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A Patent Board Litigator Is Now Poised to Be Its Final Arbiter

Oct. 29, 2021, 9:00 AM

Kathi Vidal, President Joe Biden’s nominee to lead the U.S. Patent and Trademark Office, knows her way around the Patent Trial and Appeal Board. Waiting for her would be a new power to shape the tribunal’s patent reviews.

Vidal, a longtime patent litigator and head of Winston & Strawn LLP’s Silicon Valley office, has represented companies in dozens of patent reviews at the PTAB, making arguments for both challengers and patent owners.

That experience could help her chart a course for the administrative tribunal if she is confirmed by the Senate.

Vidal would be the first Senate-confirmed director since the U.S. Supreme Court in a June 2021 ruling, United States v. Arthrex, gave the patent office director the power to overturn decisions the PTAB makes in its inter partes review program. She also would be the first director with extensive experience in representing clients at the board, which began operating in 2012.

The Supreme Court ruling gave the director a new way to implement policies for the PTAB, a tribunal that reviews the validity of issued patents and has become an important part of many infringement disputes.

“Through the powers that he or she has under Arthrex, the PTO director is effectively the judge and jury for certain issues in patent litigation,” said Nicholas Matich, an attorney at McKool Smith PC and former acting general counsel at the patent office.

PTAB Experience

The creation of the PTAB in the 2011 America Invents Act gave the patent office a larger role in the enforcement of patents. That put more power in the director’s hands and has increased the attention on the position, including from members of Congress.

Scott McKeown, chair of the PTAB group at Ropes & Gray LLP, said, the director’s spot was a “much sleepier position” before the PTAB.

“With Arthrex highlighting that the political appointee is supposed to drive policy, as is done in every other agency, I think the PTO is now catching up with other agencies in terms of sheer politics,” McKeown said.

Vidal has been involved in over 50 patent reviews at the board, including many as lead counsel, according to patent office data. Her recent work includes defending The Chamberlain Group Inc. and Arc Medical patents. She has also represented challengers like Micron, Cisco Systems, and Forescout.

“I think, all else being equal, it’s a good thing to have someone who’s litigated at the board,” Matich said. Those experiences provide an understanding of how the PTAB interacts with litigation, and the impact decisions can have on those processes, he said.

Part of Litigation

Under the previous administration, significant changes were made to the PTAB, including making it harder to challenge patents. Vidal’s views on those policies are unclear.

During a 2019 interview on the Clause 8 podcast, attorney Eli Mazour asked Vidal about the perception of the PTAB, which critics in the early days labeled a “death squad” for patents. Vidal noted changes in statistics, and said it became harder over time for accused infringers to invalidate all of a patent’s claims.

“I do think that IPRs are more like summary judgment in a way, where they narrow the issues and then you’re left with maybe the stronger claims,” Vidal said. She noted efforts to make it easier to amend patents during review.

“I think what we’re going to see in the future is moving even further from that ‘death squad’ and really have that be part of what litigation looks like,” she said.

Policy Pressures

Sen. Patrick Leahy (D-Vt.) has introduced legislation that would undo various policies implemented under the previous administration, including limiting the PTAB’s use of its discretionary power to deny reviews. The agency also has been sued over its discretionary review practices.

“As soon as she comes into the job she’s going to get pressure from different sides to keep or discard various policies,” said Joseph Matal, a Haynes and Boone LLP attorney and former PTO official.

Karen Boyd, who clerked with Vidal at the Federal Circuit and worked with her at Fish & Richardson, said her former colleague has “boundless energy.” She described Vidal as having an ability to be persuasive, and as someone who can think about whether there is a better way to approach things.

“Being able to think about what are the different possibilities, including ones that maybe haven’t been thought of before or haven’t been focused on before, being able to consider those, I think that’s something that translates,” Boyd, a founding partner at Turner Boyd LLP, said.

To contact the reporter on this story: Matthew Bultman in New York at mbultman@correspondent.bloomberglaw.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com