Supreme Court Curbs Laches as a Defense in Patent Cases
In SCA Hygiene Products v. First Quality Baby Products, decided on March 21, 2017, the U.S. Supreme Court significantly reduced the role of the laches defense in patent actions: "Laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by § 286" of the Patent Act, which bars recovery for infringement occurring more than six years prior to the filing of suit.
The Supreme Court, by a 7–1 margin, held that the equitable doctrine of laches cannot override Congress's six-year lookback period. Justice Alito, writing for the Court, relied heavily on principles set forth by the Court in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014), which held that laches cannot preclude damages for infringement claims brought within the Copyright Act's three-year statute of limitations. The Court's opinion was anchored on dual considerations of separation of powers and the "traditional role of laches in equity." Observing that "[l]aches provides a shield against untimely claims, and statutes of limitations serve a similar function," the Court stressed that "[w]hen Congress enacts a statute of limitations, it speaks directly to the issue of timeliness and provides a rule for determining whether a claim is timely enough.…" Citing Petrella, the Court explained that "applying laches within a limitations period specified by Congress would give judges a 'legislation overriding' role that is beyond the Judiciary's power," and "courts are not at liberty to jettison Congress' judgment on the timeliness of suit."
Justice Breyer dissented, reasoning that the laches defense is a necessary "gap" filler in circumstances when a patentee delays its infringement claim while the accused product becomes successful.
SCA rolls back the role of laches, a commonly pled but rarely successful defense, in defending against patent-infringement damages. It remains to be seen whether courts may adapt laches to apply to claims of injunctive relief.
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Gregory A. Castanias
David M. Maiorana
Calvin P. Griffith
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