The Status of Patent Laches after Petrella v. MGM

Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed three-year window from the particular act of infringement. In Petrella, the Court reversed the decision of the Ninth Circuit Court of Appeals, which had affirmed the district court’s summary dismissal of the suit based on laches. Resolving a circuit split at the appellate level, the Supreme Court held that the lower courts erred in “failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay.” Petrella, slip op. at 11. The opinion emphasized that the Supreme Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” Id. at 14-15. Rather, the Court stated that laches is a “gap-filling, not legislation-overriding,” measure that is appropriate only when there is not an explicit statute of limitations. Id at 14.

As a counter-example, the Supreme Court distinguished the Lanham Act, which does not contain a statute of limitations and “expressly provides for” laches as a defense at 15 U.S.C. §1115(b)(9). Id. at 13, n. 15. In the same footnote, the Supreme Court noted the six-year limitation on damages imposed by the Patent Act and acknowledged the co-existing patent laches doctrine, but stated that its decision does not address the patent context. Id. Copyright law and patent law have numerous parallels, and the Supreme Court has occasionally borrowed from one body of law to support decisions in the other. See, e.g., Metro- Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 936 (2005). Consequently, it may appear at first glance that the doctrine of laches in patent cases could suffer the same fate. However, there are strong arguments that distinguish the principles of patent laches, and may lead the Supreme Court to a different result.

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