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ARTICLE · 21 FEBRUARY 2023

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse Of Process

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In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions...

United StatesIntellectual Property
Hannah D. Price
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Jason Weil
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In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be considered when addressing allegations of abuse of process or conduct that otherwise thwarts the goals of the Office.

In district court litigation between Intel Corporation and VLSI Technology, LLC, a jury returned a verdict of $1.5 billion in early 2021 for infringement of the challenged patent in this proceeding. Shortly after the jury verdict, two entities—OpenSky Industries, LLC and Patent Quality Assurance—were formed. OpenSky filed two inter partes review (IPR) petitions challenging two different patents. OpenSky's IPR petitions extensively copied Intel's previous IPR petitions—which were denied due in part to the then co-pending litigation—and expert reports. Subsequently, PQA filed an IPR petition against one of those patents, which also

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