United States: "Raging Bull" And The Patent Act: Laches Still Available In Patent Cases

SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.

The U.S. Court of Appeals for the Federal Circuit convened an en banc panel to examine the Supreme Court's "Raging Bull" decision in Petrella v. Metro-Goldwyn-Mayer, Inc. ( IP Update, Vol. 17, No. 5) in the context of deciding whether laches remains a defense in a patent infringement suit. After an in-depth analysis, the Court concluded that Congress intended for laches to apply in patent matters when it codified laches under 35 USC §282(b)(1) of the Patent Act. However, the Court made a point to note that the laches defense must be harmonized with Petrella and other Supreme Court precedent. The Court clarified that equitable principles apply whenever an accused infringer seeks to use laches as a bar to injunctions or ongoing relief, while laches will only foreclose an ongoing royalty in extraordinary circumstances. SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al., Case No. 13-1564 (Fed. Cir., September 18, 2015) (en banc) (Hughes, J., concurring-in-part and dissenting-in-part).

In 2003, SCA Hygiene Products (SCA) sent a letter to First Quality Baby Products (First Quality), a competitor in the adult incontinence market, alleging that First Quality's Prevail® All Nites" product infringed a patent held by SCA pertaining to certain aspects of adult diapers. First Quality responded to the letter stating that it had located a prior art patent describing the same diaper construction, which invalidated the SCA patent and thereby precluded infringement by First Quality.

SCA did not respond to First Quality's reply. Instead, in 2004, SCA requested re-examination of its patent in view of the prior art patent cited to it by First Quality. SCA did not notify First Quality of the re-examination proceedings, but the company presumed that First Quality was following the proceedings due to their public nature. In the meantime, First Quality believed that SCA had dropped its infringement claims, and it continued to invest in and expand its adult incontinence products line, including multimillion dollar acquisitions of competitors' businesses.

In 2007, the USPTO confirmed the patentability of SCA's patent. In August 2010, more than three years after the conclusion of the re-examination and over seven years since SCA last communicated with First Quality regarding the its patent, SCA filed a complaint for patent infringement. The district court granted First Quality's motion for summary judgment on the issues of laches and equitable estoppel. SCA appealed, arguing that the Petrella decision abolished laches in patent law. In September 2014, a panel of the Federal Circuit rejected SCA's Petrella arguments and affirmed the district court's opinion on laches, but reversed as to equitable estoppel. (See IP Update, Vol. 17, No. 5.) SCA filed a petition for rehearing en banc, and the Federal Circuit granted the petition with respect to two questions:

  1. In light of Petrella, which addressed laches under the Copyright Act, should the Federal Circuit's 1992 decision in Aukerman be overruled so that the defense of laches is not applicable to a claim of damages on patent infringement occurring within the six-year damages limitations period established by the Patent Act?
  2. Because there is no statute of limitations for claims of patent infringement, should the defense of laches be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief?

Viability of Laches After Petrella

As for the first question, after examining history of the laches defenses by the courts, congressional intent, and precedential decisions in this area, the Federal Circuit reconciled Aukerman with Petrella, noting that Petrella was fundamentally concerned with the separation of powers and therefore eliminated judicially created laches because Congress had already spoke on the timeliness of infringement claims in the Copyright Act. However, the Court found a different statutory scheme in the patent law because 35 U.S.C. §286 provides for time limitations on recovery of legal remedies within six years of the filing date of the infringement action, while 35 U.S.C. §282 provides for laches as a defense to legal relief. Therefore, the Court reasoned that the same separation of powers concern that the Supreme Court discussed in Petrella is not present in matters arising under the patent laws.

The Federal Circuit also distinguished copyright and patent law on the grounds that copyright infringement requires evidence of copying, while intent (or ignorance of a patent) is not a defense to patent infringement. Accordingly, the Court determined that it makes sense to limit damages by applying laches in a patent case where an infringer may not know he is infringing. On the other hand, a potential defendant in a copyright infringement action is typically aware of the risk that he or she is infringing and can usually estimate his or her exposure and liability. Therefore, the Court determined that laches remains a viable defense to legal relief in actions for patent infringement.

The Application of Laches to Ongoing Relief

As for the extent to which laches can limit recovery of ongoing relief, the Federal Circuit reexamined Aukerman in light of Petrella, as well as the Supreme Court's eBay decision ( IP Update, Vol. 9, No. 5). The Court, noting the four-factor eBay test for injunctions in patent cases, stated that the district court should consider all material facts, including those pertaining to laches, when deciding whether to issue an injunction, with the understanding that laches could foreclose injunctive relief since patentees are not automatically entitled to an injunction.

Conversely, the Federal Circuit explained that equity normally dictates that courts award ongoing royalties, despite laches. Citing Aukerman, Petrella and the Supreme Court's 1888 holding in Menendez, the Court warned that it must recognize the distinction between estoppel and laches, as estoppel bars an entire suit, while laches does not. In this regard, the Court concluded that absent extraordinary circumstances, laches does not preclude an ongoing royalty and reinstated the earlier panel's reversal of the district court's grant of summary judgment on equitable estoppel and remanded to the district court.

"Raging Bull" And The Patent Act: Laches Still Available In Patent Cases

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.