“Laches is a clement doctrine,” the Federal Circuit wrote more than 20 years ago.1 “It assures that old grievances will some day be laid to rest, that litigation will be decided on the basis of evidence that remains reasonably accessible and that those against whom claims are presented will not be unduly prejudiced by delay in asserting them.”2 The court conceded that laches inevitably leads to potential lapses in justice where “potentially meritorious demands” never receive their day in court, but resolves that other goals may sometimes be at play: “[T]here is justice too in an end to conflict and in the quiet of peace.”3 With this ornate backdrop, the court went on to endorse the laches doctrine as it applies to patent litigation delays in a 1992 case that still controls today.4 Courts still apply a presumption of laches against plaintiffs who delay filing patent suits for at least six years.5 Laches bars retrospective damages, which often severely limits or even completely severs the plaintiff’s damages.6 In 2015, however, the Federal Circuit may finally be poised to put the brakes on its decades-old support for laches in patent litigation in light of Petrella v. Metro-Goldwyn-Mayer, Inc., a recent case where the Supreme Court limited laches in the related context of copyright law.7
Legendary boxer Jake LaMotta worked with Frank Petrella, to produce a screenplay telling the story of LaMotta’s career.8 They registered the rights to the screenplay and eventually assigned them to Metro-Goldwyn-Mayer, Inc. (“MGM”) in 1978.9 MGM produced and marketed the successful film Raging Bull.10 Frank Petrella died the following year, leaving his daughter (“Petrella”) the right to renew the screenplay copyright for herself and to disregard the previous assignment to MGM.11 In 1991, Petrella exercised her renewal rights and became the sole owner of the screenplay’s copyright.12
Thereafter, Petrella informed MGM of her rights and, between 1998 and 2000, exchanged letters with MGM threatening legal action for any exploitation it made of Raging Bull.13 However, Petrella did not actually file suit until 2009, nine years after Petrella sent her final threat of legal action and after MGM had invested in marketing a new edition of Raging Bull.14
Because of Petrella’s delay, the district court granted, and the Ninth Circuit affirmed, summary judgment for MGM on the equitable doctrine of laches—Petrella had simply waited too long to sue.15 By a six-to-three majority, however, the Supreme Court reversed the laches-based dismissal and reinstated the case to be heard on its merits.16 Specifically, because “laches is a defense developed by courts of equity,” the Court rejected the Ninth Circuit’s application of laches to bar legal rather than merely equitable relief.17 Laches, the Court explained, is “essentially gap-filling, not legislation-overriding,” and thus it was error for the lower courts to account for Petrella’s delay by dismissing her case at the outset when Congress had already accounted for the delay in the statute.18 The Court allowed that Petrella’s delay might eventually be accounted for at the remedial stage, as injunctive relief and lost profits were assessed.19 But that would only occur after Petrella’s case was heard on the merits and if she managed to prevail.20 Regardless of the apparent strength or weakness of a plaintiff’s position, the law is the same: Claims for legal damages brought within the three-year period prescribed by Congress are entitled to their day in court.21
Applying Petrella to Patent Law
After the Supreme Court delivered this “knockout punch” to copyright laches,22the obvious follow up question becomes how deep into patent law will the decision resonate, and, specifically, what does Petrella mean for patentlitigation?23
Patent law and copyright law have many striking similarities when viewed through the lens of the Court’s reasoning in Petrella. For example, Congress has prescribed time limits in copyright law—a crucial factor in the Court’s analysis of how the equitable, “gap-filling” laches doctrine should be applied.24Similarly, in patent law, Congress has given a six-year look-back period for patent damages whereby “no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint . . . for infringement in the action.”25 Additionally, both patents and copyrights are often infringed by a series of actions rather than by single acts. In such cases, both patent and copyright law follow the “separate accrual rule” whereby each infringing action in the series is treated as separately actionable.26 These parallels between patent law and copyright law support an argument thatPetrella should apply to delays in patent litigation, whereby laches should no longer be used to bar damages for claims made within six years before a patent suit is filed.
On the other hand, others argue that differences between patent law and copyright law support an argument that Petrella should not apply to delays in patent litigation. For example, while the copyright statute of limitations arguably bars suits from being filed, the patent look-back period arguably only limits potential damages.27 The Federal Circuit considered this and other patent-specific issues when it adopted its laches policy for patents in 1992.28 The Supreme Court expressly acknowledged that it was not “review[ing] the Federal Circuit’s position” on patent laches when it decided Petrella.29
The Federal Circuit will soon settle this debate, at least temporarily, itself. On December 30, 2014, the court vacated its own recent decision, where a three-judge panel applied the circuit’s long-held laches policy in a patent suit, in order to be fully briefed on how Petrella should apply to patents and to rehear the vacated case en banc.30 In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, the panel affirmed the dismissal, on laches grounds, of a patent infringement suit brought six years and nine months after the plaintiff first asserted that the defendant was infringing the plaintiff’s patent.31 The panel recognized that “the Supreme Court has never ‘approved the application of laches to bar a claim for damages brought within the time allowed by a federal statute of limitations,’”32 but chose nonetheless to closely apply Aukerman, its previous precedent, since “Petrella notably left Aukerman intact.”33 Even as the panel adhered to the circuit’s Aukerman precedent, however, the panel seemed to recognize how close Petrella came to requiring a different outcome and even suggested how that outcome might properly be achieved: “Aukerman may only be overruled by the Supreme Court or an en banc panel of this court.”34 A few short months later, the court agreed to hear the issue en banc.35
Implications of SCA Hygiene
Practitioners and commentators are watching closely as the entire Federal Circuit gears up to hear arguments en banc about how the law should handle delays in patent litigation. The court has requested briefing from the parties about whether Aukerman should be overruled within the six-year look-back, and whether laches should ever bar an entire suit for either damages or injunctive relief.36 Amici curiae and additional laches-barred plaintiffs eagerly await the court’s decision.37 If the Aukerman rule survives, defendants will continue to enjoy a defensive tool against arguably stale claims. If Petrella is applied, courts will henceforth have less discretion to place limits on patent plaintiffs beyond those specifically prescribed by Congress. In either case, there will be many who will disagree with the Federal Circuit and who will clamor for the Supreme Court itself to weigh in on patent laches as it did for copyright laches withPetrella. Surely, it will be an interesting case to follow.