Hello all,
In real estate, they say the three most important things are location, location, location. Turns out the same is true in patent assertion — except the stakes are considerably higher and, unlike a house with good bones in a sketchy neighborhood, you can’t exactly renovate your way out of a bad venue ruling. Your case is either in Texas, or it isn’t, and I often have discussions with US litigators who tell me that their decision to take on a certain case – or not – hinges in large part on where they can actually litigate the patents.
This month’s deep dive examines the single most disruptive procedural development in patent law of the last decade: the Supreme Court’s 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, which rewrote the rules on where patent infringement cases can be filed and where this leaves us today. But this isn’t just a story about procedural gamesmanship — it’s a story about what patent owners actually need from a court system: speed, expertise, reasonable costs, and a fair shake. Texas offered all four, which is why patent owners went there in droves. We’ll trace what happened when the Supreme Court took that option away and why the same forces that once drew patent owners to Marshall, Texas, are now drawing them to Mannheim, Munich, and the Unified Patent Court.
More importantly, we’ve built a comprehensive matrix of every published venue transfer decision originating from the Eastern and Western Districts of Texas since TC Heartland. Who tried to leave? Where did they want to go? Did they succeed? And what were the key factors that made or broke each motion? If you’re a patent owner (or advising one), this is the roadmap you need.
I also cover three important recent developments: the blockbuster Moderna–Arbutus/Genevant mRNA patent settlement (up to $2.25 billion), Director Squires’s latest move tying PTAB institution decisions to U.S. manufacturing (a reform with a significant blind spot for NPEs and small inventors), and the push for mandatory litigation funding disclosure in federal courts — a proposal that could backfire spectacularly on the very patent owners it claims to protect. More on all of this below.
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
Our CEO, Louis Carbonneau, will be speaking at IPWatchdog LIVE in Arlington, Virginia on March 22, 2026. Gene and Renée Quinn always put together a great event, and this year should be no different. Mr. Carbonneau will also be joining Gene Quinn on Friday, March 27, 2026 on the IPWatchdog podcast, Unleashed, to discuss conference highlights and Louis’s take on the current environment.
We are also delighted to report we recently brokered the sale of a Marketplace with Integrated Trust Networks patent portfolio. Details on recently completed transactions can be found here.
With a few more deals in closing, look for additional announcements in the coming weeks.
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Featured Portfolio
Tangible IP is pleased to represent PlugShare LLC, in the divestiture of their 17 patent assets across four families each with a pending US Continuation in the electrical vehicle charging domain. This portfolio forms a cohesive suite of innovations centered on intelligent EV charging ecosystems including technologies of integrating vehicle-grid interaction, route optimization with inclusion of charging stations, payment interoperability, and home energy balancing. Please reach out to erika@tangibleip.biz to receive the materials.
In the coming weeks, we will also be sending a portfolio in the Automated Video Content Management & Distribution space. More details to follow.
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The TC Heartland Earthquake
For the better part of three decades, patent owners enjoyed an almost embarrassing degree of forum choice. Under the Federal Circuit’s 1990 VE Holding decision, you could sue for patent infringement in essentially any federal district where the defendant sold products; which meant anywhere. And if you could file anywhere, you filed in the Eastern District of Texas. By 2015, roughly 43% of all U.S. patent infringement cases were filed in the EDTX.
Now, let me be clear about something that the defense bar’s “forum shopping” narrative consistently gets wrong. Patent owners didn’t flock to Texas because juries there handed out candy to plaintiffs. They went because the EDTX offered what every litigant in the world wants: a faster time to trial, lower litigation costs than coastal districts, and judges who had developed genuine expertise in patent cases. Remember, the United States has no specialized patent court at the district level, unlike Germany or China, which have designated patent chambers. In the EDTX, patent owners got judges who understood claim construction, knew how to manage a Markman hearing, and moved cases on a rocket docket. Compare that to the Northern District of California, where cases can languish for years, costs are astronomical, and, let’s be honest, there’s a perception (not entirely unfounded) that the home team gets the benefit of the doubt when the defendant’s campus is visible from the courthouse parking lot. Patent owners in Texas weren’t looking for an unfair advantage; they were looking for a fair shake.
It is worth noting that the exact same motivations explain why the Unified Patent Court and the German national courts have become the venue of choice for patent owners on the other side of the Atlantic. The UPC offers what Texas once offered and then some: low litigation costs (a fraction of U.S. federal court), predictable timelines, severely limited discovery (no American-style fishing expeditions), fast time to trial, and, critically, the real possibility of obtaining injunctive relief. That last point cannot be overstated. In Europe, a patent owner who proves infringement can actually stop the infringer from selling products. In the U.S., post-eBay, that remedy has become largely theoretical for anyone who doesn’t manufacture competing products. Is it any wonder that patent enforcement activity is migrating across the Atlantic?
After TC Heartland, a domestic corporation could only be sued for patent infringement in two places: where it is incorporated (for most tech companies, Delaware) or where it has committed acts of infringement AND has a regular and established place of business, both elements required, conjunctively. One important caveat: TC Heartland applies only to domestic corporations. Foreign companies can still be sued wherever personal jurisdiction exists, something to remember when your infringement target is headquartered in Seoul or Shenzhen.
What Counts as a “Place of Business,” and No, Servers Don’t Count
TC Heartland said nothing about what constitutes a “regular and established place of business.” Judge Gilstrap fashioned a four-factor test in Raytheon v. Cray that was, shall we say, accommodating to plaintiffs, under his generous framework, having a sales rep who happened to live in the district was sufficient. The EDTX was going to be just fine, thank you very much.
The Federal Circuit thought otherwise. In In re Cray Inc. (September 2017), it established a far more rigorous three-part test requiring: (1) a physical, geographical location from which business is conducted (virtual spaces insufficient); (2) presence that is steady, uniform, and methodical, not sporadic or transient; and (3) a place of the defendant, owned, leased, or controlled by them, not merely an employee’s home. Translation for the non-lawyers: your sales guy’s apartment in Plano doesn’t count.
Neither do servers. In the tragicomic saga of whether Google’s servers constituted a “place of business,” two EDTX judges looked at virtually identical facts and reached opposite conclusions. Judge Ron Clark said no (Personal Audio v. Google, 2017); Judge Gilstrap said yes (Seven Networks v. Google, 2018). The Federal Circuit settled it in In re Google LLC (2020): servers in third-party data centers are not a place of business. The venue statute requires a human agent, not merely a machine humming away on a rack.
The Rise and (Partial) Fall of Judge Albright
If TC Heartland was an earthquake, the aftershock hit a small city in Central Texas. With the EDTX hemorrhaging cases, patent plaintiffs found a new home in the Waco Division of the Western District of Texas, presided over by Judge Alan D. Albright, a former patent trial lawyer who took the bench in September 2018 and made no secret of his desire to build a world-class patent docket. By Q1 2020, roughly 25% of all new U.S. patent cases were filed before a single judge in Waco, Texas, a city of 140,000 people better known for Dr. Pepper and a certain 1993 siege than for cutting-edge IP jurisprudence.
The appeal was simple: filing in Waco guaranteed your judge; his standing orders promised trial in 18-24 months; and he was, to put it diplomatically, extremely reluctant to grant convenience transfer motions. The defense bar’s term for this was somewhat less diplomatic.
Starting in July 2020, the Federal Circuit began systematically reversing Albright’s transfer denials via writs of mandamus. By 2021, the court had issued eighteen mandamus reversals, nine in Q4 alone, calling one delay “egregious” and “blatant disregard for precedent.” The overall grant rate: approximately 56.5% on mandamus petitions against Albright, extraordinarily high for a remedy supposedly reserved for truly exceptional circumstances. The recurring errors: overweighting Waco’s fast docket, underweighting witness convenience, overstating judicial economy, and ignoring where the accused technology was actually developed.
The most colorful case may be In re Samsung (2021), where patent owner Ikorongo Texas LLC had been formed as a Texas entity just one month before filing suit, received assigned rights just ten days before the complaint, and had zero witnesses in Texas. (One might call this the “you can’t just rent a P.O. box in Waco” rule.)
The endgame came on July 25, 2022, when Chief Judge Orlando Garcia relented under pressure from Supreme Court Chief Justice Roberts and issued a standing order randomly assigning new patent cases among twelve WDTX judges, reducing Albright’s share from 100% to approximately 8%. Patent filings in Waco promptly fell off a cliff.
The Fifth Circuit Enters the Chat
Just when defendants thought the landscape had stabilized in their favor, the Fifth Circuit weighed in. In In re Planned Parenthood (2022), it reminded everyone that “district courts have broad discretion in deciding motions to transfer” and overturning such rulings requires showing “clear abuses of discretion that produce patently erroneous results”, a warning shot across the Federal Circuit’s bow. Then In re Clarke and In re Chamber of Commerce (both 5th Cir. 2024) clarified that a defendant seeking transfer must show the new venue is “significantly and actually more convenient”, not just theoretically. The net effect may make it somewhat harder to transfer cases out of Texas, a welcome development for patent owners whose venue options have shrunk dramatically since 2017.
The Venue Transfer Scoreboard
We’ve compiled a comprehensive matrix of every published venue transfer decision originating from the Eastern and Western Districts of Texas since TC Heartland covering the EDTX and all the Albright-era WDTX mandamus decisions. This is not an academic exercise; it’s a tactical resource. If you’re considering filing (or defending) a patent case in Texas, these are the cases that will determine whether your case stays or goes. You can access the full venue transfer tables here.
Lessons for Patent Owners
If the scoreboard teaches us anything, it’s that venue is no longer an afterthought, it’s a strategic decision that can make or break an enforcement campaign.
Delaware is the new EDTX. Since roughly 65% of Fortune 500 companies are incorporated in Delaware, it has become the de facto default. If you’re suing a Delaware corporation, file in Delaware. Don’t get creative.
If you want Texas, you need real connections. Genuine physical presence, offices, employees, facilities. Remote workers don’t count. Servers don’t count. Car dealerships probably don’t count. And don’t try to manufacture venue: the Ikorongo case taught that forming a Texas entity weeks before filing will affirmatively damage your case.
Where the technology was developed matters enormously. If the engineers and R&D are in Northern California, transfer to the NDCA is almost a foregone conclusion. Foreign defendants, however, remain the exception; TC Heartland applies only to domestic corporations.
Watch the Fifth Circuit. The Clarke and Chamber of Commerce decisions (both 2024) may signal a shift back toward greater deference to trial courts on transfer motions, a welcome development for patent owners.
The bottom line: If you want to monetize your patents, whether directly or via sale, venue strategy must be integrated into your enforcement planning from Day One since both buyers, funders and litigators consider it as an important factor in their decision process. The margin for error is thin, the cost of getting it wrong is high, and the law is still evolving.
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Wilus Seeks First U.S. SEP Injunction in 20 Years – Backed by DOJ and USPTO
Korean R&D institute Wilus has asked Chief Judge Gilstrap in EDTX for a permanent injunction against ASUS subsidiary Askey over Wi-Fi 6 SEPs. Askey has stipulated to infringement — so the sole question is remedy. If granted, it would be the first U.S. SEP injunction since eBay (2006) effectively eliminated them. The timing is no accident: on February 27, the DOJ and USPTO filed their third joint pro-injunction Statement of Interest since June 2025 — this time in Collision v. Samsung — arguing again that even non-practicing patent holders can suffer irreparable harm. MLex reports that 2026 is the critical year for U.S. SEP enforcement, with the USPTO, USTR, and Senate all engaged. Meanwhile, Unified Patents has pivoted to ex parte reexamination to challenge a related Wilus patent — a revealing tactical shift now that IPR institution has become so difficult.
Let me be blunt about what a Wilus win would mean. For nearly two decades, implementers have assumed SEP injunctions in America are off the table. That assumption fueled a generation of “efficient infringement” strategies: delay, deny, challenge at the PTAB, and only pay when forced — knowing the worst case is a reasonable royalty. A permanent injunction changes that calculus overnight. You don’t lowball the patent owner when the alternative is an empty shelf at Best Buy. And the fact that the Trump DOJ and USPTO are filing brief after brief in support isn’t a one-off — it’s a coordinated campaign. The pendulum is swinging back. This case could be the moment it swings hardest. Stay tuned!
Director Squires Adds U.S. Manufacturing to PTAB Institution Framework, But Watch the Blind Spot
On March 11, USPTO Director John Squires issued a memo adding U.S. manufacturing footprint and small business status as new discretionary factors for IPR/PGR institution. The Director will now consider whether accused products are manufactured domestically, whether the patent owner’s competing products are made in the U.S., and whether the petitioner is a sued small business. The memo pointedly noted that the most frequent PTAB filers are large companies with little or no domestic manufacturing, Senator Coons once observed that Samsung, Apple, Google, Intel, and Microsoft accounted for 80% of all petitions. Combined with “settled expectations” and institution rates that have cratered from 68% (2024) to under 40% (late 2025), the PTAB is becoming increasingly inhospitable for serial petitioners.
The intent is laudable, if you moved your factories to Shenzhen and you’re using an American agency to kill American patents, maybe that should count against you. But the memo has a blind spot that should concern every independent inventor, university tech transfer office, and NPE. Consider the second factor: “the extent to which the patent owner’s competing products are manufactured in the United States.” What happens when the patent owner doesn’t manufacture anything? Universities don’t make products. Individual inventors who license patents don’t run factories. NPEs, by definition, don’t compete with accused products. It’s like offering a tax credit for homeownership to people who rent. Patently-O’s Dennis Crouch also raised a legitimate TRIPS Article 27 concern; you can’t discriminate in patent rights based on where products are produced. Net/net: good news for patent owners who practice their inventions, but Director Squires needs to ensure this reform doesn’t create collateral damage for the very small inventors this administration claims to champion.
Litigation Funding Disclosure: A Reform That Could Backfire on Small Patent Owners
On March 10, LCJ and the U.S. Chamber’s ILR proposed amending FRCP 26(a)(1)(A) to require mandatory disclosure of third-party litigation funding in all federal civil cases. This follows the House Judiciary Committee’s January consideration of the TPLF Abuse Act. Proponents argue disclosure helps identify conflicts, reveals foreign influence, and aids settlement dynamics. The LCJ-ILR submission pointedly noted that funders tell courts they exercise “no control” over lawsuits while telling their investors the opposite. Federal courts remain deeply split, only 40% of disclosure motions are currently granted.
The Inventors Defense Alliance opposes mandatory disclosure, arguing funding is often the only way small patent owners can stand up to corporations that rely on delay and intimidation. They’re right; but that’s only half the problem. Here’s the part disclosure advocates never address: mandatory disclosure doesn’t just affect funded plaintiffs; it devastates unfunded ones. If the rules require disclosing whether you have funding, then silence becomes information. A defendant facing a small inventor who has disclosed no funding now knows, with certainty, that this plaintiff is fighting on their own dime. And what does a well-resourced defendant do with that? Exactly what you’d expect: bury the plaintiff under discovery, Daubert motions, IPR petitions, and every dilatory tactic in the book, knowing the money runs out before trial. It’s the litigation equivalent of a poker player seeing their opponent has three chips left and going all-in on every hand.
Disclosure of the existence of funding? Probably reasonable. Disclosure of amounts and terms? That hands defendants a roadmap to your litigation budget. And any framework that effectively signals which plaintiffs are not funded is an engraved invitation for wars of attrition against the most vulnerable patent owners.
There is a silver lining to this cloud, however, and it just arrived courtesy of California’s redistricting commission. Rep. Darrell Issa, the sponsor of the TPLF Abuse Act and the longtime chair of the House IP Subcommittee, announced on March 6 that he will not seek reelection. For those who have been reading this column for a while, Issa’s record on patent rights needs no introduction: he was an original co-sponsor of the America Invents Act that created the PTAB, the driving force behind the Innovation Act (which would have imposed fee-shifting and heightened pleading requirements on patent plaintiffs), and someone who once declared in a hearing that “plaintiff and troll will be interchangeable” for purposes of his opening statement. That a man who made his fortune on a car alarm patent spent a quarter-century in Congress systematically undermining the patent rights of other inventors is an irony that writes itself. His departure from the IP Subcommittee chairmanship creates a genuine opportunity for new leadership that might actually balance the interests of innovators and implementers, rather than treating every patent plaintiff as a shakedown artist. Whether that opportunity is seized depends entirely on who picks up the gavel. The devil, as always, is in the details.