On Friday, September 18, 2015, the Federal Circuit sitting en banc, confirmed in SCA Hygiene Products v. First Quality Baby Products that the common law doctrine of laches is still a viable defense to patent infringement when the plaintiff unjustifiably delays in filing suit. This decision comes just a year after the United States Supreme Court reached the opposite conclusion with respect to copyright cases.

The Federal Circuit took the opportunity to revisit the subject of laches for the first time since 1992 to address whether the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer (aka the "Raging Bull" case) effectively abolished the defense under the Patent Act. In Petrella, the Supreme Court held that laches is not a defense to a copyright infringement suit brought within the limitations period set forth in the Copyright Act reasoning that the Act's limitations period already accounted for delay. 134 S. Ct. 1962, 1973 (2014). The Supreme Court further explained that laches originally came into play when there was no controlling limitations period. Id. at 1975. Thus, if Congress provides a controlling limitations period, laches is seemingly unnecessary.

SCA Hygiene Products argued that the Supreme Court's decision in Petrella precludes a laches defense within the Congressionally mandated six-year damages recovery period set forth in the Patent Act. See 35 U.S.C. § 286. The Federal Circuit disagreed, finding that Congress had codified the laches defense when it preserved the broad category of "unenforceability" defenses in the Patent Act. See 35 U.S.C. § 282(b)(1). The Court explained that by doing so, "Congress settled that laches and a time limitations on the recovery of damages can coexist in patent law." This is consistent with the Supreme Court's recognition that Congress could have provided for a laches defense in the Lanham Act. Petrella, 134 S. Ct. at 1974, n.15. The Federal Circuit noted, however, that although laches could preclude the recovery of presuit damages, it could not foreclose an ongoing royalty.

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