Tuesday, September 02, 2014

Blue Origin and SpaceX fighting at PTAB over Blue Origin's US 8,678,321

In IPR2014-01376, SpaceX asserts, among other things, that there is anticipation of claims of Blue Origin's US '321: " Each limitation of claims 1, 2, and 3 is disclosed by Ishijima." [Yoshiyuki Ishijima et al. , Re-entry and Terminal Guidance for Vertical-Landing TSTO (Two-Stage to Orbit), ]

SpaceX is represented by Heidi L. Keefe of Cooley LLP.

As background, the launch site in Ishijima is the Tanegashima Space Center on the island of Tanegashima, off the southern tip of Kyushu, Japan.

was served by EXPRESS MAIL ® on the 25th day of August, 2014.

US '321 issued on March 25, 2014 based upon 12/815,306, filed June 14, 2010 .

Note PCT/US2010/038553. The "written opinion," transmitted in Dec. 2010, had found the 20 examined claims to lack inventive step (ie, were obvious). There was national phase entry into China, and other jurisdictions:

China 14.06.2010 201080036159.9
European Patent Office (EPO) 13.01.2012 2010797516 Published: 25.04.2012
India 28.12.2011 10362/DELNP/2011
Japan 14.12.2011 2012516176
Russian Federation 16.01.2012 2012101252

As to the procedure for "inter partes review"

Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.

As to post grant review: A post grant review may be requested on or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.


Inter partes review can be initiated immediately following issuance (or reissuance) of patents examined under the first to invent rules (i.e., patents filed prior to March 16, 2013), since post-grant review is not available for these patents.

Inter partes review became available for all patents on September 16, 2012, regardless of priority date.
Inter partes review is subject to an additional limitation relating to co-pending litigation involving the patent being reviewed. Both post-grant review and inter partes review need to be filed before the third party seeks a declaratory judgment challenging the validity of a claim in the patent. In addition, an inter partes review must be filed within one year of the third party being served with an infringement complaint by the patentee.
The standard of proof required to justify commencement of an inter partes review is also slightly different than the standard of proof required to trigger commencement of post-grant review. For an inter partes review to be commenced, a third party must establish a reasonable likelihood that they will prevail on at least one claim, as opposed to post-grant review’s requirement that at least one challenged claim is more likely than not to be deemed unpatentable. The AIA fails to specifically address this difference in standards, leading to widely varying speculation about whether there will be a significant difference in the way a request under inter partes review is treated relative to post-grant review.
The prior art available for inter partes review is limited relative to post-grant review. Inter partes review is akin to inter partes reexamination in that it is limited to prior art grounds based on patents and printed publications, whereas post-grant review can be based on any grounds that are available for an invalidity defense. Significantly, this constraint limits the estoppel effects of inter partes review relative to post-grant review. Post-grant review may preclude a third party from raising virtually any invalidity defense in litigation. The scope of legal estoppel for inter partes review is commensurate with current inter partes reexamination estoppel. Thus, even if it has availed itself of inter partes review, a third party should retain their ability to raise invalidity defenses in other fora based on all grounds other than patents and printed publications that were or reasonably could have been raised during the inter partes review.

from http://fishpostgrant.com/inter-partes-review/


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