At least for present purposes, nothing depends on this debatable taxonomy. . The ABA also contends that laches may encourage litigation over negotiation (thereby discouraging settlements) because patent-holders would be anxious to mount lawsuits out of fear that they may otherwise be barred from bringing a claim. Section 286 of the Patent Act provides: Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action. By the logic of Petrella, we infer that this provision represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim. This case turns on the application of the defense to a claim for damages, a quintessential legal remedy. SCA HYGIENE PRODUCTS INDIA PRIVATE LIMITED - Zauba Corp Such dicta settles nothing. Jama v. Immigration and Customs Enforcement, 543 U.S. 335, 351, n.12 (2005). The upshot is an absence here of the symmetrical effect of delay upon which the Court relied in Petrella. A statute of limitations reflects a congressional decision that timeliness is better judged by a hard and fast rule instead of a case-specific judicial determination. SCA Hygiene Products Aktiebolag (SCA) notified First Quality Baby Products, LLC (First Quality) in 2003 that its product infringed an SCA patent. thus rejected First Qualitys argument that the statute of limitations specified in 286 of the Patent SCA Hygiene Prods. Chaides Constr. Cir. These kinds of defenses can depend upon contemporaneous evidence that may be lost over time, and they arise far more frequently in patent cases than any of their counterparts do in copyright cases. 2011); 1 Dobbs 2.4(4), at 104; 1 J. See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337. On March 27, 2007, the PTO confirmed the patentability of the 646 patent in its entirety along with several new claims added in reexamination. 13-1564 (Fed. Wiggin and Dana, Supreme Court Update - March 24, 2017 When Congress enacted the Patent Act in 1952, patent statutes had already contained a 6-year statute of limitations for 55 years (since 1897), during which time courts had continued to apply laches to patent damages cases. SCA appealed to the Federal Circuit, but before the Federal Circuit panel issued its decision, this Court de-cided Petrella. . On March 21, 2017, the United States Supreme Court ("Supreme Court") issued its opinion in SCA Hygiene Prods. 7 The dissent misunderstands this point and thinks that we dismiss the relevance of the equity cases because they applied laches to equitable claims without statutes of limitations. Post, at 5. And here there are good reasons for doing so. 15-927 (2016). SCA requested reexamination by the PTO of the 646 patent based upon the prior art First Quality had used in their response. In a 7-1 decision issued on March 21, 2017, the U.S. Supreme Court held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that laches cannot be invoked as a defense against a claim for damages in a patent infringement case brought within the six-year statute of limitations set forth in Section 286 of the Patent Act. But the fact remains that it is First Qualitys burden to show that Congress departed from the traditional common-law rule highlighted in our cases.8. 286. SCA HYGIENE PRODUCTS AKTIEBOLAG etal. And if business-related circumstances make it difficult or impossible for the infringer to abandon its use of the patented invention (i.e., if the infringer is locked in), then the patentee can keep bringing lawsuits, say, in year 10 (collecting damages from years 4 through 10), in year 16 (collecting damages from years 10 through 16), and in year 20 (collecting any remaining damages). SCA Hygiene Prods. The U.S. Supreme Court overturned another Federal Circuit decision today (this one having been decided en banc by the appellate court), in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC . The district court granted First Qualitys motion for summary judgment for laches and equitable estoppel. Corp., 18 F.2d 483, 484 (CA4 1927). This unreasonable delay may cause two types of prejudice: evidentiary and economic. We are excited to announce that we are officially two companies, Essity, a Health and Hygiene solutions company and the forest products company SCA, a leading industrial ecosystem. On October 31, 2003, Petitioners SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. (SCA) sent a letter to Respondent First Quality Baby Products, LLC et al. And for more than a century courts with virtual unanimity have applied laches in patent damages cases. But the majority remains determined to stay the course and continue on, travelling even further away, Mathis v. United States, 579 U.S. ___, ___ (2016) (Alito, J., dissenting) (slip op., at 9), from Congress efforts, in the Patent Act, to promote the Progress of Science and useful Arts, U.S. Pointing to cases decided between 1897 and 1938 in which an equity court permitted a defendant in an infringement case to invoke the defense of laches, First Quality contends that Congress, aware of these cases, assumed that the 1952 Act would likewise allow a defendant in an infringement case to claim laches with respect to a claim for damages occurring within a limitations period. Now consider the existing law that the Patent Acts drafters intended the Act to reflect. But I would be more cautious before adopting changes that disrupt the settled expectations of the inventing commu-nity. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 739 (2002). SCA Hygiene Products Aktiebolag v. First Quality Baby Products Corp., 18 F.2d 483, 490 (CA4 1927); Cummings v. Wilson & Willard Mfg. Cir. Co., 182 F.2d 945, 948 (CA7 1950); Shaffer v. Rector Well Equip. Chief Judge Prost, writing for the majority, concluded that Congress codified the laches defense in 35 U.S.C. And that is the case law situation that Congress faced when it wrote a statute that, as we have said, sought primarily to codify existing patent law. 1,200+ attorneys and consulting professionals. As it had in Aukerman, the en banc court concluded that Congress, in enacting the Patent Act, had codified a laches defense that barred recovery of legal remedies. 807 F.3d 1311, 13231329 (2015). They focus on the explicit codification of the statute of limitations in 286 compared to the tenuous arguments that the Federal Circuit used to shoehorn latches as a defense to legal remedies under 282. ). contrast to the mountain of authority recognizing laches as a defense, the majority could not This does not constitute a settled, uniform practice of applying laches to damages claims. On March 21, 2017, the Supreme Court of the United States decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. This was the first communication between the parties since First Qualitys response letter on November 21, 2003. 901, 9TH FLOOR, E WING, LOTUS CORPORATE PARK, LAXMI NAGAR, GOREGAON (EAST) MUMBAI Mumbai City MH 400063 IN , - , . The minority, though, dissented with the part of the opinion that held latches is also available against claims of legal relief. EFF supports this and asserts that evidence may be needed to prove that a publication (of the patented material) was widely available. judgment on the timeliness of suit. We hold that it does. First Quality counters SCAs accrual rule argument by contending that the separate-accrual rule is not offended by employing laches to bar damages claims within 286s limitations period. 89. 2013 WL 3776173, *12 (WD Ky., July 16, 2013). 778; see also Aro Mfg. Act should be treated differently because it is not a traditional statute of limitations. Rec. (e)The Federal Circuit and First Quality rely on three types of cases: (1) pre-1938 equity cases; (2) pre-1938 claims at law; and (3) cases decided after the merger of law and equity in 1938. SCA Wins US Supreme Court Victory in Patent Infringement Suit Harvard Law SchoolWasserstein Hall, Suite 30501585 Massachusetts AveCambridge, MA 02138, Copyright 2022 Harvard Journal of Law and Technology. First Quality cites three Court of Appeals cases in which laches was raised in a proceeding at law and in which, according to First Quality, the defense was held to bar a damages claim. App. First Quality countered in response on November 21that the 646 patent was invalid. The enactment of a statute of limitations necessarily reflects a congressional decision that the timeliness of covered claims is better judged on the basis of a generally hard and fast rule rather than the sort of case-specific judicial determination that occurs when a laches defense is asserted. Moreover, applying laches within a limitations period would clash with the gap-filling purpose for which the defense developed in the equity courts. As the majority points out, these cases brought in law courts constitute only a handful of decisions. Ante, at 13. 35. But even if all of these cases squarely held that laches could be applied to a damages claim at law within the limitations period, they would still constitute only a handful of decisions out of the corpus of pre-1952 patent cases, and that would not be enough to overcome the presumption that Congress legislates against the background of general common-law principles. The possibility of this type of outcome reveals a gap. Laches works to fill the gap by barring recovery when the patentee unreasonably and prejudicially delays suit. Moreover, the most that can possibly be gathered from a pre-1938 equity case is that laches could defeat a damages claim in an equity court, not that the defense could en-tirely prevent a patentee from recovering damages. See infra, at 23. Justice Breyer filed a dissenting opinion. 8 For the same reason, the dissent misses the mark when it demands that we cite cases holding that laches could not bar a patent claim for damages. Post, at 8. Neither the Federal Circuit, nor First Quality, nor any of First Qualitys amici has identified a single federal statute that provides such dual protection against untimely claims. PDF I T Supreme Court of the United States - SCOTUSblog