Federal Circuit IP

Personalized Media Comms., LLC v. Apple Inc., (Fed. Cir. Jan. 20, 2023)

By Tucker Mottl Published March 3, 2023

Personalized Media Comms., LLC v. Apple Inc., 2023 WL 328500 (Fed. Cir. Jan. 20, 2023) (Reyna, Chen, Stark (dissenting)); appeal from E.D. Tex. (Gilstrap, J.)

Issue:  Prosecution Laches


  • Personalized Media Communications (“PMC”) filed 328 GATT-bubble patents leading up to the change of US patent term from 17 years from issuance to 20 years from filing.
  • Combination of PMC tactics and USPTO stay delayed prosecution of US Patent No. 8,191,091 (“the ’091 patent”) from a 1987 priority to 1995 filing to 2012 issuance.
  • The asserted claims amended to assert decrypting in 2003.
  • USPTO stayed prosecution from 2003 to 2009.
  • PMC asserted the ’091 patent against Apple FairPlay technology developed in 2003 and obtained a $308MM jury verdict.
  • The Eastern district of Texas found the ’091 patent unenforceable by prosecution laches, and PMC appealed.


Prosecution laches requires proving:

  • the patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances.
  • the accused infringer must have suffered prejudice attributable to the delay.

Totality of Circumstances

Unreasonable Delay

  • PMC institutionalized its abuse of the patent system by expressly adopting and implementing dilatory prosecution strategies, specifically to ambush companies like Apple many years after PMC filed its applications
    • For example, internal PMC documents stated that PMC’s “intellectual property position will enable [PMC] to exercise far-reaching market control for as long as 30 to 50 years.”
  • The ’091 patent is derived from a GATT-Bubble application, of which PMC filed 328 500-page long applications.
  • PMC waited until 2003—sixteen years after the priority date of the ‘091 patent and nearly eight years after PMC filed its 328 GATT-bubble applications—to amend with asserted claims.
  • USPTO prosecution agreement (“consolidation agreement”) does not mitigate unreasonable delay, obligation is to equitably prosecute patents not merely to comply with an agreement
  • USPTO’s stay does not militate patentee’s own unreasonable delay


Apple was prejudiced because it invested in, worked on, or used the claimed technology during the period of delay.

  • Despite USPTO stay, PMC engaged in causing delay through at least 2011, including through the USPTO consolidation agreement.
  • Apple invested in accused FairPlay technology before 2003.

Result – Affirmed; ’091 patent unenforceable due to prosecution laches.

Stark Dissent

Showing prejudice attributable to patentee’s delay under the second factor of prosecution laches requires establishing intervening rights.

  • Earliest date that Apple can prove intervening rights is January 2000.
  • PMC’s egregious delay tactics occurred before January 2000.

After that, the only acts of delay were:

  1. a 2002 failure to respond promptly to an office action;
  2. a 2003 claim amendment (adding decryption); and
  3. a 2011 reintroduction of what became claim 13 of the ‘091 patent.