# Amicus Curiae Brief — Aktiebolag v. First Quality Baby Prods., LLC, 136 S. Ct. 1824 (2016) (No. 15-927)

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0648%3A07

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2016

## Text

No. 15-927

In the
Supreme Court of the United States

SCA HYGIENE PRODUCTS AKTIEBOLAG
AND SCA PERSONAL CARE, INC.,

Petitioners,

Vv.

FIRST QUALITY BABY PRODUCTS, LLC,
FIRST QUALITY HYGIENE, INC.,
FIRST QUALITY PRODUCTS, INC., AND
FIRST QUALITY RETAIL SERVICES, LLC,

Respondents.

On Petition for a Writ of Certiorari to the
United States Court of Appeals for the Federal Circuit

BRIEF OF AMICUS CURIAE THE TORO COMPANY
IN SUPPORT OF PETITIONERS

J. Derek Vandenburgh

Counsel of Record

Joseph W. Winkels

Alexander S. Rinn

CARLSON, CASPERS, VANDENBURGH,
LINDQUIST & SCHUMAN, P.A.

225 South Sixth Street, Suite 4200
Minneapolis, MN 55402

(612) 436-9600

Attorneys for Amicus Curiae
The Toro Company

Dated: February 19, 2016

2016 —- Bachmes Legal Printing @ (612) 339-9518 @ 1-900-715-3582 @ Fax (612) 337-8053

————e— SS ee re i

Table of Contents

Page
I i eniscesndssnnscnnnescssceescsretdeisustonss lil
Interest of the Amicus Curiae .............................000000 1
Summary of the Argument ........................cccccccecceeeeeee l
TE iiics ieiiscenchennheiuldesantadieursinisileaincemasiactasiitananuiaiocntietadan 3

L. SECTION 286 IS CLEAR ON THE
TIMELINESS OF DAMAGES CLAIMS AND
THERE IS NO NEED TO LOOK FOR
FURTHER TIMELINESS LIMITATIONS IN

A. The Patent Statute is Clear and
Unambiguous on the Timeliness of
SO IID on cccccccoscccccsoseccoescensceoes 3

B. There is No Need to Look for Further
Timeliness Limitations in § 282............ 5

C. The Six Year Laches Presumption is
Incompatible with § 286 .........000..0000..... 8

Il. CONGRESS’ SILENCE ON LACHES DOES
NOT DEMONSTRATE ITS INTENT TO
CODIFY THE EQUITABLE DOCTRINE’S
APPLICATION TO PATENT DAMAGES ...... 9

Il.

IV

THE COURT'S PRECEDENT INSTRUCTS
THAT LITTLE IF ANY WEIGHT SHOULD
BE GIVEN TO FEDERICO’S

COMMENTARY IN INTERPRETING THE

. EEE a 12

THE MAJORITY’S POLICY CONCERNS
ARE NOT JUSTIFICATIONS FOR LACHES
AND/OR ARE ALREADY ACCOUNTED
a cscanooe 15

THIS CASE IS OF GREAT IMPORTANCE
TO THE PATENT COMMUNITY ................. 18

EEC ae ae a CE ar Od oS 19

Li

Table of Authorities

Cases Page

A. C. Aukerman Co. v. R. L. Chaides Constr. Co.,
960 F.2d 1020 (Fed. Cir. 1992) 02.00.0000. ..ccecceceeee. 7,8

Astoria Fed. Sav. & Loan Ass'n v Solimino,
BI II, I cavounscivacoincevneracceuscessnccessosccs 10

Bonito Boats v. Thunder Craft Boats,
I, SO I oo cccccecssengancocccncenevecesescesssoesees 16

Burns v. United States,
MD TTB: TE CIID ce cceccocccccccsccccccccccccccocscsccceee. 10, 11

C.R. Bard, Inc. v. M3 Sys.,
157 F.3d 1340 (Fed. Cir. 1998) .0000000000.occ cece. 7

Camuinetti v. United States,
BE UTE, SH GIII GD nccccecceccecoscocccosccccesccccccccesccccesecesss 3

Connecticut Nat’] Bank v. Germain,
503 U.S. 249 (1992) ooo occ 3,5

De Forest Radio Tel. Co. v. United States,
er Li Lt: : ea 6

Garcia v. United States,
A469 U.S. 70 (1984) ooo. cccceccccccceeeceeeeeeeees 5,13

1}

Gustafson v. Alloyd Co.,
513 U.S. 561 (1998) ...........................00.cccccceceseeseee. 13

La. Public Serv. Comm'n v. FCC.
476 U.S. 355 (1986) 20... occ cccccccccccccccececeeceeeeeeee 12

Lamie v. United States Tr.,
540 U.S. 526 (2004) oo... c cece ccccccceececccececcceeeeeee 5

Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962 (2014) ....................cccccccescessesseoees 9, 18

Potter v. United States,
155 U.S. 438 (1894) 2000. cccccccocccccccceceeceeeeeeee 5

Quern v. Mandley,
TE 1, | 13

SCA Hygiene Products v. First Quality Baby
Products, 807 F.3d 1311 (Fed. Cir. 2015)

SI iri. es ict stcaniab eitoclensitundacheeceseapeeeodacnind passim

Sullivan v. Finkelstein,
GS TE. GF CD wien cen cccccccccccoccocccccccscccccocccossenoes 13

Util. Air Regulatory Group v. EPA,
BI Te Ge, Te GO once cnccscescccesesccscscececsececcecess 11

Whitman v. Am. Trucking Ass'ns,
i Fk. | 12

1V

Zenith Elecs. Corp. v. PDI Commun. Sys.,

522 F.3d 1348 (Fed. Cir. 2008) ...........00..00...... ret eS 7
Statutes
TED 17
os siecietipckbbomeuaebinoblans 17
I ns aregsnesiiiomnasintitenglih 6
I ee vonicsncrccsvcnnnssecnnsdsessesecoenecennnesoanh 16
nia acisrnansicoinsncieennbeboutdonsais passim
I aie abeecnnidinanalli 6,7
ici coccensncnssapdnitenitnnetiiicindbcsamiiils passim
Rules
Supreme Court Rule 37.2(a) .................0.ccccccceceeeeeeeees l
IE GIS GI IE I cence ccncccccecccsccsscsccoesesseccscees 1
Other

P J. Federico, Commentary on the New

Patent Law Codification and Revision:
Hearings on H.R. 3760 before Subcomm.
No. 3 of the H. Comm. on the Judiciary,

82d Cong. 34-40, 101-10 (June 1951) .....0.00... 14

Interest of the Amicus Curiae’

Amicus Curiae The Toro Company (“Toro”)
respectfully files this brief pursuant to Supreme
Court Rule 37 in support of Petitioner. Toro files this
brief for two reasons: (1) to further address salient
statutory interpretation issues that have not been
fully developed in the Petition that are important for
the Court to consider; and (2) it, like other prominent
patent holders and manufacturing companies, has an
interest in making sure that the clear and
unambiguous language of the patent statute actually
does what it says. Toro’s interest is based in part on
the fact that it regularly has active patent litigation.
Toro’s interest is also based in part on the fact that
one of its subsidiaries is currently a plaintiff in
patent litigation where laches has been raised as a
defense.

Summary of the Argument

The Federal Circuit in SCA Hygiene Products
v. First Quality Baby Products, 807 F.3d 1311 (Fed.
Cir. 2015) (en banc) held by a 6-5 majority that laches
can bar legal relief in patent cases, despite
longstanding precedent of this Court that the
equitable defense of laches is unavailable when a
statutory limitations period exists. The majority's
holding was based on two flawed premises: (1) that a

! Amicus Curiae Toro timely notified counsel of record for all
parties of its intent to file this brief, and counsel of record for all
parties have consented to the filing of this brief. See Supreme
Court Rule 37.2(a). No party’s counsel authored this brief in
whole or in part. No party or person other than amicus curiae
contributed money to fund preparation or submission of this
brief. See Supreme Court Rule 37.6.

]

single line in the post hoc commentary of a non-
legislator (Federico's Commentary) demonstrates
Congress’ intent to codify laches in 35 U.S.C. § 282 of
the 1952 Patent Act; and (2) that through its silence
on the matter, Congress intended to codify lower
court precedent allegedly suggesting that the
equitable doctrine of laches could specifically bar
legal relief in patent cases. In addition to those
addressed by Petitioner, Amicus Curiae Toro
addresses the following errors.

First, the timeliness of damages claims in
patent cases is expressly and unambiguously
addressed in 35 U.S.C. § 286. There is no legitimate
basis to read-in laches to the subtext of § 282 because
that section has meaning without laches and reading
laches into § 282 would run afoul of the plain
language of that statutory section.

Second, because Congress clearly evinced its
intent on the timeliness of damages claims in § 286,
Congress’ silence on laches cannot indicate its intent
to codify allegedly clear lower court precedent
applying the defense to bar legal relief.

Third, a _ single statement in post hoc
commentary on the 1952 Patent Act written by a non-
legislator is not legislative history, and does not shed
light on what Congress thought it was voting for in
1952. The majority's reliance on _ Federico’s
Commentary to ascertain Congress’ intention
regurding laches is error.

Fourth, the policy concerns raised by the
majority in support of its holding either do not in fact
support its position when exposed to scrutiny, or

already are addressed by the timeliness provision of
§ 286.

This case is important to the patent
community The Court already has received two
petitions for writs of certiorari on the issue of laches
in the wake of SCA. The business and legal
community has an interest in knowing that the plain
language of the patent statute will do the work it
claims to do. The majoritys holding in SCA
undermines the predictability of the law

Argument

I. SECTION 286 IS CLEAR ON THE
TIMELINESS OF DAMAGES CLAIMS AND
THERE IS NO NEED TO LOOK FOR
FURTHER TIMELINESS LIMITATIONS IN
§ 282

A. The Patent Statute is Clear and
Unambiguous on the Timeliness of
Damages Claims

Courts “should always turn first to one,
cardinal canon [of construction] before all others”
when interpreting a statute. Connecticut Nat] Bank
v. Germain, 503 U.S. 249, 253 (1992). In particular,
courts are to “presume that a legislature says in a
statute what it means and means in a statute what it
says there. When the words of a statute are
unambiguous, then, this first canon is also the last:
judicial inquiry is complete.” Jd. at 253-54 (citations
and internal quotation marks omitted); see alsv
Caminetti v. United States, 242 U.S. 470, 485 (1917)
(“It is elementary that the meaning of a statute must,

in the first instance, be sought in the language in
which the act is framed, and if that is plain the
sole function of the courts is to enforce it according to

its terms.”).

The only section in the patent statute that
expressly addresses the effect of delay in bringing
suit is 35 U.S.C. § 286, which states in unambiguous
terms: “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.” 35 U.S.C. § 286 (emphasis added). The
meaning of § 286 with respect to the effect of delay on
patent damages could not be more clear. As the en
banc Federal Circuit held: “By its terms, § 286 is a
damages limitation.” SCA, 807 F.3d at 1321. And
by its express terms, § 286 envisions that a patentee
may bring a suit “more than six years” after
infringement begins. 35 U.S.C. § 286. In that case,
pursuant to the statute, the patentee may only
recover damages for infringement occurring within
the six-year time period preceding commencement of

suit. See id.

In contrast to § 286, nothing on the face of
§ 282 suggests any limitations on the timeliness of
patent damages. Laches has never appeared in the
patent statute and the legislative history of the
patent act does not recognize case law on laches.

2 The Federal Circuit also concluded that “because patent
infringement is a continuous tort, there 1s no relevant functional
difference between a damages limitatiun and a statute of
limitations.” SCA, 807 F.3d at 1321. Thus, there is “no
substantive distinction material tu the Petre//a analysis
between § 286 and the copyright statute of limitations
considered in Petrella.” [d.

SCA, 807 F.3d at 1337 (Hughes, T., dissenting). And
as discussed below. laches does not even make logical
sense in § 282. In the context of such facial clarity,
judicial inquiry into the meaning of these statutory
sections should proceed no further. Connecticut Nat’
Bank, 503 U.S. at °53°54. If other sources of
meaning, such as iegislative history, are to be
consulted at all, “only the most extraordinary
showing of contrary intentions from those data would
justify a limitation on the plain meaning of the
statutory language.” Garcia v. United States, 469
U.S. 70, 75 (1984) (internal quotation marks omitted).
For the reasons discussed by the dissent in SCA, the
Petitioner, and here below, the majority's reliance on
congressional silence and on a one line, post-
enactment, statement by a non-legislator cannot
qualify as the “extraordinary showing of contrary
intent[)” that is required to limit the plain meaning of
statutory language.

B. There is No Need to Look for Further
Timeliness Limitations in § 282

The majority in SCA endeavored to find laches
implicitly present in § 282, despite the clear statutory
language of § 286, discussed above. SCA, 807 F.3d at
1321-23. Perhaps the only instance where this could
be appropriate would be if § 282 (or a subportion
thereof) would lack meaning without reading laches
into that section. See Potter v. United States, 155
U.S. 438, 446 (1894) (statutory language “cannot be
regarded as mere surplusage; it means something’);
cf Lamie v. United States Tr., 540 U.S. 526, 536
(2004) (when two ways exist to read a statute, one in
which a term is surplusage but the text is plain, and
the other in which a term is nonsurplusage but the

j

3 |

text is ambiguous, courts “should prefer the plain
meaning since that approach respects the words of
Congress”). Here, § 282 dues not require that laches
hide in its subtext in order for the section to have
meaning.

Though the majority does not specify where in
§ 282 it believes laches must reside, the only place
laches could possibly exist is in § 282(b)(1). SCA, 807
F.3d at 1335 (Hughes, T., dissenting). That section
states: “Defenses.—The following shall be defenses in
any action involving the validity or infringement of a
patent and uhall be pleaded: (1) Noninfringement,
absence of liability for infringement’ or
unenforceability.” 35 U.S.C. § 282(b)(1).

Section 282(b)(1) has meaning and is well-
understood in the law without needing to read-in
laches. The first defense listed, noninfringement,
clearly has meaning without reading-in laches: there
is no infringement, for example, if one did not make,
use, offer to sell, sell, or import any product or
process meeting all the limitations of a claim of a
patent. See 35 U.S.C. § 271(a).

The second half of § 282(b)(1) envisions two
situations in which there may be infringement, but
there is an inability to recover: “absence of liability
for infringement” and “unenforceability ” 35 U.S.C. §
282(b i). Like the “noninfringement” clause, it is
similarly unnecessary to read-in laches to ensure this
second clause has meaning. For example, regarding
“absence of liability for infringement,” one could
infringe the claims of a patent, but be given
permission to do so either by express or implied
lheense. Eig. De Forest Radio Tel. Co. v. United

6

States, 273 U.S. 236, 241-42 (1927) (a license, express
or implied, for a covered use of a patent is “a complete
defense against a suit for infringement”). With a
license, there would be infringement, but an absence
of liability. Similarly, “unenforceability” has meaning
without having to read-in laches. For example, a
patent can be unenforceable if there was inequitable
conduct at the patent office or in the instance of
patent misuse. Ey. Zenith Elecs. Corp. v. PDI
Commun. Sys., 522 F.3d 1348, 1367 (Fed. Cir. 2008)
(inequitable conduct); C.R. Bard, Inc. v. M3 Sys., 157
F.3d 1340, 1372 (Fed. Cir. 1998) (patent misuse).
Laches is unnecessary to give this clause meaning.

Not only is it unnecessary, reading laches into
§ 282(b)(1) would also run counter to the plain
meaning of the statute. Laches clearly does not make
logical sense under the “noninfringement” provision
of §282(b)(1), because the typical case of laches
presumes infringement. See, e.g, A. C. Aukerman
Co. v. R. L. Chaides Constr. Co., 960 F.2d 1020, 1034
(Fed. Cir. 1992) (“The six years for laches begins with
a patentee’s knowledge of infringement and counts
forward.”). Laches also does not make logical sense
under the “absence of liability for infringement” or
“unenforceability” provisions, because even when
laches is found under existing law, a patentee
typically can recover for post-suit damages. SCA, 807
F.3d at 1333 (“Whereas estoppel bars the entire suit,
laches does not. a patentee guilty of laches
typically does not surrender its right to an ongoing
royalty”). In other words, laches does not result in
an “absence of liability,” nor does it render the patent
“unenforceable.” Although damages may be limited
under the application of laches, damages are azot
absent, and the patent remains enforceable with

respect to post-suit damages and other equitable
relief, such as the grant of an injunction.

C. The Six Year Laches Presumption is
Incompatible with § 286

The six year laches presumption prescribed by
the Federal Circuit is also incompatible with § 286.
See Aukerman, 960 F.2d at 1037 (discussing the
laches presumption). The laches “clock” starts to run
when a patentee “knew or reasonably should have
known” of the alleged action being accused of
infringement. /d. at 1032. Thus, in the typical laches
scenario, it would be almost impossible to take full
advantage of the six year damages period expressly
allowed for by § 286 without raising a presumption of
laches. A patentee would have to file suit exactly six
years after a company begins making, selling, using
or importing a patented device (or process) to recover
six years of past damages. Obviously, there is
nothing wrong with filimg suit before the six year
mark. However, if a patentee filed suit six years and
one day after commencement of infringement, laches
would be presumed and the patentee may forfeit al!
past damages. It is a very strange thing for there to
be such a stark discontinuity in one’s ability to
recover for a continuous tort. See SCA, 807 F.3d at
1321 (“patent infringement is a continuous tort”).
The six year presumption makes it almost impossible
to realize the full scope of § 286—an illogical result.

There are, of course, instances where an
accused infringer’s activity is sufficiently hidden such
that it cannot be said that a patentee “should have
known” about such activity, but such instances of
secret infringement are by far the exception rather

than the rule. It is not reasonable to conclude that by
expressly allowing for six years of past damages in
§ 286, Congress only intended that this apply to
claims addressing secret or hidden infringement.

The patent statute is plain on its face
regarding the timeliness of patent damages claims,
there is no need to look for laches in § 282 to give the
section meaning, reading-in laches to § 282 is
inconsistent with the plain language of that section,
and the six year laches presumption is incompatible
with § 286. Nothing about the actual language of the
patent statute suggests that laches can bar claims for
legal relief.

II. CONGRESS’ SILENCE ON LACHES DOES
NOT DEMONSTRATE ITS INTENT TO
CODIFY THE EQUITABLE DOCTRINE’S
APPLICATION TO PATENT DAMAGES

The Court’s clear and longstanding precedent
instructs that, when Congress has chosen to codify a
limitations period, laches cannot bar claims for legal
relief. Pet’rs’ Cert. Br. at 22; see, e.g, Petrella v.
Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1973-74.
(2014). As discussed above, and as held by the
Federal Circuit, § 286 is such a limitations period in
the patent statute. SCA, 807 F.3d at 1321.
Nonetheless, the Federal Circuit found that in 1952
Congress must have codified case law indicating that
laches could preclude recovery of legal damages in
patent cases. /d. at 1326-29. The sole basis for such
a departure from this Court's precedent was
congressional! silence.

Q

The Federal Circuit relied heavily on the canon
of construction that “[w]hen a statute covers an issue
previously governed by the common law. we must
presume that Congress intended to retain the
substance of the common law.” /d. at 1324 (alteration
in original). The majority notes that this applies only
where “Congress has failed expressly or impliedly to
evince any intention on the issue” addressed by the
common law. /d. (quoting Astoria Fed. Sav. & Loan
Ass'n v. Solimino, 501 U.S. 104, 110 (1991)). But on
the timeliness of claims for past damages in patent
cases, Congress explicitly stated its intention—and
the Federal Circuit acknowledged this. /d. at 1321.

In light of the Court’s decision in Petrella, the
Federal Circuit in SCA recognized that “[iJn § 286,
Congress provided a six-year time period for recovery
of damages. § 286—a damages-barring time
provision—invokes Petre/la's logic at least as much
as, and perhaps more than, a statute of limitations.”
SCA, 807 F.3d at 1321. Thus, by the Federal
Circuit's own acknowledgement, Congress has
evinced its intention on the timeliness of damages
claims in patent suits. This alone should have
precluded the Federal Circuit from relying on the
canon of construction that permits the codification of
common law through Congressional silence. The
majority should have found no use in analyzing the
common law's application of laches to patent
damages—Congress had spoken on the issue of
timeliness via statute.

Moreover, while the Federal Circuit majority
based its holding on congressional silence, this Court
has cautioned that “not every silence is pregnant.”
Burns v. United States, 501 U.S. 129, 136 (1991).

10

In some cases, Congress intends silence
to rule out a particular statutory
application, while in others Congress’
silence signifies merely an expectation
that nothing more need be said An
inference drawn from congressional
silence certainly cannot be credited when
it is contrary to all other textual and
contextual evidence of congressional
intent.

Id. The inference from congressional silence in the
majority's opinion is contrary to both the text and
context of the patent statute.

First, as discussed above, the text of the patent
statute is clear on the timeliness of patent damages
claims. Section 286, the single clearest statement of
congressional intent on the timeliness of damages
claims, expressly limits past patent damages to six
years and says nothing about laches. 35 U.S.C. § 286.
Section 282 is facially silent on the issue. 35 U.S.C.
§ 282.

Second, even if some timeliness rule could be
read-in to the subtext of § 282, the clear limitations
period of § 286 would inform § 282. SCA, 807 F.3d at
1336 (Hughes, T., dissenting); see Util. Aur
Regulatory Group v. EPA, 134 S. Ct. 2427, 2441
(2014) (“[T]he words of a statute must be read in their
context and with a view to their place in the overall
statutory scheme.”). Otherwise, the sub-textual rule
of § 282 would conflict with the clear limitations
period in § 286. As correctly noted by the dissent,
“provisions of a statute should be read so as not to

11

create a conflict.” SCA, 807 F.3d at 1336 (Hughes, T..,
dissenting) (quoting La. Public Serv. Comm'n v. FCC.
476 U.S. 355, 370 (1986)).

Furthermore, the dissent rightly notes that the
House and Senate Reports from 1952 explain that the
language of § 282 was meant to be changed to state
defenses in more general terms, but the substance of
§ 282 was not to be materially changed. SCA, 807
F.3d at 1336 (Hughes, T., dissenting). The dissent
also rightly notes that no pre-1952 act suggests that
laches was meant to bar claims for legal relief. and
“nothing in the _ legislative history _ reflects
congressional recognition of any pre-1952 case law on
the subject of laches, let alone approval of such case
law as went beyond what the pre-1952 statutes
authorized on their face.” /d. at 1336-37. In light of
the actual legislative history reflecting an intent to
not materially change the substance of § 282, it does
not make sense to take Congress’ silence on laches as
indicative of its intent to codify it in the subtext of
§ 282.

Congress’ silence cannot be so powerful to
override this Court’s longstanding precedent and the
text and context of the 1952 patent statute: Congress
does not “hide elephants in mouseholes.” Whitman v.
Am. Trucking Ass’ns, 531 U.S. 457, 468 (2001).

Ill. THE COURTS PRECEDENT INSTRUCTS
THAT LITTLE IF ANY WEIGHT SHOULD
BE GIVEN TO FEDERICO’S COMMENTARY
IN INTERPRETING THE PATENT STATUTE

Petitioner correctly states that “the Federal
Circuit relied heavily on a few words in the 1954

12

Federico Commentary” to support its holding that
laches can bar legal damages in patent cases. Pet’rs’
Cert. Br. at 21. The words of Federico’s Commentary
clearly are not the words of the patent statute, nor
are they even legislative history. They are the post
hoc commentary of a non-legislator.

After-the-fact statements by commentators
“are not a reliable indicator of what Congress
intended when it passed the law, assuming
extratextual sources are to any extent reliable for this
purpose.” Gustafson v. Alloyd Co., 513 U.S. 561, 579
(1995). Indeed, even “post hoc observations by a
single member of Congress carry little if any weight.”
Quern v. Mandley, 436 U.S. 725, 736 n.10 (1978); c.f
Garcia, 469 U.S. at 76 (explaining that committee
reports are the most authoritative legislative history,
and eschewing casual statements of a single member
of Congress). The relevance of legislative history to
the interpretation of a statute, to the extent it has
any, is to elucidate what members of Congress
believed they were voting for. Gustafson, 513 U.S. at
579; Sullivan v. Finkelstein, 496 U.S. 617, 631 (1990)
(Sealia, J., concurring in part).

By this standard, Federicos Commentary
cannot be considered legislative history, and should
be given little if any weight in interpreting the 1952
Patent Act. Mr. Federico was never a member of
Congress, and his Commentary was not published
until after the 1952 Patent Act was enacted. See
Pet’rs’ Cert. Br. at 21; P _ J. Federico, Commentary on
the New Patent Act, 35 U.S.C.A 1 (West 1954).
Federico's Commentary was not even available to
members of Congress while they debated the 1952

13

Patent Act. It cannot inform what members of
Congress believed they were voting on.

As the majority recognizes, Mr. Federico did
provide testimony before the House Committee on the
Judiciary in 1951 during the hearings on H.R. 3760—
an early draft of the 1952 Act. SCA, 807 F.3d at
1322-23; see Patent Law Codification and Revision.
Hearings on H.R. 3760 before Subcomm. No. 3 of the
H. Comm. on the Judiciary. 82d Cong. 34-40, 101 10
(June 1951) (statements of P.J. Federico, Examiner in
Chief, U.S. Patent Office) (hereinafter “Statements of
Federico”). Unlike his Commentary, this testimony
actually was available to members of Congress at the
time they voted on the 1952 Act and might shed light
on what members thought they were voting for.
However, Mr. Federico said nothing about laches
during this testimony. See Statements of Federico at
34-40, 101 10. He even addressed the very section of
the bill that turned into § 282, but he merely said
that the defenses listed therein were meant to be
stated more generally without “changing the
substance materially.” Jd. at 108.

Significantly, in other instances when the new
Patent Act was meant to codify law that until that
time had only existed as common law through the
courts, Mr. Federico explicitly said so in this
testimony to Congress. /d. at 38-39. For example,
regarding the non-obviousness requirement of § 103,
Mr Federico told the Committee: “Section 103 does
something attempted for the first time in our statute,
and that is to write down a condition which exists in
the law and has existed for well over 100 years, but
only by decisions of the courts.” Jd at 38. In this
actual legislative history of the 1952 Patent Act,

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laches was not mentioned by Mr. Federico, nor did he
refer to any intent to codify common law relating to
laches.

Mr. Federico was undoubtedly influential in
drafting the 1952 Patent Act, but his post hoc
Commentary sheds no light on what members of
Congress actually thought they were voting for. At
best, his Commentary represents his own opinions
about what the law was meant to do—this is not
reflective of the intent of Congress. See Federicu
Commentary at “Authors Note” (“[I]Jt should be
understood that the paper contains some opinions
and views of the writer even though not always
labeled as such.”) In light of the plain text of the
statute, and especially in light of Mr. Federico’s
testimony to members of Congress during their
consideration of the bill, it is erroneous for the
majority to essentially base its holding in SCA on a
single statement in Federico’s post hoc Commentary.

IV THE MAJORITY’S POLICY CONCERNS ARE
NOT JUSTIFICATIONS FOR LACHES
AND/OR ARE ALREADY ACCOUNTED FOR
BY § 286

After studying Federico’s Commentary and the
congressional silence on laches, the majority in SCA
justified its holding that laches can bar legal relief
despite the damages limitation of § 286 based on
several policy considerations. As noted by the
dissent, it is the job of Congress to account for
competing policy concerns when crafting patent
legislation. SCA, 807 F.3d at 1342 (Hughes, T.,
dissenting). It is not the role of the Federal Circuit to
undermine Congress’ judgment, by shaping the law

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based on its own, current assessment of the policy
landscape. /d.; see Bonito Boats v. Thunder Craft
Boats, 489 U.S. 141, 143, 163-68 (1989) (questioning
the Federal Circuit's analysis that the policies behind
federal patent laws were not threatened by a state
law prohibiting direct molding for the duplication of
unpatented articles, noting that Congress should
make such determinations, and despite consideration
of similar bills, Congress had refused to enact such a

law).

In any event, each of the policy concerns raised
by the majority are either not really justifications for
laches, or they already are accounted for by the
damages limitation in § 286. First, the majority
notes that companies (such as in the medical device
industry) may spend large sums of money to develop
products and shepherd them through the regulatory
process only to have a patentee sue six years later
seeking the most profitable six years of revenues.
SCA, 807 F.3d at 1330. The theory here appears to
be that if the company were only told of its
infringement sooner, such damages could be avoided.

This example is an illogical justification for
laches. As an initial matter, in such an expensive
endeavor a company is likely to undertake a patent
clearance process. In any event, companies do not
regularly broadcast their research and development
efforts to the world. And § 271(e)(1) of the patent
statute states that it is not an act of infringement to
make, use, offer to sell, or sell a patented invention
solely for uses reasonably related to obtaining
necessary regulatory approval. 35 U.S.C. § 271(e)(1).
By the time a medical device company. for example,
brings a product to market that might actually

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constitute patent infringement, the company already
has invested large sums of money—suing within six
years of the product’s introduction to market does not
change that fact.

Second, the Federal Circuit alludes to the large
volume of suits brought by non-practicing entities,
noting that “it is often impractical for companies to
determine which claims have merit.” SCA, 807 F.3d
at 1330. This concern is simply irrelevant to laches.
Laches addresses the timeliness of claims, not their
merits.

Third, the majority is simply wrong when it
claims that “[ilndependent invention is no defense in
patent law, so without laches, innovators have no
safeguards against tardy claims.” /d Innovators
have § 286, which limits the extent to which a
patentee can recover for claims filed more than six
years after infringement began. Additionally.
independent invention can act as a defense to the
extent such acts qualify as invalidating prior art
under 35 U.S.C. § 102(a).5

Finally, the majority notes that amici in the en
banc case “overwhelmingly supportled] retaining
laches in patent law.” SCA, 807 F.3d at 1340. It is
true that more amici supported retaining laches than
not, but many of those amici were companies who are
regular patent infringement defendants. It is not

3 Prior to the enactment of the American invents Act (AIA) in
2011, 35 U.S.C. § 102(g) also allowed for independent invention
to serve as a defense. The concept codified in prior § 102(g) has
limited relevance under the AIA's first-to-file rule, but it was
present in the 1952 Act and existed for more than sixty years
until the enactment of the AIA.

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surprising that such companies would support a
measure that could absolve them of some liability.
Notably, however, two prominent amici with a much
more disinterested view based simply on a reading of
the law (the American Intellectual Property Law
Association and a group of prominent patent law
professors), argued that laches should not be found to
bar claims for legal relief in light of Petrella. See
Brief for Am. Intellectual Property Law Assoc. as
Amicus Curiae Supporting Neither Party, SCA
Hygiene Prods v. First Quality Baby Prods., 807 F.3d
1311 (Fed. Cir. 2015) (No. 2013-1564); Brief for Law
Professors as Amici Curiae Supporting Appellants,
SCA Hygiene Prods v. First Quality Baby Prods., 807
F.3d 1311 (Fed. Cir. 2015) (No. 2013-1564).

Vv THIS CASE IS OF GREAT IMPORTANCE TO
THE PATENT COMMUNITY

The Federal] Circuit sitting en banc decided the
SCA case by the narrowest of margins: 6-5. There
was sharp disagreement between the majority and
the dissent. Though the Federal Circuit has spoken
on the applicability of laches to bar legal relief, many
in the broader patent community still seek clarity in
light of the Court’s ruling in FPetrel/a. Notably, the
Court already has received two petitions for writs of
certiorari, challenging findings of laches in light of
Petrella. Pet’'rs’ Cert. Br.; Petition for Writ of
Certiorari, Medinol Ltd. v. Cordis Corp., No. 15-998
(2016). The regularity with which laches is claimed
as a defense in patent cases suggests that that Court
should expect many more similar petitions.

Finally, the broader patent community has two
additional general interests in the Court hearing this

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case. First, the patent community has an interest in
knowing that the plain language of the patent statute
will do the work it claims to do. In other words, they
have an interest in the predictability of the patent
law The Federal Circuit’s holding in SCA
undermines the predictability of the law

Second, the broader patent community has an
interest in making sure that the patent law remains
as uniform as possible with the broader civil, common
law This Court routinely warns against patent
exceptionalism in the civil law for good reason. When
the patent laws reflect the tried-and-true principles
of the broader civil law, innovators and business
decision makers have more trust in the usefulness
and validity of the patent system, and both parties
and legal practitioners can rely on predictability in
the law

Conclusion

For all these reasons, the Court should grant
SCA’s petition for a writ of certiorari, and reverse the
Federal Circuit's en banc decision.

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Respectfully submitted,

J. Derek Vandenburgh
(Counsel of Record)
Joseph W Winkels
Alexander S. Rinn
CARLSON, CASPERS, VANDENBURGH,
LINDQUIST & SCHUMAN, P.A.
225 South Sixth Street, Suite 4200
Minneapolis, MN 55402
Tel: 612-436-9600
Fax: 612-436-9605
E-mail:
dvandenburgh@carlsoncaspers.com

Counsel for Amicus Curiae
The Toro Company

Dated: February 19, 2016

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385016_0648%3A07. Public record. Not legal advice.