Background
SCA Hygiene Products held a patent on adult incontinence products. In 2003, SCA notified First Quality Baby Products that SCA believed First Quality was infringing its patent. After back-and-forth communications, SCA sought reexamination of its own patent to strengthen it, and then in 2010 — seven years after the initial notice — filed suit for infringement. First Quality argued that SCA’s delay in suing constituted laches, barring recovery for damages even within the six-year statute of limitations period under 35 U.S.C. § 286.
The Federal Circuit’s long-standing rule, derived from the now-invalidated Supreme Court precedent of Aukerman Co. v. R.L. Chaides Construction Co. (1992), held that laches could bar damages claims for infringement that occurred within the six-year period before filing, when the delay was unreasonable and caused prejudice to the defendant. The district court and Federal Circuit applied this rule to bar SCA’s claims. SCA sought certiorari, relying on the Supreme Court’s 2014 Petrella v. Metro-Goldwyn-Mayer decision, which had held that laches could not bar copyright infringement claims filed within the statute of limitations.
The Court’s Holding
The Supreme Court reversed, extending Petrella’s reasoning to patent law. The Court held that Congress’s adoption of a specific six-year statute of limitations for patent damages (§ 286) displaced laches as a defense to damages for infringement occurring within that limitations period. When Congress sets a limitations period, courts should not use the equitable doctrine of laches to shorten that period — laches is a judge-made doctrine designed to fill gaps where there is no limitations period, not to override explicit legislative choices about how long plaintiffs have to sue.
The Court acknowledged that laches might still be available as an equitable defense to prospective relief (injunctions) in patent cases — where delay in seeking an injunction can be relevant to whether the court should grant equitable relief — but it cannot bar damages claims for infringement within § 286’s six-year window.
Key Takeaways
- Laches cannot bar patent infringement damages claims for infringement occurring within the six-year statute of limitations under § 286 — the legislative limitations period preempts the equitable laches defense for damages.
- Patent holders have six years to sue for patent infringement damages from the date of each infringing act — they do not lose that right simply by waiting to sue, even if they knew of the infringement early on.
- Laches may still be relevant to equitable relief (injunctions) in patent cases — unreasonable delay in seeking an injunction can affect whether equitable relief is appropriate under the traditional four-factor test.
- The decision followed Petrella (copyright, 2014) in confirming that equitable doctrines cannot be used to shorten explicit statutory limitations periods Congress has established — an important principle across IP and other areas of law.
Why It Matters
SCA Hygiene v. First Quality resolved one of the most practically significant procedural issues in patent litigation: whether a patent holder who waited years before suing could be barred from recovering pre-suit damages by laches. Under the prior Federal Circuit rule, patent defendants had used laches as a shield against early-year damages claims in cases where the patent holder delayed suit. The Supreme Court’s ruling eliminated that shield for damages claims within the six-year limitations period.
For patent holders — particularly inventors, universities, and companies with limited litigation resources who may not be able to sue immediately upon learning of infringement — the ruling is highly beneficial: it confirms that strategic patience in preparing a case does not forfeit the right to recover damages within the statutory period. For accused infringers, it removes the incentive to argue laches as a defense to damages claims, though the laches doctrine survives for injunction practice. The case also has broader significance for the question of when Congress’s explicit statutory frameworks displace judge-made equitable doctrines across intellectual property law.