Paying for Your Delay: Application of Prosecution Laches Can Render Issued Patents Unenforceable

The lengthy pendency of patent applications can lead some applicants to take advantage of and exploit the patent system to unreasonably delay the prosecution of patent applications, and in some instances extend the patent term far beyond the lifetime of the original parent application - especially in patent applications filed before the USPTO's June 8, 1995, implementation of rules under the General Agreement on Tariffs and Trade ("GATT") following the enactment of the Uruguay Round Agreements Act in 1994. To avoid unreasonable delays and to prevent applicants from exploiting the patent system to unreasonably delay the prosecution of applications that may prejudice the rights of others, an issued patent can be held unenforceable under prosecution laches - as in a recent case, Personalized Media Communications, L.L.C. v. Apple, Inc.2 BACKGROUND Personalized Media Communications ("PMC"), the assignee of U.S. Patent No. 8,191,091 ('091 patent), drawn to a "Signal Processing Apparatus and Methods," which was issued May 29, 2012, asserted the '091 patent against Apple, alleging Apple's digital rights management technology, FairPlay, infringed the patent. The asserted '091 patent issued from U.S. Patent Application No. 08/485,507 (the "'507 application"), filed June 7, 1995, as part of the influx of patent applications during the "GATT bubble" to take advantage of having the patent term calculated based on the issue date versus the earliest filing date under GATT. [...]the court held that Apple has made a showing of prejudice through its significant investment of time and resources into the development of FairPlay during the period of PMC's delay.