St. Louis patent attorney Bryan Wheelock spoke to Bloomberg Law about a patent infringement lawsuit against Apple that asserted numerous submarine patents.

So-called submarine patents earn their name because the underlying technology is developed in the early days of a new industry or tech segment and is then purposely delayed at the USPTO so that it will grant when adoption rates are higher and thus patent infringement lawsuits are likely to be more profitable. The technology disappears into the murky waters of patent prosecution, in other words, only to surface years or even decades later and attack its competitors. 

In the present case, Personalized Media Communications sued Apple for infringing a patent that dates back to the 1980s. Internal documents from 1991 even divulged their strategy to use submarine patents to attack Apple, which they deemed a “natural candidate.”

Personalized Media was even able to secure a jury verdict awarding them $308.5 million in March, but, on post-trial motions, Judge Gilstrap in the Eastern District of Texas tossed out the verdict and the settlement along with it.

“The course of conduct undertaken by PMC constitutes an unreasonable delay and an abuse of the statutory patent system,” Gilstrap said in his decision.

Wheelock notes that Personalized Media’s conduct was completely legal at the time and the USPTO had ample opportunity to grant or reject the patent application if they had wanted to. “Instead,” Wheelock says, “the patent system delayed in fixing the problem of submarine patents, and the applicants just did what was completely legal under the statute and rules.”

“It is ridiculous that a patent could issue in 2012 on technology from the 1980s, but this is what the system once allowed, and the USPTO was an active participant in the result,” he adds.

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