Kathi Vidal Floated as Possible USPTO Director Nominee

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.