Supreme Court Rules Doctrine of Laches Does Not Bar Damages In Patent Litigation

March 22, 2017 | Insights



By: Blake Dietrich

In a highly-anticipated opinion, the Supreme Court ruled on Tuesday that the doctrine of laches is no longer a proper defense in patent infringement cases. Following its 2014 copyright laches case in Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), the Court held that the common law defense of laches cannot be used to further limit the six year patent damages recovery period established by the Patent Act of 1952.

In the 7-1 decision authored by Justice Samuel Alito, the Court vacated the Federal Circuit’s decision barring plaintiff SCA Hygiene’s patent infringement claims.

The Court held that “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by [Section 286 of the Patent Act].”

The Court relied extensively on the 2014 copyright decision in Petrella and held that “[b]y the logic of Petrella, we infer that [Section 286] represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim.”

Writing as the sole dissenter, Justice Stephen Breyer opined that the Patent Act’s six year damages period creates a “gap,” which is filled by the laches defense.  In particular, Justice Breyer explained that patentees “might wait for a decade or more while the infringer (who perhaps does not know or believe he is an infringer) invests heavily in the development of the infringing product (of which the patentee’s invention could be only a small component), while evidence that the infringer might use to, say, show the patent is invalid disappears with time.”  The majority opinion dismissed these concerns by citing to both the statute of limitations and the Petrella opinion wherein the Court refused any “legislation-overriding” judicial role to correct any “policy outcomes judges deem undesirable.”

The case is SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., case number 15-927, in the Supreme Court of the United States.

About Blake Dietrich

jackson-walker-attorney-thumb-DietrichBlakeBlake Dietrich is an associate in Jackson Walker’s Dallas office. His practice focuses on intellectual property matters where he helps clients secure patent, trademark, and copyright protection. He also works on behalf of clients to enforce and defend those rights through litigation. Blake is admitted before the United States Patent and Trademark Office and has prepared and prosecuted numerous patent and trademark applications. He is a graduate of George Washington University where he received both his Bachelor of Arts and Juris Doctor degrees.