Federal Circuit Holds That Laches is Defense To Equitable Relief and Pre-Filing Damages In Patent Infringement Actions

In a recent en banc decision, the U.S. Court of Appeals for the Federal Circuit ruled that laches resulting from a delay in filing suit for patent infringement is a statutory defense, and may bar a patentee from obtaining injunctive relief or an award of pre-suit damages. SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Case No. 2013-1564 (Fed. Cir. Sept. 18, 2015). The court distinguished the Supreme Court’s 2014 Petrella decision, which held that laches is not available as a defense under the Copyright Act. See Petrella v. MetroGoldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014). In addition, the Federal Circuit ruled that although a laches defense may preclude injunctive relief or an award for pre-suit damages, it only will bar a patentee’s right to continuing royalties for post-trial infringement in “extraordinary circumstances.”  A copy of the decision is HERE.

Petrella Calls Into Question Federal Circuit’s Previous Laches Rulings

The Federal Circuit has long recognized laches as a defense when an unexcused delay occurs between the time a patentee/plaintiff knows (or should know) of an infringement and the filing of an infringement action. See A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc). The Aukerman court established that:

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. The district court should consider these factors and all of the evidence and other circumstances to determine whether equity should intercede to bar prefiling damages.

Slip op. at 10-11. In addition, the appeals court ruled that “[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 activity.” Id.

In Petrella, the Supreme Court ruled that laches is not available as an equitable defense to a statutory cause of action for copyright infringement when the federal statute itself provides a statute of limitations. Petrella was a copyright case involving the 1980 film Raging Bull, but the Court noted that its decision might affect the Federal Circuit’s application of laches in patent infringement cases, although it had no “occasion to review the Federal Circuit’s position” in its decision. 134 S. Ct. at 1974 n.15.

Federal Circuit Holds That Laches Is A Statutory Defense Under Patent Act

The Federal Circuit ordered rehearing en banc in SCA Hygiene to consider the impact of Petrella on the laches defense in patent cases. The Federal Circuit distinguished Petrella and held that the laches defense is available under the Patent Act even though 35 U.S.C. § 286 provides a temporal limitation on the availability of damages for patent infringement, concluding that “[i]n the 1952 Patent Act, Congress settled that laches and a time limitation on the recovery of damages can coexist in patent law.” Slip op. at 5.

Chief Judge Sharon Prost wrote the majority opinion, which the entire court joined on the question whether laches is a defense to patent infringement. The court noted that, unlike the Copyright Act, the current Patent Act incorporates laches as a statutory defense. Although 35 USC § 282 does not explicitly refer to laches, it states that defenses to patent infringement claims “include noninfringement, absence of liability for infringement or unenforceability.” 35 U.S.C. § 282(b)(1) The court observed that it long had recognized that laches was codified in this provision. Moreover, the court relied on a detailed commentary on the Patent Act written by Pasquale J. Federico, the USPTO’s unofficial “historian” and principal author of the legislation that became the 1952 Patent Act. P.J. Federico, Commentary on the New Patent Act, reprinted in 75 J. Pat. & Trademark Off. Soc'y 161 (1993). The court noted that it and other courts have cited Federico’s commentary as “an invaluable insight into the intentions of the drafters of the Act.” Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361 (Fed. Cir. 2002). According to Federico’s commentary, Congress intended § 282(b)(1) to “include the defenses such as that the patented invention has not been made, used or sold by the defendant; license; and equitable defenses such as laches, estoppel and unclean hands.”

Because the Federal Circuit found that the Patent Act includes laches as a statutory defense, the Supreme Court’s rationale for excluding laches as a defense under the Copyright Act is not applicable to patent infringement actions. In fact, the Petrella Court recognized that Congress could provide a statutory basis for laches, as it did in the Lanham Act. See 134 S. Ct. at 1974 n.15. Furthermore, the Federal Circuit observed that § 286 is a “damages limitation,” not a statute of limitations, stating that, “By its terms, § 286 is a damages limitation. The statute does not preclude bringing a claim—instead, it limits a patentee’s damages recovery to compensation for only the last six years of infringement.” Slip op. at 17. It ruled, however, that the distinction is irrelevant to the question whether the laches defense is available.

Laches Affects Injunctions And Bars Pre-Filing Damages

The Federal Circuit next evaluated the effect of laches on the remedies available in an infringement action. First, the judges unanimously agreed that laches continues to be a factor in a court’s decision to award injunctive relief. The Federal Circuit  noted that the circumstances giving rise to laches are considerations that “[f]all under the balance of the hardships factor” that a court must consider in considering requests for injunctive relief under eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).

In addition, the majority (six of eleven judges) observed that pre-1952 cases consistently applied laches to bar recovery for monetary damages. See, e.g., Banker v. Ford Motor Co., 69 F.2d 665 (3d Cir. 1934). The court presumed that in enacting the Patent Act, Congress was aware of pre-1952 cases applying laches as a defense to legal claims. Thus by enacting § 282 without commenting on the common law rule, the statute “codified whatever laches doctrine existed” at the time, including the bar to pre-filing damages. Slip op. at 32. Five circuit judges dissented from the court’s ruling that laches is available as a defense for damage claims under the Patent Act. They argued that the question should be governed by the Supreme Court’s general interpretation of laches as a defense, and that the Federal Circuit should not adopt “special rules” for patent cases.

Finally, although the Federal Circuit ruled that Petrella did not require the abrogation of laches as a defense, it did require an adjustment of the defense’s impact on continuing damages. Laches may be a bar to recovering damages arising during a period of unexcused delay, but it is not a forfeiture of rights to the patent itself. This result is one important difference between laches and estoppel. See Menendez v. Holt, 128 U.S. 514 (1888) (“Delay in bringing suit there was, and such delay as to preclude recovery of damages for prior infringement; but there was neither conduct nor negligence which could be held to destroy the right to prevention of further injury.”). As a result, the Federal Circuit held that a “patentee guilty of laches typically does not surrender its right to an ongoing royalty.” Slip op. at 40-41.

This may not be the last word on the issue. The Supreme Court may be asked to review SCA Hygiene and decide whether the Federal Circuit was correct to keep the laches defense as part of patent law.