USPTO director wades into fight over $2.1 bln Intel patent verdict

3 minute read

Katherine Vidal, director of the U.S. Patent and Trademark Office, on Capitol Hill in Washington, D.C. REUTERS/Elizabeth Frantz

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  • Vidal said patent reviews sought after VSLI win raise 'novel issues'
  • VLSI accused patent challenger of extortion

(Reuters) - U.S. Patent and Trademark Office director Kathi Vidal on Tuesday announced she will reexamine decisions by a PTO tribunal to review the validity of the patents at the center of VLSI Technology LLC's landmark $2.1 billion win against Intel Corp.

Two entities without apparent ties to Intel -- OpenSky Industries LLC and Patent Quality Assurance LLC -- requested the reviews after the verdict in West Texas last year, one of the biggest in the history of U.S. patent law.

Both companies were formed after the verdict. VLSI has said Nevada-based OpenSky has "no apparent business other than extortion," and accused it of offering to sabotage its own case if VLSI paid it off.

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Vidal said in the orders Tuesday that the Patent Trial and Appeal Board's decisions to review the patents raise "novel issues of law and policy, as well as issues of particular importance to the Office and the patent community."

Vidal also said she would let the cases continue during her review.

The PTO and Intel declined to comment. PQA, OpenSky, and their attorneys did not immediately respond to requests for comment.

The PTAB institutes review if it thinks there is a reasonable chance that parts of a challenged patent are invalid. It granted PQA's review request in January and OpenSky's last year.

The board also allowed Intel to join South Dakota-based PQA's case on Monday. The chipmaker's bid to join the OpenSky case is still pending.

The board previously rejected Intel's bids to review both patents.

Intel fended off a second VLSI patent lawsuit in a second West Texas trial last year. A third trial in the same court was postponed in April after multiple participants tested positive for COVID-19, and is now set to begin in November.

Other VLSI patent cases against Intel are still pending in Northern California and Delaware.

VLSI is owned by investment funds with assets managed by SoftBank-owned private equity firm Fortress Investment Group. The patents at issue were first held by Dutch chipmaker NXP Semiconductors.

The cases are OpenSky Industries LLC v. VLSI Technology LLC, Patent Trial and Appeal Board, IPR2021-01064 and Patent Quality Assurance LLC v. VLSI Technology LLC, Patent Trial and Appeal Board, IPR2021-01229.

For OpenSky: Andrew Oliver of Amin Turocy & Watson

For PQA: Bruce Slayden of Slayden Grubert Beard

For Intel: Benjamin Fernandez, David Cavanaugh, and Yvonne Lee of Wilmer Cutler Pickering Hale & Dorr

For VLSI: Babak Redjaian of Irell & Manella, Kenneth Weatherwax of Lowenstein & Weatherwax

Read more:

U.S. panel to review patent from $2.1 bln Intel court loss

Intel loses U.S. patent trial, ordered to pay $2.18 billion to VLSI Tech

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com