United States Court of Appeals 

for the Federal Circuit ______________________

PERSONALIZED MEDIA COMMUNICATIONS, LLC,

Plaintiff-Appellant

v.

APPLE INC.,

Defendant-Appellee

______________________

2021-2275

______________________

Appeal from the United States District Court for the 

Eastern District of Texas in No. 2:15-cv-01366-JRG-RSP, 

Chief Judge J. Rodney Gilstrap.

______________________

Decided: January 20, 2023

______________________

KEVIN PAUL MARTIN, Goodwin Procter LLP, Boston, 

MA, argued for plaintiff-appellant. Also represented by 

GERARD JUSTIN CEDRONE, DOUGLAS J. KLINE, LANA S.

SHIFERMAN; WILLIAM M. JAY, Washington, DC; SIDNEY 

CALVIN CAPSHAW, III, Capshaw DeRieux LLP, Gladewater, 

TX.

 JOHN C. O'QUINN, Kirkland & Ellis LLP, Washington, 

DC, argued for defendant-appellee. Also represented by 

NATHAN S. MAMMEN; GREG AROVAS, New York, NY; LUKE 

DAUCHOT, ELLISEN SHELTON TURNER, Los Angeles, CA; 

MARCUS EDWARD SERNEL, Chicago, IL.

Case: 21-2275 Document: 49 Page: 1 Filed: 01/20/2023
2 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

 JEFFREY A. LAMKEN, MoloLamken LLP, Washington, 

DC, for amicus curiae Fair Inventing Fund. Also represented by RAYINER HASHEM.

______________________

Before REYNA, CHEN, and STARK, Circuit Judges.

Opinion for the court filed by Circuit Judge REYNA.

Dissenting opinion filed by Circuit Judge STARK.

REYNA, Circuit Judge.

Personalized Media Communications, LLC appeals the 

final judgment of the District Court for the Eastern District 

of Texas that U.S. Patent No. 8,191,091 is unenforceable 

based on prosecution laches. The district court determined 

that Personalized Media Communications successfully employed an inequitable scheme to extend its patent rights. 

Because the district court did not abuse its discretion in 

finding the patent unenforceable, we affirm.

BACKGROUND

In 2015, Personalized Media Communications (“PMC”) 

sued Apple in the U.S. District Court for the Eastern District of Texas, alleging that Apple FairPlay1 infringed 

1 FairPlay is a digital rights management technology 

that Apple uses on its computers, mobile phones, and other 

devices. J.A. 2 (FF 1). FairPlay is software that prevents 

Apple users from unauthorized uses of content—such as illegally copying songs on iTunes. J.A. 25 (FF 68); 

Resp. Br. 22. To protect content, FairPlay encrypts data 

and uses “decryption keys” to control decryption. 

J.A. 25–26 (FF 69–70). Recognizing that “the weakest 

link” in a system’s security is the decryption key, Apple encrypted the decryption key as an additional layer of protection. Id. 

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claim 13 (and related dependent claims) of U.S. Patent No. 

8,191,091 (the “’091 patent”). J.A. 2–3 (FF 1, 5). The case 

went to trial, where a jury returned a unanimous verdict, 

finding that Apple infringed at least one of claims 13–16. 

J.A. 3 (FF 5). The jury awarded PMC over $308 million in 

reasonable-royalty damages. Id.

Thereafter, the district court held a bench trial on remaining issues and found the ’091 patent unenforceable 

based on prosecution laches. J.A. 1–3. Relying on our recent decision in Hyatt, the court determined 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. J.A. 28 (CL 4–7) (discussing Hyatt v. Hirshfeld, 

998 F.3d 1347, 1359–62 (Fed. Cir. 2021)). Under this 

framework, the court found that PMC engaged in an unreasonable and unexplained delay amounting to an egregious abuse of the statutory patent system.

The court described our recent Hyatt decision as a 

“white horse” case, with “remarkably similar” facts. 

J.A. 32, 41 (CL 15). The court explained that the patentee 

in Hyatt had filed 381 GATT-Bubble applications, and 

PMC had filed 328 GATT-Bubble applications.2 J.A. 32 

2 During negotiations of the Agreement on Trade-Related Aspects of Intellectual Property (“TRIPS Agreement”) at the Uruguay Round of the General Agreement on 

Tariff and Trade (“GATT”), the U.S. agreed to change the 

term of U.S. patents from 17 years following the date of 

issuance to 20 years following the patent’s priority date. 

Hyatt, 998 F.3d at 1352. In the months leading up to the 

law change, the U.S. Patent and Trademark Office (“PTO”) 

saw an enormous influx of so-called “GATT Bubble” applications as applicants sought to take advantage of the existing law providing a patent term keyed from issuance. 

Id. at 1352–53.

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4 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

(CL 16). In addition, the court noted that as in Hyatt, 

where each application was a photocopy of one of 11 earlier 

patent applications, PMC’s applications derive from two 

earlier applications. J.A. 32 (CL 17). Similar to Hyatt, 

“PMC’s applications . . . were ‘atypically long and complex,’” containing over 500 pages of text and over 22 pages 

of figures. J.A. 33 (CL 20). And PMC filed each of its applications with a single claim, then subsequently amended 

the claims, sometimes to recite identical language across 

different applications. J.A. 33 (CL 19). The court further 

explained that, like in Hyatt, “[o]ver time, PMC [] greatly 

increase[d] the total number of claims” in the range of 

6,000 to 20,000 claims. J.A. 10, 33–34 (FF 31, CL 21).

The court also found the length of the delay similar to 

Hyatt because “PMC waited eight to fourteen years to file 

its patent applications and at least sixteen years to present 

the asserted claims for examination.” J.A. 32–33 (CL 18)

(explaining that the applicant in Hyatt argued that he “delayed only seven to 11 years to file the four applications at 

issue and between 10 and 19 years before presenting the 

claims now in dispute” (citing Hyatt, 998 F.3d at 1368)). 

Moreover, “as in Hyatt, even though the PTO suspended 

prosecution of PMC’s applications, such is directly attributable to the manner in which PMC prosecuted its applications in the first place.” J.A. 35 (CL 25). The court 

reasoned that “PMC’s prosecution conduct made it virtually impossible for the PTO to conduct double patenting, 

priority, or written description analyses.” J.A. 37 (CL 31). 

In addition to the scope and nature of PMC’s applications, 

the court pointed to PMC’s vast prior art disclosure, which 

included references having little-to-no relevance, and examiners’ statements in office actions describing PMC’s 

prosecution strategy and conduct as improper. J.A. 37–38 

(CL 31, 34); J.A. 47–78 (listing references filling more than 

30 pages). Regardless, prosecution had been pending for 

“nearly ten years” before the PTO suspended it. J.A. 35

(CL 25). 

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“The only notable distinction” the court found between 

Hyatt and this case was that “Mr. Hyatt acknowledged he 

lacked a ‘master plan’ for demarcating his applications” 

whereas PMC developed the “Consolidation Agreement”

with the PTO. J.A. 34 (CL 23). Under the Consolidation 

Agreement, PMC agreed to group its applications into 56 

subject-matter categories, with subcategories for each of 

the two priority dates. J.A. 14 (FF 39); J.A. 8081–82.

Within the categories, PMC was to designate “A” applications and “B” applications, with the PTO prioritizing “A” 

applications. Id. Rejected claims would transfer to the corresponding “B” application and prosecution of “B” applications was stayed until the corresponding “A” application 

issued. Id. PMC would abandon any remaining applications that were not designated “A” or “B.” Id. This “A” application-to-“B” application examination scheme, in effect, 

gave PMC an additional bite at the apple to extend out 

prosecution of its many claims without the cost of having 

to file a continuation application.3

The court determined that the Consolidation Agreement alone does not operate to shift blame on the PTO. 

J.A. 34–35 (CL 24). The court explained that the Consolidation Agreement had to be understood in the context of

PMC’s business-driven, unreasonable prosecution strategy. J.A. 36 (CL 28–30).

Specifically, the court explained that prior to the 

GATT, PMC had an express prosecution policy of pursuing

one application at a time and filing a continuation as the 

prior application reached issuance—with the sole purpose 

to delay issuance of PMC’s patents in order to extend 

PMC’s patents’ terms.4 In addition, the court discussed 

3 The record does not explain how PMC and the PTO 

decided on the elements of the Consolidation Agreement.

4 See J.A. 6 (FF 15) (discussing a 1990 document 

stating “[PMC’s] strategy is to prosecute coverage on its 

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6 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

other documents from the same time period describing 

PMC’s strategy at the time of hiding its technologies, “quietly monitor[ing]” infringement, and “roll[ing] out” patents 

over time because “[o]nce infringement becomes widespread in an industry, the patented technology becomes so 

deeply embedded in commercial products that design 

around is not an option to infringers.”5 

The court analyzed prosecution conduct concerning the 

asserted ’091 patent and found that PMC used the Consolidation Agreement “to realize [PMC’s] initial strategy of serialized prosecution, notwithstanding the GATT 

amendments.” J.A. 36 (CL 28). In particular, the court 

explained that on July 18, 2002, the PTO accepted PMC’s 

request to designate Application No. 08/485,507 (the “’507 

application”) as the “B” application corresponding to Application No. 08/474,145 (the “’145 application”) and suspend

prosecution of the ’507 application. J.A. 19 (FF 57). On 

February 4, 2003, PMC amended claim 22 of

technologies deliberately over time in such a way that broad 

coverage is in effect at any given time while the duration of 

coverage is prolonged as long as possible.” (quoting J.A. 

37730–31)); J.A. 6 (FF 16) (discussing an April 1992 document explaining that PMC “believes that its intellectual 

property position will enable it to exercise far-reaching 

market control for as long as 30 to 50 years.” (quoting J.A. 

39220)). 

5 See J.A. 7 (FF 17–18) (discussing J.A. 37817); see 

also J.A. 7–8 (FF 19–20) (discussing a document dated September 12, 1991, that states, “[i]n some cases markets had 

not yet matured to benefit from applications of [PMC’s]

technologies . . . [so PMC] had deliberately chosen not to 

publicize widely its technologies or plans” and targets Apple as one of several “companies that are natural candidates for participating in the commercialization of [PMC’s] 

technologies.” (quoting J.A. 37865, 37870)). 

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the ’145 application. J.A. 22 (FF 61). The amendment 

changed the claim from “[a] method of enabling a programming presentation at a receiver station” to “[a] method of 

decrypting programming at a receiver station” and introduced various encryption and decryption steps:

Id. The court found that the February 4, 2003 amendment 

was the first time that encryption, decryption, and decryption keys were a part of this claim. Id. 

That same year, the PTO stayed the prosecution of 

PMC’s applications pending resolution of eleven reexamination proceedings on related, issued patents. J.A. 16 (FF 

46). The stay lasted several years, as reexamination continued, and was lifted in 2009. J.A. 16 (FF 46–47). 

'145 application claim 22 '145 application claim 22 

(March 15, 2002 amendment) (February 4, 2003 amendment) 

A method of enabling a programming A method of enaliling a decrypting 

presentation at a receiver station, said method programming JJrnsentatisn at a receiver station, 

comprising the steps of: said method comprising the steps of: 

receiving an infonnation transmission receiving an infonnation transmission 

from at least one of a local source and a remote frnm at least ene sfa leeal ss8ree and a remste 

source, said infonnation transmission including ss8ree, said infurmatien transmissien including 

disabled information; 4tsahle4 encrypted information; 

detecting the presence of an instruct-to- detecting the presence of an instruct-toenable signal, said instruct-to-enable signal enable signal, said inslmel 10 enalile signal 

designating enabling information; designating enaliling infurmalien; 

passing said instruct-to-enable signal to passing said instruct-to-enable signal to 

a processor; a processor; 

modifying a fashion in which said ms dif) ing determining a fashion in 

receiver station locates said enabling which said receiver station locates sat4 

information in response to said instruct-to- enaliling infum1a1i0n in resJJsnse 10 a first 

enable signal; decryption key by processing said instruct-tolocating said enabling information enable signal; 

based on said step of modifying a fashion; locating said enaliling infurmatien first 

enabling said disabled information decryption key based 011 said step of 

based on said step of locating said enabling medifJ ing a fusaien determining; 

information; and enabl-mg decrypting said 4tsahle4 

outputting said programming encrypted infonnation eased en said sleJJ ef 

presentation based on said step of enabling said lseating said enaliling infurmalisn using said 

disabled information. first decryption key; and 

outputting said programming 

(DTX-1568 at 978) JJresentalisn based on said step sfenaliling said 

disaliled infurmalien decrypting. 

(DTX-1568 at 1132, 1177) 

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8 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

Once prosecution reopened, the PTO rejected amended 

claim 22 of the ’145 application claiming the “decrypting 

programming” method. J.A. 23 (FF 63). PMC subsequently amended claim 22 significantly, and the ’145 application ultimately issued. Id. 

But on April 11, 2011, PMC reintroduced the rejected 

“decrypting programming” method claim to the ’507 application (the corresponding “B” application), as a part of several other claim amendments. J.A. 23 (FF 64). PMC told 

the PTO that the amendments “place the claims in condition for allowance,” despite the “decrypting programming” 

claim having previously been rejected. Id. This time, however, the claim was allowed in large part. J.A. 24 (FF 65). 

The ’507 application issued as the asserted ’091 patent, 

with the reintroduced claim as claim 13. Id. The ’091 patent is set to expire in 2027—forty years after its 1987 priority date.6 J.A. 36 (CL 30). 

The court concluded that “the only rational explanation 

for PMC’s approach to prosecution is a deliberate strategy 

of delay” and that “PMC’s actions were a conscious and 

egregious misuse of the statutory patent system.” 

J.A. 38 (CL 35). Thus, the court found that Apple met its 

burden to prove the first element of laches. 

The court then turned to prejudice. J.A. 38–41 

(CL 36–47). The court explained that Apple had already 

begun developing the accused FairPlay system by 2003, the 

year that PMC first added the asserted technology to the 

’091 patent’s predecessor. J.A. 39–40 (CL 38–43). Further, 

the ’091 patent issued in 2012—seven years after FairPlay 

6 The parties appear to dispute whether the ’091 patent also claims priority to PMC’s 1981 application. Compare Appellant’s Br. 8, with Resp. Br. 3. We do not resolve 

this dispute as it is unnecessary for the purposes of this 

appeal. 

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had already matured into the version accused of infringement. J.A. 39 (CL 38). The court reasoned that the prosecution delays had to be understood in the context of PMC’s 

expressed desire to extend its patent rights as long as possible and conceal its inventions until infringement was 

deeply embedded into the industry. J.A. 40 (CL 45). This 

scheme contributed to the prejudice, which was underscored by the fact that a jury found that Apple’s FairPlay 

technology infringed the ’091 patent. J.A. 39 (CL 39). 

Thus, Apple established prejudice, and laches rendered 

the ’091 patent unenforceable. 

PMC timely appeals the laches determination. We 

have jurisdiction under 28 U.S.C. § 1295(a)(1).

STANDARD OF REVIEW 

We review a district court’s determination of prosecution laches for abuse of discretion. Cancer Research Tech. 

Ltd. v. Barr Labs Inc., 625 F.3d 724, 728–29 

(Fed. Cir. 2010). “‘We may find an abuse of discretion on a 

showing that the court . . . exercised its discretion based 

upon an error of law or clearly erroneous factual findings.’” 

SiOnyx LLC v. Hamamatsu Photonics K.K., 981 F.3d 1339, 

1349 (Fed. Cir. 2020) (quoting Innogenetics, N.V. v. Abbott 

Labs, 512 F.3d 1363, 1379 (Fed. Cir. 2008)).

DISCUSSION

Prosecution laches is an equitable affirmative defense 

dating back to the early 1900s. Hyatt, 998 F.3d at 1360. 

Prosecution laches may render a patent unenforceable 

where a patentee’s conduct “constitutes an egregious misuse of the statutory patent system.” Id. at 1360–61 (citation omitted). Prosecution laches requires proving two 

elements: (1) the patentee’s delay in prosecution must be

unreasonable and inexcusable under the totality of circumstances and (2) the accused infringer must have suffered 

prejudice attributable to the delay. Id. at 1362. We conclude that the district court did not abuse its discretion by 

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10 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

legally erring or making clearly erroneous factual findings 

in determining that Apple established both laches elements. 

Unreasonable and Inexcusable Delay

PMC argues that the district court erred in finding an 

unreasonable and inexcusable delay, such that the district 

court failed to consider the totality of the circumstances. 

We disagree. 

First, PMC argues legal error because its “conduct 

looks nothing like Hyatt or the handful of other cases that 

have found prosecution laches.” Appellant’s Br. 39. This 

is not a legal error and is factually incorrect. 

Laches is an equitable and flexible doctrine that requires considering the totality of the circumstances. Hyatt, 

998 F.3d at 1359–66. In Hyatt, we found that the district 

court improperly failed to consider the totality of the circumstances by repeatedly discounting or ignoring relevant 

evidence. Id. Thus, PMC’s argument rests on a faulty 

premise: that PMC’s conduct has to look like “Hyatt or the 

handful of other [laches] cases.” Appellant’s Br. 39. Setting this aside, this case is very similar to Hyatt and prior 

cases, and, in some ways, involves even more egregious 

facts because, as the district court found, the record shows 

that 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. 

Second, PMC asserts that its “compliance” with the 

Consolidation Agreement and the PTO’s rules precludes a 

finding of laches as a matter of law. Appellant’s Br. III(B); 

id. at 38, 46–47, 50–51. We disagree.

In Hyatt, the PTO used “atypical procedures”—as it did 

here—to facilitate prosecution because the applicant, like 

PMC, had filed hundreds of burdensome GATT-Bubble applications. Hyatt, 998 F.3d at 1354–55, 1370. Still, we 

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found that the PTO met its burden to prove an unreasonable and unjustifiable delay. Id. at 1369. We also explained 

that “[a]n applicant must . . . not only comply with the statutory requirements and PTO regulations but must also 

prosecute its applications in an equitable way.” Id. at 1366. 

Moreover, PMC’s compliance with the Consolidation 

Agreement supports, rather than refutes, a finding of unreasonable and inexcusable delay. PMC’s agreement to 

structure a serial examination of a claim through first an 

A application and then a B application gave PMC the very 

kind of prosecution delays that supported PMC’s campaign

for drawn-out prosecution. J.A. 36 (CL 28).

Third, PMC asserts that the “district court improperly 

disregarded the reasons for the prosecution’s length.” Appellant’s Br. III(C). PMC points to delays in prosecution

that occurred due to the PTO grappling with PMC’s GATTBubble applications and attempting to resolve overlapping 

issues across many of PMC’s applications. Id. at 42–43.

In Hyatt, we rejected a similar argument and explained 

that “a delay by the PTO cannot excuse the appellant’s own 

delay.” Hyatt, 998 F.3d at 1364–65 (citation omitted) (finding that the district court erroneously found the PTO solely 

responsible for a 9-year stay on prosecution, when the period was “directly attributable to” the applicant’s conduct 

and the stay’s outcome could have “rendered meaningless” 

PTO time spent examining the applications). Unlike in Hyatt, the district court here determined that the various 

prosecution delays occurred because of issues PMC intentionally created, correctly focusing on PMC’s inequitable 

prosecution. Compare id. at 1365, with J.A. 12–13 

(FF 35–36) (discussing the In re Schneller stay), and J.A. 

16 (FF 46–47) (discussing the reexamination stay), and

J.A. 35 (CL 25) (“[E]ven though the PTO suspended prosecution of PMC’s applications, such is directly attributable 

to the manner in which PMC prosecuted its applications in 

the first place.”). 

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Fourth, PMC argues that the “district court committed 

legal error by relying on the simple number of PMC’s applications.” Appellant’s Br. III(D). This argument also

fails. 

While we discussed in Hyatt the fact that the applicant 

had filed 381 GATT-Bubble applications, we also considered other facts evidencing an unreasonable and unexplained delay. See Hyatt, 998 F.3d at 1353, 1367

(considering the applications’ length and complexity). 

Thus, the district court here did not legally err by considering that PMC filed 328 GATT-Bubble applications as a 

part of the court’s analysis, which also properly considered 

other relevant facts.

Fifth, PMC argues that it was a legal error for the district court to find delay due to PMC adding “narrowing” 

limitations directed to encryption and decryption in 2003, 

years after the priority date of the ’091 patent. Appellant’s Br. 47–48; Reply Br. 28–29. PMC, however, merely 

asserts that the 2003 amendments are “narrowing” without any attempt to explain why this is so, especially in view 

of the significant overhaul to the claims. See id. PMC does 

not cite case law holding legal error in a similar situation. 

In light of the significant amendments made in 2003, we 

are not persuaded that the district court erred in concluding that PMC unreasonably delayed in presenting the encryption and decryption subject matter.

PMC misconstrues the district court’s rationale for 

finding delay due to the 2003 amendments. The district 

court faulted PMC for waiting 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 include the subject encryption and decryption limitations to the claims. J.A. 39–40 (CL 38, 42). In Hyatt, we 

found that a similar delay in presenting claims was sufficient to trigger prosecution laches. Hyatt, 998 F.3d at

1367–68. In particular, we found that a delay of between 

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7–11 years to file applications and 10–19 years before presenting claims contributed to the unreasonableness of the 

delay. Id. at 1368. We also found that the district court 

erroneously “ignored evidence of Hyatt’s pattern of rewriting or shifting claims midway through prosecution” and 

that it was not enough for the district court to merely note 

that “it is ‘not unusual to see a few claims rewritten’” and 

that “the PTO accepted the amendments and continued examination.” Id. at 1363. The district court properly considered the facts surrounding the amendment to find delay. 

J.A. 22–25, 36–38 (FF 61–67; CL 28–35).

In sum, the district court did not legally err. The district court correctly considered the totality of the circumstances and did not disregard or ignore relevant facts. 

PMC also asserts that several of the district court’s factual findings concerning the first laches element amount to 

an abuse of discretion. Appellant’s Br. IV. First, PMC asserts that Apple needed an expert on PTO proceedings to 

support its case. Id. at 2, 52–53. Hyatt does not require

PTO testimony for a laches determination to be supported, 

and PMC cites no case law suggesting otherwise. Nor is 

there any other basis in the record to suggest that the district court needed an expert’s specialized knowledge to help 

understand the administrative records and the PTO regulations in this case. 

Second, PMC argues that the district court clearly 

erred because it found PMC contributed to the delay by 

making it “virtually impossible for the PTO to conduct double patenting, priority, or written description analyses,” 

but the PTO has issued over 100 patents to PMC. Id. at 52 

(quoting J.A. 37 (CL 31)). That the PTO issued PMC many 

patents does not suggest clear error—especially given how 

many other facts weigh against PMC here. See Symbol 

Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., 422 

F.3d 1378, 1380–85 (Fed. Cir. 2005) (affirming the court’s 

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finding of laches, despite the patentee having many issued 

patents). 

Third, PMC argues that the district court should not 

have considered the office actions where examiners harshly 

criticized PMC’s prosecution strategy. Appellant’s Br. 53–55. The district court was within its purview 

to consider these statements as evidence. J.A. 14–16, 17–

19, 38 (FF 40–45, 52–55; CL 34). Further, the court 

properly considered the context of the criticisms and reasonably weighed them in view of other evidence.7 Id.

Fourth, PMC argues that the district court clearly 

erred because it misinterpreted PMC’s internal documents. 

Id. at 57–58. PMC argues that its document stating that

PMC’s “intellectual property position will enable [PMC] to 

exercise far-reaching market control for as long as 30 to 50 

years,” referred to copyrights, not patents. Id. 

The district court did not clearly err; the document itself describes “issued and pending patents.” See J.A. 8573. 

And the court corroborated this document with similar evidence. See J.A. 6–7 (FF 16–17); see also J.A. 9425–26 (testimony that PMC’s patent strategy was to extend its 

intellectual property rights and coverage out 30 to 50 

years).

7 PMC also rehashes several other instances where

the district court rejected PMC’s interpretation of the prosecution history. Appellant’s Br. 55–56 (arguing clear error 

by rejecting PMC testimony concerning discussions with 

the PTO); id. at 56 (disputing the district court’s finding 

that PMC filed duplicate claims); id. at 56–57 (disputing 

the district court’s finding that the prior art PMC submitted was irrelevant because “there was a reasonable explanation” for PMC submitting the references). These 

arguments amount to mere disagreement, not clearly erroneous factual findings.

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Along those same lines, PMC argues that the district 

court clearly erred by considering PMC’s document describing a strategy of keeping “patents hidden while industry 

infringement is quietly monitored” because that strategy 

would support “post-issuance laches, which since SCA Hygiene is not even a defense” as opposed to prosecution 

laches. Appellant’s Br. 58 (quoting SCA Hygiene, 580 U.S. 

328). Put simply, PMC’s enforcement strategy is part of 

the “totality of the circumstances” here. See Hyatt, 998 

F.3d at 1362; see also Symbol Techs., 422 F.3d at 1385 (explaining that actions taken “for the business purpose of delaying [] issuance can be considered an abuse of the patent 

system”). 

In sum, the district court’s factual findings were not 

clearly erroneous. Thus, the district court did not abuse its 

discretion in finding that PMC’s delay in prosecution was

unreasonable and inexcusable under the totality of circumstances.

Prejudice

Laches requires that the accused infringer suffered 

prejudice attributable to the delay. Hyatt, 998 F.3d at

1362. An accused infringer can establish prejudice by proving that it “invested in, worked on, or used the claimed 

technology during the period of delay.” Id. (citation omitted). We affirm the district court’s finding that PMC’s delay prejudiced Apple.

PMC argues that the district court abused its discretion in finding that PMC’s delay prejudiced Apple. Appellant’s Br. V; Reply Br. II. We disagree.

PMC argues that the district court erred because “Apple needed to prove that PMC still was engaged in egregious conduct causing delays after 2003, which is when the 

district court found Apple began developing FairPlay.” Appellant’s Br. 59. This argument misconstrues the record 

and the law. 

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PMC incorrectly assumes that the district court did not 

find that PMC was still engaging in “conduct causing delays after 2003.” Id. The district court found that the deliberate strategy of delay began at least in 1995 and 

continued through PMC filing this suit in 2015. 

See, e.g., J.A. 38, 40 (CL 35, 44). The court found that in 

2011, while PMC was in pre-suit negotiations with Apple, 

PMC reintroduced a previously-rejected claim in 

the ’507 application (the “B” application). See, e.g., J.A. 23–

25, 39–40 (FF 64–67; CL 41–45). PMC did not mention the 

application or claim to Apple during negotiations. J.A. 40 

(CL 44). PMC was able to get the claim quickly granted, 

assert that claim against Apple, and obtain a damages 

award. J.A. 3, 40 (FF 5; CL 43). This shows that the district court did not err by determining that well after 2003 

PMC was still implementing its express strategy of delay 

to “reserve [its] patent till the trade independently develops, and then [] pounce upon it for a full term.”8 Victor 

Talking Mach. Co. v. Thomas A. Edison, Inc., 229 F. 999, 

1000–01 (2d Cir. 1916); see also J.A. 40 (CL 45) (“All of 

these events must be viewed in the context of PMC’s original plans: to prosecute its patents serially over time and 

keep them hidden until infringement was engrained and 

widespread.”). 

8 We disagree with the dissent’s suggestion that the 

period of delay ended before 2000. See Dissent pp. 14–16. 

The district court did not clearly err in finding that the period of delay lasted until at least 2003, when PMC introduced the encryption and decryption subject matter into 

the ’145 “A” application, and further until 2011, when PMC 

reintroduced the previously-rejected claim from the ’145 

“A” application into the ’507 “B” application, for the reasons 

discussed in this section and above, see Discussion supra

pp. 10–15. 

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 17

We find no clear error in the district court’s determination that PMC engaged in conduct causing delays at least 

through 2011. PMC ignores the effect of its Consolidation 

Agreement with the PTO, which permitted PMC in 2011 to 

re-file the same decryption claim in the ’507 “B” application 

that was not allowed in the corresponding ’145 “A” application. By taking a second bite at the examination apple 

through the “B” application, PMC further lengthened the 

examination process beyond normal prosecution procedure, creating improper delay during prosecution. That 

the PTO suspended prosecution for a period of time does 

not negate the fact that Apple had begun developing FairPlay well before PMC was engaging in these amendments. 

Even if the district court’s analysis had found that the 

period of PMC’s delay ended by 2003, the district court 

properly concluded that PMC’s delayed presentation of the 

decryption claim in 2003 prejudiced Apple because, as the 

court found, “[i]n so delaying, PMC prejudiced Apple, 

which had already begun investing in FairPlay’s development and continued to do so.” J.A. 39 (CL 38).9 The record

indicates that Apple began developing FairPlay before

2003. Apple began developing FairPlay “in the early 

2000s” and “launched” FairPlay with the Apple Music store 

in 2003. J.A. 26 (FF 71); J.A. 4713 at 684:1–4 (“Q: When 

did Apple begin developing FairPlay? A: In . . . the early 

9 Although the district court stated in a later part of 

its opinion that “Apple began developing FairPlay in 2003,” 

J.A. 39 (CL 40 (citing FF 71)), we take this statement to be 

a typo because it refers to but is inconsistent with the district court’s previous findings that “Apple began developing 

FairPlay in the early 2000s” and launched FairPlay “together with the Apple Music store in 2003,” J.A. 26 (FF 71); 

see also J.A. 39 (CL 38) (stating that by the time PMC introduced the decryption claim in 2003, Apple “had already 

begun investing in FairPlay’s development”). 

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18 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

2000s”), 684:21–23 (“Q: Now, when did Apple first launch 

FairPlay? A: We launched FairPlay together with the Apple Music store, which I believe was in 2003”); J.A. 8085 

(¶¶ 73, 76) (parties stipulating that Apple began developing FairPlay “in the early 2000s” and the iTunes Music 

Store launching in 2003). Because Apple began developing 

FairPlay in the early 2000s and launched it in 2003, Apple 

necessarily invested in or worked on FairPlay before 2003, 

which is undisputedly during the period of delay.

In sum, the district court did not abuse its discretion in 

finding that Apple established prejudice. 

CONCLUSION

The district court did not abuse its discretion in finding 

that Apple established laches, rendering the ’091 patent 

unenforceable. We have considered PMC’s remaining arguments and find them unpersuasive. For the foregoing 

reasons, we affirm the district court’s decision.

AFFIRMED

COSTS

Costs to Apple.

Case: 21-2275 Document: 49 Page: 18 Filed: 01/20/2023
United States Court of Appeals 

for the Federal Circuit ______________________

PERSONALIZED MEDIA COMMUNICATIONS, LLC,

Plaintiff-Appellant

v.

APPLE INC.,

Defendant-Appellee

______________________

2021-2275

______________________

Appeal from the United States District Court for the 

Eastern District of Texas in No. 2:15-cv-01366-JRG-RSP, 

Chief Judge J. Rodney Gilstrap.

______________________

STARK, Circuit Judge, dissenting.

I agree with the Majority that the district court did not 

abuse its discretion in finding, based on the totality of the 

circumstances, that Personalized Media Communications, 

LLC’s (“PMC”) delay in prosecuting its patent was unreasonable and inexcusable. To prevail on its laches claim, 

however, Apple also had to show that it suffered prejudice 

during the period in which PMC was wrongfully delaying 

prosecution. Apple failed to do so. Accordingly, I would 

reverse the district court’s judgment that PMC’s U.S. 

Case: 21-2275 Document: 49 Page: 19 Filed: 01/20/2023
2 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

Patent No. 8,191,091 (“’091 patent”) is unenforceable due 

to prosecution laches.1

I

We review the district court’s conclusion that Apple 

met its burden to prove prosecution laches for abuse of discretion. See Cancer Rsch. Tech. Ltd. v. Barr Labs., Inc., 625 

F.3d 724, 728-29 (Fed. Cir. 2010) (“Cancer Research”). “‘We 

may find an abuse of discretion on a showing that the court 

made a clear error of judgment in weighing relevant factors 

or exercised its discretion based upon an error of law or 

clearly erroneous factual findings.’” SiOnyx LLC v. Hamamatsu Photonics K.K., 981 F.3d 1339, 1349 (Fed. Cir. 2020) 

(quoting Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 

1379 (Fed. Cir. 2008)). Importantly, “we review the legal 

standard applied by the district court de novo.” Cancer Research, 625 F.3d at 729. Thus, notwithstanding that our 

ultimate standard of review is for abuse of discretion, we 

may reverse where a district court commits legal error. See 

id. at 732.

To prevail on its prosecution laches counterclaim, Apple has to prove both that (1) PMC’s “delay in prosecution 

1 Because Apple asserted other affirmative defenses 

to infringement that the district court did not have to 

reach, I would remand for that court to address these tried 

but unresolved defenses. See J.A. 2 n.2 (“As Apple has prevailed on its counterclaim—extinguishing any liability for 

patent infringement—the Court does not reach Apple’s affirmative defenses of obviousness-type double patenting 

and unclean hands.”); J.A. 3 (FF 7) (noting district court 

heard evidence and argument on “prosecution laches, 

OTDP [obviousness-type double patenting], and unclean 

hands”).

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 3

was unreasonable and inexcusable[2] under the totality of 

circumstances,” and (2) it “suffered prejudice attributable 

to the delay.” Hyatt v. Hirshfeld, 998 F.3d 1347, 1362 (Fed. 

Cir. 2021). Proving the prejudice necessary to succeed on 

a prosecution laches defense to infringement “requires 

proving intervening rights.” Id. at 1369. Establishing intervening rights, in turn, requires showing “‘that either the 

accused infringer or others invested in, worked on, or used 

the claimed technology during the period of delay.’” Id.

(quoting Cancer Research, 625 F.3d at 729) (emphasis 

added). Because the prejudice Apple suffered must be 

“prejudice attributable to the delay,” Apple must prove it 

was prejudiced at some point during the period in which 

PMC was engaged in unreasonable and inexcusable prosecution delay. See Cancer Research, 625 F.3d at 732.

Our analysis in Cancer Research confirms this understanding of Apple’s burden. In Cancer Research, the district court had decided that “prosecution laches did not 

require a showing of intervening rights but rather turned 

on whether under the totality of the circumstances [the patentee’s] delay in prosecution in light of the PTO’s utility 

rejections was unreasonable and unexplained.” Id. at 727. 

We rejected this conclusion and, instead, explicitly “recognize[d] intervening adverse rights as a requirement to 

holding a patent unenforceable for prosecution laches.” Id. 

2 We have sometimes referred to the required showing as “unreasonable and unexplained delay,” and at other 

times as “unreasonable and inexcusable” delay. Compare, 

e.g., Maj. Op. at 3, 12 (“unexplained”); Hyatt, 998 F.3d at 

1360 (“unexplained”); Cancer Research, 625 F.3d at 728 

(“unexplained”), with Maj. Op. at 3, 9, 10, 11, 15 (“inexcusable”); Hyatt, 998 F.3d at 1362 (“inexcusable”); Cancer Research, 625 F.3d at 729 (“inexcusable”). No party argues

there is any material difference between these formulations.

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4 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

at 729-31. Moreover, we declined to find intervening 

rights, and hence the prejudice necessary to prove laches, 

where an inventor merely “delay[s] in prosecuting and issuing its patent application,” observing that our cases and

“[t]he Supreme Court cases underlying the [laches] doctrine all rely on a finding that the applicant’s delay in prosecution adversely affected others working in the same 

field.” Id. (discussing Woodbridge v. United States, 263 

U.S. 50 (1923); Webster Elec. Co. v. Splitdorf Elec. Co., 264 

U.S. 463 (1924); Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159 (1938); and Gen. Talking Pictures 

Corp. v. Western Elec. Co., 304 U.S. 175 (1938)). We then 

expressly held that “to establish prejudice an accused infringer must show evidence of intervening rights, i.e., that 

either the accused infringer or others invested in, worked 

on, or used the claimed technology during the period of delay.” Id. at 729 (second emphasis added).

Our application of this standard to the facts in Cancer 

Research, and our conclusion as to the relevant period of 

delay, provides further guidance. The patentee’s predecessor filed its original patent application, which matured into 

the patent-in-suit, in 1982, and then in 1991 “ownership of 

the patent application changed hands” to Cancer Research. 

Id. at 726. Thereafter, Cancer Research began to move the 

prosecution along at a reasonable pace, and the patent 

eventually issued in 1993. See id. at 726-27. We found that 

the pertinent period during which the accused infringer

had to prove prejudice was “between 1982 and 1991,” id. at 

726, 732, and did not include 1991 to 1993.

We next considered whether Barr, the party asserting 

prosecution laches as a defense to infringement, had developed intervening rights during the pertinent period. Barr 

had filed an Abbreviated New Drug Application (“ANDA”) 

to market its infringing product in 2007. See id. at 727. 

Because “Barr filed its ANDA more than thirteen years after the issuance of Cancer Research’s patent,” we concluded that Barr was “hardly prejudiced by the delay in the 

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 5

issuance of the [patent-in-suit], in 1993.” Id. at 731. As 

Barr likewise failed to identify any other way in which it or 

another entity3 or the public was prejudiced by the patent 

applicant’s delay between 1982 and 1991, it had failed to 

prove prosecution laches. See id. at 732. Any prejudice 

that Barr or anyone else may have developed after 1991—

that is, after the patent applicant stopped acting unreasonably and inexcusably—was irrelevant to our analysis.4

Apple distinguishes Cancer Research by inviting us to 

eliminate the line between the “period of delay,” as we understood and applied that term in Cancer Research, and the 

period after the pertinent delay, which is not relevant to 

the prejudice analysis. See, e.g., Appellee’s Br. 74 (“Even if 

it were somehow true, as PMC suggests, that PMC’s affirmative misconduct had stopped by 2003, the delay in 

prosecution continued due to its [PMC’s] earlier misconduct.”); id. (“Whereas the delay in Cancer Research consisted of a defined period of delay . . . this case involves 

conduct deliberately intended to (and that did) 

3 Although our cases allow a party asserting laches 

to satisfy the prejudice prong by identifying prejudice during the pertinent time to others besides the party itself, see, 

e.g., Cancer Research, 625 F.3d at 729, Apple has not attempted to make such a showing in this case, see Appellee’s 

Br. 71-77.

4 The dissenting opinion in Cancer Research was 

based on this very aspect of the holding. In dissent, Judge 

Prost disagreed with the “temporal limitation that the prejudice exist[] during the period of delay,” which she faulted 

as a “new requirement” the Cancer Research majority was 

improperly imposing on parties asserting prosecution 

laches. 625 F.3d at 735-37; see also id. at 737 (“[I]t is not 

appropriate to confine the inquiry to the period of time 

when Cancer Research was actively delaying prosecution.”).

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6 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

affirmatively hamper the PTO’s examination and cause ongoing delay in examination for years after its occurrence.”); 

id. (arguing law permits “considering the delay resulting 

from those [delaying] acts”). I believe we should reject this 

invitation and adhere to the legal requirement that prejudice be shown to have occurred during the patentee’s period 

of unreasonable and inexcusable delay.5 If we were to do 

so, it would follow that Apple has failed to meet its burden 

and the district court’s finding of laches could not stand.

II

Turning to the facts before us, there is no material dispute as to the date by which Apple obtained intervening 

rights in the technology the jury found to be infringing. 

The acquisition of such intervening rights depends on the 

timing of Apple’s “invest[ment] in, work[] on, or use[]” of 

the infringing FairPlay technology. Cancer Research, 625 

F.3d at 729. The district court found that Apple proved it 

began this work “in the early 2000s.” J.A. 26 (FF 71). The 

Majority affirms this finding and I agree it is not clearly 

5 In Hyatt, 998 F.3d at 1370, we said that “where a 

patent applicant has committed a clear abuse of the PTO’s 

patent examination system, the applicant’s abuse and its 

effects meet the prejudice requirement of prosecution 

laches.” I read this statement as limited to the § 145 context in which Hyatt arose, where the entity confronting the 

burden to show prejudice was the PTO, not a patent infringer. It makes sense that the PTO can show prejudice 

by proving it, the PTO, was clearly abused by the applicant. 

I am not aware of this Court making similar statements 

when the party asserting prosecution laches is an accused 

infringer.

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 7

erroneous. The earliest date by which Apple obtained intervening rights, then, was January 2000.6

Consequently, Apple must also prove that PMC was 

engaged in unreasonable and inexcusable prosecution delay in or after January 2000. If all of PMC’s improper delay 

concluded before January 2000, before Apple began working on FairPlay, then whatever prejudice Apple suffered is 

not “attributable to” PMC’s delay. While Apple does not 

agree that this is the proper analysis—believing, as it persuaded the district court, that the lingering post-2000 impact of PMC’s pre-2000 delay is sufficient to make Apple’s 

post-2000 development of FairPlay dispositive in our prejudice analysis—it contends, in the alternative, that it 

proved unreasonable and inexcusable prosecution delay after 2000. I disagree.

As PMC observes, the district court’s focus in finding 

delay was primarily on PMC’s activities between 1987 and 

6 In fact, the record strongly suggests that Apple did 

not work on what became FairPlay until 2002. Apple’s appellate briefing indicates Apple started developing FairPlay after launching iTunes and the iPod in late 2001. See 

Appellee’s Br. 22 (citing J.A. 4706-07, 4712-13, 8085 (Stip. 

¶ 76)). In closing argument at the bench trial, Apple’s 

counsel told the district court that FairPlay “[l]aunched in 

April of 2003, [and was] developed shortly before that.” 

Personalized Media Commc’ns, LLC v. Apple, Inc., No. 

2:15-cv-01366, ECF No. 645 (Bench Trial Transcript), at 

237. Moreover, FairPlay did not “mature[]” into the version that infringes the asserted claims until perhaps as late 

as 2005. J.A. 39 (CL 38) (“By 2005 . . . FairPlay had matured into the version accused of infringement.”); see also 

J.A. 26 (FF 72). Because PMC’s unreasonable and inexcusable delay had ended before 2000, the specific date in the 

2000s when Apple acquired intervening rights is immaterial.

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8 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

1995. The district court relied on the number of applications PMC filed in 1995, and the fact that “PMC’s 328 applications derive[d] from two earlier applications, 

respectively filed in 1981 and 1987. These pre-date PMC’s 

1995 applications by 8 to 14 years.” J.A. 32 (CL 17). The 

district court compared PMC’s filing delays to the delays

involved in Hyatt, concluding that “PMC delayed filing of 

its applications for a comparable period.” J.A. 32-33 

(CL 18). The district court noted that PMC’s applications 

were filed with a small number of claims, J.A. 33 (CL 19),

which were later multiplied and amended, J.A. 33-34 

(CL 21), and the applications themselves were lengthy and 

complex, J.A. 33 (CL 20). The district court also pointed to

the large number of references PMC disclosed as pertinent 

prior art. J.A. 34 (CL 22).

When addressing PMC’s post-2000 prosecution conduct, the district court specifically mentions a 2002 office 

action, which PMC was slow in responding to; a 2003 

amendment to what became independent claim 13 of the 

’091 patent; and PMC’s 2011 reintroduction—as a proposed 

“B” application claim—of what had been rejected as an “A” 

application claim and eventually became claim 13 of the 

’091 patent. Thus, the only conduct after 2000 that either 

the district court or Apple points to as constituting unreasonable and inexcusable prosecution delay is: (i) the 2002 

failure to respond promptly to an office action; (ii) the 2003 

claim amendment; and (iii) the 2011 reintroduction of what 

became claim 13 of the ’091 patent. As I see it, none of 

these actions, either individually or as part of the totality 

of circumstances, were the type of “egregious misuse of the 

statutory patent system” we have required to find prosecution laches. Cancer Research, 625 F.3d at 728.

A

Apple points to PMC’s January 2003 response to a July 

2002 office action as abusive prosecutorial conduct. See Appellee’s Br. 45-46. While I agree with Apple that the 

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 9

district court could properly consider this evidence, I disagree that PMC’s activities in 2002 and 2003 widen the window of unreasonable and inexcusable delay to a period after 

2000.

In the July 2002 office action, the examiner expressed 

frustration with PMC’s “misle[a]d[ing]” statements about 

priority dates for the claims in U.S. Patent Application No. 

08/474,145 (“’145 application”). J.A. 15 (FF 43). The examiner wrote that the PTO “continue[d] to struggle in its efforts to make [§ 112 ¶ 1] determinations for the 10,000 or 

so pending amended claims,” adding that PMC failed to 

identify “precisely what is being claimed.” J.A. 16 (FF 44)

(emphasis and alteration in original).

The office action specified a three-month period during 

which PMC could reply, while also noting that extensions 

might be available under 37 C.F.R. § 1.136(a), adding that 

in no event could a reply be filed more than six months after the July 31, 2002 mailing date of the office action. 

J.A. 48027-28. Precisely six months after the mailing date, 

on January 31, 2003, PMC filed its reply, simultaneously 

requesting a three-month extension under § 1.136(a) and 

paying the fee for the extension. J.A. 48135-36. PMC’s 

January 2003 reply thoroughly responded to the examiner’s concerns. See J.A. 48137-80. Thereafter, prosecution proceeded, including by PMC filing two information 

disclosure statements. See File History of U.S. Patent No. 

7,992,169 (showing information disclosure statements filed 

on February 7, 2003, and May 5, 2003); see also J.A. 48299.

The district court found that the July 2002 office action 

was a relevant example of PMC’s prosecution misconduct, 

see J.A. 15-16 (FF 42-45), although the district court did 

not rely on or cite to these findings of fact in explicating its 

conclusions of law on unreasonable and inexcusable delay 

or prejudice, see J.A. 30-41 (CL 11-47). The district court 

also did not make any finding regarding PMC’s January 

2003 reply, see J.A. 15-16 (FF 42-45), a reply which 

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10 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

appears to have been timely, see J.A. 48136 (PMC requesting three-month extension and paying fee, “thereby extending the period for response to January 31, 2003”). The “give 

and take” between the examiner and PMC in and around 

the July 2002 office action and January 2003 reply is routine, not unreasonable and inexcusable. See In re Buszard, 

504 F.3d 1364, 1366-67 (Fed. Cir. 2007) (“The patent examiner and the applicant, in the give and take of rejection and 

response, work toward defining the metes and bounds of 

the invention to be patented.”).

In short, I do not see how PMC’s prosecution conduct 

in connection with the July 2002 office action constitutes 

unreasonable and inexcusable delay that could give rise to

Apple developing intervening rights in the 2002 or 2003 

timeframe. And neither the district court nor the Majority 

explain how it could.

B

The district court also found that PMC’s February 4, 

2003 amendment “was the first time that encryption, decryption, or decryption keys” appeared in the ’145 application’s claims. J.A. 22 (FF 61). The Majority finds no abuse 

of discretion in this finding. See Maj. Op. at 6-7, 15. I view 

the question of whether the amendment added encryption, 

decryption, and decryption keys to the claims as a matter 

of claim scope and, therefore, an issue of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391

(1996). Moreover, I am persuaded that each of these limitations was within the scope of the pre-amendment claims 

and, therefore, the amendment was a routine narrowing 

amendment. See PPC Broadband, Inc. v. Corning Optical 

Commc’ns RF, LLC, 815 F.3d 734, 740 (Fed. Cir. 2016) 

(“[T]he patentee can amend the claim language during 

prosecution—and narrow it if necessary—to clarify the 

scope of the invention and avoid rejection or cancellation of 

the claims.”); see also In re Zletz, 893 F.2d 319, 321 (Fed. 

Cir. 1989) (“[D]uring patent prosecution . . . claims can be 

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 11

amended, ambiguities should be recognized, scope and 

breadth of language explored, and clarification imposed.”).

As the Majority explains, the 2003 “amendment 

changed the claim from ‘[a] method of enabling a programming presentation at a receiver station’ to ‘[a] method of 

decrypting programming at a receiver station,’ and introduced various encryption and decryption steps.” Maj. Op. 

at 7 (internal emphasis omitted). The Majority, district 

court, and Apple all fail to provide any reason to view this 

amendment—to the claim’s preamble—as even a claim limitation, and certainly not one that broadens claim scope. 

See generally Symantec Corp. v. Comput. Assocs. Int’l, Inc., 

522 F.3d 1279, 1288-89 (Fed. Cir. 2008) (“[I]n general, the 

purpose of a claim preamble is to give context for what is 

being described in the body of the claim; if it is reasonably 

susceptible to being construed to be merely duplicative of 

the limitations in the body of the claim (and was not clearly 

added to overcome a rejection), we do not construe it to be 

a separate limitation.”).

The amendment additionally changed “enabling said 

disabled information” to “decrypting said encrypted information,” and similarly changed other instances of “enabling said disabled information” to “decrypting;” “disabled 

information” to “encrypted information;” and “enabling information” to “decryption key.” J.A. 22 (FF 61). These 

amendments narrowed and limited the scope of the claims 

to encryption, decryption, and decryption keys, elements 

that were present in the claims at least as far back as 1997. 

See, e.g., J.A. 40125, 40139 (June 10, 1997 response to office action, showing amendment and request for reconsideration in connection with U.S. Patent Application No. 

08/485,507 (“’507 application”), stating: “One place where 

the specification discloses enabling information and disabled (encrypted) information begins on page 297 line 20 and 

goes through to page 298, line 21.”) (emphasis added); 

J.A. 27711, 27734 (PMC designating certain pending 

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12 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

applications—including ’507 and ’145—as “relat[ing] to decryption of broadcast information,” also known as “DECR”).

Prior to the 2003 amendment, one could practice the 

claims by disabling information using mechanisms other 

than encryption, and enabling information could be of a 

type other than decryption keys. Moreover, disabled information could be enabled without specifically decrypting it 

via a decryption key. After the 2003 amendment, by contrast, the claims were narrowed to encryption, decryption, 

and decryption keys. There was nothing unreasonable, inexcusable, or even unusual about this routine amendment. 

Therefore, Apple has not shown that any prejudice it suffered in 2003 is attributable to PMC’s prosecution delay.

C

Apple portrays PMC’s conduct in 2011, which had the 

effect of amending the ’091 patent’s independent claim 13, 

as “one of its more egregious tactics.” Appellee’s Br. 76. 

The Majority “find[s] no clear error in the district court’s 

determination that PMC engaged in conduct causing delays at least through 2011.” Maj. Op. at 17. But PMC’s 

2011 claim amendment was permitted by the Consolidation Agreement reached between PMC and the PTO. I do 

not believe PMC’s compliance with the Consolidation 

Agreement justifies a finding that PMC’s unreasonable and 

inexcusable delay persisted until 2011.

As the parties stipulated in the district court, a key 

component of the Consolidation Agreement was: “Applicants and the PTO agreed that, in order to expedite allowance of patentable claims, if there were claims that 

remained finally rejected in an application, those claims 

were to be moved to the ‘B’ Application for further action, 

and the ‘A’ Application would be allowed to issue.”

J.A. 8082 (Stip. ¶ 50). Consistent with this Agreement, in 

or around 2000, PMC designated the ’145 application an 

“A” application and the ’507 application as the corresponding “B” application. J.A. 18 (FF 54). Pursuant to the 

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Consolidation Agreement, PMC “[m]aintain[ed] application B as a potential application for any claims not allowed” 

in the A application. J.A. 27725. When, in April 2011, 

PMC reintroduced via the ’507 “B” application claim 45—

which is identical to claim 22 of the ’145 “A” application as 

it existed after its February 4, 2003 amendment—it was 

acting in accordance with the Consolidation Agreement to 

which the PTO had agreed. After minimal further amendments, claim 45 of the ’507 application issued as independent claim 13 of the ’091 patent, and the jury later found 

Apple infringed “at least one of claims 13, 14, 15, and 16 of 

the ’091 patent.” J.A. 27 (FF 73).

PMC explained to the examiner exactly what it was doing with its 2011 submissions, writing: “Consistent with 

the consolidation agreement between the Applicants and 

the Office, Applicants now wish to pursue the subject matter within the scope of the ‘A’ claims of the DECR 87 group 

‘A’ application (U.S. Patent Application Serial No. 

08/474,145) by claiming such subject matter that was not 

patented in the ‘A’ application in the instant ‘B’ application.” J.A. 16864. PMC also sought to “aid the Examiner 

in understanding the amendments to the claim[s]” by “attach[ing] a marked up copy of the claims (Appendix A) indicating the differences between the ‘A’ Claims and the 

amended form submitted herein.” Id. Furthermore, PMC 

signed a terminal disclaimer that “disclaim[ed] the terminal portion of any patent granted on [the ’507] application 

which would extend beyond the expiration date of [the ’169 

patent].” Apple Inc. v. Personalized Media Commc’ns., 

LLC., No. IPR2016-00755, Ex. 1040, at 6 (P.T.A.B. March 

14, 2016) (March 2012 Notice of Allowance for ’507 application).

As the Majority points out, “[t]he record does not explain how PMC and the PTO decided on” the provisions of 

the Consolidation Agreement, including the “A” and “B” application provisions. Maj. Op. at 5 n.3. While the Consolidation Agreement does not necessarily render all actions 

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14 PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.

taken by PMC pursuant to it reasonable and excusable, I 

would find that, under the totality of circumstances, Apple 

failed to show PMC’s 2011 conduct, which is consistent 

with the Consolidation Agreement, renders 2011 a pertinent time during which Apple could have suffered prejudice attributable to PMC’s delay.7

III

Today’s holding, which allows Apple to prevail on 

laches by proving it suffered prejudice in and around 2003,

due to the ongoing impact of prosecution delays PMC 

caused primarily between 1987 and 1995, implies that 

PMC was doomed to procure unenforceable patents regardless of how well it conducted itself after 1995, and no matter how egregious Apple’s infringement might be. This 

outcome, which renders irrelevant years of PMC’s conduct 

(i.e., 1995 to 2003 and beyond), is inconsistent with the totality of circumstances analysis required for assessing application of prosecution laches. See Lemon v. Kurtzman, 

411 U.S. 192, 200 (1973) (“[E]quitable remedies are a special blend of what is necessary, what is fair, and what is 

workable.”) (internal footnote omitted); see also Symbol 

Techs., Inc. v. Lemelson Med., Educ. & Rsch. Found., LP, 

422 F.3d 1378, 1385-86 (Fed. Cir. 2005). It is also in tension with our holding in Hyatt, in which we suggested that, 

even decades into the prosecution, when the PTO “notified 

Hyatt of its own obligations and requirements and thereby 

gave him the opportunity to avoid prosecution laches,” 998 

7 We stated in Hyatt, 998 F.3d at 1369, that a “clear 

abuse of the patent system” can exist even if the prosecution tactics do “not literally violate regulations or statutory 

provisions.” This does not mean, however, that the permissibility of the patentee’s conduct, including if it was undertaken pursuant to an agreement the PTO chose to enter 

into, is irrelevant to weighing the equities of the overall situation.

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PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC. 15

F.3d at 1366 (emphasis added), Hyatt’s subsequent cooperation with the PTO could, even then, have saved his patents. In Hyatt, we “remand[ed] to the district court for the 

limited purpose of affording Hyatt the opportunity to present evidence on the issue of prosecution laches,” id. at 

1371, which we would not have done had the ongoing impact of Hyatt’s delays already conclusively established that 

his patents were unenforceable.

In my view, Apple failed to prove it obtained intervening rights in the accused technology any sooner than 2000, 

as that is the earliest date it was possibly working on what 

became the infringing FairPlay product. Apple also failed 

to prove that PMC unreasonably and inexcusably delayed 

prosecution in or after 2000. As Apple did not establish 

any time during which there was both delay and prejudice, 

Apple did not demonstrate it suffered prejudice “attributable to” PMC’s delay. Therefore, Apple did not meet its burden to prevail on its prosecution laches counterclaim. The 

district court’s contrary finding, which I believe is based on 

an incorrect reading of the law—one which wrongly permitted Apple to persuade the court that PMC’s delay had 

material lingering effects as late as 2011—should be reversed.8 Accordingly, I respectfully dissent.

8 The prejudice prong of the prosecution laches test 

received very little attention in the parties’ appellate 

briefs, covering just 11 of the 167 pages of briefing we received. See Appellant’s Br. 59-60; Appellee’s Br. 71-77; Appellant’s Reply Br. 29-30. The parties seem to have taken 

the same approach in the district court. Near the conclusion of the bench trial on equitable issues, the district judge 

was left to ask Apple’s counsel to “in one sentence, tell me 

what the prejudice to your client is,” to which the response 

was: “Well, the prejudice is that, had these applications 

been prosecuted diligently as they should have been, that 

the invention that is being claimed in the ’091 patent would 

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have been long since in the public domain.” Personalized 

Media Commc’ns, LLC v. Apple, Inc., No. 2:15-cv-01366, 

ECF No. 645 (Bench Trial Transcript), at 239-40; see also 

id. at 261 (“[Apple] has been prejudiced the same way the 

public has been prejudiced, that the term of the patent monopoly was shifted.”). The parties’ decision to devote scant 

consideration to prejudice undoubtedly increased the challenge confronted by the district court.

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