If the Washington, DC rumor mill is correct Commerce Secretary Wilbur Ross will soon announce that Andrei Iancu will be the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sources say an announcement could come as early as the beginning of July. Still, it has been difficult to determine whether those within the rumor mill, which have been in complete agreement on Iancu being the pick, is well informed or simply echoing what everyone else is saying. Regardless, at this point too many indicators are pointing toward Iancu being the pick, with rumors also circulating that he is currently being vetted by the Federal Bureau of Investigation (FBI).
Of course, the Trump Administration has been rather unpredictable so what seems like a “done deal” today could well be undone tomorrow. Having said that, at the very least Iancu is at or near the top of a very small short list for the position of Director of the USPTO. It also seems likely that he is not a particularly well known personality within the broader patent community. Certainly, Iancu not as well known as some of the other higher profile candidates who were reportedly under consideration for the position. With this in mind we thought it might be useful to offer this profile of Andrei Iancu, the man who may soon be named as the next USPTO Director.
Andrei Iancu would come to the agency after most recently serving as the managing partner of Irell & Manella LLP, practicing full time with the firm’s litigation and intellectual property practice groups. According to his firm profile, Iancu’s practice with the firm focused upon intellectual property litigation, but has involved himself with all aspects of intellectual property practice, including patent and trademark prosecution, due diligence and licensing. He has represented clients in technological fields including genetic testing, the Internet, medical devices, therapeutics, telephony, TV broadcasting, video game systems and computer peripherals. In addition to his legal practice, Iancu co-teaches an advanced patent class at UCLA School of Law, where he serves as an adjunct professor.
Iancu has received recognition for his legal work since 2007, when Chambers USA first named him as a leading individual in the area of intellectual property and patent law; his bio states he has received that distinction every year since. Since 2011, Iancu has been listed by Intellectual Asset Management (IAM) as among California’s top patent litigators in its annual IAM Patent 1000 report. Similar distinctions have been proffered since at least 2010 by the Los Angeles-San Francisco Daily Journal, Managing Intellectual Property and The Best Lawyers in America. In 2016, Iancu was named Lawyer of the Year for firms with 75 to 125 attorneys by the Los Angeles Business Journal. This year, he was recognized as one of BTI’s Client Service All-Stars for exemplary client service by corporate counsel at large organizations.
One of Iancu’s major successes during his practice as an intellectual property litigator was his work in securing large settlements for American tech company TiVo Corporation (NASDAQ:TIVO) in 2012. That year, TiVo secured a $250 million settlement from NYC-based telecommunications giant Verizon (NYSE:VZ). Months before that settlement, Dallas-based telecom firm AT&T (NYSE:T) agreed to a $215 settlement to end litigation surrounding digital video recording technology. Iancu’s bio states that total payments to TiVo from these settlements and others from Microsoft (NASDAQ:MSFT), Cisco (NASDAQ:CSCO) and others exceeds $1.6 billion.
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. Iancu and his firm have a reputation for suing big tech while representing patent owners, and he himself also served as counsel for San Jose-based touch feedback tech firm Immersion Corporation in a patent infringement suit against Japanese tech conglomerate Sony Corporation (NYSE:SNE) involving video game controller patents which ended up netting $150 million for Immersion in March 2007.
On the other side of the coin, Iancu’s work in the biotechnology sector will undoubtedly lead to a cold, if not hostile reception should be be named the next Director of the USPTO. Iancu represented Ariosa Diagnostics in patent litigation against Sequenom, the patent owner. The discovery at the heart of the innovation patented by Sequenom resulted in a test for detecting fetal genetic conditions in early pregnancy that avoided dangerous, invasive techniques that are potentially harmful to both the mother and the fetus. The invention, which became embodied in U.S. Patent No. 6,258,540, claimed certain methods of using cffDNA. The patent taught technicians to take a maternal blood sample, keep the non-cellular portion (which was “previously discarded as medical waste”), amplify the genetic material that only they had discovered was present, and identify paternally inherited sequences as a means of distinguishing fetal and maternal DNA. The claimed method does not preempt other demonstrated uses of cffDNA. The Federal Circuit concluded that the discovery was “a significant contribution to the medical field,” but that did not matter insofar are patent eligibility was concerned.
The Sequenom decision was an enormous step backwards for many biotechnology companies, particularly startups. It is extraordinarily unlikely that biotechnology startups would support Iancu. Iancu may even find himself challenged during his confirmation process by biotechnology companies, as well as the Biotechnology Innovation Organization (BIO).
According to data which we’ve collected through Lex Machina, Iancu has served as an attorney in 63 intellectual property cases at U.S. district courts, 60 of which were patent infringement cases. Iancu was most active as patent counsel in 2011 and 2012. Despite the aforementioned notable wins Iancu helped to secure on behalf of patent owners asserting their patents, Iancu actually has more experience as defense counsel, representing plaintiffs in 18 cases and defendants in 40 cases. Iancu has actually served as an attorney in seven trials at the Patent Trial and Appeal Board, representing either petitioners and patent owners in those cases.
Iancu was appointed to the managing partner position at Irell & Manella in 2012 and since that time the firm has been notable for achieving high levels of revenue per lawyer. During the 2015 fiscal year, the firm’s revenue per lawyer reached $1.59 million. In an interview on the subject with Forbes, Iancu credited the intense lawyer training at Irell & Manella including handing over responsibility and autonomy to recent hires early in their tenure at the firm. Although many firms with lower revenue per lawyer numbers were very excellent firms to Iancu, he did speak to ways that firms could improve those numbers if they so desired:
“I would begin with focusing the practice on areas where you know that you can deliver consistent excellence. You don’t have to be everything to everybody. And from there, there’s really no shortcut. You have to do what I mentioned in your first question, which is to bring in the highest quality lawyers and then set them free to grow their practices and trust that they will. And in general, they will.” – Andrei Iancu, Forbes interview dated 3/29/17
Along with being a managing partner of a law firm with an intellectual property focus, Iancu has also appeared as an author on several papers regarding the patentability of software claims, a subject of much debate over the past two decades. In February 2008, the Journal of the Patent and Trademark Office Society published a paper co-authored by Iancu titled “Code on Disks and Hat Tricks – Is Computer Software on a Medium Really Patentable?” The paper notes that software has been “the black sheep of the patent family” even as it “plays a major part in the modern world and our present economy.” Looking at Supreme Court precedent as well as recent case law, the paper concluded that Beauregard claims could meet patentability requirements under Section 101 even if many claims might not meet novelty or obviousness requirements under other statutes.
Iancu is also listed as the lead author of an article published in the Spring 2010 issue of the Northwestern Journal of Technology and Intellectual Property under the title “Machines and Transformations: The Past, Present, and Future Patentability of Software”. The paper looked at the the effectiveness of the machine-or-transformation test to determine patent-eligible subject matter in light of oral arguments made before the Supreme Court in Bilski v. Kappos; the case would be decided months later.
“Unfortunately, the test may well be throwing out the baby with the bathwater. Whatever the merits of various arguments regarding the patentability of business methods, the patentability of software processes, which are at the heart of innovation in our Information Age, at least deserves separate consideration.”
Iancu would also bring the perspective of a former engineer to the USPTO, having worked with Hughes Aircraft Company prior to joining law school. During his time with that company Iancu received several awards, including the Malcolm R. Currie Innovation Award. Iancu earned his bachelor’s degree in 1989 in aerospace engineering from UCLA. He received his master’s degree in mechanical engineering from UCLA in 1990 and graduated from the UCLA School of Law with his J.D. in 1996. While at UCLA School of Law, Iancu was a member of the Order of the Coif and received the Melville B. Nimmer Copyright Award.
Join the Discussion
11 comments so far.
AnonJune 27, 2017 05:55 pm
CP in DC,
I lean towards your statements.
Relying on those already entrenched in place for fixing the point of examination (the point MOST needing focus) appears to be a guaranteed fail.
CP in DCJune 27, 2017 01:59 pm
@1 Night Writer
I agree that the person needs to understand prosecution.
The PTO has about 8300 examiners, most of its employees examine patents. The examination process needs vast improvements and we need someone who understands prosecution to make those improvements. We can’t rely on those already at the PTO, because so far they haven’t done the job.
The Director has to lead the PTO, but a person cannot lead what they do not understand. We expect the Director to improve or repair IPR, so they also must understand IPR just to comprehend the problems. Many complain that IPR is a mess, but it would be a mistake to assume examination and ex parte appeals don’t need help as well.
I don’t expect the Director to micromanage all facets of the PTO, but they must be familiar with all aspects of the PTO, examination included, so they can participate in a productive manner to improve the current sad state of the PTO.
Eric BerendJune 27, 2017 01:29 pm
This whole affair has been murk on top of murk. There’s no way of discerning for sure, where the new Director, whoever he or she might be, will actually hew on patent prosecution and procedures arising from policy and specific involvement in its implementations.
Guesswork, however informed and natural in the absence of any indication with veracity, can propose to eliminate the seemingly impossible; for whatever value that may have; but I rate most of these musings as rather futile, at this point.
Obviously, the Director can have a great effect upon the application of institutions such as the PTAB – and that surely seems to be the ‘more realistic’ hope, of those seeking some semblance of a re-balancing of interests as apparently represented at the USPTO – but there remains no method or conduit of reliable information to be able to know this decision, very far in advance of the actual event.
CuriousJune 26, 2017 04:40 pm
So, it would be nice if whoever is made the director would know how to improve this process
You wouldn’t expect the president of Ford company to personally know how to improve the process of making cars. The important part is that the person in charge knows what needs to be worked on (i.e., putting more effort in ensuring that a quality product goes out the door instead of putting effort into making sure that infringers can invalidate any economically-viable patent) and is capable of identifying the right people who can delve into the minutiae of patent examination.
Leaders need to lead — they need to articulate a vision and put people in the right position to achieve the goals necessary to reach that vision. While useful, knowing the nuts and bolts of an operation isn’t necessary for a good leader to lead that operation.
But, I definitely think he would be a vast improvement over Lee and a giant relief that someone like Dudas isn’t going to be appointed.
I agree, but let’s not count our chickens before they hatch
Night WriterJune 26, 2017 12:06 pm
All good points. Still, we have to remember that the PTO is basically a boring place where examination of patent applications is the primary job. So, it would be nice if whoever is made the director would know how to improve this process. I think this very unlikely from anyone who hasn’t spent years doing prosecution.
But, I definitely think he would be a vast improvement over Lee and a giant relief that someone like Dudas isn’t going to be appointed.
MoocowJune 26, 2017 11:33 am
@ JPM at (3): “Looks like a great pick who will significantly reform the PTAB or shut it down, which would be an immense help inventors and other patent owners.”
That’s an interesting observation – can you elaborate? Are his views on the current state of PTAB practices known?
Drain the Swamp ManJune 26, 2017 10:44 am
If this is true then let us hope that his primary purpose is to provide guidance to USPTO at a very high level but at the same time help Trump “Drain the Swamp” you might say. USPTO is too top heavy with people who think in old school methodologies. Their idea is to grow government as a means of fixing all their ills. Their CIO spent some 2B in the last 10 years and cannot show anything for it. Their IT departments promote the idea of Dev Ops and AGILE but have no idea what it really means. Their methods of examining patents is guided by the whims of each manager with no standards in place. Trademarks in the last six years attempted to develop new software to the tune of $220M and failed. Both Trademarks and Patents suffer because there is no unified methods with time lines and milestones to properly measure progress within their IT development departments. Unless someone steps in with the idea of getting rid of old school mentalities then USPTO cannot move forward. Patents is behind some 500K applications of which the money has already been spent. New monies coming in is being used to examine old applications. USPTO invested hundreds of millions to establish satellite offices which because of the internet and advances in communication is an obsolete and old school mentality. If anyone comes in these and other old school mentality way of doing business needs to be evaluated and corrected. It’s past time like most government agencies for the USPTO to get out of the stone age and move to the 21st century with new and innovative ideas.
CuriousJune 26, 2017 09:32 am
You need someone that understands this process.
I disagree. You need someone at the USPTO that understands the big picture. When I saw the title of this article, before even reading this article, I took the time to investigate this guy and read one of his law review articles (I tried to read another but it was locked behind a paywall). From what I could gather from his background and based upon the analysis he presented in his article, and at first blush, he seems to be the right person for the job.
I’m less concerned about him knowing the ins and outs of prosecution than I am in having recognizing the value of all patents. Unlike Chen, who was predisposed against software patents, Iancu appears to appreciate the value that of software patents and in the innovation involved in creating this technology.
When writing about business methods and the patentability thereof (in the context of Bilski), he suggested that it was up to Congress to address that issue. I believe this is the correct approach rather than having the Courts step in and muck things up.
I see him as being an advocate for a healthy and strong patent system that values inventors over infringers.
He has been an active patent litigator so I’m sure he has reviewed enough prosecution histories to understand the process. Right now, I’m still getting lots of patents allowed at the USPTO — what I’m more worried about is whether these patents have any value in view of the IPR death squads and the meddling of the Courts. We need a Director at the USPTO who is going to advocate for inventors before Congress and direct the Solicitor’s Office to write briefs that call for stronger patent rights — not the opposite like we have now.
If he happens to be the guy chosen to head the USPTO, I’ll support that that decision based upon what I know today.
JPMJune 26, 2017 12:07 am
Looks like a great pick who will significantly reform the PTAB or shut it down, which would be an immense help inventors and other patent owners.
Night WriterJune 25, 2017 01:18 pm
I get the feeling this guy is someone more suited for the CAFC than director of the USPTO.
Like it or not the USPTO’s primary job is the rather boring job of examining patent applications (about 90 percent of the work.)
You need someone that understands this process. We should not be getting a director to fix the PTAB. Fixing the PTAB would not be that hard if someone had the right intent.
Night WriterJune 25, 2017 01:06 pm
It would be nice if he had spent a few years doing prosecution. The primary business at the PTO is examining patent applications. If someone cannot quickly tell the quality of the examination, then how are they to do their job?
I’ve worked with plenty of litigators that couldn’t read a patent or file wrapper if their life depended on it. It is good that at least he has a technical background.