Director Review Spotlight: Multiple Dependent Claims

In Nested Bean, Inc. v. Big Beings USA Pty Ltd, IPR2020-01234 (PTAB February 24, 2023), Director Vidal considered how multiple dependent claims should be addressed in Patent Trial and Appeal Board proceedings.

Nested Bean, Inc. (“petitioner”) filed a petition requesting IPR of claims 1-18 of U.S. Patent No. 9,179,711 B2. Claims 1 and 2 of the patent are independent, while claims 3-16 are multiple dependent claims that depend directly or indirectly from either claim 1 or 2. The Board granted institution of IPR and issued a final written decision that determined that the petition did not establish that claims 1, 17, and 18 were unpatentable by a preponderance of the evidence, but found claims 2-16 to be unpatentable by a preponderance of the evidence. Big Beings USA Pty Ltd. and LB Online & Export Pty Ltd. d/b/a Love to Dream Online and Exports (“patent owner”) filed a request for Director Review, arguing that the Board should have found that the petitioner failed to show that claims 3-16 were unpatentable by a preponderance of the evidence because those claims were multiple dependent claims that depend from claim 1 or 2, and the Board found that the petitioner failed to show that claim 1 was unpatentable by a preponderance of the evidence.

The Director granted review of the Board’s decision and authorized a series of supplemental briefs, answers, and replies to “(i) address whether the interpretation of 35 U.S.C. § 112, fifth paragraph, governing multiple dependent claiming on which Patent Owner relies is an issue of first impression, and (ii) if so, address the legislative history, appropriate statutes, and regulations as well as any policy issues or persuasive authority, and (iii) if not, address any authoritative case law specifically concerning Patent Owner’s interpretation.” Ultimately, the Director found that the Board’s “consideration of multiple dependent claim patentability as to each of its alternatively referenced claims is an issue of first impression before the Board,” and “that the plain language of 35 U.S.C. § 112, fifth paragraph, requires that the patentability of a multiple dependent claim is considered separately as to each of its alternatively referenced claims.”

In explaining her reasoning, Director Vidal first found that the Board had determined that claims 3-16 were unpatentable, but only considered independent claim 2 and did not consider the patentability of claims 3-16 as dependent from independent claim 1, which was not shown to be unpatentable. The Director further found that the Board’s consideration of multiple dependent claim patentability as to each of its alternatively referenced claims was an issue of first impression. The Director did not believe that any of the petitioner’s cited cases or decisions were instructive on the issue. When interpreting the fifth paragraph of 35 U.S.C. § 112, the Director agreed with the patent owner’s interpretation that the “statute requires the Board to separately consider the patentability of alternative dependencies of a multiple dependent claim.” The Director arrived at this decision after reviewing the language of the statutes and regulations governing multiple dependent claims, precedent, legislative history, and current U.S. Patent and Trademark Office guidance and procedures. The Director found that the plain language of 35 U.S.C. § 112 and the language in 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c) supported the reading requiring “separate consideration of the patentability of alternative dependencies of a multiple dependent claim.” Other authority, including case law and legislative history, supported this conclusion.

Based on those findings, the Director determined that “the Board erred in its analysis of multiple dependent claims 3-16 by failing to separately consider that claims 3-16 incorporate by reference the limitations of claim 1 – which was not shown to be unpatentable.” As a result, the Director ruled that the Board should have determined whether the multiple dependent claims 3-16 as dependent from claim 1 were also unpatentable, and since it failed to do that, the petitioner failed to show by a preponderance of the evidence that claims 3-16 were unpatentable. Finally, the Director modified the Board’s final written decision to be consistent with her findings.