Vidal overturns PTAB decision on baby swaddle patent in ‘first impression’ case
Decision outlines how multiple dependent claims should be treated | Case related to patented baby sleepwear | USPTO chief grants rehearing.
US Patent and Trademark Office (USPTO) director Kathi Vidal has issued a precedential decision on how multiple dependent claims are treated in a dispute over a baby sleepwear patent.
Vidal’s conclusion in the unusual case was announced on February 24 and addressed an issue of first impression before the Patent Trial and Appeal Board (PTAB) “in the consideration of multiple dependent claim patentability as to each of its alternatively referenced claims”.
Australian company Big Beings and LB Online & Export, trading as Love to Dream, accused US-based Nested Bean of infringing its US patent number 9,179,711, which relates to a type of baby swaddling suit. Nested Bean challenged the patentability of Love to Dream’s claims.
Interpreting multiple claims
Within Love to Dream’s ‘711 patent, claims 1 and 2 are independent, and claims 3-16 are multiple dependent claims, which depend directly or indirectly from either claim 1 or 2. For example, claim 3 includes the statement “[a] swaddling suit according to claim 1 or 2”.
In January 2022, the PTAB determined that Nested Bean had failed to prove that claim 1 was unpatentable, but had shown that claims 3-16 were unpatentable. Love to Dream then filed a request for director review, arguing that because Nested Bean had not established that claim 1 was unpatentable, it should not have been found that claims 3-16, as dependent from claim 1, were unpatentable under 35 U.S.C. § 112.
Love to Dream also argued that “few cases directly address this exact situation” and that it had 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”.
Nested Bean disputed that the case was an issue of first impression and argued that the PTAB’s treatment of multiple claims had been consistent with a Federal Circuit precedent that a claim reciting alternatives be held invalid, and was in line with prior PTAB decisions as well as district court precedent.
Following the director review, Vidal agreed with Love to Dream, stating 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”.
She also referenced 35 U.S.C. § 282, which suggests consideration of each alternatively referenced claim because it states that the validity of a multiple dependent claim is considered “independently”, or separately.
Vidal concluded that the board had mistakenly determined that claims 3-16, as dependent from claim 1, were unpatentable. She granted a rehearing and modified the board’s final written decision.
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