Nested Bean, Inc. v. Big Beings Pty Ltd

When a multiple dependent claim alternatively references more than one claim and the Board finds one referenced claim unpatentable but another not unpatentable, the Board cannot hold every version of the multiple dependent claim unpatentable on the strength of the one. Under the plain language of pre-AIA 35 U.S.C. § 112, fifth paragraph ("[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"), the Board must separately consider the patentability of each alternative dependency, and the same applies under post-AIA § 112(e). No prior precedent directly addressed this issue. The Director found it one of first impression, and rejected the Board's footnote 7 approach in the Final Written Decision. A petitioner can no longer win unpatentability of a multiple dependent claim in all its versions by showing that one version, such as the one depending from a weak independent claim, is unpatentable. It must prove unpatentability of each alternative dependency, so a failure on one base claim leaves the claims depending from it standing. A patent owner can defend each alternative dependency on its own merits, and it keeps the versions that depend from an independent claim that survives. The Director relied on the statutory text, 35 U.S.C. § 282, 37 C.F.R. § 1.75(c) and MPEP guidance. The Director also cited Federal Circuit decisions, Dow Chemical and Dayco Products, as consistent with this reading, though neither squarely decided the issue, and noted that Thaler v. Vidal says clear statutory text ends the inquiry. LEGAL TEST OR STANDARD: The Director read the plain language of 35 U.S.C. § 112, fifth paragraph, together with 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c), to require the Board to "consider separately the limitations of each claim incorporated by reference into the multiple dependent claim." A multiple dependent claim is treated as the equivalent of several single dependent claims, each of which rises or falls separately. If the statutory text is clear, that ends the analysis. The Director also checked precedent, legislative history (PCT Rule 6.4) and USPTO guidance, and found that all of them supported the reading. TRIGGERING FACTS: A challenged claim is a multiple dependent claim that alternatively depends from two or more independent claims (here claims 3-16 depending from claim 1 or 2). The Board found one base claim unpatentable (claim 2) and another not shown unpatentable (claim 1). The Board had treated the multiple dependent claims as unpatentable if either version was shown unpatentable. The rule applies to the version depending from the surviving base claim, which must be considered separately. KEY QUOTE: "As such, I interpret section 112, fifth paragraph, to require that the Board consider separately the limitations of each claim incorporated by reference into the multiple dependent claim." (Paper 42, p. 18) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Director distinguished Dukane Corp. v. Herrmann Ultraschalltechnik GmbH & Co., KG, IPR2016-00066, Paper 15 (PTAB Apr. 26, 2017), SK Innovation Co., Ltd. v. Celgard, LLC, IPR2014-00680, Paper 59 (PTAB Nov. 6, 2015), and Amerigen Pharm. Ltd. v. Shire LLC, IPR2015-02009, Paper 32 (PTAB Dec. 28, 2016), because each addressed only the instituted dependency. The Director also found Chrimar Sys. Inc. v. Ruckus Wireless, Inc. unhelpful. The decision struck footnote 7 of the Board's own Final Written Decision. PRACTICE TIP: Petitioners should challenge and prove unpatentability of each alternative dependency of a multiple dependent claim, and should not assume that unpatentability of the base claim in one version carries the claim in all versions. Patent owners should check whether a multiple dependent claim depending from a surviving independent claim was addressed separately, and should seek rehearing or Director review if it was not.