NIA No. 2 in its new Google Home app [[ ]] there would be no dispute because the Commission’s LEO carves out that redesign.”) and at 12 (“Sonos does not contend that the Device Utility app, alone, includes all the instructions necessary to infringe claim 1.”); see also Google Reply at 2. Rather, the admissibility question in this proceeding centers on whether the articles at issue infringe when both the DUA and the GHA are installed on a Google controller. See Sonos Response at 1 (“The question is whether a computing device with bot[h] the new Google Home app and also the Device Utility app has stored in it memory instructions that, if executed, would perform the functions described in claim 1.”) (emphasis in the original). This factual context regarding the controller’s operation is presented when a user first launches the GHA and then, after leaving the GHA, launches the DUA after being informed that setup cannot be completed using the GHA. See e.g., Google Post Oral Discussion Submission at 9. Accordingly, this ruling analyzes the infringement question from that factual context and addresses the party’s respective arguments on this point.

Google argues that limitations 1.5(a), 1.5(b), and 1.6 are not met regardless of whether the DUA is analyzed alone or in conjunction with the GHA. Ruling Request at 10. In support, Google provided, inter alia, the following chart, which Google states contains “an overview of key claim limitation missing from the DUA alone and from a combination of the DUA and GHA[.]” Id.





Ruling Request at 10-11.

Sonos responds that “the Commission already determined that the instructions in the new Google Home and Device Utility apps meet the limitations of claim 1” as “[a]ll Google has done is divide the instructions that the Commission found infringe from one application (the legacy Google Home app) to two applications (the new Google Home and Device Utility apps) [b]ut, between the two apps, the exact same infringing instructions remain.” Sonos Response at 3 (emphasis in the original). Sonos concludes that, as a result, CBP is bound by the Commission’s determination and the articles at issue are subject to exclusion. Id. at 3-10. Additionally, Sonos, as detailed in the respective sections below, argues that even if CBP were to consider Google’s noninfringment arguments, they should be rejected. Id. at 10. As Sonos argues that the Commission’s findings in the underlying investigation conclusively resolve the admissibility question in this investigation, we turn to that argument first.

Sonos’s Initial Argument Concerning the Commission’s Underlying Determination

As a preliminary matter, Sonos argues that “the Commission already determined that the instructions in the new Google Home and Device Utility apps meet the limitations of claim 1”. Sonos Response at 3. As indicated above, from Sonos’s perspective “[a]ll Google has done is divide the instructions that the Commission found infringe from one application (the legacy Google Home app) to two applications (the new Google Home and Device Utility apps) [b]ut, between the two apps, the exact same infringing instructions remain.” Id. (emphasis in the original). To help illustrate this point Sonos provided the following graphic:




Sonos Sur-Reply at 4 (citing Exhibit E to Sonos Sur-Reply (“Weissman Sur-Reply Decl.”) ¶ 9). Sonos explains that “the Commission found that a computing device installed with the Legacy Google Home app infringes because its memory stores all of the infringing instructions (shown in green) and that a computing device with the new Google Home app does not infringe because . . . it lacks . . . limitation 1.7 (shown in red).” Id. at 3. However, Sonos argues, Google simultaneously released the DUA that does practice limitation 1.7 and thus “a computing device with both the new Google Home and Device Utility apps includes all the instructions from the Legacy Google Home app that the Commission found met limitations 1.5 through 1.9.” Id. at 4. Therefore, Sonos concludes that the articles at issue infringe “for precisely the same reason that the Commission previously held [and] Customs is bound by that determination.” Sonos Response at 3. Sonos further adds that claim 1 is an apparatus claim, not a method claim, thus “Google computing devices with the new Google Home and Device Utility apps infringe regardless of whether those devices ‘perform’ the instructions.” Id. at 10 (citing Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197, 1204 (Fed. Cir. 2010) (“Finjan”) and Weisman Decl. ¶ 9).

Google, on the other hand, argues that “[t]he Commission never addressed the combination of the GHA and DUA [and that] the GHA and DUA are fundamentally different products than the original Google Home App analyzed by the Commission and have fundamentally different design and operation.” Google Reply at 3. Google asserts that while Sonos argues that the instructions appear superficially similar, what matters is how each app uses those instructions. Google Reply at 5 (citing Jeffay Reply Decl. ¶ 15). Google explains that “it is necessary to consider all relevant software and compare the sequence of steps implemented by that software against the full sequence of steps required by the ‘program instructions’ of ‘896 patent claim 1.” Jeffay Reply Decl. ¶ 15. Google notes as an example that “Sonos argues that the GHA includes the legacy Google Home app instructions to display the same Device Found Screen [but] [a]lthough Sonos relied on those instructions for its infringement allegations against the original Google Home App, Sonos does not do so for the new GHA even though that screen also exists in the new GHA . . . because, if the GHA displays its Device Found Screen, then it will transmit the identifier and security key in separate messages, and there is thus no infringement[.]” Google Reply at 5 (citing Sonos Response at 16 and Jeffay Reply Decl. ¶ 16-18) (internal quotations omitted). Instead, Google points out, that “Sonos now relies on an entirely different screen in the GHA for the ‘user input’ limitation than it argued at the ITC.” Id. (citing Sonos Response at 16) (emphasis in the original). Google states that “Sonos does not and cannot allege that the same instructions in the GHA still ‘meet limitation 1.5[a].’” Id. at n. 6.

Additionally, while Google agrees that claim 1 is an apparatus claim, Google notes that “this is inapposite and does not negate the ‘sequence of steps’ required by claim 1 under the Commission’s construction – the Federal Circuit routinely construes apparatus claims like claim 1 of the ‘896 patent, to require an order of steps and does so when the plain meaning of the claims requires one.” Google Reply at 4 (citing Oak Tech, Inc. v. Int’l Trade Comm’n, 248 F.3d 1316, 1325 (Fed. Cir. 2001); Wi-Lan, Inc. v. Apple, Inc., 811 F.3d 455, 462 (Fed. Cir. 2016); Nazomi Comm’cns, Inc. v. Nokia Corp., 739 F.3d 1339, 1345 (Fed. Cir. 2014); Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1314–15 (Fed. Cir. 2013)). Therefore, Google concludes that “to infringe claim 1, a product must still include ‘program instructions. . . that, when executed by the at least one processor, cause the computing device to perform’ the sequence of steps recited in limitations [1.5]-[1.9].” Id. at 4-5 (citing Jeffay Reply Decl. ¶ 14).

The Commission has not yet addressed, either in the underlying investigation or the ongoing modification proceeding referenced above, the question presented by the Ruling Request, namely whether Google’s Pixel devices installed with the DUA and operating in combination with the GHA infringe the asserted claims of the ‘896 patent. Indeed, the DUA was not at issue in the underlying investigation and represents new functionality, such that it could not have been addressed in the underlying investigation. See, e.g., Comm’n Op. at 12; see also HQ H324813 at 2. Moreover, as Google points it, “Sonos now relies on an entirely different screen in the GHA for the ‘user input’ limitation than it argued at the ITC” even though the program instructions that Sonos relied on for its infringement allegations in the underlying investigation for this limitation are allegedly still present in the articles at issue with the GHA. Google Reply at 5 (emphasis in the original).

While the parties appear to dispute whether limitations 1.7, 1.8 and 1.9 require a sequence of steps and, if so, whether the articles at issue perform those steps in order, the parties do not appear to dispute that, consistent with the Commission’s finding, limitations 1.5 and 1.6, require a sequence of steps. FID at 150; see also Oral Discussion Transcript at 100-101:23-6 (“The Commission construed the sequence of Limitations 1.5 and 1.6. That was the sequence of events that the Commission – that was raised in claim construction and the Commission addressed. And we’ve [Sonos] never disputed that Limitation 1.6 would occur after Limitation 1.5”). As our analysis below is centered on limitations 1.5 and 1.6, we need not consider whether 1.7, 1.8 and 1.9 include a sequence of steps. Further, Finjan, as Google noted, is distinguishable from the present case as (discussed in greater detail below) there is no code in the GHA or DHA that when “unlock[ed]” and “when executed” would cause the articles at issue to perform the sequence of steps required at least in limitations 1.5 and 1.6 of claim 1. Google Post Oral Discussion Submission at 6. Moreover, as Google identified, the recent INVT SPE LLC v. ITC, No. 2020-1903, 2022 U.S. App. LEXIS 24531 (Fed. Cir. Aug. 31, 2022) provides further confirmation that “proof of reasonable capability of performing claimed functions requires, at least as a general matter, proof that an accused product—when put into operation—in fact executes all of the claimed functions at least some of the time or at least once in the claim-required environment.” Id. at *33; see also Google Email to EOE Branch, dated September 6, 2022. While as Sonos stated in its reply that the burden remains on Google, as discussed below, we find that Google has met this burden.

Google’s Non-Infringement Arguments Concerning Whether There is (a) “A Response to the First Message” as Required by Limitation 1.6 and (b) the “User Input” as Required by Limitation 1.5(a)

Google argues that limitations 1.5 and 1.6 in claim 1 of the ‘896 patent are not met. See e.g., Ruling Request at 10-21. Sonos disagrees. See e.g., Sonos Response at 10-11. In addressing these limitations, the parties generally addressed limitations 1.5(b) and 1.6 in conjunction and limitation 1.5(a) separately. We follow that approach in the analysis below.

Limitations 1.5(b) and 1.6 of the ‘896 Patent and Whether the Message Transmitted by the DUA that Facilitates Establishing an Initial Communication Path is a “Response” to the First Message Received by the GHA

With respect to limitations 1.5(b) and 1.6, Google states that, “[e]ven if the GHA receives the claimed ‘first message,’ no information is passed from the GHA to the DUA, so the DUA cannot transmit ‘a response to the first message’ received by the GHA.” Id. at 11 (emphasis in the original). Google also provides the graphic below:

[[ ]]

Google Post Oral Discussion Submission at 10. Google explains that [[

]] Id. Instead, Google notes that “the DUA ensures that the articles at issue are not connected to any WLANs, [[

]].’” Id. (fourth alteration in the original).

Sonos argues that “Google improperly focuses on the apps in isolation to argue that its new Device Utility app, alone, does not meet limitation 1.5[b] and the new Google Home app, alone, does not meet limitation 1.6.” Sonos Response at 20. Sonos states that limitation 1.5[b] is met through the GHA, namely Sonos points to the screenshot below of the GHA, which Sonos explains shows that “while operating on the secure WLAN the computing device has received a message indicating that a playback device (here, a Google Home Mini) is available for setup [and] [i]t is because the computing device has received that message that it can display the option to ‘Set up Google Home Mini.’” Id. at 20-21.




Id. at 21 (citing Weissman Decl. ¶ 65).

With respect to limitation 1.6, Sonos argues that the DUA alone satisfies this claim limitation. Sonos Response at 22. Sonos points out that “[t]he only dispute is Google’s argument that the message transmitted by the Device Utility app that facilitates establishing an initial communication path is not a ‘response’ to the first message received by the new Google Home app that indicates a given playback device is available for setup.” Id. (citing Ruling Request at 12). Sonos argues that this limitation is met because the DUA’s message is sent in “response” to the first message received by the GHA. More specifically, Sonos states that “the new Google Home app receives an indication that the user wants to set up a playback device (for example, a Google Home Mini) and if the new Google Home [app] cannot, itself, respond to that message (because it cannot set up that device) then it causes the Device Utility app to respond and facilitate the initial communication path.” Id. (citing Weissman Decl. ¶ 72).

Thus, for limitation 1.6, as referenced in Google’s graphic above from the Google Presentation and Google Post Oral Discussion Submission, the primary question is, assuming arguendo, the “first message” is the message received by the GHA from the Google Home Device (e.g., “Message 6”), then whether the message later sent from the DUA (e.g., [[ ]]) that facilitates establishing the initial communication path with the given playback device is “a response to” “Message 6” (in which case limitation 1.6 is met) or [[ ]] (in which case limitation 1.6 is not met). For the reasons below, we find that Google has shown that the articles at issue do not meet limitation 1.6 because the message from the DUA that facilitates establishing the initial communication path is [[ ]] and not the message from the Google Home Device to the GHA.

The parties seem to agree that, for claim construction purposes, “response” should be given its plain and ordinary meaning. See Oral Discussion Transcript at 154: 13-24 (Sonos states, “[T]he plain and ordinary meaning should control; and that the plain and ordinary meaning does not require a direct response, it doesn’t require knowledge of the actual input itself. What it requires is you receive [ ] a first message, and that causes something to happen, and that something that happens is transmitting a response that facilitates establishing the initial communication path.”); see also id. at 182: 17-20 and 183: 11-17 (where Google states, “Just to be clear, our noninfringement position is also based on what we believe the plain and ordinary meaning of the claim is” and “our position is that the plain and ordinary meaning of the claims, read in the context of the claim language themselves and the specification, require transmitting a response to that first message received from – received by the computing device.”). However, the parties disagree as to whether, for the articles at issue, the message transmitted by the DUA that facilitates establishing an initial communication path is a “response” to the first message received by the GHA indicating that a given playback device is available for setup. We agree with Google that it is not.

While, as Sonos notes, there is no dispute that “a device theoretically could send intervening messages between the time the device receives a first message and sends out the response[,]” that does not necessarily mean, as Google notes, that merely because B occurs after A, B must be a response to A as “there must still be a first message and a response to that message.” See Sonos Sur-Reply at 17 (citing Google Reply at 8); see also Google Reply at 8 (citing Jeffay Reply Decl. ¶ 27 (“A ‘response’ to a message must respond to that specific message.”) (emphasis in the original). As Google points out, “a user could download the DUA and use it to connect an older Google Home Device running pre-January 6, 2022 firmware without ever downloading the GHA.” Ruling Request at 7-8 (emphasis added). In other words, “Message 6” or the alleged first message from the Google Home Device to the GHA is not a required prerequisite for the [[ ]] or any message later sent from the DUA that facilitates establishing the initial communication path with the given playback device. Put another way, whether or not there is an alleged first message from the Google Home Device to the GHA has no impact on any message later transmitted from the DUA that facilitates establishing the initial communication path with the given playback device. See e.g., Google Post Oral Discussion Submission at 10 (“The alleged chain of steps does not change the nature of the DUA or its response message . . . the [[ ]]). In fact, the parties do not dispute that [[

]] Jeffay Reply Decl. ¶ 31; see also Oral Discussion Transcript at 138:12-15 (Sonos states, “And I don’t believe we disagree with Google that there is [[ ]].”).

Nevertheless, Sonos argues that this is not required as “the claim doesn’t limit itself to the same application sending the response or that it be sent in a particular manner.” Oral Discussion Transcript at 138:15-19. Sonos suggests that it is the human user that passes the alleged “first message”, i.e., the message from the Google Home Device to the GHA, to the DUA. Id. at 141-142: 11-8. We disagree. While seemingly the actions of the human user, i.e., eventually downloading the DUA, may have been caused by the message from the Google Home Device to the DHA; importantly, still no information in that alleged “first message” is passed through the human user to the DUA (e.g., there is not a code or parameter contained in the alleged “first message” that is passed through the human user to the DUA). This is consistent with the specification of the ‘896 patent, particularly as Google notes, Figure 3B of the ‘896 patent which shows the sequence of messages exchanged between a claimed “computing device” (CP) and a claimed “playback device” (ZP):




Google Reply at 9; see also, Jeffay Reply Decl. ¶ 28. Google explains that “[t]he AckNetParams message is not described as a response to the QueryNetParams message, despite being sent after the QueryNetParams message in the chain of events shown in Figure 3B.” Id. (citing Jeffay Reply Decl. ¶¶ 28-30). Rather, “[t]he ‘AckNetParams’ message is ‘a response to the SetNetParams messaging,’ and this ‘response indicates that the SetNetParams message was received and that the network configuration contained therein has been successfully applied. The response includes at least a zpUUID and a tid.’” Id. (citing ‘896 patent at 13:38-42).

Thus, while arguably in some instances, the alleged first message from the Google Home Device to the GHA may happen in time before any message transmitted by the DUA that facilitates establishing the initial communication path with the given playback device, that fact alone, does not automatically make any message transmitted later in time “a response to” the alleged first message. See also Oral Discussion Transcript at 141: 7-14 (Sonos stating “And if that were the situation, I wouldn’t necessarily disagree [that it’s not transmitting a response], if John never receives any information and his actions aren’t caused by the message.”). Indeed here, we find that the message from the DUA that facilitates establishing the initial communication path is [[

]] and not the alleged first message from the Google Home Device to the GHA. As Google has shown throughout its submissions, the DUA receives no information from the GHA (e.g., [[ ]]); the DUA may be used without ever downloading the GHA; and the DUA operates the same way regardless of whether the GHA was or was not previously launched or even downloaded. Accordingly, any message from the DUA that facilitates establishing the initial communication path cannot be “a response to” the alleged first message from the Google Home Device to the GHA when the DUA [[ ]] See Google Post Oral Discussion Submission at 12 ([[ ]]).

In light of the above, we find that the message from the DUA that facilitates establishing the initial communication path is not “a response to” the alleged “first message” from the Google Home Device to the GHA. As such, we find that the articles at issue do not meet at least limitation 1.6 in claim 1 of the ‘896 patent, we find that claim 1 of the ‘896 patent is not infringed. See e.g., Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1535 (Fed. Cir. 1991) (“[T]he failure to meet a single limitation is sufficient to negate infringement of the claim”). Further, as the remaining asserted claims of the ‘896 patent depend from claim 1 (the only independent claim at issue), we find that Google has met its burden to show that the articles at issue do not infringe the asserted claims of the ‘896 patent. See e.g., Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1365 (Fed. Cir. 2019) (quoting Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989) (“One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim.” (citing Teledyne McCormick Selph v. United States, 558 F.2d 1000, 1004, 214 Ct. Cl. 672 (Ct. Cl. 1977)))).

Limitation 1.5(a) of the ‘896 Patent and Whether the “Set Up Google Home Mini” GUI Element from the GHA is the Claimed “User Input”

While we have found that the articles at issue do not infringe claim 1 of the ‘896 patent because limitation 1.6 is not met, we additionally address the parties dispute related to limitation 1.5(a). As above, the only dispute with respect to limitation 1.5(a) is whether the articles at issue, with both the DUA and GHA installed, practice limitation 1.5(a). More specifically, the parties primarily disagree as to whether the following “Set Up Google Home Mini” GUI element from the GHA meets limitation 1.5(a) in claim 1 of the ‘896 patent. See e.g., Ruling Request at 15; Sonos Response at 14-15.




Id. For the reasons below, we find that Google has met its burden to show that the articles at issue additionally do not meet limitation 1.5(a). Google states that the “Set Up Google Home Mini” GUI element from the GHA is not the “claimed ‘user input’ … because that GUI element does not ‘indicat[e] that a user wishes to set up a playback device to operate on the secure WLAN,’ as required by claim 1.” Ruling Request at 15 (alteration in the original) (emphasis in the original). Google explains that “because clicking on the ‘Set up Google Home Mini’ button does not indicate that the user wishes to set up the Google Home Mini to operate on the same WLAN that the Pixel device with the GHA is already operating on” because “press[ing] the ‘Set up Google Home Mini’ button … does not provide to the Pixel an objectively verifiable indication of the user’s wishes[.] ” Google Reply at 13; see also Google Post Oral Discussion Submission at 16. As Google explains, “[t]here are a variety of different reasons for a user to press the ‘Set up Google Home Mini’ button.” Google Post Oral Discussion Submission at 16. Further, Google notes that “[t]he user can hit the ‘Set up Google Home Mini’ button because the user wishes to set up the playback device to operate on a different secure WLAN or even an unsecure WLAN.” Google Reply at 13-14; see also Jeffay Decl. ¶ 45. Google provides the following slide describing several different reasons a user could press the “Set up Google Home Mini” button:

[[ ]] Google Presentation at 73. Furthermore, Google argues that “none of the evidence that the Commission relied on for infringement of the ‘user input’ limitation based on the ‘Device Found Screen’ in the original Google Home App, including the source code, applies to Sonos’ new infringement theory here.” Google Reply at 14. Google explains “there are no instructions and no code (nor any other evidence) to substantiate Sonos’ [] allegation that the GHA somehow ‘assume[s]’ the user wishes to set up the playback device on the same Wi-Fi network in response to a user selection of the ‘Set up Google Home Mini’ UI button.” Id. (emphasis in the original).

Sonos disagrees and asserts that “[t]he new Google Home app meets limitation 1.5[a] for the same reason as the legacy Google Home app” because “[i]t is ‘designed to assume the user wishes to set up the playback device on the same Wi-Fi network.’” Sonos Response at 18; see also Weissman Decl. ¶¶ 51-54. In support, Sonos provided the following annotated graphic and states that “[a]s shown below, while the computing device is operating on the secure WLAN (as indicated by the wifi symbol in the upper right corner) the new Google Home app’s instructions cause the computing device to be able to receive via its graphical user interface a user input indicating that the user wishes to set up a playback device to operation on the secure WLAN. In this example, that is the user touch (shown by the white dot) on the ‘Set up Google Home Mini’ button shown in the new Google Home app:”




Sonos Response at 14-15 (citing Weisman Decl. ¶ 40).

Google concludes that Sonos’s argument “is belied by the CALJ’s reasoning in the 1191 Investigation when analyzing whether the Original Google Home App ‘assume[s] that the user wishes to set up the playback device on the same Wi-Fi network. . . when a user selects ‘Yes’ on the Device Found Screen.’” Ruling Request at 16 (citing FID at 158). In the underlying investigation, the CALJ found “that claim limitation 1.5[a] is met when a user selects ‘Yes’ on the Device Found Screen.” FID at 158. An image of the Device Found Screen that contains the functionality that satisfies limitation 1.5(a) in the underlying investigation is shown below:


Id. at 154.

The CALJ explained that “the ’896 Accused Products are designed to assume that the user wishes to set up the playback device on the same Wi-Fi network.” Id. at 158. The CALJ further explained that “[t]his is confirmed by three pieces of evidence.” Id. “First, in the ‘Connect to Wi-Fi Screen,’ the Wi-Fi network that the ’896 Accused Product was connected to when the user clicked ‘Yes,’ on the Device Found screen is preselected.” Id. “[T]he Google Home app [[ ]] and highlights the network on this screen. Id. “Second, Google’s

instructions provide evidence that the ‘user input’ occurs once the user selects ‘Yes,’ on the Device Found Screen”:




Id. at 159. “Third, if a user adds a device to a Wi-Fi network that is different from the Wi-Fi network that the Google Home app device was using prior to starting the setup process, the Google Home app will ask whether a user wants to switch the Google Home app device to the same network that the smart speaker was setup on.” Id. at 159-160 (quotations omitted). The CALJ explains that “[a] user does not receive this message if the user follows Google’s setup instructions and connects the Google Home speaker to the Wi-Fi network fetched after a user selects ‘Yes’ in the Device Found screen.” Id. at 160. Here, Google has demonstrated that pressing the “Set Up Google Home Mini” button does not assume the user wishes to set up the playback device on the same Wi-Fi network. As Google has shown, there are a variety of different reasons a user could press the “Set Up Google Home Mini” button on the GHA and pressing the “Set Up Google Home Mini” button does not cause the GHA to [[ ]] and pre-select the WiFi network of the computing device for the user on a subsequent screen). Google Post Oral Discussion Submission at 15-16, 18.

While Sonos argues that “claim 1 of the ‘896 Patent does not require the user to explicitly indicate his or her wish to set up an audio player on the same WiFi network to which the computing device is connected[,]” unlike the ‘896 accused products found to infringe at the Commission, there is no similar assumption for the articles at issue that the user wishes to set up the playback device on the same Wi-Fi network as there are a variety of different reasons a user could press the “Set Up Google Home Mini” button on the GHA. See Sonos Response at 18; Google Post Oral Discussion Submission at 15-16. Moreover, while in the underlying investigation the CALJ noted that [[

]]; here, as Google noted, “as evident from the GHA’s source code, [[ ]] Ruling Request at 16 (citing Jeffay Decl. ¶ 29; Herman Decl. ¶¶ 9-12). This fact appears to be undisputed. Further, Google notes that “[i]f it turns out that the particular Google Home Device requires setup via the DUA[], then the GHA never presents the user an opportunity to press ‘Yes’ in the Device Found screen . . . and the code cited by Sonos and the CALJ in the ITC proceeding to support their infringement theory is never executed.” Id. (citing Herman Decl. ¶¶ 15-18). Accordingly, we find that the articles at issue do not satisfy limitation 1.5(a) when pressing the “Set Up Google Home Mini” button. Google Has Presented a Prima Facie Case That the Articles at Issue Do Not Meet Limitation 1.5(a) Under the Doctrine of Equivalents

Sonos argues that “the instructions of the new Google Home app meet limitation 1.5[a] under the doctrine of equivalents.” Sonos Response at 16. Specifically, Sonos argues “[t]here is no substantial difference between the two screens relevant to limitation 1.5[a] and both screens perform substantially the same function (receiving a user input indicating a user wishes to set up a playback device to operate on the secure WLAN) in substantially the same way (via a touch to the graphical user interface) to achieve substantially the same result (the computing device knows the playback device to be set up).” Sonos Response at 17-18; see also Weissman Decl. ¶ 49.

In CBP HQ H284032 (dated April 7, 2017), CBP established the standard for applying the doctrine of equivalents when administering an exclusion order under section 337: CBP will not extend the doctrine of equivalents when administering an exclusion order pursuant to section 337 except in two instances. The first is where the Commission found a violation of section 337, during the underlying investigation, through infringement under the doctrine. The second is, in those cases when the Commission has found only literal infringement of the asserted patents, where a respondent identified in an exclusion order fails to show a prima facie case that the doctrine does not apply to its new or modified article under the “function-way-result” or “insubstantial differences” test based on the administrative record before CBP. HQ H284032 at 26. As the parties acknowledge, “the Commission did not find a violation of Section 337, during the underlying investigation, through infringement under the DOE with respect to the ‘user input’ limitation.” Google Post Oral Discussion Submission at 17-18; Sonos Post Oral Discussion Submission at 13 (“Admittedly, the first circumstance does not apply because the Commission did not find infringement under the doctrine of equivalents in the underlying Investigation.”); see also FID at 161. Thus, CBP will consider the issue under the second prong for the standard noted above. For a party to establish “a prima facie case,” it is not required to reach “a conclusion on the ultimate issue.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1348 (Fed. Cir. 2012). Instead, the party with such a burden must simply “present evidence ‘sufficient to establish a fact or raise a presumption [regarding the relevant issue] unless disproved or rebutted.’” Id. (quoting Black’s Law Dictionary (9th ed 2009)). We find that Google has shown a prima facie case that the doctrine of equivalents does not subject the articles at issue to exclusion from entry.

Google states that the “Set up Google Home Mini” button is not “functionally equivalent” to the “Yes” button that the ITC found met the “user input” limitation. Google Post Oral Discussion Submission at 18. Google explains that “pressing the ‘Set up Google Home Mini’ button does not cause the GHA to set up any particular device and does not [[ ]], while pressing the ‘Yes’ button causes the GHA to connect to a specific device and [[ ]].” Google Post Oral Discussion Submission at 18. To illustrate this point, Google provides the following slide describing the functionality of both the accused “Set up Google Home Mini” button and the “Yes” button that the Commission found to practice limitation 1.5(a):

[[ ]] Google Presentation at 86. Further, Google argues that “the function of the ‘Set up Google Home Mini’ UI element is to provide a UI shortcut for launching the setup process (independent of any particular playback device or WLAN to be used with that playback device) and its result is to launch device setup (again, independent of any particular playback device or WLAN to be used with that playback device).” Google Reply at 15. Google explains that “[t]his is shown by the fact that, even after the user hits the ‘Set up Google Home Mini’ UI element, the GHA still proceeds with setup from the start and even expressly asks the user what device should be set up (if a device can be set up via the GHA) or instructs the user to visit a webpage for further instructions (if a device requires the DUA for setup). Id.; see also Jeffay Reply Decl. ¶ 52. Google also notes that pressing the “Set up Google Home Mini” button does not perform substantially the same function in substantially the same way as pressing the “Yes” button on the Device Found Screen. Significantly, Google has demonstrated that unlike pressing the “Yes” button on the Device Found Screen, pressing the “Set up Google Home Mini” button does not [[ ]] or [[ ]]. Google Post Oral Discussion Submission at 18.

Sonos disagrees and argues that “Google fail[s] to show a prima facia case that the doctrine [of equivalents] does not apply[.]” Sonos Post Oral Discussion Submission at 13. Sonos further explains that the screen with the “Set Up Google Home Mini” GUI element “is ‘functionally equivalent’ to the ‘Device Setup Screen’ from the legacy Google Home app” because “selecting Set up device is what causes the legacy Google Home app to display the Device Found Screen.” Sonos Response at 17. Sonos argues that “the declaration of [Google’s] own engineer, Mr. Herman, who explained that he had reviewed the processing of a user selection of the ‘Set up Google Home Mini’ chip” (Herman Decl. ¶ 10) and declared that “[t]hese operations are functionally equivalent to a user first selecting the menu symbol (‘+’) in the screen and then selecting ‘Set up device.” Herman Decl. ¶ 12. However, Google disagrees with this characterization and notes that “Mr. Herman was explicitly discussing the ‘+’ button and the ‘Set up Google Home Mini’ button, neither of which is the ‘Yes’ button or functionally equivalent to the ‘Yes’ button.” Google Post Oral Discussion Submission at 19; see also Herman Decl. ¶ 10-12 ([[

]]). To illustrate this point Google provides the following slide that shows the “+” button and “Set up Google Home Mini” button addressed in Mr. Herman’s declaration:

[[ ]]

Google Presentation at 85. Accordingly, in light of the above, we find that Google has shown a prima facie case that the doctrine of equivalents does not apply to the articles at issue under the standard CBP uses to administer Section 337.

IV. HOLDING

We find that Google has met its burden to show that the articles at issue do not infringe claims 1, 5, 6, and 12 of the ‘896 patent. Thus, CBP’s position is that these articles are not subject to the 1191 LEO.

The decision is limited to the specific facts set forth herein. If articles differ in any material way from the articles at issue described above, or if future importations vary from the facts stipulated to herein, this decision shall not be binding on CBP as provided for in 19 C.F.R. §§ 177.2(b)(1), (2), (4), and 177.9(b)(1) and (2).

Under 19 C.F.R. Part 177, CBP may modify or revoke a ruling that has been in effect for less than 60 days by giving written notice of the modification or revocation to the person who received the original ruling. Accordingly, CBP has authority to take appropriate action in response to Google pursuing the options discussed above or if either party seeks reconsideration. See 19 C.F.R. § 177.12.

Sincerely,

Dax Terrill
Chief, Exclusion Order Enforcement Branch

CC: Mr. Bas de Blank
Orrick, Herrington & Sutcliffe LLP
1000 Marsh Road
Menlo Park, CA 94025
[email protected]; [email protected]; [email protected]