Supreme Court Decides SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC
On March 21, 2017, the Supreme Court of the United States decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927, holding that a defendant cannot invoke laches against a damages claim asserted within the Patent Act’s six-year limitations period.
SCA Hygiene Products Aktiebolag (SCA) notified First Quality Baby Products, LLC (First Quality) in 2003 that its product infringed an SCA patent. After First Quality responded by claiming that its own patent pre-dated SCA’s patent, SCA sought and received U.S. Patent and Trademark Office confirmation of its patent’s validity. SCA then sued First Quality for patent infringement in 2010.
The district court dismissed SCA’s patent infringement claim on the basis of laches—the claim was untimely—and the Federal Circuit affirmed en banc. But the U.S. Supreme Court reversed. In Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. --- (2013), the Supreme Court had held that laches cannot preclude a damages claim incurred within the Copyright Act’s three-year limitations period. Relying on Petrella’s foundation in the separation-of-powers doctrine, the Court held that laches likewise cannot preclude a damages claim that is brought within the six-year limitations period of the Patent Act, 35 U.S.C. § 286.
According to the Court, the limitations period in § 286 reflects Congress’ decision that timeliness is best judged by hard and fast rules rather than the case-specific judicial determination required by the doctrine of laches. Laches developed as a gap-filling equitable doctrine for courts to apply when the legislature failed to provide a fixed time limitation. Thus, applying laches within a limitations period would override Congress’ authority in excess of the judiciary’s power.
The Court recognized that the Copyright Act and the Patent Act’s limitations provisions are phrased differently but found that the differences do not undermine Petrella’s underlying rationale. That the Patent Act listed “noninfringement, absence of liability for infringement or unenforceability” as defenses in patent-infringement actions did not codify laches as a defense because it would be “exceedingly unusual” for Congress to apply both a statute of limitations and a laches defense to damages claims.
Justice Alito delivered the opinion of the Court, in which Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, Sotomayor, and Kagan joined. Justice Breyer filed a dissenting opinion.
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