• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
    • Areas Served
  • Services
    • Patents
      • Patent Consultation
      • Patent Search Service
      • Patent Application Service
      • Patent Prosecution
      • Utility Patents
      • Design Patents
      • Patent Defense
      • Patent Enforcement
      • Working with In-House Attorneys
    • Trademarks
      • Trademark Search
      • Trademark Application Services
      • Trademark Prosecution
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • First-Time Inventor?
    • Why Patent Your Invention in a Bad Economy?
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Simplified)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Info on Forms
    • Nonpublication Request
    • Declaration of Utility or Design Application
    • Provisional Patent Application Cover Sheet
    • After Final Consideration Pilot Program
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Patent Infringement / Patent Infringement Defenses / Equitable estoppel is still available to limit patent infringement liability

Equitable estoppel is still available to limit patent infringement liability

June 12, 2017 by James Yang

Equitable EstoppelUnder § 286, a defendant’s liability for patent infringement is limited to the preceding six years.  Laches used to be a defense that would cut that six-year time period even shorter.  However, in SCA Hygiene Products v. First Quality Baby Products, LLC (S. Ct. 2017), the Supreme Court held that laches is no longer a defense against patent infringement.  This means that the six-year time period under § 286 that the alleged infringer would be liable for patent infringement cannot be further shortened under the defense of laches. Nevertheless, the Supreme Court left intact the alleged infringer’s ability to limit patent infringement liability under a different theory, namely, the defense of equitable estoppel to provide protections against unscrupulous patentees.

I.  Section 286 limits damages to the preceding six years

35 U.S.C. § 286: Time limitation on damages:

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.

35 U.S.C. § 286 is a complete bar to recover for damages more than six years ago.

II.  Laches no longer limits damages to a period shorter than six years

Laches, if it was allowed, cuts short the six-year time period so as to provide even more protection to defendants against untimely claims. In SCA Hygiene, the lower court (Federal Circuit) held in a 6-5 decision that laches was available. However, upon appeal, the Supreme Court of the United States decided that laches is no longer a defense against patent infringement.

laches is no longer a defense to patent infringement.

Laches was used as a defense against patent infringement by alleged infringers to limit liability for damages due to timeliness issues caused by the patent owner. From an alleged infringer’s perspective, timeliness issues can be identified when the alleged infringer asks questions such as “Why did the patent owner wait so long to file the lawsuit?” If laches were a defense to patent infringement, then the defendant could consider whether the delays caused by the patent owner prejudiced the defendant and thus implicate the defense of laches to limit liability.

The problems for alleged infringers caused by the timeliness of the patent owner are illustrated by the following scenario.  If a patent owner notifies a competitor of its patent, then the notification may place the competitor in limbo as to whether the patent owner will sue the competitor in the future for patent infringement.

Laches would be a way for the law to deal with this issue of placing the alleged infringer in limbo while doing business by forcing the patent owner to sue the alleged infringer sooner than later or be barred from seeking recovery.  Section 286 sets the minimum expectation of what the law expects from patent owners that want to pursue a claim for patent infringement against an alleged infringer.

Section 286 sets the maximum time period that the patent owner can sue the competitor at a later date (e.g., seven or more years) by limiting damages to the preceding six years. Section 286 does not provide the time period in which the patent owner can sue the alleged infringer because the Supreme Court left open the possibility that the alleged infringer can use the defense of equitable estoppel to cut short the six-year maximum time period for which the alleged infringer would be liable for patent infringement.

If the alleged infringer (i.e. potential defendant or competitor) wants to resolve the dispute sooner, then the competitor may force the issue by filing a declaratory judgment action where the competitor requests the court to declare the rights and responsibilities of the patent owner and the competitor with respect to the patent. Alternatively, as the defendant attempted to do in the instant case, the defendant can attempt to invalidate the patent through a post-grant proceeding at the United States Patent and Trademark Office (USPTO).

III.  Fact Pattern of SCA Hygiene v. First Quality

In the instant case, SCA Hygiene (patent owner) sent a letter to the defendant (First Quality) in October 2003. First Quality (defendant and alleged infringer) responded that SCA’s patent was invalid because of its own patent, namely, U.S. Pat. No. 5,415,649 (hereinafter Watanabe patent) antedated the patent owner’s patent and disclosed the same subject matter. In July 2004, SCA Hygiene, the patent owner, requested a re-examination of its patent based on the Watanabe patent. In March 2007, the USPTO issued a certificate confirming the validity of the SCA Hygiene patent over the Watanabe reference. In August 2010, SCA Hygiene filed the instant patent infringement action against First Quality. From October 2003 to August 2010, First Quality was operating under the threat of litigation for patent infringement by SCA Hygiene.

During litigation, First Quality (alleged infringer) argued that the time delay caused by the patent owner should work against the patent owner so that the damages available to the patent owner for patent infringement would be shorter than the six years under § 286. The Supreme Court of the United States disagreed noting that laches is no longer a defense to patent infringement to cut short or cut off damages to the patent owner.

IV.  Equitable Estoppel is still available to limit liability to a period shorter than six years

Importantly, the Supreme Court specifically mentioned the availability of the defense of equitable estoppel to alleged infringers.  This defense may be harder to prove and use as a defense to limit patent infringement liability.  The Supreme Court left this defense intact for the reason that it does provide some measure of protection to alleged infringers against unscrupulous patent owners (patent trolls come to mind) that might use certain delay tactics to gain an unfair advantage over alleged infringers.

The defense of equitable estoppel requires the alleged infringer to prove that the patent owner made misleading statements that the patent owner knew to be false and the alleged infringer detrimentally relied on those misleading statements.

I invite you to contact me with your patent questions at (949) 433-0900. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego, and surrounding cities.

  • Facebook
  • Twitter
  • LinkedIn

Author

James Yang is a patent attorney. For more than 16 years, James Yang has been representing clients to secure patent protection for their inventions and register trademarks to protect their brands. If you need help, call him at (949) 433-0900. Read More…

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?
  • Why patent your invention in a bad economy?

Patent Book

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

Patent Consultations
Patent Searches
Patent Applications
Utility Patents
Design Patents
Patent Prosecution Services
Patent Defense Services
Patent-Law Counsel for In-House Attorneys
Trademark Overview
Trademark Search Services
Trademark Application Services
Trademark Prosecution Services
Trademark Enforcement Services
Trademark Defense Services
See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients throughout Orange County, Los Angeles, Long Beach, the Inland Empire (e.g. Corona and Temecula), and throughout SoCal.

© 2023 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney