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The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Matthew Weiss
March 01, 2023

Federal Circuit: Prosecution Laches Applies to Patent Claiming 1987 Priority Date

On Jan. 20, 2023, a Federal Circuit panel of Judges Reyna, Chen, and Stark issued an opinion, authored by Judge Reyna, with Judge Stark dissenting, in Personalized Media Communications, LLC v. Apple Inc., 57 F.4th 1346 (Fed. Cir. 2023). The panel affirmed the Eastern District of Texas's final judgment that U.S. Patent No. 8,191,091 (the '091 patent) "is unenforceable based on prosecution laches." Id. at 1350.

Personalized Media Communications (PMC) sued Apple for infringement of the '091 patent by Apple's "FairPlay" digital rights management product. Id. After "a jury returned a unanimous verdict, finding that Apple infringed," it "awarded PMC over $308 million in reasonable-royalty damages." Id. The district court then held a bench trial on remaining issues and "found the '091 patent unenforceable based on prosecution laches." Id. The district court explained that "laches required a challenger to prove that the applicant's delay was unreasonable and inexcusable under the totality of the circumstances and that there was prejudice attributable to the delay." Id. Applying that "framework, the court found that PMC engaged in an unreasonable and unexplained delay amounting to an egregious abuse of the statutory patent system." Id.

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