THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ONLINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION. ARTICLE PATENT INFRINGEMENT IN OUTER SPACE IN LIGHT OF 35 U.S.C. § 105: FOLLOWING THE WHITE RABBIT DOWN THE RABBIT LOOPHOLE THEODORE U. RO* MATTHEW J. KLEIMAN** KURT G. HAMMERLE*** * Theodore (Ted) Ro is an intellectual property attorney at Johnson Space Center, working for the National Aeronautics and Space Administration. Mr. Ro has a Bachelor of Science degree in aerospace engineering from Texas A&M University as well as a master’s degree in industrial engineering and a Doctor of Jurisprudence from the University of Houston. Mr. Ro primarily practices in the area of intellectual property law, including patent prosecu- tion and patent licensing. ** Matthew Kleiman is Corporate Counsel at the Draper Laboratory in Cambridge, MA. Mr. Kleiman also chairs the Space Law Committee of the ABA Section on Science & Tech- nology Law and teaches Space Law at Boston University School of Law. Mr. Kleiman earned his Bachelor of Arts degree from Rutgers University and Doctor of Jurisprudence from Duke University. *** Kurt G. Hammerle is an intellectual property attorney for the National Aeronautics and Space Administration at the Lyndon B. Johnson Space Center located in Houston, TX. Mr. Hammerle earned a Bachelor of Science degree in mechanical engineering from Virginia Polytechnic Institute & State University in 1988 and a Doctor of Jurisprudence from the Marshall-Wythe School of Law at the College of William & Mary in 1991. The views expressed herein are those of the authors’ and not of the National Aeronautics and Space Administration, Draper Laboratory or any other organization. THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ONLINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION. 2011] PATENT INFRINGEMENT IN OUTER SPACE I. INTRODUCTION .............................................................................................. II. THE LEGAL LANDSCAPE: THE INTERSECTION OF PATENT LAW AND SPACE LAW ................................................................................................... A. Patent Law .......................................................................................... B. Space Law ........................................................................................... III. DOWN THE RABBIT HOLE: PATENT INFRINGEMENT IN LIGHT OF 35 U.S.C. § 105 .................................................................................................. A. Extraterritorial Reach of U.S. Patent Law ......................................... B. 35 USC § 105: Inventions in Outer Space .......................................... C. The Rabbit “Loophole” ...................................................................... D. Avoiding Patent Infringement Liability by Using Flags of Convenience ....................................................................................... i. Scenario 1: U.S. company launches and controls a satellite from a facility located outside of the United States ............................................................................................ ii. Scenario 2: U.S. company launches a satellite from a facility located outside of the United States, but controls the spacecraft from its headquarters located within the United States ................................................................................. iii. Scenario 3: A foreign subsidiary of a U.S. company launches and controls a satellite from a facility located within the United States ............................................................... IV. SQUARING EXCEPTION 2 WITH THE UNITED STATES’ OBLIGATIONS UNDER THE OUTER SPACE TREATY .............................................................. V. HOW U.S. PATENT OWNERS MAY ATTEMPT TO ENFORCE THEIR PATENTS DESPITE THE § 105(A) EXCEPTIONS ............................................... A. Infringing Acts Under 35 U.S.C. § 105 and § 271(a) Remain Unreconciled ...................................................................................... B. Induced Infringement .......................................................................... C. Attacking the Validity of a Registration in a Foreign Registry .......... VI. CONCLUSION ................................................................................................. I. INTRODUCTION Since the 1980s, commentators have prophesized that a new era of human space exploration was imminently upon us. In more specific terms, these commentators have forecasted that the role of government agencies in space THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ONLINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION. B.U. J. SCI. & TECH. L. [Vol. 17 operations was set to diminish and private enterprises would fill the resultant void, at least in regard to activities in Low-Earth Orbit (“LEO”).1 However, for the most part, since the 1980s, this bold prediction, vividly represented in scenes of the movie 2001: A Space Odyssey by a Pan Am spaceplane transport- ing Dr. Heywood R. Floyd to an orbiting space station, has not come to fruition . until possibly now.2 The confluence of a major policy redirection for the National Aeronautics and Space Administration (“NASA”) and significant achievements in the de- velopment of private commercial space enterprises occurring in 2010 indicates a subtle but noticeable shift in the structure and lead players of space activities. On February 1, 2010, under its Commercial Crew Development Round 1 pro- ject, NASA announced that it had awarded a total of $50M to five commercial companies to partially fund the development of system concepts, key technol- ogies, and capabilities that could ultimately be used in commercial crew hu- man space transportation systems.3 On June 4, 2010, Space Exploration Tech- nologies Corporation (“SpaceX”) launched its Falcon 9 rocket for the first time from Cape Canaveral, Florida.4 On June 28, 2010, the Obama administration unveiled the United States’ new space policy, which indicates that NASA no longer plans to send humans to the Moon.5 The new space policy effectively 1 See, e.g., Barbara Luxenberg, Protecting Intellectual Property in Space, PROCEEDINGS OF THE TWENTY-SEVENTH COLLOQUIUM OF THE LAW OF OUTER SPACE, 172 (1984); Kunihiko Tatsuzawa, The Regulation of Commercial Space Activities by the Non-Government Entities in Space Law, PROCEEDINGS OF THE THIRTY-FIRST COLLOQUIUM OF THE LAW OF OUTER SPACE, 341 (1988). 2 See generally LEWIS SOLOMON, THE PRIVATIZATION OF SPACE EXPLORATION: BUSINESS, TECHNOLOGY, LAW AND POLICY (2008); MICHAEL BELFIORE, ROCKETEERS: HOW A VISIONARY BAND OF BUSINESS LEADERS, ENGINEERS, AND PILOTS IS BOLDLY PRIVATIZING SPACE (2007) (describing the emergence of new entrepreneurial space companies over the last decade). 3 See Brian Berger, Biggest CCDev Award Goes to Sierra Nevada, SPACE NEWS (Feb. 1, 2010), http://www.spacenews.com/venture_space/100201-biggest-ccdev-award-goes-sierra- nevada.html. 4 See Launch Manifest, SPACEX, http://www.spacex.com/launch_manifest.php (last visit- ed Mar. 11, 2011). 5 Compare THE VISION FOR SPACE EXPLORATION (2004) available at http://www.nasa.gov/pdf/55583main_vision_space_exploration2.pdf (making human pres- ence on the Moon a primary goal), with NATIONAL SPACE POLICY OF THE UNITED STATES OF AMERICA (2010) available at http://www.whitehouse.gov/sites/default/files/national_space_policy_6-28-10.pdf (eschew- ing all mention of the Moon). THIS VERSION DOES NOT CONTAIN PARAGRAPH/PAGE REFERENCES. PLEASE CONSULT THE PRINT OR ONLINE DATABASE VERSIONS FOR PROPER CITATION INFORMATION. 2011] PATENT INFRINGEMENT IN OUTER SPACE halted NASA’s planned return to the Moon (known as the Constellation Pro- gram) and instead put a substantial emphasis on procuring commercial launch services to meet NASA’s needs, including crew and cargo missions to the In- ternational Space Station.6 On October 10, 2010, Virgin Galactic achieved the first piloted free flight and landing of its SpaceShipTwo sub-orbital vehicle.7 Barely two weeks later, on October 25, 2010, NASA released a solicitation for its Commercial Crew Development Round 2 project valued at up to $200M and designed “to stimulate efforts within the private sector to develop. .human spaceflight services. .[and to] foster activity leading to the develop- ment of orbital commercial Crew Transportation Systems.”8 On December 8, 2010, SpaceX successfully launched its Dragon spacecraft into LEO atop its Falcon 9 launch vehicle, subsequently reentered the Dragon spacecraft into the Earth’s atmosphere, and then safely landed it in the Pacific Ocean where it was retrieved, becoming the first private enterprise to accomplish this task.9 In the United States, other private companies, notably, Boeing, Sierra Nevada, Or- bital Sciences and Bigelow Aerospace, are aggressively developing commer- cial space vehicles for operations in LEO.10 Absent an unexpected rash of commercial failures, the long predicted new era of a commercial space industry appears to be finally upon us, and is shap- 6 See NATIONAL SPACE POLICY OF THE UNITED STATES OF AMERICA (2010) at 11, availa- ble at http://www.whitehouse.gov/sites/default/files/national_space_policy_6-28-10.pdf; Jacqui Goddard, Nasa reduced to ‘pipe dreams’ as Obama cancels Moon flights, THE TIMES (Feb. 2, 2010), http://www.timesonline.co.uk/tol/news/world/us_and_americas/article7011322.ece. 7 See Jason Paur, Update: Virgin