SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC
197 L. Ed. 2d 292
| SCOTUS | 2017Background
- SCA sent a 2003 letter accusing First Quality of infringing U.S. Patent No. 6,375,646; First Quality pointed to an earlier Watanabe patent and proceeded with product development.
- SCA requested PTO reexamination in 2004; the PTO confirmed the '646 patent in 2007. SCA sued for patent infringement in 2010.
- First Quality raised laches and equitable estoppel; the district court granted summary judgment for First Quality; the Federal Circuit panel affirmed on laches and estoppel; en banc Federal Circuit (6–5) reaffirmed that laches can bar damages within 35 U.S.C. § 286’s six‑year window, relying on A.C. Aukerman precedent.
- Supreme Court granted certiorari to decide whether laches may bar damages for infringements occurring within the six‑year period prescribed by § 286, considering Petrella v. MGM (copyright context).
- The Supreme Court (Alito) held that laches cannot bar a damages claim for infringements within § 286’s six‑year period, applying Petrella’s separation‑of‑powers and equity gap‑filling reasoning; it remanded for further proceedings (equitable estoppel unresolved).
Issues
| Issue | Plaintiff's Argument (SCA) | Defendant's Argument (First Quality) | Held |
|---|---|---|---|
| Whether laches can bar damages for infringements occurring within § 286’s six‑year look‑back window | Laches cannot bar damages where Congress provided a statutory limitations rule; follow Petrella | § 286 is not a traditional forward‑running statute of limitations and § 282(b)(1) codifies an "unenforceability" defense (including laches) that overrides § 286 | Laches cannot be invoked to bar damages for infringements within § 286’s six‑year period; Petrella applies |
| Whether § 282(b)(1)’s "unenforceability" language codified laches as a defense to damages claims | Even if § 282 incorporates equitable defenses, Congress did not clearly authorize a damages‑defeating laches rule conflicting with § 286 | § 282(b)(1) incorporates laches as "unenforceability," so laches can bar damages | Court assumes arguendo § 282 might include laches but rejects inference that Congress intended a laches rule to override § 286 |
| Whether pre‑1952 patent practice shows a settled consensus that Congress codified laches in § 282 | Historical practice does not show a broad, unambiguous consensus contradicting Supreme Court precedents that laches cannot bar claims within a statutory limitations period | Longstanding patent decisions (equity and law) applied laches to damages; Congress intended to codify that practice | The Court finds pre‑1952 authorities insufficient to show Congress intended to displace the general rule stated in Supreme Court precedent |
| Whether equitable estoppel or other doctrines can address defendant prejudice from plaintiff delay | Equitable estoppel and estoppel‑type doctrines remain available to protect defendants | N/A — First Quality relied on laches and estoppel | Court left equitable estoppel unresolved and noted it can protect defendants in some circumstances |
Key Cases Cited
- Petrella v. Metro‑Goldwyn‑Mayer, Inc., 572 U.S. 663 (2014) (laches cannot bar damages claims filed within a congressional limitations period in copyright context)
- A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc) (Federal Circuit precedent recognizing laches as a defense to certain patent claims)
- Holmberg v. Armbrecht, 327 U.S. 392 (1946) (if Congress sets an explicit limit for enforcement of a right, laches cannot defeat that statutory limit)
- United States v. Mack, 295 U.S. 480 (1935) (laches during the statute of limitations is no defense at law)
- Wehrman v. Conklin, 155 U.S. 314 (1894) (laches is an equitable defense and cannot defeat a claim brought within the statutory limitations period)
- Cross v. Allen, 141 U.S. 528 (1891) (statements reinforcing that laches cannot bar claims within a statutory limitations period)