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Vidal Brings Deep Patent Court Ties to Role as Agency Director

Nov. 22, 2021, 10:01 AM

Kathi Vidal’s extensive involvement with the court that reviews U.S. Patent and Trademark Office decisions positions her to strengthen relations between the two bodies.

Vidal has deeper connections to the U.S. Court of Appeals for the Federal Circuit—the nation’s top patent court—than any prior PTO director. She clerked for one of its judges, has argued numerous appeals there, and is active with the court’s bar association.

As director Vidal may help shape policy on the law of patent eligibility or the scope of director review of agency tribunal decisions. Those policies will come under Federal Circuit scrutiny.

Vidal’s work in so many different corners of the patent world will serve her well if she’s confirmed to head the agency, said Michelle Lee, who was the first woman and first person of color to serve as PTO director, under President Barack Obama.

“Experiences with the Federal Circuit (whether as a law clerk, advocate, client or otherwise) are particularly valuable since appeals from the USPTO’s Patent Trial and Appeal Board alone constitute ~37% of the Court’s docket, and due to the Federal Circuit’s key role in reviewing the policies and procedures of the USPTO’s PTAB,” Lee, a senior executive at Amazon Web Services, said in an email.

“As a law clerk on the Federal Circuit, one sees up close how judicial decisions are made on this Court so important to the work of the USPTO,” Lee, who also clerked on the court, said.

Vidal is poised to take over an agency that has been without a permanent leader since Andrei Iancu stepped down in January. Commissioner for Patents Drew Hirshfeld has been performing the duties of the director.

Court Connections

Vidal started her legal career as a clerk for on the Federal Circuit for now-senior Judge Alvin A. Schall. Clerking provides a behind-the-scenes look into how the court functions and what goes into its opinions.

After her clerkship, Vidal spent 20 years at top intellectual property firm Fish & Richardson PC in Silicon Valley. In 2017, she joined Winston & Strawn LLP as the managing partner of its Silicon Valley office. She is considered one of the leading Federal Circuit strategists in the country.

Vidal has argued numerous appeals at the Federal Circuit, including two notable patent eligibility cases. In 2018, she argued for defendant SAP America Inc. against a patent related to financial data analysis; the following year, she represented patent owner Chamberlain Group arguing a smart garage door opener was patent eligible.

Vidal has long been involved with the Federal Circuit Bar Association, has served on the board of the organization, and has spoken at several of its events. She didn’t immediately respond to a request for comment.

“Kathi is a respected, accomplished attorney and a recognized leader in intellectual property, diversity and women’s issues,” a spokesman for Winston & Strawn said.

Inside Look

That vast experience with the court, both as a clerk and a litigator, “will be helpful in that she has a very full view of all of the various stakeholders in the IP space,” Ahmed J. Davis, principal at Fish & Richardson in Washington and former Federal Circuit clerk, said.

“Having been inside of the court and having appeared there as a litigator will help to craft her approach in a way that I think is a net positive for the role,” he said.

Vidal’s Federal Circuit experience could help her in crafting patent policy that will stick, according to another former Federal Circuit clerk, Mel Bostwick, now a partner at Orrick, Herrington & Sutcliffe LLP in Washington.

“She understands how the appellate court is going to think about what the PTO does, and especially the processes and principles it employs in both the rulemaking and the adjudication context,” Bostwick said in an email. “That background will give her an advantage in ensuring that the Office’s policy objectives are implemented in a way that can withstand judicial review.”

Retired chief judge of the Federal Circuit Paul R. Michel points to a current lack of coordination and a disharmony between the various bodies that operate the patent system in the U.S.

He said changes made by the U.S. Supreme Court, Congress, and the agency without working together have disincentivized innovation and hurt the country’s competitive edge.

“The arrival at the PTO of Kathi Vidal provides a basis for some hope that the coordination between the PTO and the Federal Circuit will get much better,” Michel said.

Broad Perspectives

Throughout her career, Vidal has worked in many different aspects of the patent world aside from the Federal Circuit. Early on, she helped shepherd inventors through the patent application process. Since then, she has represented both patent owners and accused defenders in court and before agency tribunals, and supervised younger attorneys in these roles as well.

Being well-rounded is an advantage for the head of the agency, Lee said.

“The broader one’s perspectives on innovation and our intellectual property system,” she said, “the better one can appreciate the myriad of competing, yet legitimate, interests of the many stakeholders in our IP system, and the better one can implement balanced IP policies supportive of the innovation we all desire.”

With such a wide range of points of view, Vidal “can provide important guidance to the examiners as well as the PTAB judges on how to do things not only better, more rigorously, more objectively, but also in a way that’s more coordinated with the realities of the patent system and the operation of all these other forums,” Michel said.

Michel also suggested Vidal can be influential with Congress in shaping patent policy and with the Supreme Court when the agency is asked to weigh in.

“To me, Vidal presents the possibility of a sea change, a complete new chapter in patent law as a matter of policy and theory and actual day-to-day practical implementation,” Michel said.

To contact the reporter on this story: Perry Cooper in Washington at pcooper@bloomberglaw.com

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