Board Must Consider Separately Each Dependent Claim Incorporated Into Multiple Dependent Claim | Manatt, Phelps & Phillips, LLP
In Nested Bean, Inc. v. Big Beings USA Pty Ltd.,1 the director of the ‘U.S. Patent and Trademark Office (Patent Office) (Director) granted review and modified the Patent Trial and Appeal Board’s (Board) final written decision (Final Written Decision) to require the Board to consider separately the limitations of each dependent claim incorporated into a multiple dependent claim.
Nested Bean, Inc. (Petitioner) filed a petition for inter partes review (IPR) of claims 1–18 of U.S. Patent No. 9,179,711 B2 (’711 patent). Claims 1 and 2 of the ’711 patent were independent, and claims 3–16 were multiple dependent claims that depended directly or indirectly from both claims 1 and 2. The Board instituted review and held in a Final Written Decision that the Petitioner did not adequately show that claims 1, 17 and 18 were unpatentable but did show that claims 2–16 were unpatentable.
Big Beings USA Pty Ltd and LB Online & Export Pty Ltd (collectively, Patent Owner) requested Director review on rehearing, contending that:
claims 3–16 are multiple dependent claims that each depend from claim 1 or 2, and the Board found that Petitioner failed to show by a preponderance of the evidence that claim 1 is unpatentable. As a result, the Board should have found that Petitioner likewise failed to show by a preponderance of the evidence that claims 3–16—as depending from claim 1—are unpatentable [under pre-AIA 35 U.S.C. § 112, fifth paragraph].2
Claim 3 recited, in pertinent part, “[a] swaddling suit according to claim 1 or 2.”3 The Board issued a Final Written Decision that Petitioner did not demonstrate that independent claim 1 was unpatentable, but Petitioner did prove that independent claim 2 was unpatentable. Accordingly, the Director explained, “the Board determined both versions of claims 3–16, i.e., the first version depending from claim 1 and the second version depending from claim 2, were shown to be unpatentable because the second version depended from independent claim 2, which was shown to be unpatentable.”4 The Director observed that the “Board did not separately consider the patentability of claims 3–16 as dependent from independent claim 1, which was not shown to be unpatentable.”5
The Director initially agreed with Patent Owner that the question of how to interpret multiple dependent claims has not been directly considered by prior cases, and, therefore, agreed to grant rehearing. On rehearing, the Director noted that Patent Owner and Petitioner differed on the construction of 35 United States Code Section 112, fifth paragraph. Patent Owner argued that the statute necessitated the Board separately review the patentability of the different dependencies of a multiple dependent claim. Petitioner, on the other hand, asserted that the statute should be interpreted so that if any multiple dependent claim is held unpatentable over the prior art, then the whole multiple dependent claim should be determined unpatentable. The Director agreed with Patent Owner’s position based on the plain language of the statute, in view of case law, legislative history and Patent Office procedure.
Regarding the language of the statutes, the Director noted that 35 United States Code Section 112, fifth paragraph, states, in relevant 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.”6 Likewise, 37 Code of Federal Regulations Section 1.75(c) states, in relevant part, “[a] multiple dependent claim shall be construed to incorporate by reference all the limitations of each of the particular claims in relation to which it is being considered.”7 37 Code of Federal Regulations Section 1.75(c) also clarifies that “[f]or fee calculation purposes . . . a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein.”9
Accordingly, the Director determined:
The plain language of 35 U.S.C. § 112, fifth paragraph, communicates that a multiple dependent claim is the equivalent of several single dependent claims. Thus, in the same way that the unpatentability of multiple single dependent claims would each rise or fall separately, so too should the dependent claims covered by a multiple dependent claim. 37 C.F.R. § 1.75(c) further supports that interpretation because each alternatively referenced claim of a multiple dependent claim incurs a separate dependent claim fee, i.e., each version of a multiple dependent claim is charged as a stand-alone dependent claim and, so, suggests separate treatment.9
Therefore, the Director held the following:
Based on the language of the relevant statutes and regulations, I agree with Patent Owner that, “[t]aken together, the law is clear—multiple dependent claims must be treated as multiple claims, each comprising the dependent claim and one of the claims to which it refers, and the validity (and/or unpatentability) of each of the multiple claims must be considered separately.”10
The Director reasoned that case law submitted by Patent Owner supported Patent Owner’s construction. In addition, the Director noted that the legislative history was also consistent with Patent Owner’s statutory construction.
The legislative history also suggested that the patentability of a multiple dependent claim should be determined separately for each of its alternative dependent claims. Therefore, the Director determined that the plain language of the fifth paragraph of 35 United States Code Section 112, together with the language of 37 Code of Federal Regulations Section 1.75(c), bolstered the statute to require an independent assessment of patentability for each distinct dependency of a multiple dependent claim. The Director therefore construed “section 112, fifth paragraph, to require that the Board consider separately the limitations of each claim incorporated by reference into the multiple dependent claim.”11
The Director then decided that the Board incorrectly analyzed multiple dependent claims 3–16 by not separately considering the patentability of claims 3–16, which were incorporated in claim 1, which was not proven to be unpatentable. The Director therefore held:
Because the Board determined that Petitioner failed to show that claim 1 is unpatentable, the Board should have determined that multiple dependent claims 3–16, as dependent from claim 1, also are not unpatentable. Thus, Petitioner failed to show by a preponderance of the evidence that claims 3–16, as dependent from claim 1, are unpatentable.12
Practice Considerations
The decision by the Director ensures that multiple dependent claims are fully considered during an IPR. However, patent applicants can easily avoid multiple dependent claims with careful claim drafting. Since multiple dependent claims should cost the same as claims not drafted in multiple dependent claim format, a patent applicant can choose either claim drafting method.
1 Nested Bean, Inc. v. Big Beings USA Pty Ltd., IPR2020-01234, Paper 42, 2023 WL 2207427, 2023 USPQ2d 232 (PTAB 2023) (Precedential) (Granting Rehearing and Modifying Final Written Decision).
2 Id., slip op. at 2 (quoting Reh’g Req. 1).
3 Id., slip op. at 4.
4 Id., slip op. at 4–5.
5 Id., slip op. at 5.
6 Id., slip op. at 11 (quoting 35 U.S.C. § 112, fifth paragraph).
7 Id., slip op. at 11 (quoting 37 C.F.R. § 1.75(c)).
8 Id., slip op. at 11 (quoting 37 C.F.R. § 1.75(c)).
9 Id., slip op. at 11.
10 Id., slip op. at 12.
11 Id., slip op. at 18.
12 Id., slip op. at 19.
