Posts Tagged: "equitable estoppel"

Equitable estoppel does not bar assertion of patent claims later amended by reexamination when those new claims differ in scope from earlier claims in the patent that were not asserted. Thus, a defendant’s reliance on a patentee’s knowing silence and failure to enforce an earlier patent does not shield him from allegations of infringing later-issued claims of different scope.

Uber Technologies, Inc. and Ottomotto LLC (“Uber”), appealed the district court’s order, denying Uber’s motion to compel arbitration of pending litigation with Waymo, LLC (“Waymo”). Levandowski, a former employee of Waymo, was an Intervenor in this case. Uber sought to compel arbitration on the basis of Waymo’s arbitration agreement with Levandowski, not because of any arbitration agreement with Waymo.

Equitable estoppel may be appropriate for the defendant in SCA v. First Quality since the plaintiff was silent for years after the defendant asserted invalidity (possibly fulfilling the misleading conduct through inaction and reliance on that conduct). But can equitable estoppel be relied upon as a defense against a dormant plaintiff in the example illustrated above? Below, we consider the two elements of equitable estoppel that replace the unreasonable delay element of laches: misleading conduct and reliance.

The remaining vitality of estoppel as a defense against patent infringement after SCA Hygiene Products is also not a hypothetical question. Indeed, the issue of estoppel remains very much “alive and well” in SCA Hygiene Products. Besides laches, the accused infringer in SCA Hygiene Products, First Quality Baby Products, had moved (not surprisingly) for summary judgment based upon an estoppel defense, which was also granted by the district court. Also not too surprisingly, that portion of the ruling by the district court was reversed and remanded by the Federal Circuit panel on the ground that there were “genuine issues of material fact” to be resolved. The Federal Circuit majority in its en banc ruling also reinstated and preserved the Federal Circuit panel’s reversal and remand of the district court’s grant of summary judgment on the estoppel defense. Finally, in footnote 2, SCOTUS’ decision in SCA Hygiene Products expressly states: “We do not address the Federal Circuit’s reversal of the District Court’s equitable estoppel holding.”

In a strong reversal of the Federal Circuit, the US Supreme Court held in SCA Hygiene Products Aktiebolag v First Quality Baby Products, LLC, No. 15-927 (March 21, 2017), that delay by a patentee will not give rise to a laches defense during the statutory six-year damages period under 35 U.S.C. § 286. Justice Samuel Alito authored the 7–1 majority opinion, extending the court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014), which held that laches is inapplicable for copyright infringement, a provision similar to Section 286 of the Patent Act… The Supreme Court noted that its determination regarding laches does not preclude a defense based on equitable estoppel…