Ex-Patent Leader, Federal Circuit Judge Talk IP in Big Law Move

New congressional and agency efforts to bring major changes to IP litigation are at the top of former US Patent and Trademark Office Director Andrei Iancu’s mind as he starts a new role as a partner in Sullivan & Cromwell’s intellectual property and technology practice.

Iancu recently moved to the firm’s practice in Los Angeles, and joining him in the transition is retired Federal Circuit Judge Kathleen O’Malley, who is now of counsel for S&C’s Washington, D.C., office.

The two attorneys, who were both formerly at Irell & Manella LLP, addressed their priorities for the new roles in interviews with Bloomberg Law.

Iancu said he is keeping an eye on efforts by lawmakers and regulators to revamp the Patent Trial and Appeal Board. That agency tribunal, which has the power to invalidate patents that can underlie high-stakes court cases, has faced scrutiny over what some critics call a lack of transparency.

He also plans to track the impact emerging technologies such as artificial intelligence and biotechnology have on intellectual property, and is monitoring the controversial “Fintiv” rule established under his leadership. The rule allows the PTAB to deny reviewing a challenge to a patent’s validity if it’s already tied to parallel court litigation.

O’Malley told Bloomberg Law that while she expects IP to play a large role in her new practice, she’s also interested in utilizing her experience with multidistrict litigation, securities fraud, and antitrust class actions, to expand the range of her litigation consulting at the firm.

“We appreciate Andrei Iancu and Judge Kathleen O’Malley’s contributions to Irell and wish them well in their new positions,” Irell said in a statement to Bloomberg Law.

Federal Circuit

O’Malley was nominated to the US Court of Appeals for the Federal Circuit by former President Barack Obama. She served on the court for 11 years, after which she reactivated her law license.

O’Malley previously told Bloomberg Law she would rule out appearing before the Federal Circuit out of respect for her former colleagues.

The former judge said on Tuesday she still thinks there should be more time before she agrees to appear before the appeals court as counsel of record.

“The beauty of Sullivan & Cromwell is that there are going to be plenty of cases that won’t go to the Federal Circuit, which would give me the opportunity to be more actively involved in the litigations if I choose,” she said.

O’Malley also said while she may have presided over some of the firm’s cases as a Federal Circuit judge, those cases—like any cases brought to the court while she was there—are off-limits to her for ethical reasons.

“I have a lot of walls that have been built up, but as time has gone on, those pose fewer problems for me in terms of the breadth of the work that I can do,” she said.

O’Malley joined Irell & Manella last year shortly after retiring from the Federal Circuit and a year after Iancu returned to the firm. She said working with Iancu was one of the main reasons she joined Irell & Manella, and the timing worked out for both of them to transition into new roles together.

“When the opportunity came to us at the same time, we liked the idea of remaining at the same firm,” she said. “It worked out perfectly.”

New Priorities

Iancu—who served as PTO director from 2018 to 2021 after being nominated by former President Donald Trump—said he will “continue to focus on intellectual property strategy advice,” including “high end litigation, policy, licensing.” IP-adjacent areas such as antitrust and privacy also fall within his areas of interest.

The former agency head said he is keeping an eye on congressional developments related to IP, including recently introduced patent bills in the Senate to clarify which inventions are eligible for patents, and to update PTAB processes.

He is also monitoring agency action following the several thousand comments it received on its advanced notice of proposed rulemaking on PTAB changes, which he said would impact several important patent issues.

Potential updates could address the PTAB’s discretionary power to deny “inter partes” reviews of challenged patents under the Fintiv rule, which has been targeted by big tech companies such as Apple Inc. and others. They say it deprives them of a way to avoid potentially lengthy and expensive litigation.

Current PTO Director Kathi Vidal previously told Bloomberg Law that rulemaking on PTAB discretionary denials, including under Fintiv, was at the top of her agenda. The office recently said it is mulling further Fintiv clarifications.

“I think both the office and the public are getting used to some of these proceedings,” said Iancu about the controversial rule. “I think folks have adjusted appropriately and what companies need to keep an eye on is how the office as well as possible bills in Congress will address the overlap between district court litigation and the PTAB.”

Iancu said it’s “very possible” there will be changes to the rule based on the patent office’s rulemaking process and the recently introduced PREVAIL Act.

“Whether it is in transactions or litigation and/or overall market participation, these issues are at the crux of the technologies of the future and having the appropriate advice and the appropriate strategy is critically important,” said Iancu. “And I very much look forward to being part of those efforts.”