SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

(Slip Opinion) OCTOBER TERM, 2016 1

Syllabus

NOTE: Where it is feasible, a syllabus (headnote) will be released, as is

being done in connection with this case, at the time the opinion is issued.

The syllabus constitutes no part of the opinion of the Court but has been

prepared by the Reporter of Decisions for the convenience of the reader.

See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.

SUPREME COURT OF THE UNITED STATES

Syllabus

SCA HYGIENE PRODUCTS AKTIEBOLAG ET AL. v.

FIRST QUALITY BABY PRODUCTS, LLC, ET AL.

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR

THE FEDERAL CIRCUIT

No. 15–927. Argued November 1, 2016—Decided March 21, 2017

In 2003, petitioners (collectively, SCA) notified respondents (collective-

ly, First Quality) that their adult incontinence products infringed an

SCA patent. First Quality responded that its own patent antedated

SCA’s patent and made it invalid. In 2004, SCA sought reexamina-

tion of its patent in light of First Quality’s patent, and in 2007, the

Patent and Trademark Office confirmed the SCA patent’s validity.

SCA sued First Quality for patent infringement in 2010. The District

Court granted summary judgment to First Quality on the grounds of

equitable estoppel and laches. While SCA’s appeal was pending, this

Court held that laches could not preclude a claim for damages in-

curred within the Copyright Act’s 3-year limitations period. Petrella

v. Metro-Goldwyn-Mayer, Inc., 572 U. S. ___, ___. A Federal Circuit

panel nevertheless affirmed the District Court’s laches holding based

on Circuit precedent, which permitted laches to be asserted against a

claim for damages incurred within the Patent Act’s 6-year limitations

period, 35 U. S. C. §286. The en banc court reheard the case in light

of Petrella and reaffirmed the original panel’s laches holding.

Held: Laches cannot be invoked as a defense against a claim for dam-

ages brought within §286’s 6-year limitations period. Pp. 3–16.

(a) Petrella’s holding rested on both separation-of-powers principles

and the traditional role of laches in equity. A statute of limitations

reflects a congressional decision that timeliness is better judged by a

hard and fast rule instead of a case-specific judicial determination.

Applying laches within a limitations period specified by Congress

would give judges a “legislation-overriding” role that exceeds the Ju-

diciary’s power. 572 U. S., at ___. Moreover, applying laches within

a limitations period would clash with the gap-filling purpose for

2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Syllabus

which the defense developed in the equity courts. Pp. 3–5.

(b) Petrella’s reasoning easily fits §286. There, the Court found in

the Copyright Act’s language a congressional judgment that a claim

filed within three years of accrual cannot be dismissed on timeliness

grounds. 572 U. S., at ___. By that same logic, §286 of the Patent

Act represents Congress’s judgment that a patentee may recover

damages for any infringement committed within six years of the fil-

ing of the claim.

First Quality contends that this case differs from Petrella because a

true statute of limitations runs forward from the date a cause of ac-

tion accrues, whereas §286’s limitations period runs backward from

the filing of the complaint. However, Petrella repeatedly character-

ized the Copyright Act’s limitations period as running backward from

the date the suit was filed. First Quality also contends that a true

statute of limitations begins to run when the plaintiff discovers a

cause of action, which is not the case with §286’s limitations period,

but ordinarily, a statute of limitations begins to run on the date that

the claim accrues, not when the cause of action is discovered. Pp. 5–

8.

(c) The Federal Circuit based its decision on the idea that §282 of

the Patent Act, which provides for “defenses in any action involving

the validity or infringement of a patent,” creates an exception to §286

by codifying laches as such a defense, and First Quality argues that

laches is a defense within §282(b)(1) based on “unenforceability.”

Even assuming that §282(b)(1) incorporates a laches defense of some

dimension, it does not necessarily follow that the defense may be in-

voked to bar a claim for damages incurred within the period set out

in §286. Indeed, it would be exceedingly unusual, if not unprecedent-

ed, if Congress chose to include in the Patent Act both a statute of

limitations for damages and a laches provision applicable to a dam-

ages claim. Neither the Federal Circuit, nor any party, has identified

a single federal statute that provides such dual protection against

untimely claims. Pp. 8–9.

(d) The Federal Circuit and First Quality rely on lower court patent

cases decided before the 1952 Patent Act to argue that §282 codified a

pre-1952 practice of permitting laches to be asserted against damages

claims. But the most prominent feature of the relevant legal land-

scape at that time was the well-established rule that laches cannot be

invoked to bar a claim for damages incurred within a limitations pe-

riod specified by Congress. In light of this rule, which Petrella con-

firmed and restated, 572 U. S., at ___, nothing less than a broad and

unambiguous consensus of lower court decisions could support the in-

ference that §282(b)(1) codifies a very different patent-law-specific

rule. Pp. 9–10.

Cite as: 580 U. S. ____ (2017) 3

Syllabus

(e) The Federal Circuit and First Quality rely on three types of cas-

es: (1) pre-1938 equity cases; (2) pre-1938 claims at law; and (3) cases

decided after the merger of law and equity in 1938. None of these es-

tablishes a broad, unambiguous consensus in favor of applying laches

to damages claims in the patent context.

Many of the pre-1938 equity cases do not even reveal whether the

plaintiff asked for damages, and of the cases in which damages were

sought, many merely suggest in dicta that laches might limit damag-

es. The handful of cases that apply laches against a damages claim

are too few to establish a settled, national consensus. In any event,

the most that can possibly be gathered from a pre-1938 equity case is

that laches could defeat a damages claim in an equity court, not that

the defense could entirely prevent a patentee from recovering damag-

es.

Similarly, even if all three pre-1938 cases at law cited by First

Quality squarely held that laches could be applied to a damages

claim within the limitations period, that number would be insuffi-

cient to overcome the presumption that Congress legislates against

the background of general common-law principles. First Quality ar-

gues that the small number of cases at law should not count against

its position because there were few patent cases brought at law after

1870, but it is First Quality’s burden to show that Congress departed

from the traditional common-law rule.

As for the post-1938 patent case law, there is scant evidence sup-

porting First Quality’s claim that courts continued to apply laches to

damages claims after the merger of law and equity. Only two Courts

of Appeals held that laches could bar a damages claim, and that does

not constitute a settled, uniform practice of applying laches to dam-

ages claims. Pp. 11–15.

(f) First Quality’s additional arguments are unconvincing and do

not require extended discussion. It points to post-1952 Court of Ap-

peals decisions holding that laches can be invoked as a defense

against a damages claim, but nothing that Congress has done since

1952 has altered §282’s meaning. As for the various policy argu-

ments presented here, this Court cannot overrule Congress’s judg-

ment based on its own policy views. Pp. 15–16.

807 F. 3d 1311, vacated in part and remanded.

ALITO, J., delivered the opinion of the Court, in which ROBERTS, C. J.,

and KENNEDY, THOMAS, GINSBURG, SOTOMAYOR, and KAGAN, JJ., joined.

BREYER, J., filed a dissenting opinion.

Cite as: 580 U. S. ____ (2017) 1

Opinion of the Court

NOTICE: This opinion is subject to formal revision before publication in the

preliminary print of the United States Reports. Readers are requested to

notify the Reporter of Decisions, Supreme Court of the United States, Wash-

ington, D. C. 20543, of any typographical or other formal errors, in order

that corrections may be made before the preliminary print goes to press.

SUPREME COURT OF THE UNITED STATES

_________________

No. 15–927

_________________

SCA HYGIENE PRODUCTS AKTIEBOLAG, ET AL.,

PETITIONERS v. FIRST QUALITY BABY

PRODUCTS, LLC, ET AL.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

[March 21, 2017]

JUSTICE ALITO delivered the opinion of the Court.

We return to a subject that we addressed in Petrella v.

Metro-Goldwyn-Mayer, Inc., 572 U. S. ___ (2014): the

relationship between the equitable defense of laches and

claims for damages that are brought within the time

allowed by a statute of limitations. In Petrella, we held

that laches cannot preclude a claim for damages incurred

within the Copyright Act’s 3-year limitations period. Id.,

at ___ (slip op., at 1). “[L]aches,” we explained, “cannot be

invoked to bar legal relief ” “[i]n the face of a statute of

limitations enacted by Congress.” Id., at ___ (slip op., at

13). The question in this case is whether Petrella’s reason-

ing applies to a similar provision of the Patent Act, 35

U. S. C. §286. We hold that it does.

I

Petitioners SCA Hygiene Products Aktiebolag and SCA

Personal Care, Inc. (collectively, SCA), manufacture and

sell adult incontinence products. In October 2003, SCA

sent a letter to respondents (collectively, First Quality),

alleging that First Quality was making and selling prod-

2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

ucts that infringed SCA’s rights under U. S. Patent No.

6,375,646 B1 (’646 patent). App. 54a. First Quality re-

sponded that one of its patents—U. S. Patent No.

5,415,649 (Watanabe patent)—antedated the ’646 patent

and revealed “the same diaper construction.” Id., at 53a.

As a result, First Quality maintained, the ’646 patent was

invalid and could not support an infringement claim. Ibid.

SCA sent First Quality no further correspondence regard-

ing the ’646 patent, and First Quality proceeded to develop

and market its products.

In July 2004, without notifying First Quality, SCA

asked the Patent and Trademark Office (PTO) to initiate a

reexamination proceeding to determine whether the ’646

patent was valid in light of the Watanabe patent. Id., at

49a–51a. Three years later, in March 2007, the PTO

issued a certificate confirming the validity of the ’646

patent.

In August 2010, SCA filed this patent infringement

action against First Quality. First Quality moved for

summary judgment based on laches and equitable estop-

pel, and the District Court granted that motion on both

grounds. 2013 WL 3776173, *12 (WD Ky., July 16, 2013).

SCA appealed to the Federal Circuit, but before the

Federal Circuit panel issued its decision, this Court de-

cided Petrella. The panel nevertheless held, based on a Fed-

eral Circuit precedent, A. C. Aukerman Co. v. R. L.

Chaides Constr. Co., 960 F. 2d 1020 (1992) (en banc), that

SCA’s claims were barred by laches.1

The Federal Circuit then reheard the case en banc in

order to reconsider Aukerman in light of Petrella. But in a

6-to-5 decision, the en banc court reaffirmed Aukerman’s

holding that laches can be asserted to defeat a claim for

——————

1 The panel reversed the District Court’s holding on equitable estop-

pel, concluding that there are genuine disputes of material fact relating

to that defense. 767 F. 3d 1339, 1351 (2014).

Cite as: 580 U. S. ____ (2017) 3

Opinion of the Court

damages incurred within the 6-year period set out in the

Patent Act. As it had in Aukerman, the en banc court

concluded that Congress, in enacting the Patent Act, had

“codified a laches defense” that “barred recovery of legal

remedies.” 807 F. 3d 1311, 1323–1329 (2015). Judge

Hughes, joined by four other judges, dissented.2 Id., at

1337–1342 (opinion concurring in part and dissenting in

part). We granted certiorari. 578 U. S. ___ (2016).

II

Laches is “a defense developed by courts of equity” to

protect defendants against “unreasonable, prejudicial

delay in commencing suit.” Petrella, supra, at ___, ___

(slip op., at 1, 12). See also 1 D. Dobbs, Law of Remedies

§2.3(5), p. 89 (2d ed. 1993) (Dobbs) (“The equitable doc-

trine of laches bars the plaintiff whose unreasonable delay

in prosecuting a claim or protecting a right has worked a

prejudice to the defendant”). Before the separate systems

of law and equity were merged in 1938, the ordinary rule

was that laches was available only in equity courts.3 See

County of Oneida v. Oneida Indian Nation of N. Y., 470

U. S. 226, 244, n. 16 (1985). This case turns on the appli-

cation of the defense to a claim for damages, a quintessen-

tial legal remedy. We discussed this subject at length in

——————

2 The dissenting judges concurred in the portion of the majority opin-

ion relating to the application of laches to equitable relief. 807 F. 3d, at

1333, n. 1 (opinion of Hughes, J.); see also id., at 1331–1333 (majority

opinion). We do not address that aspect of the Federal Circuit’s judg-

ment. Nor do we address the Federal Circuit’s reversal of the District

Court’s equitable estoppel holding. Id., at 1333 (reinstating original

panel holding on equitable estoppel).

3 “The federal courts always had equity powers as well as law power,

but they operated, until the Federal Rules of Civil Procedure, by

distinctly separating equity cases and even had separate equity rules.”

1 Dobbs §2.6(1), at 148, n. 2; see also Gulfstream Aerospace Corp. v.

Mayacamas Corp., 485 U. S. 271, 279 (1988). It is in this sense that we

refer in this opinion to federal courts as equity or law courts.

4 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

Petrella.

Petrella arose out of a copyright dispute relating to the

film Raging Bull. 572 U. S., at ___ (slip op., at 8). The

Copyright Act’s statute of limitations requires a copyright

holder claiming infringement to file suit “within three

years after the claim accrued.” 17 U. S. C. §507(b). In

Petrella, the plaintiff sought relief for alleged acts of in-

fringement that accrued within that 3-year period, but the

lower courts nevertheless held that laches barred her

claims. See 695 F. 3d 946 (CA9 2012). We reversed,

holding that laches cannot defeat a damages claim

brought within the period prescribed by the Copyright

Act’s statute of limitations. Petrella, 572 U. S., at ___–___

(slip op., at 11–14). And in so holding, we spoke in broad

terms. See id., at ___ (slip op., at 13) (“[I]n the face of a

statute of limitations enacted by Congress, laches cannot

be invoked to bar legal relief ”).

Petrella’s holding rested on both separation-of-powers

principles and the traditional role of laches in equity.

Laches provides a shield against untimely claims, id., at

___ (slip op., at 19), and statutes of limitations serve a

similar function. When Congress enacts a statute of limi-

tations, it speaks directly to the issue of timeliness and

provides a rule for determining whether a claim is timely

enough to permit relief. Id., at ___ (slip op., at 11). The

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.

Therefore, applying laches within a limitations period

specified by Congress would give judges a “legislation-

overriding” role that is beyond the Judiciary’s power. Id.,

at ___ (slip op., at 14). As we stressed in Petrella, “courts

are not at liberty to jettison Congress’ judgment on the

timeliness of suit.” Id., at ___ (slip op., at 1).

Cite as: 580 U. S. ____ (2017) 5

Opinion of the Court

Applying laches within the limitations period would also

clash with the purpose for which the defense developed in

the equity courts. As Petrella recounted, the “principal

application” of laches “was, and remains, to claims of an

equitable cast for which the Legislature has provided no

fixed time limitation.” Id., at ___ (slip op., at 12); see also

R. Weaver, E. Shoben, & M. Kelly, Principles of Remedies

Law 21 (2d ed. 2011); 1 Dobbs §2.4(4), at 104; 1 J. Story,

Commentaries on Equity Jurisprudence §55(a), p. 73 (2d

ed. 1839). Laches is a gap-filling doctrine, and where

there is a statute of limitations, there is no gap to fill.4

Petrella, supra, at ___ (slip op., at 14); see also 1 Dobbs

§2.4(4), at 108 (“[I]f the plaintiff has done only what she is

permitted to do by statute, and has not misled the defend-

ant [so as to trigger equitable estoppel], the basis for

barring the plaintiff seems to have disappeared”).

With Petrella’s principles in mind, we turn to the pre-

sent dispute.

III

A

Although the relevant statutory provisions in Petrella

and this case are worded differently, Petrella’s reasoning

easily fits the provision at issue here. As noted, the stat-

ute in Petrella precludes a civil action for copyright in-

fringement “unless it is commenced within three years

——————

4 The dissent argues that there is a “gap” in the statutory scheme

because the Patent Act’s statute of limitations might permit a patentee

to wait until an infringing product has become successful before suing

for infringement. Post, at 2–3 (opinion of BREYER, J.). We rejected a

version of this argument in Petrella, 572 U. S., at ___–___ (slip op., at

16–17), and we do so here. The dissent’s argument implies that, insofar

as the lack of a laches defense could produce policy outcomes judges

deem undesirable, there is a “gap” for laches to fill, notwithstanding the

presence of a statute of limitations. That is precisely the kind of

“legislation-overriding” judicial role that Petrella rightly disclaimed.

Id., at ___ (slip op., at 14).

6 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

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Opinion of the Court

after the claim accrued.” 17 U. S. C. §507(b). We saw in

this language a congressional judgment that a claim filed

within three years of accrual cannot be dismissed on time-

liness grounds. 572 U. S., at ___ (slip op., at 11); see also

id., at ___–___ (slip op., at 14–15).

The same reasoning applies in this case. Section 286 of

the Patent Act provides: “Except as otherwise provided by

law, no recovery shall be had for any infringement com-

mitted more than six years prior to the filing of the com-

plaint or counterclaim for infringement in the action.” By

the logic of Petrella, we infer that this provision represents

a judgment by Congress that a patentee may recover

damages for any infringement committed within six years

of the filing of the claim.

B

First Quality contends that this case differs from Pet-

rella because §286 of the Patent Act is not a true statute of

limitations. A true statute of limitations, we are told,

“runs forward from the date a cause of action accrues,” but

§286 “runs backward from the time of suit.” Brief for

Respondents 41.

Petrella cannot reasonably be distinguished on this

ground. First Quality thinks it critical that §286 “runs

backward from the time of suit,” Brief for Respondents 41,

but Petrella described the Copyright Act’s statute of limi-

tations in almost identical terms. We said that this provi-

sion “allows plaintiffs . . . to gain retrospective relief run-

ning only three years back from the date the complaint was

filed.” 572 U. S., at ___ (slip op., at 6–7) (emphasis added).

See also id., at ___ (slip op., at 11) (“[A] successful plaintiff

can gain retrospective relief only three years back from

the time of suit”). And we described the Copyright Act’s

statute of limitations as “a three-year look-back limita-

tions period.” Id., at ___ (slip op., at 4).

First Quality contends that the application of a true

Cite as: 580 U. S. ____ (2017) 7

Opinion of the Court

statute of limitations, like the defense of laches (but unlike

§286), takes into account the fairness of permitting the

adjudication of a particular plaintiff ’s claim. First Quality

argues as follows: “When Congress enacts [a true statute

of limitations], it can be viewed as having made a consid-

ered judgment about how much delay may occur after a

plaintiff knows of a cause of action (i.e., after accrual)

before the plaintiff must bring suit—thus potentially

leaving no room for judges to evaluate the reasonableness

of a plaintiff ’s delay on a case-by-case basis under laches.”

Brief for Respondents 42. According to First Quality, §286

of the Patent Act is different because it “turns only on

when the infringer is sued, regardless of when the pat-

entee learned of the infringement.” Ibid.

This argument misunderstands the way in which stat-

utes of limitations generally work. First Quality says that

the accrual of a claim, the event that triggers the running

of a statute of limitations, occurs when “a plaintiff knows

of a cause of action,” ibid., but that is not ordinarily true.

As we wrote in Petrella, “[a] claim ordinarily accrues

‘when [a] plaintiff has a complete and present cause of

action.’ ” 572 U. S., at ___ (slip op., at 4); see Graham

County Soil & Water Conservation Dist. v. United States

ex rel. Wilson, 545 U. S. 409, 418–419 (2005). While some

claims are subject to a “discovery rule” under which the

limitations period begins when the plaintiff discovers or

should have discovered the injury giving rise to the claim,

that is not a universal feature of statutes of limitations.

See, e.g., ibid. (limitations period in 31 U. S. C. §3731(b)(1)

begins to run when the cause of action accrues); TRW Inc.

v. Andrews, 534 U. S. 19, 28 (2001) (same with regard to

15 U. S. C. §1681p). And in Petrella, we specifically noted

that “we have not passed on the question” whether the

Copyright Act’s statute of limitations is governed by such

a rule. 572 U. S., at ___, n. 4 (slip op., at 4, n. 4).

For these reasons, Petrella cannot be dismissed as appli-

8 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

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Opinion of the Court

cable only to what First Quality regards as true statutes of

limitations. At least for present purposes, nothing de-

pends on this debatable taxonomy. Compare Automobile

Workers v. Hoosier Cardinal Corp., 383 U. S. 696, 704

(1966) (describing §286 as “enacting a uniform period of

limitations”); 1 Dobbs §2.4(4), at 107, and n. 33 (same),

with A. Stucki Co. v. Buckeye Steel Castings Co., 963 F. 2d

360, 363, n. 3 (CA Fed. 1992) (Section 286 “is not, strictly

speaking, a statute of limitations”); Standard Oil Co. v.

Nippon Shokubai Kagaku Co., Ltd., 754 F. 2d 345, 348

(CA Fed. 1985) (“[Section] 286 cannot properly be called a

‘statute of limitations’ in the sense that it defeats the right

to bring suit”).

C

The Federal Circuit based its decision on a different

footing. Section 286 of the Patent Act begins with the

phrase “[e]xcept as otherwise provided by law,” and ac-

cording to the Federal Circuit, §282 of the Act is a provi-

sion that provides otherwise. In its view, §282 creates an

exception to §286 by codifying laches as a defense to all

patent infringement claims, including claims for damages

suffered within §286’s 6-year period. 807 F. 3d, at 1329–

1330. Section 282(b), which does not specifically mention

laches, provides in relevant part as follows:

“The following shall be defenses in any action involv-

ing the validity or infringement of a patent and shall

be pleaded:

“(1) Noninfringement, absence of liability for in-

fringement or unenforceability.”

The en banc majority below never identified which word

or phrase in §282 codifies laches as a defense, but First

Quality argues that laches falls within §282(b)(1) because

laches is a defense based on “unenforceability.” Brief for

Respondents 28–33.

Cite as: 580 U. S. ____ (2017) 9

Opinion of the Court

SCA disputes this interpretation of §282(b)(1), arguing

that laches does not make a patent categorically unen-

forceable. Reply Brief 6–8; see Aukerman, 960 F. 2d, at

1030 (“Recognition of laches as a defense . . . does not

affect the general enforceability of the patent against

others”). We need not decide this question. Even if we

assume for the sake of argument that §282(b)(1) incorpo-

rates a laches defense of some dimension, it does not nec-

essarily follow that this defense may be invoked to bar a

claim for damages incurred within the period set out in

§286. Indeed, it would be exceedingly unusual, if not

unprecedented, if Congress chose to include in the Patent

Act both a statute of limitations for damages and a laches

provision applicable to a damages claim. Neither the

Federal Circuit, nor First Quality, nor any of First Quali-

ty’s amici has identified a single federal statute that pro-

vides such dual protection against untimely claims.

D

In holding that Congress codified a damages-limiting

laches defense, the Federal Circuit relied on patent cases

decided by the lower courts prior to the enactment of the

Patent Act. After surveying these cases, the Federal

Circuit concluded that by 1952 there was a well-

established practice of applying laches to such damages

claims and that Congress, in adopting §282, must have

chosen to codify such a defense in §282(b)(1). 807 F. 3d, at

1321–1329. First Quality now presses a similar argu-

ment. We have closely examined the cases on which the

Federal Circuit and First Quality rely, and we find that

they are insufficient to support the suggested interpreta-

tion of the Patent Act. The most prominent feature of the

relevant legal landscape at the time of enactment of the

Patent Act was the well-established general rule, often

repeated by this Court, that laches cannot be invoked to

bar a claim for damages incurred within a limitations

10 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

period specified by Congress. See Holmberg v. Armbrecht,

327 U. S. 392, 395 (1946) (“If Congress explicitly puts a

limit upon the time for enforcing a right which it created,

there is an end of the matter”); United States v. Mack, 295

U. S. 480, 489 (1935) (“Laches within the term of the

statute of limitations is no defense at law”); Wehrman v.

Conklin, 155 U. S. 314, 326 (1894) (“Though a good de-

fense in equity, laches is no defense at law. If the plaintiff

at law has brought his action within the period fixed by

the statute of limitations, no court can deprive him of his

right to proceed”); Cross v. Allen, 141 U. S. 528, 537 (1891)

(“So long as the demands secured were not barred by the

statute of limitations, there could be no laches in prosecut-

ing a suit”). Petrella confirmed and restated this long-

standing rule. 572 U. S., at ___ (slip op., at 12) (“[T]his

Court has cautioned against invoking laches to bar legal

relief ”). If Congress examined the relevant legal land-

scape when it adopted 35 U. S. C. §282, it could not have

missed our cases endorsing this general rule.

The Federal Circuit and First Quality dismiss the signif-

icance of this Court’s many reiterations of the general rule

because they were not made in patent cases. But as the

dissenters below noted, “[p]atent law is governed by the

same common-law principles, methods of statutory inter-

pretation, and procedural rules as other areas of civil

litigation.” 807 F. 3d, at 1333 (opinion of Hughes, J.).

In light of the general rule regarding the relationship

between laches and statutes of limitations, nothing less

than a broad and unambiguous consensus of lower court

decisions could support the inference that §282(b)(1) codi-

fies a very different patent-law-specific rule. No such

consensus is to be found.5

——————

5 Because we conclude that First Quality fails to show that there was

a special laches rule in the patent context, we need not address whether

it is ever reasonable to assume that Congress legislated against the

Cite as: 580 U. S. ____ (2017) 11

Opinion of the Court

IV

The pre-1952 cases on which First Quality relies fall

into three groups: (1) cases decided by equity courts before

1938; (2) cases decided by law courts before 1938; and (3)

cases decided after the merger of equity and law in 1938.

We will discuss each group separately.

A

Pre-1938 equity cases

The pre-1938 equity cases are unpersuasive for several,

often overlapping reasons. Many do not even reveal

whether the plaintiff asked for damages. Indeed, some

say nothing at all about the form of relief that was sought,

see, e.g., Cummings v. Wilson & Willard Mfg. Co., 4 F. 2d

453 (CA9 1925), and others state only that the plaintiff

wanted an accounting of profits, e.g., Westco-Chippewa

Pump Co. v. Delaware Elec. & Supply Co., 64 F. 2d 185,

186 (CA3 1933); Wolf Mineral Process Corp. v. Minerals

Separation North Am. Corp., 18 F. 2d 483, 484 (CA4 1927).

The equitable remedy of an accounting, however, was not

the same as damages. The remedy of damages seeks to

compensate the victim for its loss, whereas the remedy of

an accounting, which Congress abolished in the patent

context in 1946,6 sought disgorgement of ill-gotten profits.

See Birdsall v. Coolidge, 93 U. S. 64, 68–69 (1876); 1

Dobbs §4.3(5), at 611 (“Accounting holds the defendant

liable for his profits, not for damages”); A. Walker, Patent

——————

background of a lower court consensus rather than the contrary deci-

sions of this Court. Cf. 807 F. 3d, at 1338 (opinion of Hughes, J.) (“For

even if there were differing views in the lower [federal] courts, it would

be nearly impossible to conclude that there was a uniform understand-

ing of the common law that was inconsistent with Supreme Court

precedent. In our judicial system, the Supreme Court's understanding

is controlling”).

6 See 60 Stat. 778; see also Aro Mfg. Co. v. Convertible Top Replace-

ment Co., 377 U. S. 476, 505 (1964).

12 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

Laws §573, p. 401 (1886) (distinguishing between the two

remedies); G. Curtis, Law of Patents §341(a), p. 461 (4th

ed. 1873); 2 J. Pomeroy, Treatise on Equitable Remedies

§568, p. 977 (1905).

First Quality argues that courts sometimes used the

term “accounting” imprecisely to refer to both an account-

ing of profits and a calculation of damages, Brief for Re-

spondents 19–20, but even if that is true, this loose usage

shows only that a reference to “accounting” might refer to

damages. For that reason, the Federal Circuit did not rely

on cases seeking only an accounting, 807 F. 3d, at 1326,

n. 7, and we likewise exclude such cases from our analysis.

Turning to the cases that actually refer to damages,

we note that many of the cases merely suggest in dicta

that laches might limit recovery of damages. See, e.g.,

Hartford-Empire Co. v. Swindell Bros., 96 F. 2d 227, 233,

modified on reh’g, 99 F. 2d 61 (CA4 1938). Such dicta

“settles nothing.” Jama v. Immigration and Customs

Enforcement, 543 U. S. 335, 351, n. 12 (2005). See also

Hartford Underwriters Ins. Co. v. Union Planters Bank,

N. A., 530 U. S. 1, 9–10 (2000); Metropolitan Stevedore Co.

v. Rambo, 515 U. S. 291, 300 (1995).

As for the cases in which laches was actually held to bar

a claim for damages, e.g., Wolf, Sayer & Heller v. United

States Slicing Mach. Co., 261 F. 195, 197–198 (CA7 1919);

A. R. Mosler & Co. v. Lurie, 209 F. 364, 369–370 (CA2

1913), these cases are too few to establish a settled,

national consensus. See Hartford Underwriters, supra,

at 10.

Moreover, the most that can possibly be gathered from a

pre-1938 equity case is that laches could defeat a damages

claim in an equity court, not that the defense could en-

tirely prevent a patentee from recovering damages. Before

1870, a patentee wishing to obtain both an injunction

against future infringement and damages for past in-

fringement was required to bring two suits, one in an

Cite as: 580 U. S. ____ (2017) 13

Opinion of the Court

equity court (where injunctive relief but not damages was

available), and one in a court of law (where damages but

not injunctive relief could be sought). See Beauchamp,

The First Patent Litigation Explosion, 125 Yale L. J. 848,

913–914 (2016). To rectify this situation, Congress en-

acted a law in 1870 authorizing equity courts to award dam-

ages in patent-infringement actions. Rev. Stat. §4921.

And although statutes of limitations did not generally

apply in equity, Congress in 1897 enacted a statute that,

like the current §286, imposed a 6-year limitations period

for damages claims and made that statute applicable in

both law and equity. §6, 29 Stat. 694. Pointing to cases

decided between 1897 and 1938 in which an equity court

permitted a defendant in an infringement case to invoke

the defense of laches, First Quality contends that Con-

gress, aware of these cases, assumed that the 1952 Act

would likewise allow a defendant in an infringement case

to claim laches with respect to a claim for damages occur-

ring within a limitations period.

This argument overlooks the fact that a patentee, dur-

ing the period in question, could always sue for damages

in law, where the equitable doctrine of laches did not

apply, and could thus avoid any possible laches defense.

Thus, accepting First Quality’s argument would not return

patentees to the position they held from 1897 to 1938.

Instead, it would go much further and permit laches en-

tirely to defeat claims like SCA’s.7

B

Pre-1938 claims at law

First Quality cites three Court of Appeals cases in which

——————

7 The dissent misunderstands this point and thinks that we dismiss

the relevance of the equity cases because they applied laches “to equi-

table claims without statutes of limitations.” Post, at 5. But we are

well aware that a statute of limitations applied in equity when these

cases arose. See supra, at 13.

14 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

laches was raised in a proceeding at law and in which,

according to First Quality, the defense was held to bar a

damages claim. See Universal Coin Lock Co. v. American

Sanitary Lock Co., 104 F. 2d 781 (CA7 1939); Banker v.

Ford Motor Co., 69 F. 2d 665 (CA3 1934); Ford v. Huff, 296

F. 652 (CA5 1924). But even if all of these cases squarely

held that laches could be applied to a damages claim at

law within the limitations period, they would still consti-

tute only a handful of decisions out of the corpus of pre-

1952 patent cases, and that would not be enough to over-

come the presumption that Congress legislates against the

background of general common-law principles. See H.

McClintock, Handbook of the Principles of Equity §28, p.

75 (2d ed. 1948) (“The majority of the courts which have

considered the question have refused to enjoin an action at

law on the ground of the laches of the plaintiff at law”).

In any event, these cases, like the equity cases, offer

minimal support for First Quality’s position. Not one of

these cases even mentions the statute of limitations. One

of the three, Ford, is not even a patent infringement case;

it is a breach-of-contract case arising out of a patent dis-

pute, 296 F., at 654, and it is unclear whether the ground

for decision was laches or equitable estoppel. See 807

F. 3d, at 1340 (opinion of Hughes, J.). Another, Universal

Coin, applied laches to a legal damages claim without any

analysis of the propriety of doing so. 104 F. 2d, at 783.

First Quality protests that the paucity of supporting

cases at law should not count against its argument since

very few patent-infringement cases were brought at law

after 1870. Brief for Respondents 25–26. But the fact

remains that it is First Quality’s burden to show that

Congress departed from the traditional common-law rule

highlighted in our cases.8

——————

8 For the same reason, the dissent misses the mark when it demands

that we cite cases “holding that laches could not bar a patent claim for

Cite as: 580 U. S. ____ (2017) 15

Opinion of the Court

C

Post-merger cases

First Quality claims that courts continued to apply

laches to damages claims after the merger of law and

equity in 1938, but First Quality’s evidence is scant.

During this period, two Courts of Appeals stated in dicta

that laches could bar legal damages claims. See Chicago

Pneumatic Tool Co. v. Hughes Tool Co., 192 F. 2d 620, 625

(CA10 1951); Shaffer v. Rector Well Equip. Co., 155 F. 2d

344, 347 (CA5 1946). And two others actually held that

laches could bar a damages claim. See, e.g., Brennan v.

Hawley Prods. Co., 182 F. 2d 945, 948 (CA7 1950); Lukens

Steel Co. v. American Locomotive Co., 197 F. 2d 939, 941

(CA2 1952) (alternative holding). This does not constitute

a settled, uniform practice of applying laches to damages

claims.

After surveying the pre-1952 case law, we are not con-

vinced that Congress, in enacting §282 of the Patent Act,

departed from the general rule regarding the application

of laches to damages suffered within the time for filing

suit set out in a statute of limitations.

V

First Quality’s additional arguments do not require

extended discussion. First Quality points to post-1952

Court of Appeals decisions holding that laches can be

invoked as a defense against a damages claim. Noting

that Congress has amended §282 without altering the

“ ‘unenforceability’ ” language that is said to incorporate a

laches defense, First Quality contends that Congress has

implicitly ratified these decisions. Brief for Respondents

35–36.

We reject this argument. Nothing that Congress has

done since 1952 has altered the meaning of §282. See

——————

damages.” Post, at 8.

16 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

Opinion of the Court

Central Bank of Denver, N. A. v. First Interstate Bank of

Denver, N. A., 511 U. S. 164, 186 (1994); West Virginia

Univ. Hospitals, Inc. v. Casey, 499 U. S. 83, 100, 101, and

n. 7 (1991).

First Quality and its supporting amici also make vari-

ous policy arguments, but we cannot overrule Congress’s

judgment based on our own policy views. We note, however,

as we did in Petrella, that the doctrine of equitable

estoppel provides protection against some of the problems

that First Quality highlights, namely, unscrupulous pa-

tentees inducing potential targets of infringement suits to

invest in the production of arguably infringing products.

572 U. S., at ___ (slip op., at 19). Indeed, the Federal

Circuit held that there are genuine disputes of material

fact as to whether equitable estoppel bars First Quality’s

claims in this very case. See 807 F. 3d, at 1333.

* * *

Laches cannot be interposed as a defense against dam-

ages where the infringement occurred within the period

prescribed by §286. The judgment of the Court of Appeals

is vacated in part, and the case is remanded for further

proceedings consistent with this opinion.

It is so ordered.

Cite as: 580 U. S. ____ (2017) 1

BREYER, J., dissenting

SUPREME COURT OF THE UNITED STATES

_________________

No. 15–927

_________________

SCA HYGIENE PRODUCTS AKTIEBOLAG, ET AL.,

PETITIONERS v. FIRST QUALITY BABY

PRODUCTS, LLC, ET AL.

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF

APPEALS FOR THE FEDERAL CIRCUIT

[March 21, 2017]

JUSTICE BREYER, dissenting.

Laches is a doctrine that bars a plaintiff ’s claim when

there has been unreasonable, prejudicial delay in com-

mencing suit. See 1 D. Dobbs, Law of Remedies §2.3(5), p.

89 (2d ed. 1993). The question before us is whether a

court can apply this doctrine in a patent infringement

action for damages brought within the statute of limita-

tions. The Court holds that a court cannot. Laches, it

says, is a “gap-filling doctrine,” generally applicable where

there is no statute of limitations. But the 1952 Patent Act

contains a statute of limitations. Hence there is “no gap to

fill.” Ante, at 5.

In my view, however, the majority has ignored the fact

that, despite the 1952 Act’s statute of limitations, there

remains a “gap” to fill. See infra, at 2–3. Laches fills this

gap. And for more than a century courts with virtual

unanimity have applied laches in patent damages cases.

Congress, when it wrote the 1952 statute, was aware of

and intended to codify that judicial practice. I fear that

the majority, in ignoring this legal history, opens a new

“gap” in the patent law, threatening harmful and unfair

legal consequences.

2 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

BREYER, J., dissenting

I

Consider the relevant statutory language. Section 286

of the Patent Act says: “Except as otherwise provided by

law, no recovery shall be had for any infringement com-

mitted more than six years prior to the filing of the com-

plaint or counterclaim for infringement in the action.” 35

U. S. C. §286 (emphasis added). Section 282 says what

the word “otherwise” means. It tells us that “unenforcea-

bility” shall be a defense “in any action involving the

validity or infringement of a patent.” §282(b) (emphasis

added).

Two features of this statutory language are important.

First, the limitations provision, unlike those in many

other statutes, does not set forth a period of time in which

to sue, beginning when a claim accrues and then expiring

some time later. (The False Claims Act, for example, gives

a plaintiff six years from the date of the violation or three

years from the date of discovery to file his suit, 31 U. S. C.

§3731(b).) Rather, it permits a patentee to sue at any time

after an infringement takes place. It simply limits dam-

ages to those caused within the preceding six years. That

means that a patentee, after learning of a possible in-

fringement in year 1, might wait until year 10 or year 15

or year 20 to bring a lawsuit. And if he wins, he can col-

lect damages for the preceding six years of infringement.

This fact creates a gap. Why? Because a patentee

might wait for a decade or more while the infringer (who

perhaps does not know or believe he is an infringer) in-

vests heavily in the development of the infringing product

(of which the patentee’s invention could be only a small

component), while evidence that the infringer might use

to, say, show the patent is invalid disappears with time.

Then, if the product is a success, the patentee can bring

his lawsuit, hoping to collect a significant recovery. And if

business-related circumstances make it difficult or impos-

sible for the infringer to abandon its use of the patented

Cite as: 580 U. S. ____ (2017) 3

BREYER, J., dissenting

invention (i.e., if the infringer is “locked in”), then the

patentee can keep bringing lawsuits, say, in year 10 (col-

lecting damages from years 4 through 10), in year 16

(collecting damages from years 10 through 16), and in year

20 (collecting any remaining damages). The possibility of

this type of outcome reveals a “gap.” Laches works to fill

the gap by barring recovery when the patentee unreason-

ably and prejudicially delays suit.

Second, the Patent Act’s language strongly suggests

that Congress, when writing the statutory provisions

before us, intended to permit courts to continue to use

laches to fill this gap. The statute says that there are

“except[ions]” to its 6-year damages limitation rule. It

lists “unenforceability” as one of those exceptions. At

common law, the word “unenforceability” had a meaning

that encompassed laches. See, e.g., United States v. New

Orleans Pacific R. Co., 248 U. S. 507, 511 (1919) (consider-

ing whether an agreement “had become unenforceable by

reason of inexcusable laches”). We often read statutes as

incorporating common-law meanings. See Neder v. United

States, 527 U. S. 1, 21 (1999). And here there are good

reasons for doing so. For one thing, the principal technical

drafter of the Patent Act (in a commentary upon which

this Court has previously relied, e.g., Warner-Jenkinson

Co. v. Hilton Davis Chemical Co., 520 U. S. 17, 28 (1997))

stated that §282 was meant to codify “equitable defenses

such as laches.” P. Federico, Commentary on the New

Patent Act, 35 U. S. C. A. 1, 55 (West 1954). For another

thing, there is a long history of prior case law that shows

with crystal clarity that Congress intended the statute to

keep laches as a defense.

II

The pre-1952 case law that I shall discuss is directly

relevant because, as this Court has recognized, the 1952

Patent Act was primarily intended to codify existing law.

4 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

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BREYER, J., dissenting

See Halo Electronics v. Pulse Electronics, Inc., 579 U. S.

___, ___ (2016) (slip op., at 4); accord, H. R. Rep. No. 1923,

82d Cong., 2d Sess., 3 (1952) (stating that the “main pur-

pose” of the Patent Act was “codification and enactment”

of existing law); 98 Cong. Rec. 9323 (1952) (drafter of the

Act stating that it was generally intended to “codif[y] the

present patent laws”).

Now consider the existing law that the Patent Act’s

drafters intended the Act to reflect. The decisions that

find or say or hold that laches can bar monetary relief in

patent infringement actions stretch in a virtually unbro-

ken chain from the late 19th century through the Patent

Act’s enactment in 1952. They number in the dozens and

include every federal appeals court to have considered the

matter. (We have found only two contrary decisions, both

from the same District Court: Thorpe v. Wm. Filene’s Sons

Co., 40 F. 2d 269 (Mass. 1930); and Concord v. Norton, 16

F. 477 (CC Mass. 1883).)

Here are the cases from the Federal Courts of Appeals

alone: Lukens Steel Co. v. American Locomotive Co., 197

F. 2d 939, 941 (CA2 1952); Chicago Pneumatic Tool Co. v.

Hughes Tool Co., 192 F. 2d 620, 625 (CA10 1951); Brennan

v. Hawley Prods. Co., 182 F. 2d 945, 948 (CA7 1950);

Shaffer v. Rector Well Equip. Co., 155 F. 2d 344, 345–347

(CA5 1946); Rome Grader & Mach. Corp. v. J. D. Adams

Mfg. Co., 135 F. 2d 617, 619–620 (CA7 1943); France Mfg.

Co. v. Jefferson Elec. Co., 106 F. 2d 605, 609–610 (CA6

1939); Universal Coin Lock Co. v. American Sanitary Lock

Co., 104 F. 2d 781, 781–783 (CA7 1939); Union Shipbuild-

ing Co. v. Boston Iron & Metal Co., 93 F. 2d 781, 783 (CA4

1938); Gillons v. Shell Oil Co. of Cal., 86 F. 2d 600, 608–

610 (CA9 1936); Holman v. Oil Well Supply Co., 83 F. 2d

538 (CA2 1936) (per curiam); Dock & Term. Eng. Co. v.

Pennsylvania R. Co., 82 F. 2d 19, 19–20 (CA3 1936);

Banker v. Ford Motor Co., 69 F. 2d 665, 666 (CA3 1934);

Westco-Chippewa Pump Co. v. Delaware Elec. & Supply

Cite as: 580 U. S. ____ (2017) 5

BREYER, J., dissenting

Co., 64 F. 2d 185, 186–188 (CA3 1933); Window Glass

Mach. Co. v. Pittsburgh Plate Glass Co., 284 F. 645, 650–

651 (CA3 1933); Dwight & Lloyd Sintering Co. v.

Greenawalt, 27 F. 2d 823, 827 (CA2 1928); George J. Meyer

Mfg. Co. v. Miller Mfg. Co., 24 F. 2d 505, 507–508 (CA7

1928); Wolf Mineral Process Corp. v. Minerals Separation

N. Am. Corp., 18 F. 2d 483, 490 (CA4 1927); Cummings v.

Wilson & Willard Mfg. Co., 4 F. 2d 453, 455 (CA9 1925);

Ford v. Huff, 296 F. 652, 654–655 (CA5 1924); Wolf, Sayer

& Heller, Inc. v. United States Slicing Mach. Co., 261 F.

195, 197–198 (CA7 1919); A. R. Mosler & Co. v. Lurie, 209

F. 364, 371 (CA2 1913); Safety Car Heating & Lighting Co.

v. Consolidated Car Heating Co., 174 F. 658, 662 (CA2

1909) (per curiam); Richardson v. D. M. Osborne & Co., 93

F. 828, 830–831 (CA2 1899); and Woodmanse & Hewitt

Mfg. Co. v. Williams, 68 F. 489, 493–494 (CA6 1895).

The majority replies that this list proves nothing. After

all, it says, nearly all of these decisions come from courts

of equity. Courts of equity ordinarily applied laches “ ‘to

claims of an equitable cast for which the Legislature ha[d]

provided no fixed time limitation,’ ” ante, at 5 (quoting

Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. ___, ___

(2014) (slip op., at 12)), not to requests for damages, “a

quintessential legal remedy,” ante, at 3. Since “laches is a

gap-filling doctrine,” the fact that it was applied to equit-

able claims without statutes of limitations says little about

whether it should apply to legal damages claims when

“there is a statute of limitations,” and therefore “no gap to

fill.” Ante, at 5.

Good reply. But no cigar. Why not? (1) Because in

1897 Congress enacted a statute of limitations—very much

like the one before us now—for patent claims brought in

courts of equity. Ch. 391, §6, 29 Stat. 694 (“[I]n any suit or

action . . . there shall be no recovery of profits or damages

for any infringement committed more than six years be-

fore” filing). Thus, after 1897, there was no statute of

6 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

BREYER, J., dissenting

limitations gap for equity courts to fill, and yet they con-

tinued to hold that laches applied. See, e.g., France Mfg.,

supra, at 609 (“[N]otwithstanding the statute of limita-

tions, relief may be denied on the ground of laches . . . ”);

Dwight & Lloyd, supra, at 827 (Hand, J.) (explaining how

laches operates in conjunction with the statute of limit-

ations to allow an infringer to “garne[r] the harvest of

even the earliest of the 6 years to which recovery is in any

event limited, with just confidence that he will not be

disturbed”).

(2) Because in 1870 Congress enacted a statute that

gave courts of equity the power to award legal relief,

namely, damages, in patent cases. Act of July 8, 1870,

§55, 16 Stat. 206. Congress did not give law courts an

equivalent power to grant injunctive relief in patent suits.

As a result, from the late 19th century until the merger of

law and equity in 1938, nearly all patent litigation—

including suits for damages—took place in courts of equity

that were applying laches in conjunction with a statute of

limitations. See Lemley, Why Do Juries Decide If Patents

Are Valid? 99 Va. L. Rev. 1673, 1704 (2013) (discussing

the predominance of equity litigation).

(3) Because Congress recognized that damages suits for

patent infringement took place almost exclusively in

equity courts, not law courts. Whenever Congress wished

to modify patent damages law, it rewrote the statutory

provisions governing damages in equity, not law. See, e.g.,

§8, 42 Stat. 392 (modifying the equity damages statute to

allow equity courts to award a “reasonable sum” even if a

patentee had difficulty proving actual damages, but mak-

ing no change to the legal damages provision). The 1952

Congress, seeking to understand whether, or how, laches

applied in patent damages cases, would almost certainly

have looked to equity practice.

(4) Because, in any event, in those few pre-law/equity-

merger cases in which courts of law considered whether

Cite as: 580 U. S. ____ (2017) 7

BREYER, J., dissenting

laches could bar a patent damages action, they, like their

equity counterparts, held that it could. See Universal

Coin, 104 F. 2d, at 781–783; Banker, 69 F. 2d, at 666;

Ford, supra, at 658. As the majority points out, these

cases brought in law courts constitute “only a handful of

decisions.” Ante, at 13. But that is simply because, as I

just noted, almost all patent damages litigation took place

in courts of equity. Regardless, before the merger of law

and equity both law courts and equity courts recognized

laches as a defense. And, after the merger of law and

equity in 1938, federal courts still applied laches to patent

damages claims. E.g., Brennan, 182 F. 2d, at 948 (holding

that “laches on the part of the plaintiff ” can “bar his right

to recover damages”). This, of course, would make no

sense if laches for patent damages was really an equity-

only rule.

Does the majority have any other good reason to ignore

the mountain of authority recognizing laches as a defense?

It refers to many general statements in opinions

and treatises that say that laches is “no defense at law.”

United States v. Mack, 295 U. S. 480, 489 (1935). But these

statements are not about patent damages cases. They do

not claim to encompass the problem at issue here. And

they do not prevent Congress from enacting a statute that,

recognizing patent litigation’s history, combines a statute

of limitations with a laches defense. And that is what

Congress has done in the Patent Act.

The majority also tries to discredit the persuasiveness of

the pre-Patent Act case law authority. It goes through the

lengthy list of decisions, finding some judicial statements

too vague, others just dicta, and still others having con-

fused an equitable claim for “accounting” with a legal

claim for “damages.” I agree that it has found weaknesses

in the reasoning of some individual cases. But those

weaknesses were not sufficient to prevent a 1951 treatise

writer from concluding, on the basis of the great weight of

8 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

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BREYER, J., dissenting

authority, that in patent cases, “[l]aches . . . may be inter-

posed in an action at law.” 3 A. Deller, Walker on Patents

106 (Cum. Supp. 1951).

In any event, with all its efforts, the majority is unable

to identify a single case—not one—from any court of ap-

peals sitting in law or in equity before the merger, or

sitting after the merger but before 1952, holding that

laches could not bar a patent claim for damages. Fur-

thermore, the majority concedes that it is unable to distin-

guish, by my count, at least six Court of Appeals cases

directly holding that laches could bar a patent claim for

damages. See Wolf, Sayer & Heller, 261 F. 195; Lurie, 209

F. 364; Universal Coin, supra; Banker, 69 F. 2d 665; Bren-

nan, supra; Lukens, 197 F. 2d 939. And that is the case

law situation that Congress faced when it wrote a statute

that, as we have said, sought primarily to codify existing

patent law. See supra, at 3–4.

The majority tries to minimize the overall thrust of this

case law by dividing the cases into subgroups and then

concluding that the number of undistinguishable prece-

dents in each subgroup is “too few to establish a settled,

national consensus.” Ante, at 12. The problem with this

approach is that, once we look at the body of case law as a

whole, rather than in subgroups, we find what I have said

and repeated, namely, that all the cases say the same

thing: Laches applies. The majority’s insistence on subdi-

vision makes it sound a little like a Phillies fan who an-

nounces that a 9–0 loss to the Red Sox was a “close one.”

Why close? Because, says the fan, the Phillies lost each

inning by only one run.

For the sake of completeness I add that, since 1952,

every Federal Court of Appeals to consider the question

has held that laches remains available for damages claims

brought under the Patent Act. See A. C. Aukerman Co. v.

R. L. Chaides Constr. Co., 960 F. 2d 1020, 1030 (CA Fed.

1992) (en banc). Yet, Congress has repeatedly reenacted

Cite as: 580 U. S. ____ (2017) 9

BREYER, J., dissenting

35 U. S. C. §282’s “unenforceability” language without

material change. See, e.g., §§15(a), 20(g)(2)(B), 125 Stat.

328, 334. See also Texas Dept. of Housing and Community

Affairs v. Inclusive Communities Project, Inc., 576 U. S.

___, ___ (2015) (slip op., at 14) (holding that congressional

reenactment provides “convincing support for the conclu-

sion that Congress accepted and ratified the unanimous

holdings of the Courts of Appeals”); Microsoft Corp. v. i4i

Ltd. Partnership, 564 U. S. 91, 113–114 (2011) (when

Congress has “often amended §282” while “le[aving] the

Federal Circuit’s interpretation of §282 in place,” any

further “recalibration” should be left to the Legislature).

III

The majority’s strongest argument is Petrella. There,

the Court held that laches could not bar a damages claim

brought within the Copyright Act’s limitations period.

The present case holds roughly the same in respect to the

Patent Act, providing a degree of consistency.

There are relevant differences, however, between patent

law and copyright law. For one thing, copyright law,

unlike patent law, does not contain a century and a half of

history during which courts held that laches and a statute

of limitations could coexist. When Congress enacted the

Patent Act in 1952, patent statutes had already contained

a 6-year statute of limitations for 55 years (since 1897),

during which time courts had continued to apply laches to

patent damages cases. Copyright law, on the other hand,

contained no federal statute of limitations until 1957. See

Petrella, 572 U. S., at ___ (slip op., at 3).

For another thing, the Copyright Act, unlike the Patent

Act, has express provisions that mitigate the unfairness of

a copyright holder waiting for decades to bring his lawsuit.

A copyright holder who tries to lie in wait to see if a de-

fendant’s investment will prove successful will discover

that the Copyright Act allows that defendant to “prove and

10 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

BREYER, J., dissenting

offset against . . . profits ‘deductible expenses’ incurred in

generating those profits.” Id., at ___ (slip op., at 12) (quot-

ing 17 U. S. C. §504(b)). Thus, if the defendant invests say

$50 million in a film, a copyright holder who waits until

year 15 (when the film begins to earn a profit) to bring a

lawsuit may be limited to recovering the defendant’s

profits less an apportioned amount of the defendant’s

initial $50 million investment. But the Patent Act has no

such deduction provision.

Further, the Court, in Petrella, pointed out that the

evidentiary loss that occurs while a copyright holder waits

to bring suit is “at least as likely to affect plaintiffs as it is

to disadvantage defendants.” 572 U. S., at ___ (slip op., at

18). But that symmetry does not exist to the same degree

in patent law. To win a copyright suit the copyright holder

must show that the defendant copied his work. The

death of witnesses and loss of documents from the time of

the alleged infringement can therefore significantly impair

the copyright holder’s ability to prove his case. There is no

such requirement in a patent suit. Patent infringement is

a strict-liability offense: There need not be any copying,

only an end product (or process) that invades the area the

patentee has carved out in his patent.

At the same time, the passage of time may well harm

patent defendants who wish to show a patent invalid by

raising defenses of anticipation, obviousness, or insuffi-

ciency. These kinds of defenses can depend upon contem-

poraneous evidence that may be lost over time, and they

arise far more frequently in patent cases than any of their

counterparts do in copyright cases. See Brief for Electronic

Frontier Foundation et al. as Amici Curiae 23 (reporting

that of all copyright cases pending as of January 2009,

only 2.7% of judgment events resulted in a finding of a

lack of ownership or validity of the copyright at issue);

Allison, Lemley, & Schwartz, Understanding the Realities

of Modern Patent Litigation, 92 Texas L. Rev. 1769, 1778,

Cite as: 580 U. S. ____ (2017) 11

BREYER, J., dissenting

1784–1785 (2014) (finding that 70% of summary judgment

motions in patent cases filed in 2008–2009 related to

anticipation or obviousness). The upshot is an absence

here of the symmetrical effect of delay upon which the

Court relied in Petrella.

Finally, there is a “lock-in” problem that is likely to be

more serious where patents are at issue. Once a business

chooses to rely on a particular technology, it can become

expensive to switch, even if it would have been cheap to do

so earlier. See Lee & Melamed, Breaking the Vicious

Cycle of Patent Damages, 101 Cornell L. Rev. 385, 409–

410 (2016). As a result, a patentee has considerable incen-

tive to delay suit until the costs of switching—and accord-

ingly the settlement value of a claim—are high. The

practical consequences of such delay can be significant, as

the facts of this case illustrate: First Quality invested

hundreds of millions of dollars in its allegedly infringing

technologies during the years that SCA waited to bring its

suit. App. to Pet. for Cert. 107a–108a. And amici have

provided numerous other examples that suggest this fact

pattern is far from uncommon. See Brief for Dell et al.

11–19.

I recognize the Majority’s suggestion that the doctrine of

“equitable estoppel” might help alleviate some of these

problems. See ante, at 15. I certainly hope so. But I

would be more “cautious before adopting changes that

disrupt the settled expectations of the inventing commu-

nity.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

535 U. S. 722, 739 (2002).

I add or confess that I believe that Petrella too was

wrongly decided. Today’s case helps illustrate why I think

that Petrella started this Court down the wrong track. I

would stop, finding adequate grounds to distinguish Pet-

rella. But the majority remains “determined to stay the

course and continue on, travelling even further away,”

Mathis v. United States, 579 U. S. ___, ___ (2016) (ALITO,

12 SCA HYGIENE PRODUCTS AKTIEBOLAG v. FIRST

QUALITY BABY PRODUCTS, LLC

BREYER, J., dissenting

J., dissenting) (slip op., at 9), from Congress’ efforts, in the

Patent Act, to promote the “Progress of Science and useful

Arts,” U. S. Const., Art. I, §8, cl. 8. Trite but true: Two

wrongs don’t make a right.

With respect, I dissent.