Justice returns patent Laches to Federal Circuit

In March the U.S. Supreme Court remanded to the Federal Circuits multiple appeals, including ones over Johnson & Johnson stent patents and Fossil watch parts, in light of the recent Supreme Court decision last week that laches is not a defense for many patent infringement cases.

In three cases the Supreme Court vacated the Federal Circuit judgements and directed the lower appellate court to reconsider the matters given the justices’ 7-1 judgements in SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al, that barred laches in many patent cases.

IN SCA Hygiene the Court ruled that, because the Patent Act only allows recovery of damages for infringement that transpired less than six year before the complaint was filed, laches cannot be a defense against damages where the infringement occurred within the period allowed by the statute.

In a copyright opinion from 2014 the Supreme Court in Petrella v. Metro-Goldwyn-Meyer Inc. decided, that because the Copyright Act sets a three-year statute of limitations during which claims must be bought, laches cannot be used to bar claims filed within that period. The high court had held that since the Copyright Act sets a three-year statute of limitations during which claims must be bought. A Patent Act of 1952 includes a similar, provision setting a six-year limit on past damages. And in SCA Hygiene, the high court held that the Petrella holding applies to patent law.

In the three cases the U.S. Supreme Court sent back to the Federal Circuit one involved Medinol Ltd. who in March 2013 sued Johnson & Johnson and its affiliate, Cordis Corp. alleging that two coronary stents sold by Cordis infringed four of its patents covering coronary stents that are used in balloon angioplasty procedures.

In another case, Acacia Research Corp. subsidiary Endotach LLC sued Cook Medical LLC in June 2012, alleging that Cook’s products violated two patents covering stent grafts used in the treatment of damaged heart arteries.

And in the last case, Romag Fasteners Inc. sued Fossil Inc. in 2010, claiming Fossil violated its trademarks and patents by using fake Romag magnetic snap fasteners on wallets and watches.

In all three cases the defendants invoked laches as a defense and the defendants were successful.

The Supreme Court did not address a second question posed by Romag in its August petition for certiorari, regarding whether, a trademark owner can be awarded an infringer’s profits in the situation where the defendant has not willfully infringed.
A federal jury found Fossil liable for both trademark and patent infringement in year 2014 after a seven-day trial. Though the jurors determined that Fossil had acted with “callous disregard” of Romag’s intellectual property rights, the jury did not find that the infringement was willful. Thereafter the judge refused to award the company Fossil’s profits. Last March the Federal Circuit affirmed the decision. The Federal Circuit had jurisdiction because of the patent issues but applied Second circuit trademark law.

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