Posts Tagged: "Kathi Vidal"

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.

Clarity, transparency and integrity were themes consistently referenced by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal during a lunchtime fireside chat with IPWatchdog Founder and CEO Gene Quinn on Day 3 of IPWatchdog LIVE 2023. Throughout the discussion, which ran the gamut from the agency’s current rulemaking to potential issues with emerging technologies, Director Vidal strongly encouraged public participation from stakeholders to improve the functioning of the nation’s patent and trademark-granting agency.

If a sanctions order is the stuff of a Patent Trial and Appeal Board (PTAB) practitioner’s bad dreams, then the issuance of sanctions outright cancelling a client’s patent(s) qualifies as their worst nightmare. That nightmare happened to Longhorn Vaccine (“Longhorn”) in April of this year, when the PTAB canceled five  of its patents as sanctions for Longhorn’s violation of the duty of candor relating to withholding test data that the PTAB deemed relevant to the patentability of the challenged claims. A month later, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal sua sponte ordered Director Review of PTAB’s sanctions order. We now await her decision. This article examines the PTAB’s unprecedented sanctions order in the context of Director Vidal’s recent crackdown on inter partes review (IPR) abuses and provides guidance as to what practitioners can do now to avoid accusations of misconduct before the PTAB.

A little over halfway through 2023, and nearing the end of the Patent Trial and Appeal Board’s (PTAB’s) fiscal year, we can take stock of an administrative body that is settling into a decade of precedent while big changes still loom. Unlike prior years, where policy changes resulted in statistical swings for institution rates, outcomes, amendment practice, and the like, this year has been more of an extension of previous trends (though institution rates are still creeping higher).

Today’s hearing of the House Judiciary Subcommittee on Courts, Intellectual Property and the Internet on Oversight of the U.S. Patent and Trademark Office (USPTO) demonstrated some confusion on the part of Congress about the intent of USPTO Director Kathi Vidal’s recent Advanced Notice of Proposed Rulemaking (ANPRM) on changes to Patent Trial and Appeal Board (PTAB) processes, and suggested the Subcommittee members believe she may be exceeding her authority.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal held a virtual conversation with the intellectual property (IP) press on Wednesday to coincide with a one-year anniversary Director’s blog post published today. “If last year was about listening…this is really the year where we’re trying to bring that to impact,” said Vidal. Vidal said the work she did in her first year in office was about providing clarity and sometimes learning from “unintended consequences,” but this year is going to be about implementation based on the feedback they’ve been provided via the various requests for comments, listening sessions and other initiatives the Office has undertaken. “We now have more knowledge to shape real policy,” Vidal said.

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.

The Patent Trial and Appeal Board (PTAB) has a well-earned and perfectly appropriate problem with perception, and U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal seems to be doing her level best to make that problem of perception even worse. It isn’t bad enough that petitioners do not owe the PTAB or the Office itself a duty of candor, but now they can stay in a case as a petitioner even if they are found to have engaged in extortion. There has long been a systemic bias against patent owners, who have for many years suffered through lengthy examinations of their innovations. But ever since former PTAB Chief Judge James Smith embraced the moniker of “patent death squad” as a badge of honor, the PTAB has suffered from a perception problem, and really now lacks all credibility.

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.”

At the U.S. Patent and Trademark Office’s (USPTO) Women’s Entrepreneurship (WE) event in Naples, Florida, on Wednesday, January 18, USPTO Director Kathi Vidal announced that the Office has a new tool, called the Intellectual Property (IP) Identifier, intended to assist those “less familiar with IP” in identifying what IP they have and what rights they need to protect it. The tool also provides basic information on patents, trademarks, trade secrets and copyright. Vidal said in a press release Wednesday that anyone “considering starting a business or trying to grow one” should use the tool and that “it’s another example of our work to bring more people into the innovation ecosystem to increase American competitiveness, grow the economy, and solve world problems.” 

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.”

In June of this year, United States Patent and Trademark Office (USPTO) Director Kathi Vidal replied to a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI) for answers to a number of questions surrounding abuse of the inter partes review (IPR) system, explaining that she was working on the problem. Now, Vidal has sent a follow-up letter providing more detail on two of the questions raised in the letter, specifically with respect to the USTPO’s authority to issue sanctions for bad faith petitions. In addition to providing statistics on the Patent Trial and Appeal Board’s use of sanctions since the America Invents Act (AIA) was passed, Vidal also said she plans to seek stakeholder input to explore further options for addressing misconduct.

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a request for panel rehearing or rehearing en banc by U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal of a February CAFC decision that held the Office’s application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. In its February decision, the CAFC held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.” Elster attempted to register the trademark TRUMP TOO SMALL for use on T-shirts, but an examiner refused the application, saying that section 2(c) bars registration of a mark that “[c]onsists of or comprises a name . . . identifying a particular living individual” without the individual’s “written consent.”