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SUPREME COURT OF THE UNITED STATES
_________________
No. 15–927
_________________
SCA HYGIENE PRODUCTS AKTIEBOLAG, et al.,
PETITIONERS
v. FIRST QUALITY BABYPRODUCTS, 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 reasoning 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 products that infringed SCA’s
rights under U. S. Patent No. 6,375,646 B1 (’646 patent). App.
54a. First Quality responded 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
regarding 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 estoppel, 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 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 doctrine 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 , n. 16 (1985). This case
turns on the application of the defense to a claim for damages, a
quintessential legal remedy. We discussed this subject at length in
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
infringement 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
limitations, 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).
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
defendant [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 present 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 statute in
Petrella precludes a civil
action for copyright infringement “unless it is commenced within
three years 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
timeliness 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 committed more
than six years prior to the filing of the complaint 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
Petrella 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
limitations in almost identical terms. We said that this provision
“allows plaintiffs . . . to gain retrospective relief
running 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 limitations
period.”
Id., at ___ (slip op., at 4).
First Quality contends that the application of a
true 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 considered 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
statutes 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 –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 applicable only to what First Quality regards as true
statutes of limitations. At least for present purposes, nothing
depends 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 according to
the Federal Circuit, §282 of the Act is a provision 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
involving the validity or infringement of a patent and shall be
pleaded:
“(1) Noninfringement, absence of liability for
infringement 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.
SCA disputes this interpretation of §282(b)(1),
arguing that laches does not make a patent categorically
unenforceable. 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) incorporates a
laches defense
of some dimension, it does not necessarily
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 Quality’s
amici has identified a single federal statute that provides
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 argument. 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 interpretation 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
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 defense 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 prosecuting
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 landscape 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 significance 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 interpretation, 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) codifies a
very different patent-law-specific rule. No such consensus is to be
found.[
5]
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 –69
(1876); 1 Dobbs §4.3(5), at 611 (“Accounting holds the defendant
liable for his profits, not for damages”); A. Walker, Patent 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 accounting of
profits and a calculation of damages, Brief for Respondents 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 , n. 12 (2005). See also
Hartford Underwriters Ins. Co. v.
Union Planters
Bank,
N. A., 530 U. S. 1 –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 infringement was required to
bring two suits, one in an 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, 29Stat. 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 Congress, 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 occurring within a limitations period.
This argument overlooks the fact that a
patentee, during 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 entirely to defeat claims like
SCA’s.[
7]
B
Pre-1938 claims at law
First Quality cites three Court of Appeals
cases in which 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 constitute only
a handful of decisions out of the corpus of pre-1952 patent cases,
and that would not be enough to overcome 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 dispute, 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]
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 convinced 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
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 , and n. 7 (1991).
First Quality and its supporting
amici
also make various 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
equitableestoppel provides protection against some of the problems
that First Quality highlights, namely, unscrupulous patentees
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
damages 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.