Background
SCA Hygiene Products, a Swedish company, owned patents covering absorbent hygienic products (incontinence products and adult diapers). In 2003, SCA sent a cease-and-desist letter to First Quality Baby Products asserting infringement. First Quality responded that its products did not infringe. Despite that dispute, SCA waited until 2010 — seven years later — to file suit. SCA sought damages going back to when First Quality began its allegedly infringing activities.
First Quality raised laches as a defense, arguing that SCA’s six-year-plus delay before filing suit was unreasonable and had prejudiced First Quality, which had invested heavily in expanding its manufacturing capacity during the years SCA sat on its claims. The district court agreed and held laches barred SCA’s pre-suit damages. The case reached the en banc Federal Circuit amid a doctrinal conflict: the Supreme Court had recently held in Petrella v. MGM (2014) that laches cannot bar copyright damages claims that are timely under the statute of limitations — suggesting the same might apply to patent cases.
The Court’s Holding
Chief Judge Prost, writing for a 6-5 majority, held that laches remains available as a defense to pre-suit patent damages, distinguishing patent law from the copyright holding in Petrella. The court’s reasoning rested on statutory grounds: Congress had codified laches as a patent defense in 35 U.S.C. § 282(b)(1), which lists “unenforceability” as a defense to patent infringement. By 1952 — when the statute was enacted — it was well-established that laches could bar legal relief in patent cases. Congress, the majority held, preserved that defense by codifying “unenforceability” as a defense, and Petrella’s analysis of the Copyright Act’s text and structure did not override that statutory codification in patent law.
The five-judge dissent argued forcefully that the majority’s reading was inconsistent with both Petrella’s rationale and the general principle that equitable defenses should not override a plaintiff’s right to damages within the applicable statute of limitations period — regardless of whether the claim is a patent or copyright.
Key Takeaways
- Laches can bar pre-suit patent damages even when the suit is filed within the six-year damages window under 35 U.S.C. § 286, if the plaintiff’s delay was unreasonable and prejudiced the defendant.
- The Federal Circuit distinguished patent law from copyright law on laches, finding a statutory basis for the patent laches defense that has no counterpart in the Copyright Act.
- The decision ultimately did not survive: the Supreme Court reversed in SCA Hygiene Products v. First Quality Baby Products (2017), holding that Petrella’s logic applies to patent cases and that laches cannot bar pre-suit legal damages.
- The case illustrates the risks of sitting on patent rights without action — even if laches as a complete damages bar was ultimately rejected by the Supreme Court, delay still has evidentiary and equitable consequences.
Why It Matters
SCA Hygiene Products v. First Quality Baby Products generated significant attention because it forced the question of whether the Supreme Court’s copyright-law laches ruling in Petrella would reshape patent law as well. The Federal Circuit’s answer was no — at least for a time. But the Supreme Court’s 2017 reversal confirmed that patent and copyright law are increasingly harmonized on the laches question, with a plaintiffs-friendly rule: timely suits within the damages window generally cannot be barred by laches, regardless of delay.
For patent practitioners, the case is a reminder that patents have a six-year lookback for damages (§ 286), and that sitting on a known infringement claim for years — while perhaps not always barring the entire damages award — carries strategic and equitable risks including a shrinking damages window, prejudice arguments, and potential inequitable conduct implications.