Kathi Vidal Floated as Possible USPTO Director Nominee

By Gene Quinn & Eileen McDermott
October 4, 2021

“As a woman, [Vidal] would meet the Biden Administration’s preference for gender diversity, and as a litigator, she would bring experience on perhaps the most contentious issue facing the next Director: the Patent Trial and Appeal Board (PTAB).”

Kathi Vidal

Kathi Vidal

According to sources on the Hill, Kathi Vidal of Winston & Strawn is now high on the list of potential nominees for a new U.S. Patent and Trademark Office (USPTO Director). Several sources IPWatchdog has spoken with say the Biden Administration is openly floating her name, and she could be named as President Biden’s nominee for the USPTO post within a matter or weeks, or even days, if there is not substantial pushback.

Checking All the Boxes

Vidal is a patent litigator and managing partner of the Silicon Valley office of Winston & Strawn, where she has been since 2017. Prior to that, she was with Fish & Richardson for 20 years, serving as Global Head of Litigation, and also sat on the firm’s Management Committee. As a woman, she would meet the Biden Administration’s preference for gender diversity, and as a litigator, she would bring experience on perhaps the most contentious issue facing the next Director: the Patent Trial and Appeal Board (PTAB).

Vidal represents high-tech, medical device, consumer product, and financial companies. She was part of the team that represented The Chamberlain Group in its fight at the Federal Circuit and subsequent petition to the Supreme Court to get its patent for a garage door opener recognized as patent eligible. She also argued and won the SAP America, Inc. v. InvestPic case for SAP at the Federal Circuit, in which the court held that InvestPic’s patent claims at issue were patent ineligible as abstract because “[t]heir subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations.” Thus, her positions as an attorney while advocating for clients are on both sides of the patent eligibility issue.

Vidal’s background is in mathematical physics and programming, and she has bachelor’s and master’s degrees in electrical engineering. She worked for five years as a systems and software design engineer with General Electric (which later became Lockheed Martin), graduated from the Edison Engineering Program there, and “designed one of the first leading-edge expert systems (neural networks, fuzzy logic, expert systems) for fault diagnostics in aircraft.”

Vidal’s name has come up before in IP vacancy discussions. Retired Federal Circuit Chief Judge Paul Michel mentioned her  as someone who would be “ideal” for the next CAFC judge pick. She also has been a leader on diversity issues, which is known to be a priority of the Biden Administration. According to a Winston & Strawn press release from 2017, Vidal “is one of only four law firm advisory board members for ChIPs, a non-profit advancing women at the intersection of law, technology, and regulatory policy.” She also founded the NextGenLawyers.com website, a joint initiative between ChIPs, the Federal Circuit Bar Association, and Fish & Richardson. The program “aims to ensure courtroom opportunities for up-and-coming litigators and to help increase diversity and inclusion in the profession.” Vidal also mentors women from underdeveloped countries through the State Department’s mentorship program.

While it is impossible to tell what Vidal’s ambitions would be as USPTO Director, she clearly has a strong IP background and intimate knowledge of some of the most pressing issues IP practitioners and inventors are dealing with today. And an endorsement from Judge Michel for a lifetime appointment to the Federal Circuit will almost certainly carry great weight in the minds of many senators and industry stakeholders.

Not There Yet

Even if President Biden nominates Vidal to be the next Director in the coming days, with negotiations deadlocked among progressive and moderate Democrats over the Biden domestic agenda, it seems virtually certain that it will be February or March 2022 before any action is taken to confirm a nominee. In the meantime, Commissioner for Patents Drew Hirshfeld continues to lead the Office with the wordy title, Performing the Duties and Functions of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 23 Comments comments. Join the discussion.

  1. Curious October 4, 2021 4:58 pm

    From what I read, she looks like a good candidate.

  2. Pro Se October 4, 2021 8:25 pm

    This lawyer just threatened me with an IPR.

    So, as you’d an imagine, seeing this is a bit jarring…

    So am I to expect that upon an appointment, she’s not killing all of my existing, or stopping all of my pending patents?

    She’s not going to inform her clients of my pending inventions?

    How about a real engineer as director?

    Why is the US the only country in the world -lacing a lawyer to run an engineering and science focused department?

    Does a lawyer run NASA or the NSA?

  3. Max Drei October 5, 2021 6:26 am

    Gosh, after the new face at the Federal Circuit, here (apparently) is another impressively well-qualified, well-balanced candidate for public office, one with vast experience that dovetails perfectly with what the job rwequires. How refreshing! What’s not to like?

    Kudos to the new President and his team. Credit where credit’s due, I say. Is selfless public service becoming, once again, something worthy, something to respect, something to be proud of?

  4. B October 5, 2021 11:53 am

    She’s been on the wrong end of CAFC dishonesty in Chamberlain and may be a sympathetic character for Alice-Mayo. Then again – the InvestPic decision is the biggest piece of dishonest trash ever published by the CAFC, and cannot be reconciled with anything but insanity. Ergo – its hard to tell where Ms. Vidal’s sympathies lie.

    I don’t know anything about Ms. Vidal, but I do trust Judge Paul Michel.

    The bad thing here is the emphasis on “diversity.” Ms. Vidal appears competent in her own right, but the tone of her appointment makes it sound as if diversity, not her competence, is the reason for the appointment.

  5. B October 5, 2021 12:02 pm

    @ Max Drei,

    “How refreshing! What’s not to like?”

    Refreshing? Really? Did Iancu brown you off or was it the CAFC judges appointed under Obama?

    As to what’s not to like – the answer is we don’t know her agenda. – same as Cunningham. I’d like to say I’m optimistic, but I’m not based on past experience. Maybe Vidal will be great, but if she’s 1/2 the Director Iancu was – I’ll be thrilled

  6. M. David Hoyle October 5, 2021 12:07 pm

    Does anyone really think that any patent attorney from Silicon Valley is not a rerun of the Michelle Lee days?? Honestly?? Here are some of Winston’s Select clients:

    Abbott Laboratories
    Cisco Systems, Inc.
    Dell Inc.
    Discover Financial Services
    Google Inc.
    JP Morgan
    Monsanto Co.
    Motorola Mobility LLC
    Motorola Solutions, Inc.
    National Football League Players Association
    Nissan
    Omnicare, Inc.
    Panasonic Corporation
    Philip Morris USA, Inc.
    Tate & Lyle
    The Charles Schwab Corporation
    Verizon Wireless and Verizon Communications
    Wells Fargo Bank

    And you think she will suddenly “get religion” and do whats right??? Not going to happen. Her nomination must be stopped in its crib or else we are headed back to Michelle Lee part two.

  7. Night Writer October 5, 2021 1:08 pm

    The other issue to is the corruption highway.

    If her clients are all these SV firms, is she going to take the directorship and then go work for a SV firm?

    Watchdog groups say this is one of the biggest sources of corruption in the US government.

  8. Max Drei October 5, 2021 2:26 pm

    What is the world coming to? What is it with you folks? If there is a vacancy for a brain surgeon in my local hospital, I would hope that the vacancy is filled by a brain surgeon of vast experience in brain surgery. If the USPTO has a vacancy for a Director, I would hope that the post is filled by somebody with relevant direct, cutting edge experience in patent law, loads of it, just as much on each side of the divide between patent owners and those on the receiving end of patent rights.

    I’m old-fashioned, but it seems to me that any personal points of view the candidate holds, on issues like economics or sociology or morals or ethics, is very much secondary to the primary question whether they are capable of doing the job. Or is all integrity lost, these days. Has everybody sold out to the highest bidder, the lobbyist with the deepest pockets? Until I’m forced to recant, I will persist in thinking not.

  9. B October 5, 2021 3:02 pm

    @ M. David Hoyle “Does anyone really think that any patent attorney from Silicon Valley is not a rerun of the Michelle Lee days?”

    I’m absolutely convinced that 2/3 of the regular posters share your fears

  10. B October 5, 2021 4:29 pm

    @ Max Drei “I’m old-fashioned, but it seems to me that any personal points of view the candidate holds . . . is very much secondary to the primary question whether they are capable of doing the job.”

    Dude, no one here cares about anything but her job. It’s what she thinks her job is that have people nervous. No one here want another Michelle Lee

  11. CV October 5, 2021 4:47 pm

    Max, If you want a brain surgeon, look for a brain surgeon. The USPTO is not the CAFC. What experience does the candidate have in patent and trademark prosecution? After all, that is what the vast majority of the agency does.

    What experience do they have in running a large organization? There is much more to leading the USPTO than having patent litigation experience. What about managing budgets, IT, international negotiations, labor unions…

  12. Capt. Obvious October 5, 2021 6:55 pm

    “The bad thing here is the emphasis on “diversity.” Ms. Vidal appears competent in her own right, but the tone of her appointment makes it sound as if diversity, not her competence, is the reason for the appointment.”

    Have you been asleep since last November?

  13. Josh Malone October 5, 2021 9:10 pm

    The USPTO Director controls the ownership of more than a trillion dollars in assets. It is too much power.

  14. MaxDrei October 6, 2021 7:15 am

    We agree. The post of Director requires experience of patent litigation on behalf of patent owners and on behalf of those on the other side of the litigation. And it requires high level management skills. I do not agree that it needs years of direct experience prosecuting patent applications at the USPTO. I mean, for the post of Minister of Agriculture, is it vital to have had years of direct experience sorting potatoes, or of production line work in a meat-packing plant? Surely not.

  15. Anon October 6, 2021 8:29 am

    MaxDrei quips, “Until I’m forced to recant, I will persist in thinking not.

    Sadly, there is no such thing as forcing MaxDrei to recant anything.

  16. B October 6, 2021 9:11 am

    @ Capt Obvious “Have you been asleep since last November?”

    I think I’m the one who started that bruhaha

  17. B October 6, 2021 9:21 am

    @ MaxDrei

    Yes, b/c sorting potatoes is so like patent examination.

    You know who would be a great pick for USPTO director? Former Examiner, former Solicitor, former PTAB head, former CAFC clerk Nate Kelley.

    Nate, though, is a white male.

    We can’t have white males appointed in this administration, right?

    This is why I say diversity hiring and promotion is a bad joke where most everyone loses

  18. Max Drei October 6, 2021 4:51 pm

    B: how much high level management experience does your Nate Kelley possess, successfully running a large organisation? If none, does that matter? I would think it is of decisive importance.

  19. B October 7, 2021 1:14 pm

    @ Max Drei

    He’s run the Solicitors office and the PTAB

  20. Night Writer October 7, 2021 1:19 pm

    @17 B

    Setting up a quota system, which is what Biden is in the process of doing, separates us and makes competence secondary to your category.

    The Ds have moved so far left that they are Marxists.

  21. Moderate Centrist Independent October 9, 2021 6:34 pm

    Hearing all the radical rightists here complaining makes it clear that this is the right candidate, just not a candidate the white male supremacists approve of.

  22. B October 10, 2021 4:42 pm

    @ MCI “Hearing all the radical rightists here complaining makes it clear that this is the right candidate, just not a candidate the white male supremacists approve of”

    We’re you banned 2-3 times already

  23. Anon October 11, 2021 10:47 am

    Agree with B on this point. MCI, you appear to not be advancing any point but errant agitation. There is not a single post here in the negative that can legitimately be classified as “white male supremacist.”

    With this tactic of yours (engaging in identity politics) you only cement the views being advanced by Night Writer — even if he chooses the older term of “Marxists.”

    Your posts belies the nature of your entreaties. The candidate may or may not be a good candidate, but your ‘logic’ is spurious and self-damning.

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