Welcome

‘Opportunity for Balance’ Seen With Biden’s Patent Office Pick

Oct. 26, 2021, 10:34 PM

Winston & Strawn attorney Kathi Vidal would bring experience as a litigator who has represented both sides in patent disputes to the helm of the U.S. Patent and Trademark Office.

Under previous administrations the agency was seen as alternately favoring patent owners or accused infringers. Vidal will bring with her the “frustrations of being on both sides of the ‘v’ in litigation,” Baker Botts LLP attorney Sarah Guske said.

“With her experience on both sides, it’s an opportunity for balance,” Guske, who leads Baker Botts’ IP department in San Francisco, said.

Vidal, a West Coast intellectual property litigator, would be the second woman to lead the agency if confirmed by the Senate. She would bring to the office a strong understanding of patent and trademark issues, attorneys say, along with experience building relationships and management experience.

“She will have instant credibility with all the USPTO’s constituencies, which together with her leadership and policy chops will allow her to implement sound technology policies for the administration,” said Lori Lesser, head of the IP group at Simpson Thacher & Bartlett LLP.

If confirmed, Vidal would take over an agency that has been without a permanent leader since Andrei Iancu stepped down in January 2021. Commissioner for Patents Drew Hirshfeld has been performing the duties of the director.

Vidal is a “recognized thought leader on difficult issues confronting the legal profession and intellectual property law,” the White House said in a statement announcing her selection.

Litigation Experience

Vidal, who has an engineering background, clerked at the U.S. Court of Appeals for the Federal Circuit, and has spent much of her career in Silicon Valley. She led the patent litigation group at Fish & Richardson PC before moving to Winston & Strawn LLP in 2017, where she manages the firm’s Silicon Valley office.

“At the very least, it’s good that the director candidate has significant patent litigation experience, including both for and against patent owners,” Kenneth Weatherwax, co-founder of Lowenstein & Weatherwax LLP, said.

Iancu, who took measures to strengthen patent rights, was also an IP litigator before taking the director’s job.

Vidal has made more than 100 appearances as a litigator, and 85% of those were patent cases, according to Bloomberg Law Litigation Analytics. She has represented technology, financial, and medical device companies, including The Chamberlain Group Inc. and Microsoft Corp.

Her experience includes work in federal court, the U.S. International Trade Commission, and the Patent Trial and Appeal Board.

In one notable case, Vidal argued for SAP America Inc. at the Federal Circuit against a patent related to financial data analysis. The court, in a precedential 2018 decision, invalidated the patent for claiming only an abstract idea.

Vidal was on the other side the following year, when the Federal Circuit invalidated a Chamberlain Group patent on a “smart” garage door opener after finding it covered an abstract idea.

Chamberlain argued in a May 2020 Supreme Court petition the Federal Circuit had expanded narrow exceptions to patent eligibility to “swallow the rule for vast swaths of innovation.” The Supreme Court didn’t take the case.

Controversies at PTO

The office is facing some legal and political controversies.

Sen. Patrick Leahy (D-Vt.) has introduced legislation that would undo some of the efforts of the previous administration at the PTAB, including limiting the board’s ability to use its discretion to deny reviews. The PTO is also facing lawsuits over its discretionary denials.

“It’s going to force her to think about ‘do you really want to step into the defense of all your predecessor’s policies and fight this in the courts and in Congress? Or do you rethink some of these issues?’” said Joseph Matal, a Haynes and Boone LLP attorney and former PTO official.

Progress on some high-profile issues has been stalled while the agency waited for a permanent director.

And some patent-owning companies, including New Vision Gaming & Development Inc., started to question the agency’s ability to make certain decisions without a Senate-confirmed director.

Scott McKeown, chair of the Patent Trial and Appeal Board group at Ropes & Gray LLP, said “a little bit of a fire has been lit to fill” the director’s position.

On the trademark side, attorneys are looking for the new director to provide additional guidance and resources for the office to tackle the surge in trademark filings that is partly due to fraudulent filings from overseas, which undermine the integrity of the register.

Decisions like shifting the office’s focus to prioritize enforcement measures, including the sanctioning of U.S. attorneys for the fraudulent foreign filings, can come quicker and will have more authority from a political appointee, said Eric Perrott, a trademark attorney at Gerben Perrott LLC.

“When it comes to a unified strategy to ensure that this isn’t happening to damage the register, that’s something the new director is going to need to deal with,” Perrott said. “It’s as important as the patent side, to make sure that our trademark register remains the most sought after in the world.”

Diversity Efforts

Vidal has been active in diversity and equality efforts in the private sector.

She is an advisory board member at ChIPS, a nonprofit for women in law and technology, and founded Next Gen Initiative, an effort to encourage opportunities for junior attorneys. She also mentors women from underdeveloped countries, according to her firm biography.

“She is a big promoter of diversity in the IP and technology sector,” said Lesser, who is also on the ChIPS advisory board. “That’s in addition to her day job of trying” high-stakes cases.

The underrepresentation of women and minorities is something the patent system has been grappling with. It also has caught the attention of Congress, which held a hearing earlier this year on ways to close gender and racial gaps.

The underrepresentation of women is “a problem that frankly plagues all aspects of the IP practice,” Guske said.

“I think the nomination signals further commitment by the administration to try to address those issues,” she said.

To contact the reporters on this story: Matthew Bultman in New York at mbultman@correspondent.bloomberglaw.com; Samantha Handler in Washington at shandler@bloombergindustry.com

To contact the editor responsible for this story: Keith Perine at kperine@bloomberglaw.com

To read more articles log in. To learn more about a subscription click here.