Laches defense nixed by SCOTUS (updated 03/21/17)


35 U.S.C. 286 Time limitation on damages:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government. . . .

In a 7-1 decision authored by Justice Alito, Justice Breyer dissenting, the S.Ct. held that, “[b]y the logic of Petrella [which held that laches cannot be used to bar copyright claims during a three-year statute of limitations period] we infer that this provision represents a judgment by Congress that a patentee may recover for damages for infringement committed within six years of filing the claim.”

Breyer's dissent and the majority's response

In his dissent, Justice Breyer's wrote:

Laches is a doctrine that bars a plaintiff ’s claim when there has been unreasonable, prejudicial delay in commencing suit. See 1 D. Dobbs, Law of Remedies §2.3(5), p. 89 (2d ed. 1993). The question before us is whether acourt can apply this doctrine in a patent infringement action for damages brought within the statute of limitations. The Court holds that a court cannot. Laches, it says, is a “gap-filling doctrine,” generally applicable where there is no statute of limitations. But the 1952 Patent Act contains a statute of limitations. Hence there is “no gap to fill.” Ante, at 5.

In my view, however, the majority has ignored the fact that, despite the 1952 Act’s statute of limitations, there remains a “gap” to fill. See infra, at 2–3. Laches fills this gap. And for more than a century courts with virtual unanimity have applied laches in patent damages cases. Congress, when it wrote the 1952 statute, was aware of and intended to codify that judicial practice. I fear that the majority, in ignoring this legal history, opens a new “gap” in the patent law, threatening harmful and unfair legal consequences.
[. . .]
Two features of this statutory language are important. First, the limitations provision, unlike those in many other statutes, does not set forth a period of time in which to sue, beginning when a claim accrues and then expiring some time later. [. . .] Rather, it permits a patentee to sue at any time after an infringement takes place. It simply limits damages to those caused within the preceding six years. That means that a patentee, after learning of a possible infringement in year 1, might wait until year 10 or year 15 or year 20 to bring a lawsuit. And if he wins, he can collect damages for the preceding six years of infringement.

This fact creates a gap.

The majority responded to this argument in footnote 4 of the Court's opinion (internal citations removed):

The dissent argues that there is a “gap” in the statutory scheme because the Patent Act’s statute of limitations might permit a patentee to wait until an infringing product has become successful before suing for infringement. We rejected a version of this argument in Petrella, and we do so here. The dissent’s argument implies that, insofar as the lack of a laches defense could produce policy outcomes judges deem undesirable, there is a “gap” for laches to fill, notwithstanding the presence of a statute of limitations. That is precisely the kind of “legislation-overriding” judicial role that Petrella rightly disclaimed.


This case has an interesting background:

  • On October 31, 2003, patent holder SCA notifies defendant First Quality of infringement of Patent 6,375,646.
  • On November 21, 2003, First Quality informs SCA that it thinks SCA's patent is invalid because it is anticipated by prior patent 5,415,649, and therefore it is not infringing
  • On July 7, 2004, SCA requests reexamination of the '646 patent in light of the '649 patent. SCA does not notify or communicate with First Quality regarding the reexamination or otherwise, after the initial exchange.
  • On March 27, 2007, the PTO confirmed patentability of all 28 original claims and issued several other claims SCA added during reexamination.
  • On August 2, 2010 – over three years after reexamination concluded and nearly seven years since the original communication – SCA filed a complaint alleging First Quality of infringing the '646 patent.
  • The district court granted First Quality's summary judgment motion on latches and equitable estoppel.
  • SCA appealed and in an earlier panel decision, the summary judgment was affirmed the district court's analysis.
  • SCA filed a petition for rehearing en banc, posing the following questions:
    1. In light of the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer 1), should A.C. Aukerman Co. v. R.L. Chaides Constr. Co. 2), be overruled so that the defense to latches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitation period established by 35 U.S.C. § 286?
    2. In light of the fact that there is no statute of limitations for claims of patent infringement and in view of Supreme Court precedent, should the defense of latches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief?


On May 2, 2016, the S.Ct. granted a petition in SCA Hygiene Products v. First Quality Baby Products, LLC. to address the question: “whether and to what extent the defense of laches may bar a claim for patent infringement. . . .”

On 11/01/16, arguments were held:


In an en banc majority opinion authored by Chief Judge Prost, the Federal Circuit, in SCA Hygiene Products v. First Quality Baby Products, LLC, found that § 282 defenses provision of Title 35 includes laches (even though it is not mentioned) and that case law (pre-dating the Supreme Court's decision last year in Patrella) shows that laches is a defense to legal liability and hence a defense to patent infringement for prior damages, in contravention of the plain meaning of Patrella in view of § 286. Confused? Read on . . .

The majority opinion discussed judicial history of laches and equitable estoppel vis-à-vis the precedent set by Aukerman. Stated the court: “Aukerman was motivated by preserving the distinction between laches – which bars only pre-suit damages – and equitable estoppel – which bars the entire suit. Estoppel, which does not necessarily involve delay in bringing the suit, requires 'statements or conduct of the patentee which must communicate in a misleading way that the accused infringer will not be disturbed by the plaintiff patentee in the activities in which the former is currently engaged” (internal quotes and citations removed).

The court explained that although Auckerman controlled the operation of laches in patent cases for over two decades, the recent Petrella decision in the Supreme Court upset the status quo by holding that laches was not a defense to legal relief in copyright law. Petrella calls portions of Aukerman's reasoning into question, necessitating this en banc reconsideration. Specifically, In Petrella, the Supreme Court reasoned that the copyright statute of limitations itself takes account of delay, crowding out the judiciary's power to decide whether a suit is timely. Therefore, the Supreme Court found, “laches is a defense developed by courts of equity; its principal application was, and remains, to claims of an equitable cast for which the Legislature has provided no fixed time limitations.”


The en banc opinion held that, under Petrella, Section 286 acts as a prescription by Congress of a time period for recovery of damages. Characterizing Section 286 as a statute of limitations or a limitation on damages is not dispositive or a relevant consideration. Because patent infringement is a continuous tort, there is no relevant functional difference between a damages limitation and a statute of limitations. However, the majority opinion held that, based on a “sufficiently reliable source on the meaning of § 282,” the defenses provision, that that section uses inclusive language, and hence includes within it codification of laches as a statutory defense to patent infringement. This is consistent with prior interpretations of § 282.

The question remained:

If laches as codified in § 282 is a defense only against only equitable relief, Petrella prohibits judicial application of laches to bar legal damages. If, however, laches as codified operates as a defense to both legal and equitable relief, patent law's statutory scheme–like the Lanham Act . . . – does not implicate Patrella. In that case § 286 obligates us to apply laches as a defense to a legal relief, notwithstanding § 286's time limitation on the recovery of damages.

Based on tenuous at best logic, the court further held, “[i]n sum, the case law strongly supports the availability of laches to bar legal relief. In applying laches to ongoing relief, the court held awarding ongoing relief requires that the court act within its equitable discretion, which, according to eBay must be exercised consistent with traditional principles of equity. This means following the four-fact test laid out in eBay.


In a dissent-in-part authored by Judge Hughs, joined by Moore, Wallace, Taranto, and Chen, Judge Hughes writes:

In Petrella v. Metro-Goldwyn-Mayer, Inc., the Supreme Court emphasized that it had never approved the use of laches to bar a claim for legal damages brought within a statutory limitations period. The majority reasons that Petrealla is not controlling here because Congress specifically incorporated laches as a defense to legal damages into the Patent Act of 1952. But the majority has no sound basis for finding that Congress intended to displace the uniform limitations period in § 286 with the case-specific doctrine of laches. The majority's key logic – that Congress adopted the view of some lower courts that laches could bar legal relief in patent cases – requires us to presume that Congress ignored the Supreme Court. For in 1952, the Supreme Court had already recognized the common-law principle that laches cannot bar a claim for legal damages. I know of no precedent for inferring a congressional departure from a common-law principle recognized by the highest court based solely on aberrational lower-court decisions.
134 S.Ct. 1962 (2014)
960 F.2d 1020 (Fed. Cir. 1992)

User Tools