The Supreme Court is going to decide yet another patent case. On May 2, 2016, the Supreme Court granted certiorari in SCA Hygiene v. First Quality Baby Products, No. 15-927, on the question of “whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.” Merits briefing will take place over the summer with a likely fall 2016 hearing on the question.

For background, laches serves as an affirmative defense to a proceeding in which a plaintiff seeks equitable relief as opposed to monetary, judicial, or other forms of relief. In the patent litigation context, laches can serve as an affirmative defense to patent infringement if the court finds a patentee delayed bringing an infringement suit, notwithstanding the six year statute of limitations already in place. Like all laches defenses, the defendant must show that 1) the plaintiff unreasonably delayed in filing suit and 2) the defendant suffered material prejudice because of the delay.

In a relatively recent copyright infringement decision, Petrella, the Supreme Court indicated that laches should not be invoked to bar legal relief.  In Petrella, the Court ruled, in a six-to-three decision, that the doctrine of laches could not be used to shorten the three-year statute of limitations that exists for filing a copyright-infringement suit.

However, not long after Petrella was decided the Federal Circuit held en banc, in a six-to-five split decision, that the doctrine of laches should continue to apply to patent-infringement claims. In its decision the Federal Circuit declined to adopt the parallels between copyright and patent law. Rather, the Federal Circuit deemed patent law exceptional and held that laches was still a viable defense to infringement claims within the six-year limitations period set forth in 35 U.S.C.§286. See SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 767 F.3d 1339 (Fed. Cir. 2014).Specifically,the Federal Circuit noted that the doctrine of laches defense may still be used to shorten this six year timeframe if invoked by a defendant.

In SCA Hygiene, the Federal Circuit considered and distinguished Petrella. The opinion maintained that patent actions are unlike copyright actions in that Congress has codified the laches defense in 35§282(b)(1), which provides that noninfringement, absence of liability for infringement, and unenforceability are all defenses to infringement. The opinion added that related commentary and legislative history indicate that laches was to be included in these defenses. The highly divided en banc court therefore declined to apply Petrella.

The Petitioners for SCA Hygiene argued that the en banc Federal Circuit decision conflicts with the Supreme Court’s decision in Petrella and that the Federal Circuit’s presumptions in favor of laches are inconsistent with the Supreme Court’s equity jurisprudence. When the Supreme Court takes up the issue next term, it could do away with a popular defense in patent infringement cases. Under prevailing Federal Circuit precedent, a successful laches defense can bar all pre-suit damages. That makes laches a powerful shield against an infringement claim. If the Supreme Court holds that the rule from Petrella applies equally to the Patent Act, laches would likely be available to bar only claims for equitable relief, such as injunctions, and the defense would be eliminated as an affirmative defense to liability.