USPTO Pick Touted By Attys, But May Face Senate Fight

The nomination of Winston & Strawn LLP partner Kathi Vidal to lead the U.S. Patent and Trademark Office was welcomed by observers who said her patent experience should give her insight into how to improve the office, though two key senators appear divided on the pick.

In President Joe Biden's announcement of Vidal's nomination on Tuesday, he pointed to her two decades as a patent litigator, background as an engineer at Lockheed Martin and General Electric, and her work with organizations aimed at advancing women in IP and providing opportunities for junior attorneys.

Sarah Guske of Baker Botts LLP, who briefly worked on a matter with Vidal last year, said that combination of experience makes her "a very sound choice."

"I think that her nomination is a solid one from the administration. She's got the right mix of experience within the IP and patent world," Guske said. Having represented clients as both plaintiffs and defendants in patent cases, Vidal "might also bring a balanced, practical perspective for how policies play out on both sides," she added.

Vidal now faces a hearing before the Senate Judiciary Committee, and the two leaders of the panel's IP subcommittee had notably different reactions to her nomination.

Subcommittee chairman Sen. Patrick Leahy, D-Vt., congratulated Vidal in a statement and said he looked forward to hearing about her ideas for "continuing to improve patent quality while curbing abuse of the patent system" and "expanding access to the patent system to Americans from all backgrounds."

"It is critical for the agency to have a permanent leader in place who will support its mission of promoting American ingenuity and competitiveness," Leahy said.

In contrast, the office of the ranking member of the IP subcommittee, Sen. Thom Tillis, R-NC, said in a statement that he "has been clear from the beginning that any nominee for PTO director will have to commit to continuing the reforms of the last administration and to being a strong voice for innovation and inventors."

"Anyone who fails to do that won't get his vote. He looks forward to reviewing Kathi Vidal's record and seeing if she can make those commitments and pass that test," the statement said.

The statements suggest that Vidal's confirmation hearing might focus on policies implemented by previous USPTO Director Andrei Iancu, such as providing more discretion to the Patent Trial and Appeal Board to deny petitions challenging patents, and issued guidance seen as making it less likely that patent applications will be rejected for claiming ineligible subject matter.

Tillis has urged the White House to pick a director who will retain those policies and "ensure the USPTO doesn't return to being viewed as a 'death squad.'" Leahy has said Iancu "took steps to undermine" the America Invents Act, and that the next director should focus more on ways to "weed out poor-quality patents."

When Vidal faces the committee, "she's going to be grilled about all of these items, and I think she certainly has the experience to be able to address them," said Emer Simic of Neal Gerber & Eisenberg LLP. "But I expect she will be tight-lipped as to her personal views."

She added that with respect to the PTAB's discretionary denials, "as the new PTO director, Vidal will have the power to either reverse ... or extend that policy, so it remains to be seen what she'll do, but she's certainly in a very interesting spot."

Former Federal Circuit Chief Judge Paul Michel said in an interview on Tuesday that it's not clear from Vidal's past statements or activities how she might address the issues the senators have raised if she becomes USPTO director, and the confirmation hearing might not make it clearer.

However, Judge Michel, who earlier this year publicly suggested Vidal as a nominee to the Federal Circuit, said that "her experience and track record as a top IP and patent litigator is very strong and impressive." Her technical skills and experience as managing partner of Winston & Strawn's Silicon Valley office will be beneficial in leading the patent office, he added.

Yet, he noted that managing a law firm is different from managing a government agency with thousands of employees, many of whom are unionized, so "that'll be something she'll have to learn on the job," much as Iancu, who had been an attorney at Irell & Manella LLP, had to do.

The selection of a patent litigator with a diverse range of clients suggests that "this is someone who appreciates both sides, so I think that makes her an attractive candidate," said Scott McKeown of Ropes & Gray LLP.

"You want someone that knows the system and has been in the system and seen the pitfalls and is aware of some of the things that need to be fixed," McKeown said.

In her work as an attorney in Silicon Valley, Vidal has represented a number of Big Tech companies, including Cisco, Dell, SAP and PayPal. But Jason Sobel of Brown Rudnick LLP said, "I wouldn't read too much into any of the clients she's represented and what their positions have been."

"I'm sure she's a zealous advocate, and she's advocating for her clients," he said. "Now she has the opportunity to use her own experience to set policy."

Sobel said he was pleased to see that Vidal has represented both patent owners and accused infringers in cases involving the contentious question of patent eligibility, so "she should have a very firm grasp on an issue that is front and center right now."

Vidal's work for the tech industry, which often takes positions that are viewed as hostile to patents, may "give some people pause that she will be overly sympathetic to the complaints of big tech," Judge Michel said.

The USPTO director is "running a national organization on behalf of the people of the country and the whole government," he said. "So they've got to be strong and steady and not let their sympathies or past loyalties impair their judgement or their actions, and obviously it can be done."

The USPTO has made an effort in recent years to improve diversity in the patent system, and that has been a focus for Vidal. She is an advisory board member for ChIPs, a nonprofit that connects women in technology, law and policy, and if she takes office, she would become the second woman ever confirmed to lead the patent office, after former President Barack Obama appointee Michelle Lee.

"As a female patent practitioner, it's wonderful to see another woman appointed to a senior leadership role in patent law," Simic of Neal Gerber said. "It's not just that she's a woman, she's actually led diversity efforts on her own prior to this role. So I think we can expect to see further efforts in that regard when she's confirmed."

Source: www.Law360.com

Editor：IPRdaily-double