SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

2017-03-21

Headline: Patent damage claims allowed despite delay: Court blocks laches defense for damages within six-year statute, enabling inventors to recover recent losses while narrowing delay-based defenses.

Holding: Laches cannot be used to bar a patent damages claim when the infringement occurred within the six-year damages period set by 35 U.S.C. § 286, applying Petrella's reasoning to the Patent Act.

Real World Impact:

Allows patent owners to recover damages for infringement within the six-year look-back period.
Prevents accused infringers from using delay alone to defeat recent damages claims.
Keeps equitable estoppel and other defenses available for factual disputes.

Topics: patent lawsuits, damages for patent infringement, delay defense, intellectual property

Summary

Background

A company that makes adult incontinence products said a rival manufacturer copied its patented diaper design. The first company sent a warning letter in 2003 and quietly asked the Patent Office to reexamine the patent in 2004. The Patent Office confirmed the patent in 2007, and the patent owner sued in 2010. The rival argued that the owner waited too long and that the equitable defense called laches should bar the damages claim; lower courts disagreed and the Federal Circuit split, so the Supreme Court took the case.

Reasoning

The Court addressed whether its earlier copyright decision in Petrella applies to the Patent Act’s six-year damages provision, 35 U.S.C. § 286. The majority said yes: when Congress sets a time limit for recovering past damages, judges should not use laches — an equity doctrine that blocks claims for unfair delay — to override that congressional judgment. The Court examined arguments about a separate patent provision that mentions “unenforceability,” reviewed historical cases, and concluded Congress had not clearly preserved a laches rule that defeats damages within § 286.

Real world impact

Patent owners can seek damages for infringement that occurred within the six years before they filed suit without being blocked by laches. Accused infringers cannot rely on delay alone to defeat such damages claims, though other defenses remain. The Court left open equitable defenses like estoppel and did not resolve questions about injunctive relief.

Dissents or concurrances

Justice Breyer dissented, arguing long-standing case law and Congress’s choices meant laches should fill a “gap,” warning of unfair surprise, large investments, and the lock-in problem if laches is barred.