Post by John M. Golden
What place do distinctions between law and equity have in modern law? In the United States, answering this question can be complicated by not only a twentieth-century merger of law and equity under the Federal Rules of Civil Procedure, but also the frequent embedding of common-law principles within a substantive statutory regime. The subject has attracted scholarly attention. A forthcoming article by Sam Bray of the UCLA School of Law argues that the U.S. Supreme Court has properly emphasized distinctions between legal and equitable remedies in modern U.S. law.
The Supreme Court tackled an instance of the law-equity question in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (Ginsburg, J.). Specifically, Petrella confronted the Court with the question of whether and how “the equitable defense of laches (unreasonable, prejudicial delay in commencing suit)” applies to claims for legal and equitable relief for copyright infringement that occurred within a three-year limitations period. Id. at 1967. Concluding that “courts are not at liberty to jettison Congress’ judgment on the timeliness of suit,” the Court held that laches “cannot be invoked to preclude adjudication of a claim for damages brought within the three-year window.” Id. In contrast, “in extraordinary circumstances, laches may bar at the very threshold [equitable] relief requested by the plaintiff,” and “plaintiff’s delay can always be brought to bear at the remedial stage” in assessing the appropriateness of such relief. Id. A dissenting opinion by Justice Breyer, joined by Chief Justice Roberts and Justice Kennedy, complained about the Court’s forcing of “uneasy and unnatural distinctions” between legal and equitable remedies, as well as the removal of a capacity for courts to use laches “to bring about a fair result” in individual cases. Id. at 1985-86 (Breyer, J., dissenting).
The Supreme Court’s holding in Petrella called into question the approach to laches taken in patent cases by the United States Court of Appeals for the Federal Circuit, the intermediate court that has an all-but exclusive hold on circuit-level review in such cases. In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC No. 2013-1564, slip op. (Fed. Cir. Sept. 18, 2015) (en banc), the en banc Federal Circuit revisited its case law on laches in light of Petrella and the U.S. Patent Act’s six-year limitations period for patent-infringement damages. In an opinion by Chief Judge Prost, a bare majority of six judges distinguished Petrella and held that laches may bar legal as well as equitable relief for patent infringement even though that infringement occurred within the six-year period specified by statute. See slip op. at 5. Factors in the Federal Circuit’s decision included (1) the Patent Act’s explicit provision for defenses to claims of infringement, which the court understood to have “codified the laches defense”; (2) a long history of law-and-equity mixing in patent cases, including regional circuits’ pre-1952 application of “laches to preclude recovery of legal damages”; and, at a policy level, (3) a lack of a requirement of copying for patent infringement, which the court took to increase notice concerns in patent law relative to those in copyright law. Id. at 18-36. A dissenting opinion by Judge Hughes, joined by four other judges, contended that the majority had violated the Supreme Court’s repeated admonition “not to create special rules for patent cases,” id. at 1 (Hughes, J., dissenting), and had relied on “vague legislative history and muddled case law,” id. at 5, while effectively disregarding the Supreme Court’s pre-1952 recognition of “the common-law principle that laches cannot bar a claim for legal damages,” id. at 2.
Did the Federal Circuit properly apply the Patent Act and precedent? How should the Supreme Court respond? Is Sam Bray right to defend recent Supreme Court decisions emphasizing distinctions between law and equity? I hope this post at least stimulates some puzzling over such questions.