On June 27, 2016, the U.S. Supreme Court granted review of a case on whether Section 271(f)(1) is violated by providing a single component abroad which when combined with other components would induce infringement if combined in the United States. Life Tech. Corp. v. Promega Corp., No. 14-1538, 6/27/16. The Court denied review of a Federal Circuit decision that an important medical diagnostic method is ineligible for patent protection under Section 101. Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182, 6/27/16.
On June 21, 2016, the Federal Circuit kept the longstanding administrative construction of 35 USC 120 that permits the filing of a continuation application on the same day its parent application grants as a patent. Immersion Corp. v. HTC Corp., No. 2015-1574 (Fed. Cir. Jun 21, 2016). In this case, the district court held that the statute requires a continuation application to be filed before the parent application grants, even though the USPTO does not keep time-of-day filing records. In reversing the lower court's decision, the Federal Circuit reasoned that same-day continuations have been approved by the USPTO for at least half a century and interpreted the statute as providing for such same-day filings based on longstanding agency interpretation.
The U.S. Supreme Court, in a split decision, held that 35 USC 314(d) barred challenge to the USPTO's decision to institute an inter partes review, and that the USPTO's application of the "broadest reasonable construction" standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted by Congress. In deciding the non-appealable nature of institution decisions, the Court looked at the plain language of the statute and determined that Congress was clear when drafting Section 314(d) that institution decisions are non-appealable. In affirming the BRI standard, the Court noted that the statute and legislative history did not suggest which claim construction standard Congress intended to be the "proper" standard but that the statute was clear in its express delegation of rulemaking authority to the USPTO, and the application of the BRI standard was a reasonable exercise of the USPTO's rulemaking authority.
On June 16, 2016, the U.S. Supreme Court held that district courts should give substantial weight to the objective reasonableness or unreasonableness of the losing party's position in determining whether or not to award attorney fees, but other circumstances relevant to granting fees must be taken into account. Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. ___ (June 16, 2016).
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