In Patent Office Proceedings, the Patentability of Multiple Dependent Claims Must be Considered Separately as to Each Recited Alternative

On February 24, 2023, the Director of the United States Patent and Trademark Office (“USPTO”) issued a precedential Director Review Decision in the Inter Partes Review (“IPR”) of Nested Bean, Inc. v. Big Beings Pty Ltd.^[1] The decision modified the Patent Trial and Appeal Board’s (PTAB) final written decision that had found all challenged multiple dependent claims fully invalid, notwithstanding the fact that one of the independent claims from which the multiple dependent claims depended was not found to be invalid.^[2]

Big Beings asserted U.S. Patent 9,179,711 (the ’711 Patent) against Nested Bean in U.S. District Court.^[3] The ’711 Patent includes 18 claims, of which claims 3-16 are recited in multiple dependent form to depend from either claim 1 or claim 2. The suit prompted Nested Bean to file the IPR on the ’711 Patent requesting the PTAB find all 18 claims unpatentable.^[4] In the Final Written Decision, the PTAB found claims 2-16 were unpatentable, but that claims 1, 16, 17, and 18 were not unpatentable. The Board’s finding was premised on the following legal determination:

Claims 3–16 depend alternatively from claims 1 or claim 2. Thus, we consider claims 3–16 to be anticipated (or rendered obvious below) by the prior art if either version of these claims (the version depending from claim 1 or the version depending claim 2) is described by the prior art.^[5]

Big Beings subsequently filed a Request for Director review asserting that claims 3-16, which each depended from claim 1 or claim 2, should have been found partially valid based on their alternative dependency to claim 1.^[6]

Director Vidal granted that Request and issued a Director Review Decision that reversed the PTAB’s determination. In her opinion, she stated that the consideration of multiple dependent claim patentability as to each of its alternatively referenced claims was an issue of first impression before the Board.^[7] She also asserted that this issue had not been squarely addressed by any Federal Circuit or district court cases.^[8] Director Vidal then analyzed the plain language of 35 U.S.C., § 112 fifth paragraph; the closest case precedent; the legislative history; and current USPTO Guidance and Procedures.^[9] Director Vidal ultimately concluded that “the plain language of the fifth paragraph of 35 U.S.C. § 112, coupled with the language in 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c), supports reading the statute to require separate consideration of the patentability of alternative dependencies of a multiple dependent claim.” Applying that interpretation, she found that 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.

This decision makes clear that a multiple dependent claim is a special type of claim that requires separate analysis of all alternative dependencies. Notably, these claims require different treatment than claims that merely recite alternative features, which was how the PTAB analyzed the claims prior to the Director’s review and reversal. Indeed, for those type of claims, a hypothetical claim “X” that recites feature “A or B” would not be considered partially anticipated by a prior art reference disclosing either “A” or “B.” Rather, claim “X” would be considered fully anticipated, and thus invalid. However, the Director made clear that multiple dependent claims require different treatment, which may result in partially invalidated claims.

Accordingly, practitioners drafting an IPR petition to invalidate a multiple dependent claim in its entirety should be certain to address each alternative claim tree derived from the multiple dependent claim.