Doctrine of Laches Cannot Bar Legal Damages Claims in Patent Cases

SCA Hygiene Prods. V. First Quality Baby Prods. (Supreme Court. 2017)

In a 7-1 decision delivered by Justice Alito, the Supreme Court has expanded its recent copyright decision in Petrella to now hold that laches cannot be invoked as a defense in patent cases to prevent legal damages within the statutory 6-year limitations period of 35 U.S.C. § 286.

The basic idea is that Laches is a judge-made remedy created by the court of equity in the absence of any statute of limitations.  However, when Congress acts to create a statute of limitations – as it did with §286 – the judge-made law no longer has a role to play.

Again playing on a decade-long-theme of no-patent-exceptionalism, the court wrote:

Indeed, it would be exceedingly unusual, if not unprecedented, if Congress chose to include in the Patent Act both a statute of limitations for damages and a laches provision applicable to a damages claim. Neither the Federal Circuit, nor First Quality, nor any of First Quality’s amici has identified a single federal statute that provides such dual protection against untimely claims.

https://www.supremecourt.gov/opinions/16pdf/15-927_6j37.pdf

Justice Breyer dissented – arguing that “for more than a century courts with virtual unanimity have applied laches in patent damages cases” in order to fill an important gap in the statutory regime.

 

 

= = = = =

Supreme Court to Review (and likely Reject) Laches as a Defense in Patent Infringement Cases

SCA Hygiene Laches Oral Arguments: How Do we Interpret Congressional Silence?

Court Maintains Laches Defense for Back Damages in Patent Cases

 

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

31 thoughts on “Doctrine of Laches Cannot Bar Legal Damages Claims in Patent Cases

  1. How about Lemelson-style application prosecution laches?

    1. [I.e., does, by analogy, the fact that we now have a statute that effectively limits application pendency [by a patent term running 20 plus years from from the original application filing date] also suggest that prosecution laches is dead?]

      1. Different animal, so one cannot blindly analogize like that.

    2. Paul, delay alone is not sufficient for PH history laches. Late claiming is also required.

  2. Justice I-never-met-a-patent-I-liked Breyer can console himself with having wiped out many patents with the Alice/Mayo/Myriad trifecta.

  3. The consequences should be a sudden increase in the value of old patents that expired less that six years earlier even if they have been infringed and unenforced for many more years before that. [The six year back damages recovery limitation in the patent statute is from the suit filing date, not a statute of limitations tort cause of action date.]

    1. Thank goodness there isn’t a ton of “do it on a computer” junk from the mid to late 90s floating out there.

      LOL

  4. SCOTUS again shows its disdain for patent holders, putting its thumb on the scale for blatant infringers and undermining the patent…

    Oh, wait, it rule in favor of patent owners. If anyone ever makes a categorical statement like the one above, a reply of SCA would undermine it completely, wouldn’t it?

    1. No.

      All great deceptions often have a kernel of truth.

      So with the idea of “neutrality” towards patentees, such a decision merely hides the deception of that “neutrality.”

      Every once in a while, the Court may “throw a bone” – otherwise the acceleration of jurisdictional stripping may reach the critical point.

      1. Question: Does laches apply to correction of inventorship claims? The Supreme Court has never applied laches to a late/delayed fling for a correction of inventorship!

        1. Is there a statute of limitations to correction of inventorship claims?

          1. No there is not; the Federal statute is silent on this point; considering the public policy associated with the correction of inventorship maybe no statute of limitations applies or one had to borrow from a analogous state statute .

            1. Laches would be available as a defense. A major part of SCA was that the court determined that there was a statute of limitations.

      2. Roberts: “We better throw a bone to the shrieking maximalists out there or they might impeach us all.”

        Sotomayor: “I agree! I’ve had trouble sleeping lately just thinking about that possibility.”

        Kennedy: “Really? Not me. I’ve been sleeping like a baby since Mango Machievelli was elected. Just think about all the controversy the nation avoided. Whew!”

        Roberts: “Ha, ha, ha! You’re hilarious, Tony. Okay, then. We still need someone to be the bad cop and write a dissent or this will come off looking too fake. Steve, you up for it?”

        Breyer: “You owe me, Johnny. Big time.”

        Roberts: “I know it.”

      3. I’m ok with a “exception proves there is a rule” logic, but only when there is a real reason behind the exception.

        The reason of why you present SCA is an exception to your supposed rule is ridiculous. You think that the Court picked this case to “throw a bone”? Why this case? Laches in patent damages is the bone to throw to put people off the scent? Really?

        anon, I don’t believe you are a serious person anymore. I wonder if you are any better than “birth certificate truthers.”

        1. Yes, really.

          Your say so otherwise is merely that: your say so.

          As to why this case, because it is easy and happens to align with patent NON-exceptionalism.

        2. I think anon could be running a false flag operation here.

          Think about it. Has anyone else inspired anywhere close as much animosity against business method patents? Would someone who actually wanted to persuade be so arrogantly hostile?

          I think there’s even a decent chance is an alternate MM identity. Who else cares so much to post SO much?

          1. Ben,

            That “animosity” is already present in the “regulars” here that seek a different End than what Congress has already put in place.

            You would do better with your time and energy to understanding the points put on the table of discussion on than your rather silly frolics.

  5. All this does is once again highlight the quality and character of the Federal Circuit.

    1. I’m not so sure about that… this precedent is pretty old and if it was so awful and blatantly wrong, it sure took a long time for them to figure that out – were it not for the Petrella case, its hard to know if this ever would have been changed

      1. JNG, look at Aukerman.

        “Aukerman argues, nevertheless, that the defense of laches is inapplicable, as a matter of law, against a claim for damages in patent infringement suits.

        For this proposition, Aukerman first argues that recognition of laches as a defense conflicts with 35 U.S.C. § 286 (1988), which provides:

        Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

        Per Aukerman, this provision is comparable to a statute of limitations which effectively preempts the laches defense.

        Aukerman’s argument is doubly flawed. First, Aukerman is in error in its position that, where an express statute of limitations applies against a claim, laches cannot apply within the limitation period. ”

        link to scholar.google.com

        The Feds go on to discuss their other non patent law cases, other circuit patent cases, but ignores the Supreme Court and general law principles.

        They simply ignore a basic tenet of equity — that where there is an adequate remedy (defense) at law, then the legal provisions controls. To ignore the law, to ignore statutes, is to place the judiciary above the law. This fundamentally undermines the rule of law in general, and the separation of powers in particular.

        1. “The Feds go on to discuss their other non patent law cases”

          Aren’t you forgetting that the main case cited by the SCOTUS is Petrella, also a non-patent case?

          “Although the relevant statutory provisions in Petrella
          and this case are worded differently, Petrella’s reasoning
          easily fits the provision at issue here.”

          While I am a major beneficiary of this new development, the SCOTUS reasoning confounds the difference between a SOL for bringing a case and a limitation on damages brought on an otherwise viable case. They are not the same.

          1. JNG, so?

            One has a LEGAL right to collect damages for infringements occurring up to 6 years past. That is the legal right congress has granted patent owners. No one is talking about collecting damages for infringements occurring beyond 6 years past.

            So when the Federal Circuit says that if one delays in filing suit for infringements occurring more than 6 years ago, that one cannot collect damages for infringements occurring within that period, there is something fundamentally wrong with the Federal Circuit jurisprudence that is obvious for all to see.

    2. But the Fed Cir had Patrella in front of them when they decided it. The law was flimsy at best.

      At oral argument in front of the Fed Cir, one judge (don’t know who) said that all damages are equitable with the passage of the 1952 act. That was comically incorrect.

      1. the law that the Fed Cir. relied on was flimsy at best*

  6. Thanks for the great news! My Keranos case just became about 10x more valuable!

    1. Yay! A b0ttom feeder got his wings.

  7. 7-1, not 8-1… :(

  8. 7-1?

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