SpaceX claims against Blue Origin denied

Trials@uspto.gov Paper 6
571-272-7822 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
2
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
 A. The ’321 Patent
 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.
IPR2014-01378
Patent 8,678,321 B2
3
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.
 B. The Challenged Claims
 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 nosefirst orientation to a tail-first orientation before landing;
IPR2014-01378
Patent 8,678,321 B2
4
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 tailfirst 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).
IPR2014-01378
Patent 8,678,321 B2
5
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.
IPR2014-01378
Patent 8,678,321 B2
6
 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
IPR2014-01378
Patent 8,678,321 B2
7
“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 cutoffoccurs 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
IPR2014-01378
Patent 8,678,321 B2
8
 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.
IPR2014-01378
Patent 8,678,321 B2
9
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.

IPR2014-01378
Patent 8,678,321 B2
10
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