In a 7-1 decision, the Supreme Court held that the equitable defense of laches (i.e., delay in filing suit for patent infringement) cannot be invoked against a claim for damages brought within Section 286's 6-year statute of limitations. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U.S. ___ (Mar. 21, 2017).
In 2003, SCA sent a cease and desist letter to First Quality alleging patent infringement to which First Quality responded that the asserted patent was invalid in view of its own patent. In July 2004, SCA initiated a reexam in light of the First Quality patent and in 2007, the PTO confirmed validity. In 2010, SCA sued First Quality and First Quality moved for summary judgment based, in part, on laches. District court granted summary judgement and on appeal, the Federal Circuit reversed the lower court's decision finding that SCA's claims were barred by laches. The en banc court reaffirmed, after considering the Supreme Court's Petrella decision, holding that laches can be a defense to a claim asserted within the 6-year period set out in the Patent Act.
Writing for the majority, Justice Alito reasoned that laches defense does not apply for the following reasons: (1) under separation of power, equitable defense of laches does not apply where there is a statute of limitations; (2) even though relevant provisions of the Copyright and Patent Acts are worded differently, Petrella's reasoning applies here as well; and (3) that there were very few cases to establish a consensus in favor of laches. In his dissent, Justice Breyer argued that courts have unanimously applied laches in patent damages and that the majority opinion failed to identify a single case that held otherwise.
Full text of the opinion is available here.
In 2003, SCA sent a cease and desist letter to First Quality alleging patent infringement to which First Quality responded that the asserted patent was invalid in view of its own patent. In July 2004, SCA initiated a reexam in light of the First Quality patent and in 2007, the PTO confirmed validity. In 2010, SCA sued First Quality and First Quality moved for summary judgment based, in part, on laches. District court granted summary judgement and on appeal, the Federal Circuit reversed the lower court's decision finding that SCA's claims were barred by laches. The en banc court reaffirmed, after considering the Supreme Court's Petrella decision, holding that laches can be a defense to a claim asserted within the 6-year period set out in the Patent Act.
Writing for the majority, Justice Alito reasoned that laches defense does not apply for the following reasons: (1) under separation of power, equitable defense of laches does not apply where there is a statute of limitations; (2) even though relevant provisions of the Copyright and Patent Acts are worded differently, Petrella's reasoning applies here as well; and (3) that there were very few cases to establish a consensus in favor of laches. In his dissent, Justice Breyer argued that courts have unanimously applied laches in patent damages and that the majority opinion failed to identify a single case that held otherwise.
Full text of the opinion is available here.
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