IP News

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.

The '091 patent issued from a massive patent family created by PMC. Just prior to the 1995 change in patent term calculation from 17 years from issuance to 20 years from priority date, "PMC filed 328 GATT-Bubble applications." Id. at 1355. "'GATT-Bubble' applications" are applications filed in an effort to "take advantage of the existing law providing a patent term keyed from issuance." Id. at 1350, n.2. PMC's applications were "atypically long and complex … containing over 500 pages of text and over 22 pages of figures" and initially included only "a single claim" that was "subsequently amended." Id. This strategy ultimately led to PMC prosecuting somewhere between "6,000 to 20,000 claims" in the patent family. Id. at 1350-51. At issue in this case, were claims related to a "method of decrypting programming at a receiver station" Id. at 1352.