“While it may choose not to show cause, because PQA’s party status has been restored and because it has indisputably now received notice that it is facing possible sanctions…PQA cannot avoid possible sanctions through continued non-participation.” – Vidal Order, Paper 108
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday granted Patent Quality Assurance’s (PQA’s) motion to dismiss its January 24 petition for a writ of mandamus asking the CAFC to restore it as a party to its high-profile inter partes review (IPR) proceeding against VLSI Technology.
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal in December 2022 ruled that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. She also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI brought by OpenSky. She sanctioned PQA by dismissing it from the proceeding and said that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”
On January 27, however, Vidal restored PQA as a petitioner to the IPR. PQA had argued it should have been afforded an opportunity to show cause and an opportunity to explain why the sanctions should not have been imposed. While Vidal granted PQA’s motion to the extent it was allowed to brief its rehearing request on the merits and to show cause as to why sanctions should not be imposed within 7 days and limited to 10 pages, PQA chose to file the petition for writ of mandamus with the CAFC and ultimately declined to participate further in the proceedings “as an unlawfully dismissed party.” Vidal subsequently restored PQA as a petitioner, noting: “Now that I have vacated the portion of my order dismissing PQA from this proceeding, the predicate for PQA’s stated basis for declining to continue to participate in the rehearing proceedings it initiated (which are grounded in its lack of continuing party status) no longer holds true.” She continued:
“While it may choose not to show cause, because PQA’s party status has been restored and because it has indisputably now received notice that it is facing possible sanctions, including a possible order requiring it to pay VLSI’s fees per 37 C.F.R. § 42.12(b)(6), PQA cannot avoid possible sanctions through continued non-participation.”
In today’s order granting the motion to dismiss the mandamus petition, the CAFC ruled that PQA shall bear costs and each party (VLSI, the USPTO and PQA) shall bear its own fees.
Other Mandamus Orders
The CAFC issued three other decisions on mandamus today, dismissing two of the petitions and granting one.
In In re Apple, Inc., the court partially granted Apple’s petition, ordering Judge Alan Albright to timely decide Apple’s motion to transfer a case brought against it by SpaceTime3D, Inc. from Albright’s Western District of Texas, Waco Division, court to Austin. However, the CAFC said it could not say “that it was a clear abuse of discretion under the specific circumstances of this case for the district court to conclude that Apple was not entitled to a stay of the Markman hearing or the discovery deadlines because of its delay in moving for a stay.”
In two other orders, the CAFC denied petitions brought by Western Digital Technologies and Google asking the court to direct Albright to transfer their cases from his court to the Northern District of California. The CAFC said that neither petitioner had met the high standard for granting mandamus relief and denied both petitions.
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