On July 7, 2022, Director Kathi Vidal granted Director review of the PTAB decisions in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 47 (PTAB July 7, 2022) and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 35 (PTAB July 7, 2022).
Director Vidal also issued several orders identifying the issues subject to review, setting the schedule for the Director review process and authorizing party briefing and amicus briefing. Director Vidal noted that the proceedings present issues of first impression and involve issues of particular importance to the Office. See our June 23 and April 22 posts on the Director review process for the full list of issues that warrant Director review.
The following issues were identified as relevant and subject to review in each case:
- What actions the Director, and by delegation the Board, should take when faced with evidence of an abuse of process or conduct that otherwise thwarts, as opposed to advances, the goals of the Office and/or the America Invents Act (AIA); and
- How the Director, and by delegation the Board, should assess conduct to determine if it constitutes an abuse of process, or if it thwarts, as opposed to advances, the goals of the Office and/or the AIA, and what conduct should be considered as such.
Director Vidal noted that the Board did not err in its decision to institute review of a meritorious petition where the challenged patent was previously litigated in district court and was the subject of previous IPR proceedings not instituted based on Fintiv. She further clarified that none of the challenges presented in the cases have yet been adjudicated, either by the Board or by the district court in parallel litigation. Accordingly, Director Vidal stated that no further briefing is permitted as to the merits of the unpatentability challenges as it pertains to institution or the Fintiv or General Plastic factors. The order also noted that new declaratory evidence is not permitted. The parties were authorized to submit initial briefing, limited to the above-identified policy issues. Director Vidal also authorized the parties to file responsive briefing.
With respect to the amicus briefing, Director Vidal authorized amicus curiae to submit briefs to Director_PTABDecision_Review@uspto.gov. The order noted that the amicus briefs must be limited to the above-identified policy issues, must be no more than 25 pages and must be submitted by August 4, 2022. Director Vidal clarified that amici are not authorized to submit evidence. In addition, she stated that the Board will enter the amicus curiae briefs into the record.
We will continue to monitor developments in this area and provide updates on our website.