In an en banc opinion, the court held that laches remains a defense to legal relief in a patent infringement lawsuit, i.e., precluding pre-filing damages; that laches could, as part of all material facts, be used to deny injunctive relief; and that, absent extraordinary circumstances, laches does not preclude an ongoing royalty.
The court addressed whether the Supreme Court’s decision in Petrella holding that, in copyright cases, there is no laches for infringement suits brought within the Copyright Act’s statutory limitations period, because the Court could not overrule the statute of limitations enacted by Congress. In the context of the Patent Act, however, the Court held that the six-year damages period of Section 286 is a limitation on damages, not a statute of limitations, and held that Section 282(b)(1) codifies laches as a defense to patent infringement (relying on Federico’s commentary to the 1952 Patent Act and pre-1952 law, which the Act was codifying). Therefore, the court held that Congress intended that laches be a defense to a patent infringement claim and therefore it can bar legal relief (pre-filing damages). With respect to equitable prospective relief, i.e., injunctions and ongoing royalties, the court held that, consistent with eBay, there should not be a bright line rule that laches cannot preclude an injunction, but rather laches should be considered with all facts when determining whether to grant an injunction. Further, consistent with the Supreme Court’s Menendez decision, laches does not preclude an ongoing royalty.
The dissent argued that the majority was improperly creating a patent-specific rule and that Congress did not codify laches as a defense to patent infringement in the 1952 Act.
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Case No. 2013-1564 (September 18, 2015); Opinion by: En Banc, Prost, joined by Newman, Lourie, Dyk, Moore, O’Malley, and Reyna; Concurring-in-part and dissenting-in-part opinion by Hughes, joined by Wallach, Taranto, and Chen; Appealed From: District Court for the Western District of Kentucky, McKinley, Jr., J. Read the full opinion here.