Laches Not A Defense If Patent Infringement Occurs Within Six Years

The U.S. Supreme Court held that laches cannot be invoked as a defense against a claim for patent infringement damages brought within the 6-year damages limitation period specified in the Patent Act, 35 U.S.C.§286. The Supreme Court extended its holding in copyright law (Petrella) to patent law, finding that laches cannot curtail a legal right created by Congress. SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC, No. 15-927 (2017) (Available Here).

In 2010, SCA Hygiene Products Aktiebolag (“SCA”) sued First Quality Baby Products (“First Quality”) for patent infringement. Earlier, in 2004, SCA had requested a reexamination of its subject patent in light of a First Quality patent. In 2007, the PTO issued a reexam certificate confirming validity of the SCA patent. The District Court granted summary judgment and dismissed the case in favor of defendant First Quality based on laches and equitable estoppel. The Federal Circuit affirmed, en banc, and held that SCA’s claims were barred by laches in light of Aukerman and Petrella, holding that laches can be asserted to defeat a claim for damages in the 6-year damage period and concluding that Congress, in enacting the Patent Act, had codified a laches defense that barred recovery of legal remedies. The Supreme Court vacated the judgment in part and remanded the SCA case.

In the Petrella copyright case, the Supreme Court held that in the face of a statute of limitations enacted by Congress, laches cannot be invoked to bar legal relief. Applying this logic to the Patent Act, Section 286, the Supreme Court inferred that this provision represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim. Laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by Section 286.

The decision involved both separation of powers principles and the role of laches in equity. A statute of limitations reflects a congressional decision that timeliness is better judged by a hard and fast rule instead of a case-specific judicial determination. Even assuming that Section 282(b)(1) incorporates a laches defense of some dimension, as argued by First Quality, the Supreme Court found that it does not necessarily follow that the defense may be invoked to bar a claim for damages incurred within the period set out in Section 286. First Quality relied on lower court cases decided before the Patent Act of 1952 to argue that Section 282 codified a practice of permitting laches to be asserted against damages claims. However the Supreme Court determined that the prominent feature of the relevant legal landscape at the time was the well-established rule that laches cannot be invoked to bar a claim for damages incurred within a limitations period specified by Congress.

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