And Now What?

Hello all,

We strive to remain neutral in the political climate here at Tangible IP; but I would be remiss not to mention the elephant in the room. Relax…  I am not going to dissect the “how” of the election results; we’ll leave this to the pundits. However, now that we have a clear winner, it is important to address how this might impact our universe for the 4 years to come. The to-be-appointed USPTO director, as with previous administrations will have a significant thumb on the scale when it comes to how our innovations will be protected. So, I will circle back to the track record of current USPTO Director Kathi Vidal and ponder a bit about what may come next.

I also cover recent newsworthy events in the IP marketplace and there were plenty of these in the past 2-3 weeks alone.

As usual, as I focus on the macro picture in this newsletter, I want to remind everyone that we track everything that is going on in this world and for those who need their regular dose of news, once again you can follow me on either LinkedIn or Twitter where I post almost daily about some of the most newsworthy events. 

Happy reading!

 Louis

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Tangible IP News

In our last issue, we reported on several patent sales, including one pertaining to smart appliances. Today, we are pleased to report on the closing of a substantial transaction involving a portfolio of high frequency trading patents. See the full press release here.

Our Sr. VP Brokerage, Erika Warner, spoke earlier this week at the 11th Annual IP Dealmakers Forum, held in Miami.

We currently have for sale a very interesting portfolio that pertains to digital content analysis. It boasts 11 assets and no fewer than 30 separate claim charts reading on various companies that are well known to the IP community. If you would like to receive a copy of the materials, please email Erika Warner at erika@tangibleip.biz.

We have several other portfolios for sale that offer great opportunities to savvy buyers. All of our patents for sale are listed here. Similarly, if you’d like to be added on our distribution list in the future so that you are the first to receive new opportunities, please email us at info@tangibleip.biz.

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Patents Wanted

Calling for high quality portfolios! We represent several buyers looking to acquire high quality portfolios. Some of the areas of interest are included below. Please refer to our Brokerage Criteria to see if your assets qualify. If so, please send the portfolio to info@tangibleip.biz for review.

• Semiconductor
• Handset/laptop
• Wireless wifi5/6
• Network security
• Medical device
• Network hardware
• Imaging
• Battery
• Lights/led
• Automotive
• Display
• IoT

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Recent News:

3 CEOs of AST Walk into a Bar…

In our last issue (Are There Truly Patent Cartels), I made the following comment when referring to the case recently filed by patent owner Xockets against RPX on antitrust grounds: “The core argument against defensive patent aggregators like RPX and, to a lesser degree, Allied Security Trust (AST) centers on their collective buying power and coordinated action. By pooling resources from multiple large technology companies, these organizations effectively create a united front against independent patent holders and smaller innovators”.

Our good friend and CEO of AST, Russel Bins, was quick to point to me the irony of having his two predecessors at AST (Brian Hinman and Dan McCurdy) now facing against one another in court. Furthermore, he wanted to clarify the following: “AST operates completely differently from RPX, not just “to a lesser degree.” While RPX is a for-profit company that makes money by taking payments from its members and minimizing payments on deals, and keeping the difference, AST, on the other hand, has no profit motive. We don’t make any money from the transactions we facilitate, and as a result, we have no incentive to overcharge our members or shortchange patent owners. Our structure allows us to focus solely on creating value for both sides.” 

Happy 25th Anniversary to IP Watchdog

Our good friend Gene Quinn and his wife and business partner Renée recently celebrated the 25^th anniversary of the ubiquitous IP Watchdog powerhouse. Aptly nicknamed IP’s First Couple by Inventors Digest (which syndicates this newsletter every month by the way), one can only marvel at the sheer volume of publications, conferences, webinars, courses, etc. that they organize almost on a daily basis online and around the country. I know how much work goes into just publishing this piece once a month. I frankly don’t’ know how they do it; but I am sure glad they keep doing it. Gene, Renée, heartfelt thanks for your immense contributions to the IP Community and to another 25 years!

GoPro Liquidates Portfolio

The largest patent transaction reported last month involved the sale of a drone related set of over 100 assets from GoPro to Skydio, a US based drone manufacturer. Interestingly, in July 2020, Skydio also bought 50 US assets from Airware LLC. These assets were related to drone inspection systems, drone fleet management systems, flight planning, etc. For GoPro who has been met with financial woes lately, this allowed to bring some much-needed cash.

(In September, the largest reported transaction involved 157 patent assets sold to Chip Packaging Technologies.)

InterDigital and Nokia on a Roll

On the heels of signing a major licensing agreement with Chinese manufacturer OPPO covering OPPO, realme and OnePlus branded mobile devices worldwide, InterDigital just released its Q3 Results of US $129M in revenues and it now expects $860M revenue in 2024 – 20% higher than previous guidance. On the other hand, with 70% of the WW market covered by existing licenses, additional revenues will have to come from other assets in its vast patent portfolio.

Just a few days earlier, Finnish phone maker Nokia announced that it has signed a multi-year patent license agreement with HP covering the use of Nokia’s video technologies in HP’s devices. Under the agreement HP will make royalty payments to Nokia. The agreement resolves all patent litigation between the parties, in all jurisdictions.

And Now What? (Part 1)

Every four years, a new presidential election brings in a slew of administrative changes in the US government from the top down, as most political appointees from the previous administration are soon replaced. This is no different for the USPTO (which reports to the Secretary of Commerce), whose director is appointed by the incoming president and must be confirmed by the US Senate.

On October 26, 2021, Kathi Vidal was appointed by President Biden and was confirmed into her role a few weeks later. During her confirmation, when asked about her stance on patent eligibility, she answered “we can work together to build an intellectual property system that is more predictable, reliable and transparent”. Mrs. Vidal also said that there needed to be “more clarity when it comes to patent eligibility,” whether it “comes via legislation or whether the Supreme Court takes a case.” On the PTAB being a patent “death squad”, she noted her experience on “both sides” of PTAB proceedings and said she would consult with stakeholders and investigate potential reforms.

Here is what I wrote at that time regarding her testimony during the confirmation process:

(…) So, to me, these guarded statements by candidate Vidal bring very little comfort, as they can easily be read to appease opposite sides at the same time, regardless of their respective agendas. Let’s not forget that, according to the US Inventors nonprofit organization, “Vidal’s clients have filed a combined 2,381 challenges at the PTAB. She has been paid millions of dollars by Apple, Samsung, Microsoft, Cisco, Micron, Netflix, Dell, Roku, and HP. She is attorney-of-record in 14 pending cases at the PTAB, all on behalf of the infringer/petitioner.”

Four years and four thousand selfies later, it is worth revisiting Mrs. Vidal’s tenure, which has generally been marked by a proactive approach to several critical areas within the IP landscape. When she assumed the role, expectations were high that her extensive background in IP law, coupled with her experience representing both large corporations and independent inventors, would bring a balanced perspective to the agency’s priorities. Vidal’s focus areas have included improving patent and trademark application processing, bolstering IP rights, addressing challenges related to patent eligibility (particularly under Section 101), and managing the often-contentious Patent Trial and Appeal Board (PTAB) proceedings.

Key Accomplishments:

1. Administrative reforms

• Streamlined PTAB procedures and increased transparency in decision-making
• Implemented new guidance on discretionary denials under Fintiv
• Enhanced stakeholder engagement through expanded outreach programs
• Introduced programs to expedite examination of key technologies like climate change solutions

2. Access initiatives

• Launched Pro Se Assistance Program expansion
• Created the Council for Inclusive Innovation (CI2)
• Expanded the Patent Pro Bono Program
• Implemented fee reductions for small and micro entities

3. Quality measures

• Strengthened patent examination quality through enhanced training
• Implemented AI tools to improve prior art searches
• Increased focus on Section 101 clarity following Supreme Court decisions

One of Vidal’s notable achievements has been her work to reduce application backlogs and improve patent quality. She introduced new measures aimed at reducing the pendency of both patent and trademark applications, which had surged due to pandemic-driven shifts in business and e-commerce. Unfortunately, the situation is still dire: as of mid-2024 the backlog of unexamined patent applications reached approximately 785,387, nearing an all-time high and the total pendency—the time from application to decision—stands at around 25.6 months, with an average of 20 months before the first office action on applications.

Her administration has also focused on improving examiner training in emerging fields like AI and clean energy, ensuring that new technology applications are examined with rigor and accuracy.

She and her administration have also received their share of critiques, notably around the following points:

1. PTAB Policy Decisions

• Perceived weakening of Fintiv discretionary denial factors
• Criticism that PTAB remains too “patent owner unfriendly”
• Concerns about her involvement in specific IPR cases (like OpenSKY/VLSI)
• Arguments that Director review process remains too opaque

2. Subject Matter Eligibility

• Lack of concrete progress in clarifying Section 101 guidance
• Continued uncertainty in software and biotech patents
• Criticism that USPTO guidance hasn’t sufficiently aligned with court decisions
• Perceived inconsistency in examination across art units

3. Administrative Decision-Making

• Claims of overstepping authority in certain policy decisions
• Criticism over use of Director review powers
• Questions about transparency in decision-making processes
• Concerns about political influences on patent policy

4. Small Inventor Advocacy

• Arguments that initiatives favor large corporations over individual inventors
• Criticism that pro se assistance programs don’t address fundamental systemic barriers
• Concerns about rising costs despite fee reduction programs
• Claims that patent quality initiatives disproportionately burden small entities

5. Examination Quality

• Ongoing issues with examination consistency
• Criticism about examination pendency times
• Concerns about over-reliance on AI tools in examination
• Questions about examiner training and oversight

So, the list is long. Unfortunately, for Mrs. Vidal, the most visible metric from the outside world is how many patents issued by the USPTO end up being declared invalid years later by its offspring, the PTAB. Based on what has been widely reported, the PTAB “kill rate” (i.e. the percentage of issued patent claims being invalidated) still hovers between 70% and 80% depending on how one calculates it. Either way, this is absolutely unacceptable and no other industry than the government could survive with even a 20% product defect rate, let alone 80%!

While Mrs. Vidal’s tenure has not done the same substantial damage as was felt under one of her predecessors (Michelle Lee) under the previous Democrat President (Obama), she certainly has made patent owners feel nostalgic of Andrei Iancu whom she replaced in 2021 and who had been nominated in 2017 by a certain…President-elect Donald Trump.

In our next issue, I will discuss what we see in our crystal ball when it comes to the next 4 years. How will a new president impact US based IP policy, especially combined with a new leadership in the powerful Senate Judiciary Committee? Fewer selfies for sure at the USPTO, but a lot more changes to come. Stay tuned!