SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC , 137 S. Ct. 954 ( 2017 )

(Slip Opinion) OCTOBER TERM, 2016 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U.S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
SCA HYGIENE PRODUCTS AKTIEBOLAG ET AL. v.
FIRST QUALITY BABY PRODUCTS, LLC, ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
No. 15–927. Argued November 1, 2016—Decided March 21, 2017
In 2003, petitioners (collectively, SCA) notified respondents (collective-
ly, First Quality) that their adult incontinence products infringed an
SCA patent. First Quality responded that its own patent antedated
SCA’s patent and made it invalid. In 2004, SCA sought reexamina-
tion of its patent in light of First Quality’s patent, and in 2007, the
Patent and Trademark Office confirmed the SCA patent’s validity.
SCA sued First Quality for patent infringement in 2010. The District
Court granted summary judgment to First Quality on the grounds of
equitable estoppel and laches. While SCA’s appeal was pending, this
Court held that laches could not preclude a claim for damages in-
curred within the Copyright Act’s 3-year limitations period. Petrella
v. Metro-Goldwyn-Mayer, Inc., 572 U. S. ___, ___. A Federal Circuit
panel nevertheless affirmed the District Court’s laches holding based
on Circuit precedent, which permitted laches to be asserted against a
claim for damages incurred within the Patent Act’s 6-year limitations
period, 35 U.S. C. §286. The en banc court reheard the case in light
of Petrella and reaffirmed the original panel’s laches holding.
Held: Laches cannot be invoked as a defense against a claim for dam-
ages brought within §286’s 6-year limitations period. Pp. 3–16.
(a) Petrella’s holding rested on both separation-of-powers principles
and the traditional role of laches in equity. A statute of limitations
reflects a congressional decision that timeliness is better judged by a
hard and fast rule instead of a case-specific judicial determination.
Applying laches within a limitations period specified by Congress
would give judges a “legislation-overriding” role that exceeds the Ju-
diciary’s power. 572 U. S., at ___. Moreover, applying laches within
a limitations period would clash with the gap-filling purpose for
2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Syllabus
which the defense developed in the equity courts. Pp. 3–5.
(b) Petrella’s reasoning easily fits §286. There, the Court found in
the Copyright Act’s language a congressional judgment that a claim
filed within three years of accrual cannot be dismissed on timeliness
grounds. 572 U. S., at ___. By that same logic, §286 of the Patent
Act represents Congress’s judgment that a patentee may recover
damages for any infringement committed within six years of the fil-
ing of the claim.
First Quality contends that this case differs from Petrella because a
true statute of limitations runs forward from the date a cause of ac-
tion accrues, whereas §286’s limitations period runs backward from
the filing of the complaint. However, Petrella repeatedly character-
ized the Copyright Act’s limitations period as running backward from
the date the suit was filed. First Quality also contends that a true
statute of limitations begins to run when the plaintiff discovers a
cause of action, which is not the case with §286’s limitations period,
but ordinarily, a statute of limitations begins to run on the date that
the claim accrues, not when the cause of action is discovered. Pp. 5–
8.
(c) The Federal Circuit based its decision on the idea that §282 of
the Patent Act, which provides for “defenses in any action involving
the validity or infringement of a patent,” creates an exception to §286
by codifying laches as such a defense, and First Quality argues that
laches is a defense within §282(b)(1) based on “unenforceability.”
Even assuming that §282(b)(1) incorporates a laches defense of some
dimension, it does not necessarily follow that the defense may be in-
voked to bar a claim for damages incurred within the period set out
in §286. Indeed, it would be exceedingly unusual, if not unprecedent-
ed, if Congress chose to include in the Patent Act both a statute of
limitations for damages and a laches provision applicable to a dam-
ages claim. Neither the Federal Circuit, nor any party, has identified
a single federal statute that provides such dual protection against
untimely claims. Pp. 8–9.
(d) The Federal Circuit and First Quality rely on lower court patent
cases decided before the 1952 Patent Act to argue that §282 codified a
pre-1952 practice of permitting laches to be asserted against damages
claims. But the most prominent feature of the relevant legal land-
scape at that time was the well-established rule that laches cannot be
invoked to bar a claim for damages incurred within a limitations pe-
riod specified by Congress. In light of this rule, which Petrella con-
firmed and restated, 572 U. S., at ___, nothing less than a broad and
unambiguous consensus of lower court decisions could support the in-
ference that §282(b)(1) codifies a very different patent-law-specific
rule. Pp. 9–10.
Cite as: 580 U. S. ____ (2017) 3
Syllabus
(e) The Federal Circuit and First Quality rely on three types of cas-
es: (1) pre-1938 equity cases; (2) pre-1938 claims at law; and (3) cases
decided after the merger of law and equity in 1938. None of these es-
tablishes a broad, unambiguous consensus in favor of applying laches
to damages claims in the patent context.
Many of the pre-1938 equity cases do not even reveal whether the
plaintiff asked for damages, and of the cases in which damages were
sought, many merely suggest in dicta that laches might limit damag-
es. The handful of cases that apply laches against a damages claim
are too few to establish a settled, national consensus. In any event,
the most that can possibly be gathered from a pre-1938 equity case is
that laches could defeat a damages claim in an equity court, not that
the defense could entirely prevent a patentee from recovering damag-
es.
Similarly, even if all three pre-1938 cases at law cited by First
Quality squarely held that laches could be applied to a damages
claim within the limitations period, that number would be insuffi-
cient to overcome the presumption that Congress legislates against
the background of general common-law principles. First Quality ar-
gues that the small number of cases at law should not count against
its position because there were few patent cases brought at law after
1870, but it is First Quality’s burden to show that Congress departed
from the traditional common-law rule.
As for the post-1938 patent case law, there is scant evidence sup-
porting First Quality’s claim that courts continued to apply laches to
damages claims after the merger of law and equity. Only two Courts
of Appeals held that laches could bar a damages claim, and that does
not constitute a settled, uniform practice of applying laches to dam-
ages claims. Pp. 11–15.
(f) First Quality’s additional arguments are unconvincing and do
not require extended discussion. It points to post-1952 Court of Ap-
peals decisions holding that laches can be invoked as a defense
against a damages claim, but nothing that Congress has done since
1952 has altered §282’s meaning. As for the various policy argu-
ments presented here, this Court cannot overrule Congress’s judg-
ment based on its own policy views. Pp. 15–16.
807 F.3d 1311, vacated in part and remanded.
ALITO, J., delivered the opinion of the Court, in which ROBERTS, C. J.,
and KENNEDY, THOMAS, GINSBURG, SOTOMAYOR, and KAGAN, JJ., joined.
BREYER, J., filed a dissenting opinion.
Cite as: 580 U. S. ____ (2017) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–927
_________________
SCA HYGIENE PRODUCTS AKTIEBOLAG, ET AL.,
PETITIONERS v. FIRST QUALITY BABY
PRODUCTS, LLC, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[March 21, 2017]
JUSTICE ALITO delivered the opinion of the Court.
We return to a subject that we addressed in Petrella v.
Metro-Goldwyn-Mayer, Inc., 572 U. S. ___ (2014): the
relationship between the equitable defense of laches and
claims for damages that are brought within the time
allowed by a statute of limitations. In Petrella, we held
that laches cannot preclude a claim for damages incurred
within the Copyright Act’s 3-year limitations period. Id.,
at ___ (slip op., at 1). “[L]aches,” we explained, “cannot be
invoked to bar legal relief ” “[i]n the face of a statute of
limitations enacted by Congress.” Id., at ___ (slip op., at
13). The question in this case is whether Petrella’s reason-
ing applies to a similar provision of the Patent Act, 35
U.S. C. §286. We hold that it does.
I
Petitioners SCA Hygiene Products Aktiebolag and SCA
Personal Care, Inc. (collectively, SCA), manufacture and
sell adult incontinence products. In October 2003, SCA
sent a letter to respondents (collectively, First Quality),
alleging that First Quality was making and selling prod-
2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
ucts that infringed SCA’s rights under U. S. Patent No.
6,375,646 B1 (’646 patent). App. 54a. First Quality re-
sponded that one of its patents—U. S. Patent No.
5,415,649 (Watanabe patent)—antedated the ’646 patent
and revealed “the same diaper construction.” Id., at 53a.
As a result, First Quality maintained, the ’646 patent was
invalid and could not support an infringement claim. Ibid.
SCA sent First Quality no further correspondence regard-
ing the ’646 patent, and First Quality proceeded to develop
and market its products.
In July 2004, without notifying First Quality, SCA
asked the Patent and Trademark Office (PTO) to initiate a
reexamination proceeding to determine whether the ’646
patent was valid in light of the Watanabe patent. Id., at
49a–51a. Three years later, in March 2007, the PTO
issued a certificate confirming the validity of the ’646
patent.
In August 2010, SCA filed this patent infringement
action against First Quality. First Quality moved for
summary judgment based on laches and equitable estop-
pel, and the District Court granted that motion on both
grounds. 2013 WL 3776173, *12 (WD Ky., July 16, 2013).
SCA appealed to the Federal Circuit, but before the
Federal Circuit panel issued its decision, this Court de-
cided Petrella. The panel nevertheless held, based on a Fed-
eral Circuit precedent, A. C. Aukerman Co. v. R. L.
Chaides Constr. Co., 960 F.2d 1020 (1992) (en banc), that
SCA’s claims were barred by laches.1
The Federal Circuit then reheard the case en banc in
order to reconsider Aukerman in light of Petrella. But in a
6-to-5 decision, the en banc court reaffirmed Aukerman’s
holding that laches can be asserted to defeat a claim for
——————
1 The panel reversed the District Court’s holding on equitable estop-
pel, concluding that there are genuine disputes of material fact relating
to that defense. 767 F.3d 1339, 1351 (2014).
Cite as: 580 U. S. ____ (2017) 3
Opinion of the Court
damages incurred within the 6-year period set out in the
Patent Act. As it had in Aukerman, the en banc court
concluded that Congress, in enacting the Patent Act, had
“codified a laches defense” that “barred recovery of legal
remedies.” 807 F.3d 1311, 1323–1329 (2015). Judge
Hughes, joined by four other judges, dissented.2 Id., at
1337–1342 (opinion concurring in part and dissenting in
part). We granted certiorari. 578 U. S. ___ (2016).
II
Laches is “a defense developed by courts of equity” to
protect defendants against “unreasonable, prejudicial
delay in commencing suit.” Petrella, supra, at ___, ___
(slip op., at 1, 12). See also 1 D. Dobbs, Law of Remedies
§2.3(5), p. 89 (2d ed. 1993) (Dobbs) (“The equitable doc-
trine of laches bars the plaintiff whose unreasonable delay
in prosecuting a claim or protecting a right has worked a
prejudice to the defendant”). Before the separate systems
of law and equity were merged in 1938, the ordinary rule
was that laches was available only in equity courts.3 See
County of Oneida v. Oneida Indian Nation of N. Y., 470
U.S. 226, 244, n. 16 (1985). This case turns on the appli-
cation of the defense to a claim for damages, a quintessen-
tial legal remedy. We discussed this subject at length in
——————
2 The dissenting judges concurred in the portion of the majority opin-
ion relating to the application of laches to equitable relief. 807 F.3d, at
1333, n. 1 (opinion of Hughes, J.); see also id., at 1331–1333 (majority
opinion). We do not address that aspect of the Federal Circuit’s judg-
ment. Nor do we address the Federal Circuit’s reversal of the District
Court’s equitable estoppel holding. Id., at 1333 (reinstating original
panel holding on equitable estoppel).
3 “The federal courts always had equity powers as well as law power,
but they operated, until the Federal Rules of Civil Procedure, by
distinctly separating equity cases and even had separate equity rules.”
1 Dobbs §2.6(1), at 148, n. 2; see also Gulfstream Aerospace Corp. v.
Mayacamas Corp., 485 U.S. 271, 279 (1988). It is in this sense that we
refer in this opinion to federal courts as equity or law courts.
4 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
Petrella.
Petrella arose out of a copyright dispute relating to the
film Raging Bull. 572 U. S., at ___ (slip op., at 8). The
Copyright Act’s statute of limitations requires a copyright
holder claiming infringement to file suit “within three
years after the claim accrued.” 17 U.S. C. §507(b). In
Petrella, the plaintiff sought relief for alleged acts of in-
fringement that accrued within that 3-year period, but the
lower courts nevertheless held that laches barred her
claims. See 695 F.3d 946 (CA9 2012). We reversed,
holding that laches cannot defeat a damages claim
brought within the period prescribed by the Copyright
Act’s statute of limitations. Petrella, 572 U. S., at ___–___
(slip op., at 11–14). And in so holding, we spoke in broad
terms. See id., at ___ (slip op., at 13) (“[I]n the face of a
statute of limitations enacted by Congress, laches cannot
be invoked to bar legal relief ”).
Petrella’s holding rested on both separation-of-powers
principles and the traditional role of laches in equity.
Laches provides a shield against untimely claims, id., at
___ (slip op., at 19), and statutes of limitations serve a
similar function. When Congress enacts a statute of limi-
tations, it speaks directly to the issue of timeliness and
provides a rule for determining whether a claim is timely
enough to permit relief. Id., at ___ (slip op., at 11). The
enactment of a statute of limitations necessarily reflects a
congressional decision that the timeliness of covered
claims is better judged on the basis of a generally hard
and fast rule rather than the sort of case-specific judicial
determination that occurs when a laches defense is asserted.
Therefore, applying laches within a limitations period
specified by Congress would give judges a “legislation-
overriding” role that is beyond the Judiciary’s power. Id.,
at ___ (slip op., at 14). As we stressed in Petrella, “courts
are not at liberty to jettison Congress’ judgment on the
timeliness of suit.” Id., at ___ (slip op., at 1).
Cite as: 580 U. S. ____ (2017) 5
Opinion of the Court
Applying laches within the limitations period would also
clash with the purpose for which the defense developed in
the equity courts. As Petrella recounted, the “principal
application” of laches “was, and remains, to claims of an
equitable cast for which the Legislature has provided no
fixed time limitation.” Id., at ___ (slip op., at 12); see also
R. Weaver, E. Shoben, & M. Kelly, Principles of Remedies
Law 21 (2d ed. 2011); 1 Dobbs §2.4(4), at 104; 1 J. Story,
Commentaries on Equity Jurisprudence §55(a), p. 73 (2d
ed. 1839). Laches is a gap-filling doctrine, and where
there is a statute of limitations, there is no gap to fill.4
Petrella, supra, at ___ (slip op., at 14); see also 1 Dobbs
§2.4(4), at 108 (“[I]f the plaintiff has done only what she is
permitted to do by statute, and has not misled the defend-
ant [so as to trigger equitable estoppel], the basis for
barring the plaintiff seems to have disappeared”).
With Petrella’s principles in mind, we turn to the pre-
sent dispute.
III
A
Although the relevant statutory provisions in Petrella
and this case are worded differently, Petrella’s reasoning
easily fits the provision at issue here. As noted, the stat-
ute in Petrella precludes a civil action for copyright in-
fringement “unless it is commenced within three years
——————
4 The dissent argues that there is a “gap” in the statutory scheme
because the Patent Act’s statute of limitations might permit a patentee
to wait until an infringing product has become successful before suing
for infringement. Post, at 2–3 (opinion of BREYER, J.). We rejected a
version of this argument in Petrella, 572 U. S., at ___–___ (slip op., at
16–17), and we do so here. The dissent’s argument implies that, insofar
as the lack of a laches defense could produce policy outcomes judges
deem undesirable, there is a “gap” for laches to fill, notwithstanding the
presence of a statute of limitations. That is precisely the kind of
“legislation-overriding” judicial role that Petrella rightly disclaimed.
Id., at ___ (slip op., at 14).
6 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
after the claim accrued.” 17 U.S. C. §507(b). We saw in
this language a congressional judgment that a claim filed
within three years of accrual cannot be dismissed on time-
liness grounds. 572 U. S., at ___ (slip op., at 11); see also
id., at ___–___ (slip op., at 14–15).
The same reasoning applies in this case. Section 286 of
the Patent Act provides: “Except as otherwise provided by
law, no recovery shall be had for any infringement com-
mitted more than six years prior to the filing of the com-
plaint or counterclaim for infringement in the action.” By
the logic of Petrella, we infer that this provision represents
a judgment by Congress that a patentee may recover
damages for any infringement committed within six years
of the filing of the claim.
B
First Quality contends that this case differs from Pet-
rella because §286 of the Patent Act is not a true statute of
limitations. A true statute of limitations, we are told,
“runs forward from the date a cause of action accrues,” but
§286 “runs backward from the time of suit.” Brief for
Respondents 41.
Petrella cannot reasonably be distinguished on this
ground. First Quality thinks it critical that §286 “runs
backward from the time of suit,” Brief for Respondents 41,
but Petrella described the Copyright Act’s statute of limi-
tations in almost identical terms. We said that this provi-
sion “allows plaintiffs . . . to gain retrospective relief run-
ning only three years back from the date the complaint was
filed.” 572 U. S., at ___ (slip op., at 6–7) (emphasis added).
See also id., at ___ (slip op., at 11) (“[A] successful plaintiff
can gain retrospective relief only three years back from
the time of suit”). And we described the Copyright Act’s
statute of limitations as “a three-year look-back limita-
tions period.” Id., at ___ (slip op., at 4).
First Quality contends that the application of a true
Cite as: 580 U. S. ____ (2017) 7
Opinion of the Court
statute of limitations, like the defense of laches (but unlike
§286), takes into account the fairness of permitting the
adjudication of a particular plaintiff ’s claim. First Quality
argues as follows: “When Congress enacts [a true statute
of limitations], it can be viewed as having made a consid-
ered judgment about how much delay may occur after a
plaintiff knows of a cause of action (i.e., after accrual)
before the plaintiff must bring suit—thus potentially
leaving no room for judges to evaluate the reasonableness
of a plaintiff ’s delay on a case-by-case basis under laches.”
Brief for Respondents 42. According to First Quality, §286
of the Patent Act is different because it “turns only on
when the infringer is sued, regardless of when the pat-
entee learned of the infringement.” Ibid.
This argument misunderstands the way in which stat-
utes of limitations generally work. First Quality says that
the accrual of a claim, the event that triggers the running
of a statute of limitations, occurs when “a plaintiff knows
of a cause of action,” ibid., but that is not ordinarily true.
As we wrote in Petrella, “[a] claim ordinarily accrues
‘when [a] plaintiff has a complete and present cause of
action.’ ” 572 U. S., at ___ (slip op., at 4); see Graham
County Soil & Water Conservation Dist. v. United States
ex rel. Wilson, 545 U.S. 409, 418–419 (2005). While some
claims are subject to a “discovery rule” under which the
limitations period begins when the plaintiff discovers or
should have discovered the injury giving rise to the claim,
that is not a universal feature of statutes of limitations.
See, e.g., ibid. (limitations period in 31 U.S. C. §3731(b)(1)
begins to run when the cause of action accrues); TRW Inc.
v. Andrews, 534 U.S. 19, 28 (2001) (same with regard to
15 U.S. C. §1681p). And in Petrella, we specifically noted
that “we have not passed on the question” whether the
Copyright Act’s statute of limitations is governed by such
a rule. 572 U. S., at ___, n. 4 (slip op., at 4, n. 4).
For these reasons, Petrella cannot be dismissed as appli-
8 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
cable only to what First Quality regards as true statutes of
limitations. At least for present purposes, nothing de-
pends on this debatable taxonomy. Compare Automobile
Workers v. Hoosier Cardinal Corp., 383 U.S. 696, 704
(1966) (describing §286 as “enacting a uniform period of
limitations”); 1 Dobbs §2.4(4), at 107, and n. 33 (same),
with A. Stucki Co. v. Buckeye Steel Castings Co., 963 F.2d
360, 363, n. 3 (CA Fed. 1992) (Section 286 “is not, strictly
speaking, a statute of limitations”); Standard Oil Co. v.
Nippon Shokubai Kagaku Co., Ltd., 754 F.2d 345, 348
(CA Fed. 1985) (“[Section] 286 cannot properly be called a
‘statute of limitations’ in the sense that it defeats the right
to bring suit”).
C
The Federal Circuit based its decision on a different
footing. Section 286 of the Patent Act begins with the
phrase “[e]xcept as otherwise provided by law,” and ac-
cording to the Federal Circuit, §282 of the Act is a provi-
sion that provides otherwise. In its view, §282 creates an
exception to §286 by codifying laches as a defense to all
patent infringement claims, including claims for damages
suffered within §286’s 6-year period. 807 F.3d, at 1329–
1330. Section 282(b), which does not specifically mention
laches, provides in relevant part as follows:
“The following shall be defenses in any action involv-
ing the validity or infringement of a patent and shall
be pleaded:
“(1) Noninfringement, absence of liability for in-
fringement or unenforceability.”
The en banc majority below never identified which word
or phrase in §282 codifies laches as a defense, but First
Quality argues that laches falls within §282(b)(1) because
laches is a defense based on “unenforceability.” Brief for
Respondents 28–33.
Cite as: 580 U. S. ____ (2017) 9
Opinion of the Court
SCA disputes this interpretation of §282(b)(1), arguing
that laches does not make a patent categorically unen-
forceable. Reply Brief 6–8; see Aukerman, 960 F.2d, at
1030 (“Recognition of laches as a defense . . . does not
affect the general enforceability of the patent against
others”). We need not decide this question. Even if we
assume for the sake of argument that §282(b)(1) incorpo-
rates a laches defense of some dimension, it does not nec-
essarily follow that this defense may be invoked to bar a
claim for damages incurred within the period set out in
§286. Indeed, it would be exceedingly unusual, if not
unprecedented, if Congress chose to include in the Patent
Act both a statute of limitations for damages and a laches
provision applicable to a damages claim. Neither the
Federal Circuit, nor First Quality, nor any of First Quali-
ty’s amici has identified a single federal statute that pro-
vides such dual protection against untimely claims.
D
In holding that Congress codified a damages-limiting
laches defense, the Federal Circuit relied on patent cases
decided by the lower courts prior to the enactment of the
Patent Act. After surveying these cases, the Federal
Circuit concluded that by 1952 there was a well-
established practice of applying laches to such damages
claims and that Congress, in adopting §282, must have
chosen to codify such a defense in §282(b)(1). 807 F.3d, at
1321–1329. First Quality now presses a similar argu-
ment. We have closely examined the cases on which the
Federal Circuit and First Quality rely, and we find that
they are insufficient to support the suggested interpreta-
tion of the Patent Act. The most prominent feature of the
relevant legal landscape at the time of enactment of the
Patent Act was the well-established general rule, often
repeated by this Court, that laches cannot be invoked to
bar a claim for damages incurred within a limitations
10 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
period specified by Congress. See Holmberg v. Armbrecht,
327 U.S. 392, 395 (1946) (“If Congress explicitly puts a
limit upon the time for enforcing a right which it created,
there is an end of the matter”); United States v. Mack, 295
U.S. 480, 489 (1935) (“Laches within the term of the
statute of limitations is no defense at law”); Wehrman v.
Conklin, 155 U.S. 314, 326 (1894) (“Though a good de-
fense in equity, laches is no defense at law. If the plaintiff
at law has brought his action within the period fixed by
the statute of limitations, no court can deprive him of his
right to proceed”); Cross v. Allen, 141 U.S. 528, 537 (1891)
(“So long as the demands secured were not barred by the
statute of limitations, there could be no laches in prosecut-
ing a suit”). Petrella confirmed and restated this long-
standing rule. 572 U. S., at ___ (slip op., at 12) (“[T]his
Court has cautioned against invoking laches to bar legal
relief ”). If Congress examined the relevant legal land-
scape when it adopted 35 U.S. C. §282, it could not have
missed our cases endorsing this general rule.
The Federal Circuit and First Quality dismiss the signif-
icance of this Court’s many reiterations of the general rule
because they were not made in patent cases. But as the
dissenters below noted, “[p]atent law is governed by the
same common-law principles, methods of statutory inter-
pretation, and procedural rules as other areas of civil
litigation.” 807 F.3d, at 1333 (opinion of Hughes, J.).
In light of the general rule regarding the relationship
between laches and statutes of limitations, nothing less
than a broad and unambiguous consensus of lower court
decisions could support the inference that §282(b)(1) codi-
fies a very different patent-law-specific rule. No such
consensus is to be found.5
——————
5 Because we conclude that First Quality fails to show that there was
a special laches rule in the patent context, we need not address whether
it is ever reasonable to assume that Congress legislated against the
Cite as: 580 U. S. ____ (2017) 11
Opinion of the Court
IV
The pre-1952 cases on which First Quality relies fall
into three groups: (1) cases decided by equity courts before
1938; (2) cases decided by law courts before 1938; and (3)
cases decided after the merger of equity and law in 1938.
We will discuss each group separately.
A
Pre-1938 equity cases
The pre-1938 equity cases are unpersuasive for several,
often overlapping reasons. Many do not even reveal
whether the plaintiff asked for damages. Indeed, some
say nothing at all about the form of relief that was sought,
see, e.g., Cummings v. Wilson & Willard Mfg. Co., 4 F.2d
453 (CA9 1925), and others state only that the plaintiff
wanted an accounting of profits, e.g., Westco-Chippewa
Pump Co. v. Delaware Elec. & Supply Co., 64 F.2d 185,
186 (CA3 1933); Wolf Mineral Process Corp. v. Minerals
Separation North Am. Corp., 18 F.2d 483, 484 (CA4 1927).
The equitable remedy of an accounting, however, was not
the same as damages. The remedy of damages seeks to
compensate the victim for its loss, whereas the remedy of
an accounting, which Congress abolished in the patent
context in 1946,6 sought disgorgement of ill-gotten profits.
See Birdsall v. Coolidge, 93 U.S. 64, 68–69 (1876); 1
Dobbs §4.3(5), at 611 (“Accounting holds the defendant
liable for his profits, not for damages”); A. Walker, Patent
——————
background of a lower court consensus rather than the contrary deci-
sions of this Court. Cf. 807 F.3d, at 1338 (opinion of Hughes, J.) (“For
even if there were differing views in the lower [federal] courts, it would
be nearly impossible to conclude that there was a uniform understand-
ing of the common law that was inconsistent with Supreme Court
precedent. In our judicial system, the Supreme Court's understanding
is controlling”).
6 See 60 Stat. 778; see also Aro Mfg. Co. v. Convertible Top Replace-
ment Co., 377 U.S. 476, 505 (1964).
12 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
Laws §573, p. 401 (1886) (distinguishing between the two
remedies); G. Curtis, Law of Patents §341(a), p. 461 (4th
ed. 1873); 2 J. Pomeroy, Treatise on Equitable Remedies
§568, p. 977 (1905).
First Quality argues that courts sometimes used the
term “accounting” imprecisely to refer to both an account-
ing of profits and a calculation of damages, Brief for Re-
spondents 19–20, but even if that is true, this loose usage
shows only that a reference to “accounting” might refer to
damages. For that reason, the Federal Circuit did not rely
on cases seeking only an accounting, 807 F.3d, at 1326,
n. 7, and we likewise exclude such cases from our analysis.
Turning to the cases that actually refer to damages,
we note that many of the cases merely suggest in dicta
that laches might limit recovery of damages. See, e.g.,
Hartford-Empire Co. v. Swindell Bros., 96 F.2d 227, 233,
modified on reh’g, 99 F.2d 61 (CA4 1938). Such dicta
“settles nothing.” Jama v. Immigration and Customs
Enforcement, 543 U.S. 335, 351, n. 12 (2005). See also
Hartford Underwriters Ins. Co. v. Union Planters Bank,
N. A., 530 U.S. 1, 9–10 (2000); Metropolitan Stevedore Co.
v. Rambo, 515 U.S. 291, 300 (1995).
As for the cases in which laches was actually held to bar
a claim for damages, e.g., Wolf, Sayer & Heller v. United
States Slicing Mach. Co., 261 F. 195, 197–198 (CA7 1919);
A. R. Mosler & Co. v. Lurie, 209 F. 364, 369–370 (CA2
1913), these cases are too few to establish a settled,
national consensus. See Hartford Underwriters, supra,
at 10.
Moreover, the most that can possibly be gathered from a
pre-1938 equity case is that laches could defeat a damages
claim in an equity court, not that the defense could en-
tirely prevent a patentee from recovering damages. Before
1870, a patentee wishing to obtain both an injunction
against future infringement and damages for past in-
fringement was required to bring two suits, one in an
Cite as: 580 U. S. ____ (2017) 13
Opinion of the Court
equity court (where injunctive relief but not damages was
available), and one in a court of law (where damages but
not injunctive relief could be sought). See Beauchamp,
The First Patent Litigation Explosion, 125 Yale L. J. 848,
913–914 (2016). To rectify this situation, Congress en-
acted a law in 1870 authorizing equity courts to award dam-
ages in patent-infringement actions. Rev. Stat. §4921.
And although statutes of limitations did not generally
apply in equity, Congress in 1897 enacted a statute that,
like the current §286, imposed a 6-year limitations period
for damages claims and made that statute applicable in
both law and equity. §6, 29 Stat. 694. Pointing to cases
decided between 1897 and 1938 in which an equity court
permitted a defendant in an infringement case to invoke
the defense of laches, First Quality contends that Con-
gress, aware of these cases, assumed that the 1952 Act
would likewise allow a defendant in an infringement case
to claim laches with respect to a claim for damages occur-
ring within a limitations period.
This argument overlooks the fact that a patentee, dur-
ing the period in question, could always sue for damages
in law, where the equitable doctrine of laches did not
apply, and could thus avoid any possible laches defense.
Thus, accepting First Quality’s argument would not return
patentees to the position they held from 1897 to 1938.
Instead, it would go much further and permit laches en-
tirely to defeat claims like SCA’s.7
B
Pre-1938 claims at law
First Quality cites three Court of Appeals cases in which
——————
7 The dissent misunderstands this point and thinks that we dismiss
the relevance of the equity cases because they applied laches “to equi-
table claims without statutes of limitations.” Post, at 5. But we are
well aware that a statute of limitations applied in equity when these
cases arose. See supra, at 13.
14 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
laches was raised in a proceeding at law and in which,
according to First Quality, the defense was held to bar a
damages claim. See Universal Coin Lock Co. v. American
Sanitary Lock Co., 104 F.2d 781 (CA7 1939); Banker v.
Ford Motor Co., 69 F.2d 665 (CA3 1934); Ford v. Huff, 296
F. 652 (CA5 1924). But even if all of these cases squarely
held that laches could be applied to a damages claim at
law within the limitations period, they would still consti-
tute only a handful of decisions out of the corpus of pre-
1952 patent cases, and that would not be enough to over-
come the presumption that Congress legislates against the
background of general common-law principles. See H.
McClintock, Handbook of the Principles of Equity §28, p.
75 (2d ed. 1948) (“The majority of the courts which have
considered the question have refused to enjoin an action at
law on the ground of the laches of the plaintiff at law”).
In any event, these cases, like the equity cases, offer
minimal support for First Quality’s position. Not one of
these cases even mentions the statute of limitations. One
of the three, Ford, is not even a patent infringement case;
it is a breach-of-contract case arising out of a patent dis-
pute, 296 F., at 654, and it is unclear whether the ground
for decision was laches or equitable estoppel. See 807
F.3d, at 1340 (opinion of Hughes, J.). Another, Universal
Coin, applied laches to a legal damages claim without any
analysis of the propriety of doing so. 104 F.2d, at 783.
First Quality protests that the paucity of supporting
cases at law should not count against its argument since
very few patent-infringement cases were brought at law
after 1870. Brief for Respondents 25–26. But the fact
remains that it is First Quality’s burden to show that
Congress departed from the traditional common-law rule
highlighted in our cases.8
——————
8 For the same reason, the dissent misses the mark when it demands
that we cite cases “holding that laches could not bar a patent claim for
Cite as: 580 U. S. ____ (2017) 15
Opinion of the Court
C
Post-merger cases
First Quality claims that courts continued to apply
laches to damages claims after the merger of law and
equity in 1938, but First Quality’s evidence is scant.
During this period, two Courts of Appeals stated in dicta
that laches could bar legal damages claims. See Chicago
Pneumatic Tool Co. v. Hughes Tool Co., 192 F.2d 620, 625
(CA10 1951); Shaffer v. Rector Well Equip. Co., 155 F.2d
344, 347 (CA5 1946). And two others actually held that
laches could bar a damages claim. See, e.g., Brennan v.
Hawley Prods. Co., 182 F.2d 945, 948 (CA7 1950); Lukens
Steel Co. v. American Locomotive Co., 197 F.2d 939, 941
(CA2 1952) (alternative holding). This does not constitute
a settled, uniform practice of applying laches to damages
claims.
After surveying the pre-1952 case law, we are not con-
vinced that Congress, in enacting §282 of the Patent Act,
departed from the general rule regarding the application
of laches to damages suffered within the time for filing
suit set out in a statute of limitations.
V
First Quality’s additional arguments do not require
extended discussion. First Quality points to post-1952
Court of Appeals decisions holding that laches can be
invoked as a defense against a damages claim. Noting
that Congress has amended §282 without altering the
“ ‘unenforceability’ ” language that is said to incorporate a
laches defense, First Quality contends that Congress has
implicitly ratified these decisions. Brief for Respondents
35–36.
We reject this argument. Nothing that Congress has
done since 1952 has altered the meaning of §282. See
——————
damages.” Post, at 8.
16 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
Opinion of the Court
Central Bank of Denver, N. A. v. First Interstate Bank of
Denver, N. A., 511 U.S. 164, 186 (1994); West Virginia
Univ. Hospitals, Inc. v. Casey, 499 U.S. 83, 100, 101, and
n. 7 (1991).
First Quality and its supporting amici also make vari-
ous policy arguments, but we cannot overrule Congress’s
judgment based on our own policy views. We note, however,
as we did in Petrella, that the doctrine of equitable
estoppel provides protection against some of the problems
that First Quality highlights, namely, unscrupulous pa-
tentees inducing potential targets of infringement suits to
invest in the production of arguably infringing products.
572 U. S., at ___ (slip op., at 19). Indeed, the Federal
Circuit held that there are genuine disputes of material
fact as to whether equitable estoppel bars First Quality’s
claims in this very case. See 807 F.3d, at 1333.
* * *
Laches cannot be interposed as a defense against dam-
ages where the infringement occurred within the period
prescribed by §286. The judgment of the Court of Appeals
is vacated in part, and the case is remanded for further
proceedings consistent with this opinion.
It is so ordered.
Cite as: 580 U. S. ____ (2017) 1
BREYER, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–927
_________________
SCA HYGIENE PRODUCTS AKTIEBOLAG, ET AL.,
PETITIONERS v. FIRST QUALITY BABY
PRODUCTS, LLC, ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[March 21, 2017]
JUSTICE BREYER, dissenting.
Laches is a doctrine that bars a plaintiff ’s claim when
there has been unreasonable, prejudicial delay in com-
mencing suit. See 1 D. Dobbs, Law of Remedies §2.3(5), p.
89 (2d ed. 1993). The question before us is whether a
court can apply this doctrine in a patent infringement
action for damages brought within the statute of limita-
tions. The Court holds that a court cannot. Laches, it
says, is a “gap-filling doctrine,” generally applicable where
there is no statute of limitations. But the 1952 Patent Act
contains a statute of limitations. Hence there is “no gap to
fill.” Ante, at 5.
In my view, however, the majority has ignored the fact
that, despite the 1952 Act’s statute of limitations, there
remains a “gap” to fill. See infra, at 2–3. Laches fills this
gap. And for more than a century courts with virtual
unanimity have applied laches in patent damages cases.
Congress, when it wrote the 1952 statute, was aware of
and intended to codify that judicial practice. I fear that
the majority, in ignoring this legal history, opens a new
“gap” in the patent law, threatening harmful and unfair
legal consequences.
2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
I
Consider the relevant statutory language. Section 286
of the Patent Act says: “Except as otherwise provided by
law, no recovery shall be had for any infringement com-
mitted more than six years prior to the filing of the com-
plaint or counterclaim for infringement in the action.” 35
U.S. C. §286 (emphasis added). Section 282 says what
the word “otherwise” means. It tells us that “unenforcea-
bility” shall be a defense “in any action involving the
validity or infringement of a patent.” §282(b) (emphasis
added).
Two features of this statutory language are important.
First, the limitations provision, unlike those in many
other statutes, does not set forth a period of time in which
to sue, beginning when a claim accrues and then expiring
some time later. (The False Claims Act, for example, gives
a plaintiff six years from the date of the violation or three
years from the date of discovery to file his suit, 31 U.S. C.
§3731(b).) Rather, it permits a patentee to sue at any time
after an infringement takes place. It simply limits dam-
ages to those caused within the preceding six years. That
means that a patentee, after learning of a possible in-
fringement in year 1, might wait until year 10 or year 15
or year 20 to bring a lawsuit. And if he wins, he can col-
lect damages for the preceding six years of infringement.
This fact creates a gap. Why? Because a patentee
might wait for a decade or more while the infringer (who
perhaps does not know or believe he is an infringer) in-
vests heavily in the development of the infringing product
(of which the patentee’s invention could be only a small
component), while evidence that the infringer might use
to, say, show the patent is invalid disappears with time.
Then, if the product is a success, the patentee can bring
his lawsuit, hoping to collect a significant recovery. And if
business-related circumstances make it difficult or impos-
sible for the infringer to abandon its use of the patented
Cite as: 580 U. S. ____ (2017) 3
BREYER, J., dissenting
invention (i.e., if the infringer is “locked in”), then the
patentee can keep bringing lawsuits, say, in year 10 (col-
lecting damages from years 4 through 10), in year 16
(collecting damages from years 10 through 16), and in year
20 (collecting any remaining damages). The possibility of
this type of outcome reveals a “gap.” Laches works to fill
the gap by barring recovery when the patentee unreason-
ably and prejudicially delays suit.
Second, the Patent Act’s language strongly suggests
that Congress, when writing the statutory provisions
before us, intended to permit courts to continue to use
laches to fill this gap. The statute says that there are
“except[ions]” to its 6-year damages limitation rule. It
lists “unenforceability” as one of those exceptions. At
common law, the word “unenforceability” had a meaning
that encompassed laches. See, e.g., United States v. New
Orleans Pacific R. Co., 248 U.S. 507, 511 (1919) (consider-
ing whether an agreement “had become unenforceable by
reason of inexcusable laches”). We often read statutes as
incorporating common-law meanings. See Neder v. United
States, 527 U.S. 1, 21 (1999). And here there are good
reasons for doing so. For one thing, the principal technical
drafter of the Patent Act (in a commentary upon which
this Court has previously relied, e.g., Warner-Jenkinson
Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 28 (1997))
stated that §282 was meant to codify “equitable defenses
such as laches.” P. Federico, Commentary on the New
Patent Act, 35 U.S. C. A. 1, 55 (West 1954). For another
thing, there is a long history of prior case law that shows
with crystal clarity that Congress intended the statute to
keep laches as a defense.
II
The pre-1952 case law that I shall discuss is directly
relevant because, as this Court has recognized, the 1952
Patent Act was primarily intended to codify existing law.
4 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
See Halo Electronics v. Pulse Electronics, Inc., 579 U. S.
___, ___ (2016) (slip op., at 4); accord, H. R. Rep. No. 1923,
82d Cong., 2d Sess., 3 (1952) (stating that the “main pur-
pose” of the Patent Act was “codification and enactment”
of existing law); 98 Cong. Rec. 9323 (1952) (drafter of the
Act stating that it was generally intended to “codif[y] the
present patent laws”).
Now consider the existing law that the Patent Act’s
drafters intended the Act to reflect. The decisions that
find or say or hold that laches can bar monetary relief in
patent infringement actions stretch in a virtually unbro-
ken chain from the late 19th century through the Patent
Act’s enactment in 1952. They number in the dozens and
include every federal appeals court to have considered the
matter. (We have found only two contrary decisions, both
from the same District Court: Thorpe v. Wm. Filene’s Sons
Co., 40 F.2d 269 (Mass. 1930); and Concord v. Norton, 16
F. 477 (CC Mass. 1883).)
Here are the cases from the Federal Courts of Appeals
alone: Lukens Steel Co. v. American Locomotive Co., 197
F.2d 939, 941 (CA2 1952); Chicago Pneumatic Tool Co. v.
Hughes Tool Co., 192 F.2d 620, 625 (CA10 1951); Brennan
v. Hawley Prods. Co., 182 F.2d 945, 948 (CA7 1950);
Shaffer v. Rector Well Equip. Co., 155 F.2d 344, 345–347
(CA5 1946); Rome Grader & Mach. Corp. v. J. D. Adams
Mfg. Co., 135 F.2d 617, 619–620 (CA7 1943); France Mfg.
Co. v. Jefferson Elec. Co., 106 F.2d 605, 609–610 (CA6
1939); Universal Coin Lock Co. v. American Sanitary Lock
Co., 104 F.2d 781, 781–783 (CA7 1939); Union Shipbuild-
ing Co. v. Boston Iron & Metal Co., 93 F.2d 781, 783 (CA4
1938); Gillons v. Shell Oil Co. of Cal., 86 F.2d 600, 608–
610 (CA9 1936); Holman v. Oil Well Supply Co., 83 F.2d
538 (CA2 1936) (per curiam); Dock & Term. Eng. Co. v.
Pennsylvania R. Co., 82 F.2d 19, 19–20 (CA3 1936);
Banker v. Ford Motor Co., 69 F.2d 665, 666 (CA3 1934);
Westco-Chippewa Pump Co. v. Delaware Elec. & Supply
Cite as: 580 U. S. ____ (2017) 5
BREYER, J., dissenting
Co., 64 F.2d 185, 186–188 (CA3 1933); Window Glass
Mach. Co. v. Pittsburgh Plate Glass Co., 284 F. 645, 650–
651 (CA3 1933); Dwight & Lloyd Sintering Co. v.
Greenawalt, 27 F.2d 823, 827 (CA2 1928); George J. Meyer
Mfg. Co. v. Miller Mfg. Co., 24 F.2d 505, 507–508 (CA7
1928); Wolf Mineral Process Corp. v. Minerals Separation
N. Am. Corp., 18 F.2d 483, 490 (CA4 1927); Cummings v.
Wilson & Willard Mfg. Co., 4 F.2d 453, 455 (CA9 1925);
Ford v. Huff, 296 F. 652, 654–655 (CA5 1924); Wolf, Sayer
& Heller, Inc. v. United States Slicing Mach. Co., 261 F.
195, 197–198 (CA7 1919); A. R. Mosler & Co. v. Lurie, 209
F. 364, 371 (CA2 1913); Safety Car Heating & Lighting Co.
v. Consolidated Car Heating Co., 174 F. 658, 662 (CA2
1909) (per curiam); Richardson v. D. M. Osborne & Co., 93
F. 828, 830–831 (CA2 1899); and Woodmanse & Hewitt
Mfg. Co. v. Williams, 68 F. 489, 493–494 (CA6 1895).
The majority replies that this list proves nothing. After
all, it says, nearly all of these decisions come from courts
of equity. Courts of equity ordinarily applied laches “ ‘to
claims of an equitable cast for which the Legislature ha[d]
provided no fixed time limitation,’ ” ante, at 5 (quoting
Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. ___, ___
(2014) (slip op., at 12)), not to requests for damages, “a
quintessential legal remedy,” ante, at 3. Since “laches is a
gap-filling doctrine,” the fact that it was applied to equit-
able claims without statutes of limitations says little about
whether it should apply to legal damages claims when
“there is a statute of limitations,” and therefore “no gap to
fill.” Ante, at 5.
Good reply. But no cigar. Why not? (1) Because in
1897 Congress enacted a statute of limitations—very much
like the one before us now—for patent claims brought in
courts of equity. Ch. 391, §6, 29 Stat. 694 (“[I]n any suit or
action . . . there shall be no recovery of profits or damages
for any infringement committed more than six years be-
fore” filing). Thus, after 1897, there was no statute of
6 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
limitations gap for equity courts to fill, and yet they con-
tinued to hold that laches applied. See, e.g., France Mfg.,
supra, at 609 (“[N]otwithstanding the statute of limita-
tions, relief may be denied on the ground of laches . . . ”);
Dwight & Lloyd, supra, at 827 (Hand, J.) (explaining how
laches operates in conjunction with the statute of limit-
ations to allow an infringer to “garne[r] the harvest of
even the earliest of the 6 years to which recovery is in any
event limited, with just confidence that he will not be
disturbed”).
(2) Because in 1870 Congress enacted a statute that
gave courts of equity the power to award legal relief,
namely, damages, in patent cases. Act of July 8, 1870,
§55, 16 Stat. 206. Congress did not give law courts an
equivalent power to grant injunctive relief in patent suits.
As a result, from the late 19th century until the merger of
law and equity in 1938, nearly all patent litigation—
including suits for damages—took place in courts of equity
that were applying laches in conjunction with a statute of
limitations. See Lemley, Why Do Juries Decide If Patents
Are Valid? 99 Va. L. Rev. 1673, 1704 (2013) (discussing
the predominance of equity litigation).
(3) Because Congress recognized that damages suits for
patent infringement took place almost exclusively in
equity courts, not law courts. Whenever Congress wished
to modify patent damages law, it rewrote the statutory
provisions governing damages in equity, not law. See, e.g.,
§8, 42 Stat. 392 (modifying the equity damages statute to
allow equity courts to award a “reasonable sum” even if a
patentee had difficulty proving actual damages, but mak-
ing no change to the legal damages provision). The 1952
Congress, seeking to understand whether, or how, laches
applied in patent damages cases, would almost certainly
have looked to equity practice.
(4) Because, in any event, in those few pre-law/equity-
merger cases in which courts of law considered whether
Cite as: 580 U. S. ____ (2017) 7
BREYER, J., dissenting
laches could bar a patent damages action, they, like their
equity counterparts, held that it could. See Universal
Coin, 104 F.2d, at 781–783; Banker, 69 F.2d, at 666;
Ford, supra, at 658. As the majority points out, these
cases brought in law courts constitute “only a handful of
decisions.” Ante, at 13. But that is simply because, as I
just noted, almost all patent damages litigation took place
in courts of equity. Regardless, before the merger of law
and equity both law courts and equity courts recognized
laches as a defense. And, after the merger of law and
equity in 1938, federal courts still applied laches to patent
damages claims. E.g., Brennan, 182 F.2d, at 948 (holding
that “laches on the part of the plaintiff ” can “bar his right
to recover damages”). This, of course, would make no
sense if laches for patent damages was really an equity-
only rule.
Does the majority have any other good reason to ignore
the mountain of authority recognizing laches as a defense?
It refers to many general statements in opinions
and treatises that say that laches is “no defense at law.”
United States v. Mack, 295 U.S. 480, 489 (1935). But these
statements are not about patent damages cases. They do
not claim to encompass the problem at issue here. And
they do not prevent Congress from enacting a statute that,
recognizing patent litigation’s history, combines a statute
of limitations with a laches defense. And that is what
Congress has done in the Patent Act.
The majority also tries to discredit the persuasiveness of
the pre-Patent Act case law authority. It goes through the
lengthy list of decisions, finding some judicial statements
too vague, others just dicta, and still others having con-
fused an equitable claim for “accounting” with a legal
claim for “damages.” I agree that it has found weaknesses
in the reasoning of some individual cases. But those
weaknesses were not sufficient to prevent a 1951 treatise
writer from concluding, on the basis of the great weight of
8 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
authority, that in patent cases, “[l]aches . . . may be inter-
posed in an action at law.” 3 A. Deller, Walker on Patents
106 (Cum. Supp. 1951).
In any event, with all its efforts, the majority is unable
to identify a single case—not one—from any court of ap-
peals sitting in law or in equity before the merger, or
sitting after the merger but before 1952, holding that
laches could not bar a patent claim for damages. Fur-
thermore, the majority concedes that it is unable to distin-
guish, by my count, at least six Court of Appeals cases
directly holding that laches could bar a patent claim for
damages. See Wolf, Sayer & Heller, 261 F. 195; Lurie, 209
F. 364; Universal Coin, supra; Banker, 69 F.2d 665; Bren-
nan, supra; Lukens, 197 F.2d 939. And that is the case
law situation that Congress faced when it wrote a statute
that, as we have said, sought primarily to codify existing
patent law. See supra, at 3–4.
The majority tries to minimize the overall thrust of this
case law by dividing the cases into subgroups and then
concluding that the number of undistinguishable prece-
dents in each subgroup is “too few to establish a settled,
national consensus.” Ante, at 12. The problem with this
approach is that, once we look at the body of case law as a
whole, rather than in subgroups, we find what I have said
and repeated, namely, that all the cases say the same
thing: Laches applies. The majority’s insistence on subdi-
vision makes it sound a little like a Phillies fan who an-
nounces that a 9–0 loss to the Red Sox was a “close one.”
Why close? Because, says the fan, the Phillies lost each
inning by only one run.
For the sake of completeness I add that, since 1952,
every Federal Court of Appeals to consider the question
has held that laches remains available for damages claims
brought under the Patent Act. See A. C. Aukerman Co. v.
R. L. Chaides Constr. Co., 960 F.2d 1020, 1030 (CA Fed.
1992) (en banc). Yet, Congress has repeatedly reenacted
Cite as: 580 U. S. ____ (2017) 9
BREYER, J., dissenting
35 U.S. C. §282’s “unenforceability” language without
material change. See, e.g., §§15(a), 20(g)(2)(B), 125 Stat.
328, 334. See also Texas Dept. of Housing and Community
Affairs v. Inclusive Communities Project, Inc., 576 U. S.
___, ___ (2015) (slip op., at 14) (holding that congressional
reenactment provides “convincing support for the conclu-
sion that Congress accepted and ratified the unanimous
holdings of the Courts of Appeals”); Microsoft Corp. v. i4i
Ltd. Partnership, 564 U.S. 91, 113–114 (2011) (when
Congress has “often amended §282” while “le[aving] the
Federal Circuit’s interpretation of §282 in place,” any
further “recalibration” should be left to the Legislature).
III
The majority’s strongest argument is Petrella. There,
the Court held that laches could not bar a damages claim
brought within the Copyright Act’s limitations period.
The present case holds roughly the same in respect to the
Patent Act, providing a degree of consistency.
There are relevant differences, however, between patent
law and copyright law. For one thing, copyright law,
unlike patent law, does not contain a century and a half of
history during which courts held that laches and a statute
of limitations could coexist. When Congress enacted the
Patent Act in 1952, patent statutes had already contained
a 6-year statute of limitations for 55 years (since 1897),
during which time courts had continued to apply laches to
patent damages cases. Copyright law, on the other hand,
contained no federal statute of limitations until 1957. See
Petrella, 572 U. S., at ___ (slip op., at 3).
For another thing, the Copyright Act, unlike the Patent
Act, has express provisions that mitigate the unfairness of
a copyright holder waiting for decades to bring his lawsuit.
A copyright holder who tries to lie in wait to see if a de-
fendant’s investment will prove successful will discover
that the Copyright Act allows that defendant to “prove and
10 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
offset against . . . profits ‘deductible expenses’ incurred in
generating those profits.” Id., at ___ (slip op., at 12) (quot-
ing 17 U.S. C. §504(b)). Thus, if the defendant invests say
$50 million in a film, a copyright holder who waits until
year 15 (when the film begins to earn a profit) to bring a
lawsuit may be limited to recovering the defendant’s
profits less an apportioned amount of the defendant’s
initial $50 million investment. But the Patent Act has no
such deduction provision.
Further, the Court, in Petrella, pointed out that the
evidentiary loss that occurs while a copyright holder waits
to bring suit is “at least as likely to affect plaintiffs as it is
to disadvantage defendants.” 572 U. S., at ___ (slip op., at
18). But that symmetry does not exist to the same degree
in patent law. To win a copyright suit the copyright holder
must show that the defendant copied his work. The
death of witnesses and loss of documents from the time of
the alleged infringement can therefore significantly impair
the copyright holder’s ability to prove his case. There is no
such requirement in a patent suit. Patent infringement is
a strict-liability offense: There need not be any copying,
only an end product (or process) that invades the area the
patentee has carved out in his patent.
At the same time, the passage of time may well harm
patent defendants who wish to show a patent invalid by
raising defenses of anticipation, obviousness, or insuffi-
ciency. These kinds of defenses can depend upon contem-
poraneous evidence that may be lost over time, and they
arise far more frequently in patent cases than any of their
counterparts do in copyright cases. See Brief for Electronic
Frontier Foundation et al. as Amici Curiae 23 (reporting
that of all copyright cases pending as of January 2009,
only 2.7% of judgment events resulted in a finding of a
lack of ownership or validity of the copyright at issue);
Allison, Lemley, & Schwartz, Understanding the Realities
of Modern Patent Litigation, 92 Texas L. Rev. 1769, 1778,
Cite as: 580 U. S. ____ (2017) 11
BREYER, J., dissenting
1784–1785 (2014) (finding that 70% of summary judgment
motions in patent cases filed in 2008–2009 related to
anticipation or obviousness). The upshot is an absence
here of the symmetrical effect of delay upon which the
Court relied in Petrella.
Finally, there is a “lock-in” problem that is likely to be
more serious where patents are at issue. Once a business
chooses to rely on a particular technology, it can become
expensive to switch, even if it would have been cheap to do
so earlier. See Lee & Melamed, Breaking the Vicious
Cycle of Patent Damages, 101 Cornell L. Rev. 385, 409–
410 (2016). As a result, a patentee has considerable incen-
tive to delay suit until the costs of switching—and accord-
ingly the settlement value of a claim—are high. The
practical consequences of such delay can be significant, as
the facts of this case illustrate: First Quality invested
hundreds of millions of dollars in its allegedly infringing
technologies during the years that SCA waited to bring its
suit. App. to Pet. for Cert. 107a–108a. And amici have
provided numerous other examples that suggest this fact
pattern is far from uncommon. See Brief for Dell et al.
11–19.
I recognize the Majority’s suggestion that the doctrine of
“equitable estoppel” might help alleviate some of these
problems. See ante, at 15. I certainly hope so. But I
would be more “cautious before adopting changes that
disrupt the settled expectations of the inventing commu-
nity.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
535 U.S. 722, 739 (2002).
I add or confess that I believe that Petrella too was
wrongly decided. Today’s case helps illustrate why I think
that Petrella started this Court down the wrong track. I
would stop, finding adequate grounds to distinguish Pet-
rella. But the majority remains “determined to stay the
course and continue on, travelling even further away,”
Mathis v. United States, 579 U. S. ___, ___ (2016) (ALITO,
12 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST
QUALITY BABY PRODUCTS, LLC
BREYER, J., dissenting
J., dissenting) (slip op., at 9), from Congress’ efforts, in the
Patent Act, to promote the “Progress of Science and useful
Arts,” U. S. Const., Art. I, §8, cl. 8. Trite but true: Two
wrongs don’t make a right.
With respect, I dissent.