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Posted on: Oct 2, 2015
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CAFC Upholds the Doctrine of Laches in Patent Cases

By Marcelo Copat, Faegre Baker Daniels LLP

Last year, the U.S. Supreme Court decided Petrella v. Metro-Goldwyn-Mayer (the "Raging Bull" decision) and found that the doctrine of laches is unavailable in copyright lawsuits, allowing the plaintiff to proceed with her claim for conduct falling within the Copyright Act's three-year statute of limitations, at 17 U.S.C. §507(b), even though the plaintiff renewed the copyright at issue 18 years earlier. Many questioned whether the Raging Bull decision abrogates the doctrine of latches in patent cases.

On June 19, 2015, the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) heard oral arguments in SCA Hygiene Products v. First Quality Baby Products, a dispute over whether the Raging Bull decision applies in patent cases. The latches defense in SCA Hygiene Products arose from conduct that occurred between 2003 and 2010. SCA sent a letter to First Quality alleging infringement of U.S. Pat. No. 6,375,646 on October 31, 2003. First Quality responded in writing stating that the patent was invalid. SCA then requested reexamination of the ‘646 patent. The patentability of all the claims was confirmed by the USPTO on March 27, 2007. SCA filed an infringement complaint on August 2, 2010, seven years after sending the letter, without communicating with First Quality during that time.

A panel of the Federal Circuit on September 17, 2014, affirmed a lower court’s decision that the doctrine of latches barred recovery, in spite of the Raging Bull decision. The panel reasoned that First Quality was prejudiced by SCA’s more than three year delay since the conclusion of reexamination because it made significant capital investments in that time. Relying heavily on its 1992 decision in A.C. Aukerman Co. v. R.L.Chaides Constr. Co., 960 F.2d 1020, a split en banc Federal Circuit affirmed the panel’s decision, on September 18, 2015, holding that the doctrine of laches is available to bar the recovery of pre-suit damages and reasoning that the latches defense is codified in 35 U.S.C. 282. The Federal Circuit also reaffirmed that, absent extraordinary circumstances, laches does not preclude an ongoing royalty.

This post was written by Marcelo Copat of Faegre Baker Daniels LLP. If you would like to submit content or write an article for the Intellectual Property Section, please email Rachel Beachy at

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