New EPO Guidelines - Common General Knowledge is Back

The EPO's new Guidelines for Examination applicable as of next week (November 1, 2015) have been published and it is time for practitioners to check out what is in for them.

 Section H IV 2.2 defining the basic principle  of allowability of amendments under Art. 123(2) EPC, i.e. the content of the documents of originally filed, has been amended as follows:

Under Art. 123(2), it is impermissible to add to a European application subject-matter which the skilled person cannot derive directly and unambiguously, using common general knowledge, is not directly and unambiguously derivable from the disclosure of the invention as filed.

Hence, the use of common general knowledge has been added. It is true that EPO examiners (or opponents) sometimes forgot that the person skilled in the art does not switch off his common general knowledge when reading patent documents and this blogger appreciates this clarification.

Did any of our readers find other points of practical interest in the amendments? PatLit would be pleased to share your observations.

Michael Thesen

Arbitrariness is not fair - T0595/11 – underpayment of appeal fee

What may we legitimately expect from the
formalities officers in this building?

We have all experienced that judgments appear sometimes unfair, in particular for the underlying party. In my experience, this entirely subjective impression is less likely to arise in cases where the tangible interests of human, warm blooded parties are balanced against each other but rather in cases where the interest of one party is balanced against the interests of faceless and anonymous "third parties" or an undefined “public” whom nobody has ever met in person. This is the case e.g. for the payment of fees or legal remedies where the legal certainty for the third parties has to be established as soon as possible.

The rules of law are generally meant to strike the right balance between the interest and fundamental rights of the parties involved. In the case of an unintended loss of rights or the failure to use a legal remedy, the system of time limits for re-establishment of rights as laid down e.g. in Rule 136 EPC has been developed for this purpose, wherein in particular the time limit of one year of expiry of the unobserved time limit is meant to be fairly absolute as it insures legal certainty for third-parties.
In many cases where procedural fees are not paid or paid in an insufficient amount, the EPO or the national intellectual property office will issue a corresponding notification that the right has been lost ("loss of rights") and that it is possible to file a request for re-establishment of rights under the pertinent rules of law. While such a notification is likely to be considered sufficient to remove the cause of non-compliance with the period as it draws the applicant’s attention to this fact, the failure of the office to send out such a notification is, according to the case law, not as such sufficient to render the absolute one-year time limit for re-establishment of rights ineffective. It is the very purpose of this time-limit to create legal certainty for the public even in cases where the loss of rights has not come to the attention of the former right holder.

In view of this, the decision T0595/11 comes as a real surprise. The appellant, having its seat in Switzerland, has filed a notice of appeal in Dutch language and paid an appeal fee reduced by 20 % eight days prior to the expiry to the time limit to file the appeal. Swiss parties are supposed to understand German or French and are therefore not entitled to a reduction of the appeal fee. The amount was insufficient. However, this had not been remarked by anybody for four years until some months prior to the Oral Proceedings, when the one-year time limit according to Rule 137 (1) EPC to file a request for re-establishment of rights has long passed.


Would anybody of the experienced practitioners among our readers have expected the formalities section of the EPO board of a appeal to issue a notification

1. within the 8 days between the payment of the appeal fees and the due date? or
2. within the 1-year time-limit for re-establishment?

However the answer may be, I think that most of our readers would presume that the appeal would be dismissed as inadmissible.

Surprisingly, the board decided to the contrary, by referring to the “principle of good faith” and the “principle of the protection of legitimate expectations”, the board examines if a legitimate expectation of the appellant existed that the EPO should have warned him significantly earlier of the deficiency. The Board derives from Rule 101 EPC that the duty of the office to examine the correct fee payment, including the entitlement for fee reduction exists and that this check has to be done “with a reasonable time frame”, without, however exactly defining this time frame.

According to point 1.7 of the reasons “the argument that any time frame should be such that a warning can be expected in time for the appellant to file a request for re-establishment of rights, appears persuasive. However, the issue need not be decided now as the board is confident that whatever this expected time frame it might be, it is certainly shorter than the 4 whole years that have passed in the present case between the expiry of the time limit for filing the appeal (and for paying the full appeal fee) and the time when the office first made the appellant aware of this issue.” The board than considers “that an objective observer relying on the duty of the office to act as explained above would have concluded that the appeal has been examined for such formalities as the appeal fee" and “that the legitimate expectations of the appellant (and possibly other parties) that the fee payment was in good order and would no longer be objected to, where indeed established”. After having noted that not nearly the legitimate interests of the appellant must be protected in an inter partes case, the board says that it “can only strive to find with it considers to be an equitable balance of the consequences to either party.” And says that “the board must choose between a possible and certain adverse effect, where it also must consider that the possible, but nevertheless conjectural adverse effect is the prevention of an immediate success of the respondent's case (i.e. the revocation becoming final), while the certain adverse effect is the immediate loss of the appeal”. Weighing up the legitimated interest of both sides and also that of third-parties, the Board finds that “it is equitable that the office's failure is made good and the error is now allowed to be remedied as far as possible" and finally judges that the appeal is allowable (The remaining 20 % of the appeal fees had meanwhile been paid).
The core part of the judgement goes as follows:

[1.13] Weighing up the legitimate interests of both sides and also that of third parties, and considering the overall circumstances of the present case, the Board concludes that the original error might have had serious and inequitable consequences through the Office's failure to discover it. Therefore, it is equitable that the Office' failure is made good and the error is now allowed to be remedied, as far as possible. Seeing that some adverse effect is inevitable, the Board considers that the possibility of a real, but otherwise in itself not necessarily decisive setback (here the non-occurrence of an immediate success) for a party is more preferable than a certain decisive loss of all rights for another party, in particular given the fact that for a long time none of the parties did expect the latter. Put differently, a merely possible injury obviously is less serious than certain death. Therefore in the present case the Board accepts, through the application of the principle of protection of legitimate expectations, that the appeal fee has been timely and fully paid. The Board considers that in this manner overall, least harm is done to all parties. The Office has not suffered any loss either, as the fees were eventually paid in full. It is also satisfactory that in the end the appeal can be decided on its merits.

With all compassion for the appellant, this blogger finds this decision highly questionable as it tries to arbitrarily find a fair balance between the interests of the parties while disregarding the rules of law. Most importantly, the under-payment of the appeal fee was not the result of the office's negligence. If the board really thinks that the Formalities section should have notified the appellant within one year, the opportunity lost by the appellant due to the office's error would have been the lost opportunity fo file a request for re-establishment of rights. The board should therefore not have immediately considered the appeal as admissible but rather have examined an eventual request for re-establishment of rights to be filed by the appellant and whether or not the appellant has exercised all due care required by the circumstances at the time of filing the appeal.

The latter approach would have been the solution of the German courts, according to the theory developed by the BGH in "Crimpwerkzeug III" , a re-establishment maybe requested even after expiry of the one-year term for re-establishment of rights in cases where “the reasons for the failure to comply with the time limit are to be assigned to the court/office” and not to the appellant 
A decision balancing the legitimate expectations of a party with legal security for thirds parties was issued by the 10th senate of the Budespatentgericht in 2012 and has been discussed here. Following the "Crimpwerkzeug" theory, the senate judges that re-establishment may be requested even after expiry of the one-year-term

"in specific exceptional cases for reasons of ensuring an effectice legal protection and the right to be heard, in particular when the reasons for the failure to comply with the time-limit do not lie in the sphere of the party but are rather to be assigned to the court/office".

The decision T0595/11 as it stands is a clear case of arbitrariness where the explicit rules of law are overruled by fairness arguments shot from the hip.  It risks to entail attempts to circumvent the one-year time-limit for re-establishment in other cases and does poor service to the legal certainty in our field.

Slide to Unlock Image Patent-eligible but Not Inventive - BGH Entsperrbild

In the case X ZR 110/13 "Entsperrbild", the BGH had do decide on a patent relating to the unlocking of a mobile phone. The key feature is that an icon (unlock image - the arrow on grey background in the figure on the rhs) is moved together with the finger when executing the unlock gesture.

The Bundespatentgericht had disregarded the icon in the assessment of inventive step and judged that it did not contribute to the solution of a technical problem.

The BGH did not agree. According to the headnote, features relating to the conveying of information in a patent claim need to be subject to a special treatment (unofficial translation by the author of this note):

1. Statements relating to the conveying of certain information contents and hence aim at having impact onto the human imagination or intellectual power are, as such, disregarded in the assessment of inventive step. Statements relating to information which shall be conveyed according to the technical teaching of the invention are apt to support the patentability in view of inventive step only insofar as they determine or at least influence the solution of a technical problem by technical means.
2. Information-related features of a patent claim are to be examined as to whether the information to be conveyed is, at the same time, an embodiment of a means for a technical solution, which must not already be indicated as such elsewhere in the patent claim. In such a case, the means for the technical solution as to be considered in the assessment of inventive step.

The interesting piece here is the not already indicated elsewhere portion. The BGH bases its analysis on a fairness argument. According to the senate, "it would not be justified to exclude the technical effects of the conveying of information from the assessment of inventive step only because these are claimed, in the patent claim, merely in the form of the presentation of certain information."

I presume this can be interpreted as follows: In the case at issue, the unlock image was supposed to solve the technical problem of providing optical feedback to the user. Had the patentee claimed "means for providing optical feedback" covering both tangible technical means as well as the presentation of certain information, this broader "means for providing optical feedback" would have had been clearly considered in the assessment of inventive step. The Fact that the patentee claims a narrower, more specific solution, it would not be justified to exclude this from the assessment of inventive step. If, however, the broader "means" is already claimed elsewhere (and therefore contributes to inventive step), the additional information-related features would not entail any further technical contribution and can be disregarded.

In the case at issue, the feature of using a "movable" image for providing optical feedback was, in contrast to the analysis of the Bundespatentgericht, considered to be an information-related feature contributing to solution of a technical problem relevant for inventive step.

This finding was clearly a progress in our case-law but a phyrric victory for Apple: The feature was considered but found to be obvious over the art.


 

This year's IP Summit: what's in it for the patent litigation fraternity?

Premier Cercle's annual IP Summit, now in its 10th edition, takes place on 3 and 4 December of this year in the Hilton Berlin. This is a big event, with at least 600 participants and registrants attending.  The event is addressed to a broad range of patent-related skills and interests, and the programme is divided into streams, enabling those who attend to pursue their IP specialities via workshop sessions.

As might be imagined, given the topicality of patent litigation at present, the programme has a considerable amount to offer those who decide whether to litigate as well as those who do the donkey-work.  Topics relating to patent litigation include

• the future of injunctive relief in increasingly harmonised European Union
• availability of injunctive relief for infringement of FRAND patents
• more IP rights or better enforcement?
• the impact of the Unified Patent Court on European jurisdictions

Click here for the list of confirmed speakers. You can check out the programme and all other details of this event via the Premier Cercle website here. 

Blocked passages are no passages – OLG Düsseldorf 15 U 139/14

The OLG Düsseldorf had to deal with a motion for preliminary injunction based on a patent relating to a boiler with a combustion chamber provided with a flame defection component deflecting the flame into a space between a flame tube and a heat exchanger. A combustion chamber is surrounded by an exhaust gas chamber and separated therefrom by a heat exchanger surface provided with passages.

According to claim 1 of the patent in suit, these passages for hot combustion gases are provided over the entire length of the combustion chamber.

The defendant had been sentenced for an infringement in earlier proceedings and then came up with a modified version of the boiler were some of the passages in the metallic heat exchanger body were closed with some sort of plastic matter. As a result, only 85 % of the lengths of the combustion chamber were provided with (open) passages and the rest was clogged.

The plaintiff argued that the passages would still exist despite of being clogged by plastics and that the plastics would degraded and burned after a while such that the passages would be open. Export evidence on the last point was contradictory such that the court concluded that the allegedly infringing product as it was presented did not show passages provided over the entire length of the combustion chamber. Once the passages are clogged, they do no longer qualify as passages in the sense of the patent.

Turning to infringement by equivalent means, the board re-emphasizes that the finding of equivalence requires that the considerations of the skilled person are oriented on the technical teaching of the claim and that the claim is not only the starting point but rather the essential basis for the consideration of the person skilled in the art (BGH Pumpeneinrichtung). At the same time, the patentee is limited to the technical teaching he has requested to be protected (BGH Kunststoffurteil). According to the court, the technical teaching given by the patent has to be accepted by the person skilled in the art as sensible and must not be questioned in its technical justification when searching for an equivalent means as a replacement of a feature in the claim.

In the case at issue, the claim teaches that the cylindrical surface of the heat exchanger provided for exchanging heat can be and should be used in its entirety. Accordingly, the required uniform heat transmission onto the heat exchanger can be achieved only when the passages are provided over the entire length of the surface of the heat exchanger which separates the combustion chamber from the exhaust gas chamber.

Consequently, the allegedly infringing embodiment was found not to infringe the patent by equivalent means.

 

The German Text of the Judgement can be found here.

Omitted Inventors May Have Standing To Sue for Patent Correction Based On Injury to Reputation

The U.S. Court of Appeals for the Federal Circuit recently ruled that a plaintiff not named as a joint inventor on several patents and pending patent applications has standing to maintain an action to correct inventorship under 35 U.S.C. § 256, despite the fact that he previously assigned all rights in the patented inventions to his former employer. Shukh v. Seagate Technology, LLC, Case No. 2014-1406 (Fed. Cir. Oct. 2, 2015). The decision recognizes for the first time that an omitted co-inventor may have an enforceable interest in correcting inventorship based on evidence that the correction would enhance the inventor’s reputation. A copy of the decision is HERE. 

The plaintiff in Shukh was a solid state physics research scientist at defendant Seagate Technology, LLC. At the outset of his employment, he signed Seagate’s standard “inventions agreement,” which prohibited him from filing a patent application without permission from Seagate, and included a present assignment to Seagate of all future inventions made during his term of employment. Subsequently, Shukh contended that Seagate failed to name him as a co-inventor on six patents and four pending patent applications covering subject matter that he had allegedly contributed. Seagate terminated him in 2009, in part due to his confrontational manner and reputation for claiming credit for discoveries made by other Seagate researchers. He then filed suit seeking to correct inventorship of the patents under § 256 and asserting several state-law tort and breach of contract claims.

At the motion to dismiss stage, the U.S. District Court for the District of Minnesota ruled that Shukh lacked any ownership or financial interest in the patents and applications based on his assignment of all rights to Seagate. The district court also granted summary judgment on the § 256 claim on the ground that the plaintiff lacked standing.

On appeal, the Federal Circuit vacated and remanded on the § 256 claim, and affirmed the district court’s other rulings. The appeals court declined to revisit the effect of the Seagate inventions agreement, stating that the district court’s ruling that Shukh lacked any ownership or financial interest in the patents was supported by binding precedent. Filmtec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991). 

Although the Federal Circuit vacated and remanded the district court’s grant of summary judgment, it did rule that Shukh demonstrated standing to pursue its claim to correct inventorship. The court announced that in some situations, an inventor may have a reputational interest in being properly designated as the co-inventor on a patent:

Today, we hold that concrete and particularized reputational injury can give rise to Article III standing. As we noted in [Chou v. Univ. of Chi., 254 F.3d 1347, 1357 (Fed. Cir. 2001)], “being considered an inventor of important subject matter is a mark of success in one’s field, comparable to being an author of an important scientific paper.” 254 F.3d at 1359. We reasoned that “[p]ecuniary consequences may well flow from being designated as an inventor.” Id. This is particularly true when the claimed inventor is employed or seeks to be employed in the field of his or her claimed invention. For example, if the claimed inventor can show that being named as an inventor on a patent would affect his employment, the alleged reputational injury likely has an economic component sufficient to demonstrate Article III standing.

Slip op. at 7.

In addition, the court found that Shukh presented enough evidence of a specific reputational injury to create a triable issue on his claim to correct inventorship. First, evidence and expert testimony established that being a named inventor on patents was a significant factor in the professional reputation and stature of scientists in Shukh’s field. In particular, Seagate itself recognized issued patents as an indicator of good performance. Although the district court observed that the plaintiff already had an excellent reputation as an inventor, the Federal Circuit noted that the evidence suggested that his reputation would be enhanced had he been named on multiple additional patents and applications. The court also noted that being named on the additional patents could have rehabilitated Shukh’s bad reputation for claiming credit for Seagate innovations, since it would tend to validate his role as a co-inventor. Finally, Shukh presented evidence that his bad reputation was a factor in his inability to find employment after termination from Seagate. The Federal Circuit found that a jury could infer that his status as a co-inventor on additional Seagate patents would rehabilitate his reputation, which would improve his employment prospects and have a direct financial impact.

No stay of liability issue, but prospect of some sort of stay of relief remains

Fontem Holdings 1BV and another v Ten Motives Ltd and another; Nicocigs Ltd v Fontem Holdings 1BV and another [2015] EWHC 2752 (Pat), is 2 October 2015 ruling by Mr Justice Norris, in the Patents Court, England and Wales.

In short, this was an application by the defendant -- the alleged infringer -- for summary judgment on infringement of a patent for an e-cigarette, or in the alternative an application to stay the action pending the outcome of European Patent Office (EPO) opposition proceedings. In a pretty short judgment for a patent case (just 46 paragraphs in length) Norris J summarised the law, considered the issue of infringement and briefly set out the particular circumstances of the new and rapidly-growing market for e-cigarettes.

Given the nature and speed of change in the marketplace, he said, there was a clear need for a much earlier determination of the validity and infringement issues in the national litigation than the earliest possible date for completion of the EPO's opposition proceedings. If however infringement were proven at trial, there remained the possibility of some sort of stay when it came to sorting out the appropriate relief.

T2201/10 Do not Destroy the Foundations of your Argument

The decision T 2201/10 deals with the proper application of the problem-and-solution approach.

Our readers will know that inventiveness can usually be disproven (some say that the "unless" in Art. 56 EPC means that there is a legal presumption of inventiveness) but not proven.  The defender of a patent or application has to rely on secondary indicia and is otherwise limited to criticise the arguments of his challenger.

This decision in very precious in that it establishes a positive test for inventive step and does this in a very clear and definitive way.

A rough translation of the an excerpt of item 5.1.3 if the decision from the French is as follows (emphasis added):

The problem-solution approach ... further leads to the rejection of any analysis according to which the person skilled in the art would have modified the closest prior art in a way which would be in conflict with its reason of existence unless its very quality as "closest prior art" originally accepted for that document would be negated.

In other words, the finding that the invention as claimed departs from the disclosure of a document of the prior art in what are - in view of the objectives at which that prior art aims - the foundations of the latter, is as such sufficient to conclude that an inventive step of the invention vis-à-vis this prior art exists.

In the case at issue, if D1 is kept as the closest prior art, the skilled person would have excluded every modification going against the aim of the assembly which is described therein, i.e. every modification which would result in a reductions of exchange within the refrigerating fluid.

Breaking News: Protocol to the UPC Agreement In Force

The News of the day comes from the UPC preparatory committee:

Today, October 1st 2015, a protocol to the UPC Agreement has been signed by representatives of member states in the margins on the Competitiveness Council meeting. This protocol will allow some parts of the UPC Agreement to be applied early. This includes final decisions on the practical set up of the Court, for example, the recruitment of judges and testing of IT systems. The provisional application phase will also be used to allow for early registration of opt-out demands.

This is the latest step towards bringing the Unified Patent Court into operation. In practice there is no immediate impact on business, however, the Preparatory Committee aims to complete its work by June 2016 with a view to the UPC opening at the start of 2017.

A copy of the protocol is available.

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.