The claims of the patent define the invention and determine the patentee’s right to exclude, or as Judge Giles Rich had once written, “the name of the game is the claim.” Traditionally, both the U.S. Patent and Trademark Office and the U.S. district courts play “the claim game,” but under very different standards. The recent U.S. Court of Appeals for the Federal Circuit decision in Thorner v. Sony Computer Entertainment Americasuggests that the court standard is moving closer to the USPTO standard that does not account for the presumption of validity usually applied in patent infringement actions.

The USPTO interprets the claims of filed patent applications as broadly as the claim terms reasonably allow, by giving the words in the claims their plain meaning unless the plain meaning is inconsistent with the specification. The goal is to determine the “broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification. … It would be inconsistent with the role assigned to the USPTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance operate under the assumption the patent is valid.” In re Morris, 127 F.3d 1048 (Fed. Cir. 1997).

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