Director Vidal Clarifies Assessment of Patentability of Multiple Dependent Claims

The USPTO is currently operating an interim process for Director review in response to the Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), which held that decisions rendered by the Administrative Law Judges of the Patent Trial and Appeal Board (PTAB; “Board”) regarding patent validity were not the final decisions of the agency without the ability for the Director of the USPTO to intervene. Under the interim Director review process, any party to a PTAB proceeding (e.g., inter partes review (IPR) and post-grant review (PGR) proceedings) may request review by the Director using a process similar to the current PTAB rehearing procedure.  

Director Vidal has actively used the Director review process since she took office last April. In one of her recent decisions (Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (February 24, 2023)), the Director decided on the issue of assessing patentability of multiple dependent claims, which was deemed to be an issue of first impression.  

Nested Bean filed an IPR petition challenging claims 1-18 of a patent owned by Big Beings. Claims 1 and 2 were independent claims; claims 3-16 were multiple dependent claims depending directly or indirectly from either claim 1 or 2; and claims 17 and 18 were single directly or indirectly dependent claims of claim 1.  

The Board found that claims 1, 17, and 18 were patentable but claim 2 was unpatentable. With respect to the multiple dependent claims 3-16, the Board considered them to be anticipated or rendered obvious by the prior art if either the version depending from claim 1 or the version depending from claim 2 was described by the prior art. Because the Board found that the version depending from claim 2 was unpatentable, without separately considering the patentability of the claims as dependent from claim 1, the Board concluded that claims 3-16 were also unpatentable.  

Big Beings filed a request for Director review and argued that the Board should have found claims 3-16, as depending from claim 1, were patentable under pre-AIA 35 U.S.C. § 112, fifth paragraph, which was the statute governing the multiple dependent claims of the patent at issue. Director Vidal granted the request and noted that the determinations and rationale in her decision applied equally to the corresponding post-AIA version of the statute, i.e., 35 U.S.C. § 112(e). 

After reviewing the language of the relevant statutes and regulations governing multiple dependent claims, Director Vidal found that the plain language of § 112, fifth paragraph, which states “[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,” clearly communicated that “a multiple dependent claim is the equivalent of several single dependent claims.” In addition to the statutory language, the Director further examined other interpretive sources, including Federal Circuit case law, the statute’s legislative history, and the current USPTO guidance and practice, and found that all these sources also supported the conclusion that a multiple dependent claim must be considered as a plurality of single dependent claims. Therefore, the Director agreed with Big Beings and held that “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.”  

Accordingly, 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” and granted rehearing and modified the Board’s Final Written Decision.  

Takeaway:  By citing cases addressing alternatively recited limitations in the body of a claim as supporting its position, Nested Bean, the Petitioner, appeared to urge the Director to treat claim dependency of a multiple dependent claim in the same manner as treating alternatively recited claim features. The Director rejected this treatment. Noting that the statute is clear in specifying that a multiple dependent claim must be interpreted as several single dependent claims, the Director has clarified that the patentability of a multiple dependent claim must be separately evaluated as to each of its alternatively referenced claims.