Vidal to review PTAB’s decision that OpenSky petition has merit
USPTO director agrees to consider the Board's decision, citing the ‘unusual and complex nature’ of the case | Vidal announces review after sanctioning OpenSky for alleged IPR abuse.
OpenSky Industries’ petition against VLSI Technology’s patent—which is at the heart of VLSI’s record £2.2 billion win against Intel in March 2021—has merit, the Patent Trial and Appeal Board ( PTAB) has said.
The decision comes after Kathi Vidal—who has greater powers to review PTAB decisions since the landmark Arthrex v US (2021)— sanctioned OpenSky for allegedly abusing the inter partes review (IPR) process earlier in October.
She found that the petitioner had filed an IPR in an attempt to extract payment from VLSI as well as Intel, which was joined by the PTAB as a petitioner in June.
As part of her sanctions against OpenSky, Vidal elevated Intel as lead petitioner and relegated OpenSky to the role of “silent understudy”.
However, the PTAB said in its decision of Friday, October 14 that: “Having evaluated the record prior to institution, we conclude that the petition presents a compelling, meritorious challenge.”
Yesterday, Monday October 17, Vidal agreed to consider the PTAB’s remand decision and will review the validity of one of the patents involved in the dispute following the three-judge panel’s decision last week.
Vidal further ordered that VLSI files a request for a rehearing of the panel’s remand decision on ‘compelling merit’ within two weeks.
Vidal also authorised Intel to submit a responsive brief within one week of VLSI’s request for a rehearing “limited to opposition of points” identified in the patent owner’s request; and further ordered that the underlying proceeding be stayed pending her decision.
“This order does not reflect any analysis by me regarding the Board’s decision or its ultimate conclusion,” she wrote. “I have full faith in the abilities and integrity of the administrative patent judges. Rather, I feel duty-bound to conduct an independent director review of the compelling merits determination based on the unusual and complex nature of this case.”
Writing to WIPR to offer his comment, lead counsel for OpenSky Andrew Oliver of Amin, Turocy & Watson, said: “I am very pleased with the Board’s decision on October 14. It vindicates my belief that the petition I filed for OpenSky was meritorious. I have stated in the past that I was hired to file and litigate a meritorious inter partes review from start to finish.”
He added that this is a personal statement and not made on behalf of OpenSky.
The patent to be reviewed is US patent 7,725,759 and is titled “System and Method of Managing Clock Speed in an Electronic Device”. The patent concerns data-processing technology and describes a method of monitoring a plurality of master devices coupled to a bus (a high-speed internal connection); receiving an input from a master device that is a request to increase the bus clock frequency; and increasing the bus clock frequency in response to the request.
WIPR has contacted counsel for VLSI and Intel for further comment.
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