SCA v First Quality: SCOTUS justices ponder patent laches defence

Justices at the US Supreme Court pondered the defence of laches in patent litigation yesterday, as it heard arguments in the case of SCA Hygiene Products v First Quality Baby Products.

The case stems from SCA’s ownership of US patent number 6,375,646, which covers absorbent pants used to help those struggling with incontinence.

Back in 2003, SCA complained to First Quality that its Prevail All Nites product infringed the patent. First Quality responded shortly after and argued that the patent was invalid.

A year later, SCA requested re-examination of its own patent to prove its validity, and three years after this the US Patent and Trademark Office deemed all 28 claims of the patent to be valid.

SCA later sued First Quality at the US District Court for the District of Kentucky.

The case eventually found itself at the US Court of Appeals for the Federal Circuit, which in 2015 ruled en banc that the laches defence does apply to patent cases.

This was despite the 2014 Supreme Court ruling in Petrella v Metro-Goldwyn-Mayer.  It said that laches cannot be used in copyright disputes for legal relief brought within the Copyright Act’s three-year statute of limitations.

In the SCA case, the Supreme Court must answer the following question: "whether and to what extent the defence of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 USC §286."

At the court, Martin Black, partner at Dechert who represented SCA, claimed: “Injecting judicial discretion into the statutory scheme would frustrate the will of Congress, and create uncertainty about something as fundamental as the timeliness of suit.”

He added that there is nothing in the Patent Act which “compels the creation of a unique patent law rule”, and if the court created an exception, it would “invite litigation in the lower courts”.

Seth Waxman, partner at WilmerHale and representative of First Quality, argued that the court has repeatedly recognised that the 1952 Patent Act “sought to retain and reflect patent law as it then existed”.

“When section 282 codified defences applicable in any patent action, it did so against the backdrop of a decades-long consensus that laches is an available defence,” he said.

Speaking to Waxman, Justice Ruth Bader Ginsburg said she didn’t see a “big difference” between the way the patent statute of limitations works and the way “the copyright statute did in Petrella”.