Nested Bean, Inc. v. Big Beings Pty Ltd.,

OCR transcription for search; preserved printed pages are authoritative

Director PTABDecision Review@uspto. gov Paper 42
571-272-7822 Date: February 24, 2023

Patent Trial and Appeal Board
} PRECEDENTIAL
Designated: 2/24/2023

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
STATES PATENT AND TRADEMARK OFFICE

NESTED BEAN, INC.,
Petitioner,

V.

BIG BEINGS USAPTY LTD and LB ONLINE & EXPORT PTY LTD
d/b/a LOVE TO DREAM ONLINE AND EXPORTS,
Patent Owner.

IPR2020-01234
Patent 9,179,711 B2

Before KATHERINE K. VIDAL, Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and

Trademark Office.

DECISION
Granting Rehearing and Modifying Final Written Decision

IPR2020-01234
Patent 9,179,711 B2
I. 	INTRODUCTION
Nested Bean, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”)
requesting inter partes review of claims 1–18 of U.S. Patent No. 9,179,711
B2 (Ex. 1001, “the ʼ711 patent”). Claims 1 and 2 of the ʼ711 patent are
independent and claims 3–16 are multiple dependent claims, which depend
directly or indirectly from either claim 1 or 2. 	See Ex. 1001, 11:14–12:43.
On January 25, 2021, the Patent Trial and Appeal Board (“Board”) granted
institution of inter partes review (Paper 15, “Institution Dec.”) and on
January 24, 2022, the Board issued a Final Written Decision (Paper 34,
“Final Dec.”). The Final Written Decision determined that Petitioner did not
establish by a preponderance of evidence that claims 1, 17, and 18 were
unpatentable and further determined that Petitioner established by a
preponderance of evidence that claims 2–16 were unpatentable. Final
Dec. 69–70.
On February 23, 2022, Big Beings USA Pty Ltd and LB Online &
Export Pty Ltd d/b/a Love to Dream Online and Exports (collectively,
“Patent Owner”) filed a Request for Director review. Paper 35 (“Request”
or “Reh’g Req.”). In the Request, Patent Owner argued that
claims 3–16 are multiple dependent claims that each depend
from claim 1 or 2, and the Board found that Petitioner failed to
show by a preponderance of the evidence that claim 	1 	is
unpatentable. 	As a result, the Board should have found that
Petitioner likewise failed to show by a preponderance of the
evidence that claims 3–16 — as depending from claim 1 — are
unpatentable [under pre-AIA 35 U.S.C. § 112, fifth paragraph].
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Reh’g Req. 1.1 On June 17, 2022, I granted Director review of the Board’s
Final Written Decision and authorized Patent Owner to file a supplemental
brief and Petitioner to file a responsive brief to Patent Owner’s supplemental
brief. Paper 36, 3–4. In particular, I asked the parties to: (i) address whether
the interpretation of 35 U.S.C. § 112, fifth paragraph, governing multiple
dependent claiming on which Patent Owner relies is an issue of first
impression, and (ii) if so, address the legislative history, appropriate statutes,
and regulations, as well as any policy issues or persuasive authority, and
(iii) if not, address any authoritative case law specifically concerning Patent
Owner’s interpretation. Id. On July 1, 2022, Patent Owner timely filed its
supplemental brief (Paper 37, “PO Supp. Br.”) and on July 15, 2022,
Petitioner timely filed its responsive brief (Paper 38, “Pet. Resp. Br.”). On
July 26, 2022, I further authorized Patent Owner to file a reply brief to
Petitioner’s responsive brief and Petitioner to file a sur-reply brief to Patent
Owner’s reply brief. Paper 39, 2. On August 2, 2022, Patent Owner timely
filed its reply brief (Paper 40, “PO Reply”) and on August 9, 2022,
Petitioner timely filed its sur-reply brief (Paper 41, “Pet. Sur-Reply”).
I have reviewed the Board’s Decision, the relevant papers, and the
relevant exhibits of record in this proceeding. As discussed below, I find
that the Board’s consideration of multiple dependent claim patentability as
to each of its alternatively referenced claims is an issue of first impression
1 The relevant section of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
from which the ’711 patent issued claims priority to a foreign patent
application that was filed before March 16, 2013, my citation to 35 U.S.C.
§ 112 is to the pre-AIA version in effect as of the earliest priority date. My
determinations and rationale in this decision apply equally to the
corresponding post-AIA version of the statute, 35 U.S.C. § 112(e).
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before the Board. I further determine that the plain language of 35 U.S.C.
§ 112, fifth paragraph, requires that the patentability of a multiple dependent
claim is considered separately as to each of its alternatively referenced
claims. As such, I determine the Board erred in determining that claims 3–
16, as dependent from claim 1, are unpatentable. Accordingly, I grant
rehearing and modify the Board’s Final Written Decision.
II. 	DISCUSSION
A. 	Claims 1–18 of the ʼ711 patent and the Board’s Decision
Claims 1 and 2 of the ʼ711 patent are independent (Ex. 1001, 11:14–
53) and claims 3–16 are multiple dependent claims which, directly or
indirectly, alternatively reference and depend from either independent
claim 1 or 2 (id. at 12:1–52). For example, claim 3 recites, in relevant part,
“[a] swaddling suit according to claim 1 or 2.” Id. at 12:1.
The Board instituted review of claims 1–18 of the ʼ711 patent.
Institution Dec. 2. The Board’s Final Written Decision determined that
Petitioner failed to show that independent claim 1 was unpatentable but
Petitioner showed that independent claim 2 was unpatentable. Final
Dec. 69–70. In assessing the patentability of multiple dependent claims 3–
16, the Board determined that
[c]laims 	3–16 depend alternatively 	from claims 	[sic] 	1 	or
claim 2. 	Thus, we consider claims 3–16 to be anticipated (or
rendered obvious below) by the prior art if either version of these
claims (the version depending from claim 1 or the version
depending claim 2) is described by the prior art.
Id. at 35 n.7. Accordingly, the Board determined both versions of claims 3–
16, i.e., the first version depending from claim 1 and the second version
depending from claim 2, were shown to be unpatentable because the second
version depended from independent claim 2, which was shown to be
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unpatentable. See id. at 35–38, 64, 68–70. The Board did not separately
consider the patentability of claims 3–16 as dependent from independent
claim 1, which was not shown to be unpatentable. See generally id.
B. 	The Board’s consideration of multiple dependent claim patentability as
to each of its alternatively referenced claims is an issue of first
impression
Patent Owner asserts that the Federal Circuit has not squarely
addressed the issue because, in certain cases where the Federal Circuit has
“state[d] that a multiple dependent claim is invalid, the other independent
claim(s) were not before the Court” and, so, there was “lack of specificity in
the opinion.” PO Supp. Br. 8 (emphasis omitted). Patent Owner also
contends that the situation here is one of first impression before the Board
because it is a “rarity,” “few cases directly address this exact situation,” and
it “found no instances where the Board, in a Final Written Decision, found
that one of the independent claims from which a multiple dependent claim
depended unpatentable and another not unpatentable.” PO Supp. Br. 1, 3, 7;
see PO Reply 2–3. Patent Owner asserts that “prior board decisions have
considered multiple dependent claims independently” and “declined to make
any determination as to the ‘patentability of multiple dependent claims’” to
the extent they depend from an independent claim not challenged before the
Board. PO Reh’g Req. 13–14 (citing Comcast Cable Commc’ns, LLC v.
Rovi Guides, Inc., IPR2017-01147, Paper No. 41, 10–11 (PTAB Nov. 6,
2018); Target Corp. v. Proxicom Wireless LLC, IPR2020-00980, Paper 32,
32 n.7 (PTAB Nov. 30, 2021)); PO Supp. Br. 9.
Petitioner disputes Patent Owner’s assertion that this is an issue of
first impression and contends that the Board’s treatment of multiple
dependent claims here is “consistent with Federal Circuit precedent that a
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claim reciting alternatives be held invalid,” “is consistent with prior [Board]
decisions,” and is also consistent with district court precedent. Pet. Resp.
Br. 2, 6–7. Petitioner identifies a string of related Federal Circuit cases
addressing alternatively recited limitations in the body of the claim, which it
argues support its conclusion. Id. at 7–9 (citations omitted). Petitioner also
identifies three previous Board cases, which it argues support its contention:
Dukane Corp. v. Herrmann Ultraschalltechnik GmbH & Co., KG, IPR2016-
00066, Paper 15 (PTAB Apr. 26, 2017) (“Dukane”); SK Innovation Co., Ltd.
v. Celgard, LLC, IPR2014-00680, Paper 59 (PTAB Nov. 6, 2015) (“SK
Innovation”); and Amerigen Pharm. Ltd. v. Shire LLC, IPR2015-02009,
Paper 32 (PTAB Dec. 28, 2016) (“Amerigen”). Id. at 2–6; Pet. Sur-Reply 1–
3. 	Petitioner further points to two district court cases as support for its
conclusion. Pet. Resp. Br. 6–7 (citing Chrimar Sys. Inc. v. Ruckus Wireless,
Inc., 2020 WL 1905572 (N.D. Cal. Apr. 16, 2020); PrivaCash, Inc. v.
American Express Travel Related Services Co., 2014 WL 3666974 (W.D.
Wis. July 22, 2014)).
I agree with Patent Owner that the interpretation question presented
by this case has not been squarely addressed by precedent.2 I am not
persuaded by Petitioner’s characterization of the caselaw. None of the cited
decisions reviewed all versions of a multiple dependent claim and
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. Rather, the cited cases suggest that no
tribunal has directly addressed the particular situation before me.
2 Further, as discussed below, Patent Owner’s proposed interpretation is
consistent with existing MPEP guidance.
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The string of Federal Circuit cases Petitioner identifies do not address
this issue. Pet. Resp. 7–10; Pet. Sur-Reply 3. Rather than addressing the
relevant treatment of multiple dependent claims, those cases interpret
claimed features unrelated to claim dependency — ranges, genera, and
alternatively recited limitations. 	See, e.g., Pet. Resp. 7–9; Titanium Metals
Corp. of Am. v. Banner, 778 F.2d 775, 776, 781–782 (Fed. Cir. 1985)
(interpreting “a recitation of ranges” for an “alloy consisting essentially by
weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to
0.2% maximum iron, balance titanium”); King Pharm., Inc. v. Eon Labs,
Inc., 616 F.3d 1267, 1276–77 (Fed. Cir. 2010) (addressing the prior art’s
disclosure of a range of time); Atlas Powder Co. v. IRECO Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999) (concerning “a single prior art species within
the patent’s claimed genus”); Brown v. 3M, 265 F.3d 1349, 1353 (Fed. Cir.
2001) (interpreting “at least one of two-digit, three-digit, or four-digit year-
date representations”); In re Theresa, 720 Fed. Appx. 634, 637 (Fed. Cir.
2018) (interpreting “preset words or pre-set symbols”); USA, Inc. v. Baxter
Int’l, Inc., 582 F.3d 1288, 1297-98 (Fed. Cir. 2009) (interpreting a claim
written in Markush format). None of those cases addresses the interpretation
of multiple dependent claims, as Petitioner recognizes. Pet. Sur-Reply. 3.
Furthermore, the Federal Circuit cases identified by Patent Owner,
which concern multiple dependent claims, do not address this particular
situation. PO Supp. Br. 7–9; Reh’g Req. 9–10. In Dow Chemical Co. v.
Mee Industries, Inc., 41 F.3d 1370, 1377–138 (Fed. Cir. 2003), the Federal
Circuit pointed out in its invalidity analysis that claims 21 and 23 were
“multiple-dependent claim[s], but only independent claim 14 from which
[they] depend[] is asserted” (emphasis added). As such, the Federal Circuit
in Dow Chemical suggested that its invalidity analysis was only directed to
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the versions of claims 21 and 23 depending from independent claim 14 and
did not address the validity of non-asserted claims. Furthermore, the dissent
in Honeywell Int’l v. Hamilton Sundstrand, 370 F.3d 1131, 1148–149 (Fed.
Cir. 2004) addressed the validity of non-multiple dependent claims
(dissenting from the majority’s opinion that “rewriting a dependent claim
into independent form, coupled with the cancellation of the original
independent claim, constitutes a narrowing amendment”). The dissent
addressed multiple dependent claims only tangentially, opining that “[e]ach
claim defines a separate invention, whether or not written in independent
form; and its validity stands or falls separately.” Id.
The issue also has not been addressed previously by the Board. The
Board cases identified by Petitioner are not helpful to its proposed
interpretation. In Dukane, the Board addressed the unpatentability of
multiple dependent claim 6 only to the extent it depended from claim 1, even
though claim 6 alternatively depended from claim 2 or 3. 	Dukane, Paper 15,
17 (stating it “considered claim 6 in the same manner when [it] instituted
this inter partes review based on its dependency from claim 1, but not
claims 2 and 3”). In SK Innovation, the Board again addressed the
unpatentability of multiple dependent claim 11 only to the extent it depended
from claims 7–10, even though claim 11 alternatively depended from
claims 1–6. SK Innovation, Paper 59, 4–5 (explaining trial was instituted on
grounds “challenging claims 7–11” and the “resulting Final Decision did not
include a determination of the patentability of claims 1–6, or a determination
of the patentability of claim 11 to the extent it depends from claims 1–6”).
In Amerigen, the Board similarly addressed the unpatentability of multiple
dependent claim 25 only to the extent it depended from claims 18–20, and
expressly stated that it did not make an unpatentability determination of
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claim 25 with respect to its alternative dependence from claims 2 or 13.
Amerigen, Paper 32, 4 (confirming “that claim 25 is part of the trial only to
the extent it depends from claims 18–20, and not to the extent it depends
from non-instituted claims 2 and 13”).
The district court cases Petitioner cites are of little guidance.
PrivaCash, Inc. v. American Express Travel Related Services Co., 2014 WL
3666974 (W.D. Wis. July 22, 2014) does not address the particular situation
presented in this case. In PrivaCash, the district court did not address
whether the invalidity of one version of a multiple dependent claim
invalidates all versions of the multiple dependent claim. 	See id. Instead, the
district court rejected the argument that the alternatively recited versions of a
multiple dependent claim must be treated as a group, highlighting that a
multiple dependent claim is considered independently and incorporates by
reference all the limitations of the particular claim in relation to which it is
being considered. Id. at 10–11 (citations omitted).
Petitioner’s only case supporting its position, Chrimar Sys. Inc. v.
Ruckus Wireless, Inc., No. 16-CV-00186-SI, 2020 WL 1905572, at *3 (N.D.
Cal. Apr. 16, 2020), provides little guidance. Pet. Resp. 6–7. Although
Chrimar discusses the treatment of multiple dependent claims, it does not
discuss the interpretation of 35 U.S.C. § 112, fifth paragraph. See Chrimar,
2020 WL 1905572, at *3–4. Instead of interpreting 35 U.S.C. § 112, the
opinion in Chrimar instead interprets the language in an order in a Final
Written Decision of the Board. See id. Specifically, Chrimar interpreted
language in the Board’s Final Written Decision as invalidating all versions
of a multiple dependent claim. However, the Final Written Decision did not
explain whether it considered multiple dependent claim patentability as to
each of its alternatively referenced claims, let alone explain that all versions
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of the multiple dependent claim were invalid. 	See Juniper Networks, Inc. v
Chrimar Systems, Inc., IPR2016-01391, Paper 66 (PTAB, Dec. 20, 2017).
At most, the trial court’s conclusion implies Petitioner’s interpretation.
However, any such inference carries little persuasive value, particularly in
light of the statutory language and other interpretative sources considered
here, which were not analyzed by the trial court.
C. 	Interpretation of 35 U.S.C. § 112, fifth paragraph
Patent Owner and Petitioner disagree on the interpretation of
35 U.S.C. § 112, fifth paragraph. Patent Owner contends that this statute
requires the Board to separately consider the patentability of alternative
dependencies of a multiple dependent claim. Reh’g Req. 1; PO Supp.
Br. 10. Petitioner, conversely, contends that this statute should be read so
that if any version of a multiple dependent claim is found unpatentable over
the prior art, then the “entirety,” i.e., all versions, of the multiple dependent
claim should be found unpatentable. Pet. Resp. 1. For the reasons set forth
below, I agree with Patent Owner’s interpretation based on the plain
language of the statute, as supported by Federal Circuit case law, legislative
history, and USPTO procedure.
1. 	Statutes and Regulations
I first turn to the language of the statutes and regulations governing
multiple dependent claims.
35 U.S.C. § 112, fifth paragraph, states, in relevant 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.” Similarly, 37 C.F.R. § 1.75(c) states, in relevant part, “[a]
multiple dependent claim shall be construed to incorporate by reference all
the limitations of each of the particular claims in relation to which it is being
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considered.” 37 C.F.R. § 1.75(c) further explains that, “[f]or fee calculation
purposes . . . a multiple dependent claim will be considered to be that
number of claims to which direct reference is made therein.” Further,
35 U.S.C. § 282, which governs the treatment of claims after issuance,
requires 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; dependent or multiple dependent claims shall be
presumed valid even though dependent upon an invalid claim.”
The plain language of 35 U.S.C. § 112, fifth paragraph, communicates
that a multiple dependent claim is the equivalent of several single dependent
claims. Thus, 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. 37 C.F.R.
§ 1.75(c) further supports that interpretation because each alternatively
referenced claim of a multiple dependent claim incurs a separate dependent
claim fee, i.e., each version of a multiple dependent claim is charged as a
stand-alone dependent claim and, so, suggests separate treatment.
Still further, 35 U.S.C. § 282 also suggests consideration of each
alternatively referenced claim because it states that the validity of a multiple
dependent claim is considered “independently,” i.e., separately. Reading the
statute to require separate consideration of the patentability of alternative
dependencies of a multiple dependent claim gives effect to both §§ 112(5)
and 282. Conversely, reading § 112(5) to permit the unpatentability of a
multiple dependent claim to rise and fall on the unpatentability of any one of
the individual dependent claims, as Petitioner urges, would conflict with
§ 282. Petitioner does not reconcile its interpretation of § 112(5) with § 282.
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Based on the language of the relevant statutes and regulations, I agree
with Patent Owner that, “[t]aken together, the law is clear—multiple
dependent claims must be treated as multiple claims, each comprising the
dependent claim and one of the claims to which it refers, and the validity
(and/or unpatentability) of each of the multiple claims must be considered
separately.” Reh’g Req. 4. If the statutory language is “clear,” then that
ends the statutory interpretation analysis. 	See Thaler v. Vidal, 43 F.4th
1207, 1213 (Fed. Cir. 2022) (citing Bostock v. Clayton Cnty., 140 S. Ct.
1731, 1749 (2020) (“This Court has explained many times over many years,
when the meaning of the statute’s terms is plain, our job is at an end.”)).
However, in the interest of completeness, I examine other interpretive
sources, which support my reading of the statutory text.
2. 	Precedent
As discussed above, neither party identifies a judicial or
administrative decision squarely addressing the interpretation presented
here.
As noted, Petitioner recognizes that the Federal Circuit cases it cites
do “not concern[] multiple dependent claims.” Pet. Sur-Reply 3. Petitioner
suggests I apply the Federal Circuit’s reasoning regarding alternatively
recited limitations, as discussed in Titanium Metals and its “progeny,” to
multiple dependent claims because “[t]here is no principled reason for
different treatment of multiple dependent claims when all other forms of
alternative claims cannot be partially invalid.” Pet. Resp. Br. 10; Pet. Sur-
Reply 3. That suggestion, however, presumes its conclusion. Petitioner has
not shown where our reviewing court has suggested applying the
interpretation of alternatively recited limitations to claim dependency.
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Further, unlike the discrete claim features at issue in those cases, §§ 112(5)
and 282 speak directly to multiple dependent claims.
While the Federal Circuit cases identified by Patent Owner do not
directly address the instant interpretation issue, they support Patent Owner’s
interpretation. PO Supp. Br. 7–9; Reh’g Req. 9–10. For example, although
the issue presented in Dow Chemical did not address how the validity of one
version of a multiple dependent claim affects the validity of all versions of
that multiple dependent claim, the Federal Circuit “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 or multiple dependent claims shall be presumed valid even
though dependent upon an invalid claim.” 41 F.3d 1375 (citing Dayco
Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1370 (Fed. Cir.
2003)). As previously discussed, in its invalidity discussion of multiple
dependent claims, the Federal Circuit pointed out that only one of the
alternatively recited dependencies was asserted. Id. at 1377–78. As such,
the Federal Circuit’s invalidity analysis applied only to the version of the
multiple dependent claims at issue before it, rather than to all versions of the
multiple dependent claims.
Furthermore, in Dayco Products, in its discussion of impermissible
grouping of different claims across different patents, the Federal Circuit
explained that “not addressing claim validity on an individual basis” is an
error and contravenes 35 U.S.C. § 282, which requires “[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; [and]
dependent or multiple dependent claims shall be presumed valid even
though dependent upon an invalid claim.” 329 F.3d 1370. The court
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explained that “where claims differ in scope in an aspect material to the
analysis, those claims must be addressed individually.” 	Id. at 1370–371. As
the scope of each alternatively recited version of a multiple dependent claim
differs, Dayco Products also suggests that the patentability of a multiple
dependent claim is considered separately as to each of its alternatively
referenced claims.
3. 	Legislative History
The legislative history also comports with Patent Owner’s statutory
interpretation. On November 14, 1975, the United States enacted Public
Law 94-131, which, among other changes, implemented the multiple
dependent claim practice introduced by the Patent Cooperation Treaty
(PCT). Pub. L. 94‒131 §§ 3,7, 10, 89 Stat. 685, 691. The PCT was entered
into on June 19, 1970, and states the following goals:
Desir[e] to make a contribution to the progress of science and
technology,
Desir[e] to perfect the legal protection of inventions,
Desir[e] to simplify and render more economical the obtaining
of protection for inventions where protection is sought in several
countries,
Desir[e] to facilitate and accelerate access by the public to the
technical information contained in documents describing new
inventions,
Desir[e] to foster and accelerate the economic development of
developing countries through the adoption of measures designed
to increase the efficiency of their legal systems, whether national
or 	regional, 	instituted 	for 	the 	protection of 	inventions 	by
providing easily accessible information on the availability of
technological solutions applicable to their special needs and by
facilitating access to the ever[-]expanding volume of modern
technology.
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Patent Cooperation Treaty, June 19, 1970, 28 U.S.T. 7645; 1160 U.N.T.S.
231. Those articulated goals are advanced by the PCT’s regulations, which
have included Rule 6.4 since 1970:
Any dependent claim which refers to more than one other claim
(“multiple dependent claim”) shall refer to such claims in the
alternative only . . . Any dependent claim shall be construed as
including all the limitations contained in the claim to which it
refers or, if the dependent claim is a multiple dependent claim,
all the limitations contained in the particular claim in relation to
which it is considered.
Patent Cooperation Treaty, Rule 6.4, June 19, 1970. As such, the
plain language of Rule 6.4 of the PCT explains that the patentability of a
multiple dependent claim is considered separately as to each of its
alternatively referenced claims because it should be “construed” based on
“the particular claim in relation to which it is being considered” (emphasis
added).
In response to the U.S. being a party to the PCT, the United States
passed Public Law 94-131, which, among other changes, amended 35 U.S.C.
§ 112 to add the following provisions:
A claim may be written in independent or, if the nature of the
case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form
shall contain a reference to a claim previously set forth and then
specify a further limitation of the subject matter claimed. A claim
in dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in
the alternative only, to more than one claim previously set forth
and then specify a further limitation 	of the subject matter
claimed. 	A multiple dependent claim shall not serve as a basis
for any other multiple dependent claim. 	A multiple dependent
claim shall be construed to incorporate by reference all the
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limitations of the particular claim in relation to which it is being
considered.
Public Law 94-131, Nov. 14, 1975. Notably, the portion of 35 U.S.C. § 112
addressing multiple dependent claims is nearly identical to Rule 6.4 of the
PCT, showing that § 112 is meant to interpret multiple dependent claims in
the same manner as PCT Rule 6.4.
Further confirming that U.S. patent law is meant to harmonize with
international agreements, in a letter to the Senate of the United States by
then-President George W. Bush on September 5, 2006, the President stated
that:
Strong intellectual property protection is a cornerstone of free
trade and global market access. 	This Treaty promotes patent
protection by codifying harmonizing, and reducing the costs of
taking the steps necessary for obtaining and maintaining patents
throughout the world. The provisions set forth in the Treaty will
safeguard U.S. commercial interests by making it easier for U.S.
patent applicants and owners to protect their intellectual property
worldwide.
Letter from George W. Bush to 109th Congress (Sept. 5, 2006) (available at
https://www.congress.gov/treaty-document/109th-congress/12/document-
text?overview=closed). Similarly, then-Secretary of State Condoleezza Rice
added in her letter to the Senate, dated September 5, 2006, that:
The Treaty complements existing U.S. international obligations
and furthers our policy related to prompting strong intellectual
property protection. 	The Treaty, which is supported by U.S.
interests, will make it easier for U.S. patent applicants and patent
owners to obtain and maintain patents throughout the world, as
well as in the United States, by simplifying and, to a large degree,
harmonizing 	national 	and 	regional 	formal 	requirements
associated with patent applications and patents.
Letter from Condoleezza Rice to 109th Congress (Sept. 5, 2006)
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(available at https://www.congress.gov/treaty-document/109th-
congress/12/document-text?overview=closed). Accordingly, the legislative
history suggests my interpretation follows PCT Rule 6.4, which suggests
that the patentability of a multiple dependent claim is considered separately
as to each of its alternatively referenced claims.
4. 	Current USPTO Guidance and Procedures
Patent Owner’s statutory interpretation is consistent with USPTO
guidance and practice. I agree with Patent Owner that the USPTO has
consistently adopted Patent Owner’s interpretation in its examiner guidance.
Reh’g Req. 5–6; PO Supp. Br. 4.3 For example, MPEP § 608.01(n)(I)(B)(4)
(Eighth Ed., Rev. 7 (July 2008))4 advises examiners and practitioners that “a
multiple dependent claim . . . does not contain all the limitations of all the
alternative claims to which is refers, but rather contains in any one
embodiment only those limitations of the particular claim referred to for the
embodiment under consideration.” The same section also advises examiners
that “a multiple dependent claim must be considered in the same manner as a
plurality of single dependent claims.” Further, the MPEP provides an
example involving a multiple dependent claim where canceling one base
claim but not another did not result in cancellation of the entire multiple
dependent claim:
As a result of reexamination, claim [3 as dependent from claim
1] has been deleted, and its subject matter is no longer protected.
Thus, claim [3 as dependent from claim 1] is designated as a
canceled claim. 	Claim [3 as dependent from claim 2] has not
3 Petitioner does not address USPTO guidance. See Pet. Supp. Br. 3 n.1.
4 We cite to the version of the MPEP that was in effect as of the earliest
priority date of the ’711 patent.
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Patent 9,179,711 B2
changed as to its content and its scope of protection, and is
designated as a confirmed claim
MPEP 2287 § III. See Reh’g Req. 6; PO Supp. Br. 5. Still further, as I
discussed above and as Patent Owner points out, the USPTO claim fee
structure supports treating each version of the multiple dependent claim
separately because applicants must pay separately for each multiple
dependent claim combination, e.g., “[f]or a multiple dependent claim that
refers to two independent claims . . . the Patent Office charges the applicant
for two dependent claims.” Reh’g Req. 4–5 (citing 37 CFR § 1.75(c)). As
such, I determine existing USPTO practice supports Patent Owner’s
interpretation.
5. 	Conclusion
The plain language of the fifth paragraph of 35 U.S.C. § 112,
coupled with the language in 35 U.S.C. § 282 and 37 C.F.R. § 1.75(c),
supports reading the statute to require separate consideration of the
patentability of alternative dependencies of a multiple dependent claim. The
additional authority cited above confirms this finding. The interpretation
applied here is consistent with long-standing MPEP guidance. Further,
analysis of Federal Circuit, district court, and Board precedent indicates that
no court has squarely addressed the interpretative issue presented here. 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.
D. 	Determination
Based on the above, I determine that the Board erred in its analysis of
multiple dependent claims 3–16 by failing to separately consider that
claims 3–16 incorporate by reference the limitations of claim 1 — which
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was not shown to be unpatentable. See Dec. 35, n.7. Because the Board
determined that Petitioner failed to show that claim 1 is unpatentable, the
Board should have determined that multiple dependent claims 3–16, as
dependent from claim 1, also are not unpatentable. Thus, Petitioner failed to
show by a preponderance of the evidence that claims 3–16, as dependent
from claim 1, are unpatentable.
Consistent with my determination, I modify the Board’s Decision to:
(1) strike footnote 7 on page 35, (2) make certain changes to the text of the
Decision as indicated in Appendix A, (3) replace the summary table in § III.
CONCLUSION on pages 69–70 with the below summary table, and
(3) replace the ORDER on page 70, with the below order.5 The remaining
patentability determinations set forth in the Decision are undisturbed by this
order.
III. ORDER
Accordingly, it is
ORDERED that textual changes are made to the Decision as indicated
in Appendix A below;
FURTHER ORDERED that the summary table on pages 69–70 of the
Decision is replaced with the following:
In summary:
5 I also modify the summary in § II.F.4 on page 38 to add claim 16, which
appears to have been mistakenly omitted. That summary should read as
indicated in Appendix A.
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Claim(s)

35 Shown Claim(s) Not Shown
Claim(s) | U.S.C.§| Reference(s) | Unpatentable Unpatentable®
1-18 102 Parks 2, 3/2-15/2 eS 1-16/1, 16/2, 17,
1-6, 8-16 | 103(a) | Parks, Moss a5. eo 1, 3/1-6/1, 8/1-16/1
1-6, 8-16 | 103(a) parks, Moss. o> ! Teo 1, 3/1-6/1, 8/1-16/1
1-6, 8-16 | 103(a) aaa a5. eo 1, 3/1-6/1, 8/1-16/1
7,17,18 | 103(a) Being Moss, 7/2 7/1, 17,18
7,17,18 | 103(a) Beirne or a] 72 7/1, 17,18

Overall Outcome | 2, 3/2—16/2 1, 3/1-16/1, 17, 18

and, FURTHER ORDERED that the order set forth on page 70 of the

Decision is replaced with the following:

IV. ORDER

Accordingly, based on the foregoing, it is:
ORDERED that Petitioner has not shown based on a

preponderance of evidence that claims 1, 3—16 (as dependent on

° Consistent with patent examination practice, see MPEP 608.01 (n)(I)(F),
this table indicates both the multiple dependent claim and the independent
claim from which it depends, e.g., “3/1” indicates multiple dependent claim
3 as depending from claim 1, whereas “3/2” indicates multiple dependent
claim 3 as depending from claim 2.

20

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Patent 9,179,711 B2

claim 1), 17, and 18 of U.S. Patent No. 9,179,711 B2 are
unpatentable;

ORDERED that Petitioner has shown based on a preponderance
of evidence that claims 2 and 3—16 (as dependent on claim 2) of U.S.
Patent No. 9,179,711 B2 are unpatentable;

FURTHER ORDERED because this is a final written decision,
the parties to this proceeding seeking judicial review of our Decision
must comply with the notice and service requirements of 37 C.F.R.

§ 90.2.
APPENDIX A

aay Original Text Replacement Text

Claims 3—16 depend [Delete this entire footnote]
alternatively from claims
[sic] 1 or clam 2. Thus,
we consider claims 3—16
to be anticipated (or
rendered obvious below)
35 n.7 by the prior art if either
version of these claims
(the version depending
from claim 1 or the
version depending claim
2) is described by the
prior art.

Accordingly, we agree | Accordingly, we agree

with Patent Owner that | with Patent Owner that Petitioner
Petitioner has failed to has failed to show by a

38 show by a preponderance of the evidence
preponderance of the that Parks anticipates claim 16,
evidence that Parks as dependent from either claims
anticipates claim 16. 1 or 2.

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Patent 9,179,711 B2

combination of Parks
and Moss.

ay Original Text Replacement Text
For all the reasons For all the reasons expressed
expressed above, we above, we conclude that
conclude that Petitioner | Petitioner has not shown by a
has not shown bya preponderance of the evidence
preponderance of the that Parks anticipates claims 1,
evidence that Parks 16 (as dependent from claim 2),
38 anticipates clams 1,17, | 17, or 18, or anticipates claims
and 18, and has shown 3-16, as dependent from claim 1.
by apreponderance of | We further conclude that
the evidence that Parks | Petitioner has shown by a
anticipates clams 2—15. | preponderance of the evidence
that Parks anticipates claim 2,
and claims 3—15, as dependent
from claim 2.
We determme that We determine that Petitioner has
Petitioner has failed to failed to show by a
show by a preponderance of the evidence
preponderance of the that the combmation of Parks and
evidence that the Moss renders obvious claim 1,
63 combination of Parks but has shown by a
and Moss renders clam preponderance of the evidence
1, and has shown by a that claim 2 is obvious.
preponderance of the
evidence that claim 2 is
obvious.
Accordingly, we find .
that Petitones has shown [Delete this text]
by a preponderance of
64 the evidence that claim
16 would have been
obvious over the

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evidence that claims 2—6
and 8—16 of the ’711
patent would have been
obvious over the
combination of Parks,
Moss, and Greiert.

ay Original Text Replacement Text
[no text to replace; only | 3. Summary
text to add] For all the reasons expressed
above, we conclude that
Petitioner has not shown by a
preponderance of the evidence
that claim 1, or claims 3—6 and
8—16, as dependent from claim 1,
would have been obvious over
Top of 65 the combination of Parks and
Moss. We further conclude that
Petitioner has shown by a
preponderance of the evidence
that claim 2, and claims 3—6 and
8—16, as dependent from claim 2,
would have been obvious over
the combination of Parks and
Moss.
Accordingly, we Accordingly, we determine that
determine that Petitioner | Petitioner has failed to show by a
has failed to showbya___| preponderance of the evidence
preponderance of the that the combmation of Parks,
evidence that the Moss, and Greiert renders
combination of Parks, obvious claim 1, or claims 3—6
Moss, and Greiert and 8—16, as dependent from
renders obvious claim 1, | claim 1. We further conclude
65—66 and that Petitioner has that Petitioner has shown by a
shown by a preponderance of the evidence
preponderance of the that claim 2, and claims 3—6 and

8—16 of the 711 patent, as
dependent from claim 2, would
have been obvious over the
combmation of Parks, Moss, and
Greiert.

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Patent 9,179,711 B2

1, and that Petitioner has
shown by a
preponderance of the
evidence that claims 2—6
and 8—16 of the ’711
patent would have been
obvious over the
combination of Parks,
Moss, and Common
Sense.

ay Original Text Replacement Text

Accordingly, we Accordingly, we determine that
determine that Petitioner | Petitioner has failed to show by a
has failed toshowbya___| preponderance of the evidence
preponderance of the that the combmation of Parks,
evidence that the Moss, and the knowledge of a
combination of Parks, person of ordinary skill in the art
Moss, and the renders obvious claim 1, or
knowledge ofa person | claims 3—6 and 8-16, as
of ordinary skill in the dependent from clam 1. We

68 art renders obvious claim | further conclude that Petitioner

has shown by a preponderance of
the evidence that claim 2, and
claims 3—6 and 8—16 of the ’711
patent, as dependent from clam
2, would have been obvious over
the combination of Parks, Moss,
and Common Sense.

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Patent 9,179,711 B2

Parks, Moss, Beiring and
Parks, Moss, Bering,
and Common Sense.

ay Original Text Replacement Text
Accordingly, we Accordingly, we determine that
determine that Petitioner | Petitioner has failed to show by a
has failed to showbya___| preponderance of the evidence
preponderance of the that the combmation of Parks,
evidence that the Moss, Beiring and Parks, Moss,
combination of Parks, Beiring, and Common Sense
Moss, Beiring and Parks, | renders obvious claim 7, as
Moss, Bering, and dependent from claim 1, or
Common Senserenders_ | claims 17 and 18. We further

69 obvious claims 17 and conclude that Petitioner has
18, and that Petitioner shown by a preponderance of the
has shown by a evidence that claim 7 of the ’711
preponderance of the patent, as dependent from claim
evidence that clam 7 of | 2, would have been obvious over
the ’711 patent would the combinations of Parks, Moss,
have been obvious over | Beiring and Parks, Moss,
the combinations of Beiring, and Common Sense.

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FOR PETITIONER:
Craig R. Smith
Eric P. Carnevale
LANDO AND ANASTASI, LLP
csmith@lalaw.com
ecarnevale@lalaw.com
FOR PATENT OWNER:
Cory Bell
Linda J. Thayer
Robert Kramer
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER, L.L.P
cory.bell@finnegan.com
linda.thayer@finnegan.com
robert.kramer@finnegan.com
Jerry C. Liu
HILL, KERTSCHER & WHARTON, LLP
jl@hkw-law.com
26