USPTO Director Vidal: Decisions on Processing Multiple Dependent Claims Are Priority – Publications

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March 23, 2023

U.S. Patent and Trademark Office (USPTO) Director Catherine K. Vidal recently designated a decision by the Patent Trial and Appeal Board (PTAB or Board) of IPR2020-01234 as a precedent, allowing rehearing and a final written decision. Fixed the decision. The decision construed the language of paragraph 5 of 35 USC § 112 to require that the Board consider each claim limitation incorporated by reference into multiple dependent claims separately.

The patent at issue, U.S. Pat. No. 9,179,711, describes a new or alternative method for swaddling an infant by sufficiently inhibiting limb movement, inhibiting the startle reflex, and permitting hand-to-mouth movement. is about the swaddle suit. Suck your thumb.

The patent owner filed suit against petitioner in the United States District Court for the District of Massachusetts in 2017 for patent infringement. Petitioner challenged the validity of claims 1-18 before the PTAB. The Board found that claim 2 of the contested patent was clearly not patentable.[1]

At the same time, petitioner has failed to establish that claims 1, 17, and 18 are unpatentable on numerous lines of evidence.[2] Because claims 3-16 were multiple dependent claims and relied on independent claim 1 or 2 of the patent, the Board held them unpatentable and claimed claim 2 unpatentable. It relied solely on the committee’s decision to[3] Accordingly, the patent owner requests a timely review of the directors, pointing out that the board has instead misunderstood or overlooked the fact that these claims rely on independent claim 1. bottom.[4]

Secretary Vidal has allowed both parties to submit supplemental statements to address the matter.[5] In particular, Director Vidal has questioned whether (1) the interpretation of 35 USC § 112, fifth paragraph, which provides for multiple dependent claims on which a patent owner relies, is a matter of first impression, and if so, , (2) asked the parties to address; Addresses legislative history, relevant statutes, regulations, and policy issues and persuasive powers, and, if not, (3) authoritative case law, especially regarding patent owner interpretation.[6]

first impression problem

The Board’s consideration of the patentability of multiple dependent claims was a matter of first impression for each of the alternative reference claims.

Upon examination, the patent owner argued that the case was unique and that the Federal Circuit’s Court of Appeals for the Federal Circuit had not previously addressed the issue.[7] Further, the patent owner cited many previous board decisions that “refused to consider the dependent claims individually and to make a determination as to their patentability.”[8] Petitioner, on the other hand, cited a series of Federal Circuit actions addressing the alternatively cited limitation in the body of the claim.[9]

Ultimately, both of these Federal Circuit decisions held that “all versions of the dependent claims were patentable on the basis of a finding that only one version of the dependent claims was unpatentable.” It was not something that I decided affirmatively.[10] Accordingly, Chief Vidal opined that the Federal Circuit had not previously addressed the circumstances present in this case.[11] So this was a matter of first impressions.

Separate Consideration of Patentability

Upon further consideration, Secretary Vidal concluded that the plain language of 35 USC § 112, combined with the language of 35 USC § 282 and 36 CFR § 1.75(c), provides a separate and distinct view of the patentability of alternative dependencies for multiple dependent claims. We decided that we clearly supported the request for review. This statutory interpretation is consistent with Federal Circuit precedent, legislative history, and USPTO guidelines and practice.

First, after comprehensively reviewing the various statutes addressing this issue, the Commissioner found that Section 112 required the patentability of each alternative dependency of multiple dependent claims to be considered separately. .[12] In particular, reading § 112(5) contradicts 35 USC § 282, which requires a presumption of validity of “admitting that any one of the individual dependent claims is unpatentable.” increase.[e]Even if such claims depend on invalid claims.[13]

Neither party has identified judicial or administrative decisions that squarely address the interpretations presented therein.

Second, although neither party directly identified appropriate judicial or administrative actions, patent owners provided Federal Circuit precedents that supported such constructions. The Federal Circuit “highlighted” that: [and] Multiple dependent claims shall be presumed valid even if they rely on an invalid claim. ”[14] Further, the Federal Circuit explained that “not addressing the validity of a claim on an individual basis” was erroneous and violated 35 USC § 282.[15] These two decisions suggest that the patentability of multiple dependent claims should be considered separately for each alternatively referenced claim.[16]

Finally, Director Vidal said that considering the referenced claims individually instead is consistent with both the statutory legislative history and current USPTO guidance and practice.[17]


On February 24, 2023, Director Vidal designated this decision as precedent, stating that under paragraph 5 of 35 USC § 112, the Board must individually evaluate the patentability of alternative dependencies in multiple dependent claims. I have confirmed that it must be It is based on the plain language of law, Federal Circuit case law, legislative history, and USPTO procedures.

Practitioners considering drafting multiple dependent claims, or litigants litigating patents with such claims, should take this ruling into consideration.

Law Clerk Henry Loznev contributed to this LawFlash.

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