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`IN THE
`Supreme Court of the United States
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`
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Applicant,
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`v.
`APPLE, INC.
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`
`
`Respondent.
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`
`
`APPLICATION FOR AN EXTENSION OF TIME TO FILE A
`PETITION FOR A WRIT OF CERTIORARI TO THE UNITED
`STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`
`William M. Jay
`GOODWIN PROCTER LLP
`1900 N Street, NW
`Washington, DC 20036
`
`
`
`June 16, 2023
`
`Kevin P. Martin
`Counsel of Record
`Gerard J. Cedrone
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1000
`kmartin@goodwinlaw.com
`
`Counsel for Applicant
`Personalized Media
`Communications, LLC
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`RULE 29.6 STATEMENT
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`Applicant Personalized Media Communications, LLC, has no parent corpora-
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`tions and no publicly held company owns 10% or more of its stock.
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`
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`i
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`
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`To the Honorable John G. Roberts, Jr., Chief Justice of the United States and
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`Circuit Justice for the United States Court of Appeals for the Federal Circuit:
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`Pursuant to Supreme Court Rule 13.5, Personalized Media Communications,
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`LLC (PMC), respectfully requests a 30-day extension of time, until September 7,
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`2023, within which to file a petition for a writ of certiorari to review the judgment of
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`the United States Court of Appeals for the Federal Circuit in this case. For the fol-
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`lowing reasons, good cause exists for PMC’s extension request.
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`1.
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`The Federal Circuit issued a precedential decision and entered judg-
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`ment in this case on January 20, 2023. See Personalized Media Commc’ns v. Apple,
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`Inc., 57 F.4th 1346 (Appendix A). The court of appeals denied PMC’s timely petition
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`for rehearing and rehearing en banc on May 10, 2023 (Appendix B). Unless extended,
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`the time to file a petition for a writ of certiorari will expire on August 8, 2023. The
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`jurisdiction of this Court would be invoked under 28 U.S.C. §1254(1).
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`2.
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`PMC seeks review of a split decision of the Federal Circuit that invali-
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`dated one of PMC’s patents under the judge-made doctrine of prosecution laches. As
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`Judge Stark explained in dissent below, the panel majority incorrectly found that
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`PMC engaged in unreasonable and unexplained delay of the prosecution of its patent
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`application during PMC’s “years of” cooperation with the U.S. Patent and Trademark
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`Office (PTO). Appendix, infra, at 32a (App. 32a). The Federal Circuit’s precedential
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`decision, which allows judges to second-guess the PTO’s reasonable docket-manage-
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`ment decisions and cancel patents long after they have issued, warrants this Court’s
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`review.
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`1
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`3.
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`As the petition will explain, PMC’s founder, John Harvey, pioneered
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`novel communications technology using signals embedded in broadcast program-
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`ming. See C.A. App. 5608-5609. PMC filed patent applications related to that tech-
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`nology in 1981 and 1987 and secured a number of patents between 1987 and 1994.
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`See C.A. App. 8075-8077.
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`4.
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`In 1994, Congress passed the Uruguay Round Agreements Act, Pub. L.
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`103-465, 108 Stat. 4809, which changed the duration of a U.S. patent from 17 years
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`after issuance of the patent to 20 years after the filing of the patent application. As
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`part of this change, Congress grandfathered applications filed before June 8, 1995.
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`See 35 U.S.C. §154(a)(2), (c)(1); 37 C.F.R. §1.129.
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`5.
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`In the run-up to the June 1995 deadline, PMC conducted a detailed
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`study of the specifications of its 1981 and 1987 applications and concluded that they
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`“disclosed many separate and distinct inventions which had not yet been patented.”
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`C.A. App. 38488. Accordingly, PMC filed 328 applications—one for each invention it
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`had identified—between March and June of 1995. C.A. App. 8077.
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`6.
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`To streamline review of these applications, PMC and the PTO entered
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`into a “consolidation agreement” in 1999. See C.A. App. 27639. The agreement re-
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`duced the number of PMC’s applications and grouped them into 56 subject-matter
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`categories. See C.A. App. 27711-27735. PMC and the PTO agreed that patent exam-
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`iners would focus first on relatively undisputed applications (designated “A” applica-
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`tions), before turning to companion applications that required further analysis (des-
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`ignated “B” applications). See C.A. App. 40250-40252.
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`2
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`7.
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`The patent at issue in this lawsuit—U.S. Patent No. 8,191,091 (’091 pa-
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`tent—originated as one of the “B” applications whose examination would be deferred
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`until after that of the related “A” application. C.A. App. 8079, 8082. The PTO ex-
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`pressly acknowledged this arrangement, confirming in correspondence with PMC
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`that, “per the consolidate[ion] agreement,” its examination of the relevant “B” appli-
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`cation would be “suspended and held in abeyance pending the outcome of the corre-
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`sponding ‘A’ application.” C.A. App. 16847-16848.
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`8.
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`PMC engaged in good-faith efforts to advance the prosecution of its ap-
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`plications, consistent with the A/B tracking system. In 2003, however, the PTO sus-
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`pended examination of all of PMC’s pending applications while it reexamined certain
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`previously issued patents. See PMC C.A. Br. 20-22. PMC objected and repeatedly
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`tried to restart examination, but the PTO did not lift the suspensions until 2009. See
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`id.; see also C.A. App. 9568.
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`9.
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`After examination resumed in 2009, the PTO began issuing patents to
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`PMC almost immediately. The PTO issued 41 patents in 2010, 14 patents in 2011,
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`and 2 patents—including the ’091 Patent—in 2012. See C.A. App. 8526, 9569.
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`10. PMC brought this lawsuit to seek recovery for Apple’s infringement of
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`the ’091 patent. Apple uses a software called “FairPlay” that it began to develop in
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`the early 2000s to protect digital content delivered to customers through its iTunes
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`and App Stores. C.A. App. 8085. As PMC explained during a week-long trial, Fair-
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`Play infringes several claims of the ’091 patent. Apple did not contest the validity of
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`the ’091 patent under 35 U.S.C. §§102, 103, or 112 at trial, instead arguing only that
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`3
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`its FairPlay software was noninfringing. The jury found Apple liable for infringement
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`and awarded PMC $308.5 million in damages. C.A. App. 3694-3700.
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`11. The district court threw out the jury’s verdict, concluding that the ’091
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`patent is unenforceable under the equitable doctrine of prosecution laches. C.A. App.
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`30-38. Under Federal Circuit precedent, to prove prosecution laches, an accused in-
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`fringer must establish that (1) the patentee engaged in “unreasonable and inexcusa-
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`ble” delay during prosecution, and (2) the accused infringer “suffered prejudice at-
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`tributable to the delay” because, for example, it worked on the claimed technology
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`during the period of delay. App. 9a; see, e.g., Hyatt v. Hirshfeld, 998 F.3d 1347, 1362
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`(Fed. Cir. 2021). The district court found both elements satisfied. C.A. App. 30-38.
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`It acknowledged that, in 1999, PMC had “develop[ed] a consolidation agreement” with
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`the PTO “and demarcated its applications by subject matter.” C.A. App. 34. But the
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`court found that the PTO consolidation “agreement itself . . . contributed to delays.”
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`C.A. App. 35-36. The court then found that Apple had suffered prejudice because
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`“[b]y 2005 . . . FairPlay had matured into the version accused of infringement.” C.A.
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`App. 39.
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`12. The Federal Circuit affirmed in a 2-1 decision. The majority agreed with
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`the district court that PMC had engaged in “unreasonable and inexcusable delay”
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`during prosecution of the ’091 patent. App. 10a. The majority acknowledged that
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`PMC had complied with its 1999 consolidation agreement with the PTO. But the
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`majority concluded that “PMC’s compliance with the Consolidation Agreement sup-
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`ports, rather than refutes, a finding of unreasonable and inexcusable delay.” App.
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`4
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`
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`11a. In the majority’s view, “PMC’s agreement to structure a serial examination of a
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`claim through first an A application and then a B application gave PMC the very kind
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`of prosecution delays that supported” a laches determination. Id.; see also App. 17a
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`(reasoning that the A/B tracking system allowed PMC to “tak[e] a second bite at the
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`examination apple,” thereby “creating improper delay”).
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`13.
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`Judge Stark dissented. Among other things, Judge Stark rejected the
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`majority’s conclusion that PMC’s compliance with the 1999 consolidation agreement
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`could be deemed a cause of unreasonable delay. As Judge Stark explained, the panel’s
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`decision was
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`in tension with [the Federal Circuit’s] holding in Hyatt, in which [the
`court] suggested that 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,’ Hyatt’s subse-
`quent cooperation with the PTO could, even then, have saved his pa-
`tents.
`App. 32a-33a (citation omitted) (quoting Hyatt, 998 F.3d at 1366).
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`14. The Federal Circuit’s precedential decision warrants this Court’s re-
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`view. The panel held that a patentee’s compliance with a PTO-approved prosecution
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`plan can constitute “unreasonable” delay, thereby justifying the judicial cancellation
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`of a duly issued patent. That radical intrusion into the PTO’s reasonable docket-
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`management decisions is wrong for several reasons.
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`15. First, the Federal Circuit’s decision is inconsistent with this Court’s
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`precedents, including its decisions in Overland Motor Co. v. Packard Motor Car Co.,
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`274 U.S. 417 (1927), and SCA Hygiene Products v. First Quality Baby Products, 580
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`U.S. 328 (2017). In Overland, the Court declined to apply prosecution laches to a
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`5
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`patent that took more than 12 years to issue because the applicant repeatedly took
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`the maximum allowable time (up to a year) to respond to the PTO. See 274 U.S. at
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`418-419, 424. Writing for the Court, Chief Justice Taft explained that there was no
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`“principle [that allowed the Court to] apply the equitable doctrine of abandonment by
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`laches in a case where the measure of reasonable promptness is fixed by statute, and
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`no other ground appears by reason of which laches could be imputed to the applicant.”
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`Id. at 424. More recently, in SCA, the Court held that an accused infringer could not
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`assert the defense of post-issuance laches where the patentee brought suit within the
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`statute of limitations. See 580 U.S. at 335 (“Laches is a gap-filling doctrine, and
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`where there is a statute of limitations, there is no gap to fill.”). In other words, “sep-
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`aration-of-powers principles” bar judges from using laches to second-guess the delib-
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`erate decisions by other branches. Id. at 334. Yet that is exactly what the Federal
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`Circuit did here in holding that PMC’s compliance with the 1999 consolidation agree-
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`ment gave rise to laches. Under Overland and SCA, the consolidation agreement
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`should have precluded laches.
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`16.
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`Second, the decision below has left Federal Circuit precedent in this area
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`in disarray. Most notably, as Judge Stark noted in dissent, the majority’s holding
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`conflicts with the Federal Circuit’s decision in Hyatt. See App. 32a. There, the court
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`explained that the PTO’s instructions to the applicant—including “its instructions to
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`demarcate the applications”—“gave him the opportunity to avoid prosecution laches.”
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`998 F.3d at 1366. Hyatt thus shows that an applicant who cooperates with the PTO
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`during examination has not engaged in the “egregious” conduct necessary to support
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`6
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`a laches defense. The panel majority in this case, however, held precisely the oppo-
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`site: not only was PMC’s entry into the consolidation agreement in 1999 insufficient
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`to avoid laches, but the majority actually condemned an examination plan entered by
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`the PTO as a “scheme” to “extend out prosecution.” App. 5a.
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`17. Third, the Federal Circuit’s decision is inconsistent with Congressional
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`design and separation-of-powers principles. Congress has granted the PTO the power
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`to grant and issue patents. 35 U.S.C. §2(a). That delegation of authority includes
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`“inherent authority to govern procedure before the [office]” and to “set reasonable
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`deadlines and requirements for the prosecution of applications.” In re Bogese, 303
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`F.3d 1362, 1368 (Fed. Cir. 2002); see §2(b)(2)(A) (authorizing the PTO to “establish
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`regulations, not inconsistent with law,” to “govern the conduct of proceedings in the
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`Office”). In keeping with that authority, courts have recognized that “[w]hen a patent
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`has been examined and duly granted,” courts must adhere to “the presumption of
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`administrative correctness of actions of the agency charged with examination of pa-
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`tentability.” Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc.,
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`98 F.3d 1563, 1569 (Fed. Cir. 1996). The PTO’s entry into the consolidation agree-
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`ment with PMC streamlined the agency’s docket and represented a reasonable exer-
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`cise of its docket-management authority—not egregious conduct by PMC. By holding
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`that agreement against PMC, the Federal Circuit turned the presumption of admin-
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`istrative correctness on its head.
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`18. Finally, the majority’s decision introduces unpredictability and unfair-
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`ness into the patent-prosecution process. Now, even if an applicant reaches and
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`7
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`complies with an express agreement with the PTO, it must worry that, years later, a
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`district judge might second-guess the PTO’s deliberate decisionmaking and find the
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`patent unenforceable for procedural reasons. The consequence of the panel’s decision
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`is to rob the PTO of an important tool to manage its own docket—and to rob patentees
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`of the certainty that the patent system requires. For all these reasons, the Court
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`should grant certiorari to realign the doctrine with precedent and sound policy.
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`19.
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`In the alternative, this case warrants the Court’s review to address
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`whether prosecution laches remains a valid defense to patent infringement. The
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`Court’s recent decision in SCA rejected the defense of post-issuance laches—i.e.,
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`laches based on a patentee’s delay in filing an infringement suit. See 580 U.S. at 959-
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`967. The principles announced in SCA apply equally to the defense of pre-issuance
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`laches—i.e., laches during the prosecution of a patent application. It has been dec-
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`ades since the Court has considered the defense of prosecution laches, and it has not
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`passed on the defense since its decision in SCA. Especially in light of the Federal
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`Circuit’s sweeping conception of the defense in the decision below, the time is ripe for
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`the Court to revisit the issue.
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`20. Good cause exists for an extension of time to file a petition raising these
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`questions. PMC’s appellate counsel have been heavily engaged with other matters
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`and have other commitments that make the preparation of a petition for a writ of
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`certiorari by the existing deadline impracticable, including a bench trial in the Dis-
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`trict of Delaware on June 14, an argument in the Federal Circuit on July 10, a prin-
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`cipal brief in the Federal Circuit due on July 10, a principal brief in the Tenth Circuit
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`8
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`due on July 12, a mediation on July 25, a reply brief in the Federal Circuit due on
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`August 11, an argument in the Ninth Circuit’s Alaska sitting on August 15, and a
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`principal brief in the Massachusetts Appeals Court likely to be due on August 16.
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`The requested extension would allow counsel to continue to research the relevant
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`legal issues and to prepare a petition that fully addresses the important questions
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`raised by the proceedings below.
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`For the foregoing reasons, PMC respectfully requests an extension to file a pe-
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`tition for a writ of certiorari to and including September 7, 2023.
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`Respectfully submitted.
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`
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`
`
`Kevin P. Martin
`Counsel of Record
`Gerard J. Cedrone
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1000
`kmartin@goodwinlaw.com
`
`Counsel for Applicant Personalized
`Media Communications, LLC
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`June 16, 2023
`
`
`William M. Jay
`GOODWIN PROCTER LLP
`1900 N Street, NW
`Washington, DC 20036
`
`
`
`
`
`9
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`
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