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

26 Fla. L. Weekly Fed. S 483, 137 S. Ct. 954, 197 L. Ed. 2d 292, 580 U.S. 328, 2017 U.S. LEXIS 2023, 121 U.S.P.Q. 2d (BNA) 1873, 85 U.S.L.W. 4121
CourtSupreme Court of the United States
DecidedMarch 21, 2017
Docket15–927.
StatusPublished
Cited by188 cases

This text of 26 Fla. L. Weekly Fed. S 483 (SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC) is published on Counsel Stack Legal Research, covering Supreme Court of the United States primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 26 Fla. L. Weekly Fed. S 483, 137 S. Ct. 954, 197 L. Ed. 2d 292, 580 U.S. 328, 2017 U.S. LEXIS 2023, 121 U.S.P.Q. 2d (BNA) 1873, 85 U.S.L.W. 4121 (U.S. 2017).

Opinions

*959Justice ALITO delivered the opinion of the Court.

We return to a subject that we addressed in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ----, 134 S.Ct. 1962, 188 L.Ed.2d 979 (2014) : the relationship between the equitable defense of laches and claims for damages that are brought within the time allowed by a statute of limitations. In Petrella, we held that laches cannot preclude a claim for damages incurred within the Copyright Act's 3-year limitations period. Id ., at ----, 134 S.Ct., at 1967. "[L]aches," we explained, "cannot be invoked to bar legal relief" "[i]n the face of a statute of limitations enacted by Congress." Id ., at ----, 134 S.Ct., at 1974. The question in this case is whether Petrella 's reasoning applies to a similar provision of the Patent Act, 35 U.S.C. § 286. We hold that it does.

I

Petitioners SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. (collectively, SCA), manufacture and sell adult incontinence products. In October 2003, SCA sent a letter to respondents (collectively, First Quality), alleging that First Quality was making and selling products that infringed SCA's rights under U.S. Patent No. 6,375,646 B1 ('646 patent). App. 54a. First Quality responded that one of its patents- U.S. Patent No. 5,415,649 (Watanabe patent) -antedated the '646 patent and revealed "the same diaper construction." Id., at 53a. As a result, First Quality maintained, the '646 patent was invalid and could not support an infringement claim. Ibid. SCA sent First Quality no further correspondence regarding the '646 patent, and First Quality proceeded to develop and market its products.

In July 2004, without notifying First Quality, SCA asked the Patent and Trademark Office (PTO) to initiate a reexamination proceeding to determine whether the '646 patent was valid in light of the Watanabe patent. Id ., at 49a-51a. Three years later, in March 2007, the PTO issued a certificate confirming the validity of the '646 patent.

In August 2010, SCA filed this patent infringement action against First Quality. First Quality moved for summary judgment based on laches and equitable estoppel, and the District Court granted that motion on both grounds. 2013 WL 3776173, *12 (W.D.Ky., July 16, 2013).

SCA appealed to the Federal Circuit, but before the Federal Circuit panel issued its decision, this Court decided Petrella. The panel nevertheless held, based on a Federal Circuit precedent, A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (1992) (en banc), that SCA's claims were barred by laches.1

The Federal Circuit then reheard the case en banc in order to reconsider Aukerman in light of Petrella . But in a 6-to-5 decision, the en banc court reaffirmed Aukerman 's holding that laches can be asserted to defeat a claim for damages incurred within the 6-year period set out in the Patent Act. As it had in Aukerman, the en banc court concluded that Congress, in enacting the Patent Act, had "codified a laches defense" that "barred recovery of legal remedies." 807 F.3d 1311, 1323-1329 (2015). Judge Hughes, joined by four other judges, dissented.2 Id., at 1337-1342 *960(opinion concurring in part and dissenting in part). We granted certiorari. 578 U.S. ----, 136 S.Ct. 1824, 194 L.Ed.2d 829 (2016).

II

Laches is "a defense developed by courts of equity" to protect defendants against "unreasonable, prejudicial delay in commencing suit." Petrella, supra, at ----, ----, 134 S.Ct., at 1967, 1973. See also 1 D. Dobbs, Law of Remedies § 2.3(5), p. 89 (2d ed. 1993) (Dobbs) ("The equitable doctrine of laches bars the plaintiff whose unreasonable delay in prosecuting a claim or protecting a right has worked a prejudice to the defendant"). Before the separate systems of law and equity were merged in 1938, the ordinary rule was that laches was available only in equity courts.3 See County of Oneida v. Oneida Indian Nation of N. Y., 470 U.S. 226, 244, n. 16, 105 S.Ct. 1245, 84 L.Ed.2d 169 (1985). This case turns on the application of the defense to a claim for damages, a quintessential legal remedy. We discussed this subject at length in Petrella .

Petrella arose out of a copyright dispute relating to the film Raging Bull. 572 U.S., at ----, 134 S.Ct., at 1971.

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Bluebook (online)
26 Fla. L. Weekly Fed. S 483, 137 S. Ct. 954, 197 L. Ed. 2d 292, 580 U.S. 328, 2017 U.S. LEXIS 2023, 121 U.S.P.Q. 2d (BNA) 1873, 85 U.S.L.W. 4121, Counsel Stack Legal Research, https://law.counselstack.com/opinion/sca-hygiene-products-aktiebolag-v-first-quality-baby-products-llc-scotus-2017.