Laches or delay in filing a lawsuit in the context of Intellectual Property law

The legal term Laches is often used to describe a potential defense that a person being sued can assert. Laches encompasses the situation where a Plaintiff has delayed in bringing a lawsuit for an unreasonably long period of time. In some cases Laches can be a complete bar to a lawsuit if the delay is significant enough. In cases involving intellectual property, such as patents, copyrights and trademarks, courts will usually look to see if there is an applicable statute of limitations to determine how long is too long for a Plaintiff to wait to sue.

Although patents, copyrights and trademarks are considered to be under the umbrella of intellectual property, the law varies. In the context of trademark law, Laches is an available defense which has the potential to exclude monetary and/or injunctive relief. In the context of copyright law, the Supreme Court has clarified in Petrella v. Metro-Goldwyn-Mayer, Inc.[1], that Laches is not applicable to bar a claim for monetary relief so long as the claim is brought within the federal Copyright Act’s three-year statute of limitations. This ruling is distinguishable in the trademark context since there is no applicable statute of limitations in the federal Lanham Act and the statute of limitations in the federal Copyright Act already takes into account delay.[2]

However, the Supreme Court’s ruling in Petrella calls into question whether Laches is an available defense in the patent context because the federal Patent Act limits damages for infringement to six years prior to the filing of the Complaint.[3] The United States Court of Appeals for the Federal Circuit has ruled on this issue post-Petrella and has found that Laches still applies in Patent law.[4] However, this ruling has been subsequently vacated and is currently up for further review by the Federal Circuit.[5]

Despite the uncertainty, several District Courts around the United States have found that Laches is still a viable defense under the Patent Act.[6] Laches can have a significant impact on the ability of a Plaintiff to prevail in a lawsuit or for a Defendant to successfully defend against a lawsuit. There are several important considerations in determining whether Laches will apply such as the length of the delay, when the time for calculating the delay begins, whether Laches can bar monetary and/or injunctive relief, and whether any prejudice as a result of the delay has occurred. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.

[1] 134 S.Ct. 1962 (2014).
[2] Id. at 1973-1974 & n. 15.
[3] 35 U.S.C. § 286.
[4] SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 767 F.3d 1339, 1345 (Fed. Cir. 2014).
[5] SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, No. 2013-1564, 2014 WL 7460970, at *1 (Fed. Cir. Dec. 30, 2014).
[6] See, e.g., Whitserve, LLC v., Inc., No. 3:11-cv-00948-WGY, Docket Entry 430 at pg. 11 (D. Conn. July 21, 2015) (citing to cases in District Courts of Hawaii, Kansas, and California that have also ruled that Laches is an available defense under the federal Patent Act).

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