IP Law Bulletin

Laches, an equitable doctrine that pre-dates the Patent Act (35 U.S.C. § 1, et seq.), bars relief when a plaintiff’s unreasonable delay in prosecuting a claim prejudices a defendant’s ability to defend itself. Invoking Petrella, the Court reasoned that the equitable remedy of laches cannot trump the “quintessential” legal remedy of damages when Congress has enacted a statute of limitations. Invoking separation-of-powers principles as well as “the traditional role of laches in equity,” the Court determined that, “[w]hen Congress enacts a statute of limitations, it speaks directly to the issue of timeliness and provides a rule for determining whether a claim is timely enough to permit relief.” Therefore, according to the Court, “[t]he 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.” With respect to the traditional role of laches, the Court stated that laches is historically a “gap-filling doctrine, and where there is a statute of limitations, there is no gap to fill.”

The Court’s opinion also considered and rejected the argument that 35 U.S.C. § 286, which provides a “Time Limitation on Damages,” is not a “true” statute of limitations. This argument, advanced by the Respondent and the Court’s lone dissenter, Justice Breyer, posited that § 286 is a “backwards-looking” statute that limits the period of damages, rather than barring relief altogether, and that 35 U.S.C. § 282(b)(1) provides a legal remedy of “unenforceability,” which incorporates laches. The Court dismissed the distinction between “forward-looking” and “backwards-looking” statutes of limitations, and, while passing on the question of whether Congress meant for § 282(b)(1) to incorporate a laches defense “of some dimension,” nevertheless rejected the idea that such a defense could be used to invoke a bar to damages incurring within the period set out in § 286.

This ruling is significant not only because it removes a robust, potentially dispositive defense to patent infringement, but also because it, in combination with Petrella, effectively vitiates the defense of laches to all federal causes of action that include a statute of limitations.