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Law360, San Francisco (November 19, 2020, 7:25 PM EST) — Sonosand Googleexchanged allegations of forum-shopping before a California federal judge Thursday, with Sonos arguing that Google’s “bare bones” patent suit over speaker technology belonged alongside Sonos’ own complaint in Texas, while Google accused Sonos’ lawyers of “talking out of both sides of their mouth.”
The California-based technology companies, which each allege patent infringement against the other, both told U.S. District Judge William Alsup during a hearing Thursday that they’re not forum shopping.
Sonos’ attorney Clement S. Roberts of Orrick Herrington & Sutcliffe LLPslammed Google’s “bad faith” complaint seeking declaratory judgment of patent non-infringement, saying that Google only filed suit to gain a procedural advantage. Roberts urged the judge to dismiss or transfer Google’s suit to the Western District of Texas, arguing that its dismissal bid is not “some attempt to engage in forum shopping” as alleged by Google.
Rather, Roberts said, Sonos seeks to have the case heard in the Western District of Texas because it is one of the only districts in the country still holding patent trials amid the novel coronavirus pandemic.
Judge Alsup expressed his disbelief that Texas is continuing to hold patent trials despite the “dramatic surge” in COVID-19 deaths and infections in that state.
Google’s attorney, Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan LLP, argued that jury trials are on hold in the Northern District of California because the state of California wants to protect its citizens from contracting COVID-19. If the case is transferred to Texas, witnesses and attorneys will be required to travel to Texas, risking their lives by traveling during the pandemic, Verhoeven said, noting that California and federal guidelines advise against traveling.
But Verhoeven also argued that Sonos really wants the case transferred to the Western District of Texas because that district, and Waco, Texas, in particular, is “the new hot spot for the plaintiffs bar to file patent cases.” Noting the explosion of patent cases filed in that district over the last year or so, Verhoeven said, Sonos’ filing in Waco is “obvious forum shopping” and that Google has a right to file an anticipatory suit to prevent such behavior.
The dispute between Sonos and Google — who teamed up on projects over the years — kicked off at the beginning of 2020 when Sonos filed an infringement suit in California federal court alleging Google had been ripping off its wireless speaker designs for years. At the same time, Sonos asked the U.S. International Trade Commissionto launch an unfair competition investigation, which the ITC agreed to do.
Then, in June, Google slapped Sonos with a countersuitin California, claiming that Sonos is actually infringing Google’s intellectual property. The judge assigned to that case trimmed Google’s suit, finding that one of Google’s notification patents couldn’t pass muster under the U.S. Supreme Court‘s 2014 Alice ruling. Google also filed patent lawsuits against Sonos in Canada, the Netherlands, France and Germany.
Sonos expanded the patent disputeto the Western District of Texas in September, when it filed additional patent infringement claims against the tech giant.
On Thursday, Google asked the Texas federal judge overseeing that case to toss Sonos’ second patent infringement suit, saying that the California action came first.
Waco’s importance as an IP venue grew following the U.S. Supreme Court’s 2017 TC Heartland decision, which imposed stricter limits on where patent infringement suits could be filed, and after President Donald Trump appointed Waco-based U.S. District Judge Alan D. Albright and his rollout of new rules, which reduced the time and cost of patent litigation.
Judge Albright is handling Sonos’ litigation against Google there.
It’s “highly ironic,” Verhoeven told Judge Alsup on Thursday, that Sonos would come before the court and accuse Google of forum shopping.
“We’re allowed to say this case should be where the parties are, where the accused technology is developed, where the witnesses are — not in some outpost in Waco, Texas,” Verhoeven said.
Verhoeven argued that Sonos’ counsel is “talking out of both sides of their mouth here” by arguing that Google’s receipt of Sonos’ draft complaint supports a willfulness allegation, and at the same time, arguing that Google’s declaratory judgment complaint is a bad-faith anticipatory filing.
Judge Alsup took the matter under submission but warned Sonos that if it gets its way and gets its case transferred to Texas, Sonos would lose its advantage, explaining that Google’s bid for declaratory relief opening it up to “bone-crushing discovery.”
Sonos declined Law360’s request for comment.
Representatives for Google did not immediately respond to requests for comment Thursday.
Google is represented by Charles K. Verhoeven of Quinn Emanuel Urquhart & Sullivan LLP.
Sonos is represented by Clement S. Roberts and Alyssa M. Caridis of Orrick Herrington & Sutcliffe LLP.
The case is Google LLC v. Sonos Inc., case number 3:20-cv-06754, in the U.S. District Court for the Northern District of California.
–Additional reporting by Hailey Konnath. Editing by Gemma Horowitz.
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