The Yale Law Journal

Supreme Court Laches on to Volume 125 Article

R. Henry Weaver
28 Mar 2017

On March 21, the Supreme Court held that the equitable doctrine of laches cannot further tighten the six-year statute of limitations for patent infringement damages. SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., __ S. Ct. __, 2017 WL 1050978 (2017). Justice Alito’s majority opinion relied in part on an analysis of the history of patent enforcement in suits at equity. The Justice turned for that history to Christopher Beauchamp’s 2016 Article, The First Patent Litigation Explosion, published in Volume 125. See 125 Yale L.J. 848 (2016).

SCA Hygiene Products followed on a case from three Terms ago, Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), in which the Court held that laches cannot bar a claim for damages under the Copyright Act filed within the three-year statute of limitations. In the patent context, the Courts of Appeals had long allowed defendants to assert a laches defense in addition to the six-year statute of limitations. See, e.g., A.C. Aukerman Co. v. R.L. Chaides Construction Co., 960 F.2d 1020 (Fed. Cir. 1992). Justice Breyer, in dissent, pointed to a “virtually unbroken chain [of decisions] from the late 19th century through the Patent Act’s enactment in 1952.” He argued that Congress in 1952 had meant to codify that common law tradition. SCA Hygiene Prods., 2017 WL 1050978, at *14 (Breyer, J., dissenting).

The majority opinion rejected this implied-ratification argument. Citing Beauchamp’s Article, the Court observed that before 1938 patent litigation proceeded along two separate tracks: suits at law and suits at equity. Id. at *10 (citing Beauchamp, supra, at 913-14). The majority held that the use of laches in suits at equity before 1938 had little relevance to our post-merger world. Id.

The Court thus struck a blow against patent exceptionalism. As Beauchamp himself observed, “patent law is riddled with equitable approaches to judicial reasoning and lawmaking . . . [including] explicitly equity-based doctrines as patent misuse, inequitable conduct, and laches.” Beauchamp, supra, at 913 (emphasis added). In hewing to the precedent of Petrella, the Supreme Court eliminated one lingering vestige of equity in patent law.