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

Exclusive data reveals law firms are failing to go above and beyond for their corporate clients, with in-house counsel saying advisers should consider more transparent billing processes
Arty Rajendra and Gary Moss discuss why ‘thorough and intense’ preparation, plus the odd glass of wine, led to a record FRAND victory for their client
Monday’s coverage includes news of a potentially 'game-changing' trademark development in China and how practitioners are using AI
Managing IP gives a taster of the numbers behind this year’s IP STARS trademark rankings, and looks back at our 2025 award winners
Updates from IP offices, the shifting requirements of in-house counsel, and news of London 2026 were among major talking points on Sunday
Etienne Sanz de Acedo discusses the association’s three-year plan, what he is looking forward to in San Diego, and why London came calling for 2026
Professionals from three organisations reveal what led them to sponsor Brand Action and why doing so can build camaraderie
The results of a UK government consultation on the exhaustion of IP rights and an annual review published by the EPO’s Boards of Appeal were also among the top talking points this week
The decision disregards Perlmutter’s work at the US Copyright Office and comes at a time when strong leadership and expertise are crucial
Sources say the decision to fire Shira Perlmutter raises constitutional concerns and speculate on what the decision could mean for the country’s approach to AI
Gift this article