Director Vidal Hands Down Precedential Decision on Issue of First Impression Addressing Patentability of Multiple Dependent Claims

April 11, 2023

Reading Time : 2 min

By: Caitlin E. Olwell, Rubén H. Muñoz, Ange Christiani (Law Clerk)

Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (Feb. 24, 2023).

Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for each independent claim on which those dependent claims rely.  According to the decision, the unpatentability of some, but not all, of the independent claims from which a multiple dependent claim depends does not automatically render unpatentable that dependent claim.

The Patent Owner in this case requested Director Review of the Patent Trial and Appeal Board’s Final Written Decision, holding that claims 2-16 of United States Patent No. 9,179,711 (the “711 Patent”) were unpatentable.  Claims 1 and 2 of the 711 Patent were independent claims.  Claims 3-16 were multiple dependent claims, which alternatively referenced and depended from either independent claim 1 or claim 2.  The PTAB held that claims 3-16 were unpatentable because claim 2—only one of the independent claims from which claims 3-16 alternatively depended—was unpatentable. 

Under Director Review, the Patent Owner argued as a potential issue of first impression that the PTAB’s decision was in error because it failed to separately consider the patentability of claims 3-16 under the alternatively referenced independent claim 1.  In her decision, Director Vidal agreed with Patent Owner that: (i) this was an issue of first impression, and (ii) the Board was required to consider multiple dependent claim patentability with respect to all alternatively referenced independent claims.  As such, Director Vidal reversed the PTAB’s decision and ultimately upheld the patentability of claims 3-16 in view of the patentability of independent claim 1.

When issuing this ruling, Director Vidal called attention to the plain language of 35 U.S.C. § 112 ¶ 5, quoting in pertinent part “[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.”  According to the Director’s decision, this language requires a separate patentability analysis of multiple dependent claims, particularly when coupled with 35 U.S.C. § 282, which states that “[e]ach claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims[.]”  Without this interpretation, the Director noted, §§ 112 and 282 would fail to have effect.  The plain language of 37 C.F.R. § 1.75(c) regarding fee calculation also supported the decision.  See 37 C.F.R. 1.75(c) (“For fee calculation purposes . . . a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein.”).  Additionally, the Director reasoned that an interpretation requiring separate analysis of multiple dependent claims for each independent claim on which they rely aligns with long-standing USPTO practice and guidance.  See MPEP § 608.01(n)(I)(B)(4) (Eighth Ed., Rev. 7 (July 2008)) (“[A] multiple dependent claim…contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration.”) (emphasis added).  The Director’s decision applies with equal force to both pre-AIA and AIA patent claims. 

Practice Tip: Petitioners challenging the patentability of multiple dependent claims should recognize that they must prove by a preponderance of the evidence that each independent claim from which those dependent claims depend is also unpatentable. Additionally, when drafting claims, patentees should consider carefully whether a multiple dependent claim strategy may be beneficial in asserting infringement and/or fending off patentability challenges.  

Share This Insight

Previous Entries

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

IP Newsflash

May 30, 2025

A district court recently dismissed a patent infringement complaint for improper venue under 28 U.S.C. § 1400(b), finding that the storage and distribution of products from an Amazon warehouse was not sufficient to establish that warehouse as a regular and established place of business in the district.

...

Read More

IP Newsflash

May 27, 2025

The Federal Circuit affirmed a District of Delaware finding of non-infringement in an ANDA litigation due to the patentee’s clear and unmistakable disavowal of claim scope during prosecution. Specifically, the court held that statements made during prosecution of a parent application before the asserted claims were allowed amounted to a prosecution disclaimer that extended to subsequent patents in the family. In reaching this conclusion, the court rejected an attempt by the patentee to resurrect the claim scope through a unilateral, self-serving statement made in later applications in the family.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.