Section 286 of the Patent Act “sets forth a limitation on damages.” Adams & Associates v. Dell. Under 35 U.S.C. § 286, “[e]xcept 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.” “In applying this section, one starts from the filing of a complaint or counterclaim and counts backward to determine the date before which infringing acts cannot give rise to a right to recover damages.” Adams & Associates (finding that infringing acts that occurred “over six years before” filing of suit “cannot form the basis for the jury verdict of infringement”); see also Kippen v. Pack. Waiting more than six years after the defendant’s use of the invention does “not create a bar under §286 to the bringing of a suit for infringement or maintaining the suit.” Standard Oil v. Nippon Shokubai Kagaku Kogyo. “Assuming a finding of liability, the only effect § 286 has is to prevent any recovery for any infringement committed more than six years prior to the filing of the complaint.” Id.
Indirect infringement. The limitations period under §286 applies to both claims for direct and indirect infringement. See A. Stucki Co. v. Buckeye Steel Castings. “[W]here a patentee complained of no acts of [indirect] infringement within the six years prior to commencement of the action, no recovery could be had against the alleged [indirect] infringer, regardless of whether others directly infringed within the six-year period.” Id.
Expired patent. A patent “ha[s] value beyond its expiration date.” Genetics Institute v. Novartis. An expired patent may form the basis of an action for past damages subject to the limitation under §286. Id. A patentee “may bring a patent infringement action up to six years after the [patent] expires.” In Re Morgan. Damages, however, are only available for the period between the start of the limitations period and the expiration of the patent. Phonometrics v. Hospitality. In Phonometrics, the plaintiff “filed suit … on November 17, 1994” and the “patent expired on October 30, 1990,” “thus leaving only the period between November 17, 1988 and October 30, 1990 at issue in the litigation.”
Hypothetical negotiation date. The six-year limitation on recovery of past damages under §286 “does not preclude the hypothetical negotiation date from taking place on the date infringement began, even if damages cannot be collected until some time later.” Laserdynamics v. Quanta Computer. “[A] reasonable royalty determination for purposes of making a damages evaluation must relate to the time infringement occurred, and not be an after-the-fact assessment.” Id. The limitations period, however, will “apply to the period for which damages may be recovered.” Wang Laboratories v. Toshiba.
Failure to accuse certain parties or products in original suit. The limitations period under §286 may bar damages against a party who should have been sued earlier, but was not properly joined to an original lawsuit and was not independently sued until it was too late. See Stucki (Plaintiff’s “present predicament stems from the unfortunate fact that it dropped its earlier effort to join [Defendant] in the 1983 action”). The limitations period may similarly bar damages for products that should have been accused in an original complaint, but were not accused until it was too late. See Anza v. Mushkin (remanding for the district court to determine whether certain products “relate back to the date of the original complaint,” or whether damages for those products are barred under §286).
Reexamination and reissue. Reexamination and reissue do not affect the limitations period. “[R]eexamination certificates do not alter the term of a patent,” so reexamination would not affect the six-year window under §286. See Hemphill v. Johnson & Johnson (“the certificate did not change the fact that even if [Defendant] had infringed the [] patent before its expiration in 2002, recovery was time-barred when [Plaintiff] sued in 2012”). Similarly, reissue does not affect the §286 analysis. See, e.g., In Re Morgan (noting that “under [§ 286] a patentee may bring a patent infringement action up to six years after the reissued patent expires”).
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Declaratory judgment actions. “Just as a patent-holder can sue based on past acts that no longer continue, a declaratory-judgment plaintiff can sue using past acts as the jurisdictional predicate for the suit.” Sierra Applied Sciences v. Advanced Energy. For purposes of the statute of limitations, a declaration of non-liability is inextricably linked with the plaintiff’s cause of action. Id. So long as the plaintiff’s claim can be made, its negative can be asserted in a declaratory action. Id. When the claim itself has been barred under §286, a declaration of non-liability is also barred, except for non-liability which is itself based upon §286. Id. Thus where the limitations period bars the patent holder’s claim (because the last allegedly infringing act occurred before the limitations period), the declaratory plaintiff cannot challenge the patent on invalidity or other grounds except for under §286. See id. Unlawful use of the invention by the defendant within the limitations period, even if “de minimis in terms of damages,” however, “is sufficient to satisfy the jurisdictional threshold.” Id. Such de minimis use “establish[es] the district court’s Article III jurisdiction to adjudicate whether the past [use]… constituted infringement of the …patent, and to adjudicate whether the … patent is invalid.” Id.
Laches. Laches cannot bar “damages where the infringement occurred within the period prescribed by §286.” SCA Hygiene v. First Quality. “A rebuttable presumption of laches,” however, “arises when a patentee has delayed more than six years after actual or constructive knowledge of the defendant’s alleged infringing activity.” Vita-Mix v. Basic Holding. The fact that a case is brought more than 6 years after infringement is noticed “is not, in itself, enough to preclude a recovery of pre-filing damages.” Leinoff v. Louis Milona Sons. The patent owner may have an adequate excuse for the delay. Id. “The result of the presumption after 6 years shifts the burden, however, to the patent owner now to prove the existence and reasonableness of such an excuse.” Id. Where laches is established, the defense bars damages for a defendant’s pre-filing infringement but not for post-filing damages or injunctive relief. See id.
Equitable estoppel. Equitable estoppel, regardless of the limitations period, may bar damages where “unscrupulous patentees induc[e] potential targets of infringement suits to invest in the production of arguably infringing products.” SCA Hygiene. Equitable estoppel, if established, “bars a patentee from receiving relief,” meaning the defendant cannot be held liable for pre-filing or post-filing damages, and cannot be enjoined. See B. Braun Medical v. Abbott Laboratories.
Equitable tolling. Federal Circuit case law suggests that §286 provides a “condition or limitation on a statutorily-created right,” and thus cannot be tolled by equitable considerations. Stucki (the history of the Patent Act suggests that state law considerations “which toll statutes of limitation in favor of plaintiffs laboring under disabilities such as incapacity or fraud…are inapplicable to the damage limitation statute, which is not, strictly speaking, a statute of limitations, but a condition or limitation on a statutorily-created right.”) It is unclear whether under Federal Circuit law, parties may contract to toll the damages limitations period under §286.