United States: Federal Circuit Confirms The Laches Doctrine As A Viable Defense In Patent Infringement Actions

In an earlier article, we discussed whether the Supreme Court's recent decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014) left intact the doctrine of laches in patent infringement actions.1 The Federal Circuit recently reaffirmed its longstanding application of laches as a defense to patent infringement claims.

On September 18, 2015, in SCA Hygiene Products. v. First Quality Baby Products, the Federal Circuit held in a closely divided 6-5 decision that laches (an unreasonable delay in pursuing a claim to the prejudice of the other party) will remain a defense in patent infringement actions to bar pre-suit damages. Sitting en banc, the Court addressed whether the recent Supreme Court decision in Petrella—that laches cannot bar relief in copyright infringement suits when the claim is brought within the statute of limitations—overruled the Federal Circuit's prior conclusion in A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc) that the laches doctrine applies in patent law.

This split decision highlighted the tension between the Section 286 damages limitation and the Section 282 laches defense. The majority first concluded that, under Petrella, the six-year damages limitation is functionally equivalent to a statute of limitations. The majority, however, distinguished patent law from copyright law. In light of Congress's silence when codifying the Patent Act in 1952, the majority reasoned that Congress intended to codify the common law that recognized the laches doctrine as part of Section 282. While the majority characterized its opinion as "neither novel, nor a direct response to Petrella," it declined to address this tension and instead reasoned that it lacked the authority to change the scope and applicability of these statutes as established by Congress.

Whereas the entire panel concluded that laches may bar equitable remedies such as injunctive relief, five of the eleven judges dissented from the majority's holding that Congress codified a laches defense in the Patent Act. The dissent criticized the majority's interpretation of Congress's silence, stating instead that the case law does not clearly establish a common law doctrine to support laches' applicability in patent law.

In light of the sharp dissent, it is likely that a petition for Supreme Court review will be filed in the next few months. The continued viability of the laches doctrine, however, currently benefits accused infringers who have invested significantly into the development and commercialization of the accused technology, particularly as a defense against abusive patent litigation by non-practicing entities. In various industries such as high-technology, the laches doctrine serves to deter patent holders who are aware of the potentially infringing product from waiting until substantial innovation has occurred and significant damages have accrued to file suit.

The Majority Opinion

Similarly to its earlier panel opinion in this case, the majority—consisting of Chief Judge Prost and Judges Newman, Lourie, Dyk, O'Malley, and Reyna—first examined 35 U.S.C. § 286, which bars recovery for "any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action." Whereas the parties disputed whether this statute functions as a damages limitations or a statute of limitations, the majority clearly concluded that this is a damages limitation. Under Petrella's analysis of whether Congress has set forth a time period for recovery of damages, the majority concluded that Section 286's six-year limit for damages was functionally equivalent to a statute of limitations.

To differentiate patent law from copyright law, however, the majority then examined Section 282(b), which governs available defenses to claims of patent infringement. Specifically, it highlighted the "catch-all" provision of Section 282(b)(4), which allows defendants to assert "any other fact or act made a defense by this title." Relying upon the statutory language, legislative history, and expert commentary from P.J. Federico, the Court concluded that Congress had intended Section 282 to apply broadly and include laches as a defense.

Turning to the key issue of whether Section 282's laches defense bars legal and equitable remedies or precludes only equitable relief, the majority concluded that laches bars recovery of both. Section 282's statutory language, its legislative history, and contemporary commentary are all silent on this topic. Therefore, the majority's analysis focused upon the scope of common law regarding laches before Congress codified the Patent Act of 1952 and whether Section 282 had preserved this common law. The majority highlighted that the appellate courts had consistently recognized the laches defense against legal relief before 1952. Moreover, when two appellate courts had considered arguments similar to those in the present case—that laches bars only equitable relief, both had held that laches may preclude legal relief as well.2 Concluding that the pre-1952 case law provided strong support, the majority then reasoned that Section 282's laches defense adopted its common law scope and meaning when Congress remained silent on its substance.

To support its conclusion that Petrella did not overrule Aukerman's holding, the majority emphasized a significant difference between copyright and patent law with regard to intent. Whereas copyright law considers whether the defendant had access to the work and allows independent creation as a defense to copyright infringement, patent law does not similarly consider an infringer's "innocence." The majority thereby echoed concern from various amici that the absence of independent invention as a defense to patent infringement creates a unique risk for innovation. Without the laches defense, those companies who devote significant resources to develop and commercialize products lack a safeguard against patent holders who delay assertion of infringement claims until significant potential damages accrue.

The majority found consensus with the dissenting judges in its reexamination of Aukerman's holding that laches cannot bar prospective equitable relief. Rejecting Aukerman's bright-line rule that laches may bar only pre-suit relief, the Court concluded that a patentee's delay in asserting its rights may be considered as a factor for awarding a permanent injunction.3 Here, it distinguished the patentee's right to its invention from its right to collect damages accrued during its delay. With regard to royalties, the Court used this opportunity to emphasize the difference between laches and estoppel. As it explained, estoppel may bar all relief, and its application depends on the presence of "misleading and consequent loss." In contrast, laches focuses on the claims' timeliness. Accordingly, absent extraordinary circumstances, district courts may award on-going royalties even when it finds that the patentee has delayed in asserting its rights.

The Dissent

In an opinion joined by Judges Moore, Wallach, Taranto, and Chen, Judge Hughes dissented-in-part from the majority and concluded that laches is not a defense to legal remedy in patent law, particularly in view of Petrella's reiteration of the Supreme Court's longstanding principle that the statute of limitations makes unavailable the laches doctrine.

The dissent argued that the majority had ignored Petrella and placed insufficient emphasis on the statute of limitations of Section 286. Agreeing with the majority that Section 286 substantively functions as a statute of limitations, Judge Hughes reasoned that Congress had thereby enacted a statute of limitations that—under Petrella—makes the laches defense unavailable. The dissent took issue with the majority's analysis that Section 282 codified pre-1952 case law that laches may preclude damages recovery. Instead, it reasoned that Congress's silence on the issue—particularly its lack of any mention to case law or specific equitable defenses in the statute or its legislative history—could only invoke the presumption that it sought to codify a common law principle when that principle was "sufficiently well established." Here, the dissent concluded that the case law did not clearly hold that the laches doctrine could bar legal relief. Specifically, it highlighted several Supreme Court cases decided prior to 1952, which held that laches cannot bar legal relief within a statute of limitations period. In contrast to the majority's reliance upon pre-1952 appellate court decisions in patent cases that made available the laches doctrine, Judge Hughes noted those courts' discretionary ability as courts of equity to dismiss patent infringement claims, particularly because the patentee still could seek damages in a court of law. Therefore, it concluded that—if Congress's silence codified the laches doctrine in patent law—its scope extended to bar equitable relief only, and not legal relief. Emphasizing again its broad interpretation of Petrella to hold that laches cannot bar legal relief when a statute of limitations exists, the dissent cautioned against reliance upon patent-specific policy concerns and case law.


1. Robert E. Colletti and Janice Ye, Laches Remains a Viable Defense to Patent Infringement Actions, available at http://www.flhlaw.com/insights/Detail.aspx?news=9d878146-3479-4a74-beb5-e4ba8d591733&.

2. Both appellate cases were decided before the 1938 merger of law and equity in the federal courts. In Ford v. Huff, 296 F. 652 (5th Cir. 1924), the Fifth Circuit reasoned that, if a defendant could assert laches and equitable estoppel defenses to enjoin infringement claims in a bill in equity, he similarly should be able to plead those defenses in a legal suit. Later, in Banker v. Ford Motor Co., 69 F.2d 665 (3d Cir. 1934), the Third Circuit held that laches may apply to bar both legal and equitable relief. The Third Circuit applied similar reasoning to Ford when the defendant had asserted only laches but not equitable estoppel.

3. The majority concluded that the court has discretion under the framework of eBay Inc. v. MercExchange, L.L.C. to award an injunction when it finds infringement. Id. at 37-38. It reasoned that laches fits within the "balance of the hardships" factor and therefore may foreclose that injunctive relief.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.