Google LLC v. Space Data Corp

1. Case Identification

• Case #: IPR2018-00946
• Patent #: 9,632,503
• Filed: April 20, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): Space Data Corporation
• Challenged Claims: 1-6, 8, 9, 15, 20, and 28

2. Patent Overview

• Title: Systems and Applications of Lighter-Than-Air (LTA) Platforms
• Brief Description: The ’503 patent relates to a system of high-altitude, lighter-than-air platforms (balloons) for applications such as communications. The purported invention focuses on a redundant flight termination and recovery system, featuring dual termination devices and separate power sources designed to terminate flight in response to malfunctions or danger to air traffic.

3. Grounds for Unpatentability

Ground 1: Obviousness over WO710 and ICAO Rules - Claims 1-6, 8, 9, 15, 20, and 28 are obvious over WO710 in view of the ICAO Rules.

• Prior Art Relied Upon: WO710 (WO/2001/01710) and the ICAO Rules (International Standards, Rules of the Air, Annex 2 to the Convention on International Civil Aviation, 9th ed. 1990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that WO710, which became prior art due to the ’503 patent’s alleged loss of its priority date, disclosed a constellation of unmanned stratospheric balloons with nearly all claimed features. This included payloads with transceivers for balloon-to-balloon communication, GPS, processors, pressure sensors, and a pump-and-valve system for altitude control. Petitioner asserted that the only key elements not explicitly disclosed in WO710 were a severable tether for separating the payload and redundant, independently powered flight termination devices. These missing elements, however, were mandated by the ICAO Rules, which were authoritative international aviation standards requiring heavy unmanned balloons to have at least two independent payload flight termination devices and a means to separate the payload (e.g., a severable tether).
  • Motivation to Combine: A POSITA would combine the teachings of WO710 with the ICAO Rules to ensure the balloon system complied with well-established, international safety and operational standards. Because redundancy was an ingrained aspect of aerospace design, incorporating the ICAO-mandated safety features into the communications balloon system of WO710 would have been a matter of routine engineering.
  • Expectation of Success: A POSITA would have had a high expectation of success because the combination involved implementing known safety requirements (redundant termination devices, severable tethers) using conventional components. Duplicating WO710’s existing termination controller and power supply, and adding a standard tether release mechanism, were straightforward design choices.

Ground 2: Obviousness over WO710 and Chocol - Claims 1-6, 8, 9, 15, 20, and 28 are obvious over WO710 in view of Chocol.

• Prior Art Relied Upon: WO710 (WO/2001/01710) and Chocol (a 1990 final report from Lawrence Livermore National Laboratories titled "Superpressure Stratospheric Vehicle").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of WO710, arguing that any missing elements related to the redundant termination system were explicitly disclosed by Chocol. Chocol described a system of unmanned superpressure balloons with redundant explosive guillotines to sever a tether, separating the payload from the balloon. These guillotines were triggered by multiple independent firing circuits powered by multiple batteries, and could terminate flight in response to malfunction or danger to air traffic (e.g., loitering below 60,000 feet).
  • Motivation to Combine: A POSITA would combine Chocol's robust, redundant termination system with WO710's balloon communications network to improve the safety and reliability of the critical flight termination function. Disengaging the payload as taught by Chocol allows it to descend quickly and safely through air traffic lanes, a known advantage over the combined descent method of WO710.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in implementing Chocol’s straightforward design—a line and cutters—with WO710’s system. This approach was a time-honored and well-understood method for flight termination in the art.

Ground 3: Obviousness over Chocol, Campbell ’248, and ICAO Rules - Claims 1-6, 8, 9, 15, 20, and 28 are obvious over Chocol and Campbell ’248, supplemented by the ICAO Rules.

• Prior Art Relied Upon: Chocol, Campbell ’248 (Patent 5,645,248), and the ICAO Rules.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner asserted that Chocol, as the primary reference, disclosed a system of free-drifting superpressure balloons that met most claim limitations, including a severable tether, dual termination devices, multiple power sources, a processor, a pressure sensor, and GPS. The primary limitation Chocol did not disclose was a pump and valve for altitude control. This feature was supplied by Campbell ’248, which taught a well-known "ballonet" system using a pump and valve to adjust the amount of air ballast inside a balloon for altitude control. The ICAO Rules were cited to reinforce the requirement for redundant systems.
  • Motivation to Combine: A POSITA would have been motivated to add the pump and valve system from Campbell ’248 to Chocol's balloons to gain the significant advantage of altitude control. This would allow for "steering" the balloons by moving them to altitudes with different wind vectors, thereby controlling their position, spacing, and ability to perform scientific measurements at various altitudes.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as adding a well-known ballonet system for altitude adjustment was a common and understood practice in ballooning. The technology was disclosed in numerous prior art references and presented no unusual technical hurdles.

• Additional Grounds: Petitioner asserted additional obviousness challenges, including grounds based on WO710 in view of FAA Regulations and Chocol in view of GAINS (a 1999 conference paper). These grounds relied on similar rationales, using the FAA regulations as a domestic equivalent to the ICAO Rules and GAINS as an alternative source for a pump-and-valve altitude control system.

4. Key Claim Construction Positions

• "First And Second Flight Termination Devices": Petitioner argued for a broad construction of "first and second devices capable of initiating or causing flight termination." This construction does not require duplicate physical payload release circuits or cutters, but can be met by redundant controllers that actuate a single release mechanism.
• "A Tether That When Broken Separates The Unmanned Balloon And The Payload": Petitioner construed this as a severable or releasable connector that fastens the payload and balloon envelope in a manner that permits their separation upon termination.

5. Key Technical Contentions (Beyond Claim Construction)

• Loss of Priority Date: A central contention underpinning multiple grounds was that the ’503 patent was not entitled to its claimed 2001 priority date. Petitioner argued the provisional application failed to provide written support for the limitation that both the first and second flight termination devices were capable of terminating flight in response to a "danger to air traffic." The provisional allegedly disclosed that the secondary device could only terminate in response to a "malfunction." This alleged defect would make WO710, published in January 2001, prior art to the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that denial under §325(d) would be improper because the primary prior art and arguments presented in the petition were never considered during the patent’s prosecution. Specifically, Chocol and the ICAO Rules were never cited or analyzed by the Examiner. While WO710 was listed in an Information Disclosure Statement submitted after allowance, it was one of hundreds of references and was never substantively reviewed or applied in a rejection.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-6, 8, 9, 15, 20, and 28 of the ’503 patent as unpatentable.