Laches: a viable defense against patent infringement, but for how long?
| October 16, 2014
SCA Hygiene Products Aktiebolag v. First Quality Products, LLC
Summary:
SCA owns U.S. Patent No. 6,375,646 (the ‘646 patent) for adult incontinence products.
October 31, 2003: SCA sent a warning letter to First Quality, stating that SCA believes First Quality’s pants-type diapers infringe the ‘646 patent, and asking First Quality to either explain why the products do not infringe, or give assurance that First Quality will stop making and selling the products if First Quality believes the products to infringe the patent.
November 21, 2003: First Quality responded by letter, stating that prior art U.S. Patent No. 5,415,649 (the ‘649 prior art patent) invalidates the ‘646 patent.
July 7, 2004: SCA filed a request for ex parte reexamination of the ‘646 patent over the ‘649 prior art patent, but did not notify First Quality about the reexamination.
March 27, 2007: The PTO confirmed the patentability of all the original claims of the ‘646 patent and also granted new claims added during the reexamination.
August 2, 2010: SCA filed suit against First Quality for infringement of the ‘646 patent (six years and nine month after sending the warning letter, and more than three years after the conclusion of the reexamination.) First Quality counterclaimed for declaratory judgment of non-infringement and invalidity. After the district court’s claim construction order, First Quality moved for partial summary judgment of non-infringement, and summary judgment for laches and equitable estoppel. The district court granted summary judgment for laches and equitable estoppel, and dismissed the remaining motion as moot. SCA appealed.
The conclusion about laches or equitable estoppel is “committed to the sound discretion of the trial judge.” Therefore, the standard of review of those conclusions by the CAFC is “abuse of discretion” by the trial judge. Since the underlying elements of laches and equitable estoppel are questions of fact, the CAFC reviews those findings of fact for “clear error.” However, when summary judgment has been granted, the CAFC reviews the factual elements de novo to determine whether any “genuine issues of material fact remain.”
