SCA Hygiene Products Aktiebolag SCA Personal Care, Inc. v. First Quality Baby Products, LLC
807 F.3d 1311
| Fed. Cir. | 2015Background
- SCA alleged First Quality infringed U.S. Patent No. 6,375,646; initial demand letter in Oct. 2003 and First Quality replied asserting invalidity in Nov. 2003. Communications then ceased. SCA requested PTO reexamination in July 2004; reexamination confirmed claims in 2007.
- First Quality expanded its protective-underwear business and made substantial investments between 2006–2009; SCA did not notify First Quality after reexamination and waited until Aug. 2010 to sue (first contact in ~7 years).
- District court granted summary judgment for First Quality on laches and equitable estoppel; panel affirmed laches ruling but reversed on estoppel; SCA obtained en banc review to reconsider Aukerman in light of Petrella.
- The en banc Federal Circuit considered whether Petrella (copyright law) eliminated laches as a defense to legal damages within the statutory recovery period (35 U.S.C. § 286) and whether laches can bar injunctive or ongoing relief.
- The court examined statutory text and history (35 U.S.C. § 282 and § 286), pre-1952 common-law practice, Federico’s contemporaneous commentary, and Supreme Court precedent (Petrella, Menendez, Holmberg, etc.).
Issues
| Issue | Plaintiff's Argument (SCA) | Defendant's Argument (First Quality) | Held |
|---|---|---|---|
| Whether laches can bar recovery of damages for infringement that occurred within § 286’s six-year period | Petrella abolishes a judicial laches defense to legal damages; § 286’s limitation precludes laches from barring damages within the statutory period | § 282 codified laches in 1952 and Congress therefore authorized laches to bar legal relief despite § 286 | Laches survives as a defense to legal relief in patent cases because § 282 codified laches as of 1952; courts must apply the statute as written |
| Whether § 282’s language and history establish that Congress intended laches to be a defense to legal relief | § 286’s clear six-year rule and Petrella’s separation-of-powers reasoning mean Congress did not intend laches to displace the statutory limit | § 282’s broad phrasing, legislative materials, and Federico commentary show Congress incorporated existing patent laches doctrine (which by 1952 included barring legal damages) | § 282 codifies laches; when Congress codified patent law in 1952 it adopted the common-law patent practice, which had allowed laches to bar legal relief |
| Whether laches may bar permanent injunctions or should be folded into eBay factors | Delay cannot generally foreclose equitable relief unless extraordinary; laches conflicts with statutory timeliness for legal relief | Laches is an equitable defense and its considerations naturally belong in the eBay equitable-injunction analysis | Laches factors should be considered within the eBay framework; laches can inform denial or tailoring of injunctions |
| Whether laches can bar an ongoing royalty for future infringement | Petrella and Menendez suggest estoppel (not laches) is needed to bar all relief; laches should not preclude ongoing royalties | Laches (in extraordinary cases) can preclude future relief where equities demand it | Absent extraordinary circumstances, laches will not preclude an ongoing royalty; ongoing royalties generally remain available despite laches |
Key Cases Cited
- Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (Supreme Court held laches cannot bar legal relief within a statutory limitations period but delay may affect equitable relief)
- A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc) (Federal Circuit’s prior framework treating laches as codified in § 282 and typically barring only pre-suit damages)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (Supreme Court: injunctive relief in patents requires application of traditional equitable four-factor test)
- Menendez v. Holt, 128 U.S. 514 (1888) (Supreme Court distinguished laches from estoppel; laches normally bars past relief but not future relief absent facts creating a new right)
- Holmberg v. Armbrecht, 327 U.S. 392 (1946) (Supreme Court: statutory limitations preclude application of laches to bar legal claims covered by the statute)
- Ford v. Huff, 296 F. 652 (5th Cir. 1924) (pre-1952 case discussing equitable defenses pleaded at law under § 274b and estoppel/laches in patent context)