Takeaway: The Board will likely deny institution of inter partes review where means-plus-function limitations are not amenable to construction for lack of corresponding structure in the specification, and a petitioner’s proposed construction of “any suitable structure” will likely be unpersuasive.

In its Decision, the Board denied institution of inter partes review, finding that Petitioner did not establish a reasonable likelihood of prevailing with respect to any of challenged claims 14 and 15 of the ’321 patent. The Board held that the claims were not amenable to construction and therefore could not reach “a determination on the reasonable likelihood that SpaceX would prevail on the ground asserted in the Petition.” The ’321 patent relates to “landing and recovering [a reusable launch vehicle] at sea.”

Beginning with claim construction, the Board stated that claims in an unexpired patent are given their broadest reasonable construction in light of the specification. The Board noted that almost every limitation of independent claim 14, as well as the limitation of dependent claim 15, was written in means-plus-function format. Petitioner proposed constructions for each means-plus-function limitation, attempting to identify the corresponding structure in the specification. However, the Board determined that Petitioner “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.” In particular, the Board held that Petitioner’s proposed constructions impermissibly sought to broaden the scope of these three limitations.

Analyzing the three limitations, the Board found that the recited functions were apparent – igniting, shutting off, and reigniting the rocket engines. In its attempt to identify corresponding structures, Petitioner stated that the specification was silent as to a structure for igniting, shutting off, or reigniting, and urged the Board to construe the limitations as “any suitable structure.” The Board found that construing the terms according to Petitioner’s proposal would violate the requirement of 35 U.S.C. § 112, ¶ 6 and the Board’s standard of applying the broadest reasonable construction. Turning to the specification of the ’321 patent, the Board that the specification “does not describe any structure for performing the functions of ‘igniting,’ ‘shutting off,’ and ‘reigniting’ the rocket engines as recited in claim 14.” Thus, the Board could not determine the proper scope for claim 14, and therefore could not evaluate the asserted grounds of obviousness.

Space Exploration Technologies Corp. v. Blue Origin LLC, IPR2014-01378
Paper 6: Decision Denying Institution of Inter Partes Review
Dated: March 3, 2015
Patent: 8,678,321 B2
Before: Ken B. Barrett, Hyun J. Jung, and Carl M. DeFranco
Written by: DeFranco