Validity of Blue Origin Patent 8,678,321 questioned
The topic of inequitable conduct arose in the SpaceNews post by Dan Leone:
Still unsettled is the question of whether the inventors listed on Blue Origin’s patent application, which include Amazon.com and Blue Origin founder Jeff Bezos, knew about any of the documents referenced in SpaceX’s filing prior to seeking a patent in 2009.
“The inventor doesn’t have a responsibility to go out and look for prior art, but if he does find prior art, he has to tell the patent office,” [Andrew] Rush said. “So If Jeff Bezos was aware of this paper SpaceX is citing, he would have had a responsibility to give a copy of that paper to the patent office because it is relevant to his technology. He would have had to do that at the time he applied for the patent.”
Neither SpaceX spokesman John Taylor nor Blue Origin spokeswoman Brooke Crawford would comment for this story. Scott Talbot, a Reston, Virginia-based attorney for Cooley LLP, the firm that prepared SpaceX’s request for an inter partes review, also declined to comment.
As a first point, the patent board (PTAB) does not consider inequitable conduct in an inter partes review (IPR). Thus, the "unsettled question" mentioned in the SpaceNews post is irrelevant to the ongoing proceeding. Second, inequitable conduct, post-Therasense, is difficult to establish. IPBiz notes that a good discussion of "how" inequitable conduct is applied, post-Therasense, is found in the dissent by Judge Newman in AMERICAN CALCAR, INC. , ironically a case wherein inequitable conduct was found in a 2-1 vote at the CAFC. To establish inequitable conduct, there is a requirement of materiality of the reference, intent to deceive, and a test of whether the patent issued "but for" the omission of the reference. The American Calcar case presents an inversion of the present fact pattern in Blue Origin in the sense the key reference at issue in American Calcar was before the Board in a re-exam and patentability was found, BUT two CAFC judges found inequitable conduct anyway. Judge Newman wrote of this in her dissent, questioning "how" the but-for standard could have been met:
We need not speculate about whether the PTO would
have granted the Calcar patents “but-for” the information
in the Owner’s Manual and the photographs, for the
PTO’s reexamination of the ’497 patent provides the
answer: the PTO confirmed patentability. Reexamination
was conducted in full view of not only the targeted information,
but also Honda’s Preliminary Invalidity Contentions.
The purpose of reexamination is to provide PTO
expertise in determining patentability. This procedure
was followed, and established that the challenged information
was not “material” to patentability as determined
by the PTO. That ruling was not appealed. My colleagues’
contrary holding is not available.
A New Jersey connection is mentioned in the SpaceNews post: A late December launch — for Fort Lee, New Jersey-based satellite operator Orbcomm — is another candidate for a barge landing, SpaceX said following its last launch for Orbcomm in July.