The first Section 337 complaint of 2020—Audio Players and Controllers, Components Thereof, and Products Containing the Same—was filed on January 7 by Sonos, an American company that designs and sells smart speakers.  The case does an excellent job of illustrating how overbroad the ITC’s patent jurisdiction has become since the Federal Circuit’s decision in Suprema v. ITC holding that Section 337 can be violated by an importer of non-infringing goods who later induces infringement in the United States after importation.

The patents Sonos is asserting against Google in this complaint all relate to the management of multiple speakers connected to a wireless network.  Sonos’s patents are very narrow and describe using a software interface to add speakers to a network, to group them together, and to change their volume.

But the accused products facing possible exclusion from the U.S. market are not limited to smart speakers of the type made by Sonos.  Rather, the complaint names a a plethora of Google products including video streaming devices, smarthome hubs, wifi routers, and even smartphones, tablets, and laptops.  Other than being made and imported by Google, the only thing these devices have in common is that they can be controlled by or used to run three software applications—Google Home, Google Play Music, and YouTube Music.

So even though Sonos’s patent complaint is about software designed in the United States by an American company, they are seeking a trade remedy to exclude generic computing devices capable of running that software.  But smartphones, tablets, and laptops cannot infringe Sonos’s patents, even if they come with preinstalled software.  The alleged infringement occurs when Google’s customers use the apps to perform the patented functions, and Google’s liability arises from the fact that it induces that infringement by instructing customers on how to use those functions.

Blocking imports of computers is not a reasonable remedy for domestic infringement of a software patent.  For one thing, an exclusion order would primarily prevent the importation of non-infringing, staple articles, because the vast majority of Pixel phones and other general-purpose computing devices imported by Google will never be used to practice any of the claims in Sonos’s patents.  And there’s no way for the ITC or Customs to determine in advance which ones will.

Another reason exclusion is the wrong remedy here is that this is not a trade dispute.  It is in fact a licensing dispute between two American companies that both import products from abroad.  Sonos doesn’t want Google to stop selling smartphones or distributing software; Sonos wants Google to pay royalties.  To that end, Sonos has also sued Google in federal district court alleging infringement of the same five patents.  That court is perfectly capable of adjudicating and enforcing whatever patent rights Sonos has—without threatening to ban imports of non-infringing computers.

Featured Publications