Vidal says OpenSky abused IPR process in billion-dollar case

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Vidal says OpenSky abused IPR process in billion-dollar case

Kathi Vidal

In a director review decision, the USPTO chief said OpenSky’s attempt to extract payment from VLSI and Intel and undermine proceedings was a violation

USPTO director Kathi Vidal slapped down patent challenger OpenSky today, October 4, for abusing the inter partes review process at the Patent Trial and Appeal Board in a case worth more than $2 billion.

In her director review decision, Vidal said OpenSky violated the process by attempting to extract payment from patent owner VLSI and joint petitioner Intel and offering to undermine proceedings in exchange.

“Taken together, the behaviour warrants sanctions to the fullest extent of my power,” Vidal wrote. “Not only are such sanctions proportional to the conduct here, but they are necessary to deter such conduct by OpenSky or others in the future.”

She sanctioned the patent challenger by blocking it from actively participating in the IPR and temporarily elevating Intel to the position of lead petitioner in the OpenSky v VLSI dispute.

Vidal also demanded that OpenSky make a case for why it shouldn’t be ordered to pay compensatory damages to VLSI, including attorney fees.

The director didn’t dismiss the proceeding but ordered, in an effort to balance the competing interests at issue, that the case be remanded to the PTAB to determine whether the petition presented a compelling and meritorious challenge.

The board should make the decision within the next two weeks, she said, based only on the record before the PTAB prior to institution.

Vidal accepted the case for director review after VLSI, a non-practising entity owned by investment funds managed by the Fortress Investment Group, alerted the PTAB to an email it received from OpenSky last March.

The email suggested that the two “work together to secure dismissal or defeat” and that OpenSky might agree not to pay its expert to appear at a deposition as part of the deal, according to VLSI.

OpenSky, which was incorporated in April 2021, challenged VLSI’s patent at the PTAB shortly after the NPE won a $2.18 billion jury verdict against Intel at the District Court for the Western District of Texas in March 2021.

The PTAB instituted the challenge in December 2021, having previously denied a similar petition brought by Intel on discretionary grounds.

more from across site and SHARED ros bottom lb

More from across our site

The Getty Images v Stability AI case, which will hear untested points of law, is a reminder of the importance of the legal system and the excitement it can generate
Firms explain the IP concerns that can arise amid attempts by brands to show off their ‘Canadianness’ to consumers
Counsel say they will be monitoring issues such as the placement of house marks, and how Mondelēz demonstrates a likelihood of confusion in its dispute with Aldi
The EUIPO expanding its mediation services and a new Riyadh office for Simmons & Simmons were also among the top talking points this week
David Boundy explains why Pierson Ferdinand provides a platform that will allow him to use administrative law to address IP concerns
Developments included an anti-anti-suit injunction being granted for the first time, and the court clarifying that it can adjudicate over alleged infringements that occurred before June 2023
Griffith Hack’s Amanda Stark, one of our ‘Top 250 Women in IP’, explains how peer support from male colleagues is crucial, and reveals why the life sciences sector is thriving
The case, which could offer clarity on the training of AI models within the context of copyright law, will go to trial in the UK next week
CMS IndusLaw co-founder Suneeth Katarki says he plans to hire a patent team in India and argues that IP should play a major role within full-service firms
Partners at the firm explain why they’ve seen more SEP cases at the ITC, and why they are comfortable recommending the forum to clients
Gift this article