How to evaluate the patentability of a multiple dependent claim
Oh, what a tangled web we weave … particularly when a patent’s dependent claims have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States. The director of the U.S. Patent and Trademark Office might agree after stepping in to address how the Patent Trial and Appeal Board (PTAB) should evaluate the patentability of a multiple dependent claim.
The PTAB cuts the analysis short
The underlying case concerned a patent for a swaddling suit for infants. Nested Bean Inc. requested an inter partes review (IPR) of the patent, contending that the patent being enforced against them was unpatentable.
Specifically, it challenged claims 1 through 18 of the patent. Claims 1 and 2 were independent, and claims 3 through 16 were multiple dependent claims, depending directly or indirectly from either claim 1 or 2. The PTAB determined that Nested Bean established that claim 2 was unpatentable but didn’t establish that claims 1, 17 or 18 were unpatentable. Because it also found that claims 3 through 16 were unpatentable if either claim 1 or 2 was unpatentable, those claims were unpatentable, too.
The patent owner filed a Request for Director Review. It argued that, because Nested Bean failed to show that claim 1 was unpatentable, the PTAB should have found that the challenger failed to show that claims 3 through 16 were unpatentable. Nested Bean countered that, if any version of a multiple dependent claim is unpatentable due to prior art, all versions of the claim should be found unpatentable.
Once isn’t enough
The director granted the patent owner’s request, noting that the issue was one of “first impression.” She concluded the Patent Act requires that the patentability of a multiple dependent claim, such as claims 3 through 16, be considered separately as to each of its alternatively referenced claims (here, claims 1 and 2).
A multiple dependent claim is the equivalent of several single dependent claims. In the same way that the unpatentability of multiple single dependent claims would each rise or fall separately, so too should the dependent claims covered by a multiple dependent claim. The PTAB must consider a multiple dependent claim as it would “a plurality of single dependent claims.”
In support of this conclusion, the director cited rulings from the U.S. Circuit Court of Appeals for the Federal Circuit that suggest the patentability of a multiple dependent claim should be considered separately as to each of its alternatively referenced independent claims. She also relied on the legislative history of the Patent Act and current PTO guidance.
In light of the director’s finding, the PTAB erred when it determined that claims 3 through 16, as dependent from claim 1, were unpatentable. The director therefore granted a rehearing and modified the board’s final written decision accordingly.