Navigating Uncharted Waters: Evaluating Patentability In Multiple Dependent Claims

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 '711 patent"). Claims 1 and 2 of the '711 patent are independent, and claims 3-16 are multiple dependent claims that directly or indirectly reference and depend on either independent claim 1 or claim 2. For instance, claim 3 recites "[a] swaddling suit according to claim 1 or 2" in relevant part. The Board instituted a review of claims 1-18 of the '711 patent.

According to the Board's Final Written Decision, Petitioner was unable to prove that independent claim 1 was unpatentable, but they were able to demonstrate that independent claim 2 was unpatentable. The Board evaluated the patentability of multiple dependent claims 3-16 and found that these claims depend on either claim 1 or claim 2. Therefore, if any version of claims 3-16 (depending on either claim 1 or claim 2) is described in the prior art, then