Director Vidal Interprets Multiple Dependent Claiming Statute, Pre-AIA 35 U.S.C. § 112, Fifth Paragraph, in Case of First Impression Before the PTAB

April 4, 2023

On February 24, 2023, a precedential decision issued on Director Review in Nested Bean, Inc. v. Big Beings USA Pty Ltd., IPR2020-01234, Paper 42, that addresses the PTAB’s treatment of multiple dependent claims and the meaning of pre-AIA 35 U.S.C. § 112, fifth paragraph, which governs multiple dependent claiming.


The IPR involves a patent directed to a “swaddling suit” for infants.  Claims 1 and 2 are the sole independent claims.  Claims 3-16 are multiple dependent claims—each depends directly or indirectly from claim 1 or, alternatively, claim 2.  Claims 17-18 depend directly or indirectly from claim 1. Paper 42 at 2.  The PTAB issued a Final Written Decision (FWD) in which it concluded that claims 1, 17, and 18 were not shown to be unpatentable but that claims 2-16 were shown to be unpatentable. Id.  In assessing patentability of the multiple dependent claims, the PTAB concluded:  “Claims 3-16 depend alternatively from claims [sic] 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.” Id. at 4 (emphasis in original).  The PTAB thus did not separately consider the patentability of claims 3-16 as dependent from claim 1, which was not shown to be unpatentable. Id. at 4-5.


The Patent Owner requested Director Review and contended that because the PTAB found that claim 1 was not shown to be unpatentable, the PTAB should have found that the Petitioner likewise failed to show that claims 3-16, as depending from claim 1, are unpatentable under pre-AIA § 112, fifth paragraph. Paper 42 at 2-3.  The request was granted and the parties submitted supplemental briefing to address whether the interpretation of pre-AIA § 112, fifth paragraph, on which Patent Owner relies is an issue of first impression, and related matters. Id.


Director Vidal determined that the PTAB’s consideration of multiple dependent claim patentability as to each of the alternatively referenced claims is an issue of first impression before the PTAB and that the issue presented has not been squarely addressed by precedent. Paper 42 at 3-10.  After considering the statutes and regulations governing multiple dependent claims, as well as other interpretative sources, Director Vidal concluded that the plain language of pre-AIA § 112, fifth paragraph, requires that the patentability of a multiple dependent claim is considered separately as to each of its alternatively referenced claims and that the PTAB erred in determining (without considering) that claims 3-16, as dependent from claim 1, are unpatentable. Id. at 10-19.  Director Vidal explained, “Because the [PTAB] determined that Petitioner failed to show that claim 1 is unpatentable, the [PTAB] should have determined that multiple dependent claims 3-16, as dependent from claim 1, also are not unpatentable.  Thus, Petitioner failed to show…that claims 3-16, as dependent from claim 1, are unpatentable.” Id.   Consistent with this finding, the Director held that (1) the Petitioner failed to show that claims 1, 3-16 (as dependent on claim 1), 17, and 18 are unpatentable and (2) that Petitioner showed that claims 2 and 3-16 (as dependent on claim 2) are unpatentable. Id. at 20-21.   Director Vidal also set out modifications to the summary table and text of the PTAB’s FWD. Paper 42 at 21-26.