IP Law Bulletin

Last week, a sharply divided Federal Circuit, acting en banc (6-5), decided SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC to the delight of accused infringers. Laches remains a defense to damage claims in patent infringement cases, even for damages sustained within six years before filing suit, despite the Supreme Court’s decision last year in Petrella v. Metro-Goldwyn-Mayer, Inc., which eliminated that defense for damage claims in copyright cases. The Federal Circuit also overruled prior precedent and held that laches may bar prospective injunctive relief. As a result, patent owners should put alleged infringers on notice and not wait to pursue their claims.

Before the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange, L.L.C., it was axiomatic that, upon a showing of a likelihood of success on the merits, a trademark owner was entitled to a presumption of irreparable harm when moving for preliminary injunctive relief. But after eBay, there was no such presumption in patent cases, leaving the question open whether the presumption would apply in trademark cases. Just a few weeks ago, on October 6, 2014, the Supreme Court denied certiorari in Herb Reed Enters., LLC v. Florida Entm. Mgmt., Inc., in which the Ninth Circuit held that trademark owners are not entitled to a presumption of irreparable harm simply by making a preliminary showing of a good case on the merits. Accordingly, the Supreme Court has left it to the circuits to resolve the presumption question in trademark cases, at least for now, causing litigants to query what evidence will suffice to establish irreparable harm without the presumption and to consider the prevailing law in the various circuits when choosing a forum.