Posts Tagged: "Director review"

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

On March 11, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an order on rehearing that upheld the attorney’s fee award levied against petitioner OpenSky Industries over its abuse of process during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). Although Director Vidal’s order delayed the date by which OpenSky must pay, the ruling nixed OpenSky’s challenges to the more than $400,000 attorney’s fee award in favor of patent owner VLSI.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on Monday made public an order from December awarding VLSI Technology LLC $413,264.15 for “time spent addressing OpenSky’s abusive behavior” in a years-long and circuitous case between the two companies. Vidal first issued her precedential Director review ruling in October 2022, holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, VLSI Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings by relegating it to be a “silent understudy” in the proceedings and “temporarily elevating Intel to the lead petitioner.”

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an Order last week in a sua sponte Director Review proceeding asking the parties to Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC and any interested amici to weigh in on the appropriate sanctions remedy when a party withholds evidence in an America Invents Act (AIA) proceeding.

Last week, the U.S. Patent and Trademark Office (USPTO) hosted a webinar to discuss recent revisions to the interim process for Director review of America Invents Act (AIA) trial decisions by the Patent Trial and Appeal Board (PTAB). While the revised procedures include the delegation of the Director’s review authority to a pair of newly created panels, officials from the USPTO indicated that the Director’s discretion to review and opine upon issues in delegated cases meet the constitutional mandate laid out by the U.S. Supreme Court in U.S. v. Arthrex (2021).

The United States Patent and Trademark Office (USPTO) today announced that it is retiring the Precedential Opinion Panel (POP) and extending the Director Review process to decisions on institution in America Invents Act (AIA) proceedings. The POP was established in 2018 under Director Andrei Iancu. Earlier this year, Vidal said that guidance on replacing the POP was one of the issues she expected to announce in the first part of her second year in office.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal said in an Order filed yesterday in IPR2021-01229 between Patent Quality Assurance (PQA)/Intel and VLSI Technology that VLSI’s reference in its Rehearing Request to an “unsolicited, anonymous, and improper ex parte communication” about the relationship between PQA and Intel that Vidal had put under seal has put VLSI on thin ice and in danger of being sanctioned.

On March 30, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a decision on sua sponte Director review that vacated a decision of the Patent Trial and Appeal Board (PTAB), which had previously denied institution of inter partes review (IPR) proceedings brought by semiconductor company Wolfspeed. In her latest in a series of sua sponte decisions, Director Vidal ruled that the PTAB erred in determining that prior art asserted by Wolfspeed was essentially the same as other prior art asserted against the same Purdue University patent claims in previous IPR proceedings that were also denied institution by the PTAB.

On Friday, February 3, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an order in the ongoing Director Review of OpenSky v. VLSI, restoring OpenSky as a party to the inter partes review (IPR) and awarding reasonable attorney fees to VLSI as sanctions against OpenSky. Vidal had dismissed OpenSky from the proceedings in December after first merely relegating OpenSky to be a “silent understudy” to the proceedings. In Friday’s order, following briefing from OpenSky and VLSI on her order to show cause as to why OpenSky shouldn’t have to pay compensatory damages to VLSI, Vidal held that VLSI was entitled to attorney fees for the time it spent addressing OpenSky’s abusive behavior, “including the Director Review process in its entirety.”

Following United States Patent and Trademark Office (USPTO) Director Kathi Vidal’s December 2022 precedential decision that Patent Quality Assurance (PQA) abused the inter partes review (IPR) process in its case against VLSI Technology, PQA has filed a petition seeking mandamus relief in the matter with the U.S. Court of Appeals for the Federal Circuit (CAFC). Vidal ruled in December that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. Vidal also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI from OpenSky. She wrote in the decision dismissing PQA from the IPR that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”

On November 17, patent owner VLSI Technology and petitioner OpenSky Industries each filed briefs at the U.S. Patent and Trademark Office (USPTO) in response to Director Kathi Vidal’s order for OpenSky to show cause as to why it should not be required to pay attorney’s fees to compensate for its abuse of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). While VLSI argues that OpenSky should be ordered to compensate all attorney’s fees and costs incurred from each IPR petition encouraged by OpenSky’s own petition filing activities, OpenSky argues that Director Vidal’s order to show cause fails to identify any compensable harm stemming from OpenSky’s IPR conduct.

Last week, the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) in Code200, UAB v. Bright Data, Ltd., IPR2022-00861, following a sua sponte Director Review decision ordering the Board to reconsider its original ruling denying institution. USPTO Director Kathi Vidal issued a precedential sua sponte Director Review Decision in the case in August, clarifying the application of Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) when denying decisions to institute IPRs.

In a much-anticipated decision, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a precedential Director review ruling holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings and “temporarily elevating Intel to the lead petitioner.” Vidal’s 52-page decision further remands the case to the Patent Trial and Appeal Board (PTAB) to decide whether it merits institution “based only on the record before the Board prior to institution.” The decision explains that “OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and joined Petitioner Intel, and expressed a willingness to abuse the process in order to extract the payment.”

On September 6, New Vision Gaming and Development Inc. (New Vision) filed a brief with the U.S. Court of Appeals for the Federal Circuit (CAFC) on return from remand after the U.S. Patent and Trademark Office (USPTO) denied its request for Director Review. The case relates to a Patent Trial and Appeal Board (PTAB) decision canceling all claims of U.S. Patent No. 7,325,806 (‘806 patent) and was previously appealed to the CAFC. But since the last appeal, a report demonstrating evidence that PTAB judges are influenced by U.S. Patent and Trademark Office (USPTO) leadership gives new weight to New Vision’s arguments, says the brief.