APPENDIX A
`APPENDIX A
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`

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`Case: 21-2275 Document: 49 Page: 1 Filed: 01/20/2023
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`
`
`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.
`
`1a
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`Case: 21-2275 Document: 49 Page: 2 Filed: 01/20/2023
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`2
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`
` JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
`DC, for amicus curiae Fair Inventing Fund. Also repre-
`sented 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 em-
`ployed 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 Dis-
`trict 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 il-
`legally 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 en-
`crypted the decryption key as an additional layer of protec-
`tion. Id.
`
`2a
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`Case: 21-2275 Document: 49 Page: 3 Filed: 01/20/2023
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`3
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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 re-
`maining issues and found the ’091 patent unenforceable
`based on prosecution laches. J.A. 1–3. Relying on our re-
`cent decision in Hyatt, the court determined that laches re-
`quired a challenger to prove that the applicant’s delay was
`unreasonable and inexcusable under the totality of the cir-
`cumstances 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 un-
`reasonable and unexplained delay amounting to an egre-
`gious 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-Re-
`
`lated Aspects of Intellectual Property (“TRIPS Agree-
`ment”) 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” appli-
`cations as applicants sought to take advantage of the exist-
`ing law providing a patent term keyed from issuance.
`Id. at 1352–53.
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`(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 com-
`plex,’” containing over 500 pages of text and over 22 pages
`of figures. J.A. 33 (CL 20). And PMC filed each of its ap-
`plications 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 “de-
`layed 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 attribut-
`able to the manner in which PMC prosecuted its applica-
`tions in the first place.” J.A. 35 (CL 25). The court
`reasoned that “PMC’s prosecution conduct made it virtu-
`ally 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 ex-
`aminers’ 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” applica-
`tions and “B” applications, with the PTO prioritizing “A”
`applications. Id. Rejected claims would transfer to the cor-
`responding “B” application and prosecution of “B” applica-
`tions was stayed until the corresponding “A” application
`issued. Id. PMC would abandon any remaining applica-
`tions that were not designated “A” or “B.” Id. This “A” ap-
`plication-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 Agree-
`ment alone does not operate to shift blame on the PTO.
`J.A. 34–35 (CL 24). The court explained that the Consoli-
`dation Agreement had to be understood in the context of
`PMC’s business-driven, unreasonable prosecution strat-
`egy. 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
`
`5a
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`Case: 21-2275 Document: 49 Page: 6 Filed: 01/20/2023
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`6
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`other documents from the same time period describing
`PMC’s strategy at the time of hiding its technologies, “qui-
`etly monitor[ing]” infringement, and “roll[ing] out” patents
`over time because “[o]nce infringement becomes wide-
`spread 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 Consol-
`idation Agreement “to realize [PMC’s] initial strategy of se-
`rialized
`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 Appli-
`cation 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 docu-
`ment 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 Sep-
`tember 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 Ap-
`ple as one of several “companies that are natural candi-
`dates for participating in the commercialization of [PMC’s]
`technologies.” (quoting J.A. 37865, 37870)).
`
`6a
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`Case: 21-2275 Document: 49 Page: 7 Filed: 01/20/2023
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`the ’145 application. J.A. 22 (FF 61). The amendment
`changed the claim from “[a] method of enabling a program-
`ming presentation at a receiver station” to “[a] method of
`decrypting programming at a receiver station” and intro-
`duced various encryption and decryption steps:
`
`' 145 application claim 22
`'145 application claim 22
`(February 4, 2003 amendment)
`(March 15, 2002 amendment)
`a decrypting
`A method of enabling a programming A method of enaliling
`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
`4tsahle4 encrypted information;
`disabled information;
`detecting the presence of an instruct-to-
`detecting the presence of an instruct-to-
`enable 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;
`ms dif) ing determining a fashion in
`modifying a fashion in which said
`receiver
`station
`locates
`said
`enabling which said
`receiver station
`locates sat4
`enaliling infum1a1i0n in resJJsnse 10 a first
`information in response to said instruct-to-
`decryption key by processing said instruct-to-
`enable signal;
`said enabling
`locating
`information enable signal;
`locating said enaliling infurmatien first
`based on said step of modifying a fashion;
`information decryption key based
`enabling said disabled
`said step of
`011
`based on said step of locating said enabling medifJ ing a fusaien determining;
`enabl-mg decrypting
`said 4tsahle4
`information; and
`programming encrypted infonnation eased en said sleJJ ef
`said
`outputting
`lseating said enaliling infurmalisn using said
`presentation based on said step of enabling said
`first decryption key; and
`disabled information.
`programming
`outputting
`said
`JJresentalisn based on said step sfenaliling said
`disaliled infurmalien decrypting.
`
`(DTX-1568 at 978)
`
`(DTX-1568 at 1132, 1177)
`
`Id. The court found that the February 4, 2003 amendment
`was the first time that encryption, decryption, and decryp-
`tion keys were a part of this claim. Id.
`That same year, the PTO stayed the prosecution of
`PMC’s applications pending resolution of eleven reexami-
`nation proceedings on related, issued patents. J.A. 16 (FF
`46). The stay lasted several years, as reexamination con-
`tinued, and was lifted in 2009. J.A. 16 (FF 46–47).
`
`7a
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`Case: 21-2275 Document: 49 Page: 8 Filed: 01/20/2023
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`Once prosecution reopened, the PTO rejected amended
`claim 22 of the ’145 application claiming the “decrypting
`programming” method. J.A. 23 (FF 63). PMC subse-
`quently amended claim 22 significantly, and the ’145 appli-
`cation ultimately issued. Id.
`But on April 11, 2011, PMC reintroduced the rejected
`“decrypting programming” method claim to the ’507 appli-
`cation (the corresponding “B” application), as a part of sev-
`eral other claim amendments. J.A. 23 (FF 64). PMC told
`the PTO that the amendments “place the claims in condi-
`tion for allowance,” despite the “decrypting programming”
`claim having previously been rejected. Id. This time, how-
`ever, 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 pa-
`tent is set to expire in 2027—forty years after its 1987 pri-
`ority 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 pa-
`
`tent also claims priority to PMC’s 1981 application. Com-
`pare Appellant’s Br. 8, with Resp. Br. 3. We do not resolve
`this dispute as it is unnecessary for the purposes of this
`appeal.
`
`8a
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`9
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`had already matured into the version accused of infringe-
`ment. J.A. 39 (CL 38). The court reasoned that the prose-
`cution delays had to be understood in the context of PMC’s
`expressed desire to extend its patent rights as long as pos-
`sible 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 under-
`scored 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 prosecu-
`tion laches for abuse of discretion. Cancer Research Tech.
`Inc., 625 F.3d 724, 728–29
`Ltd. v. Barr Labs
`(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 mis-
`use of the statutory patent system.” Id. at 1360–61 (cita-
`tion omitted). Prosecution laches requires proving two
`elements: (1) the patentee’s delay in prosecution must be
`unreasonable and inexcusable under the totality of circum-
`stances and (2) the accused infringer must have suffered
`prejudice attributable to the delay. Id. at 1362. We con-
`clude that the district court did not abuse its discretion by
`
`9a
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`legally erring or making clearly erroneous factual findings
`in determining that Apple established both laches ele-
`ments.
`
`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 re-
`quires 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 cir-
`cumstances 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. Set-
`ting 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 prosecu-
`tion strategies, specifically to ambush companies like Ap-
`ple 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 ap-
`plications. Hyatt, 998 F.3d at 1354–55, 1370. Still, we
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`found that the PTO met its burden to prove an unreasona-
`ble and unjustifiable delay. Id. at 1369. We also explained
`that “[a]n applicant must . . . not only comply with the stat-
`utory 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 un-
`reasonable 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.” Ap-
`pellant’s Br. III(C). PMC points to delays in prosecution
`that occurred due to the PTO grappling with PMC’s GATT-
`Bubble 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) (find-
`ing that the district court erroneously found the PTO solely
`responsible for a 9-year stay on prosecution, when the pe-
`riod 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 Hy-
`att, the district court here determined that the various
`prosecution delays occurred because of issues PMC inten-
`tionally 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 prose-
`cution 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 ap-
`plications.” 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 consid-
`ered other facts evidencing an unreasonable and unex-
`plained 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 consid-
`ering 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 dis-
`trict 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. Appel-
`lant’s Br. 47–48; Reply Br. 28–29. PMC, however, merely
`asserts that the 2003 amendments are “narrowing” with-
`out 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 conclud-
`ing that PMC unreasonably delayed in presenting the en-
`cryption 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 limita-
`tions to the claims. J.A. 39–40 (CL 38, 42). In Hyatt, we
`found that a similar delay in presenting claims was suffi-
`cient 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 pre-
`senting 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 rewrit-
`ing 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 ex-
`amination.” Id. at 1363. The district court properly con-
`sidered 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 dis-
`trict court correctly considered the totality of the circum-
`stances and did not disregard or ignore relevant facts.
`PMC also asserts that several of the district court’s fac-
`tual findings concerning the first laches element amount to
`an abuse of discretion. Appellant’s Br. IV. First, PMC as-
`serts 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 dis-
`trict court needed an expert’s specialized knowledge to help
`understand the administrative records and the PTO regu-
`lations 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 dou-
`ble 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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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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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.
` Appel-
`lant’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 rea-
`sonably 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 it-
`self describes “issued and pending patents.” See J.A. 8573.
`And the court corroborated this document with similar ev-
`idence. See J.A. 6–7 (FF 16–17); see also J.A. 9425–26 (tes-
`timony 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 pros-
`ecution 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 submit-
`ted was irrelevant because “there was a reasonable expla-
`nation” for PMC submitting the references). These
`arguments amount to mere disagreement, not clearly erro-
`neous factual findings.
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`15
`
`Along those same lines, PMC argues that the district
`court clearly erred by considering PMC’s document describ-
`ing a strategy of keeping “patents hidden while industry
`infringement is quietly monitored” because that strategy
`would support “post-issuance laches, which since SCA Hy-
`giene 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 (ex-
`plaining that actions taken “for the business purpose of de-
`laying [] 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 circum-
`stances.
`
`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 prov-
`ing that it “invested in, worked on, or used the claimed
`technology during the period of delay.” Id. (citation omit-
`ted). We affirm the district court’s finding that PMC’s de-
`lay prejudiced Apple.
`PMC argues that the district court abused its discre-
`tion in finding that PMC’s delay prejudiced Apple. Appel-
`lant’s Br. V; Reply Br. II. We disagree.
`PMC argues that the district court erred because “Ap-
`ple needed to prove that PMC still was engaged in egre-
`gious conduct causing delays after 2003, which is when the
`district court found Apple began developing FairPlay.” Ap-
`pellant’s Br. 59. This argument misconstrues the record
`and the law.
`
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC v. APPLE INC.
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`PMC incorrectly assumes that the district court did not
`find that PMC was still engaging in “conduct causing de-
`lays after 2003.” Id. The district court found that the de-
`liberate 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 dis-
`trict 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 devel-
`ops, 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 origi-
`nal 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 pe-
`riod of delay lasted until at least 2003, when PMC intro-
`duced 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