Multiple Dependent Claims Are Treated As Multiple Claims

• Jurisdiction: United States,Federal
• Law Firm: Jones Day
• Subject Matter: Intellectual Property, Patent
• Author: Mr Matthew Johnson and Matthew Chung
• Published date: 31 March 2023

On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. ("Nested Bean") filed a petition against Patent Owner, Big Beings USA Pty. Ltd. ("Big Beings"), challenging claims 1-18 of U.S. Patent No. 9,179,711 B2 ("'711 Patent"). The '711 Patent is directed to a swaddling suit that restrains movement of an infant's limbs, suppressing the startle reflex while still allowing movement of the arms to reach the mouth. Notably, claims 1 and 2 of the '711 Patent are independent claims, and claims 3 to 16 are all multiple dependent claims that depend on either claim 1 or claim 2.

In its Final Written Decision, the PTAB found that Nested Bean did not establish that claim 1 was unpatentable, but did establish that claim 2 was unpatentable. The PTAB further asserted that since claims 3 to 16 depend alternatively from either claim 1 or claim 2, they considered claims 3 to 16 to be anticipated if either version of the claims are described by the prior art. Paper 34 at 35 n.7, IPR2020-01234. Under this reasoning, the PTAB ultimately found that claims 3 to 16 were unpatentable.

In their Request for Director review, Big Beings challenged the decision arguing that the PTAB erred under pre-AIA 35 U.S.C. ' 112, fifth paragraph in finding claims 3 to 16 unpatentable when it depends on both claim 1 and claim 2. Since the PTAB did not find enough evidence that claim 1 was unpatentable, Big Beings argued that the versions of claims 3 to 16 relying on claim 1 should also not have been found unpatentable. Paper 42 at 2-3, IPR2020-01234.

Director Vidal agreed and modified the PTAB's decision to show claims 3 to 16 are not unpatentable. Id. at 19. After determining that this was a case of first impression...