If you are a small business owner, and have a reasonable belief that you may be infringing an issued patent, it is not uncommon, albeit not advisable, to plant the proverbial head in the sand. The hiring of a patent attorney for defense of a patent infringement claim can be an expensive undertaking for a small business. Indeed, a potential infringer may hope to operate under the radar of the patent holder, and to escape notice. Nevertheless, regardless of the value of infringement, Federal Statutes are quite generous in permitting patent holders to hold infringers liable for past infringement, including up to six years prior to the filing of the patent infringement suit.
Laches Defense Law
Figure 1 of the SCA Patent
Recently, the Supreme Court of the United States reviewed this aspect of patent law in SCA Hygiene Products v. First Quality Baby Products, 580 U. S. ____ (2017), which related to an infringement
of a patent covering adult incontinence products. SCA’S patent (Figure 1, reproduced above
, was subject to reexamination, which delayed the patent assertion claim. When the patent infringement suit was finally filed, First Quality asserted a laches defense.
The laches defense derives its origin from the old courts of equity, where the judges “free-styled” based upon, you guessed it, equity, i.e., fairness in the eyes of the judge. In short, the judges asserted the laches defense when the plaintiff delayed the suit to a point where the defendant was unfairly disadvantaged.
Patent Infringement Law
For patent infringement claims, Section 286 of the Patent Act states: “[e]xcept as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.” Based upon this statute, the Supreme Court tossed out First Quality’s laches defense, which had been successful in the two lower courts. In other words, the patent holder can sit on a claim for six years without rendering the patent infringement claim infringement claim unenforceable, which brings us back to the aforementioned small business owner.
With such a generous statute of limitations, any infringer of an issued patent has a long wait to be in the clear. And this says nothing of willful infringement, which can triple damages. Because of this, if you believe your small business is infringing an issued patent, it is critical that you seek counsel of a qualified patent attorney, who can advise you of potential avenues for defense.