Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023)
Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for each independent claim on which those dependent claims rely. According to the decision, the unpatentability of some, but not all, of the independent claims from which a multiple dependent claim depends does not automatically render unpatentable that dependent claim.
The Patent Owner in this case requested Director Review of the Patent Trial and Appeal Board's Final Written Decision, holding that claims 2-16 of United States Patent No. 9,179,711 (the "711 Patent") were unpatentable. Claims 1 and 2 of the 711 Patent were independent claims. Claims 3-16 were multiple dependent claims, which alternatively referenced and depended from either independent claim 1 or claim 2. The PTAB held that claims 3-16 were unpatentable because claim 2—only one of the independent claims from which claims 3-16 alternatively depended—was unpatentable.
Under Director Review, the Patent Owner argued as a potential issue of first impression that the PTAB's decision was in error because it failed to separately consider the patentability of claims 3-16 under the alternatively referenced independent claim 1. In her decision, Director Vidal agreed with Patent Owner that: (i) this was an issue of first impression, and (ii) the Board was required to consider multiple dependent claim patentability with respect to all alternatively referenced independent claims. As such, Director Vidal reversed the PTAB's decision and ultimately upheld the patentability of claims 3-16 in view of the patentability of independent claim 1.
When issuing this ruling, Director Vidal called attention to the plain language of 35 U.S.C. § 112 ¶ 5, quoting in pertinent part "[a] multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered." According to the Director's decision, this language requires a separate patentability analysis of multiple dependent claims, particularly when coupled with 35 U.S.C. § 282, which states that "[e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims[.]" Without this interpretation, the Director noted, §§ 112 and 282 would fail to have effect. The plain language of 37 C.F.R. § 1.75(c) regarding fee calculation also supported the decision. See 37 C.F.R. 1.75(c) ("For fee calculation purposes . . . a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein."). Additionally, the Director reasoned that an interpretation requiring separate analysis of multiple dependent claims for each independent claim on which they rely aligns with long-standing USPTO practice and guidance. See MPEP § 608.01(n)(I)(B)(4) (Eighth Ed., Rev. 7 (July 2008)) ("[A] multiple dependent claim...contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.") (emphasis added). The Director's decision applies with equal force to both pre-AIA and AIA patent claims.
Practice Tip: Petitioners challenging the patentability of multiple dependent claims should recognize that they must prove by a preponderance of the evidence that each independent claim from which those dependent claims depend is also unpatentable. Additionally, when drafting claims, patentees should consider carefully whether a multiple dependent claim strategy may be beneficial in asserting infringement and/or fending off patentability challenges.
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