Google & PMC Voluntarily Dismiss Federal Circuit Patent Appeal (Case 22-1206)
Google, LLC and Personalized Media Communications, LLC jointly dismissed their Federal Circuit appeal challenging the patentability of two signal processing patents — US7865920 and US9674560 — after 783 days. The agreed dismissal under Fed. R. App. P. 42(b) leaves each side bearing its own costs and the underlying validity questions unresolved on the public record.
Agreed Federal Circuit exit leaves PMC signal processing patents in limbo
Filed in December 2021 at the Court of Appeals for the Federal Circuit (Case No. 22-1206), this appeal arose from an invalidity/cancellation action targeting two Personalized Media Communications patents: US7865920 and US9674560, both directed to signal processing apparatus and methods. Google, LLC appeared alongside PMC as co-plaintiffs, with representation from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. The case reached the appellate level, signalling that prior proceedings — most likely inter partes review or ex parte reexamination — had already produced a ruling that at least one party sought to contest.
The proceeding closed on 23 January 2024 when the parties filed an agreed motion to dismiss under Federal Rule of Appellate Procedure 42(b). The court accepted the joint stipulation and ordered dismissal, with each side bearing its own costs. The public record does not specify whether the dismissal was entered with or without prejudice, meaning the precise preclusive effect — if any — on future challenges to these patents cannot be confirmed from the docket alone.
At 783 days, the appeal ran for over two years before the parties reached agreement, suggesting that substantive negotiations — or a separate commercial resolution — likely preceded the joint filing. Early voluntary dismissals at the Federal Circuit in patentability appeals often accompany licensing settlements or shifts in litigation strategy, though no such agreement has been disclosed publicly. What remains unknown is whether the underlying PTAB or USPTO determination stands, and whether either patent remains enforceable in its current form.
Filing to resolution in 783 days
783 days — appeal lifespan from filing to agreed dismissal
Joint voluntary dismissal under FRAP 42(b) — what it means for both patents
FRAP 42(b): agreed dismissal on joint stipulation
Federal Rule of Appellate Procedure 42(b) permits parties to dismiss an appeal by filing a signed agreement. Unlike a unilateral withdrawal, a joint stipulation signals that both sides consented to ending the proceeding — most commonly after a settlement, licensing agreement, or strategic reassessment. The court is not required to make any substantive ruling on the merits.
Consent-based exitWith or without prejudice? The public record is silent
A dismissal ‘with prejudice’ bars the dismissing party from relitigating the same claims; ‘without prejudice’ preserves that right. The court order in Case 22-1206 states only that the proceeding is dismissed under FRAP 42(b) — it does not specify either qualifier. Under default appellate practice, a voluntary dismissal by agreement is often treated as without prejudice unless the order states otherwise, but practitioners should verify against any separate settlement terms.
Prejudice status unconfirmedEach side bears own costs — no prevailing party signal
The order’s cost provision — each side bears its own costs — is a standard term in agreed dismissals and is consistent with a negotiated exit rather than a contested ruling. It avoids any judicial characterisation of one party as the prevailing party, which can carry implications for fee-shifting motions under 35 U.S.C. § 285 in related district court proceedings.
No fee-shifting signalUnderlying validity of US7865920 and US9674560 remains unresolved
Because the Federal Circuit made no merits ruling, the validity determinations from the prior tribunal — whether PTAB or USPTO — are not disturbed by this dismissal. Companies in the signal processing and digital media delivery space should verify the current prosecution and post-grant status of both patents independently, as enforceability may hinge on those earlier proceedings.
Prior ruling may still standFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Google, LLC | Company | Patent assertion entity — holder of US7865920 and US9674560, signal processingSearch in Eureka ↗ |
| Defendant | Defendant | Company | No defendant identified in the public case record for this appealSearch in Eureka ↗ |
| Plaintiff counsel | Andrea Grace Klock Mills At | Attorney | Counsel for Google, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Cory C. Bell | Attorney | Counsel for Google, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Erika Arner | Attorney | Counsel for Google, LLCSearch in Eureka ↗ |
| Plaintiff counsel | Joshua Goldberg | Attorney | Counsel for Google, LLCSearch in Eureka ↗ |
| Presiding judge | Judge / | Chief Judge | Court of Appeals for the Federal Circuit — Chief JudgeSearch in Eureka ↗ |
Stipulation of dismissal — official text
The order’s phrasing — ‘the parties having so agreed’ — confirms this was a fully consensual exit, not a court-initiated or unilateral dismissal. The absence of any merits language means neither patent’s validity was adjudicated at the appellate level. The cost neutrality clause removes any prevailing-party signal that could be leveraged in parallel or subsequent litigation. The practical effect: both patents exit the proceeding with their pre-appeal legal status intact.
US7865920 & US9674560 — Signal Processing Apparatus and Methods
US7865920 and US9674560 are held by Personalized Media Communications, LLC, a company with one of the largest and longest-standing patent portfolios in the broadcast signal processing and conditional access domain. Both patents trace their application lineage to the 1990s — US7865920 to application number 08/444758 and US9674560 to 08/447611 — indicating priority claims that predate much of modern digital media delivery infrastructure. Their subject matter, signal processing apparatus and methods, covers foundational techniques relevant to content identification, conditional access, and personalised media delivery.
PMC’s portfolio has historically been asserted against major technology and media companies, making these patents strategically significant beyond their technical scope. The involvement of Google as a co-petitioner in invalidity proceedings is consistent with the broader industry effort to challenge PMC’s foundational claims. Companies building products in streaming, broadcast, set-top-box technology, digital rights management, or personalised content delivery should treat the PMC portfolio — including these two patents — as an active enforcement risk until their post-grant status is fully verified.
Should you run an FTO against US7865920 and US9674560?
Any product team or R&D function working on signal processing pipelines, conditional access systems, digital media delivery, or personalised content recommendation should assess exposure to these patents. The dismissal of the Federal Circuit appeal without a merits ruling means both patents retain presumptive validity. PMC has a documented history of asserting its portfolio broadly, and the absence of a public licence disclosure means third parties cannot assume they are covered by any Google-PMC arrangement.
PatSnap Eureka’s FTO Search Agent can map the claim scope of US7865920 and US9674560 against your product architecture, identify relevant prior art that may inform invalidity arguments, and flag any continuation or divisional applications that could extend the same claim families. Ongoing claim monitoring ensures your team is alerted if PMC prosecutes new claims from the same priority chain — a common tactic in long-running portfolio enforcement strategies.
Run a freedom-to-operate analysis on US7865920 to assess your product’s exposure
Run FTO in Eureka →Similar Federal Circuit patentability appeals in signal processing
PatSnap Eureka tracks related litigation across truck body equipment, vehicle accessories, and comparable infringement actions in the Georgia district system.
What this case signals for the signal processing IP landscape
A joint Federal Circuit exit after two years of appellate proceedings suggests a negotiated resolution — and raises questions about PMC’s broader enforcement posture.
Agreed dismissals at the Federal Circuit often mask licensing activity
When both plaintiff and opponent jointly dismiss a patentability appeal after 783 days without a merits ruling, a private licensing or settlement agreement is the most common explanation. Companies monitoring PMC’s patent portfolio should track whether new enforcement actions referencing these patents emerge in district court.
No merits ruling means the patents retain their pre-appeal status
Without a Federal Circuit decision on validity, US7865920 and US9674560 carry whatever patentability determination was issued at the PTAB or USPTO level. Any company operating in signal processing, conditional access, or digital media delivery that has not run an FTO against these patents should treat them as presumptively valid.
Google v Defendant — key questions answered
Case 22-1206 was voluntarily dismissed by joint agreement of Google, LLC and Personalized Media Communications, LLC on 23 January 2024 under Federal Rule of Appellate Procedure 42(b). The proceeding had concerned the patentability of US7865920 and US9674560. The court ordered each side to bear its own costs and issued no ruling on the merits of the validity challenge.
The two patents at issue were US7865920 and US9674560, both assigned to Personalized Media Communications, LLC and directed to signal processing apparatus and methods. Both trace application numbers to the mid-1990s filings 08/444758 and 08/447611 respectively, suggesting long priority chains typical of the PMC portfolio.
A dismissal under FRAP 42(b) by joint agreement means the Federal Circuit makes no ruling on the merits of the appeal. The validity determination from the prior proceeding — whether a PTAB final written decision or USPTO ruling — is neither affirmed nor reversed by the appellate court. The patents retain whatever legal status they held before the appeal was filed.
Neither party can be said to have won or lost. The case was dismissed by mutual agreement with no merits ruling. The cost order — each side bears its own costs — reinforces that the court made no prevailing-party determination. Whether this reflects a commercial resolution between Google and PMC is not disclosed in the public record.
Based on the public record, the dismissal without a Federal Circuit merits ruling means both patents retain presumptive validity. Companies should independently verify the current post-grant status of each patent at the USPTO and PTAB, and confirm whether any reexamination certificates or final written decisions have altered the claim scope before drawing conclusions about enforceability.
PatSnap Eureka searches patents and litigation data to answer instantly.