Google LLC v. Space Data Corp

1. Case Identification

• Case #: IPR2018-00947
• Patent #: 9,643,706
• Filed: April 20, 2018
• Petitioner(s): Google LLC
• Patent Owner(s): Space Data Corporation
• Challenged Claims: 1, 9-10, 13-14, 24-25, and 28-29

2. Patent Overview

• Title: Systems And Applications Of Lighter-Than-Air (LTA) Platforms
• Brief Description: The ’706 patent discloses high-altitude, lighter-than-air balloon platforms for applications like communications. The purported invention focuses on a termination and recovery system featuring dual, redundant flight termination devices and power sources to enhance safety.

3. Grounds for Unpatentability

Ground 1: Obviousness over Patent Owner's Prior Publication and Aviation Rules - Claims 1, 9-10, 13-14, 24-25, and 28-29 are obvious over WO710 in view of the ICAO Rules.

• Prior Art Relied Upon: WO710 (International Publication No. WO/2001/01710) and the ICAO Rules (International Standards, Rules of the Air, Annex 2, 9th ed. July 1990).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that WO710, an earlier publication by the Patent Owner, disclosed nearly all elements of the challenged claims. This included a stratospheric balloon communications network where each balloon had a payload with a processor, GPS, pressure sensor, and a transceiver for communicating with the ground and other balloons. WO710 also taught a pump and valve system for altitude control and a flight termination device responsive to malfunction or danger (e.g., falling below 60,000 feet). Petitioner asserted that the few missing elements—a severable tether and a second, redundant termination device with a separate power source—were explicitly taught by the ICAO Rules, which required such safety features for heavy unmanned balloons.
  • Motivation to Combine: A POSITA would combine the teachings because WO710 described a balloon system subject to aviation regulations. The ICAO Rules provided mandatory and well-known safety standards for such systems, including the use of redundant termination devices and severable tethers to ensure payloads could be safely and quickly brought down through commercial airspace. Compliance with these authoritative safety rules would have been a primary design consideration.
  • Expectation of Success: A POSITA would have had a high expectation of success. Implementing a severable tether (e.g., a nylon cord with a cutter) and duplicating a known termination controller and power supply were standard, well-understood practices in aerospace engineering, not complex or unpredictable arts.

Ground 3: Obviousness over Patent Owner's Prior Publication and a Prior Art Balloon System - Claims 1, 9-10, 13-14, 24-25, and 28-29 are obvious over WO710 in view of Chocol.

• Prior Art Relied Upon: WO710 (WO/2001/01710) and Chocol (a 1990 report titled "Superpressure Stratospheric Vehicle").
• Core Argument for this Ground:
  • Prior Art Mapping: This ground presented Chocol as an alternative to the ICAO Rules for teaching the missing elements from WO710. Petitioner argued that Chocol disclosed a system of unmanned superpressure balloons that already implemented the key safety features. Specifically, Chocol taught a severable nylon tether connecting the payload to the balloon and redundant "explosive guillotines" to sever that tether. These termination devices were triggered by independent firing circuits powered by multiple batteries, and were responsive to malfunction or danger to air traffic.
  • Motivation to Combine: A POSITA would combine the references to incorporate Chocol's proven, robust termination system into the communications network of WO710. Chocol provided a concrete, successfully implemented example of the exact type of redundant safety system that was desirable for the long-duration stratospheric platforms described in WO710, addressing the same safety concerns.
  • Expectation of Success: The design in Chocol was straightforward, using a line and cutters. Petitioner argued that despite a report of one premature test flight in Chocol, the underlying design principle was sound and widely used in the prior art, giving a POSITA a high expectation of success in its implementation.

Ground 4: Obviousness over Prior Art Balloon Systems and Aviation Rules - Claims 1, 9-10, 13-14, 24-25, and 28-29 are obvious over Chocol, Campbell ’248, and 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: This ground used Chocol as the primary reference, arguing it taught most claimed features, including a balloon system with redundant termination devices, a severable tether, transceivers for ground and balloon-to-balloon communication, GPS, and a processor. The primary element Chocol lacked was an active altitude control system using a pump and valve. Petitioner asserted this missing element was supplied by Campbell ’248, which explicitly taught a "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 common knowledge and requirement for redundant safety systems.
  • Motivation to Combine: A POSITA would combine Campbell ’248's altitude control system with Chocol's balloon platform to gain the significant advantage of "steering" the balloons. By adjusting altitude to catch different wind currents, a POSITA could better control balloon position and spacing within a communications network, a known and desirable goal.
  • Expectation of Success: The ballonet pump-and-valve system taught by Campbell ’248 was a well-known, established means for altitude adjustment in various balloon types. A POSITA would have reasonably expected success in integrating this known technology into the superpressure balloon platform described by Chocol.

• Additional Grounds: Petitioner asserted Ground 2, which was substantially similar to Ground 1 but relied on FAA Regulations instead of the ICAO Rules. Petitioner also asserted Ground 5, which argued obviousness over Chocol in view of GAINS (a 1999 conference paper), with GAINS providing teachings on pump-and-valve altitude control and redundant power sources, similar to the role of Campbell ’248 in Ground 4.

4. Key Claim Construction Positions

• "First and second flight termination devices": Petitioner proposed this term be construed as "first and second devices capable of initiating or causing flight termination." Petitioner argued this construction was consistent with the specification, which describes two separate controllers (a primary processor and a backup controller) each having the "ability to terminate the flight," without requiring duplicate physical release mechanisms like cutters.
• "A tether that when broken separates the gas enclosure... and the payload": Petitioner proposed this term be construed as "a severable or releasable connector that fastens the payload and balloon envelope in a manner that permits them to be separated." This construction was argued to be consistent with the ordinary meaning and the specification's disclosure of a monofilament line that is melted to release the payload.

5. Key Technical Contentions (Beyond Claim Construction)

• Lack of Priority: A central contention underpinning Grounds 1-3 was that the ’706 patent was not entitled to its claimed 2001 priority date. Petitioner argued that the priority application failed to disclose key limitations of the challenged claims, including a transceiver capable of balloon-to-balloon communication (required by claims 1, 9-10, etc.) and two termination devices both capable of responding to a danger to air traffic (required by claim 29). This alleged failure meant that the Patent Owner's own WO710 publication, published in January 2001, qualified as prior art to the challenged claims.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because the Patent and Trademark Office never considered the primary prior art references or arguments during the original prosecution. Specifically, references like Chocol and the ICAO Rules, and the argument that WO710 was invalidating prior art due to a lack of priority support, were never analyzed by the examiner. Therefore, the petition raised entirely new arguments based on new evidence.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 9-10, 13-14, 24-25, and 28-29 of the ’706 patent as unpatentable.