Hello all,
Unless you’ve been living under a rock, you’ve likely noticed the shift in tone between the US administration and Canada – along with other countries – who now find themselves on the receiving end of an aggressive push by the Trump administration to redefine the terms of their long-standing relationships. In response, Canadians are standing their ground, adopting a new battle cry in Canada, “Elbows Up”, a rather adept hockey metaphor on the heel of their recent overtime victory against the US hockey team. We are now witnessing (in real time) Canada (Mexico and others) discovering that trading with your established friend and partner can quickly turn into a full contact sport where you must shape up quickly or get off the ice.
In the IP world, this distinction has been present for decades. I have personally worked with companies and innovators on both sides of the border (and from all continents) since the 1980s. I’ve always been struck by how patent warfare outside the US is often treated as more of an afterthought, akin to a recreational sport, whereas here in the US, it has traditionally been a far more aggressive pursuit. I will discuss this in more detail below and will also explain why non-US patent holders or companies wanting to come to the US, tariffs or not, must think very hard about revising their IP strategy.
I also review some of the latest developments with the USPTO, and a few other highlights from the last few weeks that may impact patent owners in some good and not so good ways.
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 where I post almost daily about some of the most newsworthy events. If you want to catch up on what grabbed my attention these recent weeks, you can access all my posts directly here.
As a reminder, this column is syndicated in Inventors Digest. I recommend you check it out if you haven’t yet.
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 LinkedIn where I post almost daily about some of the most newsworthy events. If you want to catch up on what grabbed my attention these recent weeks, you can access all my posts directly here.
Happy reading!
Louis
__________________
Tangible IP News
I had the pleasure of speaking at IP Watchdog Live 2025 in Arlington, VA. on the future of patent monetization and licensing. The conference was widely attended and there are many articles you can read online that recap the main panels. One interesting take away was on the legislative side, where some Beltway insiders indicated that we should expect some changes to the status quo (likely around patent eligibility), but that it would not be in the form most expected… Whatever that means remains to be seen. But I will take any change over the current state of affairs.
I was interviewed last month by Bruce Berman of the Center of Intellectual Property Understanding (CIPU). The full interview is now available here. IP Watchdog also published a nice summary thereof for those who couldn’t listen in.
Tangible IP is widely known and respected for its track record in the patent brokerage domain. However, most people do not know that we also maintain a vibrant IP advisory practice that spans across various services. Recently, we completed an extensive FTO and landscape study combo for a client in the wind energy area and they offered the following testimonial:
“We were recommended to contact Tangible IP to conduct Freedom to Operate and Landscape Studies on our patent portfolio. We were extremely pleased with the results of the FTO and Landscape Studies. I would strongly recommend the Landscape Study to those looking to better understand their IP ecosystem and where white spaces exist for more efficient deployment of R&D resources. We appreciate the strategic insight the team at Tangible IP provided and look forward to working with them again soon.”
Note that we try to price these services with startups and SMEs in mind. Also, companies can often get a (partial or total refund) through some government programs (especially in Canada), and it can save them an order of magnitude of their initial investment over time, either by preventing a lawsuit or by avoiding duplicative R&D efforts, to name a few. Please ask us how we can assist you at info@tangibleip.biz.
Back to brokerage, while we are preparing several exciting portfolios for sale that will hit the market in the next weeks and months, we still have a few 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.
__________________
Featured Portfolio
We are pleased to bring to market a VoIP & Data Roaming in Telecommunications Patent Portfolio in the coming weeks. The offered assets of iBasis Inc., a wholly owned subsidiary of Tofane Global, comprise a portfolio of 92 patents. The portfolio enhances global voice communication by enabling seamless VoLTE roaming across multiple LTE networks and addresses the demand for high-definition voice services in a connected world. The technology distribution includes Roaming Network Policy, VoLTE Call Routing, QoS in VoLTE and Mobile Network Switching. The marketing package includes 8 claim charts, including the ETSI Standard, and 5 indication of use documents.
If you are interested in receiving the marketing materials, please reach out to Erika Warner at erika@tangibleip.biz.
__________________
Recent News:
Meet the *New* USPTO Director
Well, the suspense is finally over! After letting everyone speculate about the long-term prospects of acting USPTO head Coke Morgan Stewart, John Squires has been nominated by President Trump on March 25th to serve as the next Director of the USPTO. He awaits confirmation by the US Senate. Given that the White House has been able to confirm much more controversial cabinet members to date, we can safely assume this one will sail through without a glitch (the fact that Squires was with Perkins Coie from 2012-2016 does not appear to have worked against him, or no one told President Trump yet…).
Squires currently chairs the Emerging Companies and Intellectual Property practice at Dilworth Paxson LLP, focusing on areas such as artificial intelligence, blockchain, and cybersecurity. Prior to this, he served as Chief IP Counsel at Goldman Sachs from 2000 to 2009, where he is credited for playing a pivotal role in developing strategies for financial technology and risk management. More on point, he co-founded the Fortress IP Investment fund in 2017, which has been actively engaged in the acquisition and monetization of patent portfolios through licensing and enforcement activities.
Early in his career, Squires actively engaged in discussions surrounding patent rights in the United States and he’s sided with opposite camps on substantive issues:
- Injunctive Relief: In 2006, He submitted amicus briefs for the banks supporting elimination of injunctive relief in eBay, and raising the bar for willfulness in Seagate.
- Post-Grant Proceedings: In 2007, Squires testified before the Senate Judiciary Committee in support of establishing post-grant proceedings for challenging issued patents at the USPTO. This initiative led to the creation of the Patent Trial and Appeal Board (PTAB) and the inter partes review system
- Patent Eligibility: In 2008, he co-authored an amicus brief for the Supreme Court case Bilski v. Kappos, advocating for broader patent eligibility standards, particularly concerning inventions related to finance and banking.
Reactions to his nomination have been generally positive by those who focus on his role at Fortress rather than relying on positions he took two decades ago that could simply have been those of his clients at the time. Others, such as US Inventors, are less enthusiastic, given the above track record.
My personal prediction is that he is going to be mostly supportive of patent rights given whom he now reports to (Lutnick) for the rather simple reason that he would not have been selected otherwise for the role or would have declined the offer if his current views ran counter to Lutnick’s.
USPTO Being “Doged”?
Much has been written about DOGE’s daily efforts to emasculate most federal US agencies in the name of eliminating “waste, abuse and fraud”. Doing this with a chainsaw means that DOGE’s young savants probably did not have a clue that the USPTO is actually the lone agency that not only pays for its own budget but sees massive surpluses annually “diverted” by politicians and repurposed elsewhere. Congress LOVEs the USPTO but it did not stop DOGE from offering severance packages to USPTO employees in February 2025, which led to early retirement offers for several hundred federal employees and resulted in the departure of key USPTO leaders such as former Commissioner for Patents Vaishali Udupa, Commissioner for Trademarks David Gooder, and senior leader Tom Krause.
The USPTO has also had to implement a hiring freeze, withdrawing approximately 600 job offers to prospective patent examiners. Additionally, around 600 probationary patent examiners face potential termination. This will no doubt add to the already catastrophic backlog (1.3M applications).
At the PTAB, we are told that a quarter of administrative judges have since left, likely contributing to increased delays to hear IPRs going forward. This may not be unrelated to a recent change of policy at the PTAB that could help keep things in a state of equilibrium. See below.
De-Fintiv-ly There to Stay?
For those who are not familiar, the Fintiv rule refers to a framework established by the PTAB for exercising discretionary denial of inter partes review (IPR) petitions when there is parallel litigation in district court involving the same patent. This framework originated from the PTAB’s precedential decision in Apple Inc. v. Fintiv, Inc., which outlined six factors to consider when determining whether to institute an IPR:
- Stay of Litigation: Whether the court has granted or is likely to grant a stay if an IPR is instituted.
- Proximity of Trial Date: How close the court’s trial date is relative to the PTAB’s projected statutory deadline for a final written decision.
- Investment in Parallel Proceeding: The amount of investment the court and parties have made in the parallel proceeding.
- Overlap of Issues: The extent to which issues raised in the IPR petition overlap with those in the parallel proceeding.
- Identity of Parties: Whether the petitioner and the defendant in the parallel proceeding are the same party.
- Other Circumstances: Any other circumstances that might impact the Board’s exercise of discretion, including the merits of the petition.
In June 2022, under then Director Vidal, the USPTO issued a memorandum providing interim guidance on applying the Fintiv factors. This guidance aimed to minimize inefficiency and conflicts between PTAB proceedings and district court litigations by specifying scenarios where the PTAB should not deny institution under Fintiv, such as when a petitioner presents compelling evidence of unpatentability or agrees not to pursue the same grounds in parallel district court proceedings (known as a “Sotera stipulation”). This led to a spike in IPR cases being instituted that hovers around 85% of all cases, denying many patent holders from their day in a “real” court.
However, on February 28, 2025, the USPTO rescinded this 2022 memorandum without providing specific reasons for the withdrawal. This rescission effectively removes the previously established “safe harbors” and returns the PTAB’s Fintiv analysis to weighing the original six factors without the additional guidance from the memorandum. Since then, and although this is anecdotal evidence, we are told that many IPRs have been denied before institutions on the basis of the FINTIV rule.
Short of a legislative overhaul of the PTAB via the currently pending PREVAIL Act (which hasn’t moved for months), this is the most impactful change we can expect in the short term and patent holders enforcing their patents in court would be wise to remember the above factors when deciding on how and where to litigate. Assume that the Eastern and Western Districts of Texas, because of their faster docket and refusal to stay cases pending IPRs, will see even more patent cases this coming year.
All in all, we see the new USPTO nomination and the rescission of the Fintiv memo as two positive factors that should normally impact patent valuations upwardly, as they point to a more favorable treatment at the PTAB for patent owners (if only by omission). On the other hand, the recent departures, hiring freeze and applications backlog will will make securing new patents much longer.
IP Is a Full Contact Sport
In 2024, the United States witnessed a significant increase in patent litigation compared to the previous year. Non-Practicing Entities (NPEs) added 1,889 defendants to patent litigation campaigns, marking a 21.6% rise from 2023. Operating companies also saw an uptick, adding 1,174 defendants—a 16.8% increase from the prior year. Collectively, these figures indicate that patent plaintiffs added a total of 3,063 defendants in 2024, reflecting a 19.7% increase over 2023, according to RPX. As you can see from the chart below, the latest trend is for more patent litigation, not less.
(Source: RPX)
Additionally, the Patent Trial and Appeal Board (PTAB) has experienced increased activity, with petitions for inter partes review and post-grant review rising by 14.3% in 2024 compared to 2023. Ex parte re-examination requests also surged by 28%, reaching 444 — the highest number in a decade. This may change with the reintroduction of the FINIV rule as we just saw. But suffice to say, there is rarely a dull moment in patent enforcement here in the US.
In contrast, and not to pick on my motherland, the Federal Court of Canada – which has exclusive jurisdiction to hear patent cases – recorded a paltry 21 new cases in 2024 patent infringement proceedings, accounting for only 7.3% of all intellectual property (IP) cases that year (most other cases were trademark or copyright related). Talk about a cultural shift.
Other countries around the world follow a similar pattern of relatively low amount of patent enforcement activity, except more recently for Europe which has seen a definite pick up since the creation of the Unified Patent Court (UPC) in June 2023.
This would explain why patent-related matters, including the need to own some and to avoid encroaching on those who already do, have historically been an afterthought in so many countries around the world once you look beyond some local Fortune 500 companies. Most non-US patent owners are content to claim bragging rights with their inventions and assume that their patents will act as a deterrent against others. The problem with this approach is that most companies who sell products of services want to do business in the US market. The recent tariff war initiated by the current administration might change some of that with time, but the US market, with 25% of the world’s economy, will always remain a magnet for most.
Thus, without a sound IP strategy that arms them with some barriers to entry and provides them at the same time with freedom to operate, new entrants to the US market remain highly vulnerable to cheaper knockoffs (just look on Amazon) and/or to third party patent assertion claims, whether from a rival or a Non-Practicing Entity (NPE). In other words, they cannot readily protect their inventions while they remain unprotected against those of others.
While most companies believe that the rules are the same everywhere they go, they must now contend with the fact that they have been playing a recreational version of the sport until now and that they need to learn to play the full contact variety the minute they cross the border. Most of them are woefully unprepared and will not survive an IP challenge, or do not have the resources to go after cheap imports that simply copy their products. In short, what may have worked historically in their country of origin simply won’t in the US. And soon it will be the same phenomenon in Europe where the UPC is rapidly attracting a rapidly growing patent litigation docket.
Thus, my advice to clients who want to do business in the US (and expand internationally) is generally to start very early establishing a multipronged IP strategy that relies on creating several barriers to entry (patents, trade secrets, copyrights, trademarks, contracts, etc.), while making sure in parallel they stay away from infringing anyone’s rights (FTO) until they can afford to defend themselves. While none of that is rocket science, you’d be surprised how few companies actually implement this approach, that is until they have to fetch the puck in the corner of the rink, and someone is coming at them very fast… with elbows up! By then, it is usually too late. Time to leave the beer league and think like the pros!