Amicus briefing recently completed in a closely watched patent case currently on appeal to the Supreme Court, where the high court will decide whether the equitable doctrine of laches is available to bar the recovery of damages within the six year statutorily prescribed damages limitation period for patent infringement lawsuits. SCA Hygiene Products v. First Quality Baby Products, 807 F.3d 1311 (Fed. Cir. 2015). Petitioner SCA appealed the en banc decision of the Federal Circuit rejecting SCA’s argument that the Supreme Court’s rationale in its decision in Petrella v. Metro-Goldwyn-Mayer, 1354 S.Ct. 1962 (2014), which held that laches could not bar damages for copyright infringement during the damages limitation period, should also apply to patent infringement. The Federal Circuit held that Petrella was not controlling in the patent context, and reaffirmed its prior ruling in A. C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) that laches could prevent the recovery of damages during the statutorily prescribed damages limitation period.
Only two of the eight amici (IPO Association and IP Law Association of Chicago) took the position that Petrella’s rationale did not apply to patent infringement. They argued that patent law was different from copyright law in that the patent statute did not have a “statute of limitations” like the copyright statute. The other six amici (ABA, AIPLA, Alliance of Inventor Groups, Professors in Support of SCA, Art+Com and Medinol) submitted briefs supporting the application of Petrella to patent infringement cases.
The ABA and AIPLA strongly urged that Petrella’s holding applied equally to patent infringement cases, since both the patent statute and the copyright statute had similar damages limitations periods. They also emphasized the policy considerations that allowing laches to bar patent damages would encourage the early filing of lawsuits and discourage attempts to settle. The ABA also argued that the Supreme Court should hold that its Petrella ruling that laches could in extraordinary circumstances bar injunctive relief for copyright infringement should apply as well to patent infringement cases.
The arguments in favor of applying Petrella to patent infringement cases are strong and likely to resonate with the Supreme Court. Of note, the Federal Circuit agreed with SCA that the patent statute’s damages limitations period was similar to the copyright statute of limitations, despite being called a “statute of limitations” in the copyright statute and a “limitation on damages” period in the patent statute. The Federal Circuit instead relied on the proposition that by including “unenforceability” as a possible defense to patent infringement in the patent statute Congress had “codified the laches defense”, making Petrella inapposite. As noted by the AIPLA, however, the Federal Circuit’s reliance was based on ambiguous post-enactment comments on the 1952 Patent Act by P. J. Federico, who although a principal draftsman of the Act was not a member of Congress, which is a questionable basis for distinguishing the patent and copyright statutes on this point.
In this commentator’s view, it is likely that the Supreme Court will once again reverse the Federal Circuit, a result that may well be motivated in part by its belief that the Federal Circuit has treated patent issues in ways inconsistent with generally applicable principles of federal law.