Why Petrella and SCA Hygiene Protect Against Equitable Defenses of Prosecution Laches

"Under the principles in SCA Hygiene, Petrella, and Brockamp, there is no room for the courts to displace Congress' specific policy choice on timeliness, even when 'the lack of a laches defense could produce policy outcomes judges deem undesirable.' The Supreme Court rejected equitable defenses of laches in infringement suits, reasoning that by enacting a statute of limitation, Congress left no statutory "gap" for equitable judgments on timeliness. See Petrella v. Metro-Goldwyn-Mayer (2014), and SCA Hygiene Prods. v. First Quality Baby Prods (2017)."

"These precedential holdings should have also governed U.S. Court of Appeals for the Federal Circuit (CAFC) decisions on prosecution laches in Hyatt v. Hirshfeld (2021) and in Hyatt v. Stewart (2025), particularly after the multiple briefings in the Hyatt case on the binding effect of such holdings. Yet, nowhere in these decisions can one find any reasons why the principles in SCA Hygiene and Petrella should be inapplicable for precluding prosecution laches."

"Some commentators have reasoned that prosecution laches is different from laches in bringing infringement suits because only the latter have statutes of limitation. Dennis Crouch's recent article, " Hyatt v. Stewart: Why Petrella and SCA Hygiene Don't Save Long-Delayed Patent Prosecutions," is such an example, with the following explanation: "I think Hyatt loses this one because there is no statute of limitations governing the overall patent prosecution timeline.""

SCA Hygiene, Petrella, and Brockamp establish that courts cannot displace Congress's timeliness policy by creating equitable laches defenses where Congress has enacted statutes of limitation. The Supreme Court held that an enacted statute of limitation leaves no statutory gap for equitable timeliness judgments in infringement suits. Those holdings logically apply to prosecution laches in Federal Circuit decisions such as Hyatt v. Hirshfeld and Hyatt v. Stewart. Arguments that prosecution laches differs because no explicit prosecution-time statute exists overlook URAA features that constrain patent term and the temporal effects of prosecution on enforceable patent life.

Read at IPWatchdog.com | Patents & Intellectual Property Law