By Matt Chung and Matt Johnson

On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested Bean”) filed a petition against Patent Owner, Big Beings USA Pty. Ltd. (“Big Beings”), challenging claims 1-18 of U.S. Patent No. 9,179,711 B2 (“’711 Patent”). The ’711 Patent is directed to a swaddling suit that restrains movement of an infant’s limbs, suppressing the startle reflex while still allowing movement of the arms to reach the mouth. Notably, claims 1 and 2 of the ’711 Patent are independent claims, and claims 3 to 16 are all multiple dependent claims that depend on either claim 1 or claim 2.

In its Final Written Decision, the PTAB found that Nested Bean did not establish that claim 1 was unpatentable, but did establish that claim 2 was unpatentable. The PTAB further asserted that since claims 3 to 16 depend alternatively from either claim 1 or claim 2, they considered claims 3 to 16 to be anticipated if either version of the claims are described by the prior art. Paper 34 at 35 n.7,  IPR2020-01234. Under this reasoning, the PTAB ultimately found that claims 3 to 16 were unpatentable.

In their Request for Director review, Big Beings challenged the decision arguing that the PTAB erred under pre-AIA 35 U.S.C. § 112, fifth paragraph in finding claims 3 to 16 unpatentable when it depends on both claim 1 and claim 2. Since the PTAB did not find enough evidence that claim 1 was unpatentable,  Big Beings argued that the versions of claims 3 to 16 relying on claim 1 should also not have been found unpatentable. Paper 42 at 2-3, IPR2020-01234.

Director Vidal agreed and modified the PTAB’s decision to show claims 3 to 16 are not unpatentable. Id. at 19. After determining that this was a case of first impression, Director Vidal analyzed the language of pre-AIA 35 U.S.C. § 112, fifth paragraph. Drawing extrinsic support from 37 C.F.R. § 1.75(c) and 35 U.S.C. § 282, Director Vidal found that § 112, fifth paragraph “communicates that a multiple dependent claim is the equivalent of several single dependent claims.” Id. at 11. Director Vidal further found support in Dow Chemical Co. v. Mee Industries, Inc., 41 F.3d 1370, 1377–138 (Fed. Cir. 2003) and Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1370 (Fed. Cir. 2003). While neither case specifically addressed multiple dependent claims, they imply that each version of a multiple dependent claim should be evaluated separately. Id. at 12-14. She then analyzed the legislative history of the statute and found that it should follow PCT Rule 6.4 “which suggests that the patentability of a multiple dependent claim is considered separately as to each of its alternatively referenced claims.” Id. at 14-17. Finally, Director Vidal finds support from current USPTO guidance where it treats different versions of a multiple dependent claim separately. Id. at 17-18.

Takeaway: Using an IPR to cancel a multiple dependent claim requires showing each version of the claim is separately unpatentable. Further, since pre-AIA 35 U.S.C. § 112, fifth paragraph is the same as post-AIA 35 U.S.C. § 112(e), this applies to both pre-AIA and post-AIA patents.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.