Posts Tagged: "laches"

On the heels of a busy term last year, the stage is set for the Supreme Court to review two more important issues regarding utility patents during the October term. The first issue involves one aspect of the Federal Circuit’s decision in Promega Corp. v. Life Technologies Corp., 773 F.3d 1338 (Fed. Cir. 2014) — i.e., whether a party who supplies a single, commodity component of a multi-component invention from the United States can be liable for infringement. The second issue arises from SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015) (en banc), to determine whether laches remains a viable defense to patent infringement with respect to pre-litigation damages in certain circumstances.

As the Supreme Court prepares to hear arguments for SCA Hygiene Products v. First Quality during the October 2016 term, another laches case, Medinol Ltd. v. Cordis Corp., awaits its chance to be heard before the Court. Medinol, similar to SCA Hygiene, presents the question of whether judges may use the equitable defense of laches to bar legal claims for damages that are timely within the express terms of the Patent Act.

The equitable doctrine of laches has existed in the United States court system since the founding of this country, originating from the English Courts of Equity. Laches has been applied to cases involving patent infringement and has been allowed as a defense by the court in instances at which legal and equitable relief was granted. On May 2, 2016, the Supreme Court granted a petition for certiorari for SCA Hygiene Products v. First Quality Baby Products. While this case could eliminate the defense of laches in patent infringement, it is important to understand where this doctrine came from and how it has been applied in patent law.

Each week, we succinctly summarize the preceding week of Federal Circuit precedential patent opinions. We provide the pertinent facts, issues, and holdings. Our Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. We welcome any feedback you may provide. – Joe Robinson, Bob Schaffer, Parker Hancock, and Puja Dave 83-2.…

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.