Cases & Deals

IPO's amicus curiae brief embraced by Federal Circuit ruling that laches remain relevant to patent cases

Clients Intellectual Property Owners Association, Inc.

In its September 18, 2015 decision in SCA Hygiene Products v. First Quality Baby Products, the en banc Federal Circuit ruled that laches retained a role in patent infringement suits – a position advanced by the Intellectual Property Owners Association amicus curiae brief, which had been authored by lawyers at Jones Day.

The case involved the following facts: SCA Hygiene Products first alleged patent infringement by First Quality Baby Products in a letter sent in October 2003. SCA did not communicate with First Quality again regarding the patent for nearly seven years, until filing suit for patent infringement in August 2010. A panel of the Federal Circuit affirmed the district court's grant of summary judgment to First Quality based on the equitable defense of laches, which is generally defined as an unreasonable and prejudicial delay in bringing suit.

While SCA's appeal was pending, the Supreme Court decided Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), holding that, in copyright cases, laches could not be invoked to bar a claim for damages brought within the Copyright Act's three-year statute of limitations, but that laches could be invoked in extraordinary circumstances to bar equitable relief.

The Federal Circuit granted en banc review to determine whether, in light of Petrella, laches could bar legal or equitable relief in the patent context.

At the en banc stage, Jones Day submitted an amicus curiae brief on behalf of the Intellectual Property Owners Association, in support of the position taken by the defendants-appellees, urging that laches should be available to bar both legal and equitable relief in patent cases.

In its en banc decision, the Federal Circuit cited IPO's amicus brief on two occasions, and confirmed the ongoing viability of the laches defense in patent cases. More specifically, the court held that in patent infringement suits, laches bars claims for damages, and can, in conjunction with the eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), framework, bar claims for injunctive relief. The court also concluded that laches typically should not preclude the award of an ongoing royalty, absent extraordinary circumstances.

Jones Day's amicus curiae brief was authored by Greg Castanias (Washington), Sasha Mayergoyz (Chicago), and Caroline Edsall (Washington).

SCA Hygiene Products v. First Quality Baby Products, No. 13-1564 (Fed. Cir. 2015)