Patent Quality Assurance, LLC v. VLSI Technology LLC

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Director PTABDecision Review@uspto. gov Paper No. 102
571-272-7822 Date: December 22, 2022

. Patent Trial and Appeal Board
H PRECEDENTIAL

Designated: 12/22/22

PUBLIC VERSION
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE
FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED
STATES PATENT AND TRADEMARK OFFICE

PATENT QUALITY ASSURANCE, LLC,
INTEL CORPORATION,
Petitioners,

V.

VLSI TECHNOLOGY LLC,
Patent Owner.

IPR2021-01229!
Patent 7,523,373 B2

Before KATHERINE K. VIDAL, Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office.

DECISION
Determining Abuse of Process, Issuing Sanctions,
Ordering Petitioner Patent Quality Assurance, LLC to Show Cause, and
Lifting Stay

' Intel Corporation (“Intel”), which filed a Petition in IPR2022-00479, has
been joined as a party to this proceeding. Paper 30.

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I. 	INTRODUCTION
On January 26, 2022, the Patent Trial and Appeal Board (“PTAB” or
“Board”) issued a Decision granting institution of an inter partes review
(“IPR”) of claims 1–16 (“challenged claims”) of U.S. Patent No. 7,523,373
B2 (“the ’373 patent”), based on a Petition filed by Patent Quality
Assurance, LLC (“PQA”). Paper 10 (“Institution Decision”). VLSI
Technology LLC (“VLSI” or “Patent Owner”) subsequently filed a
rehearing request and a request for Precedential Opinion Panel (“POP”)
review. See Paper 13 (“Req. Reh’g”); Ex. 3001. On June 6, 2022, the Board
joined Intel as a Petitioner in this case. Paper 30. I initiated Director review
of the Board’s Institution Decision on June 7, 2022. Paper 31. Concurrent
with my Order, the POP dismissed the rehearing and POP review requests.
Paper 32.
I explained that Director review would address questions of first
impression as to what actions the Director, and by delegation the Board,
should consider when addressing allegations of abuse of process or conduct
that otherwise thwarts the goals of the United States Patent and Trademark
Office (“USPTO” or “Office”) and/or the America Invents Act (“AIA”).
Paper 35, 7. Due to the importance of the issues to the Office in fulfilling its
mission, I ordered the parties to respond to interrogatories and to exchange
information (“Mandated Discovery”) to assist me in evaluating these
questions of first impression. 	Id. at 8–11; see also Paper 37.
For the reasons discussed in more detail below, I determine that PQA
has engaged in discovery misconduct by failing to comply with my Order

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for interrogatories and Mandated Discovery. See Paper 35, 8‒11. Failure to
comply with an order is sanctionable. 37 C.F.R. § 42.12(a)(1).
Accordingly, when analyzing whether PQA’s conduct amounted to an abuse
of process, I apply a negative inference and hold facts to have been
established adverse to PQA. See 37 C.F.R. § 42.12(b)(1) (providing that
sanctions may include “[a]n order holding facts to have been established in
the proceeding”); Paper 35, 10 (“Any attempt to withhold evidence based on
a narrow interpretation of the requests will be reviewed in conjunction with
any other subject conduct and may, alone or in combination with other
conduct, be sanctionable.”); Paper 39, 3–4 (“As highlighted in the
Scheduling Order, failure to comply with my Order may be sanctionable. . . .
For example, and without limitation, sanctions may include ‘[a]n order
holding facts to have been established in the proceeding.’”).
Based on the evidence of record, and the facts held to have been
established, I determine that PQA, through its counsel, abused the IPR
process including by advancing a misleading argument and a
misrepresentation of fact by representing, in its Petition, that it had
exclusively engaged Dr. Singh, a witness relied on by another party,
OpenSky Industries, LLC (“OpenSky”), in a parallel proceeding,2 and which
representation it later qualified as not being an exclusive engagement. See
2 OpenSky filed a Petition for inter partes review challenging claims 1–3, 5,
6, 9–11, and 13 of the ’373 patent in IPR2021-01056. IPR2021-01056,
Paper 2. On December 23, 2021, the Board denied OpenSky’s petition
challenging the claims of the ’373 patent. IPR2021-01056, Paper 18. See
below, section II.B.

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Woods Servs., Inc. v. Disability Advocs., Inc., 342 F. Supp. 3d 592, 606
(E.D. Pa. 2018) (“The essence of an abuse of process claim is that
proceedings are used for a purpose not intended by the law.”). In addition, I
determine that PQA abused the IPR process by filing this IPR, and
threatening to file another IPR petition seeking to join a related, instituted
IPR by OpenSky, in an attempt to extract payment from VLSI. Though the
behavior here may not be as egregious as that of OpenSky (see IPR2021-
01064, Paper 102), based on adverse inferences drawn because PQA did not
comply with my order for discovery, I find that PQA’s behavior,
nonetheless, amounts to an abuse of process. PQA’s behavior in this
proceeding, as inferred by the adverse inference, is entirely distinguishable
from conventional settlement negotiations that take place in an adversarial
proceeding. Each aspect of PQA’s conduct—discovery misconduct,
violation of an express order, abuse of the IPR process, advancing a
misleading argument, and a misrepresenting of fact—taken alone,
constitutes sanctionable conduct. 37 C.F.R. § 42.12(a)(1)–(3), (6). Taken
together, the behavior warrants sanctions. Not only are the sanctions
imposed proportional to PQA’s improper conduct here, but they are
necessary to deter such conduct by PQA and others in the future. See 37
C.F.R. § 42.11(d)(4).

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Given PQA’s conduct, I dismiss PQA from this proceeding, subject to
the Director, Board, and USPTO retaining jurisdiction over the issuance of
sanctions. See 37 C.F.R. § 42.12(b)(6), (8).3
I also order PQA to show cause as to why it should not be ordered to
pay compensatory damages to VLSI, including attorney fees, to compensate
VLSI for its time and effort in this proceeding. I further order PQA to
address the appropriate time period for which any fees should be assessed.
See 37 C.F.R. § 42.12(b)(6) (providing that sanctions include “[a]n order
providing for compensatory expenses, including attorney fees”). As set
forth below, I order briefing from PQA and VLSI on this issue.
Lastly, as to the underlying proceeding, I also determine whether
PQA’s Petition, based only on the record before the Board prior to
institution, presents a compelling, meritorious challenge. I recognize that
the record in this proceeding has progressed through an oral hearing.
Nevertheless, assessing compelling merits under the particular
circumstances of this case balances competing interests. Specifically, it
balances the interests of patent owners in having reliable patent rights with
3 My dismissal of PQA at this stage is not meant to suggest that PQA’s
actions were more egregious than OpenSky’s. Instead, I initially kept
OpenSky in the OpenSky proceeding, IPR2021-01064, because the issue
before me was one of first impression and I needed additional time to
determine the appropriate course of action under such extraordinary
circumstances. Now having the benefit of considering that case and this
one, I conclude that the best course is to dismiss both PQA and OpenSky
from each respective proceeding. Accordingly, contemporaneously with this
order, I am also issuing an order dismissing OpenSky from the OpenSky
proceeding.

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the interests of the public in canceling unpatentable patent claims as needed,
clearing the path for future innovation, and removing the tax on society
caused by the litigation and licensing of clearly invalid patent claims.
I have reviewed the record before the Board prior to institution in this
case. For the reasons articulated below, I find that the Petition meets the
compelling merits standard as of the time of institution and on the record as
it existed at that time. I therefore lift the stay in the underlying proceeding
and permit this IPR to continue. I want to ensure any final decision after a
trial in this proceeding benefits from our adversarial system, and that, should
I take the Final Written Decision in this matter on Director Review, I will
benefit from briefing on both sides of any issue I may consider at that time.
With this in mind, and because compelling merits at the institution stage
exist, I will not dismiss Intel from this proceeding.4 See Penson v. Ohio, 488
U.S. 75, 84 (1988) (“truth—as well as fairness—is best discovered by
powerful statements on both sides of the question” (internal quotation
omitted)).
II. 	BACKGROUND
The dispute over the challenged patent has a long and complex
history, starting with VLSI’s complaint against Intel for infringing the ’373
patent, filed in the Waco Division of the United States District Court for the
Western District of Texas on April 11, 2019. VLSI Tech. LLC v. Intel Corp.,
Case No. 1-19-cv-00254-ADA (consolidated as 1-19-cv-00977) (W.D.
Tex.).
4 Nor did Intel engage in the same discovery malfeasance as PQA.

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A. 	Intel’s Prior Petitions and Litigation
After being sued by VLSI, Intel filed a petition for IPR, challenging
claims of the ’373 patent. IPR2020-00158, Paper 3. Considering the factors
set forth in the Board’s precedential decision in Apple Inc. v. Fintiv, Inc.,
IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv
factors”), the Board exercised discretion to deny institution of the
proceeding. IPR2020-00158, Paper 16, 14. In particular, the Board
highlighted “the advanced stage of the Western District of Texas litigation, a
currently scheduled trial date approximately seven months before the would-
be deadline for a final written decision, and the overlap between the issues.”
Id. The Board did not address the merits of the Petition, other than
determining “that the merits of the Petition do not outweigh the other Fintiv
factors.” Id. Notably, the Board issued this decision prior to the issuance of
the June 21, 2022, Director’s Memorandum (“Memorandum”), 5, which
clarifies that “the PTAB considers the merits of a petitioner’s challenge
when determining whether to institute a post-grant proceeding in view of
parallel district court litigation” and that “compelling, meritorious challenges
will be allowed to proceed at the PTAB even where district court litigation is
proceeding in parallel.” Memorandum at 4–5.
5 Interim Procedure for Discretionary Denials in AIA Post-Grant
Proceedings with Parallel District Court Litigation (USPTO June 21, 2022),
available at
www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_de
nials_aia_parallel_district_court_litigation_memo_20220621_.pdf.

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Intel requested POP review of the Board’s decision, which was
denied. IPR2020-00158, Papers 18 and 19. The trial in the Western District
of Texas was held in February 2021, months after the date that was
presented to the Board for the discretionary denial analysis. 	See Ex. 1042;
cf. Memorandum at 8 (“A court’s scheduled trial date [] is not by itself a
good indicator of whether the district court trial will occur before the
statutory deadline for a final written decision.”). The trial resulted in a jury
verdict finding that Intel literally, but not willfully, infringed claims 1, 5, 6,
9, and 11 of the ’373 patent. Ex. 1031, 2–4. The jury awarded VLSI $1.5
billion in damages for infringement of the ’373 patent.6 Id. at 6. Intel did
not challenge, and the jury did not consider, the validity of the claims of the
’373 patent. Intel appealed to the Federal Circuit, and that appeal is
currently pending as VLSI Technology LLC v. Intel Corporation, No. 22-
1906 (Fed. Cir. June 15, 2022). The appeal will not resolve the invalidity
issues pending before the Board.
6 The jury also found that Intel neither literally nor willfully infringed U.S.
Patent No. 7,725,759 B2 (“the ’759 patent”), but did infringe claims 14, 17,
18 and 24 of that patent under the doctrine of equivalents. Ex. 1027, 2–4.
The jury further found that Intel had not proven by clear and convincing
evidence that claims 14, 17, 18, and 24 of the ’759 patent were invalid as
anticipated. 	Id. at 5. The jury awarded VLSI $675 million in damages for
Intel’s infringement of the ’759 patent, bringing the total damages award to
$2.175 billion. Ex. 1031, 2–4. The ’759 patent is the subject of IPR2021-
01064.

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B. 	OpenSky’s Petition
PQA was not the first entity to file a petition for inter partes review of
the ’373 patent after the jury verdict was announced. One month earlier,
OpenSky filed a Petition for inter partes review challenging claims 1–3, 5,
6, 9–11, and 13 of the ’373 patent in IPR2021-01056. IPR2021-01056,
Paper 2. OpenSky copied extensively from Intel’s earlier petition.
IPR2021-01056, Ex. 2016 (redline comparison of portions of the Petition
with portions of Intel’s petition in IPR2020-00158). OpenSky further refiled
the declaration of Dr. Adit Singh prepared for Intel in IPR2020-00158,
without Dr. Singh’s knowledge and without engaging him. 	See IPR2021-
01056, Paper 2; Exs. 1002, 2037.7 OpenSky’s failure to engage Dr. Singh
proved fatal to its petition. 	See IPR2021-01056, Paper 18, 9.
On December 23, 2021, the Board denied OpenSky’s petition
challenging the claims of the ’373 patent. IPR2021-01056, Paper 18. The
Board found “no indication that [OpenSky] ever spoke to Dr. Singh or
attempted to retain him for this proceeding or secure his availability for
cross examination before filing his declaration.” Id. at 8. Instead, based on
PQA’s misrepresentations, the Board found that Dr. Singh had agreed to
work exclusively for PQA (as discussed below), and OpenSky had not
provided any factual support that Dr. Singh would be released from his
7 OpenSky also filed an identical copy of the declaration of Intel’s other
expert, Dr. Sylvia Hall-Ellis, without change. IPR2021-01056, Paper 17, 9;
IPR2021-01056, Ex. 1027. Dr. Hall-Ellis is a librarian who had proffered
testimony regarding the prior art status of certain references relied on in
Intel’s previous petitions. 	See IPR2021-01056, Ex. 1027.

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obligation to PQA so that he could be cross-examined about the content of
his declaration. Id. at 9. The Board found that OpenSky “brought forth the
testimony of an expert that [OpenSky] likely cannot produce for cross-
examination and would likely be excluded.” Id. Accordingly, the Board
concluded that OpenSky’s petition did not warrant institution. 	Id.
C. 	PQA’s Petition
On July 7, 2021, PQA filed the Petition for inter partes review in this
proceeding, challenging claims 1–16 of the ’373 patent. Paper 1 (“Petition”
or “Pet.”) 8 Like OpenSky, PQA copied extensively from Intel’s earlier
petition. Ex. 2016 (comparison of portions of the petition in this IPR with
portions of Intel’s petition in IPR2020-00158). Again like OpenSky, PQA
refiled Intel’s supporting declaration of Dr. Singh with minor changes. See
Exs. 1002, 2022.9 Unlike OpenSky, however, PQA contacted Dr. Singh
prior to filing its petition and retained Dr. Singh as an expert for this
proceeding. See Exs. 1034; 2053, 9:5–9. The terms of Dr. Singh’s
engagement agreement with PQA required that he “will not accept new
consulting engagements related to the Challenged Patent without prior
written consent.” Ex. 1034, 2 (emphasis in original). That agreement was
executed just four days after OpenSky petitioned for review of the ’373
8 Unless otherwise indicated, Papers enumerated herein refer to Papers filed
in IPR2021-01229 and “Petition” or “Pet.” refer to PQA’s Petition in
IPR2021-01229.
9 Like OpenSky, PQA filed an identical copy of the declaration of Intel’s
other expert, Dr. Hall-Ellis, without change. Paper 7, 6.

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patent, which relied on Dr. Singh’s nearly identical declaration. Id. at 3
(signed June 10, 2021).
In its Petition, PQA argued that the Board should not exercise
discretion to deny institution under 35 U.S.C. §§ 314(a) or 325(d). Pet. 2–5.
In addressing discretionary denial, PQA argued that:
the integrity of the patent system is at issue, as a jury recently
found a well-known U.S. company (Intel Corporation) liable
for infringement of the ’373 patent and awarded $1.5 billion to
Patent Owner—one of the top 5 largest infringement damage
awards. . . . Because no examiner, court, or other tribunal has
evaluated the ’373 patent’s validity in view of the grounds
presented herein, review is necessary to instill confidence in the
integrity of the patent system and to ensure that innovative U.S.
companies (and their consumers) are not unfairly taxed by
entities asserting invalid patents.
Id. at 2–3. As to OpenSky’s earlier-filed petition, PQA asserted that it
“exclusively engaged Dr. Singh and Dr. Hall-Ellis to challenge the ’373
patent. Thus, OpenSky cannot present either expert for cross-examination as
required.” Id. at 4 (emphasis in original). PQA thus argued that the Board
should not discretionarily deny its Petition in favor of OpenSky’s defective
petition. 	See id. at 5.
VLSI filed a Patent Owner Preliminary Response on October 27,
2021, explaining that this was the third inter partes review petition filed
against the ’373 patent. Paper 7, 1 (noting discretionary denial of Intel’s
petition in IPR2020-00158 and OpenSky’s then-pending petition in
IPR2021-01056). VLSI argued that this Petition should be denied, alleging
that shortly after the jury verdict, OpenSky and PQA were formed solely to

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challenge the ’373 patent with petitions that were largely copies of Intel’s
already rejected petition. 	See id. at 1–2.10 VLSI alleged that “[t]hough
inspired by OpenSky’s filing but also trailing it, PQA wasted no time in
throwing OpenSky under the bus, boasting that it, unlike OpenSky, actually
retained the very same experts Intel used and that OpenSky’s declarations
were mere hearsay.” Id. at 1–2.
In this proceeding, the Board reviewed the evidence and arguments in
the Petition, Patent Owner Preliminary Response, Preliminary Reply, and
Preliminary Sur-reply, and instituted the requested IPR on January 26, 2022.
Institution Decision 24. Specifically, the Board found that the Fintiv factors
did not weigh in favor of discretionary denial in large part because the
district court jury trial did not resolve the unpatentability issues presented in
this proceeding. Id. at 6–7. Because the Board did not reach the merits of
the prior Intel petition, the Board disagreed with VLSI’s arguments that
institution should be denied because the Petition presents the same
challenges as the prior Intel petition. 	Id. at 7–13 (relying on factors set forth
in General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-
01357, Paper 19 (Sept. 6, 2017) (precedential) (“the General Plastic”
factors)); see Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18,
5 (Aug. 23, 2022) (precedential) (“Where the first-filed petition under
factor 1 was discretionarily denied or otherwise was not evaluated on the
10 Such practice has become known as “copycat” petition practice and, to
date, has not been held to be improper. See, e.g., Best Med. Int'l, Inc. v.
Elekta Inc., 46 F.4th 1346, 1350 (Fed. Cir. 2022) (referring to “copycat”
petition accompanied by motion for joinder).

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merits, factors 1–3 only weigh in favor of discretionary denial when there
are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.
. . . ‘[R]oad-mapping’ concerns are minimized when, as in this case, a
petitioner files a later petition that raises unpatentability challenges
substantially overlapping with those in the previously-filed petition and the
later petition is not refined based on lessons learned from later
developments.”). The Board also was not persuaded that “prevailing in
litigation against one party should insulate a patent owner from challenge by
a different party based on grounds that were not resolved in the litigation.”
Id. at 7.
On February 8, 2022, VLSI sought to challenge the institution
decision, filing requests for rehearing and for POP review. In the rehearing
request, VLSI argued that “[t]he Board should not permit entities formed
after the verdict and facing no infringement threat to treat these proceedings
as leverage to extract ransom payments in exchange for withdrawing abusive
attacks.” Req. Reh’g 1, 6–8. VLSI argued that such a proceeding advances
no valid public interest and “fail[s] to weigh the overarching interests of
fairness to the parties and the integrity of the patent system.” Id. at 1–2, 9–
10.
D. 	Intel’s Motion for Joinder
Within a month of the Board instituting IPR in this proceeding, Intel
timely filed its own Petition for IPR with a Motion for Joinder to this
proceeding. Paper 30; IPR2022-00479, Papers 3 and 4. The Board joined
Intel to this proceeding on June 6, 2022, determining that Intel’s Petition
warranted institution and declining to discretionarily deny institution under

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35 U.S.C. §§ 314(a) and 325(d). Paper 30. In considering discretionary
denial, the Board determined that:
[a]lthough Petitioner has directed this Petition to the same
claims and relies on the same art as in its first petition, that the
Board did not substantively address the merits of the prior Intel
petitions, in our view, weighs against discretionary denial here.
The district-court trial that led to the denial of its initial
petitions is over and did not resolve the challenges presented
here. Allowing Petitioner the opportunity to pursue a decision
on the merits from the Board at this time—by joining PQA’s
substantially identical petition—best balances the desires to
improve patent quality and patent-system efficiency against the
potential for abuse of the review process by repeated attacks on
patents.
Id. at 9–10 (citing General Plastic, Paper 19 at 16–17). The Board correctly
identified that the statute expressly provides an exception to the one-year
time bar (set forth in 35 U.S.C. § 315(b)) for a request for joinder. 	Id. at 7,
n.7, 18 (citing 35 U.S.C. § 315(b)) (“The time limitation set forth . . . shall
not apply to a request for joinder under subsection (c)”). VLSI requested
POP review of the Board’s decision to join Intel to the proceeding, and that
request was denied. Papers 34 and 40.
On August 30, 2022, the Board authorized VLSI to file a Motion to
Terminate Intel from the proceeding, setting forth VLSI’s arguments on res
judicata. Paper 70, 2. The Board authorized Intel to file an opposition to the
motion. Id. VLSI filed the Motion to Terminate on September 29, 2022.
Paper 91. Intel filed its opposition on October 27, 2022. Paper 97. The
Motion is pending.

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E. 	Director Review
As noted above, I ordered a sua sponte Director review of the Board’s
institution decision in this proceeding on June 7, 2022. Paper 31.
Concurrent with my Order, the POP dismissed the rehearing and POP
review requests. Paper 32. Because I did not yet have all the facts before
me, I did not stay the underlying proceeding.
On July 7, 2022, I issued a Scheduling Order for the Director review.
Paper 35. The Scheduling Order defined the scope of my review, as I
determined that “this proceeding presents issues of first impression” and
“involves issues of particular importance to the Office, the United States
innovation economy, and the patent community.” Id. at 7–8. In particular, I
identified the following issues as relevant:
1. 	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 AIA; and
2. 	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.
Id. I directed the parties to address these questions and to support their
answers “in their briefing, including through new arguments and non-
declaratory evidence.” Id. at 8. I also invited amici curiae briefing. 	Id.
To enable me to address those questions in the context of this review,
my Scheduling Order also instructed the parties to answer interrogatories
and exchange certain categories of information as Mandated Discovery. Id.

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at 8–11; 35 U.S.C. § 316(a)(5) (“The Director shall prescribe regulations
setting forth standards and procedures for discovery of relevant evidence . . .
otherwise necessary in the interest of justice.”). My interrogatories ordered
the parties to address specific questions related to the “issues of particular
importance” in this review. Paper 35, 8–9.
I ordered the Mandated Discovery “to allow all parties to answer the
questions” (interrogatories) I set forth, and to give each party an opportunity
to produce evidence supporting its position. 	Id. at 9–10. The Mandated
Discovery included categories of documents relating to the formation and
business of PQA, documents and communications “relating to the filing,
settlement, or potential termination of this proceeding, or experts in this
proceeding, not already of record in the proceeding,” and “communications
with any named party relating to the filing, settlement, or potential
termination of this proceeding.” Id. My Scheduling Order warned “that
sanctions may be considered for any misrepresentation, exaggeration, or
over-statement as to the facts or law made in the parties’ briefing” (id. at 9),
and that “[a]ny attempt to withhold evidence based on a narrow
interpretation of the [discovery] requests will be reviewed in conjunction
with any other subject conduct and may, alone or in combination with other
conduct, be sanctionable.” Id. at 10.
On July 20, 2022, PQA submitted objections to the Mandated
Discovery. Ex. 3004; see also Ex. 1039 (Petitioner’s objections to
Director’s Orders, filed August 4, 2022). I address PQA’s specific
objections below. PQA also stated that it “is willing to produce responsive
third-party communications in its possession, custody, and control between

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PQA and OpenSky, VLSI, Intel, governmental entities, and Dr. Singh . . . if
the Office provides written confirmation the Office will not consider PQA’s
act of producing the Third-Party Documents as waiver of PQA’s objections
to the Order.” Ex. 3004 (emphasis omitted). PQA’s email concluded with a
listing of its preliminary objections regarding the interrogatories and
discovery required in the Scheduling Order. Id.
On July 21, 2022, I extended the deadlines for the parties to exchange
information and accordingly extended the briefing deadlines: as extended,
parties’ initial briefs and briefs of amici curiae were due on August 18,
2022,11 and the parties’ responsive briefs were due on September 1, 2022.
Paper 37, 4. In the Order granting a two-week extension, I reminded the
parties that “as set forth in the Scheduling Order, a party may lodge
legitimate, lawful grounds for withholding documents, and shall maintain a
privilege log of documents withheld.” Id.
11 Fourteen amici curiae briefs have been entered into the record of this
proceeding, from the following: American Intellectual Property Law
Association (Paper 41) (“AIPLA”); Association of Amicus Counsel
(Paper 57); Naples Roundtable (Paper 56) (“Naples”); Ramzi Khalil
Maalouf (Paper 55) (“Maalouf”); Engine Advocacy et al. (Paper 54)
(“Engine”); High Tech Inventors Alliance (Paper 53) (“HTIA”); Robert
Armitage (Paper 42); Computer and Communications Industry Association
(Paper 58) (“CCIA”); BSA | The Software Alliance (Paper 59) (“BSA”);
The Alliance of U.S. Startups et al. (Paper 60) (“USIJ”); Hon. Paul R.
Michel (Paper 61); Unified Patents et al. (Paper 62) (“Unified”); Public
Interest Patent Law Institute (Paper 63) (“PIPLI”); and Centripetal
Networks, Inc. (Paper 64) (“Centripetal”).

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On July 29, 2022, I issued a further Order addressing the scope of
Mandated Discovery. Paper 39. I reminded the parties that “they are
required to comply with the full scope of the Scheduling Order, including its
Mandated Discovery provisions now due to be exchanged by August 4,
2022,” and “failure to comply with my Order may be sanctionable.” Id. at 3.
I explained that potential sanctions may include, for example, “[a]n order
holding facts to have been established in the proceeding.” Id. at 3–4
(quoting 37 C.F.R. § 42.12). The parties were further “reminded that
legitimate, lawful grounds for withholding documents may be lodged and, if
so, the party shall maintain a privilege log of documents withheld. No
responsive document may be withheld without being included in such a
privilege log.” Id. (internal citations omitted). Thus, I provided actual
notice to the parties of specific sanctionable conduct and corresponding
potential sanctions for such conduct, in addition to the constructive notice
provided by the Office’s published regulations.
As discussed in detail below, PQA did not comply with the Mandated
Discovery as ordered. See Paper 68, 15–20.12 It produced a minimal
number of documents to the other parties and provided wholly inadequate
answers to my interrogatories. PQA produced a privilege log with 22 entries
including work product relating to communications between PQA and
Dr. Singh. Paper 43, 3; Ex. 1039, 1. In contrast, both VLSI and Intel
produced responsive documents and detailed privilege logs, as ordered.
12 Paper 68 is the nonconfidential version of VLSI’s Initial Brief in response
to the Director review order; Paper 50 is the confidential version.

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III. 	FAILURE TO COMPLY
As explained above, I initiated Director review to answer questions of
first impression related to the IPR process. Paper 35, 7. Before proceeding
to those questions, however, I must address PQA’s deficient responses to the
discovery required in my Scheduling Order.
A. 	PQA’s Objections to Mandated Discovery
The deadline for exchange of documents and communications
contemplated by my Mandated Discovery order was August 4, 2022.
Paper 34, 4. The deadline for the parties to submit briefs addressing the
Director’s interrogatories with supporting documentary evidence was
August 18, 2022. Id.; Paper 35, 8–10. The parties were repeatedly warned
that no documents may be withheld without being included in a privilege
log, and that any attempt to withhold evidence may be sanctionable.
Paper 35, 10; Paper 39, 4.
On July 20, 2022, PQA sent an email with objections to my Mandated
Discovery. Ex. 3004. I noted PQA’s objections and reminded the parties
that “they are required to comply with the full scope of the Scheduling
Order, including its Mandated Discovery provisions.” Paper 39, 3. PQA
filed more expansive objections on August 4, 2022. Ex. 1039. For the
reasons set forth below, I find their objections have no merit.
First, PQA contends that “this Director Review exceeds the Director’s
authority and violates PQA’s due process rights.” Ex. 1039, 3. Specifically,
PQA argues that the Director does not have the authority to review a panel’s
institution decision because the Supreme Court’s decision in United States v.

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Arthrex modified 35 U.S.C. § 6(c) only with respect to final Board
decisions. 	Id. (citing 141 S. Ct. 1970, 1987 (2021)). PQA’s interpretation
does not comport with the Supreme Court’s view of the Director’s authority.
For example, the Court held that “[t]he Constitution [] forbids the
enforcement of statutory restrictions on the Director that insulate the
decisions of APJs from his [or her] direction and supervision. To be clear,
the Director need not review every decision of the PTAB. What matters is
that the Director have the discretion to review decisions rendered by APJs.”
141 S. Ct. at 1988; see also id. at 1987 (“[T]his suit concerns only the
Director’s ability to supervise APJs in adjudicating petitions for inter partes
review.”). The Supreme Court thus sets forth broad discretionary power for
the Director to elect to review APJ decisions, which also includes decisions
on institution. Moreover, by statute, the Director determines whether to
institute an IPR, and has discretion whether to do so. 35 U.S.C. § 314.
Although the Director has delegated decisions on institution to the Board (37
C.F.R. § 42.4), the Director retains the power to review such decisions.
Nothing in Arthrex or the AIA suggests otherwise. See, e.g., 141 S. Ct. at
1989 (stating that “[b]ecause Congress has vested the Director with the
‘power and duties’ of the PTO, § 3(a)(1), the Director has the authority to
provide for a means of reviewing PTAB decisions. See also §§ 3(a)(2)(A),
316(a)(4).”); Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d
1382, 1385 (Fed. Cir. 2016) (“administrative agencies possess inherent
authority to reconsider their decisions, subject to certain limitations,
regardless of whether they possess explicit statutory authority to do so.”).

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Second, PQA contends that the Director’s orders are ultra vires or
otherwise prohibited because they subject PQA to undisclosed substantive
and procedural standards and procedures under the threat of sanctions, and
PQA has done nothing to warrant such action. Ex. 1039, 7–11 (citing Paper
31; Paper 35; Paper 39). The need for discovery into a potential abuse of
process is based on the particular posture of this proceeding, where Patent
Owner has argued that PQA was formed and filed its Petition only after a
significant jury verdict for infringement. 	See Paper 35, 4, 5, 9. As the
record demonstrates, PQA represented that it had “exclusively engaged” Dr.
Singh, which was the basis for the Board’s decision to deny institution in
IPR2021-01056 involving Petitioner OpenSky. See Pet. 4 (emphasis in
brief), IPR2021-01056 Paper 18, 5–9. Not only has PQA subsequently
qualified this representation to state that Dr. Singh could be engaged by
another entity with PQA’s written consent,13 the very fact that PQA entered
into that arrangement shows its intent to ensure that PQA, not OpenSky,
would benefit monetarily from any arrangement with VLSI or Intel. My
discovery orders provided PQA an opportunity to demonstrate that they had
no intention of engaging in an abuse of process. PQA chose not to provide
discovery that would allow me to resolve that question. My discovery
orders also provided clear notice of the potential consequences for failing to
13 See Paper 67, 18. The underlying engagement agreement has been of
record since the filing of Petitioner’s Reply to the Preliminary Response.
See Ex. 1034, 2 (engagement agreement).

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comply. Thus, the posture of this case warrants the sanctions stated in my
orders.
Third, PQA contends that the Order14 exceeds the Office’s statutory
and regulatory authority. Ex. 1039, 11. I addressed PQA’s arguments with
respect to 35 U.S.C. § 6(c) above. PQA further contends that the Order
exceeds the discovery permitted under 35 U.S.C. § 316(a)(5) and 37 C.F.R.
§ 42.51. See id. at 11. PQA’s argument on this point is not persuasive. 35
U.S.C. § 316(a)(5) provides that discovery may be sought where “necessary
in the interest of justice,” which is at the heart of the inquiry as to whether
PQA has abused the IPR process. And although 37 C.F.R. § 42.51 explicitly
enumerates certain default categories of “limited” discovery, it also makes
clear that “the Board may otherwise order” additional discovery when such
discovery is “in the interest of justice,” as it is here. Furthermore, in general,
it is within my purview to “determine a proper course of conduct in a
proceeding for any situation not specifically covered by [the other
regulations]” and to “enter non-final orders,” such as the Scheduling Order,
“to administer the proceeding.” 37 C.F.R. § 42.5(a).
Fourth, PQA argues that the Scheduling Order is inconsistent with
Board procedures governing non-routine discovery. Ex. 1039, 11–15. For
example, PQA contends that there is no evidence “tending to show beyond
speculation that in fact something useful will be uncovered.” Id. at 12
(quoting Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001
(PTAB Mar. 5, 2013) (Paper 26) (precedential)). Again, while Board
14 PQA appears to be referring to Paper 35. See Ex. 1039, 1.

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procedures governing party conduct do not formally apply to my inquiry into
process abuses, my Scheduling Order makes clear the basis for the ordered
discovery here. The Scheduling Order explains that the discovery would
permit the parties to answer the questions I identified as germane to my
inquiry into the circumstances surrounding PQA’s formation and conduct—
information that is uniquely in the parties’ (and specifically PQA’s)
possession. Paper 35, 7–10; 37 C.F.R. § 42.11(a) (“Parties and
individuals involved in the proceeding have a duty of candor and good faith
to the Office during the course of a proceeding.”).
PQA’s argument that the Order is not “easily understandable” is also
not persuasive. Ex. 1039, 13. No other party indicated that they had any
issue understanding the Order, nor did they have issues complying. PQA’s
argument that the discovery is overly burdensome (Ex. 1039, 13–14) fares
no better—PQA could have sought to file a motion to revise the standing
protective order “[f]orbidding . . . or [s]pecifying terms . . . for the disclosure
or discovery” to alleviate that burden (37 C.F.R. § 42.54(a)(1)), or at least
have requested a second extension if it could demonstrate an actual burden,
but instead chose noncompliance.
PQA briefly argues that the Order violates its members’ constitutional
rights by compelling PQA members to disclose their identities without
evidence of wrongdoing or inaccurate mandatory notices. Ex. 1039, 15.
PQA does not explain how complying with a discovery order results in a
constitutional violation. Further, by choosing to file this IPR, PQA availed
itself of my and the Board’s jurisdiction and opened itself to questions
regarding its members and purpose, among others.

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PQA ends its objections with a series of similarly unpersuasive
arguments. PQA suggests that the Order is inconsistent with the purposes of
the AIA. Ex. 1039, 5–6. PQA also asserts that the Order contravenes
congressional intent for “discovery in inter partes review proceedings to be
limited in [both] scope and expense.” Id. at 15. However, PQA fails to
acknowledge that, along with the goal of improving quality, “Congress
recognized the importance of protecting patent owners from patent
challengers who could use the new administrative review procedures as
‘tools for harassment.’” WesternGeco LLC v. ION Geophysical Corp., 889
F.3d 1308, 1317 (Fed. Cir. 2018) (citing H. Rep. No. 112–98, at 48 (2011)).
The Order sets forth discovery for this very purpose, to identify and address
potential harassment in this proceeding.
PQA’s argument that the Order is inconsistent with the guidelines for
Director review rests on its contention that “the Order does not identify any
issue of first impression.” Ex. 1039, 16. PQA provides no citation for the
claim that Director review is limited to issues of first impression. In any
event, my Order indicated that the issues here are ones of first impression.
Id. Finally, PQA contends that the Order would require it to waive privilege
objections by disclosing privileged documents to a federal agency (id. at 17)
(citing In re Qwest Commc’ns Int’l Inc., 450 F.3d 1179, 1186 (10th Cir.
2006)), but avoiding such waiver while still proving sufficient indicia to test
that privilege claim is the point of a fulsome privilege log, which PQA failed
to submit.

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B. 	PQA’s Failure to Comply with Mandatory Discovery and
Interrogatories
PQA failed to comply with the discovery requirements set forth in the
Scheduling Order by: (1) refusing to provide internal documents to the other
parties in the proceeding, or instead, a privilege log listing privileged
documents withheld for in camera review;15 and (2) failing to respond in
good faith to the interrogatories, with adequate evidence. Paper 35, 8–10.
Each of these failures to comply is independently sanctionable. Id. at 9–10.
1. 	PQA refused to produce confidential documents under seal, or a
privilege log of internal documents that were not produced
As explained above, the deadline for the exchange of documents and
communications was August 4, 2022. On August 11, 2022, VLSI requested
in camera review, as to the production made by PQA. Paper 43. VLSI
asserts that it:
cannot identify with specificity documents for in camera review
as to the responsive documents . . . because PQA has (i) failed
to produce internal documents; and (ii) failed to provide a
meaningful privilege log, instead providing only a very limited
work product redaction log in this matter, each in violation of
the Director’s Orders (see Papers 35, 37 and 39).
Id. at 1. VLSI asserts that “PQA produced 111 documents and a ‘privilege
log’ consisting of only 22 entries. The first 21 entries correspond to
redacted email chains between PQA and its technical expert, Dr. Adit Singh,
and identify the basis for those redactions as ‘work product protection,’ but
15 PQA did log work product relating to its communications between PQA
and Dr. Singh. Ex. 1039, 1.

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not attorney-client privilege.” 	Id. at 3 (internal footnote omitted). VLSI
contends that “PQA’s August 4, 2022 log identifies no documents withheld
for attorney-client privilege,” and instead, PQA acknowledges that it has not
logged any communications between PQA and its attorneys. Id. at 4. VLSI
argues that “despite the fact that the Director has expressly found that PQA’s
objections are not a basis upon which to withhold documents or to not log,
PQA has chosen to stand on its objections and withheld documents and a
privilege log in violation of the Director’s express Orders.” Id. at 5–6 (citing
Ex. 1039).
On August 18, 2022, PQA filed its initial brief in response to the
Director review order. Paper 67.16
In its responsive brief, filed September 1, 2022, PQA asserts that it
produced responsive documents, and that it has not willfully violated any
order. Paper 77, 15–16. Instead, PQA asserts that VLSI violated my Orders
because “VLSI did not produce or log any (i) internal communications of
VLSI, Fortress Investment Group, and/or other VLSI affiliates, or
(ii) communications solely among VLSI’s outside or in-house counsel.” Id.
at 16. PQA further asserts that “VLSI’s allegations of non-compliance
during the Director review are actions that occurred well after institution and
thus do not impact the Institution Decision in this proceeding.” Id. at 17
(emphasis omitted). None of these arguments justify PQA’s failure to
comply.
16 Paper 67 is the nonconfidential version of PQA’s Initial Brief in response
to the Director review order; Paper 51 is the confidential version.

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PQA appears to admit that it did not produce or log any internal
communications when it asserts that PQA and VLSI did the exact same
thing. Paper 71, 15–16 (“VLSI did the exact same thing. VLSI only logged
communications between VLSI in-house attorneys and outside
counsel. VLSI did not produce or log any . . . internal communications . . .”)
(emphasis omitted)). Having overruled PQA’s objections to discovery, I
find that PQA did not comply with the Mandated Discovery, as required by
the Scheduling Order. See Paper 35, 9–10.17
2. 	PQA’s responses to the interrogatories are inadequate and lack
evidentiary support
In addition to its express refusal to comply with the Mandated
Discovery, PQA failed to respond adequately to the interrogatories set forth
in the Scheduling Order, which required the parties to respond with citation
to supporting documentary evidence. Paper 35, 8. PQA’s initial brief
purports to address the interrogatories listed in the Scheduling Order but
fails to do so adequately. Paper 67, 8–18. For instance, PQA refers to a
declaration of Joseph A. Uradnik, Ex. 1032, which was already of record.
See id. As a result, many of the interrogatories remain unanswered or
unsubstantiated by PQA.
For example, interrogatory (a) asked, among other things, for what
purpose PQA was formed, what its business is, and who its members are?
Paper 35, 8. To answer these questions, the Scheduling Order required PQA
to provide the other parties with materials including communications related
17 I do not rule on the adequacy of VLSI’s discovery compliance at this time.

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to the formation of PQA and documents related to its business plan. 	Id. at 9.
PQA responds by stating that the “initial authorized business of PQA is to
challenge patent(s) to ensure patent quality.” Paper 67, 8. PQA refuses to
discloses its members by stating that “PQA’s members are United States
citizens, none of whom are employed by, work for, or are affiliated with
Intel, OpenSky, or VLSI.” Id. (citing Ex. 1032 ¶ 6). PQA states that “[n]o
other persons or entities beyond PQA’s members have an interest in PQA,
its future revenues, profits, or obligations, or any of its activities including
this proceeding.” Id. at 8–9 (citing Ex. 1032 ¶¶ 4, 5, 7–11).
This answer is not responsive. As an initial matter, this answer only
makes an assertion as to who its members are not; it does not identify the
members of PQA. See Paper 35, 8 (“Who are members of PQA?”). In
addition, PQA does not answer the interrogatory seeking the purpose for
which PQA was formed, nor does PQA provide any required supporting
evidence that would allow me, VLSI, or Intel to verify that PQA’s business
interest is limited to ensuring patent quality. 	See Paper 46, 10–11; Paper 68,
2–5.
Interrogatory (b) asked, “[o]ther than communications already in the
record, what communications have taken place between PQA and each of
the other parties?” Paper 35, 8. To answer this question, the Scheduling
Order required PQA to provide the other parties with “all documents and
communications relating to the filing, settlement, or potential termination of
this proceeding, or experts in this proceeding, not already of record.” Id. at
9.

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PQA reports that after it filed its Petition, “VLSI contacted PQA to
discuss settlement,” and PQA declined. Paper 67, 6. PQA also explains that
VLSI contacted PQA again, after the Board instituted this proceeding. 	Id. at
7. PQA states that
. Paper 51, 9. PQA
further reports that “[t]he parties did not agree to settlement before
institution, and they have not discussed settlement since then.” Id. at 7; see
also id. at 9 (responding to the interrogatory by, in part, referring to these
communications).
PQA also states that since Intel’s joinder as a petitioner on June 6,
2022, PQA and Intel have had a common interest and have cooperated in the
prosecution of the merits of the unpatentability of the ’373 patent, which is
not part of the Director review, and that PQA has no other formal or
informal relationship with Intel. 	Id. at 10.
PQA thus does not explain sufficiently the nature of its
communications with VLSI in PQA’s opening brief.18 In its responsive
brief, PQA goes into some further detail. Paper 77, 4–7; see also Paper 71
(confidential version), 4–7 (citing Exs. 2065 and 	. In particular,
18 According to VLSI, in the privilege log that PQA submitted to VLSI,
“[t]he last entry lists several communications that appear to correspond to
communications between PQA and VLSI that the log states are withheld
based on only PQA’s “objections,” not privilege or work product protection,
and that PQA’s email to the Board sent along with the August 4 production
states “are documents VLSI has in its own possession.” Paper 43, 3 n.1
(citing Ex. 3015).

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I find PQA’s responses deficient and misleading. For example, _
PQA’s

briefing also was not fully responsive to the interrogatory question about its

dealmgs with VLSI, as VLSI correctly pomts out.!° Paper 76, 1, 7—8 (citing

Further, PQA did not

mention that PQA imp ied rr

19 VLSI alleges that PQA failed to produce communications between PQA
and Intel that are logged _in a privilege log by Intel and that are not logged by
PQA. See Paper 76, 1.

Ex. 1518.

31

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See Ex. 2069 (
Interrogatory (c) asked, “[c]ould PQA be subject to claims of
infringement of the ’373 patent,” and “[d]oes PQA have a policy reason for
filing the Petition that benefits the public at large beside any reasons
articulated in the already-filed papers?” Paper 35, 8. PQA resists answering
this question by arguing that an invalid patent cannot be infringed, that it
does not wish to admit infringement, that infringement and validity are
separate questions, and that the Intel products found to infringe are used by
millions of people and businesses in the United States. Paper 67, 10–12.
PQA argues that it has served a public interest by highlighting what it
considers to be a problem with the Office’s Fintiv practice, that it has filed a
meritorious petition, and that “the public interest in the validity of a patent is
arguably at its highest when a U.S. company has been found to infringe and
is liable for one of the biggest patent verdicts in history.” Id. at 12–14.
PQA’s briefing was thus not responsive to the underlying question of
infringement, i.e., the extent to which PQA participates in the market for
products covered by the patents in question.
Interrogatory (d) asked, “[d]oes the evidence in this proceeding
demonstrate an abuse of process . . . [and] if so, which evidence and how
should that evidence be weighted and addressed?” Paper 35, 8–9. To

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answer this question, the Scheduling Order required PQA to provide the
other parties with “all communications with any named party relating to the
filing, settlement, or potential termination of this proceeding.” Id. at 9.
PQA responds that there is no abuse of process, but fails to provide
supporting evidence. Paper 67, 14. Moreover, as discussed above, PQA
intentionally omitted information
Apart from its own actions, PQA argues that the Board and Director
confirmed the merits of PQA’s petition and that a meritorious petition
should never be considered an abuse of process or contrary to the goals of
the Office. Id. at 14 and n.2. PQA also argues that this proceeding will be
the first adjudication—by any tribunal—of the validity of the ’373 patent,
that PQA and Intel confirmed through document productions there is no
hidden connection between Intel and PQA, and that PQA has vigorously
prosecuted this IPR and
which is consistent with public policy favoring settlement
negotiations. 	Id. at 14–15 (citing, e.g., Consolidated Trial Practice Guide
(Nov. 2019) at 86). PQA’s briefing was thus non-responsive to this
interrogatory question.
Interrogatory (e) asked, “[w]hat is the basis for concluding that there
are no other real parties in interest, beyond PQA,” and “[a]re there additional
people or entities that should be considered as potential real parties in
interest?” Paper 35, 8–9. To answer this question, the Scheduling Order
required PQA to provide the other parties with “all documents relating to
PQA’s business plan including its funding, its potential revenue, and the
future allocation of any of its profits.” Id. at 9. PQA’s response to this

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interrogatory essentially repeats its response to interrogatory (a) and relies
on the Declaration of Joseph A. Uradnik (Ex. 1032). See Paper 67, 15–17.
For reasons similar to those I gave regarding interrogatory (a), PQA’s
answer is not responsive to interrogatory (e) and does not provide sufficient
evidence to allow me to evaluate PQA’s answer.
Interrogatory (f) asked, “[d]id PQA ever condition any action relating
to this proceeding . . . on payment or other consideration by Patent Owner or
anyone else?” Paper 35, 9.
PQA essentially argues that it has never suggested
delaying, losing, or not participating in the proceeding and never attempted
to influence an expert not to participate in the proceeding. 	See Paper 67, 18.
PQA states that while PQA’s engagement with Dr. Singh is “exclusive,” that
provision may be waived on request. Id. (citing Ex. 1034). PQA states that
since its engagement of Dr. Singh, no party (including OpenSky) has ever
sought to engage him in connection with the ’373 patent, and thus PQA has
never declined any such request. Id.
PQA’s answer in its initial brief (Paper 67) is misleading and not fully
responsive to interrogatory (f). In particular, VLSI provides evidence that

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fo)
5
a
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BL Paper71, 4-5.

Paper 71, 9 (citing Ex.
2065, 1). It is worth noting, however, that PQA only provided this
justification after VLSI exposed the parties’ negotiation in VLSI’s
interrogatory answer. PQA could have provided this information in the first
instance (Le., in its mitial brief) in response to the interrogatory on whether
PQA ever conditioned any action relating to this proceeding on payment or
other consideration by Patent Owner or anyone else. See 37 C.F.R.
§ 42.11(a) (“Parties and individuals involved in the proceeding have a duty
of candor and good faith to the Office during the course of a proceeding.”’).
I find that PQA’s failure to mention anything of this nature in its initial brief
represents an attempt to subvert answering interrogatory (f).
C. Sanctions for POQA’s Failure to Comply
PQA has identified no authority that would allow it to ignore the
Mandated Discovery and interrogatories in my Order. Therefore, I
determine that PQA has failed to comply. I further determine that it is
35

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appropriate to sanction PQA for its discovery misconduct. See 37 C.F.R.
§ 42.12(b) (non-exhaustive list of sanctions).
The Director20 has the authority to impose sanctions against a party
for misconduct. 35 U.S.C. § 316(a); 37 C.F.R. § 42.12(a); see Apple Inc. v.
Voip-Pal.com, Inc., 976 F.3d 1316, 1323 (Fed. Cir. 2020); see also AIPLA,
9; BAS, 6–7; Unified, 3–5, 12–17; Naples, 6. Although 37 C.F.R.
§ 42.12(a) does not require the Board to impose sanctions, where, as here, a
party has clearly violated an order after being provided with clear notice of
possible sanctions for failing to comply with that order, the integrity of
practice before the Board is best served by imposing sanctions
commensurate with the sanctionable misconduct to not only punish the
offending party, but also to deter future misconduct. 	See 37 C.F.R.
§ 42.12(a) (authorizing sanctions for “misconduct”); see also id. at
§ 42.11(d)(4) (permitting sanctions to “deter repetition of the conduct or
comparable conduct by others similarly situated”).
Whether sanctions are appropriate is a highly fact-specific question,
and the relevant considerations will vary from case to case. Prior sanction
contexts have considered:
(1) whether the party has performed conduct warranting sanctions;
(2) whether that conduct has caused harm (to, for example, another
party, the proceedings, or the USPTO); and
20 The Director of the USPTO, the Deputy Director of the USPTO, the
Commissioner for Patents, the Commissioner for Trademarks, and the
Administrative Patent Judges shall constitute the PTAB. 35 U.S.C. § 6(a).
Accordingly, the Director may levy sanctions as a member of the Board.

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(3) whether the potential sanctions are proportionate to the harm.
See, e.g., R.J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V., IPR2017-
01318, Paper 16 at 5, 8 (PTAB Aug. 6, 2018). The Director may impose
sanctions, for example, for “[f]ailure to comply with an applicable rule or
order in the proceeding”; “[a]dvancing a misleading or frivolous argument
or request for relief”; “[m]isrepresentation of a fact”; “[a]buse of discovery”;
“abuse of process”; or “[a]ny other improper use of the proceeding,
including actions that harass or cause unnecessary delay or an unnecessary
increase in the cost of the proceeding.” 37 C.F.R. §§ 42.12(a)(1), (2), (3),
(5), (6), (7). Sanctions may include, for example, “[a]n order holding facts
to have been established in the proceeding”; “an order precluding a party
from filing a paper”; and “an order providing for compensatory expenses,
including attorney fees.” Id. §§ 42.12(b)(1), (2), (6). Additionally, the
Director may issue sanctions not explicitly provided in 37 C.F.R. § 42.12(b).
See Voip-Pal.com, 976 F.3d at 1323–24. Any sanction must be
commensurate with the harm caused. See R.J. Reynolds, IPR2017-01318,
Paper 16 at 5.
As a result of PQA’s failure to comply with my ordered Mandated
Discovery provisions, I, VLSI, and Intel do not have a complete record to
fully examine PQA’s assertion that it has not committed an abuse of the IPR
process. Indeed, the confidential material in this Order makes clear that
PQA has made misleading statements and affirmatively attempted to
withhold facts that, taken alone or with other facts, might establish that PQA
abused the IPR process.

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PQA should not be allowed to profit from its discovery misconduct.
Accordingly, I determine that the proper sanction is to hold disputed facts as
established against PQA. 37 C.F.R. § 42.12(b)(1); Paper 39, 3, 4 (warning
parties that “failure to comply with my Order may be sanctionable,” and
specifically warning that “without limitation, sanctions may include ‘[a]n
order holding facts to have been established in the proceeding’” under 37
C.F.R. § 42.12(b)(1)). The Federal Circuit has approved this remedy of
adverse inference in the context of district court litigation, stating that “when
‘the alleged breach of a discovery obligation is the non-production of
evidence, a district court has broad discretion in fashioning an appropriate
sanction, including the discretion to . . . proceed with a trial and give an
adverse inference instruction.’” Regeneron Pharms., Inc. v. Merus N.V., 864
F.3d 1343, 1363 (Fed. Cir. 2017) (quoting Residential Funding Corp. v.
DeGeorge Fin. Corp., 306 F.3d 99, 107 (2d Cir. 2002)).
In view of the record as discussed above, including PQA’s response to
interrogatories (a)–(f), I find that PQA was not only non-responsive to my
interrogatories but that PQA was evasive in its responses and engaged in
troublesome conduct. I further apply adverse inferences in my decisions on
abuse of process below.
IV. 	ABUSE OF PROCESS AND OTHER SANCTIONABLE
CONDUCT
I initiated Director review in this proceeding to examine and address
VLSI’s allegations of abuse of process by PQA. See Paper 31; Paper 35, 8.
Under existing Office regulations, an abuse of process is sanctionable (i.e., it

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is “conduct that warrants sanctions”). 37 C.F.R. § 42.12(a)(6). Abuse of
process is a fact-based inquiry, and existing regulations do not attempt to
specify what acts constitute an abuse of process. Accordingly, I consider
PQA’s conduct to determine whether it demonstrates an abuse of process or
conduct that otherwise thwarts, as opposed to advances, the goals of the
Office and/or the AIA.
A. 	Background Principles
Congress created the AIA to support the “important congressional
objective” of “giving the Patent Office significant power to revisit and revise
earlier patent grants,” among other objectives. Cuozzo Speed Techs., LLC v.
Lee, 579 U.S. 261, 272 (2016). Congress did not implement a standing
requirement for petitioners; any party (other than the patentee) may seek
such review. 35 U.S.C. § 311(a). AIA post-grant proceedings, and more
specifically, the IPR proceedings at issue here, do not exist in isolation but
are part of a larger patent and innovation ecosystem. Congress intended
AIA proceedings to be a less-expensive alternative to district court litigation
to resolve certain patentability issues. AIA proceedings were not, however,
intended to replace patent litigation, which remains a vital forum for
determining patent validity. Nor were they intended to be tools of patent
owner harassment. Congress expressed the intent of the AIA in the statute
when it directed the Director, when prescribing regulations, to “consider . . .
the economy, the integrity of the patent system, the efficient administration
of the Office, and the ability of the Office to timely complete proceedings.”
35 U.S.C. § 316(b). I consider this mandate not just when promulgating
regulations, but in administering the AIA through guidance and decision-

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making. Abuse of AIA proceedings undermines these important objectives,
and the Office will not tolerate it.
PQA points to an argument from an amicus that abuse of process
cannot arise from the filing of a petition and can only refer to conduct that
arises after litigation, relying in part on the second Restatement of Torts.
See Paper 77, 23 (citing Paper 55, 5; Restatement (Second) Torts § 682). I
disagree. The Restatement indicates that even a properly initiated
proceeding may be abused, and further indicates that it is an abuse of
process to initiate a proceeding for a purpose other than that for which it was
intended. Id.;21 see also Fed. R. Civ. P. 11. Further, as discussed below, the
sanctions I impose in this proceeding are based on the sanctions in 37 C.F.R.
§ 42.12 and are not part of a suit sounding in tort for an abuse of process.
21 The Restatement states:
The gravamen of the misconduct for which the liability stated
in this Section is imposed is not the wrongful procurement of
legal process or the wrongful initiation of criminal or civil
proceedings; it is the misuse of process, no matter how properly
obtained, for any purpose other than that which it was designed
to accomplish.
…
For abuse of process to occur there must be use of the process
for an immediate purpose other than that for which it was
designed and intended. The usual case of abuse of process is
one of some form of extortion, using the process to put pressure
upon the other to compel him to pay a different debt or to take
some other action or refrain from it.
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PQA also argues, consistent with the Noerr-Pennington doctrine and
the First Amendment, that PQA’s intent or purpose in filing a meritorious
petition is legally irrelevant. Paper 67, 22–23 (citing Nader v. The
Democratic Nat. Comm., 555 F. Supp. 2d 137, 156–57 (D.D.C. 2008);
Razorback Ready Mix Concrete Co., Inc. v. Weaver, 761 F. 2d 484, 487 (8th
Cir. 1985)). VLSI argues that the Noerr-Pennington doctrine protects
against liability, but it does not shield litigants from sanctions. Paper 74, 23
(citing BE & K Const. Co. v. N.L.R.B., 536 U.S. 516, 537 (2002)). Intel
argues that “[a]dopting VLSI’s new intent-based requirement also would
conflict with Supreme Court precedent holding that “‘an objectively
reasonable effort to litigate cannot be [a] sham regardless of subjective
intent.’” Paper 78, 5–6 n.3 (quoting Professional Real Estate Investors, Inc.
v. Columbia Pictures Indus., Inc., 508 U.S. 49, 57 (1993); citing Paper 58,
5–6 (amicus CCIA: “[S]anctions are inappropriate—and barred by the First
Amendment—with respect to the filing of a meritorious petition.”)).
Here, sanctions are based on the authority granted to the Board after
notice and comment rulemaking and are not part of a suit sounding in tort
for an abuse of process. I consider sanctions here in the context of
determining whether the IPR process itself is being abused, which involves
evaluating the totality of evidence including, but not limited to, the
circumstances surrounding the initial filing of the petition. Moreover, even
putting aside PQA’s act of filing an IPR petition, PQA’s other conduct
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B. 	PQA’s Conduct
The following summary is based on evidence provided by VLSI,
which I hold as established facts in the absence of contrary evidence from
PQA. See Residential Funding Corp., 306 F.3d at 106 (“[I]f a party fails to
obey a discovery order, the court ‘may make such orders in regard to the
failure as are just,’ including, but not limited to, ‘[a]n order that . . .
designated facts shall be taken as established for the purposes of the action
in accordance with the claim of the party obtaining the order.’” (quoting
Fed. R. Civ. P. 37(b)(2)(A))). “Even the mere failure, without more, to
produce evidence that naturally would have elucidated a fact at issue permits
an inference that” the evidence would have exposed facts unfavorable to the
non-disclosing party. Vodusek v. Bayliner Marine Corp., 71 F.3d 148, 156
(4th Cir. 1995).
While PQA’s Petition stressed that review was necessary to instill
confidence in “the integrity of the patent system” and to ensure that
innovative U.S. companies (and their consumers) are not unfairly taxed by
entities asserting invalid patents (Pet. 2–3), its subsequent conduct called
that objective into question.
A month after PQA filed its Petition, VLSI contacted PQA to discuss
the IPR proceeding, but PQA declined to engage in talks at that time. See
Paper 68, 5. PQA states that it discussed settlement only at VLSI’s behest.
Paper 77, 1.

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VLSI additionally alleges, and I find, that during this period, |

Paper 50, 6 (citing, e.g., Exs. 2067, 2075,

2076). Also,

. Id. Inthe absence of an interrogatory

response fom PQA with espe

VLSI also alleges, and I find, that
Paper 74, 8. VLSI bases

its allegation on the following email from PQA:

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Id. at 7-8 (citing Ex. 2069; Ex. 2076). I find VLSI’s allegation to be

supported by the email it provided. See Ex. 2069 (

It is undisputed that PQA has not accepted any settlement agreement
and the parties have not settled. See id. at 8.

Also, as discussed above, PQA represented in its Petition that it had
“exclusively engaged” Dr. Singh (Pet. 4) (emphasis in brief), which was the
basis for the Board’s decision to deny institution in IPR2021-01056
involving Petitioner OpenSky. See IPR2021-01056, Paper 18, 5—9. PQA
later attempted to qualify this representation. Compare Pet. 4 (“In contrast,
Petitioner exclusively engaged Dr. Singh and Dr. Hall-Ellis to challenge the
°373 patent. Thus, OpenSky cannot present either expert for cross-
examination as required.”), with Paper 67, 18 (“Similarly, while PQA’s
engagement with Dr. Singh is ‘exclusive,’ that provision may be waived on
request.” Ex. 1034.) Had PQA not made that false representation, OpenSky

may have sought permission to engage the experts. Further, there is no

44

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evidence explaining why PQA retained the ability to prohibit Dr. Singh from
working for other parties, including OpenSky. A reasonable and adverse
inference would be that PQA did not believe review of the ’373 patent was
necessary to instill confidence in “the integrity of the patent system” and to
ensure that innovative U.S. companies (and their consumers) are not unfairly
taxed by entities asserting invalid patents (Pet. 2–3) but instead sought to
benefit monetarily from the petition by working to have OpenSky’s petition
denied so the PQA petition would be instituted.
I will analyze PQA’s conduct in more detail in the following section.
C. 	Case-specific Considerations
1. 	Petitioner’s interest in the proceeding
I am mindful that Congress did not itself include a standing
requirement for IPRs. See Cuozzo, 579 U.S. at 279 (“Parties that initiate
[IPRs] need not have a concrete stake in the outcome; indeed, they may lack
constitutional standing.”); Paper 77, 22; see also Engine, 13–14 (“Congress
created IPR so that any ‘person who is not the owner of a patent’ may file an
IPR petition . . . It would be improper for the PTO to supplant that choice.”)
(citations omitted). Instead, Congress left it to the USPTO to prescribe
regulations, to “consider . . . the economy, the integrity of the patent system,
the efficient administration of the Office, and the ability of the Office to
timely complete proceedings . . . .” 35 U.S.C. § 316(b).
The Office has repeatedly instituted IPRs where the petitioner has not
been sued for infringement. 	See, e.g., Athena Automation Ltd., v. Husky
Injection Molding Systems Ltd., IPR2013-00290, Paper 18, 12–13 (PTAB
Oct. 25, 2013) (precedential) (declining to deny a petition based on assignor

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estoppel); Fresenius Kabi USA, LLC v. Chugai Seiyaku Kabushiki Kaisha,
Inc., IPR2021-01336, Paper 27, 48 (PTAB Feb. 23, 2022). In practice,
however, there is commonly a high degree of interplay between IPR
petitions/trials and Article III patent litigation. 	See, e.g., The Patent and
Trial Appeal Board: Examining Proposals to Address Predictability,
Certainty, and Fairness, Hearing Before the S. Comm. on Intellectual Prop.,
117th Cong. at 1:14:27-1:14:37 (June 22, 2022) (testimony of Tim Wilson,
Head of Patents and Intellectual Property Litigation, SAS Institute, Inc.,
stating that IPR petitions are typically filed in response to a patent
infringement lawsuit).
Barring evidence to the contrary, there is little need to question the
motives of a party sued for infringement. However, where a petitioner has
not been sued for infringement, and is a non-practicing entity, legitimate
questions may exist regarding whether the petitioner filed the petition for an
improper purpose or one that does not advance the goals of the AIA or this
Office. For example, an amicus identifies a concern with petitioners who
file “petitions, filed for the primary purpose of obtaining a cash settlement”
from patent owners in order to settle and terminate the proceeding. See
Naples, 2. Not only would such a purpose not advance legitimate goals, but
the PTAB proceedings under the AIA are not intended to be a tool for patent
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To be clear, there is nothing per se improper22 about a petitioner who
is not a patent infringement defendant filing an IPR petition. For example,
there may be circumstances in which a petitioner has not yet been sued, but
believes it may be, or otherwise wants to make sure it has the freedom to
operate. Alternatively, there may be circumstances in which a petitioner is
planning to enter the field of technology that the patent protects and is trying
to clear entry barriers or otherwise clarify whether they have freedom to
operate. See Engine, 10–11. Or a petitioner may act on behalf of the public
without having any research or commercial activities involving the
challenged patent. See Consumer Watchdog v. Wisconsin Alumni Rsch.
Found., 753 F.3d 1258, 1260 (Fed. Cir. 2014).
Although it is not per se improper for a person not charged with
infringement to file an IPR petition, the posture of a petitioner, in
conjunction with other surrounding circumstances, could raise legitimate
questions about whether the petition is reasonably designed to advance the
beneficial aims of the AIA or this Office and whether, in addition, the filing
amounts to an abuse of process.
So it is here. PQA has not been sued for infringing the ’373 patent.
See Pet. 75. When I asked whether PQA could be sued for infringement,
PQA objected to the question and resisted answering, as detailed above. See
supra § III.B.2; Paper 35, 8; Paper 67, 10–14. PQA has thus neither
22 I address here only what conduct is improper and do not suggest that all
conduct that is not improper warrants institution. Such decisions are better
suited for guidelines and notice-and-comment rulemaking.

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admitted that it infringes nor alleged that it does not infringe, despite my
Order providing it an opportunity to do so, and has not substantiated its
argument either way. PQA has stated that Intel has customers that might,
arguably, infringe (but without stating whether it is one of Intel’s
customers), and PQA has not explained whether it is in the marketplace for
products covered by the ’373 patent. The lack of evidence on this point is
directly attributable to PQA’s failure to follow my Order and I draw
negative inferences from that failure. 	See Residential Funding Corp., 306
F.3d at 110 (finding that intentional acts that hinder discovery support an
inference that the evidence was harmful to the non-producing party).
Accordingly, I find the fact established that PQA does not believe that it
may be sued for patent infringement in the future, and that fear of
infringement did not motivate PQA to file its Petition.
PQA maintains that its interest is in the integrity of the patent system.
Pet. 2–3. The record (and additional factors discussed below) belie that
representation. Indeed, I ordered PQA to produce documentation and
answer interrogatories related to its business purpose and membership, and it
has not done so. In its briefing, PQA responds by stating that its “initial
authorized business . . . is to challenge patent(s) to ensure patent quality,”
but PQA refuses to discloses its members, despite my Order to do so. Paper
67, 8. Again, the lack of evidence of PQA’s business purpose and
membership is due to PQA’s discovery misconduct and, therefore, I find the
fact established that PQA did not file this case for its alleged purpose of
testing patent quality or preserving the integrity of the patent system.
Further, if PQA’s sole motivation were to challenge the validity of the ’373

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patent, it would not have represented that it had “exclusively engaged” Dr.
Singh and stated that “[t]hus, OpenSky cannot present either expert for
cross-examination as required.” Pet. 4 (citing 37 C.F.R. 42.51(b)(1))
(emphasis in brief). To the contrary, a purpose of preserving the integrity of
the patent system would have motivated PQA to make Dr. Singh available to
any other party challenging the ’373 patent. As noted above, this was the
basis for the Board’s decision to deny institution to Petitioner OpenSky in
IPR2021-01056. See IPR2021-01056, Paper 18, 5–9. Indeed, based on the
record and adverse inferences, I find that the sole reason PQA filed the
Petition was for the improper purpose of extracting money from VLSI after
VLSI’s success before the jury.
2. 	Recent trial verdict awarding significant damages
The mere existence of a trial verdict (whether by jury or from the
bench) does not automatically make the filing of a subsequent IPR on the
involved patent(s) an abuse of process. Indeed, patents are often asserted,
either in demand letters or in litigation, against multiple entities in serial
fashion. Both those entities subject to current or future assertions, or
potential assertions, and the public, have a vested interest in canceling
invalid patents.
That said, an entity filing an IPR on the heels of a large jury verdict
may, when combined with other facts, raise legitimate questions regarding
the motivation behind the petition. 	See USIJ, 15–16 (discussing petitions
filed after infringement verdicts).
Such is the case here. As the parties and amici are well aware, a jury
in the Western District of Texas rendered a verdict of more than $2 billion

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against Intel for infringing two VLSI patents, including the ’373 patent
($1.5 billion in damages). Ex. 1031, 6. PQA filed its petition shortly after
the infringement verdict, and as noted in section IV(C)(1) of this opinion,
without any established fear that it would be subject to a subsequent
assertion. Together with the significant damages award, this suggests that
the purpose of the IPR could be to extract a settlement from VLSI.
Notably, despite being given the opportunity, PQA has not provided
adequate evidence that it had another purpose for filing this IPR. As
explained previously, PQA flouted Mandated Discovery refusing to turn
over or log internal communications that would have shed light on the
“purpose” for which PQA was formed. Paper 68, 4. In addition, as
discussed above, PQA failed to adequately respond to the interrogatories set
forth in the Scheduling Order (Paper 35, 8–9). Accordingly, per the sanction
for PQA’s discovery misconduct, I find that it has been established that PQA
filed its Petition for the purpose of extracting payment from VLSI.
3. 	Proximity of petitioner’s formation to jury award
Large jury awards attract publicity and attention. When the evidence
demonstrates that an IPR petitioner was formed from whole cloth soon after
a damages award, and in particular a significant damages award, this
suggests that the petitioner could be motivated to extract a financial windfall
from the patent owner or the adjudicated infringer, rather than being
motivated by any legitimate purpose.
Here, the evidence demonstrates that PQA was formed 15 weeks after
a jury found that Intel infringed the ’373 patent, and awarded VLSI $1.5
billion in damages. Compare Ex. 1027 (Jury Verdict Form dated March 2,

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2021), with Ex. 1045 (PQA formation date of June 14, 2021). PQA then
filed its Petition on July 7, 2021, three weeks after its formation. This
timing, and the fact that PQA prevented OpenSky from also pursuing its
proceeding to seek unpatentability of the ’373 patent, in the absence of
contrary evidence from PQA, supports the finding that PQA was formed in
an attempt to capitalize on that verdict. Moreover, and as explained above,
PQA has provided inadequate evidence that it was formed for another
purpose, despite my Order giving it an opportunity to do so. Although PQA
omits these details from its recitation of events,
. Ex. 2075, 2076. As a sanction for that discovery
violation, I find that it has been established that PQA was formed for the
express and sole purpose of extracting payment from VLSI.
4. 	Misleading arguments or misrepresentations of fact
I find that PQA advanced a misleading or frivolous argument,
misrepresented a fact, and/or otherwise engaged in an abuse of process, by
representing in its Petition that it had exclusively engaged Dr. Singh, an
expert who was relied on by another litigant in another proceeding, and later
retracting this statement by stating that this was an exclusivity provision that
could be waived upon request. Compare Pet. 4 (“In contrast, Petitioner
exclusively engaged Dr. Singh and Dr. Hall-Ellis to challenge the ’373
patent. Thus, OpenSky cannot present either expert for cross-examination as
required.”), with Paper 67, 18 (“Similarly, while PQA’s engagement with
Dr. Singh is ‘exclusive,’ that provision may be waived on request. Ex. 1034.

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Since PQA’s engagement of Dr. Singh, no party (including OpenSky) has
ever sought to engage him in connection with the ’373 patent, thus PQA has
never declined any such request.”).
The statement in the Petition that PQA had exclusively engaged Dr.
Singh appears to have been a misstatement of the exclusivity arrangement
that implied that Dr. Singh could have worked with another party with
PQA’s consent. See Ex. 1034, 2.
One might argue that PQA merely changed its mind about whether it
would waive its exclusive arrangement with Dr. Singh, and that it is inherent
in an exclusive arrangement that the exclusivity may be waived, e.g., where
the arrangement states that Dr. Singh will not accept new consulting
engagements related to the challenged patent without prior written consent.
See Paper 67, 18; Ex. 1034, 2. Even if this is the case, it strains credulity
that PQA now states that “no party (including OpenSky) has ever sought to
engage [Dr. Singh]in connection with the ’373 patent.” Paper 67, 18.
Indeed, PQA’s express statement in the Petition that “OpenSky cannot
present either expert for cross-examination” would have led OpenSky to
reasonably conclude that it would have been fruitless to seek permission
from PQA. Compare Pet. 4, with Paper 67, 18. In other words, even if PQA
had not originally been misleading in the Petition, its later arguments
regarding the lack of attempts to engage the expert are misleading at best,
which, again, indicates an abuse of process.
Further, PQA also engaged in an abuse of process by establishing an
exclusive arrangement with a witness relied on by another party in another
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the other party would be unable to cross-examine the witness. See Pet. 4.
The Board relied on the statement in the Petition to dismiss the other
proceeding. See IPR2021-01056, Paper 18, 9. This type of interference
with OpenSky’s Petition, through the use of an exclusive arrangement in
combination with a purposeful statement in PQA’s Petition that there was an
exclusive arrangement that prevented OpenSky from obtaining institution,
indicates an abuse of process. PQA made a point to state to the Board that
Dr. Singh cannot be cross-examined in another proceeding, and the Board
did not proceed with the IPR based on OpenSky’s petition on this basis,
which further demonstrates that PQA intended to interfere with another IPR.
Pet. 4; IPR2021-01056 Paper 18, 9. 	The use of an exclusive arrangement
and the assertion of a purposeful and misleading statement before the Board
in order to favor its own petition over another one indicates an abuse of
process.23
5. 	Filing a copycat petition
As my Scheduling Order notes, filing a “copycat” petition is not
inherently improper. Paper 35, 5 n.4. For example, under the current
joinder rules, a time-barred party may file a copycat petition when it is
23 I recognize that in some cases a party may have a legitimate interest in
circumscribing an expert’s work for another party, such as where the two
parties are competitors and providing that expert access to confidential or
privileged information may compromise that party’s competitive position if
permitted to use it for the benefit of the other party. See, e.g., Digital Equip.
Corp. v. Micro Tech., Inc., 142 F.R.D. 488, 492 (D. Colo. 1992)
(acknowledging the risks inherent in allowing an expert to work for both
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seeking joinder as provided by the AIA. 	See 35 U.S.C. § 315(c); 37 C.F.R.
§§ 42.122(b), 42.101(b). There may be circumstances, however, in which
the filing of a petition that copies a previously denied petition may suggest
an abuse of process.
The present case provides an example as it relates to PQA. In
addition to PQA filing what was essentially a copy of Intel’s IPR petition,
which had previously been denied based on the Fintiv factors, PQA filed a
copy of Intel’s expert declaration. Ex. 2016; Ex. 2022. On these facts, this
conduct suggests that PQA was attempting to file a petition with the lowest
possible cost in an effort to generate leverage against VLSI.
D. 	Conclusion
Viewed as a whole, PQA’s conduct has been an abuse of the IPR
process, the patent system, and the Office. The totality of PQA’s conduct
evinces a singular focus on using an AIA proceeding to extort money.
Despite being given the opportunity, PQA 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 ’373
patent. PQA also made material misrepresentations in order to ensure that
OpenSky’s Petition would be denied so that PQA’s Petition could proceed.
And the Petition it filed was not generated by PQA, but was a copy of Intel’s
earlier petition. Further,
See Ex. 2076.
Seeking an AIA trial for the primary purpose of extorting money, and
representing that a party has an exclusive engagement with a witness relied

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on by another litigant do not comport with the purpose and legitimate goals
of the AIA and are abuses of process. Further, PQA has made
misrepresentations of fact and/or misleading arguments regarding the nature
of this exclusivity. Opportunistic uses of AIA proceedings harm the IPR
process, patent owners, the Office and the public. Naples, 2; USIJ, 4.24 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.
V. 	REMEDY FOR ABUSE OF PROCESS AND OTHER
SANCTIONABLE CONDUCT
The AIA granted the Office broad authority to prescribe regulations
aimed at sanctioning the “abuse of process, or any other improper use of the
proceeding.” 35 U.S.C. § 316(a)(6). Our existing regulations take full
advantage of that authority and provide a broad range of potential sanctions
to address such abuse and other sanctionable conduct, ranging from
awarding “compensatory expenses” to “[j]udgment in the trial.” 37 C.F.R.
§ 42.12(a)(2), (3), (6), (b). These enumerated sanctions are not exclusive.
The Federal Circuit has held that § 42.12(b) “allows the Board to issue
sanctions not explicitly provided in the regulation.” Voip-Pal.com, Inc., 976
F.3d at 1323. Accordingly, the Office has robust powers to sanction abuse
of process and other sanctionable conduct where it occurs and to deter
24 This situation thus meaningfully differs from others in which a “profit
motive” was arguably present but there was not otherwise other evidence of
improper conduct. See, e.g., Coalition for Affordable Drugs VI, LLC v.
Celgene Corp., Case IPR2015-01092, Paper 19 (PTAB Sept. 25, 2015)
(denying motions for sanctions for abuse of process).

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similar abuse. The Director will ensure that the remedy suits the
wrongdoing, both in this specific case and more generally when faced with
evidence of an abuse of process or other conduct that thwarts, rather than
advances, the goals of the Office and the AIA.
Here, in addition to any monetary sanctions I may levy (see below
section VII), I must decide whether to maintain or dismiss the underlying
proceeding.
A. 	Whether Dismissal is Appropriate
VLSI contends that the remedy for PQA’s abuse should be
termination of this IPR. Paper 68, 2, 10–11. VLSI also argues that Intel
should not be “allowed to take advantage of PQA’s misconduct at VLSI’s
expense.” Paper 68, 24. VLSI asserts that Intel was a time-barred party, and
that the Board has previously terminated joined time-barred parties when
finding that an IPR was improperly instituted. 	See id. at 24–25 (citing I.M.L.
SLU v. WAG Acquisition, LLC, IPR2016-01658, Paper 46, 3, 5 (PTAB Feb.
27, 2018); Mylan Pharma Inc. v. Horizon Pharma USA, Inc., IPR2017-
01995, Paper 71, 12–13 (PTAB Mar. 17, 2019); Intel Corp., v. Alacritech,
Inc., IPR2018-00234, Paper 66, 23 (PTAB June 4, 2019); Sling TV, LLC v.
Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 39, 8 (PTAB
Jan. 17, 2020)).
Intel responds that, in “VLSI’s cited cases, the IPRs were terminated
because the original petitioner was statutorily barred from bringing the
petition in the first instance,” so the petition was void ab initio. See
Paper 78, 12 (emphasis in original). That reasoning, however, does not
apply to the current proceeding. As Intel correctly points out, in other cases,

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the Board has allowed a joined petitioner to step into an active role after the
original petitioner was terminated from the proceeding. 	See id. at 12–13
(citing Apple Inc. v. Traxcell Techs., LLC, IPR2021-01552, Paper 19, 2
(PTAB May 26, 2022); AT&T Servs., Inc. v. Convergent Media Sols., LLC,
IPR2017-01237, Paper 11, 26–28 (PTAB May 10, 2017); Qualcomm Inc. v.
Bandspeed, Inc., IPR2015-01577, Paper 12 at 2–3, 6, 8 (PTAB Nov. 16,
2015)).
Amici recognize that I must “weigh the policy goals of the Office and
the AIA” when facing abusive behavior because “the public has a clear
interest in discouraging conduct that is abusive or otherwise thwarts
Congress’s goals in passing the AIA and the Office’s goals in overseeing
post-grant proceedings.” AIPLA 5–6. Many amici have pointed out that
“[o]ur patent system is rooted in the fact that valid claims . . . support
innovation, progress, and the public’s interests” (Engine 3) while “[i]nvalid
patents unduly restrict innovation, competition, and access to knowledge”
(PIPLI 2). See CCIA, 2; HTIA, 7; BSA, 10. Accordingly, “ensuring that
invalid patents do not remain in force [is] one of the core missions of the
PTAB” (CCIA 2) and “AIA trials thus broadly aim to ‘protect the public’s
‘paramount interest in seeing that patent [rights] are kept within their
legitimate scope’” (HTIA, 5 (quoting Cuozzo, 579 U.S. at 279–80) (internal
citations omitted)). See Unified, 5–6, Engine, 7–8. On the other hand, other
amici highlight that “the patent system incentivizes inventors to publicly
disclose innovations that advantage the public by granting an inventor a
patent, upon which an ‘exclusive enjoyment is guaranteed.’” Centripetal,
14; USIJ, 15; Maalouf, 6. Those amici point out that the legislative history

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of the AIA shows Congress recognized the importance of reliable patent
rights. Maalouf, 6–7 (citing H.R. Rep. No. 112-98 pt. 1, at 48 (2011));
Centripetal, 13; USIJ, 15.
Going back to first principles, to further the objectives of this Office
in promoting and protecting innovation for the greater good of the public, I
must advance the need for reliable patent rights and the benefits of removing
patents that do not support innovation. 	See Lamar Smith, Don’t Weaken the
Leahy-Smith America Invents Act, BLOOMBERG L AW (Mar. 30, 2022), at 3
(“In the committee report on the AIA, we wrote about the importance to
inventors of having ‘quiet title’— clear ownership that can’t be
challenged.”); H.R. Rep. No. 112-98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N.
67, 69; S. Rep. No. 110-259, at 20 (2008) (the congressional intent behind
the AIA was “to establish a more efficient and streamlined patent system
that will improve patent quality and limit unnecessary and counterproductive
litigation costs.”).
I recognize that PQA should not benefit from its abusive use of the
IPR process. Accordingly, due to PQA’s abuse of the process and
misrepresentation of fact or misleading argument, I dismiss PQA from this
the proceeding, subject to the Director, Board, and USPTO retaining
jurisdiction over the issuance of sanctions. See 37 C.F.R. § 42.12(b)(6), (8).
Intel remains in this proceeding as the sole Petitioner.
On the issue of whether to terminate the proceeding, the unique
dynamics of this case, coupled with the public interest in evaluating patent
challenges with compelling merits, counsels that I permit this IPR to
continue only if the unpatentability merits were compelling as of the time of

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institution and on the record as it existed at that time.25 Predicating
dismissal on the application of the compelling-merits standard best serves
the competing interests here.26
B. 	Compelling Merits Analysis
As I have stated previously, “[c]ompelling, meritorious challenges are
those in which the evidence, if unrebutted at trial, would plainly lead to a
conclusion that one or more claims are unpatentable by a preponderance of
the evidence.” Memorandum at 4. A compelling merits challenge is a
higher standard than the reasonable likelihood required for the institution of
an IPR under 35 U.S.C. § 314(a). A challenge can only “plainly lead to a
conclusion that one or more claims are unpatentable” (id.) if it is highly
likely that the petitioner would prevail with respect to at least one challenged
claim.
25 My decision to conduct a compelling-merits determination here, per the
Memorandum, is limited to the facts of this case and should not be treated as
an endorsement of retroactive application of that memorandum to institution
decisions made before it issued.
26 The circumstances of this particular case are unusual and are not likely to
reoccur. Apart from the Memorandum that will require an earlier
determination of compelling merits in future cases with similar fact patterns,
the Board issued its Decision several months before Sotera was designated
precedential. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
Paper 12 (issued Dec. 1, 2020, designated precedential Dec. 17, 2020)
(applying Fintiv and instituting review after the Petitioner filed a broad
stipulation to limit grounds in district court, addressing factor 4 in Fintiv).
Further, the USPTO is working on policy-making that will address some of
the facts raised in this case.

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In assessing compelling merits, I analyze the evidence and the parties’
arguments as they existed at the date of institution. PQA filed a Petition
(Paper 1) requesting institution of an inter partes review of claims 1–16 (all
claims) of the ’373 patent. In its Petition, PQA relies on three grounds. Id.
at 2. For all independent claims, 1, 9 and 16, and for dependent claims, 2–7,
10, 11, and 13–15, PQA contends the claims are obvious in view of three
references: Harris (US 5,867,719), Abadeer (US 2006/0259840 A1) and
Zhang (US 2003/0122429 A1). Id. For dependent claims, 2, 8, 11 and 12,
PQA relies on the combination of Harris, Abadeer, and Zhang, also
combined with additional art. Id. VLSI filed a Preliminary Response.
Paper 7. As authorized, PQA filed a Preliminary Reply (Paper 8), and VLSI
filed a Preliminary Sur-Reply (Paper 9). The Board, in its Institution
Decision, concluded that PQA’s Petition showed a reasonable likelihood that
it would prevail in establishing the unpatentability of at least one challenged
claim, and instituted inter partes review. Paper 10, 24. The Board’s
Institution Decision fully describes the ’373 patent and relevant prior art
disclosures. 	See generally id. I will not repeat that analysis here, except to
the extent necessary to inform my compelling merits determination.
As noted in the Institution Decision, PQA “relies on Harris for a
system including switchable voltages provided to memory and other
system[s] in an integrated circuit.” Paper 10, 13. The Institution Decision
further notes that PQA relies on both Harris’s “failure mode” as well as its
“low power feature” to teach the claimed “requirement of providing
different voltages to the memory circuit depending on the levels of the two
voltages.” Id. at 16 (quoting Pet. 44–46). The Board, applying the

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reasonable likelihood standard for institution, concluded that “Harris’s low
power feature discloses the claimed switching.” Id. at 18; see id. at 24.
Based on that conclusion, the Board declined to resolve the parties’ dispute
on whether the failure mode also met the limitation. VLSI filed for
rehearing but did not challenge the Board’s merits, focusing only on the
Board’s discretion. Paper 13.
I have considered the record as well as each of VLSI’s arguments and
I find that the Petition presented compelling merits at the time of institution
based on the rationale set forth in the Institution Decision as well as my own
analysis of the record at institution. I first note that VLSI’s Preliminary
Response focuses much of its argument on Harris’s teachings alone,
misapprehending Harris’s various modes (e.g., normal mode, testing mode,
failure mode, and low power feature) as wholly independent systems, rather
than features provided by the same computing hardware system. See e.g.,
Prelim. Resp. 34, 36–37; see generally id. at 31–55. As the Board explains,
and as Harris supports, those modes are situationally-dependent modes
implemented by the same underlying hardware system. Institution Decision
20–21. For example, in “a normal mode of operation,” Harris’s memory
array “would be powered by a supply voltage applied to VDD terminal 132.”
Ex. 1003, 3:1–2; see id. 3:15–18, Fig. 1. And, where Harris’s “test mode . . .
[is] used as a low power feature, the second power supply voltage (Vstby or
Vdd) is provided to the at least one memory array while the first power
supply voltage (Vdd or Vstby) which is being supplied to the CPU is
lowered so that lower power is consumed in the data processor while data
within the at least one memory array is maintained.” Id. at 4:65–5:4.

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Further, VLSI’s general assertion that Harris fails to teach “switching”
voltages does little to support its position, as VLSI does not specifically
identify any limitations it asserts Harris’s modes fail to teach, suggest, or
render obvious.
Although VLSI’s Preliminary Response also takes issue with the
compatibility of the Harris and Zhang combination (Prelim. Resp. 38–40),
those arguments also do not persuade me that the Petition fails to present
compelling merits at the institution stage. VLSI’s argument that “Zhang
never teaches switching between separate regulated voltages” (Prelim. Resp.
37–39) is based on features in Zhang that are not relied upon in, or needed
by, Petitioner’s combination. Instead of relying on Zhang to teach switching
voltages, at the institution stage Petitioner presents a compelling case that a
POSITA would have been motivated to use “regulated” voltages in Harris,
as taught in Zhang, and provides three independent rationales to support its
combination. Pet. 37–39. VLSI’s Preliminary Response does not
adequately address those proffered rationales, instead, arguing again about
switching. 	See Prelim. Resp. 38–40. I also note that VLSI makes no
argument with respect to Abadeer’s teaching on determining the minimum
operating voltage and storing that voltage in non-volatile memory or
whether it would be obvious to combine Abadeer’s teaching with Harris and
Zhang. Nor does Patent Owner contest Petitioner’s three proffered
rationales for combining Harris and Abadeer. Pet. 30–33. Accordingly, I
determine that the record, as it existed at the time of institution, presented
compelling merits.

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My determination of compelling merits here is based only on the
record as it existed at institution, and I recognize that all relevant evidence
likely will not have been adduced at that point in time. The record as
developed during trial may have adduced additional evidence that may
support a different determination. Thus, the merits of the Petition may be
rebutted at trial, and, accordingly, a determination of compelling merits
should not be taken as a signal to the ultimate conclusion after trial.
I therefore lift the stay in the underlying proceeding. The parties will
have an additional opportunity to seek Director review of the Final Written
Decision.
VI. 	REQUESTS FOR IN CAMERA REVIEW
VLSI requested that I review in camera documents of PQA. See, e.g.,
Paper 43.
. Paper 44. No other parties request in camera review. For
the reasons explained above, however, the evidence exchanged as Mandated
Discovery is sufficient to resolve this Director review without resorting to in
camera review. Accordingly, the request for in camera review is denied.
VII. 	SHOW CAUSE
Finally, for all the reasons discussed above, PQA also is ordered to
show cause as to why it should not be ordered to pay compensatory
expenses, including attorney fees, to VLSI as a further sanction for its abuse
of process and misrepresentation of fact or misleading argument. 37 C.F.R.
§ 42.12(b)(6). Within 30 days of this Decision, PQA and VLSI shall each
file a 25-page brief addressing whether an award of attorney fees is

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appropriate, and if so, how such fees should be determined, e.g., the
appropriate time frame for which fees should be assessed. PQA and VLSI
may each file a 10-page responsive brief, due two weeks from the date the
initial briefs responding to the show cause order are filed.
VIII. 	MOTIONS TO SEAL
PQA has also filed three motions to seal, i.e., relating to an agreement
between PQA and VLSI to keep certain discussions confidential. Paper 49;
Paper 75; Paper 79. VLSI also filed a motion to seal. Paper 66. Intel also
filed a motion to seal. Paper 72.
In Paper 49, PQA moves to file under seal Exhibits 1046 and 1047, as
well as portions of its Opening Brief in Response to Director Review that
quote or describe those documents and/or communications related to those
documents. Paper 49, 1.
In Paper 75, PQA states that it “moves to file under seal Patent
Owner’s Exhibits 2029, 2064–2080 and 2084–2087 and portions of Papers
50, 51, and 65 that quote or describe those confidential exhibits. PQA also
moves to file under seal Petitioner’s Exhibits 1054–1061 and portions of
Paper 71 that quote or describe those confidential exhibits.” Paper 75, 1.
In Paper 79, PQA states that it “moves to file under seal portions of
Patent Owner’s Responsive Brief Paper 74 that quote or describe
confidential exhibits. . . . The arguments presented here track those made in
Paper 75.” Paper 79, 1.
VLSI counters that “
” Paper 83, 2. VLSI

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states that “
” Id. at 5–6 (
). VLSI also argues that
. 	Id. at 7–8.
VLSI further argues that
. 	Id. at 8–9. Additionally, VLSI argues that
. 	Id. at 9–10. VLSI makes similar arguments
in its oppositions to Papers 49 and 79. See Papers 82 and 84.
PQA replies that VLSI has not established a crime or fraud. See Paper
86, 2; see also Papers 85 and 87.
VLSI moves to seal Exhibits 2080, 2086, 2088, and 2089 relating to
privilege logs, and certain portions of VLSI’s brief relating to these exhibits.
See Paper 66, 1.
Intel moves to seal portions of its responsive brief because it contains
information that VLSI and PQA have identified as confidential. See Paper
72, 1.
Although I find an abuse of process, I find that public policy favors
allowing parties to discuss settlement in a confidential setting if they so
agree, and I do not find that VLSI has established a sufficient exception to
that policy on this record. Further, I find that public policy favors allowing
the privilege logs to remain confidential. Accordingly, I grant the motions
to seal.

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IX. 	ORDER
For the foregoing reasons, it is hereby:
ORDERED that PQA is dismissed from the proceeding, subject to the
Director, Board, and USPTO retaining jurisdiction over the issue of
sanctions;
FURTHER ORDERED that Intel remains the lead petitioner in this
proceeding;
FUTHER ORDERED that the stay of the underlying proceeding is
lifted;
FURTHER ORDERED that PQA and VLSI shall file a
brief responding to the show cause order for PQA, addressing whether
compensatory expenses should be ordered as a further sanction for PQA’s
abuse of process. Briefing shall be filed within 30 calendar days of this
decision and shall be limited to 25 pages;
FURTHER ORDERED that PQA and VLSI may each file a 10-page
responsive brief, due two weeks from the date the initial briefs responding to
the show cause order are filed; and
FURTHER ORDERED that PQA’s, VLSI’s, and Intel’s motions to
seal (Papers 49, 66, 72, 75, and 79) are granted.

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PETITIONER:
Benjamin Fernandez
David Cavanaugh
Yvonne Lee
Steven Horn
WILMER CUTLER PICKERING HALE AND DORR LLP
ben.fernandez@wilmerhale.com
david.cavanaugh@wilmerhale.com
yvonne.lee@wilmerhale.com
steven.horn@wilmerhale.com
Bruce Slayden
Tecuan Flores
Truman Fenton
SLAYDEN GRUBERT BEARD PLLC
bslayden@sgbfirm.com
tflores@sgbfirm.com
tfenton@sgbfirm.com
PATENT OWNER:
Babak Redjaian
IRELL & MANELLA LLP
bredjaian@irell.com
Kenneth J. Weatherwax
Bridget Smith
Flavio Rose
Parham Hendifar
Patrick Maloney
Jason Linger
LOWENSTEIN & WEATHERWAX LLP

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weatherwax@lowensteinweatherwax.com
smith@lowensteinweatherwax.com
rose@lowensteinweatherwax.com
hendifar@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com
linger@lowensteinweatherwax.com