California intellectual property lawyer named to head patent office

Katherine “Kathi” Vidal, managing partner of Winston & Strawn’s Menlo Park office and an experienced litigator, was nominated Tuesday by President Joe Biden to run the U.S. Patent and Trademark Office.

If confirmed by the U.S. Senate, Vidal would be the third consecutive Californian to serve as permanent head of the patent office.

For the time being, Commissioner for Patents Drew Hirshfeld will continue as acting director.

Michelle K. Lee, who previously was deputy general counsel at Google, ran the office from 2015 to 2017. Andrei Iancu, a partner at Irell & Manella LLP, served from 2017 until earlier this year, when he returned to the firm.

Before joining Winston & Strawn LLP, Vidal was global head of litigation at Fish & Richardson PC and was in charge of 270 attorneys in 11 offices.

A former engineer with General Electric Co., Vidal is best known for holding leadership roles at Winston and Fish as well as years of experience handling intellectual property cases involving everything from medical devices to garage door openers.

Vidal, a graduate of the University of Pennsylvania Law School, could not be reached for comment Monday.

While Vidal’s longtime career in Silicon Valley may raise questions about whether she will be less favorable to patent holders than Iancu, the attorney has represented plaintiffs and defendants during her career.

If the Senate approves her nomination, Vidal will face a question of how to deal with decisions by Patent Trial and Appeals Boards that were created by the 2011 America Invents Act.

A U.S. Supreme Court decision in June will require that all decisions by administrative patent judges must be reviewed by the director, as a presidential appointee. United States v. Arthrex Inc., 2021 DJDAR 6086 (U.S. Sup. Ct op. filed June 21, 2021).

Legal experts said the impact of the decision may be limited because directors are unlikely to use that power, but that will be up to Vidal if she is confirmed.

Thomas M. Melsheimer, her law partner at Winston and the managing partner of the firm’s Dallas office, praised the choice in a statement.

“She will bring to the PTO the kind of outstanding management and advocacy skills she has brought for decades at premier national law firms and high stakes patent cases,” he wrote.

“No issue is too complex for her and her keen ability to simplify challenging technological issues to judges and juries will serve her well at the PTO,” Melsheimer added.

The Biden administration’s announcement also praised Vidal as a leader in diversity and women’s issues.

Vidal is one of four law firm advisory board members for ChIPs, a nonprofit organization committed to advancing women at the intersection of law, technology and regulatory policy. The organization was co-founded by Lee, who now works at Amazon.com.

Melsheimer wrote that Vidal “has a career-long devotion to diversifying the legal workforce and giving opportunities to women and persons of color that she will undoubtedly bring in force to her new position.”

Vidal is also known for her athletic prowess, such as involvement in polo, a sport she took up as an adult even though she hadn’t spent time on a horse since her teen years.