En Banc Federal Circuit Will Review Laches Rules

In light of Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), a 2014 Supreme Court case that held that laches does not apply to copyright suits seeking for damages only within a fixed time frame, the Federal Circuit recently agreed to review en banc A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992). SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Fed. Cir., No. 2013-1564, 12/30/2014. The Court in Aukerman held that for patent infringement cases, even claims seeking damages only within the six-year period limited by 35 U.S.C. § 286, laches may still apply if (a) the patentee’s unreasonable and inexcusable delay in bringing suit, and (b) material prejudice to the alleged infringer attributable to the delay.

The December 30th Federal Circuit en banc order called for briefs to reconsider Aukerman in light of Petrella in terms of (1) whether the court should overrule the 1992 Aukerman decision in terms of whether the defense of laches is applicable to bar a patent infringement claim for damages based on 35 U.S.C. § 286; and (2) whether the defense of laches should be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief? See, e.g., Lane & Bodley Co. v. Locke, 150 U.S. 193 (1893).

In Petrella, Justice Ginsburg held that “each infringing act starts a new limitations period” and any harm that is caused by the plaintiff’s delay in bringing the suit is offset by the Copyright Act’s three-year statute of limitations. Thus, if the rationale under Petrella is to be applied toAukerman, taking into consideration the differences in copyright and patent law, the Federal Circuit may overrule its previous decision and hold that the six-year damages limitation under 35 U.S.C. § 286 is comparable to a statute of limitations and therefore effectively preempts the laches defense.