Supreme Court Eliminates Laches Defense To Patent Damages

In a 7-1 decision, the Supreme Court held that the equitable doctrine of laches cannot be used to bar damages for patent infringement that occurred within the 6-year "look-back" period prescribed by 35 U.S.C. § 286. SCA Hygiene Prods. v. First Quality Baby Prods., ___ U.S. ___ (Mar. 21, 2017). The Court's decision closely followed the reasoning of its earlier decision in Petrella v. Metro Goldwyn Mayer, Inc., 134 S.Ct. 1962 (2014), in which the Court disallowed laches during the 3-year damages period prescribed by the Copyright Act's statute of limitations. In SCA, the Court concluded that Section 286 of the Patent Code "represents a judgment by Congress that a patentee may recover damages for any infringement committed within six years of the filing of the claim," and thus held that applying laches during that period would go "beyond the Judiciary's power."

For plaintiffs, the ruling provides an opportunity to allow infringing activity to mount and reach significant levels before suing, even if that takes years. For defendants in patent litigation, the practical effect of the decision is tempered by the fact that the defense of equitable estoppel, which can turn on similar facts, remains intact.

Neither Petrella nor SCA contains any holding with respect to the applicability of laches in trademark infringement and other Lanham Act claims. Petrella did note, however, that the Lanham Act contains no statute of limitations, and "expressly provides for defensive use of 'equitable principles, including laches,'" suggesting that the doctrine will continue to play a role in those cases.