## Facts

- SCA and First Quality competed in the adult incontinence products market.
- In October 2003, SCA accused First Quality of infringing U.S. Patent No. 6,375,646.
- In November 2003, First Quality responded that the patent was invalid based on its earlier patent; communications ceased.
- SCA sought ex parte reexamination in 2004; in 2007, the PTO confirmed patentability of all claims.
- After the 2007 reexamination result, SCA waited more than three years to sue.
- During the delay, First Quality made significant capital investments and expanded its product line.
- SCA filed an infringement action in August 2010 in the Western District of Kentucky, more than six years after its notice letter.

## Issues

1. Whether laches may bar recovery of patent infringement damages for acts occurring within the six-year damages period in 35 U.S.C. § 286.
2. Whether the Supreme Court’s reasoning in Petrella forecloses laches as a defense to legal damages in patent cases brought within § 286.

## Decision

- The en banc Federal Circuit held that laches remains available in patent cases and may bar pre-suit damages even when the suit is filed within § 286’s six-year period.
- The court distinguished Petrella and reaffirmed its prior laches framework for patent infringement actions.
- The court affirmed summary judgment that SCA’s delay was unreasonable and caused economic prejudice to First Quality, barring pre-suit damages.
- The en banc court left undisturbed the panel’s conclusion that equitable estoppel was not resolved on summary judgment due to factual disputes.

## Legal Principles

- Section 286 limits recovery of damages to infringements occurring within six years before filing but does not operate as a filing deadline for infringement actions.
- Laches is an equitable defense within the Patent Act’s defenses of “unenforceability” under § 282(b), as understood by longstanding practice and legislative history.
- Under Federal Circuit precedent (Aukerman), laches can bar pre-suit damages when a patentee’s unreasonable delay causes material prejudice (including economic prejudice) to the accused infringer.
- Petrella was treated as specific to the Copyright Act’s statutory scheme and not controlling where the Patent Act contemplates coexistence of a damages look-back limit and equitable defenses.

## Conclusion

The en banc Federal Circuit concluded that laches can bar pre-suit patent damages notwithstanding § 286’s six-year damages limitation, and it affirmed summary judgment that SCA’s extended delay—coupled with First Quality’s investment-based prejudice—precluded recovery of pre-suit damages.


SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015)