Bernard Knight, known throughout the industry simply as “Bernie,” was an important part of “Team Kappos” during what many are already referring to as the “Golden Years” of the United States Patent and Trademark Office. Knight has a resume full of government service, rising through the ranks to become Acting General Counsel of the Treasury Department, and then General Counsel of the United States Patent and Trademark Office during the Kappos era. That means that he was one of core group of leaders tasked with creating and then implementing the rules of practice necessitated by passage of the America Invents Act (AIA).
In September 2013, Knight left the United States Patent and Trademark Office. I bumped into him shortly thereafter and he agreed to go back on the record with me for an interview, which took place on December 16, 2013. To read my first interview with Knight please see Exclusive Interview: USPTO Attorneys Bernie Knight & Ray Chen.
Knight is now a partner in the Washington, DC, offices of McDermott, Will & Emory, where he focuses his practice on complex patent litigation matters. Knight advises clients on intellectual property cases before the United States Supreme Court, as well as engaging in oversight on patent and trademark cases before the Court of Appeals for the Federal Circuit and the district courts.
There was nothing off the table, so to speak, in this interview. We discuss how and why he choose McDermott, as well as what it was like working for David Kappos and working with Judge Ray Chen when he was Solicitor at the USPTO. We also discuss the future of the Patent Office, the appointment of Michelle Lee to be Deputy Director of the USPTO, substantively what the USPTO was trying to do with respect to post grant procedures, the new ethical rules applicable to Patent Attorneys and Agents, and a variety of other issues.
Without further ado, what follows is part 1 of my 2-part interview with Bernie Knight.
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QUINN: How did you decide, and when did you decide, to get out of the PTO and how did you manage landing here?
KNIGHT: It all started when Dave Kappos announced that he was leaving the USPTO. I thought that would be a good time for me to really start thinking about whether or not I might want to leave the USPTO. There were two reasons for that. First, it was an excellent experience for me to work with Dave and Terry Rea. Implementing the America Invents Act was a huge challenge and we were able to do it on time. That was no small task since the AIA was the largest change in the patent system in the last 50 years. I like new challenges and I knew that if I stayed at the USPTO it would be really hard to top that experience.
Leaving a great job in government and moving to the private sector is a big transition. I settled on joining McDermott, Will and Emery for two main reasons. First, I was and am impressed with the people and the firm culture. Jeff Stone, the co-chair of the firm, Peg Warner, Sarah Columbia, the head of the IP Litigation, and Mark Itri, head of the IP Prosecution, Transactions and Strategy were all committed to my successful integration into the firm and that was important to me and to them. I also was impressed with their honesty about what it would be like to transition from government to the private sector. They were all very forthright in their representations to me. Now that I have started, the McDermott team has spent a lot of time and resources helping me to get off to a good start. I’m very lucky because now that I have been at the firm for four months, I have a good sense that this is the right place for me. Second, McDermott is the perfect fit for my work because we not only have a great patent litigation practice but we also have a very sophisticated patent prosecution practice. And when you have both a strong litigation practice and a strong prosecution practice, it sets you up perfectly to handle inter partes review, post grant reviews, and covered business method proceedings.
QUINN: What were your thoughts when you first heard Ray Chen was nominated for the Federal Circuit?
KNIGHT: I was delighted for the patent system and the USPTO. It was great for the associate solicitors to see one of their own become a Court of Appeals judge, and it was a great boost for the General Counsel’s Office. I thought it was really a perfect choice by the President for several reasons. First, I worked with Ray a lot when I was the General Counsel at the USPTO. Ray is of the utmost integrity; he always does the right thing. That’s an important quality for a judge. Second, he is very smart and understands complex legal issues. And third, Ray has a good understanding of both patent and trademark law. I thought that Ray handled all the complicated intellectual property issues that we worked on at the USPTO with a lot of insight and wisdom. He also has a terrific sense of humor, which I’m certain that the other judges and his clerks enjoy.
QUINN: A lot of people are already referring to the Kappos Administration as the “Golden Years.” You probably haven’t had a lot of time to maybe look back and reflect on it. But was there a sense as you’re going through all this, as you’re getting all the rules together, the proposed rules and then going through the comments and drafting the rules, was there any broader sense that you guys were really playing a part of history?
KNIGHT: There was, actually. We knew at the time that we were creating something from scratch when you look at the post grant proceedings. The covered business method and post grant review proceedings had never existed before. And although inter partes review replaced inter partes reexamination, the whole process was new. So we were at the time very aware that we were charged with a very important task of implementing the America Invents Act and we were always aware when we were going through all of those comments that you spoke about that we wanted to make the patent system better. We would look at all the public comments and one of the primary questions we would ask was: if we make the change as suggested in this comment, is it going to make the patent system better and why?
QUINN: With respect to Terry Rea, I was disappointed that she was not nominated to become the Director. I know a lot of attorneys in the city were equally disappointed. She’s well you know, she’s incredibly well respected, a former President of the AIPLA. She was and remains very connected with the bar. I think folks in the industry have concerns. You and Judge Chen and Terry and Dave are all gone. Where do we go from here?
KNIGHT: You bring up some really good points, Gene. And I feel honored to have been part of that golden team and I owe a lot of thanks to Dave Kappos for actually picking me to be his General Counsel. Let me start out by saying that there are great leaders still in place at the USPTO. Peggy Focarino, the Commissioner for Patents, does an outstanding job managing the patent organization. And Debbie Cohn, who’s the Commissioner for Trademarks, does an excellent job leading the trademark organization. Tony Scardino is an excellent Chief Financial Officer. He’s one of the best I’ve ever worked with in that role and I’ve worked at several agencies. Fred Steckler is the best Chief Administrative Officer that the USPTO has ever had. Nate Kelley worked his way up from being a patent examiner to Solicitor. That is a great accomplishment, and he will make an outstanding Solicitor. Maybe a future judge? Will Covey has revitalized the Office of Enrollment and Discipline and I’m proud of the great job that has done as the Acting General Counsel. So, the agency is in solid hands and I think that it will do great moving forward.
QUINN: I agree. I love all the people in the Patent Office. I have great respect for all the folks that you mentioned, and more. Bruce Kisliuk, and Drew Hershfeld, and so many others. Andy. They’re all great. And they’re hard working and I think the Patent Office, I think you’re right, has got an awful lot of really good people that still remain. The question, I guess, is this: which direction do you see the Patent Office heading? And let me just throw it out there because I’m dancing around the question. What direction will the Patent Office go under Michelle Lee. I’ve heard a lot of good things about her. People think she’s very bright and she’s very capable. Yet I hear a lot of attorneys voice concerns. And maybe it’s just because everybody liked Terry so much that there was an understandable disappointment.
KNIGHT: With respect to Michelle Lee, I worked with Michelle quite a bit when I was General Counsel and I can tell you from my experience working with her that she is a very bright lawyer. She is “on task,” as I like to say. I think that you will see some good initiatives under her tenure. She’s also a great person to work with. Terry Rea was one of the best bosses that I’ve ever had. She would have been an outstanding Director and really should have been nominated by the Administration to be the Director of the USPTO. I’m disappointed that she wasn’t. Under her tenure, the USPTO became the #1 place to work in the federal government in spite of sequestration and pay freezes. That is no small feat. She was a great leader and always did what was right. For example, when faced with difficult decisions regarding personnel issues, she always did the fair thing and was very compassionate and interested in the welfare of every USPTO employee. In addition to that, Terry is a very smart manager. She’s well respected by the patent bar, and is well versed in both domestic and international IP issues. Politics are politics as they say, and Terry landed very well with her former firm. She and I are good friends and she has been very helpful to me.
QUINN: I would agree with that. And I’d go maybe a step further. Let’s face it, whoever gets that job next has got enormous shoes to fill. Kappos was enormously well respected, a great guy, very likable, extremely knowledgeable. He apparently never slept. He was always working for the system. But Terry was well-known, well liked and was Deputy to Kappos. So I wonder whether the criticism has more to do with disappointment about Terry not being nominated and less to do with who Michelle Lee really is as a person and leader. Do you think that’s a fair assessment?
KNIGHT: I think there are always people who are quick to criticize. And I understand the fact that criticism makes for really good news. But I have to tell you that I think that in those situations Michelle is being treated unfairly and I don’t know why it is but it’s really not appropriate and it’s not justified either. And we’re kind of in a situation now where we have two great people. We had Terry who really should have been nominated to be the Director. And we have another great IP person, Michelle Lee, who is going to be the Deputy Director. And it might have been a really great team to have the two of them together.
QUINN: It would have been historic, right? If that had happened you would have had four women in the top USPTO positions as Director, Deputy Director, Commissioner for Patents and Commissioner for Trademarks. It would have been an historic moment and I think it was a missed opportunity. But beat that horse, so let’s move on.
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QUINN: Shifting gears, what do you think are the characteristics of the person who should fill those shoes that you left? If you were looking to hire your replacement.
KNIGHT: I would look for several qualities. The first quality is that you’ve got to be a really good manager of the legal staff and a great collaborator with the other USPTO executives. On top of that you’re also managing relationships with the White House, the Commerce Department, AIPLA, IPO, and the ABA. Next, you have to be able to work with the Solicitor General’s office at the Department of Justice with respect to Supreme Court cases. It’s important that the patent bar be heard on those cases that can dramatically alter many business models that rely on intellectual property. Sometimes you have to disagree with the position of the Solicitor General’s Office or other government agencies, and you have to know how to do that without ruining the relationships. So, the ability to effectively manage both your subordinates and your colleagues at other agencies is very important for the agency and the patent, trademark and copyright communities. The second necessary quality is that you have to have an understanding of intellectual property law, including patent, trademark, and copyright law. On top of all that, you’ve also got to have an understanding of the laws that relate specifically to the government. There are several laws that apply specifically to government agencies whether it’s the ethics rules or what you can spend your money on, or specific rules with respect to hiring people and you’ve got to have an appreciation for all those rules as well. Finally, I think I would look for someone who has the ability to represent the agency in its dealings with the IP bar and trade associations and to speak at various conferences and other events. The General Counsel has to be able to explain the PTO’s position in a way that people can understand and appreciate.
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QUINN: I heard something the other day, and maybe you could shed some light on this. Because I didn’t realize this was the case. From an organizational chart standpoint the Board reported to you in your office, the Office of the General Counsel. Is that correct?
KNIGHT: When I first got to the PTO the Board reported to me. And then it was changed for the Board to report to the Deputy Director.
QUINN: All right. So that’s not the case anymore?
KNIGHT: It’s not the case. And the reason for the change was that when appeals are made from the Board to the Federal Circuit, the General Counsel has to be able to disagree with the Board and not defend a case where it’s appropriate not to do so. It’s really hard not to defend the Board if you are their supervisor.
QUINN: And I know you did take that position on several cases at times where you just decided there was no way that this could be justified.
KNIGHT: Exactly. We had many, many difficult cases when I was there and Judge Chen was there as Solicitor. Sometimes we would collaborate with the Board on difficult issues and help with training. We also had some tough Supreme Court and Federal Circuit cases, including the Myriad, Prometheus, and CLS Bank.
QUINN: Well, a couple of those briefs you and Judge Chen didn’t sign on to, correct?
KNIGHT: Well, there’s one we didn’t sign and that was the Myriad brief.
QUINN: Did that create any animosity?
KNIGHT: Well, I would say that people in the Solicitor General’s Office were not very happy about it. And I actually at the time had to get on the phone with the Secretary of Commerce to discuss why my name was not going to be on the brief.
QUINN: But at the end of the day, and I think we talked about this back when I interviewed you last, everything was okay because you were basing that decision on what you viewed as your ethical obligation as an attorney, right?
KNIGHT: Right. Good memory. Exactly. Those are hard cases and I guess, Gene, that’s another important quality for the next General Counsel. You have to be able to do what’s right for the patent system and the USPTO. And sometimes that requires you to take a position that’s contrary to what other people want you to take. But you have to have the confidence to stand your ground. That can be a difficult dance.
QUINN: And I know in that first area we spent reviewing you and Judge Chen together talked about the ethics issues. Because they’ve always fascinated me talking to government attorneys because of the issue of who the client is. Not to rehash that interview, but now that you’ve been out in the private sector after just leaving from the General Counsel’s chair, have you spent any time recalibrating or considering any of these ethics issues or has anything presented itself that made you stop and think oh, I have to handle this a little bit differently because now I have a different ethical obligation?
KNIGHT: Although the perspective may be a bit different, you are always concerned about ethics as a lawyer. Now that I’m in private practice at McDermott Will, and Emery, I still do what’s ethically appropriate. That hasn’t changed. It’s what the firm requires as well. McDermott has a very robust ethics program. The difference now is that I’m advocating positions on behalf of clients and that’s a lot different than when I was at the USPTO. At times, there can be some tension between what is best for the USPTO and what is best for the United States. Some of the issues that come up in cases can affect other agencies as well. For example, the level of deference that should be given to the USPTO can have implications for other federal agencies. And so I don’t have that additional layer to consider, but the ethics are a part I think of every lawyer’s life, and I’m sure it’s a part of your practice as well.