Sonos to ITC: Public Interest ‘Does Not Bar’ Google Import Ban

The International Trade Commission should issue its “standard limited exclusion order” (LEO) banning from U.S. import all Google smart speakers and other infringing products “within the scope of the investigation” that found Google guilty of Tariff Act Section 337 violations, said Sonos in redacted Dec. 10 comments posted Wednesday in public docket 337-TA-1191. The ITC should “explicitly identify and carve out” from the import ban any Google products and redesigns not found to have infringed five Sonos multiroom audio patents, said Google’s reply.

Rather than accept the standard remedies that necessarily follow from its infringement, “Google’s games continue,” said Sonos. “Google is fighting tooth and nail to continue to import these infringing devices because consumers want them, and consumers do so in real part because of Sonos’s patented technology.”

The formerly confidential filings are likely the last in the two-year investigation the ITC will see before Jan. 6. That's when the commission is expected to issue a final determination on Chief Administrative Law Judge (CALJ) Charles Bullock’s recommended LEO and imposition of 100% bond on any infringing Google products imported during the "presidential review" period. The Office of the U.S. Trade Representative then can take up to 60 days to affirm or reverse the final determination or take no action at all. Dozens of models of Google Chromecast streaming adapters, Google Home smart speakers and Google Nest connected home devices, plus Pixel smartphones, that are found to infringe the Sonos patents would risk exposure to the import ban.

The ITC would “invite mischief and confusion” by heeding Google’s proposal to carve out noninfringing products and redesigns from its import ban, said Sonos. The commission “has long recognized that were it to exclude or permit the importation of specific model numbers, an unscrupulous respondent could seek to evade the LEO by renaming or mismarking its products,” it said. There's no need for the commission “to attempt to craft an LEO that affirmatively permits the importation of certain redesigns,” it said.

Sonos’ assertions of likely hanky-panky are “unfounded,” said Google, insisting it “will not intentionally violate” the ITC’s remedial orders. Google’s redesigned products “will not include the code or features” the commission found to be infringing, it said. “The purpose of Google’s redesigns is the exact opposite: they remove or disable infringing code and features and replace them with non-infringing code and features.”

The ITC should “reject Sonos’ continued attempt to exclude Google’s non-infringing redesigns,” said Google. “Sonos’ attempt to broaden its patent rights by seeking remedial orders that would exclude Google’s non-infringing redesigns is improper and flies in the face of the public interest.” Granting Sonos the “overbroad relief” it seeks “would deprive the American public of a wide variety of household products that perform countless unaccused functions, many of which implicate vital public interest concerns and are heavily relied upon by U.S. consumers with disabilities,” said Google.

Sonos said Google’s public interest arguments are “meritless.” On the alleged harm the LEO would cause to people with disabilities, said Sonos, “these arguments warp the case law by relying on equitable considerations that have no place in the Section 337 remedies analysis.” Google fails to explain “why voice-controlled smart home devices are as critical for public health as, say, hospital supplies, and why substitute products from other manufacturers would not serve the same supposed public health purpose,” said Sonos. “The public interest does not bar the Commission from issuing an LEO.”

Google and Sonos predictably don’t agree on the 100% bond CALJ Bullock proposed on Google imports, and supported by ITC staff. The commission must impose the bond “to protect Sonos from injury,” said Sonos. Google’s unfair competition injured Sonos “or it would not have spent the last two years litigating against Google in the ITC,” it said. “To this day, Google advertises the infringing features, putting it in direct competition with Sonos by leveraging the technology Sonos invented.”

But Google said the commission should set the bond rate at zero because Sonos’ expert witness “conceded under oath that he did not attempt to calculate a bond rate based on licensing.” That defied commission rules giving complainants the “burden of proof on establishing the amount of any bond,” said Google. “No complainant should be permitted to bury its head in the sand, make no legitimate effort to determine a bond rate, and then benefit from its lack of effort by being awarded a 100% bond rate.”