NEWS

The Shape of IPR Institution Under Director Squires

January 29, 2026

For a long time, inter partes review felt like gravity. If you owned a patent and someone filed an IPR, it was less a question of whether you’d be dragged into the PTAB and more a question of how painful it would be. Under Director John Squires, that gravity is still there, but it’s weaker, more selective, and far more dependent on context. For patent holders and inventors, that’s a real shift, and a meaningful one.

IPR Institution Under Director Squires: from Automatic to Selective

Let’s start with the headline: IPR is no longer automatic. Institution rates have recovered from the near-freeze of mid-2025, but they remain far below historical averages. That tells us two things. First, the PTAB isn’t “closed for business.” Second, and more important for patent owners, petitioners now have to earn their way in. Showing a reasonable likelihood of invalidity is no longer enough by itself. Director Squires is asking a different question: why should the Office spend its limited resources re-litigating this patent at all?

That change alone alters the leverage equation. The PTAB is no longer a default pressure tactic; it’s a discretionary forum. And discretion cuts both ways, but lately, it’s been cutting in favor of patent owners who have acted like responsible owners.

The Importance of Patent Age and Owner Conduct

One of the biggest signals coming out of recent decisions is how much the age of a patent and the owner’s conduct matter. Patents that have been around for a while, and that have been licensed, commercialized, or enforced, are increasingly treated as having “settled expectations.” In plain English: if you built a business around your patent, or licensed it to others who did, the Office is less inclined to yank the rug out from under you years later.

This doesn’t mean younger patents are fair game. But it does mean that ownership alone isn’t enough. The PTAB is looking at what you did with the patent. Did you put it to work? Did others rely on it? Or did it just sit quietly in a drawer?

The Risks of Inaction: Sleeping on Your Patent Rights

And that last scenario matters more than many inventors realize. Several recent decisions show that sleeping on your rights can weaken your position.

If a patent owner waits a decade to assert, tells potential infringers a license isn’t needed, or only files suit after the patent has expired, the equities start to flip.

In those cases, the PTAB has shown sympathy for challengers who reasonably believed the patent would never be enforced. That’s not a technicality, that’s a warning. Delay is no longer neutral. Sometimes it’s evidence.

Parallel Litigation and the Stakes for Challengers

Another major shift favors patent owners even more directly: petitioners now have to go all in. In cases with parallel litigation, a Sotera-style stipulation – giving up all invalidity arguments in district court if the IPR is instituted – is basically mandatory. But it’s no longer a golden ticket. It’s the price of admission, not a guarantee of entry. For challengers, that raises the stakes dramatically. For patent owners, it reduces the “heads I win, tails you lose” dynamic that plagued the system for years.

Consistency and Fair Play: PTAB’s Growing Intolerance for Gamesmanship

Layered on top of that is a growing intolerance for gamesmanship. Petitioners who argue one claim construction in court and another at the PTAB without a compelling explanation are finding the door closed. Consistency matters again. That may sound basic, but it’s a real cultural shift and one that benefits inventors who have long been forced to defend against shape-shifting theories.

IPR as Equity Practice: The Broader Shift in PTAB Strategy

Stepping back, the emerging picture is this: IPR institution now looks a lot like equity practice. The challenger still has to show a likelihood of success, but that’s just step one. The PTAB is also weighing fairness, reliance, timing, and whether administrative review is actually the right tool for the dispute. That’s a far cry from the early years of IPR, when validity challenges felt almost mechanical.

Practical Takeaways for Inventors and Small Patent Owners

For inventors and smaller patent owners, the practical lesson is simple but powerful. How you treat your patent over its lifetime now directly affects how well it can defend itself. Licensing helps. Commercialization helps. Reasonable, timely enforcement helps. Strategic silence, abandonment, or mixed signals do not.

The New Reality: IPR as a Selective Remedy, Not an Automatic Threat

IPR hasn’t gone away. But it’s no longer an automatic tax on owning a patent. It’s becoming a selective remedy, applied with judgment rather than reflex. And for inventors who view their patents as real business assets, not just litigation chips, that’s a change worth paying attention to.

Lots of news about IPR’s recently. Here were some of the earlier developments:
The Denials Will Continue Until Morale Improves

What the USPTO’s 0% IPR Institution Rate Means for Patent Holders

USPTO Proposes Major IPR Changes: What Patent Owners Should Know

Your U.S. Patent Might End Up in a German Court (Yes, Really)

January 23, 2026

When U.S. Patent Disputes Go Global

If you’re an inventor or a patent owner, you probably have a simple mental map of how patents work: U.S. patents get enforced in U.S. courts, European patents in Europe, and never the twain shall meet. That map is starting to look outdated.

A recent patent fight between BMW and a patent owner called Onesta IP shows why you may want to redraw it.

Onesta owns a portfolio of graphics-processing patents it picked up from AMD. It believes BMW infringes those patents by using Qualcomm chips in its vehicles. So far, nothing unusual. Here’s where it gets interesting: instead of suing BMW in a U.S. court over the U.S. patents, Onesta filed suit in Germany—asserting not only a European patent, but two U.S. patents as well.

If your first reaction is, “Wait… you can do that?”—you’re not alone.

Why Patent Owners Are Filing U.S. Patents in German Courts

Onesta’s strategy wasn’t a stunt. It was made possible by a recent decision from Europe’s highest court that quietly changed the rules. Under this new approach, courts in EU countries can hear cases involving non-European patents if the defendant is based there. BMW is headquartered in Munich, so Munich became fair game.

Now here’s the part patent owners really care about: German patent courts move fast. Very fast. And if they find infringement, they typically issue an injunction as a matter of course. No long balancing tests. No hand-wringing about “irreparable harm.” Infringement equals “stop.”

Compare that with the United States, where getting an injunction can feel like trying to win an Olympic decathlon—especially if you license your technology instead of manufacturing products yourself. For many patent owners, Germany looks like a shortcut around those U.S. roadblocks.

BMW Responds to International Patent Lawsuit

BMW didn’t wait around to see how this would play out. Instead, it raced to a U.S. federal court in Texas and asked the judge to step in. The court agreed, at least for now, issuing an order that blocks Onesta from using the German case to undermine the U.S. proceedings.

That tells us something important: when patent disputes go international, they can turn into jurisdictional chess matches very quickly. One side files here, the other side files there, and suddenly the fight isn’t just about infringement—it’s about which court gets to decide anything at all.

The Growing Challenge of International Patent Jurisdiction

For years, U.S. courts have refused to hear foreign patent claims, even when doing so would be efficient. The reason has been “international comity”—a polite way of saying, “We won’t step on your toes if you don’t step on ours.” The assumption was that foreign courts would treat U.S. patents with the same restraint.

Europe’s new approach puts that assumption under serious strain. If foreign courts are willing to adjudicate U.S. patent rights, U.S. courts may eventually rethink their own self-imposed limits. That hasn’t happened yet—but the door is clearly cracked open.

What Patent Owners Should Know About International Enforcement

First, forum choice matters more than ever. Where a patent dispute is filed can determine how fast things move, how much leverage you have, and whether an injunction is even on the table.

Second, international patent portfolios are no longer just defensive trophies. They can shape enforcement strategy in ways that weren’t realistic a few years ago.

Third, global patent disputes can get expensive and messy in a hurry. Multiple courts, multiple legal systems, and competing orders are not for the faint of heart.

And finally, this is another reminder that patent strategy isn’t just about getting claims allowed. It’s about thinking ahead—where your technology will be used, who might need a license, and what enforcement options you want available if things go sideways.

The short version? The patent world is getting smaller, faster, and less predictable. If your inventions are being used worldwide, your enforcement strategy should be thinking worldwide too.

We have an extensive FAQ section covering foreign filings you can check here: https://fishiplaw.com/faqs/patent-faqs/faq-foreign-filing/

We also have a video covering some of the issues with foreign patent filings.

“Configured To” Can Configure You Right Out of a Patent

January 20, 2026

Why Inventors Should Care About the Blue Buffalo Decision

If you’re an inventor thinking about filing a patent, here’s a recent Federal Circuit decision you should care about—In re Blue Buffalo Enterprises (Fed. Cir. Jan. 14, 2026). Not because it changes the law (it’s nonprecedential), but because it exposes a trap that patent drafters fall into all the time.
The trap? Two innocent-looking words: “configured to.”

How “Configured To” Claim Construction Can Undermine Your Patent Claims

Blue Buffalo’s patent application claimed a pet food container with sidewalls “configured to be readily deformable” and a built-in tool “configured for” breaking up or tenderizing food. That sounds reasonable and it sounds structural. It also sounds like smart patent drafting. The problem is how courts usually read that phrase.

Federal Circuit Interpretation: “Configured To” Means “Capable Of”

The Federal Circuit said, once again: unless your specification clearly says otherwise, “configured to” means “capable of,” not “specifically designed to.” And that difference can make or break your patent.

Structure Over Intent: Why Patent Claims Are About the Thing, Not Your Thoughts

Here’s why.
Patent claims—especially product claims—are about structure, not intent. Courts don’t ask what the inventor meant to build. They ask what the thing is. If a prior art product can do what your claim says—even if it was built for a different reason—it can still knock out your claim.

Chief Judge Moore’s Explanation at Oral Argument

Chief Judge Moore nailed it at oral argument. Paraphrasing: if a structure “happens to actually do that,” that’s good enough. You don’t get extra credit because you intended it to do so.

That’s a big deal for inventors, because many applications quietly rely on “configured to” as a kind of magic phrase—hoping it will smuggle design intent into the claim without saying so explicitly. Courts are not buying it.

Why Blue Buffalo’s Argument Failed

Blue Buffalo tried to argue that “configured to” should mean “specifically designed to.” The judges were unimpressed. Why?

Because that would turn every patent case into a mind-reading exercise: What was the designer thinking? What was the manufacturer’s intent? That’s not how patent law works. Infringement is strict liability. Intent doesn’t matter.

How Prior Art Defeated Blue Buffalo’s Claims

So how did Blue Buffalo lose? Once the court adopted the “capable of” interpretation, the prior art fit the claims. Blue Buffalo even admitted that under that construction, the obviousness rejection stood. Game over.

Inventors often point to older cases like Aspex Eyewear and Giannelli and say, “See? ‘Configured to’ can be narrower.” True—but those cases had something Blue Buffalo didn’t: specific, concrete disclosures showing what about the structure made it especially suited for the function. Not just that it could do it, but why it did it that way.

Lesson for Inventors: Be Specific About Structure, Not Just Function

Here’s the lesson—and it’s an important one.

If a feature really matters to your invention, don’t just say it’s “configured to” do something and hope for the best. Explain what about the structure makes it work. Geometry. Placement. Relationships between parts. Physical constraints. Those are the things that earn you a narrower, more defensible claim.

The Risks of Vague Functional Language

Yes, being specific can feel risky. One reason “configured to” became popular was to avoid narrow means-plus-function claims and keep room for future variations. But vagueness has its own cost. Broad, fuzzy claims are easy to invalidate.

Blue Buffalo’s Key Takeaway for Patent Drafting

Blue Buffalo doesn’t rewrite patent law. But it reinforces a reality inventors need to understand early: functional language without structural support is a fragile foundation.

If you want “configured to” to mean more than “capable of,” you have to earn it in the specification. Otherwise, those two little words may end up configuring your patent application straight into a rejection.

Want to see some related articles on patent claims? These articles might interest you:

What Did Those Claims Consist of?

Jazz Loses the Tune: Courts Strike a Sour Note on System Patents

Patent Like You Mean it, But Also Show the Structure

A Shift in Section 101? What Recent PTAB Decisions Mean for Software Inventors

January 15, 2026

For years, Section 101 rejections have been the biggest obstacle for software and computer-implemented inventions. Recently, however, the Patent Trial and Appeal Board (PTAB) has been reversing those rejections at a much higher rate. This suggests a meaningful shift in how patent eligibility is being evaluated at the USPTO.

What is a Section 101 rejection in Software Patent Law?

Section 101 defines what types of inventions are eligible for patent protection. Courts have long held that abstract ideas—including many business methods and software concepts—are not patentable on their own.

In practice, examiners often reject software claims by arguing that they are directed to an abstract idea and merely implemented using generic computer components, such as standard servers or networks. Under the Supreme Court’s Alice framework, claims that lack an “inventive concept” beyond that abstract idea are ineligible.

How PTAB Decisions Are Changing Section 101 Eligibility Analysis

Recent PTAB decisions indicate that the Board is no longer accepting conclusory assertions that claimed elements are “well-understood, routine, and conventional.”

Instead, the PTAB is increasingly requiring actual evidentiary support for those conclusions. This is consistent with Federal Circuit precedent such as BASCOM and Berkheimer.

Critically, the Board is recognizing that an inventive concept can exist in a non-conventional arrangement of otherwise conventional computing components. Labeling servers or networks as “ordinary” is no longer enough to establish that a particular claimed combination was routine.

What Recent PTAB Section 101 Rulings Mean for Software Inventors

This trend does not make abstract ideas patentable, nor does it eliminate Section 101 as a hurdle. But it does improve patent prospects for inventions that:

solve concrete technical problems (e.g., latency, synchronization, security), and
do so through specific technical architectures or system arrangements.

For many applicants, eligibility disputes may increasingly give way to more traditional patentability issues such as prior art and obviousness.

Why Software Patent Drafting Still Matters Under Section 101

This shift rewards well-drafted applications, not broad or purely functional claims. Applications that clearly explain the technical problem and the technical solution are best positioned to benefit from the PTAB’s approach.

The PTO is not reopening the door to all software patents—but it is demanding more rigor in how eligibility rejections are justified. For inventors with genuine technical innovations, that makes Section 101 a more predictable—and more navigable—part of the patent process.

The changing landscape of Sec 101 rejections as seen in this post from earlier in 2025: The Harsh Reality of Sec 101 Appeals

The USPTO’s Exciting Story: Almost Nothing Changed

January 12, 2026

Picture source: https://patentlyo.com/patent/2025/12/surprising-headline-stability.html

The USPTO’s 2025 patent data points to an unusual but welcome theme: stability. Utility patent issuances held essentially flat at about 326,000—nearly identical to 2024—continuing a plateau that has persisted since 2021.

Allowance rates were also steady, generally ranging from the high-70% to mid-80% throughout the year, suggesting a predictable examination environment for applicants.

Design patents, however, tell a different story. The USPTO issued roughly 52,000 design patents in 2025, a record high and a 10% increase over the prior year. This growth reflects rising global interest—particularly from non-U.S. applicants—in protecting product appearance in the U.S. market, and highlights design patents as an increasingly important complement to utility protection.

Overall, the 2025 numbers largely reflect examination practices under Acting Director Coke Stewart and prior leadership, with any changes under newly confirmed Director John Squires likely to take time to show up in the data. For patent owners and applicants, the key takeaway is a relatively predictable utility patent landscape, alongside growing momentum and opportunity in design patent filings.

For recent news and updates from the USPTO, consider these articles:
USPTO Launches AI “Pre-Examination Search” Pilot

USPTO Proposes Major IPR Changes

Why Some Business Names Can’t Be Registered Trademarks—and Why KAHWA Survived

January 8, 2026

Why Bayou Grande Matters If You’re Choosing a Brand Name

If you’re picking a business name and thinking about federal trademark protection, the Federal Circuit’s recent Bayou Grande decision offers some practical guidance—especially if your proposed name comes from a foreign language or has more than one possible meaning.

At its core, the case is about a question every brand owner eventually faces: is my business name protectable, or is it too generic to own?

What Is a Generic Name—and Why Can’t You Register It?

A generic term is the common name for a product or service itself. Examples are easy:

You can’t register “Coffee Shop” for café services.
You can’t register “Shoes” for footwear.
You can’t register “Law Firm” for legal services.

Why? Because trademark law isn’t supposed to give one company exclusive rights to the words everyone else needs to describe what they sell. Generic terms belong to the public.

Once a term is deemed generic, it’s permanently unregistrable—no amount of advertising, longevity, or success can fix that. That’s why genericness is the most serious problem a brand name can have.

How the USPTO Tried to Label KAHWA as Generic

Photo source: https://stpetecatalyst.com/kahwa-opens-new-location-expands-franchising/
Photos by Ashley Morales

Bayou Grande has operated coffee shops under the name KAHWA since 2008. When it applied to register the name, the USPTO refused, arguing that:

Kahwa can mean “coffee” in Arabic, and
Kahwa can also refer to a type of Kashmiri green tea.

Because cafés sell coffee and tea, the USPTO concluded that KAHWA was either generic or, at minimum, merely descriptive of café services.

This kind of reasoning is not uncommon. The Office often asks: Does this word name the thing being sold, or a key feature of it? If yes, registration is denied.

Federal Circuit Ruling Protects KAHWA from Generic Trademark Refusal

The Federal Circuit reversed the refusal across the board.

First, it held that the doctrine of foreign equivalents—the rule that sometimes requires foreign words to be translated into English—does not apply when a term has a well-established alternative meaning. Here, the Board itself admitted that kahwa is widely recognized as a specific tea from Kashmir. That alone was enough to make automatic translation improper.

Second—and more importantly for brand owners—the court rejected the USPTO’s evidentiary shortcuts. There was no evidence that any café or coffee shop in the United States actually sells kahwa tea. At oral argument, the PTO conceded that point.

Without real-world evidence, the court held, the USPTO could not claim that KAHWA was generic or descriptive of café services. Speculation about what a business might sell someday is not enough.

Key Lessons from Bayou Grande for Choosing a Trademarked Business Name

If you’re evaluating a potential trademark, Bayou Grande reinforces several key principles:

A name is generic only if consumers understand it as the name of the product or service itself—not because it has a translation or theoretical meaning.
Foreign-language terms are not automatically generic just because they translate to something descriptive elsewhere.
The USPTO must rely on actual marketplace evidence, not assumptions.
Longstanding use of a name as a brand (rather than as a product label) can be powerful.

At the same time, the case is a reminder that genericness is a bright line. If your proposed name truly is the common name for what you sell, trademark law won’t save it.

Choosing a business name isn’t just a marketing decision—it’s a legal one. A name that feels distinctive to you can still trigger a genericness or descriptiveness refusal if the USPTO believes it describes the services themselves.

Bayou Grande shows that those refusals can be beaten—but only with the right facts, evidence, and strategy. That’s why involving trademark counsel early, before a name is locked in, is often the most cost-effective branding decision a business can make.

In our Trademarks FAQ section on Trademark Basics, the different “Levels of Distinctiveness” are covered in more depth.

The Denials Will Continue Until Morale Improves

January 5, 2026

IPR Denials Are Now Standard

After the recently appointed USPTO Director John Squires took the helm, IPR denials have been the standard. This of course isn’t appealing to those that want to challenge patents, so several tried an end-run around the defense by heading straight to the District Court to challenge the Patent Office’s discretionary denials. It didn’t work.

IPR Refresher

In case you aren’t familiar with the IPR, it stands for Inter Partes Review. Inter partes is Latin for “between parties”, and the process allows a third party to challenge the validity of an issued U.S. patent. These reviews are done before the PTAB, and the grounds are limited to lack of novelty (§102) or obviousness (§103). They are typically filed by someone accused of patent infringement, or someone at risk of being sued.

The Federal Circuit Backs Up the PTO

Remember when, if you got a “no” from dad, you’d try your luck by asking mom?

Well Mom (the Federal Circuit) reminded everyone that Dad’s (the PTO’s) decisions on whether to institute an IPR are final and non-appealable. Meaning if the PTO says no, there’s almost nothing you can do about it, even if their reasons are inscrutable.

In Re Cambridge and Settled Expectations

The poster child for this new era is In re Cambridge Industries USA Inc. Here, Cambridge had patents that were seven and nine years old. The USPTO declared these patents to have ‘settled expectations’. Cambridge argued that this “settled expectations” idea wasn’t in the statute, wasn’t subject to notice-and-comment rulemaking, and was unfair. The court, however, was unmoved. They weren’t saying the PTO was right or wrong—they just said Cambridge didn’t have a “clear and indisputable right” to a mandamus order (that’s Latin for “we command you to do something”), and thanks to 35 U.S.C. § 314(d), which bars virtually all judicial oversight of institution decisions, the courts basically can’t command the PTO to change its mind.

Bottom line: the USPTO’s “final and non-appealable” shield is real, it’s strong, and it leaves accused infringers staring at a brick wall.

For the evolving history of the IPR, we suggest these articles: