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Just Because the Patent Office Understood a Claim Term Does Not Mean that a Court Will: The Different Claim Construction Standards Between the Patent Office and U.S. Courts Post-Nautilus

By Raymond K. Chan of Procopio, Cory, Hargreaves & Savitch LLP

Raymond Chan is an experienced patent litigator and a registered patent attorney admitted to practice before the USPTO. He has represented clients from the automotive, biotechnology, chemical engineering, computer and consumer products industries. Raymond previously served as the in house counsel for a leading automotive aftermarket part and accessory distributor, where he managed design patent and trade dress litigation against its competitors. His recent matters include the successful assertion of patents on flame retardant polyester artificial hair fibers in litigation on behalf of a global chemical products company against its competitor.

Section 112 of the U.S. Patent Act imposes a “definiteness” requirement on patent claims. The requirement pertains to the construction or interpretation of patent claims. To meet this requirement, a patent claim must “particularly” point out and “distinctly” claim the subject matter which the inventor regards as his invention. The U.S. Supreme Court recently made this requirement more stringent in its Nautilus decision, holding that a patent claim must inform one of ordinary skill in the art about the scope of the invention with “reasonable certainty” when read in light of the patent specification and its prosecution history. This heightened definiteness requirement is at odds with how patent claims are traditionally interpreted by the U.S. Patent & Trademark Office (“PTO”). Thus, a...

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