Federal Circuit Confirms The Laches Doctrine As A Viable Defense In Patent Infringement Actions

In an earlier article, we discussed whether the Supreme Court's recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014) left intact the doctrine of laches in patent infringement actions.1 The Federal Circuit recently reaffirmed its longstanding application of laches as a defense to patent infringement claims.

On September 18, 2015, in SCA Hygiene Products. v. First Quality Baby Products, the Federal Circuit held in a closely divided 6-5 decision that laches (an unreasonable delay in pursuing a claim to the prejudice of the other party) will remain a defense in patent infringement actions to bar pre-suit damages. Sitting en banc, the Court addressed whether the recent Supreme Court decision in Petrella—that laches cannot bar relief in copyright infringement suits when the claim is brought within the statute of limitations—overruled the Federal Circuit's prior conclusion in A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc) that the laches doctrine applies in patent law.

This split decision highlighted the tension between the Section 286 damages limitation and the Section 282 laches defense. The majority first concluded that, under Petrella, the six-year damages limitation is functionally equivalent to a statute of limitations. The majority, however, distinguished patent law from copyright law. In light of Congress's silence when codifying the Patent Act in 1952, the majority reasoned that Congress intended to codify the common law that recognized the laches doctrine as part of Section 282. While the majority characterized its opinion as "neither novel, nor a direct response to Petrella," it declined to address this tension and instead reasoned that it lacked the authority to change the scope and applicability of these statutes as established by Congress.

Whereas the entire panel concluded that laches may bar equitable remedies such as injunctive relief, five of the eleven judges dissented from the majority's holding that Congress codified a laches defense in the Patent Act. The dissent criticized the majority's interpretation of Congress's silence, stating instead that the case law does not clearly establish a common law doctrine to support laches' applicability in patent law.

In light of the sharp dissent, it is likely that a petition for Supreme Court review will be filed in the next few months. The continued viability of the laches doctrine, however, currently benefits...