The case required the Court to determine whether the defense of laches remained a viable defense to patent infringement actions when the charge of patent infringement is brought during the six-year statute of limitations. As predicted by many, the Supreme Court found that the defense of laches is inappropriate for claims brought within the statute of limitations, the same ruling reached only several years ago with respect to laches as a defense in copyright infringement claims.

Defence to patent infringement

First Quality did make an interesting argument about the six-year statute of limitations for patent infringement actions not being a true statute of limitations because it counts backwards from the filing of the complaint rather than forward from the date of infringement. The importance of this nuance seemed completely missed on the majority. Only Justice Breyer really seemed to understand the importance of the argument. Of course, without a laches defense possible, a patent owner could lie in wait for infringement to become widespread and then sue for infringement seeking only the previous six-years worth of damages.
Although I doubt the Supreme Court really understands what they have done, the fact that laches cannot be used as a defense to a patent infringement action brought during the statute of limitations is most definitely a pro-patent decision. Presently patents are much weaker than they have been at any time over the last 36 years. But patent law has always swung like a pendulum, and this low point will not last forever. Thus, in the wake of the Supreme Court’s decision in SCA Hygiene, patent owners would do well to consider forgoing patent enforcement. Instead, allow infringement to accrue and then sue for infringement in several years when the law may be quite a bit more favorable. After all, patents can last for 20 years, the statute of limitations is six-years, and without a laches defense available to infringers you will be able to seek damages going back six years from whenever you choose to sue.

Legislation Over-riding

The Supreme Court never seems to be bothered with “legislation-overriding” when they apply their extra-statutory requirements for patent eligibility. Indeed, 35 U.S.C. 101 specifically says that if a claim is directed to a machine, process, manufacture or composition of matter, the claim is patent eligible. But without any statutory support for doing so, or any support in the Constitution, the Supreme Court has added two additional inquiries through what they refer to as the Alice/Mayo framework. It is indeed interesting that the Supreme Court at times can so correctly understand the role of the Judiciary and at other times completely ignore separation of powers, ignore Congress and the statutes they pass and do whatever they want.

Settled expectations meant absolutely nothing to Justice Breyer, or any of the other Justices of the Supreme Court, when they decided AMP v. Myriad Genetics. While the Supreme Court clings to the fiction that Myriad did not overrule Diamond v. Ckakrabarty, there is simply no way to interpret Myriad in any other way than overruling the settled expectations that had been understood by the industry for over 30 years. The ruling in Chakrabarty was that the touchstone for patent eligibility was human intervention. Even though the Supreme Court admitted in Myriad that the claimed subject matter did not exist in nature it was still, nevertheless, invalidated under the law of nature doctrine.