In a 7-1 opinion authored by Justice Alito, the U.S. Supreme Court held today in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, No. 15-927, that laches is no longer a viable defense to patent infringement. SCA accused First Quality of infringing its patent directed to adult incontinence products, and, as expressly permitted under 35 U.S.C. § 286, sued for six years’ worth of damages. First Quality countered that that action was barred by the equitable doctrine of laches because SCA knew of First Quality’s alleged infringement in 2003, yet waited until 2010 to bring suit.
In a 7-1 opinion authored by Justice Alito, the U.S. Supreme Court held today in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, No. 15-927, that laches is no longer a viable defense to patent infringement. SCA accused First Quality of infringing its patent directed to adult incontinence products, and, as expressly permitted under 35 U.S.C. § 286, sued for six years’ worth of damages. First Quality countered that that action was barred by the equitable doctrine of laches because SCA knew of First Quality’s alleged infringement in 2003, yet waited until 2010 to bring suit.
The Supreme Court ultimately granted cert to address whether laches remained a viable defense to patent infringement, notwithstanding § 286’s six-year statute of limitations. Recently, in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. — (2014), the Court addressed a similar question in the copyright-infringement context, and held there that courts cannot apply laches to suits brought within a statutory limitations period; to do so, the Court explained, would violate separation of powers. Following suit, the Court today extended the Petrella holding to the patent context, concluding that laches cannot bar a patent-infringement suit brought within § 286’s six-year window. The Court declined to adopt First Quality’s argument that the 1952 Patent Act codified the doctrine of laches, explaining instead that general common-law principles in 1952 established that laches is no defense within a statute of limitations, and that the patent cases holding otherwise were too few and far between to suggest Congress codified a rule contrary to the general common-law principle when enacting the 1952 Act.
In dissent, Justice Breyer noted that the majority could point to not a single pre-1952 case in the patent context that held laches did not apply within the statute of limitations, but instead every court of appeals to consider the issue expressly held laches did apply. Thus, Justice Breyer opined that the majority too quickly dismissed the weight of the authority, agreeing with First Quality that Congress intended to codify laches in 1952 Patent Act. Justice Breyer also pointed out that the chief drafter of the 1952 Act, P.J. Federico, stated at the time of the Act’s adoption that 35 U.S.C. § 282 was intended to codify equitable defenses including laches. Finally, Justice Breyer expressed policy concerns with the majority’s holding, noting that a patentee can now simply wait for an infringer to invest heavily in a product and generate significant sales before filing suit seeking substantial damages.
