WhitServe LLC v. GoDaddy.Com, Inc.: Laches Remains A Viable Defense To Patent

On July 20, 2015, the United States District Court for the District of Connecticut in WhitServe LLC v. GoDaddy.com, Inc. rejected an alleged infringer's laches defense because the patent holder did not have constructive knowledge of the allegedly infringing activities until shortly before filing suit.1 Perhaps more significantly, the district court addressed whether the doctrine of laches can be invoked to bar recovery of pre-suit damages in patent infringement actions after the Supreme Court's recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc.

In Petrella, the Supreme Court held that laches cannot bar damages in copyright infringement cases because application of this equitable doctrine would override the Copyright Act's statute of limitations.2 The Supreme Court's opinion also notes the tension between its decision and the Federal Circuit precedent of A.C. Aukerman Co. v. R.L. Chaides Construction Co. that laches may apply to bar pre-suit damages in patent actions.3 The question of whether patent infringement defendants may continue to assert the laches defense in view of Petrella is currently on review by the entire bench of the Federal Circuit.4 Judge Young concluded in Whitserve LLC that Petrella does not overrule the Aukerman decision. As a result, the District of Connecticut has become the fourth district court since Petrella to find that laches remains a defense in patent infringement actions.5

BACKGROUND

In June 2011, WhitServe sued GoDaddy, alleging that GoDaddy infringed two of its patents related to a system for sending automated emails.6 WhitServe owns NetDocket, a company that provides internet software for patent annuity payments using the technology claimed by the asserted patents. GoDaddy is the world's largest domain name registrar, and its accused "My Renewals" service provides renewal notices to customers of GoDaddy's domain name-related services to remind them of upcoming payment deadlines.

Among its asserted defenses and counterclaims, GoDaddy raised the defense of laches. The evidence established that WhitServe first learned of GoDaddy's "My Renewals" service in March 2011, but that service had been publicly available as early as October 2004. GoDaddy therefore contended that laches applied to bar WhitServe from collecting pre-suit damages. Specifically, GoDaddy argued that WhitServe had constructive knowledge of and should have earlier discovered the accused "My Renewals" service, which GoDaddy had publicly launched over six years prior to the filing of WhitServe's complaint.7 Further, GoDaddy argued that it had suffered material...