Trials@uspto.gov

`571-272-7822

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` Paper 6

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`Entered: March 3, 2015

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`UNITED STATES PATENT AND TRADEMARK OFFICE

`____________

`

`BEFORE THE PATENT TRIAL AND APPEAL BOARD

`____________

`

`SPACE EXPLORATION TECHNOLOGIES CORP.,

`Petitioner,

`

`v.

`

`BLUE ORIGIN LLC,

`Patent Owner.

`____________

`

`Case IPR2014-01378

`Patent 8,678,321 B2

`____________

`

`

`

`Before KEN B. BARRETT, HYUN J. JUNG, and CARL M. DEFRANCO,

`Administrative Patent Judges.

`

`DEFRANCO, Administrative Patent Judge.

`

`

`DECISION

`Denying Institution of Inter Partes Review

`37 C.F.R. § 42.108

`

`

`

`

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`IPR2014-01378

`Patent 8,678,321 B2

`

`

`I. INTRODUCTION

`Space Exploration Technologies Corp. (“SpaceX”) filed a Petition

`(“Pet.”) for inter partes review of U.S. Patent No. 8,678,321 B2 (“the ’321

`patent”). The Petition challenges the patentability of claims 14 and 15 of the

`’321 patent on the ground of obviousness under 35 U.S.C. § 103.1 Blue

`Origin LLC, the owner of the ’321 patent, did not file a Preliminary

`Response to the Petition.

`We have jurisdiction under 35 U.S.C. § 314(a). After considering the

`Petition, we conclude that the challenged claims are not amenable to

`construction and we are unable to reach a determination on the reasonable

`likelihood that SpaceX would prevail on the ground asserted in the Petition.

`Accordingly, we do not institute inter partes review of claims 14 and 15.

`II. BACKGROUND

`The ’321 Patent

`A.

`

`Space exploration is expensive, and a reusable launch vehicle

`

`(“RLV”) provides the potential for lower cost access to space. Ex. 1101,

`1:55–2:3. The ’321 patent relates to landing and recovering an RLV at sea.

`Id. at 1:42–45. As disclosed, the RLV performs a controlled landing on a

`sea-going platform in a manner that reduces the amount of reconditioning

`necessary to reuse the RLV in a subsequent launch. Id. at 3:10–13, 5:29–36.

`The RLV comprises a lower, booster stage and an upper, payload stage. Id.

`at 3:13–15. After the RLV lifts off from a coastal launch site, the booster

`

`1 The remaining claims of the ’321 patent, claims 1–13, are the subject

`of another Petition filed by SpaceX in IPR2014-01376. Pet. 1.

`2

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`IPR2014-01378

`Patent 8,678,321 B2

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`stage propels the payload stage to a high-altitude flight profile. Id. at 3:42–

`44, Fig. 1. At a predetermined altitude, the booster stage cuts off its engines

`and separates from the payload stage. Id. at 3:64–66. The booster stage

`takes a trajectory over the ocean for reentry into the earth’s atmosphere,

`while the payload stage proceeds into orbit. Id. at 3:64–4:3. During reentry,

`the booster stage reorients itself into a “tail-first” position as it glides toward

`the sea-going platform. Id. at 4:3–8. Once the booster descends to a suitable

`position over the platform, the engines on the booster stage reignite to slow

`its descent. Id. at 4:51–55. The booster stage then performs a “vertical,

`powered landing” at low speed onto the deck of the sea-going platform. Id.

`at 4:55–57.

`The Challenged Claims

`

`B.

`

`Of the two challenged claims, claim 14 is independent and claim 15

`depends therefrom. In particular, claim 14 recites:

`14. A system for providing access to space, the system

`comprising:

`

`a space launch vehicle, wherein the space launch vehicle

`includes one or more rocket engines;

`

`a launch site;

`

`a sea going platform;

`

`means for launching the launch vehicle from the launch

`site a first time, wherein the means for launching include means

`for igniting the one or more rocket engines and launching the

`vehicle in a nose-first orientation;

`means for shutting off the one or more rocket engines;

`

`

`means for reorienting the launch vehicle from the nose-

`first orientation to a tail-first orientation before landing;

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`IPR2014-01378

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`means for reigniting at least one of the one or more

`

`rocket engines when the launch vehicle is in the tail-first

`orientation to decelerate the vehicle;

`

`means for landing at least a portion of the launch vehicle

`on the sea going platform in a body of water, wherein the

`

`means for landing include means for landing in the tail-

`first orientation while the one or more rocket engines are

`thrusting; and

`

`means for launching at least a portion of the launch

`vehicle from the launch site a second time.

`

`Ex. 1101, 10:45–67 (emphasis added).

`

`C.

`The Asserted Ground

`SpaceX challenges the patentability of claims 14 and 15 of the ’321

`patent on the single ground of obviousness under 35 U.S.C. § 103 based on

`Ishijima,2 Lane,3 and Mueller.4

`III. ANALYSIS

`A determination of obviousness over the prior art begins with claim

`

`construction. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998)

`(emphasizing “the name of the game is the claim”). In an inter partes

`review, a claim in an unexpired patent is given “its broadest reasonable

`construction in light of the specification of the patent in which it appears.”

`37 C.F.R. § 42.100(b). Almost all of the limitations of claim 14 are written

`in “means-plus-function” format, as is the limitation of dependent claim 15.

`

`2 Y. Ishijima et al., Re-entry and Terminal Guidance for Vertical Landing

`TSTO (Two-Stage to Orbit), AIAA GUIDANCE, NAVIGATION, AND CONTROL

`CONFERENCE AND EXHIBIT, PAPER 98-4120 (1998), at 192–200 (Ex. 1103).

`3 U.S. Patent No. 5,873,549, issued Feb. 23, 1999 (Ex. 1104).

`4 U.S. Patent No. 6,158,693, issued Dec. 12, 2000 (Ex. 1105).

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`In proposing constructions for each of the “means for” limitations, SpaceX

`attempts to identify corresponding structure in the Specification for the

`various recited functions as required by 37 C.F.R. § 42.104(b)(3). Pet. 18–

`22. After reviewing SpaceX’s proposed constructions, however, we

`determine that SpaceX errs in its construction of at least three of claim 14’s

`means-plus-function limitations, namely, the “means for igniting” the rocket

`engines, “means for shutting off” the rocket engines, and “means for

`reigniting” the rocket engines. See id. at 19–21. SpaceX’s proposed

`constructions are erroneous because they seek to broaden the scope of these

`limitations beyond what is permissible under 35 U.S.C. § 112, ¶ 6.

`At the outset, we agree with SpaceX that claims 14 and 15 recite

`means-plus-function limitations invoking 35 U.S.C. § 112, ¶ 6, because the

`various “means for” igniting, shutting off, and reigniting the engines are

`modified by functional language that does not include any structure for

`performing the recited functions. Construing means-plus-function

`limitations is a two-step process: (1) “define the particular function of the

`claim limitation”; and (2) “look to the specification and identify the

`corresponding structure for that function.” Golight, Inc. v. Wal-Mart Stores,

`Inc., 355 F.3d 1327, 1333–34 (Fed. Cir. 2004) (internal quotations and

`citations omitted). As for the second step, the structure disclosed in the

`specification is “corresponding” structure “only if the specification or

`prosecution history clearly links or associates that structure to the function

`recited in the claim.” Id.

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`Our analysis focuses on the second step, as the function of the

`

`relevant limitations is readily apparent—igniting, shutting off, and reigniting

`the rocket engines. SpaceX contends that, although the Specification

`discloses that “the routine starts with booster engine ignition” and that

`“booster engine cutoff occurs at a predetermined altitude,” the Specification

`is otherwise silent on details about igniting, shutting off, or reigniting the

`engines, in terms of both structure and function. Pet. 19–20. Indeed,

`SpaceX represents that the Specification “does not disclose any structure

`that performs this [igniting] function” and “is entirely silent on any structure

`for performing this [reigniting] function.” Id. Unable to identify structure in

`the Specification corresponding to the recited functions, SpaceX urges us to

`construe the “means for” limitations as “any suitable structure” that ignites,

`shuts off, or reignites a rocket engine. Id. at 19–21. That, we cannot do.

`Interpreting means-plus-function language to encompass any structure

`

`for performing the recited function not only violates 35 U.S.C. § 112, ¶ 6,

`which requires that it “be construed to cover the corresponding structure . . .

`described in the specification and equivalents thereof,” but also violates our

`standard of applying the “broadest reasonable construction” to claims

`undergoing inter partes review. 37 C.F.R. 42.100(b) (emphasis added); see

`also In re Cuozzo Speed Techs., No. 2014-1301, 2015 WL 448667, at *6

`(Fed. Cir. Feb. 4, 2015) (holding that the PTO “properly adopted” the

`broadest reasonable interpretation standard for IPR proceedings). Thus, we

`decline to construe the means-plus-function limitations of claim 14 to cover

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`“any suitable structure” capable of performing the recited function, as

`SpaceX proposes.

`

`Our review of the Specification locates minimal discussion of the

`igniting, shutting off, and reigniting functions recited in claim 14.

`Referencing a flow chart in Figure 2, the Specification states “[i]n block

`202, the routine starts with booster engine ignition and liftoff from a launch

`site,” “[i]n block 204, booster engine cutoff occurs at a predetermined

`altitude,” and after reentry, “the routine proceeds to block 224 and reignites

`the booster engines.” Ex. 1101, 6:35–41, 7:19–20 (emphasis added). Those

`passages, however, lack any discussion of how the booster engine is ignited

`for launch, how the booster engine is shut off for separation, or how the

`booster engine is reignited for landing. Nor do the figures of the ’321 patent

`shed any light on the corresponding structure. In particular, blocks 202, 204,

`and 224 of Figure 2 illustrate merely that the booster engines “ignite,”

`“cutoff,” and “reignite” at various stages of flight. Id. at Fig. 2. Those

`labels correspond to the claimed function, but do not serve to define any

`structure. Indeed, the Specification makes no mention of whether the

`functional aspects of igniting, shutting off, and reigniting the engines are

`internal or external to the engines (or a combination thereof), let alone

`describe any structural components for performing those functions.5

`

`

`5 Notably, the Specification acknowledges that “several details describing

`structures and processes that are well-known and often-associated with . . .

`launching and landing space launch vehicles are not set forth in the [written

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`A patent must be precise enough to notify a skilled artisan of what is

`

`claimed and what is still open to the public. Nautilus, Inc. v. Biosig

`Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (citing Markman v.

`Westview Instruments, Inc., 517 U.S. 370, 373 (1996)). On the current

`record, we find that the ’321 patent does not describe any structure for

`performing the functions of “igniting,” “shutting off,” and “reigniting” the

`rocket engines as recited in claim 14. Absent meaningful disclosure of

`structure for the claimed “means,” the ’321 patent leaves skilled artisans to

`speculate about what is being claimed. In other words, the Specification’s

`lack of corresponding structure for the “means for igniting,” “means for

`shutting off,” and “means for reigniting” limitations prevents us from

`arriving at the proper scope for claim 14.

`A lack of sufficient disclosure of structure under 35 U.S.C. § 112, ¶ 6

`renders a claim indefinite and, thus, not amenable to construction. See In re

`Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) (quoting Enzo Biochem, Inc.

`v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is

`indefinite, the claim, by definition, cannot be construed.”)). Because claim

`14 lacks adequate structural support for some of the means-plus-function

`limitations, it is not amenable to construction. And without ascertaining the

`breadth of claim 14, we cannot undertake the necessary factual inquiry for

`evaluating obviousness with respect to differences between the claimed

`subject matter and the prior art. Aoyama, 656 F.3d at 1296 (the “first step”

`

`disclosure] to avoid unnecessarily obscuring the various embodiments of the

`disclosure.” Ex. 1101, 2:32–37.

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`of any application of the prior art is a proper construction of the claims at

`issue). Any comparison with the prior art asserted in the Petition would be

`speculative and futile. As such, our analysis begins and ends with the

`claims, and we are unable to determine whether there is a reasonable

`likelihood that SpaceX would prevail on the prior art ground asserted in the

`Petition against claims 14 and 15. That is because inter partes review is

`limited to grounds of anticipation and obviousness under 35 U.S.C. §§ 102

`and 103, not indefiniteness under 35 U.S.C. § 112. See 35 U.S.C. 311(b), 37

`C.F.R. § 42.104(b)(2).

`

`IV. CONCLUSION

`Because the challenged claims are not amenable to construction, we

`are unable to reach a determination on the reasonable likelihood of SpaceX

`prevailing on the prior art ground asserted in the Petition.

`V. ORDER

`For the foregoing reasons, it is

`

`ORDERED that the Petition is denied; and

`

`FURTHER ORDERED that no inter partes review will be instituted

`

`pursuant to 35 U.S.C. § 314(a) with respect to claims 14 and 15 of the ’321

`patent on the ground of unpatentability asserted in the Petition.

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`IPR2014-01378

`Patent 8,678,321 B2

`

`FOR PETITIONER:

`

`Heidi L. Keefe

`C. Scott Talbot

`COOLEY LLP

`hkeefe@cooley.com

`stalbot@cooley.com

`zpatdcdocketing@cooley.com

`

`FOR PATENT OWNER:

`

`John M. Wechkin

`Ryan J. McBrayer

`PERKINS COIE LLP

`JWechkin@perkinscoie.com

`RMcBrayer@perkinscoie.com

`

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