SCA Hygiene Prods v. First Quality Baby Prods., LLC, No. 13-1564 (Fed. Cir. 2014)Annotate this Case
SCA owns the 646 patent, which relates to certain adult incontinence products. In 2003 SCA sent a letter to a competitor, First Quality, stating that First’s products might infringe the patent. First Quality responded that the patent was invalidated by the earlier 649 patent. SCA then filed an ex parte reexamination request for the 646 patent. In 2007, the PTO confirmed the patentability of the original claims and issued new claims added during reexamination. SCA never notified First Quality about the reexamination, believing that it was under no obligation to do so because the PTO provides public notice of all reexaminations. First Quality, meanwhile, no longer considered the 646 patent “to be an issue” and, in 2006, began expanding its line of incontinence products at a cost of about $10 million. SCA did not contact First Quality until August 2010, when it filed an infringement suit. SCA claims it spent more than three years implementing new business structures, evaluating outside counsel, and examining potentially infringing products. The district court dismissed, finding SCA’s claims barred by laches and equitable estoppel. The Federal Circuit affirmed with respect to laches, but found that there remain genuine issues of material fact pertaining to equitable estoppel and remanded that issue and unresolved questions relating to laches.
The court issued a subsequent related opinion or order on April 29, 2015.