April 10

Supreme Court Declares Laches is Not a Defense to Patent Infringement Claims

Authors: Scott Lydon and Justin Durelli.

On March 21, 2017, the Supreme Court issued its opinion in SCA Hygiene Products Aktiebolag et al. v. First Quality Baby Products, LLC et al., 2017 U.S. LEXIS 2023 (2017), holding that the equitable defense of laches is not available as a defense against patent infringement claims. Until now, defendants were permitted to assert the laches defense against plaintiffs that unreasonably delayed bringing their lawsuit to the detriment of defendants.

SCA manufactures and sells adult incontinence products and owns U.S. Patent No. 6,375,646 (“the ‘646 patent”). In October of 2003, SCA sent a letter to First Quality alleging that First Quality was making and selling products that infringed the ‘646 patent, after which First Quality replied that the ‘646 patent was likely invalid over a prior art reference not cited during the prosecution of the ‘646 patent. In July of 2004, SCA voluntarily requested reexamination of the ‘646 patent in view of the recently discovered prior art. In March of 2007, the USPTO issued a certificate confirming the validity of the ‘646 patent. However, SCA did not file for patent infringement against First Quality until August of 2010, over three years after USPTO confirmed patentability of the patent and over six years after first communicating with First Quality about the ‘646 patent.

During the trial at the district court, First Quality successfully asserted the defense of laches against the claim of infringement of the ‘646 patent. SCA appealed to the Federal Circuit, where a panel of the Federal Circuit upheld the district court judgment that laches barred suit against First Quality. The full Federal Circuit agreed to hear the case en banc, and again the Federal Circuit affirmed the district court decision by a vote of 6-5.

The Supreme Court heard the case and reversed the Federal Circuit. In coming to its decision, the Supreme Court followed very similar reasoning as the reasoning the Court set forth in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), which resolved the same laches issue presented in this case, but for copyright claims. The Court essentially found that Congress left no room for the “gap-filling” defense of laches when it enacted the six-years statute of limitations provision contained in 35 U.S.C. § 286 for patent claims. Rather, the Court held that Congress has already provided a rule for determining when a claim for infringement is timely and there is no authority for the availability of the laches defense.

The takeaway from this decision is that patentees are no longer under the threat of losing their claim against infringers simply because they waited too long to bring suit. While patentees will still be limited to collecting only the previous six years worth of damages, it may be in their best interest to wait to bring suit until it is more convenient or advantageous to do so. Accordingly, infringers will need to be more cautious of older patents or else risk liability.

April 10

Supreme Court Limits Exporting Liability Under the Patent Act for Component Suppliers

Authors: Scott Lydon and Justin Durelli.

On February 22, 2017, the Supreme Court issued its opinion in Life Technologies Corporation, et al. v. Promega Corporation, 137 S. Ct. 734 (2017), holding that exporting a single component of a multicomponent invention from the United States does not trigger patent infringement liability under 35 U.S.C. § 271(f)(1). § 271(f)(1) of the Patent Act creates liability for infringement for whoever “supplies or causes to be supplied in or from the United States all or a substantial portion of components of a patented invention” and actively induces the combination of those components outside the United States such that the combination would infringe the patent if it were combined within the United States.

Promega was the exclusive licensee of U.S. Reissue Patent No. 37,984 (“the Tautz patent”), which covers a kit including five components for testing DNA, and sublicensed the Tautz patent to Life Technologies for law enforcement fields only. Life Technologies manufactured one of the five components of the Tautz patent, the Taq polymerase, in the United States and then exported the single component to its manufacturing facility in the United Kingdom where it was combined with the remaining four components for assembly.

After learning that Life Technologies was selling the patented DNA testing kits in fields not authorized under the license agreement, Promega sued Life Technologies for infringement of the Tautz patent under § 271(f)(1). Although the jury returned a verdict for Promega, the district court granted Life Technologies’s motion for judgement as a matter of law on the basis that infringement cannot be had under § 271(f)(1) when only one component of the asserted patent is supplied from the United States. The district court ruled that § 271(f)(1)’s language of “a substantial portion of components” does not extend to a single component.

On appeal, the Federal Circuit reversed the district court’s ruling. The Federal Circuit reasoned that the term “substantial” in § 271(f)(1) may include qualitative meanings such as “important” or “essential.” Thus, the Federal Circuit held that § 271(f)(1) could impose liability on suppliers of even a single component in or out of the United States if the component was an important component of the patented invention.

However, the Federal Circuit’s interpretation of § 271(f)(1) was short-lived as the Supreme Court heard the case and reversed the Federal Circuit decision. The Supreme Court agreed with the Federal Circuit that the term “substantial” in isolation could have a quantitative or qualitative meaning, but decided that the term “substantial” has a quantitative meaning in the context of statute. The Supreme Court also held that the supplying of a single component of a multicomponent invention can never be a substantial portion of components within the meaning of § 271(f)(1).

The takeaway from the Court’s decision is that suppliers of only a single component of patented inventions into and out of the United States may continue to operate without fear of being held liable for infringement under § 271(f)(1). Suppliers of more than a single component will need to remain cautious that the quantity of supplied components does not amount to a substantial portion of components of patented inventions. Conversely, patent applicants may want to consider changing their prosecution strategy to remove any non-essential components from their claims so that it may be easier to show that components supplied by suppliers constitute a substantial portion of components of the claimed invention.

May 11

Recent Supreme Court Oral Arguments

Authors: Scott Lydon and Christopher Messina.

The Supreme Court heard oral arguments in Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 on April 25th.

At issue is whether the Patent Trial and Appeal Board (“PTAB”) is correctly construing claims in an issued patent using their broadest reasonable interpretation rather than their plain and ordinary meaning. The narrower plain and ordinary meaning standard is used when construing claims in District Court litigation. A second issue, as a matter of separation of powers, is whether the Federal Circuit correctly held that PTAB decisions to institute inter partes review (IPR) are not judicially reviewable, even if the PTAB exceeds its statutory authority in instituting such proceedings. Currently, only a final written decision of the PTAB is reviewable by the Federal Circuit. 35 U.S.C. § 141(c).