SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

Laches is not an available defense to patent infringement claims for damages incurred during the statute of limitation period set forth in § 286 of the Patent Act.

In October 2003, Petitioners, manufacturers of adult incontinence products, informed Respondents that they believed that Respondents were manufacturing and selling products that infringed on Petitioners' patents. Respondents responded by stating that they had a patent that covered the disputed diaper design, that their patent antedated Petitioners' patent, and that Petitioners' patent was invalid and could not support an infringement claim. In July 2004, Petitioners requested that the Patent and Trademark Office ("PTO") reexamine its patent and in March 2007 the PTO confirmed that Petitioners' patent was valid. In August 2010, Petitioners brought suit against Respondents for patent infringement. Respondents met Petitioners' claim with a motion for summary judgment, in which they raised the defenses of laches and equitable estoppel. The District Court for the Western District of Kentucky granted Respondents' motion on both grounds and the Federal Circuit affirmed. While the case was being appealed in the Federal Circuit, the United States Supreme Court decided Petrella v. Metro-Goldwyn-Mayer, Inc. and held that "laches cannot preclude a claim for damages incurred within the Copyright Act’s 3-year limitations period." In light of the Supreme Court's decision, the Federal Circuit reheard this case en banc but reaffirmed its position that laches can preclude a claim for damages incurred within § 286 of the Patent Act's six-year statute of limitation period. Petitioners appealed to the Supreme Court and the Court reversed the Federal Circuit, holding that laches is not an available defense to claims for damages incurred during the statute of limitation period set forth in § 286. The Court reasoned that by allowing a defendant to assert laches when Congress had expressly provided a statute of limitation period for a claim would empower courts with a "legislative override" that is inconsistent with separation of powers. Moreover, the Court noted that the when the Patent Act was enacted, there was a general rule recognized by the Court that the defense of laches was unavailable to bar a claim for damages incurred within Congress' prescribed statute of limitation period The Court was not persuaded by the Federal Circuit's reasoning that § 282 codified laches as a defense to patent infringement claims incurred within the statute of limitation period. VACATED in part and REMANDED.