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Supreme Court Strikes Down Equitable Defense of Laches in Patent Law

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Today, the Supreme Court issued its opinion in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927, 580 U.S. ___ (2017). In a 7-1 decision authored by Justice Alito, the Court reversed an en banc panel of the Federal Circuit and held that laches, the equitable doctrine that can limit the recovery of damages after an unreasonable delay, cannot be invoked as a defense against a claim for patent infringement damages brought within the 6-year limitations period prescribed by 35 U.S.C. § 286. This decision was highly anticipated in the wake of the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014), where the high court held that laches no longer applied in a copyright context.

The Court relied heavily on Petrella and determined that the Court’s reasoning from that case easily fit § 286 of the Patent Act. Slip. op. at 5. Similar to Petrella, where the Court was unwilling to undermine the Copyright Act’s three year limitation, the Court held that § 286 “represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim.” Id. at 6. Recalling from Petralla that laches was meant to be “gap-filling” and not “legislation-overriding,” the Court reiterated that “courts are not at liberty to jettison Congress’ judgment on the timeliness of suit.” Id. at 4-5.

First Quality’s argument that laches was codified in § 282 of the Patent Act based on an “unenforceability” defense was rejected. As the Court reasoned, “it would be exceedingly unusual, if not unprecedented” for Congress to include both a statute of limitations and a laches provision applicable to a damages claim. Id. at 9. The Court pointed out that neither the Federal Circuit, nor any party, had identified another federal statute that provided such “dual protection” against untimely claims. Id. In its 2015 en banc decision, the Federal Circuit reasoned that Congress intended to codify the defense in § 282 based on the application of laches to damages claims in pre-1952 case law. Id. However, the Supreme Court held that a “broad and unambiguous consensus” of common law was required for such a patent-law-specific rule, and none was to be found. Id. at 10.

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