Hello all,
After discussing ad nauseam in our last issues the current administration’s latest attempts to monetize patents (I wish I had the same tools at my disposal), we’re enjoying a brief respite this month while Washington keeps itself busy solving world peace and making our streets safer. One can dream.
In this column, I’ll be focusing on the first few weeks on the job for our new USPTO Director and what it signals to the IP community, recent developments around the world, another large patent award, and some rather glaring incongruities that explain why litigants are so strategic about choosing their patent assertion venues.
As usual, while I focus on the macro picture in this newsletter, I want to remind everyone that we track everything happening in this world. For those who need their regular dose of news, you can follow me on LinkedIn, where I post almost daily about the most newsworthy events. If you want to catch up on what grabbed my attention in recent weeks, you can access all my posts directly here.
Happy reading!
Louis
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Tangible IP News
We’re pleased to report that both our CEO Louis Carbonneau and our Sr. V.P. Brokerage Erika Warner have been included again in the selected list of IAM’s World’s Leading IP Strategists—Louis for the 13th consecutive year and Erika for the third time in a row. Only those individuals identified by their peers for exceptional skill sets and profound insights into patent matters make the cut each year.
We’re finalizing several licensing deals with currently marketed portfolios. This is important for our clients who want to see their inventions recognized by the industry through means other than mere infringing activities. As a broker, we don’t assert patents but rather find the best way(s) to monetize them for those we represent. This approach reduces litigation, dilution, and time to money. For infringers—or simply those seeking future freedom to operate—it brings certainty to their R&D roadmap and sales activities, preferred rates compared to post-litigation settlements, and no legal fees to boot. What’s not to like?
Mr. Carbonneau will present at the McGill IP Strategy for Business Course on November 18, 2025 in Montreal. He will focus on monetization strategies and investors’ perspective on IP in start-ups.
As we have discussed in previous issues, we have looked at several patent analytics packages and are currently using Limestone|Report. What sets Limestone|Report apart is its ability to provide a comprehensive view of portfolio pedigree while effectively identifying potential infringers. What about you? Well, our good friends at Techson IP have agreed to extend special pricing to our readers so that you can try it for yourself. You will receive a 25% discount off their standard pricing on your first project through 12/31/2025 * if you use this link.
In addition, if your organization is looking to acquire patents, either because of an urgent need or to meet a longer term freedom to operate goal, feel free to contact us at info@tangibleip.biz. We can source relevant assets and approach patent holders anonymously on your behalf, all the way to closing a transaction.
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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IP Dealstream: Compact Portfolio Exchange
Over the last 15 years since its inception, Tangible IP has earned it stellar reputation by brokering only high-quality patent portfolios. Unfortunately, with up to 5 new opportunities to review each day, there is only so much we can take under brokerage. We focus on larger sets of patents with evidence of use demonstrated by detailed “litigation grade” claim charts. Unfortunately, this leaves aside many smaller portfolios, hidden gems that represent meaningful innovations that are often relevant to industry. Hence the creation of a new conduit to market some of those going forward.
Featured Portfolio
We are pleased to present a portfolio in the outdoor sporting goods and hunting gear manufacturing industry. The patents enable the creation of ultra-light weight hunting sporting goods products, revolutionizing portability, ergonomics, safety and strength and is widely practiced in the industry. View additional information HERE.
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John Squires Takes the Helm at USPTO with Decisive Early Moves
John Squires was confirmed as the 60th Director of the United States Patent and Trademark Office on September 17, 2025 (Senate vote: 51-47) and officially began his tenure on September 23, 2025. His first week sent a clear dual message: embrace emerging technologies while maintaining rigorous PTAB gatekeeping.
The Opening Salvo
On his first full day, Squires issued two strategically chosen patents: U.S. Patent No. 12,419,201 (cryptocurrency/distributed ledger) and U.S. Patent No. 12,419,202 (medical diagnostics). Both fields have faced severe eligibility challenges under Alice and Mayo precedents. During the signing ceremony, he displayed Samuel Morse’s historic telegraph patent and declared: “From crypto and AI, to quantum computing and diagnostics… these are applied and patent-eligible technologies driving the frontiers of knowledge.” The message was unmistakable: the USPTO would take an expansive view of Section 101 patent eligibility for emerging technologies.
The PTAB Fortress
Just two days after taking office, Squires delegated his discretionary authority over IPR institution decisions to Deputy Director Coke Morgan Stewart. Stewart had served as Acting Director from January through September 2025 and had already implemented an aggressive discretionary denial framework that dropped IPR institution rates from approximately 68% to 43%. For patent owners, this was Christmas in September!
Stewart exercised the authority immediately. On September 26, she denied institution in fifteen IPR petitions. Her “Centralized Expanded Discretionary Denial Framework” now extends beyond parallel litigation timing to include equitable factors like patent age (over 6 years), customer suits doctrine, and business relationships. In L’Oréal USA v. Brightex Bio-Photonics, she denied institution even though the parallel district court case had been stayed—marking a significant expansion of discretionary denial grounds.
What It Signals
Squires’ opening moves reveal a coherent strategy: issue stronger patents in emerging technologies and protect them through rigorous PTAB gatekeeping. By publicly praising Stewart’s “remarkable stewardship” and immediately delegating PTAB authority to her, he signaled policy continuity. Patent owners can expect continued protection from repetitive IPR challenges, while petitioners face higher bars for institution.
Combined with his expansive approach to patent eligibility, Squires is creating what he calls “Born Strong” patents—high-quality grants in innovative fields, defended against weak challenges through aggressive PTAB review. Let’s now see if the courts will align with his vision. They certainly haven’t followed the USPTO’s stance on Section 101 to this day…
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A Fresh Take at eBay?
In a September 19, 2025 keynote at a Concurrences event, DOJ Deputy Assistant Attorney General Dina Kallay emphasized that “implementer hold-out” — when companies delay or avoid licensing patented technologies — is a more serious threat to innovation than “innovator hold-up.” She cautioned against closed, proprietary standards that incorporate patented technologies without true FRAND commitments, as these practices can foster infringement. Kallay also criticized mandatory royalty-free cross-licensing models, arguing they artificially fix royalties at zero and discourage investment in research and development. She credited former AAG Makan Delrahim for spotlighting the risks of implementer hold-out, reinforcing her call for a balanced approach to SEP licensing.
Building on that theme, the DOJ and USPTO’s Statement of Interest in Radian v. Samsung underscored that courts should not deny injunctions simply because a patent owner licenses its technology. They argued that overly restricting injunctions promotes “efficient infringement,” weakening deterrence and disproportionately harming smaller innovators. The filing highlighted that patents inherently include the remedy of injunction under U.S. law and warned that limiting this remedy in SEP disputes undermines the patent system’s incentive structure. Commentators noted the government is not seeking to undo eBay, but rather to restore injunctive relief as a credible option in SEP disputes while leaving courts discretion to balance equities on a case-by-case basis. Time will tell how the courts respond to this fresh take.
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The World is Not Waiting
While the U.S. is trying to find its footing on protecting IP rights, the rest of the world is not standing still.
Europe and UK
Across Europe, courts issued several key rulings. In the UK, the Supreme Court reaffirmed that patents must name a natural person as inventor—again rejecting any claim that an AI system (“DABUS”) can be listed on a patent. Apparently, the machines haven’t fully taken over yet…
The Court of Appeal clarified when generic-drug preparations justify injunctions: in Boehringer v. Zentiva, it found that a premature reimbursement application can amount to “imminent infringement,” overturning a denial of relief.
In Hamburg, Dyson won a preliminary injunction against Dreame for a hair-curler patent—notably extending its effect to sales in Spain (a non-UPC country) via the defendants’ EU representative. Separately, Ireland is discussing a referendum on joining the UPC, which would further expand the court’s reach.
Asia-Pacific
In Asia, governments advanced patent policy initiatives. On September 19, Japan and Bahrain signed an MOC to launch a bilateral Patent Prosecution Highway (PPH) effective January 1, 2026—allowing examiners to fast-track patents approved in the partner office.
India’s Patent Office issued new “AYUSH” examination guidelines on September 23 for traditional-medicine inventions (Ayurveda, Yoga, etc.), emphasizing strict novelty checks against published knowledge and mandatory disclosure of biological origin. So those who want to file a method patents for doing the sun salutation should probably abstain! China likewise touted stronger enforcement of its patent laws at a high-level forum, though no new Chinese patent statutes were actually enacted this month. (The forum was very enthusiastic, though.)
SEP and Standard-Essential Patent Disputes
Major SEP battles continued internationally. In the UK/Europe, Apple is asking the UK Supreme Court to overturn a Court of Appeal ruling that awarded about $502 million (with interest) for Apple’s use of Optis’s 3G/4G patents. When half a billion dollars is at stake, appeals become considerably more attractive.
In Germany, Dolby filed for a preliminary injunction in Munich against Roku for alleged infringement of video codec SEPs—a rare step, as German courts have only issued SEP preliminary injunctions in a handful of cases before. These cases reflect the global tug-of-war over FRAND rates and injunctions in mobile and video standards.
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USPTO and The Shutdown
The USPTO is largely funded by user fees rather than annual appropriations, and it maintains an operating reserve that allows it to stay open during government shutdowns. In the short term, this means the agency will continue business as usual—accepting filings, conducting examinations, and keeping its electronic systems online. Applicants and practitioners are unlikely to notice immediate disruptions.
However, if the shutdown persists and reserve funds are drawn down, the USPTO will gradually scale back activities. Early signs include staff reductions (about 1% already laid off) and closure of regional offices like Denver. Longer-term impacts could include slower examination times, furloughs, and suspension of some services once reserves are depleted. In short, the shutdown won’t cripple USPTO operations right away, but the longer it lasts, the greater the risk of delays and backlogs. (So, business as usual for government agencies, really.)
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Another One Bites The Dust
I’ve mentioned recently that when it comes to patent awards, the motto should be “Beware What You Wish For”—the larger the jury verdict, the likelier it will be reduced or even overturned. Indeed, just last week, the Federal Circuit vacated a $166 million Texas jury verdict against AT&T, finding insufficient evidence that AT&T’s 4G/5G networks infringed two Finesse Wireless patents.
The verdict had been based on testimony from the plaintiff’s infringement expert that the court found to be “contradictory,” “confusing,” and “unclear”—legal speak for “we have no idea what this expert was talking about, and apparently neither did the jury.” This decision (with Nokia intervening) highlights ongoing uncertainty in wireless SEP litigation and serves as yet another reminder that what a Texas jury gives, the Federal Circuit can swiftly take away.
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California: Where Patents Go to Die
People in our little world often joke (or lament) that you can have the exact same patent, and whether the inventor asserts in Texas or in California, you’ll have vastly different results—even if the facts are identical. This is mostly anecdotal, as we never had a case that actually proved the axiom… until now.
The Tale of Two Courts
In September 2023, Anonymous Media Research Holdings, LLC (AMRH) filed two parallel patent suits in Texas federal district courts: one against Samsung (in the Eastern District of Texas) and one against Roku (initially in the Western District of Texas). Same plaintiff, same patents (or closely related family members), filed within weeks of each other. What could go wrong?
The Texas Track: Full Speed Ahead
In the Samsung case, the Eastern District judge refused to stay the action pending inter partes review (IPR) proceedings (i.e., the defendant’s attempt to challenge patent validity via the Patent Office). The court issued a claim construction order, disposed of invalidity under Alice on summary judgment, and the case proceeded to a jury trial. The jury ultimately awarded AMRH $78.5 million in damages. A good day at the office, one might say.
The California Track: Full Stop
But in the other case—the one against Roku—the procedural posture took a completely different turn. That case was transferred (for convenience, naturally) from the Western District of Texas to the Northern District of California. Once in California, the court stayed the litigation because of ongoing IPR proceedings. Then, only 11 days after the summary judgment ruling in the Samsung case (which had upheld validity), the California judge invalidated the same AMRH patents under Alice.
The Punchline
In short: In the Samsung case, the Texas court plows ahead despite IPRs, finds no invalidity, and awards tens of millions. In the Roku case, the California court pauses everything for the IPRs, then strikes down the very same patents under Alice.
Two courts, same asserted patents (or patent families), radically divergent outcomes. Just an $80 million difference in the result, give or take. Try explaining the U.S. justice system to your kids… or your clients.
This is forum shopping on vivid display—and a stark reminder that in patent litigation, geography isn’t just destiny; it’s often the entire ballgame.