USPTO Director Vidal: Decision on Treatment of Multiple Dependent Claims Is Precedential

US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the final written decision. The decision interprets the language of the fifth paragraph of 35 U.S.C. § 112 to require that the Board consider separately the limitations of each claim incorporated by reference into a multiple dependent claim.

The patent at issue, US Patent Number 9,179,711, is for a new or alternative swaddling suit to swaddle infants by sufficiently restraining movement of the limbs, suppressing the startle reflex, and allowing hand-to-mouth movement so the infant can self-soothe by sucking their thumb.

The patent owner brought suit against the petitioner in 2017 in the US District Court for the District of Massachusetts for patent infringement. The petitioner challenged the validity of Claims 1–18 before the PTAB. The Board found Claim 2 of the contested patent unpatentable as obvious.[1]

At the same time, the Petitioner was unable to establish by a preponderance of evidence that Claims 1, 17, and 18 were unpatentable.[2] Because claims 3–16 were multiple dependent claims, depending from independent Claim 1 or 2 of the patent, the Board held them unpatentable, relying exclusively on the Board’s decision regarding Claim 2 being unpatentable.[3] Accordingly, the patent owner filed a timely request for director review, noting that the Board misapprehended or overlooked the fact that, in the alternative, these claims depended on independent Claim 1.[4]

Director Vidal authorized the parties to file supplemental briefs to address the issues.[5] In particular, Director Vidal asked the parties to (1) address whether the interpretation of 35 U.S.C. § 112, fifth paragraph, governing multiple dependent claims on which the patent owner relies is an issue of first impression, and if so, (2) address the legislative history, appropriate statutes, and regulations, as well as any policy issues or persuasive authority, and if not, (3) address any authoritative case law specifically concerning the patent owner’s interpretation.[6]

An Issue of First Impression

The Board’s consideration of multiple dependent claims’ patentability as to each of its alternatively referenced claims was an issue of first impression.

On review, the patent owner asserted that the case is unique and that the US Court of Appeals for the Federal Circuit had not addressed this issue previously.[7] Further, the patent owner cited numerous prior Board decisions that “considered multiple dependent claims independently and declined to make any determination as to the patentability of multiple dependent claims.”[8] The  petitioner, on the other hand, cited a string of Federal Circuit cases that address alternatively recited limitations in the body of the claim.[9]

Ultimately, none of these Federal Circuit decisions “affirmatively determined that all versions of the multiple dependent claim were unpatentable based on finding that only one version of the multiple dependent claim was unpatentable.”[10] Accordingly, Director Vidal opined that the Federal Circuit had not previously addressed the situation present in this case.[11] Thus, this was an issue of first impression.

Separate Consideration of Patentability

Upon further consideration, Director Vidal determined that the plain language of 35 U.S.C. § 112, coupled with the language of 35 U.S.C. § 282 and 36 C.F.R. § 1.75(c), clearly supports requiring separate consideration of patentability of alternative dependencies of a multiple dependent claim. This statutory interpretation aligns with the Federal Circuit precedents, legislative history, and USPTO guidelines and practices.

First, after a comprehensive review of various statutes addressing the issue, the director found that Section 112 requires separate consideration of patentability of each alternative dependency of a multiple dependent claim.[12] In particular, reading Section 112(5) to “permit the unpatentability of any one of the individual dependent claims . . . would conflict with 35 U.S.C. § 282, which mandates the presumption of the validity of “[e]ach claim of a patent,” even when such claims are dependent on an invalid claim.[13]

Neither party identified a judicial or administrative decision squarely addressing the interpretation presented therein.

Second, although neither party identified a judicial or administrative case that was directly on point, the patent owner provided Federal Circuit precedents that supported such an interpretation. The Federal Circuit has “emphasized” that “each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; [and] dependent multiple claims shall be presumed valid even though dependent upon an invalid claim.’”[14] Further, the Federal Circuit has explained that “not addressing claim validity on an individual basis” is an error and contravenes 35 U.S.C. § 282.[15] These two decisions suggest that the patentability of a multiple dependent claim should be considered separately as to each of its alternatively referenced claims.[16]

Finally, Director Vidal noted that separately considering alternatively referenced claims comports with both the legislative history of the statute and the current USPTO guidance and practice.[17]

Conclusion

On February 24, 2023, Director Vidal designated this decision as precedential, affirming that under 35 U.S.C. § 112, fifth paragraph, the Board must individually assess the patentability of alternative dependencies in a multiple dependent claim. This is based on the statute's plain language, Federal Circuit case law, legislative history, and USPTO procedure.

Practitioners considering drafting multiple dependent claims or litigators litigating patents with such claims should take this ruling into account.