Intel Left as Sole Petitioner in Patent Cases After Latest PTO Sanctions

An inter partes review (IPR) proceeding related to VLSI Technology’s $2.1 billion jury verdict against Intel can proceed, Patent and Trademark Office Director Kathi Vidal said Dec. 22, calling the merits in two related cases “compelling.”

Vidal dismissed Nevada-based OpenSky and Patent Quality Assurance (PQA) from separate proceedings, saying they abused the IPR process. A U.S. District Court for the Western District of Texas jury awarded $2.1 billion to VSLI last year, saying Intel infringed two of VSLI’s patents. OpenSky and PQA, two companies established after the verdict, contested the validity of the patents.

OpenSky abused the IPR process by filing a petition in an “attempt to extract payment” from patent owner VLSI and Intel and by “expressing a willingness to abuse the process in order to do so,” Vidal wrote Thursday. PQA abused the IPR process by “threatening to join a related IPR in an attempt to extract payment from VLSI and misrepresenting that PQA had an exclusive engagement with a witness relied on in the IPR,” said Vidal. The witness was Adit Singh, a “witness relied on by OpenSky in a parallel proceeding” and whose “representation it later qualified as not being an exclusive engagement,” wrote Vidal. Intel can move forward as sole petitioner in both cases, she said, concluding that the underlying proceedings provide “compelling” merits analysis.

Vidal sanctioned PQA by dismissing the company from the proceeding and ordering it to “show cause why it should not be ordered to pay compensatory damages” to VLSI. She dismissed OpenSky from its proceeding and ordered VSLI 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.” None of the companies in the cases commented Friday.

Both filings were issued as precedential decisions on director review. Vidal affirmed a Patent Trial and Appeal Board decision on remand in the OpenSky case. The cases can proceed to the federal circuit once a decision on the merits is issued by the PTAB.