USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Director Katherine Vidal of the U.S. Patent and Trademark Office ("USPTO") issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before the Patent and Trial Appeal Board ("PTAB"). In the review of the PTAB's final written Decision and Order, the Director modified it consistent with her determination of the treatment of multiple dependent claims, which are claims that refer to and incorporate by reference more than one other claim.

More specifically, at issue in the inter partes review captioned, Nested Bean, Inc. v. Big Beings Pty Ltd., was the interpretation of 35 U.S.C. § 112, fifth paragraph, which is the controlling statute for multiple dependent claims. The Patent Owner contended that the statute requires the PTAB to consider the patentability of each claim referenced separately. In contrast, the Petitioner argued that if any claim of a multiple dependent claim is unpatentable, then