Google Violated Import Ban in Sonos Patent Case, US Agency Says – Billboard
Written by GRB on 02/07/2022
Google is still ripping off Sonos’ technology — according to U.S. Customs and Border Protection.
In a public ruling issued Tuesday, the CBP found that Google products including Pixel smartphones, tablets and computers that utilize controller technology invented and patented by Sonos were in violation of a ban issued five months ago by the U.S. International Trade Commission. That previous ruling by the U.S. International Trade Commission ruled that Google had infringed five audio technology patents owned by smart speaker maker Sonos and banned the tech giant from importing the infringing products from China.
Several other products that were previously found to have infringed Sonos patents – including Chromecast, Home and Nest audio players – however, were excluded from the latest ruling, meaning Google can continue to import them for sale.
In the International Trade Commission (ITC) ruling issued in January, the court-like federal agency confirmed that Google had redesigned its products to avoid using the Sonos patents and that those updated versions of its products would not be banned from importation. But Tuesday’s ruling makes clear that Google has continued importing products that infringe at least some of those patents.
“It is CBP’s position that the articles at issue are subject to exclusion from entry for consumption,” the ruling states. The ban will not be lifted, the ruling continues, until Google either “disables or renders inoperable” the infringing patented technology from those devices or pursues a licensing agreement with Sonos for that technology.
Sonos has made clear that it prefers the latter option. Prior to the January ruling, the company had fought to prevent Google from being allowed to sell the redesigned products. In a September filing, it warned the ITC that such a ruling would allow Google to continue importing products that infringed its patents by making only “trivial software changes.”
Following the January ruling, Sonos chief legal officer Eddie Lazarus changed tack a bit, noting that Google could continue selling its revamped products without using Sonos’ patents but warned that doing so would “degrade or eliminate product features” and “sacrifice consumer experience.” He instead urged Google to “pay a fair royalty for the technologies it has misappropriated.”
In its own response to the January ruling, Google claimed it had updated its product designs to cease infringing Sonos’ patents but charged that the smart speaker maker’s original claims were “frivolous.”
“While we disagree with today’s decision, we appreciate that the International Trade Commission has approved our modified designs,” said Google spokesperson José Castañeda at the time. “We will seek further review and continue to defend ourselves against Sonos’ frivolous claims about our partnership and intellectual property.”
But Tuesday’s ruling shows that Sonos wasn’t satisfied that that was the case; according to the document, the company contacted the CBP on March 24, 2022, with claims that Google was continuing to import infringing products. Over the next two months, both Sonos and Google went back and forth with the agency in attempts to resolve the issue, but ultimately it was found that Google did not satisfy the terms required by the ITC ruling in January.
In reaction to the latest ruling, Lazarus said in a statement that the “US Customs Service confirmed that Google was flouting the importation ban and continuing to import infringing products in violation of that ban. This finding marks yet another example of Google continuing to misuse our intellectual property and acting in wholesale disregard of the law. We remain committed to defending our IP and will continue to do so, on behalf of our own technology, as well as the broader innovation landscape.”
Google did not immediately respond to Billboard’s request for comment.
Sonos first sued Google for infringing its patents in January 2020, claiming that Google gained access to those patents via a 2013 partnership through which Sonos integrated Google Play Music into its products. In the same suit, Sonos claimed that Google had also engaged in predatory pricing practices by subsidizing the alleged infringing products, allowing the tech giant to sell them at lower price points.
Tuesday’s CBP ruling applies to just one case involving Sonos’ broader patent dispute against Google. Two separate federal lawsuits are also working their way through the courts, one of which deals with a completely different set of patents.