Federal Circuit to Review Defense of Laches in Patent Law

By Jason Rantanen

This morning, the Federal Circuit issued an Order granting en banc review in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC.  (Dennis’s  commentary on SCA here: https://patentlyo.com/patent/2014/09/federal-supreme-holding.html.) The central issue involves the impact of the Supreme Court’s decision earlier this year in Petrella v. Metro-Goldwyn-Mayer (holding that laches does not apply to copyright infringement occurring within the window provided by the statute of limitations) on patent law.

The issues presented:

(a) In light of the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014) (and considering any relevant differences between copyright and patent law), should this court’s en banc decision in A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992), be overruled so that the defense of laches is not applicable to bar a claim for damages based on patent infringement occurring within the six-year damages limitations period established by 35 U.S.C. § 286?

(b) 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 laches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief? See, e.g., Lane & Bodley Co. v. Locke, 150 U.S. 193 (1893).

The order is not yet available on the Federal Circuit’s website, but can be read here: Download SCA en banc order. Thanks to Hal Wegner for bringing it to my attention.

31 thoughts on “Federal Circuit to Review Defense of Laches in Patent Law

  1. 9

    The following is on the Federal Circuit’s web page.


    In its order of December 30, 2014, granting a petition for rehearing en banc in the matter of SCA Hygiene Products v. First Quality Baby Products (case number 13-1564), the court invited the views of amici curiae. Any amicus briefs may be filed without consent and leave of court. The court’s order is available via PACER.

    It’s exceedingly odd that the clerk’s office is unwilling to post the en banc order on its website. Not sure what’s going on over there.

  2. 6

    I thought that Justice Breyer’s dissent had the better end of Petrella. I was pleased to see the CAFC distinguish Petrella in the panel opinion in SCA Hygiene. Here’s hoping that Judge Newman’s enormous respect for stare decisis carries the day again in this case.

  3. 5

    OK, this is interesting. 6 has used this thread to enter his anonymous comment to the previous post b/c the previous post is under the real name only rule (RNOR).

    And so what this work-around of the RNOR will do is to pollute non-RNOR threads of posts downstream of RNOR posts. Folks who have something to say but want to remain anonymous are merely going to hijack other posts. This does not impress me as good blog-management.

    But it does suggest a solution to the “Jason Dilemma” of how to get a quality discussion without applying a chastity belt approach of limiting access to only those who identify themselves at the king’s gate. (I’m not sure that’s how chastity belts work — I’ve never actually purchased one — but you get my drift.)

    The solution seems to be to have the original post RNOR, making it a premium thread of identified, competent commentators like Ned and Paul. It will, by its nature, comprise fewer comments but of higher quality.

    But then put up a supplementary, separate post for us anonymous cowards with inferiority complexes and embarrassment phobias. The supplementary post wouldn’t have to be anything more than a title, really.

    By relegating the open comments to a distinct post, the blog s/w will separate the floaters from the sinkers, so to speak, while letting everybody have his/her say. My guess is that over time both commentators and readers will migrate to the premium version of each post.

    In the present instance, by virtue of 6 bringing in the irrelevant discussion from the previous post, this post has become the de facto supplementary post for the previous one. Better for the blog-guys to do that.

    1. 5.1

      I am not certain which I enjoyed more, your self-deprecating humor (since Babbel is also a “anonymous cowards with inferiority complexes and embarrassment phobias” or the false-authority-because-a-real-name-is-attached humor (Ned uses his real name, but there is ZERO authority that attaches from the mere use of one’s real name).

      Since the wisdom of the likes of Poor Richard does not come from the chosen moniker (real name or pseudonym), one must STILL engage one’s critical thinking skills and reflect on the content of the posts regardless of the moniker attached.

      Perhaps an easy experiment to try would be to remove monikers entirely, or make everyone “anonymous.”

  4. 4

    Since we can’t actually post on TJ’s post I’ll post a response here. Anyone that wants to join in go ahead.

    TJ apparently thinks that interpretation and construction of claims are different things. Interpretation being simply figuring out what the claims mean. And construction then being giving that legal effect.

    Personally I see both as being two parts of the same thing that is all mismashed together as interpretation/construction because those two steps are not generally followed “in order” and tend to overlap and get all jumbled in doing the claim analysis.

    In my view, if we adopt his language, then the claim “construction” (legal effect) needs to be subordinate to the “interpretation” (meaning). 100%. This being due to what a “claim” fundamentally is.

    In fact I see that as a necessity.

    Though he and the other authors are right that 112 colors judge’s views on claim construction (inappropriately in my view). In my opinion, it should be such that you do the interpretation, the “construction” is subordinate to that interpretation, and then you let 112 determinations fall where they may after you have the interpretation/construction in hand. And when I say “should” I mean literally “is obliged to be”. And the obligation follows from other things which I don’t have time to get into just now. Just as a brief preview those things include a policy determination made by congress 50+ years ago to let inventors set forth their claim (instead of letting the office professionally make it for them for example) and claims fundamentally being nothing more than the inventors attempt (attempt to do so). If you don’t at least change those two things then there can be no other way of correctly achieving claim construction and statutory application of 112 because those two things and a few others dominate what is available to fiddle around with legitimately in claim construction.

    1. 4.1

      Good idea. Randy Barnett has an article about the construction/interpretation debate in the con law context and had a bunch of posts about it on the Volokh Conspiracy.
      link to volokh.com
      I found it strangely confusing then, and find it strangely confusing now. Either I’ve got a head injury or I’m misapprehending something important… or I just need to spend some time with the article.

      Thanks to Article III and standing doctrine, these questions always come up in the context of actual disputes. What does statute A say about whether conduct B is prohibited or permitted? Does patent X cover device Y, and is it anticipated by prior art Z? First you figure out what the words mean–to the extent you need to to decide the case… then you decide the case. “Interpretation” sounds like claim construction (the first bit), and “construction” sounds like the infringement analysis (the “then” bit). If that’s right, then “so what? how does this ‘distinction’ tell us anything useful?” I suspect that that’s not right.

      1. 4.1.1

        Thank you for your view and thanks for the post. I’ll check out that series. I had been wondering where these newish thoughts on this distinction had been coming from. I’ll be honest with you, most of it sounds like a severe case of ivory tower to me. It’s so far removed from “the trenches” of prosecution or what a judge is doing it seems to me like an absurdity. At the very least when said “formally” they way they’re putting it.

        ” I suspect that that’s not right.”

        You are correct that what you stated is not right. At least I think so from what I understand him to say and you to be saying.

        From what I can tell, he thinks the interpretation (meaning) is just based on linquistics and maybe a bit of expert testimony or other evidence. However, then you turn around and make the “construction” (or give the claim legal effect) and this is supposedly distinct from the interpretation phase. If I understand him correctly it’s in this phase that you’re taking the meaning that you ascribed to the claim and determining what sort of things it would cover in “real life” so to speak, with an eye to the invention set forth in the specification (and in some judge’s views, not letting the claim cover things which aren’t the “actual invention” as determined by them from the spec). That is to say you’re determining the claims legal effect. And you might even have to view the effect of the claim through the prism of 112 (a or maybe even b too). Though you have yet to perform an actual infringement analysis on xyz accused products even during this “construction” phase.

        But, I could be mistaken myself.

        What he says makes kind of sense to me, but generally those two phases aren’t cleanly distinguished from each other, and if he’s right and I understand him correctly then office personnel should very rarely ever need to make “constructions”.

  5. 3

    Delighted to see the “In light of the fact that there is no statute of limitations for claims of patent infringement” since that is too often missunderstood. [Without laches a patent owner could silently delay suing or notice for an unlimited number of years after becoming well aware of increasing infringements, even until after the patent expires, and yet still be able to bring suit and recover up to six prior years of infringement damages!]
    [Absent a non-marking defense. But that has been seriously impared by a strange Fed. Cir. decision that a patent owner with a patent having both apparatus and method claims can avoid a non-marking failure simply by electing to sue only on the method claims.]

      1. 3.1.1

        Why do you find it strange that suing on method claims removes the marking requirement?

        That wasn’t Paul’s assertion.

        Paul’s assertion was this: “[The] Fed. Cir. decision [which held] that a patent owner with a patent having both apparatus and method claims can avoid a non-marking failure simply by electing to sue only on the method claims [is strange].”

        I’ll let Paul speak to his view of the “strangeness” in that decision. From a policy standpoint, however, there does seem to be something strangely inconsistent about being able to “fix” a marking failure by sueing on method claims, at least where the method claims require the use of the non-marked apparatus.


          My question is perfectly aligned with Paul’s post and there is no need for your attempted tr011ing here.

          A patent holder has always had the choice upon which claims to file suit on – or are you impliedly stating that such somehow impacts some unnamed policy?


              You do realize that methods are not marked and “removes the marking requirement” tracks the change in asserted claim from one claim type which does have a marking requirement to a different claim type which does not.

              (You might just brush up on your patent law knowledge Poe)


                You should realize that precision in use of language matters, especially in this field. Your comment does not change the fact that notiong “removes the marking requirement,” and therefore that doesn’t make sense. Think about it before you insult someone’s knowledge of patent law. Try.

                1. It’s hilarious that it is you that fails to understand the comment, even after a straight forward explanation and you want to scold me for lack of knowledge…

                  Try again Poe (and realize that the insult fits all the more for your lack of understanding)


            My question is perfectly aligned with Paul’s post

            If you wanted to “perfectly align” your question with Paul’s post, you would have made a minimal effort to repeat Paul’s assertion correctly, as I did.

            are you impliedly stating that such somehow impacts some unnamed policy?

            The issue noted in my comment concerns the circumstances in which laches applies to the use of an unmarked apparatus. If you believe that the policy considerations underlying the laches defense change (or should change) when the unmarked apparatus is patented but the patentee chooses to assert only its method claims which require the unmarked apparatus, then try to explain to everyone why you believe that.


              You are kidding right?

              The party bringing suit still has full control over what exactly to bring suit upon, right? Are you trying to say that you don’t understand that simple concept?

                1. As you well know (or should know), your empty “folks” line is not an answer.

                  Why do you not answer the simple question?


          Thank you. I did not want to waste time arguing why allowing a selection of which claims to sue on from a patent that clearly falls under the marking statute is inconsistent with the purpose of the marking statute. The point is that this unexpected surprise Fed. Cir. decision now offers a way to sue for up to six years back damages at any time [absent laches] even on a patent where unmarked products have been sold by the patent owner or its licensee.


            Paul, why don’t you try answering my question instead of high-fiving the riff raff?

            You do realize that one aspect of counseling clients to have a variety of claim formats is to optimize enforcement capabilities, right?

    1. 3.2

      Paul, silently standing by certainly argues for denying the equitable remedy.

      But the smallness of the damages is a good and legitimate reason not to sue.

  6. 2

    “Lane & Bodley Co. v. Locke, 150 U.S. 193 (1893) was a bill in equity asking for an injunction and other relief. The Supreme Court noted the long delay in assertion, and remarked that “equity” will not aid one who has slept on his rights.

    But the facts in Lane & Bodlet also showed that the patentee was an employed inventor and that his salary was higher that his salary would have been had he been receiving royalties. He was paid for the right to use his invention.

    In the Supreme Court in Petralla said that laches was relevant to an equitable remedy, but not a legal.

  7. 1

    The order is available on the CAFC’s website – you just have to log in to PACER and pay to download it.

    To me, it’s beyond comprehension why this would not be a “selected order” available free of charge on the opinions/orders page. I guess we should be grateful the court at least put notice of the order on the announcements page, given that they are no longer updating the daily disposition sheet.

    link to cafc.uscourts.gov :


    In its order of December 30, 2014, granting a petition for rehearing en banc in the matter of SCA Hygiene Products v. First Quality Baby Products (case number 13-1564), the court invited the views of amici curiae. Any amicus briefs may be filed without consent and leave of court. The court’s order is available via PACER.

    1. 1.1

      On a related note: I’d love to be able to read all of the appeal briefs filed with the CAFC, leading up to argument.

      Is anybody aware of any way to get them besides Pacer? Ideally, a free way?

      It’d be great to have a running archive of the issues currently before / being appealed at the CAFC. (As sat as I’ve been aware – you can see when a case had been appealed to the CAFC and when argument is schedule, but I typically don’t know what the issues being appealed on are until after a decision is rendered.)

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