On September 5th, the U.S. Senate officially received the nomination of Andrei Iancu to serve as the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. The nomination was referred the same day to the Senate Judiciary Committee. There is growing speculation among Capitol Hill watchers that the Judiciary Committee may soon be ready to hold a nomination hearing to vet Iancu’s credentials to serve as USPTO Director, perhaps as soon as this month. Although there’s a strong chance that the hearing would focus on recent developments like the Allergan-St. Regis Mohawk Tribe patent arbitrage deal, the hearing will be the patent world’s first true glimpse into Iancu’s vision for the role of the USPTO in promoting America’s innovation economy.
Much of Iancu’s education and experience in his legal practice, including his time as managing partner at Irell & Manella LLP, has been publicized in profiles of Iancu that have come out since his nomination to the USPTO Director position by the Trump Administration announced in late August. Some additional details have begun to emerge thanks to a public response to a questionnaire submitted by Iancu to the Senate Judiciary Committee. This filing and attached documents help to flesh out many of the details surrounding the patent attorney’s experience as well as his viewpoints on certain trends affecting patent system stakeholders as outlined in articles and speeches given by this individual.
Born April 1968 in Bucharest, Romania, Iancu completed his master’s in mechanical engineering in 1990 at the UCLA School of Engineering; the year prior, he began working as an engineer with Hughes Aircraft. Iancu would turn towards legal studies during the early 1990s and completed his Juris Doctor degree at the UCLA School of Law in 1996. Iancu joined Irell & Manella in 1999 and since 2013 he has also served as a member of the board of directors at Los Angeles’ Sinai Temple. At Hughes Aircraft, Iancu was a Hughes Master Fellow and a recipient of the Malcolm R. Currie Innovation Award. While at UCLA Law, Iancu was a member of the Order of the Coif and a recipient of the Melville B. Nimmer Copyright Award. During his tenure at Irell & Manella, Iancu received industry recognition from Chambers USA, Intellectual Asset Management, California Lawyer, The Best Lawyers in America and various other legal publications and California-based media outlets.
Iancu has been a member of the California State Bar since December 1996 without any lapses. Since 1998, he has been admitted to practice in front of the USPTO. Iancu has also been admitted to the bar for practicing in front of various district courts and circuit courts of appeal, including the Central District of California, Northern District of California, Southern District of California and Eastern District of Texas as well as the Ninth Circuit and the Federal Circuit.
Many stakeholders in the U.S. patent system will likely be interested to know what Iancu’s thoughts are regarding patent validity challenge trials in force at the Patent Trial and Appeal Board (PTAB). For instance, in 2016, the Journal of the Patent & Trademark Office Society published an article Iancu wrote with two other authors on indefiniteness in inter partes review (IPR) proceedings. This article discusses issues which PTAB panels have had in instituting IPRs because of the indefiniteness of challenged claims, a situation which could negatively impact either the patent owner or the petitioner. The article includes a proposed framework for dealing with such problems of indefiniteness, including the PTAB soliciting both parties in a case to brief the panel on the indefiniteness issue and then render a final written decision which can be appealable.
Back in the fall of 2012, during the early days of the implementation of the America Invents Act (AIA) of 2011, Iancu was a co-author of an article published by the AIPLA Quarterly Journal looking at IPRs as the “new normal” and the impacts of the new pathway to patent validity challenges. As the article concludes, IPRs have completely obviated certain aspects of the reexamination process while introducing features which “range from helpful to arguably detrimental.” In recent years since the publication of this article, the sense of IPRs as detrimental has been supported by incredibly high rates of claim invalidation which is due in part to a lack of a code of conduct which would require judge recusal in certain cases. Iancu’s 2012 article notes that while new features like discovery might be beneficial “at first blush,” it would take time to tell whether IPRs were an improvement over reexaminations. Many stakeholders in the U.S. patent system are no doubt certain as to whether IPRs have proven to be beneficial.
The patentability of software continues to be an area of much debate in the U.S. patent system and some of Iancu’s views on the patentability of software inventions are evident in a February 2008 article on the subject published by the Journal of the Patent & Trademark Office Society. The article, which again lists Iancu as a co-author, notes that the intangibility of software has led to controversy over the concept of software patents. The article concludes that, while Beauregard claims, which are directed at computer program products, could very well satisfy basic patentability requirements under 35 U.S.C. § 101, those same claims could well fail on novelty under 35 U.S.C. § 102 or obviousness under 35 U.S.C. § 103. Federal court activity cited in the article led the authors to conclude that Congress will need to take action to “rescue the patentability of computer programs – if that is deemed desirable.” The changing world of Section 101 patentability has been a topic on which Iancu has spoken more recently. It was the subject of a talk he gave at the American Conference Institute’s 4th Annual Paragraph IV Disputes Master Symposium in Chicago in 2016
The high percentage of U.S. patent cases which are filed in the Eastern District of Texas has been a subject of hot debate in recent years. In the spring of 2011, the SMU Science and Technology Law Review published an article co-authored by Iancu which provided analysis on the real reasons as to why patent litigation is driven towards Eastern Texas. Despite criticisms heaped upon Eastern Texas juries and their supposed ignorance on patent matters, the article concluded that there is little evidence that the jury pool in Eastern Texas is a primary draw for patent plaintiffs. Rather, a high proportion of cases actually going to trial and low summary judgment win rates appeared to be bigger factors. Plaintiffs may also find Eastern Texas to issue more accurate rulings as decisions appealed from this district are affirmed by the Federal Circuit at a high rate.
Iancu’s response to the Senate Judiciary Committee’s questionnaire indicates that 100 percent of his practice has focused on civil litigation, about 75 percent of which has been litigated in federal district court; the other 25 percent has been litigated in front of administrative agencies. In about 10 cases that Iancu litigated to a final verdict, two-thirds reached a non-jury verdict while the other third received a verdict from a jury. Listed among his significant legal activities is his involvement with a legal team representing BlackBerry on intellectual property issues connected to that company’s $777 million investment in the Rockstar Consortium, a group made up of tech companies investing a total of $4.5 billion to acquire a substantial majority of the patent portfolio held by Nortel Networks.
We have previously reported on his successful representation of TiVo against infringers, and the fact that he represented the challenger in Ariosa v. Sequenom. See Trump nominates Andrei Iancu.
The fact that Iancu represented TiVo, a patent owner, against big tech in Silicon Valley will undoubtedly lead to a warm reception in certain patent owner segments of the patent community. On the other side of the coin, Iancu’s work in the biotechnology sector will likely be problematic for many within that community. Iancu represented Ariosa Diagnostics in patent litigation against Sequenom, the patent owner. The Federal Circuit concluded that the discovery at issue in the claimed invention was “a significant contribution to the medical field,” but that did not matter insofar are patent eligibility was concerned. Ultimately, the Federal Circuit ruled the claims to be patent ineligible.