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.
On 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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