The Federal Circuit ruled en banc that, even in the wake up the US Supreme Court’s “Raging Bull” decision, the doctrine of laches can still be used by defendants in patent infringement cases to bar the recovery of pre-suit damages when such cases have been long delayed.

Raging Bull

In the “Raging Bull” decision (Petrella v. Metro-Goldwyn-Mayer Inc. et al.) the Supreme Court ruled that laches, which bars suits brought after unreasonable delays, did not bar copyright infringement claims brought within the Copyright Act’s rolling three-year statute of limitations.

Under the Copyright Act, the limitation period “resets” with each new act of infringement.

Adult Diapers

SCA Hygiene Products AB sent a letter in 2003 alleging that First Quality Baby Products LLC’s Prevail® All Nites™ product infringed an SCA patent.

First Quality responded with a letter contending that the patent was invalid.

In 2010, SCA filed a patent infringement complaint against First Quality. According to the court, “service of the complaint was the first time in nearly seven years that SCA had communicated with First Quality regarding the… patent.”

The court noted that

there is a recurring risk that a stale patent claim will inflict significant hardship on a defendant who has lost the meaningful ability to choose between alternative technologies and whose investment in research, development, and further innovation may be jeopardized.

The court thus concluded that laches remains a defense to legal relief in patent infringement suits after Petrella.

The case is SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.

Takeaway

We have seen an upswing in classical non-practicing entities (“NPEs,” referred to by some people as “patent trolls”) bringing suit on old — and in some cases expired — patents in the hopes that the laches doctrine no longer exists for patents.  This decision is a major setback for such entities.  However, this may not be the last word since it was decided by one vote.  The issue may go to the Supreme Court.

About Us

Leech Tishman’s Intellectual Property Group is based in Pasadena, California with a team of highly-regarded legal professionals with prosecution and litigation expertise in the fields of patent, trademark, copyright, and trade secrets.

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Photo Attribution: “Raging Bull station” by Christophe95 – Own work. Licensed under CC BY-SA 3.0 via Wikimedia Commons.

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