In SCA Hygiene Products v. First Quality Baby Products, the Federal Circuit held the defense of laches (unreasonable, prejudicial delay in commencing suit) may bar recovery of damages on a patent infringement claim brought within 35 USC §286's six-year limit after considering the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. on laches in a copyright case.
The SCA court noted A.C. Aukerman Co. v. R.L. Chaides Construction Co. stated the following principles regarding the defense of laches:
1. Laches is cognizable under 35 U.S.C. § 282
(1988) as an equitable defense to a claim for
2. Where the defense of laches is established, the
patentee’s claim for damages prior to suit may
3. Two elements underlie the defense of laches:
(a) the patentee’s delay in bringing suit was
unreasonable and inexcusable, and (b) the alleged
infringer suffered material prejudice attributable
to the delay.
4. A presumption of laches arises where a patentee
delays bringing suit for more than six
years after the date the patentee knew or
should have known of the alleged infringer’s
5. A presumption has the effect of shifting the
burden of going forward with evidence, not the
burden of persuasion.
The SCA court stated laches can prevent an injunction, but in such a case the infringer could be required to pay an ongoing royalty. The majority (6 to 5) issued a 60-page opinion that in the end states the US Patent Act of 1952 codified the case law which included the laches defense as one of the "unenforceability defenses."
Also see my related article: CAFC - SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC - Reviewing Laches and Equitable Estoppel.
Copyright © 2015 Robert Moll. All rights reserved.