Argument Preview / Panel Activity

This week we are previewing oral arguments in two cases that attracted amicus briefs. Today we highlight Personalized Media Communications, LLC v. Apple, Inc. On appeal, Personalized Media Communications challenges a district court’s decision to overturn a jury verdict based on the equitable doctrine of prosecution latches. Personalized Media argues the district court committed legal error and abused its discretion in ruling that Personalized Media engaged in an “egregious misuse” of the patent system. This is our argument preview.

In its opening brief, Personalized Media argues the district court abused its discretion with respect to both the finding of “unexpected delay in prosecution” and the conclusion “that Apple met its burden of establishing . . . prosecution laches.”

Personalized Media asserts that “prosecution laches is reserved for egregious misuses of the patent system that give rise to intervening rights.” And it argues that it “engaged in none of the conduct that has resulted in a finding of laches in prior cases.” In particular, it claims lower courts “consistently have refused to impose laches when an applicant, particularly a small applicant with resource constraints, has prosecuted a family of continuation applications over time.”

Additionally, Personalized Media says that its “compliance with [a] consolidation agreement precludes a finding of laches” as a matter of law.

Next, it argues that the district court’s judgment rested on “clearly erroneous factual findings, particularly given the clear and convincing evidence standard and Apple’s lack of supporting fact and expert testimony.”

Finally, Personalized Media asserts that the district court’s holding that Apple developed intervening rights, and so had established prejudice, was also abuse of discretion.

In its response brief, Apple asserts the “district court properly found that [Personalized Media’s] delay prosecuting the [relevant] patent was unreasonable and inexcusable under the totality of the circumstances.” It argues that Personalized Media’s “conduct hampered examination, resulting in further delay.” And Apple maintains that Personalized Media’s “amendment tactics and abuse of a consolidation plan” furthered its goal of delay.

Apple further argues the “district court properly found that Apple’s work on [its own product] overlapped with the improper delays PMC engineered through its conduct.” Additionally, Apple argues, Personalized Media “fails to show clear error or an abuse of discretion.”

Personalized Media reiterates its argument in its reply brief that the “district court’s decision to set aside the jury’s verdict based on prosecution laches is inequitable and unsupportable.” Moreover, it maintains that it “did not act egregiously and Apple has no intervening rights.” Therefore, Personalized Media asserts, the “decision below . . . should be reversed.”

Fair Inventing Fund filed an amicus brief supporting Personalized Media and reversal of the district court’s ruling. In its brief, Fair Inventing Fund argues that “declaring a duly-issued patent unenforceable is an extreme sanction,” and the facts in this case “do not warrant the harsh sanction.”

This case will be argued this Thursday, July 7. We will report on any developments.