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What Will the USPTO Be Like Under Biden’s Nominee? A Sneak Peek into What Makes Kathi Vidal Tick from Clause 8

In a Clause 8 podcast interview from 2019, USPTO Director nominee Kathi Vidal shared her career journey and her thoughts on the state of patent litigation.

Sneak peek - https://depositphotos.com/389604330/stock-photo-word-writing-text-sneak-peek.htmlOn October 26, President Joe Biden nominated Kathi Vidal for Under Secretary for Intellectual Property and Director the U.S. Patent and Trademark Office (USPTO). Vidal is the managing partner of the Silicon Valley office of Winston & Strawn and specializes in patent litigation. If confirmed by the Senate, Vidal will face many challenges as head of the USPTO.

In an interview from 2019 with Clause 8, she discussed her journey to the top of her field, as well as her thoughts about the Patent Trial and Appeal Board (PTAB) being dubbed the “death squads,” patent trolls, and what law firms can do to help innovators without deep pockets.

An Impressive Resume

Over the past two decades, Vidal has become one of the most recognized female patent litigators in America. She is the managing partner of the Silicon Valley office of Winston & Strawn, known for arguing high-profile cases like SAP v. InvestPic case on 35 U.S.C. § 101 (patent eligibility) at the Federal Circuit — where she clerked after law school.

Now, as President Joe Biden’s nominee to head the USPTO, she faces a number of challenges, the first of which is her confirmation by the Senate Judiciary Committee.

If she clears that hurdle, she will bring a strong background in technology to the role: Vidal entered college at age 16, earned two degrees in electrical engineering and even wrote her master’s thesis on AI (in the early ‘90s!). She worked for five years as a systems and software design engineer at General Electric (which later became Lockheed Martin) designing aircraft and aircraft control systems for the U.S. military before she earned a JD from Penn.

She went on to represent both plaintiffs and defendants in U.S. district courts, the International Trade Commission, and at the USPTO itself.

When she first began practicing, “patent law was not sexy,” said Vidal in an interview for the Clause 8 podcast, noting that it didn’t have the reputation it has today — “with all of the monetizing and non-practicing-entity suits.”

The latter will be just one item on Vidal’s docket as head of the USPTO. But you don’t have to wait until Vidal’s tenure at the USPTO begins to read the tea leaves. In 2019, she spoke with Clause 8 about her career journey, her thoughts on the state of patent litigation, and her advice for aspiring attorneys.

From Defense Contractor to Defending Patent Litigants

When Vidal entered UPenn Law, she didn’t initially focus on IP — she thought maybe she’d work toward becoming in-house counsel at GE. At UPenn, she served as editor in chief of the Law Review and clerked for Federal Circuit Judge Alvin Schall.

“I applied to other courts as well, but one of the things that I liked about the Federal Circuit is that all the judges sat in the same courthouse,” she said on the podcast. “That made it very congenial. They often spoke to each other in chambers and it was a really collaborative environment.”

Her clerkship solidified her interest in patent law, which became a natural extension of her passion for technology. Post-law school, she interviewed at a number of firms. She “wanted to be with colleagues that had varied interests and that were really good at what they did,” she said.

“That’s what led me to Fish & Richardson,” a firm specializing in intellectual property law that “really seemed to click with what I was looking for,” she explained. Her electrical engineering background made its Silicon Valley office a perfect fit.

Her early days as a junior associate doing menial work like document review were “a little bit frustrating,” but that meant it was “time to speak up, which I did,” she added.

“My voice was heard. I was given other opportunities and then found I enjoyed patent litigation.”

That was crystallized when the firm was pitching a case that went to trial. She realized that, as an engineer and former Federal Circuit clerk, she “brought things to the table, in terms of analyzing the patents we should assert,” she said. “That’s when I felt like it was really starting to gel.”

Vidal found she enjoyed depositions and trial work, but what really lit her up was “looking at the whole situation and figuring out the best path for success,” Vidal said. “Especially when it’s reinforced, when we … win a trial on a patent I thought we should assert. That gave me a lot of satisfaction. I was adding value and really making a difference.”

And she learned that, although there are comparatively few trials in the patent field, she wanted more opportunities to “get on my feet, communicating with people and explaining things,” she explained.

That took the form of a part-time faculty position at Santa Clara University, teaching a night course in patent law. It was difficult but it got her comfortable with public speaking — which she truly enjoyed. She began accepting invitations to speak at conferences. She found they were a great way to network and raise her profile.

“At that time, I spoke on strategic prosecution from a litigation perspective, so when people heard me speak, they liked the ideas and asked me to work for them,” she said.

That’s when she realized that even as an associate, she could become a “trusted advisor” in the industry — and that business development was not only lucrative but fun.

The first big piece of business she brought to the firm came about because an attorney in a joint defense group (from a competing firm, no less) liked her ideas and kept in touch.

“When they went in-house and they had a litigation, they called me for the litigation,” said Vidal.

State of the Patent System: Fewer Infringement Complaints, More ‘Summary Judgments’

Vidal spent 20 years at Fish & Richardson, overseeing 270 attorneys in its litigation group before she took on her current role at Winston & Strawn in 2017. There, she oversees the firm’s Silicon Valley office and sits on its executive committee.

The last decade has seen a number of significant developments in the field of patent litigation. In her interview, Vidal talked about how firms are adjusting to the number of patent infringement complaints having decreased by about 45% since 2013 and the creation of the PTAB.

In 2013, former Federal Circuit Chief Judge Randall Rader called the PTAB “death squads killing property rights.” During the interview, Vidal argued that, since Rader made those remarks in 2013, statistics show that it’s no longer as easy as it once was to invalidate all of the patent claims in suit at the PTAB.

“I think it’s a really important mechanism for shrinking the size of cases and narrowing the issues,” she said. “Sometimes you can dispose of all of them as the defendant but it’s very rare.”

She told Clause 8 that she thinks that Inter Partes Reviews (IPRs) at the PTAB “are more like summary judgments, in a way. They narrow the issues and then you’re left with maybe the stronger claims.”

Vidal added that the PTAB “has been more lenient about allowing amendments to claims. “So, I think what we’re going to see in the future is moving even further away from that ‘death squad,’” she said.

At the time of the interview, she thought that amendments at the PTAB would become just “part of what litigation looks like: at some point, the claims may be amended, some may be canceled, and then you narrow the case down through summary judgment, through Section 101 motions. Through that process, a case may settle or resolve, or you may go to trial with a more narrow case.”

Vidal said the perception of post-grant proceedings in the legal community has been improved by judges speaking on panels and discussing how IPRs work. “When it comes to the post-grant proceedings, I think one thing that’s helpful is the judges out there in the community talking on panels and discussing what it is they are doing. I think that’s been very positive in terms of the perceptions.”

Vidal also went out of her way to mention the revised Section 101 guidelines issued by USPTO Director Andrei Iancu. She prophetically noted that the “guidelines are interesting in that they are an interpretation of the law as it exists today, and we have yet to see whether the Federal Circuit agrees with that interpretation.”

“There’s a perception that the guidelines will allow more patents than the current law,” she remarked, but resisted predicting how the Federal Circuit would react to the guidance.

Law Firms Should Get ‘Creative’ to Help Protect Patent Holders without Deep Pockets

If you’re a patent owner today, you need deep pockets to ensure you can enforce your patents if they’re threatened. Even if you fight and win, a successful verdict might not even cover your attorneys’ fees. Does Vidal think the legal ecosystem needs to change to protect the interests of solo inventors, entrepreneurs and small business owners?

“I do think it’s unfortunate when smaller entities own patents that are strong, but they don’t have the money to enforce them,” she said on the Clause 8 podcast. “That’s really where patent law should play. Patents should be available to smaller entities that develop technology and want to protect them against big companies.”

To make that happen, she said she would like to see law firms “being more creative with startups.”

“I know that it’s often difficult to take those cases on contingency. Because if you’re really enforcing a patent at the right point in time, you’re enforcing it when a product just comes onto the market and there aren’t the damages to justify a contingency-fee case,” she explained.

“It’s really the case that the startup wants an injunction more than damages. So in those cases, firms could get creative about taking a stock interest in the company or otherwise finding a way to enforce the patents where there’s not a direct contingency-fee win in the future.”

The Joy of Collaboration, Making Systemic Change, and the Pursuit of Passion

At Winston & Strawn and beyond, Vidal wears many hats: litigator, manager, rainmaker, thought leader, board member, investor and mentor, to name a few. They’re all part of the job, and they give her “different kinds of satisfaction,” she said.

“I love the people at the firm. I think anything I can do where I’m collaborating with others brings me joy, because I care about them. I want them to do well. I’m in awe of them and their successes.”

Vidal characterized her collaboration with colleagues as “more of a right-brained joy,” while her left brain lights up when digging into a case, “finding the silver bullet” that promises to either become a solid defense, fruitful complaint or attainable settlement. She gets a lot of satisfaction from simply having built that knowledge and instinct over time, as well as from “bringing home wins, whatever that means for my client.”

Perhaps one of the most rewarding aspects of her career is the pro bono work she has been able to do in her roles at large law firms. Vidal talked about a case in which she  and her colleagues at Winston & Strawn represented a young girl who was going to be expelled from school.

“The associates I worked with thought they saw some racial issues in the way decisions were being made,” she explained. “Now we’re thinking: Is there something bigger we can do? Instead of just helping one-offs [individual pro bono clients], is there something we can do to change regulations so that they’re not so squishy? So that if people do have biases, they can’t be used to influence their ultimate decisions?”

Cases like that one — which can lead to systemic improvements, not just wins on a micro level — spark the most joy for Vidal, who is always looking for ways to “make a bigger impact on more people.”

Doing what she loves has organically led Vidal to the highest levels of her profession. So it’s natural that her advice to law students and young attorneys is exactly that.

“You really need to find out what you’re passionate about and pursue that,” she said.

“I wake up sometimes at three o’clock in the morning and I’m ready to start my day because I come up with an idea and I’m excited about it. I just want to start working on it. If you can find something that gives you that level of passion and energy, pursue it with all your heart. It’s going to take a lot of hard work, but if you’re keeping that in mind — that this is something that gives you energy — it doesn’t feel like hard work.”

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Author: artursz
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26 comments so far.

  • [Avatar for Night Writer]
    Night Writer
    November 10, 2021 02:35 pm

    Meh. The reality is that Biden’s people had a talk with her and to get the directorship she has made promises.

    She will most likely be like what those promises are or Biden’s people will kick her out. So what do Biden’s people want in a director? That is the question.

    My bet is that in one year we all on the good 🙂 will see her as much worse for patents than Lee.

  • [Avatar for Moderate Centrist Independent]
    Moderate Centrist Independent
    November 10, 2021 05:39 pm

    Another bet you’ll lose.

  • [Avatar for Mark Nowotarski]
    Mark Nowotarski
    November 11, 2021 06:53 am

    Eli,

    Great write up. Thanks for your observations.

  • [Avatar for PAUL MORINVILLE]
    PAUL MORINVILLE
    November 11, 2021 09:21 am

    Her discussion on small entities shows she is clueless. Sure some small entities want injunctive relief but others just want a royalty. Nevertheless, to get to injunctive relief, it is necessary to have a product. To get to a product, it is necessary to get investment. To get investment, it is necessary to have a settled property right. But it is not possible to have that settled right because of the PTAB, and also because of the PTAB, patents are franchises like toll bridges.

    She has no experience. And no clue what a patent means to a startup. Maybe she will learn, but as it stands, she will be a disaster.

  • [Avatar for Eli Mazour]
    Eli Mazour
    November 11, 2021 09:26 am

    Night Writer, I don’t disagree with your analysis. Kathi Vidal actually wrote an op-ed praising Lee after her time at the USPTO.

    Mark, thank you!

  • [Avatar for Night Writer]
    Night Writer
    November 11, 2021 09:49 am

    @ Moderate Centrist Independent

    Another? Tell me the ones that I have lost? I make predictions and and stand by them. And you?

  • [Avatar for B]
    B
    November 11, 2021 06:49 pm

    @ MCI “Another bet you’ll lose.”

    I think you’re correct. Besting Michelle Lee as the worst USPTO Director ever is quite a feat.

    Night – you may well lose this one.

  • [Avatar for B]
    B
    November 11, 2021 06:53 pm

    @ Paul “She has no experience. And no clue what a patent means to a startup.”

    Paul – it’s down to Earth statements like this that make me appreciate what you bring to the table.

  • [Avatar for Anon]
    Anon
    November 11, 2021 07:56 pm

    B,

    Do not overlook Dudas…

  • [Avatar for Night Writer]
    Night Writer
    November 12, 2021 06:20 am

    @7 B

    B read the news. Look at the people that Biden has appointed and with the missions that they have been given.

    Money–jack it up as much as possible to get inflation.

    Energy–crash oil production to get the price of oil high so that people have to figure out somehow a new energy source.

    These people are brain dead.

    We should all be very worried given Biden’s (puppet masters) other missions. They seem to think they know what they are doing (and can’t even get ships unloaded) or leave a country.

    Remember (as anon tries to take credit for but I have been saying this longer than he) that patents are under attack from two fronts. The radical left (who control Biden and to some extent are represented by Lemley) and Silicon Valley and big corporations.

    Remember that Biden’s controllers (the radical left) consider patents evil. I’ve heard Bernie Sanders (and Noam Chomsky) talk about patents and he as much said we need to get rid of patents that they are a tool of the elite to take money from the middle and lower class.

    We should be very worried. The next director may take up policies to end patents or cripple them to such extent that we don’t recognize patents anymore as something remotely useful.

    Remember that you are dealing with people that intentional raise the price of oil by cutting US production to encourage alternative energy. (This is a brain dead strategy.)

    Anyway…..we will see. But remember Bernie Sanders’s gang is in charge and they think that patents are evil.

  • [Avatar for Night Writer]
    Night Writer
    November 12, 2021 06:28 am

    Remember too that Biden has said that his goal is to fundamentally change the USA in his first two years so that it can’t be changed back. Permanent change on a new course. That is what he said.

    So we should be worried. Maybe we will get lucky and the backwater of patents will not feel the Biden rushing river of permanent change.

    But we could also get radical change for the worse. Just keep in mind that the radical left is in charge of Biden and they think that patents are evil. We may get statements like patents are racist and a tool of white supremacists to oppress the non-white world. We should all be worried based on what Biden has done in other areas. (Oil, Afghanistan, inflation (money supply), supply chain, and so forth). It is the ugliest record I’ve seen in my life–by far.

    And just remember that Biden’s people set an agenda for the director and we don’t know what that is.

    I hope we get lucky and not much changes. Best we can hope for.

  • [Avatar for Anon]
    Anon
    November 12, 2021 09:18 am

    Remember (as anon tries to take credit for but I have been saying this longer than he) that patents are under attack from two fronts.

    LOL – I really doubt that; and certainly not in the manner or to the degree that I have described the situation.

  • [Avatar for Moderate Centrist Independent]
    Moderate Centrist Independent
    November 13, 2021 05:00 pm

    Just search this and the other blog for any time you said ” I bet “.
    Even B thinks you’re on weak ground.

  • [Avatar for Anon]
    Anon
    November 14, 2021 07:44 am

    MCI,

    Yet again, you seem unable to grasp the points being presented.

    Does Night Writer lose bets?

    Sure. But the nuance you do not grasp is that he is willing to put his bet out there – complete (often) with reasons why.

    This makes whether or not he ‘wins the bet’ a better discussion as to whether or not he should have won his bet.

    Us attorneys (the good ones at least) quickly realize that bets may be lost on BAD judicial decisions, and that our aim is to NOT sit with any such bad decisions, but to ALWAYS being pushing for the eventuality of GOOD judicial decisions.

    In other words, realizing that a situation of “The Scoreboard Is Broken” may well be more important and worthwhile than unknowingly pointing to a broken scoreboard.

    Further, as to Night Writer’s rejoinder in these types of situations, the glaring absence of YOUR prediction (along with cogent reasoning for that prediction) is a glaring call-out of what Peak you have firmly entrenched yourself on.

    Further still, your reliance on “Even B thinks you’re on weak ground” misconstrues the counter point provided by B, in that he was MAKING A JOKE in regards to the high hurdle of past anti-patent leaders of the patent office.

    Your posts continue to demonstrate NOT what you most likely think that you are demonstrating.

  • [Avatar for Night Writer]
    Night Writer
    November 15, 2021 07:33 am

    @13 Moderate

    I’m not going to waste my time with you. I’ve made some excellent predictions that were exactly right including a few Supreme Court cases. The only time I remember being wrong is about layoffs at the USPTO. But it was because the Chinese have filed so many US patent applications, which I did not forsee.

    As anon points out what is glaringly missing from your posts is your own analysis and prediction. You are clearly just a tro ll trying to diminish me because I represent a strong patent system and you don’t want a patent system so rather than discuss the substance you attack me personally.

  • [Avatar for IamI]
    IamI
    November 15, 2021 09:22 am

    The radical left is in charge of Biden? Another Night Writer conspiracy theory run amok, I see.

  • [Avatar for Anon]
    Anon
    November 15, 2021 02:15 pm

    IamI,

    Who in your opinion then is pulling the strings on this puppet?

  • [Avatar for B]
    B
    November 15, 2021 11:11 pm

    @ MCI

    We’ve certainly had our differences, which I would like to set aside, but the reality is that I think we can all agree that there are powerful ideologies and $$SiliconValley$$ at work attacking the patent system.

    The losers are small business and independent inventors.

    My weapon in this struggle is satire with a hint of hyperbole. However, I discover that, with each investigation of a Federal Circuit case, satire cannot be applied to the ridiculous. In such cases satire is reduced to observational humor.

  • [Avatar for Night Writer]
    Night Writer
    November 16, 2021 05:08 am

    @16 IamI

    “Conspiracy theory”? The go to for the far left to deny reality. The test for those that are rational are the policies that Biden has been adopting and trying to adopt. So far, all the policies are pretty far left.

    Not going to waste my time with you IamI. How about you do some work and put down the top 10 things Biden has done or is trying to do and categorize them. People who are still rational have and Biden is pretty far left.

  • [Avatar for Moderate Centrist Independent]
    Moderate Centrist Independent
    November 16, 2021 05:16 pm

    @18
    “agree that there are powerful ideologies and $$SiliconValley$$ at work attacking the patent system.”

    Do you also believe in Jewish space lasers starting fires? Do you believe that the Elders of Zion are behind it all? Because that’s what It sounds like.

  • [Avatar for Moderate Centrist Independent]
    Moderate Centrist Independent
    November 16, 2021 06:21 pm

    @nw
    “I’ve made some excellent predictions”

    You’re a regular legend in your own mind.

  • [Avatar for Moderate Centrist Independent]
    Moderate Centrist Independent
    November 16, 2021 06:25 pm

    B,
    I really don’t have any quarrel with you. I don’t agree with many of the political things you say but you have a right to express them, even if you come off sounding like a fascist to me. There’s plenty of confirmation bias for you here.

  • [Avatar for Anon]
    Anon
    November 17, 2021 10:07 am

    MCI,

    @20 – you display a logical fallacy of a strawman, expanding your opponents argument to something that they never stated (and you don’t ‘excuse’ that fallacy by adding “that’s what it sounds like”).

    @ 21 – you yet again miss the point – see my post at 14

    @ 22 – the use of the term “fascist” betrays your own “confirmation bias,” and you would do far better to pause, look in the mirror and realize where YOU are coming from in your comments. And again, the “sounding like [_] to me” provides no excuse. YOUR frame of reference is simply not an objective one.

  • [Avatar for Particularly Pointing Out]
    Particularly Pointing Out
    November 20, 2021 05:03 pm

    @23

    MCI’s comments hit too close to home for you, Anon.

    Your bristling at the “fascist” term shows just how close it hits home to you, and it’s objectively accurate. It’s an example of your confirmation bias as well as your hypocrisy. You can dish it out to to others but you can’t take it.

    Not that I expect you to see this comment at all because Gene and Eileen cut you and other righties a lot of slack in attacking others but shield you from the comments of others. An example of this blog’s political bias in action.

  • [Avatar for Eileen McDermott]
    Eileen McDermott
    November 21, 2021 09:03 am

    Thanks for your comment PPO. I’d just like to note that a) I’m about as far to the left as they come (and Gene hasn’t fired me yet), and b) I don’t censor ANY comments unless they are blatantly pointless personal attacks that have nothing to do with the articles on which they’re supposed to be commenting, which all too often the comments here are, or they’re racist, sexist, etc., which also happens too often. Stick to the topic at hand instead of using this as a forum to fling insults back and forth and I won’t delete a thing. This basic, schoolyard-level rule is violated by commenters of all perspectives here (though interestingly enough, all men – don’t think I’ve ever had to censor a woman).

  • [Avatar for Anon]
    Anon
    November 22, 2021 11:00 am

    PPO,

    You could not be further from the mark in thinking that MCI’s comments (to someone else) hit too close to home for me. You appear to be to eager to think that B and I are the same person, even as this particular instance of a moniker appears to resemble other users with different monikers. That old adage of a liar thinking that everyone else lies comes to mind. It has been abundantly made clear that B (who has used his real name in other articles) and I simply are not the same person.

    I have shared several times now that during the presidential election cycle, a website called Isidewith.com provides an extremely detailed political self-analysis (hundreds of questions and many-leveled answers, along with the ability to assign personal weights to the question/answer combination). For at least the last four cycles, I have been nearly exactly dead center in that analysis.

    So not, I am not “a rightie.”

    To attempt to deride me as some type of Right Wing extremist is very much a TOO Far Liberal Left tactic.

    I do NOT bristle at the “fascist” term as you would so indicate. I understand the term very well and know very well that is simply does not fit me. I ALSO know very well that those on the Liberal Left seem to not WANT to understand just how authoritarianism works and that authoritarianism runs on BOTH the Left and the Right.

    It is an actual historical fact that authoritarianism on the Left has caused far more bloodshed and human misery over the last 130 years than has authoritarianism on the Right. This is something not up for debate.

    Now, if you want to go back and see how each of my points are ON POINT, and then want to offer something (any thing) that would negate this or offer some alleviating factor, let’s hear that instead of your whining.