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ARTICLE · 15 NOVEMBER 2022

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

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In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes review proceedings.

United StatesIntellectual Property
Caitlin Olwell
Caitlin Olwell
Rubén Muñoz
Rubén Muñoz
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Background: Petitioner OpenSky Industries, LLC's IPR petition challenged claims of a patent owned by VLSI Technology LLC. The petition was largely copied from portions of an IPR petition previously filed by Intel Corporation challenging the same patent claims. Intel had filed its IPR petition after being sued for patent infringement by VLSI. There, the board declined to institute IPR based on the progression of the ongoing litigation between Intel and VLSI, and the overlap between the issues in the litigation and the petition. Ultimately, the trial resulted in a $2 billion jury verdict against Intel. Shortly thereafter, OpenSky was formed and filed a "copycat" IPR petition. Unlike Intel, OpenSky had not been sued for patent infringement. Intel later joined the proceeding with OpenSky, but OpenSky's conduct prompted Director review on questions relating to an abuse of process.

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