The US Supreme Court Rejects the Equitable Defense of Laches in a Patent Infringement Case

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the Supreme Court of the United States (the Court) vacated the Court of Appeals’ decision and held that the equitable defence of laches cannot be invoked against claims for patent infringement occurring during the six-year statutory limitations period, as defined by 35 U.S.C. §286. 

Back in 2003, SCA Hygiene Products AB (SCA) notified First Quality Baby Products LLC (First Quality) that its adult incontinence products infringed SCA’s patent (U.S. Patent No. 6,375,646). First Quality responded that it owned a patent that predated SCA’s patent, and therefore that SCA’s patent was invalid. However, in 2007, SCA’s patent was declared valid following re-examination at the US Patent and Trademark Office. SCA later pursued patent infringement claims against First Quality in 2010.

The District Court ruled by summary judgment that SCA’s suit was barred by laches (an equitable doctrine that prevents the plaintiff from unreasonably delaying in bringing an action), a decision that was affirmed by the US Court of Appeals for the Federal Circuit.

In vacating the Federal Circuit’s decision, the Court relied heavily on its own earlier decision in Petrella v. Metro-Goldwyn-Mayer, in which the Court considered an identical question under the US Copyright Act. The Court focused on “separation-of-powers principles”, noting that Congress enacted 35 U.S.C. §286 that bars suits more than six years after the fact.  The Court stated: “By the logic of Petrella, we infer that this provision represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim.”

On this basis, the Court remanded SCA’s case for further proceedings.

By: Sumaiya Sharmeen