Guest Post by Donald S. Chisum

On December 30, 2014, the Federal Circuit granted en banc review in a case (SCA Hyiene), to consider whether to overrule the 1992 A.C. Aukerman decision, which upheld the defense of laches (unreasonable, prejudicial delay) for patent infringement damage claims, in light of the Supreme Court’s 2014 Petrella decision, which held that laches did not apply to claims for damages for acts of copyright infringement occurring within the Copyright Act’s three year statute of limitations.

For a variety of reasons, it is absolutely clear (to me) that neither the Federal Circuit nor the Supreme Court should alter Aukerman.  Here are some of those reasons.

At first blush, the argument for applying the holding and reasoning of Petrella to patent cases to overturn A.C. Aukerman is strong.   Petrella reasoned that Congress established three years as a reasonable period for recovering for pre-suit infringements and courts should not “second-guess” Congress in that respect. Similarly, for patents, Congress set a six-year period for recovering for pre-suit infringements.  In Petrella, the Supreme Court stated, in general terms, that it had never “approved the application of laches to bar a claim for damages brought within the time allowed by a federal statute of limitations.” It reiterated that it had “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.”  The Section 286 six-year period is not, in technical terms, a “statute of limitations.” Nevertheless, it is a Congressionally prescribed period for recovering for patent infringement.

However, there are stronger arguments for distinguishing patent suits from copyright suits.

First, the history of the Section 286 six year limit for patent infringement damages is considerably different from that of the three year statute of limitations for copyright infringement.  Congress added the copyright limitation in 1957 and codified it without change in 1976. There was, apparently, no consistent interpretation of the statute by the lower courts as either permitting or precluding laches; a split arose among the circuits.  In contrast, Congress enacted the six-year limitation for patent infringement in 1897.  As discussed in Aukerman, the courts continued after 1897 to apply laches in patent suits.  In 1952, Congress codified the statute, presumably thereby approving the prior practice. The legislative history states as much, as noted in Aukerman.

Second, unlike the copyright statute as to which there was a split among the circuits, a split the Supreme Court was obliged to resolve, the Federal Circuit has consistently interpreted the patent statute as permitting laches to restrict damages under carefully defined circumstances. The Federal Circuit has virtually exclusive jurisdiction over appeals in patent infringements. Hence, there is no danger of a split arising.

In recent years, the Supreme Court has, with some regularity, repudiated Federal Circuit positions as unsound.  Often, the Court found that the Federal Circuit had not adequately considered prior, binding Supreme Court precedent on an issue.  Also, Federal Circuit panels decisions reached inconsistent results as to the issue.

None of these criticisms can be fairly directed to the Federal Circuit’s Aukerman decision on laches. Aukerman was an en banc decision, that is, one by the full complement of judges. Judge Helen Nies wrote a thorough, lengthy opinion exploring history, policy and precedent.  It was unanimous on the basic issue of the viability of  laches as a defense; Judge Plager dissented only in regard to the operation of a presumption.  And, the Federal Circuit has consistently followed Aukerman since 1992.