In what could be considered a win for patent holders, the U.S. Supreme Court this week eliminated a common defense to patent infringement claims. The Court's ruling in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC precludes defendants from asserting the defense of laches in response to claims for damages brought within the Patent Act’s six-year limitations period. The decision allows patent holders more time to decide whether to sue others for patent infringement.
SCA, a global hygiene and forest products company based in Sweden, sued First Quality for patent infringement in 2010. A district court granted summary judgement for First Quality on the grounds of equitable estoppel and laches. The Federal Circuit affirmed the trial court's decision on the basis of laches.
While SCA’s appeal was pending, the U.S. Supreme Court ruled that laches could not preclude a claim for damages incurred within the Copyright Act’s three-year limitations period in Petrella v. Metro-Goldwyn-Mayer, Inc., a copyright suit involving the film “Raging Bull.”
Writing for the majority, Justice Samuel Alito concluded the Court's reasoning in the Petrella decision applied equally to patent cases. In the Petrella case, the Court analyzed separation-of-powers principles as well as the traditional role of laches as an equitable defense. When Congress legislates a statute of limitations, Justice Alito wrote, it takes precedence over the equitable defense of laches. “Therefore, applying laches within a limitations period specified by Congress would give judges a ‘legislation-overriding’ role that is beyond the Judiciary’s power.”
The Court said that laches is a “gap-filling doctrine,” generally applicable when no statute of limitations exists.
Justice Stephen Breyer dissented, arguing that a gap remained in the 1952 Patent Act despite its statute of limitations, which laches filled. He cited differences between Petrella and SCA Hygiene and said that with this decision, the Court continued on the wrong track it started down with Petrella.