Director Vidal issued a careful decision concerning OpenSky’s copycat filings and subsequent conduct in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 102. The conclusion provides a great summary of her findings:
Viewed as a whole, OpenSky’s conduct has been an abuse of the IPR process, the patent system, and the Office. The totality of OpenSky’s conduct evinces a singular focus on using an AIA proceeding to extort money, from any party willing to pay, and at the expense of the adversarial nature of AIA proceedings. Despite being given the opportunity, OpenSky failed to offer a verifiable, legitimate basis for filing its IPR Petition, which was filed only after a district court awarded large monetary damages keyed to the subject ’759 patent. And the Petition it filed was not generated by OpenSky, but was a copy of Intel’s earlier petition, filed without engaging Intel’s expert or confirming his opinions or willingness to participate. Further, after filing the Petition, OpenSky did not conduct itself in a manner consistent with the AIA’s purpose of exploring patentability issues. OpenSky’s post-institution activity was dominated by attempts to extract money from either Intel or VLSI instead of engaging with the patentability merits.
Seeking an AIA trial for the primary purpose of extorting money, while being willing to forego or sabotage the adversarial process, does not comport with the purpose and legitimate goals of the AIA and is an abuse of process. Opportunistic uses of AIA proceedings harm the IPR process, patent owners, the Office, and the public. Naples, 2; USIJ, 4.16 To safeguard the proper functioning of the patent system, and the confidence therein, it is incumbent on me and the USPTO to protect against that harm.
OpenSky raises issues about the use of the post-grant reviews where the system is used to extract money from parties. In more conventional proceedings, it is a reminder that “copycat petitions” may be used, but should not be filed without enlisting the support of any witness providing testimony so as to ensure that the witness will be available if needed to testify.