March 2017 Newsletter

Volume 10, Issue 1

Laches is No Longer a Defense to Patent Infringement

By Ryann H. Beck

Laches is no longer available as a defense against a claim for damages in patent cases. Last week’s U.S. Supreme Court decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC did away with the laches defense to patent infringement, setting aside (to steal a phrase from Justice Breyer’s dissent) “a mountain of authority recognizing laches as a defense.” The laches doctrine prevents a plaintiff from recovering damages when the plaintiff has unreasonably and/or prejudicially delayed in bringing the lawsuit. Laches has been used by defendants in patent infringement actions to limit or avoid paying damages where the plaintiff unfairly delayed bringing its claim—e.g., by waiting until after the defendant gained market success. 

Justice Alito’s majority decision is grounded in the notion that the laches doctrine is unnecessary and inappropriate in light of the six-year limitation period on damages already set forth in Section 286 of the Patent Act. Namely, the patent statutes already establish a time limitation for bringing patent infringement claims by only allowing a patent owner to recover six years of past damages. The seven-justice majority reasoned that interposing a differing standard than the one provided by the statute goes against Congress’s judgment on the appropriate limitation period for patent claims. Accordingly, courts should not take it upon themselves to go outside the statute to determine whether a shorter period is appropriate in given circumstances.

Notably, other equitable defenses to patent infringement remain intact and available to defendants who find themselves facing an abusive or unfair patent owner. As the Court notes, “equitable estoppel provides protection against . . . unscrupulous patentees inducing potential targets of infringement suits to invest in the production of arguably infringing products.” Thus, defendants still have at least one remaining shield against unfair patent assertion strategies, such as by nonpracticing entities.

Andrus Sponsors Judges Night

Andrus was proud to again be an event sponsor of the Milwaukee Bar Association's Judges Night event held February 7, 2017. The popular event allows MBA members an opportunity to interact with members of the federal and state judiciary as well as with other bar members.

Andrus Employees Support UPAF

Andrus Wins Eastern District of Wisconsin Bar Association's Trivia Night

In March, Andrus participated in the Eastern District of Wisconsin Bar Association's first annual trivia night and took home the trophy for first place! The trivia team included Aaron Olejniczak, Ben Imhoff, Chris Liro, Ryann Beck, Kevin Spexarth and Marie Mikolainis.