Judge Dismisses Patent Infringement Claims between Rival Diaper Companies Based on Laches

Orange County – The case between two rival diaper companies over patent infringement claims was dismissed by a Kentucky judge on Monday, who ruled that Swedish-based SCA Hygiene Products AB took too long to file claims against First Quality Baby Products LLC.

The patent at the heart of the case is U.S. Patent No. 6,375,646 titled “Absorbent pants-type diapers.”  The patent for these Swedish-designed diapers was originally filed in 1992, but was not granted by the U.S. Patent Office until 2002.

This product is one of many generally known as “pull-up diapers.”  They are the diapers typically worn by toddlers who require more mobility than traditional diapers allow and are learning to be potty trained.  These pants-type diapers are also used by adults with incontinence issues.

Records indicate that SCA was aware of the Infringement by First Quality since at least October 2003, when it sent a cease and desist letter informing the company of its prior patent rights.  First Quality responded, arguing that SCA’s patent ending in ‘646 was not valid.

First Quality cited a prior patent, U.S. Patent No. 5,415,649, which allegedly covers the same innovation as the ‘646 patent.  It argued that this earlier patent nullified any protection provided by the ‘646 patent, so it is free to continue production of its own pants-type diapers.

First Quality believed that its response had resolved the matter, so it continued production of its diapers.  SCA did not take any further action against First Quality until 2010, when it filed its lawsuit in U.S. District Court in Kentucky.

SCA argues that the delay in taking action is the result of reexamining its patent rights and obtaining new counsel.

U.S. District Court Judge Joseph H. McKinley Jr. ruled that by waiting 7 years to file a formal complaint against First Quality, it unreasonably delayed the proceeding and therefore lost its ability to proceed.

The judge argued that by not immediately proceeding after the cease and desist letter, SCA led First Quality to believe that it had dropped its claims against the diaper maker.  First Quality made substantial investments in continuing to produce its pants-type diapers, Judge McKinley argued, which it might not have if it believed it would eventually face trial for its product.

Judge McKinley ruled that SCA deliberately misled First Quality through its inaction, and dismissed all aspects of the lawsuit brought by SCA.