throbber
Trials@uspto.gov
`571-272-7822
`
` Paper 6
`
`Entered: March 3, 2015
`
`
`
`
`
`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
`
`
`
`
`
`

`

`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
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`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;
`
`3
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`
`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).
`4
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`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.
`
`5
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`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
`
`6
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`“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
`7
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`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.
`
`8
`
`

`

`IPR2014-01378
`Patent 8,678,321 B2
`
`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.
`
`
`
`9
`
`

`

`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
`
`
`10
`
`

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