SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 767 F.3d 1339

SCA owns U.S. Patent No. 6,375,646 covering adult incontinence products and wrote First Quality in Oct–Nov 2003 alleging infringement; First Quality replied asserting prior art (the ’649 patent) invalidated the ’646 patent. These two letters were the only substantive exchanges about the ’646 patent.
SCA filed an ex parte reexamination request for the ’646 patent on July 7, 2004; the PTO issued a reexamination certificate in March 2007 confirming original claims and adding new claims. SCA did not notify First Quality of the reexamination.
First Quality expanded its adult incontinence product line and made significant capital investments beginning in 2006–2009 (including a >$10 million acquisition in 2008). First Quality stated it considered the ’646 issue no longer live after its 2003 invalidity letter.
SCA filed suit against First Quality for infringement on August 2, 2010—about 6 years 9 months after the initial contact—triggering First Quality’s motions for summary judgment on laches and equitable estoppel.
The district court granted summary judgment for First Quality on both laches and equitable estoppel; the Federal Circuit affirmed dismissal on laches but reversed as to equitable estoppel, finding genuine factual disputes on misleading silence and reliance.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether SCA’s >6‑year delay is barred by laches	SCA: reexamination and post‑reexam preparations excuse delay	First Quality: delay unreasonable and caused economic prejudice (investments)	Laches presumption applies; SCA failed to rebut; summary judgment for laches affirmed
Whether reexamination tolls or negates laches presumptions	SCA: reexamination period is a reasonable excuse and should be excluded	First Quality: total delay counts; SCA had counsel and could have acted sooner	Reexamination may be an excuse in isolation, but SCA’s overall delay (3+ years after reexam) was not excusable; presumption stands
Whether SCA’s communications and subsequent silence amount to misleading conduct for equitable estoppel	SCA: its reexamination filing and limited letters show no tacit abandonment	First Quality: SCA’s silence after initial letters reasonably led to belief the claim was abandoned	Genuine factual dispute exists; summary judgment on equitable estoppel reversed (silence not only possible inference)
Whether First Quality reasonably relied on SCA’s alleged misleading conduct and was prejudiced	SCA: First Quality’s investments were business choices, not reliance on SCA	First Quality: testimony that it stopped treating the issue as live and invested accordingly	Court found genuine issues of material fact as to reliance; summary judgment on reliance was improper

Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir.) (en banc) (lays out laches and equitable estoppel elements and burdens)
Wanlass v. Gen. Elec. Co., 148 F.3d 1334 (Fed. Cir.) (delay >6 years creates presumption of unreasonableness and prejudice)
Petrella v. Metro‑Goldwyn‑Mayer, Inc., 134 S. Ct. 1962 (U.S.) (addresses limits on laches vis‑à‑vis statutory limitations; Aukerman remains controlling in Fed. Cir.)
Aspex Eyewear Inc. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir.) (example where silence/tacit withdrawal supported estoppel after sustained interactions)
Scholle Corp. v. Blackhawk Molding Co., 133 F.3d 1469 (Fed. Cir.) (silence coupled with extensive dealings supported estoppel)
Meyers v. Asics Corp., 974 F.2d 1304 (Fed. Cir.) (silence alone generally insufficient to create estoppel)
Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770 (Fed. Cir.) (economic prejudice requires nexus to patentee’s delay)