Federal Circuit No. 2013-1564, September 18, 2015

The en banc Federal Circuit held that the defense of laches can still be used to bar the recovery of damages and/or injunction in patent cases even after U.S. Supreme Court's Petrella decision.

In Petrella, the Supreme Court held that the defense of laches is not a defense available in copyright infringement actions that are brought within the Copyright Act's statutory limitations period.  134 S. Ct. 1962 (2014).  The Court reasoned that laches is an equitable doctrine and courts, due to separation of powers concerns, could not disregard the timeliness of suit provisions specified by statute in the Copyright Act.

However, after reviewing the legislative history of the Patent Act, the Federal Circuit concluded that the defense of laches was codified in patent law and thus the laches is still available as a defense in patent infringement actions. The Federal Circuit further concluded that laches is available as a bar to pre-suit damages because Congress has remained silent on this issue while the common law before enactment of the 1952 Patent Act patent law allowed laches as a bar for pre-suit damages.

With respect to injunctive relief, the Federal Circuit stated that consideration of laches is a natural fit to the framework set forth in eBay for determining whether an injunction should issue.  The Court concluded that laches could thus be a factor resulting in a bar of permanent injunctive relief.  With respect to ongoing royalties, however, the Court focused on the distinction between laches and the doctrine of equitable estoppel to conclude that a patentee guilty of laches does not necessarily surrender its right to future royalty payments.