Director Vidal issues decisions on Director review in two cases involving abuse of the inter partes review process

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Patent Trial and Appeal Board

Director Vidal issues decisions on Director review in two cases involving abuse of the inter partes review process

Patent Quality Assurance, LLC, v. VLSI Technology LLC, IPR2021-01229, Paper 102 (Dec. 22, 2022) (precedential)

OpenSky Industries LLC v. VLSI Technology LLC, IPR2021-01064, Paper 121 (Dec. 22, 2022)

In Patent Quality Assurance (PQA) v. VLSI, in a precedential decision on Director review, the Director holds that Petitioner PQA abused the inter partes review (IPR) process by (1) filing an IPR in this proceeding and further threatening to join a related IPR in an attempt to extract payment from VLSI and (2) misrepresenting that PQA had an exclusive engagement with a witness relied on in the IPR. The Director sanctions PQA by dismissing PQA from the proceeding, and further orders PQA to show cause why it should not be ordered to pay compensatory damages to VLSI. Additionally, to balance the competing interests at issue in this case and determine whether to dismiss or maintain the underlying proceeding with Intel as the sole petitioner, the Director provides a compelling merits analysis. The Director determines that the Petition, based only on the record prior to institution, presents a compelling, meritorious challenge. The Director also lifts the stay of the underlying proceeding.  

In OpenSky v. VLSI, in another decision on Director review, the Director affirms the Patent Trial and Appeal Board (PTAB) decision on remand, concluding that the Petition, based only on the record prior to institution, presents a compelling, meritorious challenge. The decision also sanctions Petitioner OpenSky by dismissing OpenSky from the proceeding, leaving Intel as the sole Petitioner. The Director further orders VLSI to show cause why it should not be ordered to pay reasonable attorney fees for supporting their arguments with misleading statements of law and fact.   

Learn more about PTAB precedential and informative decisions and the status of Director review requests.

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