Sisvel licensing director and legal counsel Alex Debski breaks down how practitioners will navigate major changes in the courts and at the USPTO

US SEP practice is at a critical juncture. With the current administration’s leadership firmly established at the USPTO and the DOJ Antitrust Division, the federal government has pivoted towards a more aggressive defence of patent holders’ rights. Legal practice is currently digesting significant shifts in agency policy - most notably a dramatic rise in discretionary denials at the Patent Trial and Appeal Board (PTAB) - as well as changes in areas such as damages stemming from recent appellate rulings.

Meanwhile, overseas developments are pushing the US towards finding its voice on global SEP questions. Worldwide FRAND determinations and long-arm infringement claims in foreign jurisdictions such as the United Kingdom and Germany, are increasingly coming to the attention of American courts. Against this backdrop, there are signs of a more joined-up US policy response to protect and empower domestic innovators.

These are just a few of the threads combining to make this a complex environment for US SEP holders.

PTAB changes likely to stick, for now

The PTAB has seen a dramatic pendulum swing in favour of patent owners, largely driven by the exercise of discretionary denials. Under the current leadership of Director John Squires, the USPTO has reclaimed significant discretion over the institution of IPRs.

Early data following this shift indicated that institution denials rose to approximately 80% in the initial months of the new policy – a stark reversal of historical norms where a high percentage of challenged claims were invalidated.

Heavy users of the IPR system have challenged these changes along multiple tracks: through direct appeals against PTAB decisions not to institute, as well as in cases testing whether the new policy was properly implemented under the Administrative Procedure Act and other laws.

You can expect various legal battles over the policy shift to continue making headlines through 2026, but they are unlikely to succeed in restoring the status quo ante. The “absolute discretion” granted to the USPTO director in the relevant statute will make it very hard for opponents of the new policy to reverse it through litigation. This means that the rules are likely to remain in place unless and until there is a new administration with a completely different view on patent rights.

This is a big change in the calculus for patent litigants and could result in more US SEP assertions as rights holders consider their international options.

Plaintiffs must rethink damages theories

For US patent litigators, a significant trend entering 2026 is the Federal Circuit’s increasingly rigorous scrutiny of expert testimony on patent damages. The 2025 decision in EcoFactor was the latest in a series of suits in which the appellate court has become notably harsh on damages experts who fail to provide sufficient technical and economic detail.

One important holding in EcoFactor was that the lower court had not ensured that the expert testimony was supported by adequate facts and data. In cases involving large portfolios, licences structured as lump-sum agreements are frequently ‘unpacked’ to produce a per-unit royalty rate to be used as a comparable. The courts have given notice that this cannot be done in too broad or ambiguous a manner.

These exercises are now under the microscope more than ever. While this creates additional work for patent owners, they should be able to meet the heightened standards with the right support. Plaintiffs and the experts they retain will need to provide a detailed methodology for how a portfolio licence might translate to a specific rate for a handful of asserted claims. Failure to do so may lead to findings that juries had no reasonable basis to award requested damages, resulting in costly remands and new damages trials.

Injunctions have effectively been off the table for US patent owners in the post-eBay landscape. This has led to many important SEP disputes playing out elsewhere. The prospect of major monetary damages has thus become the key feature of US patent litigation. It will therefore be critical to monitor how this area of practice develops after EcoFactor and whether more robust damages theories generate sizeable awards that are able to survive appeal.

US courts enter the global fray

In recent years, the US has been a secondary venue in many major global SEP battles; plaintiffs have sought out judgments at the UPC, as well as in the German courts and those of other countries where injunctions are available; while defendants have tried to obtain global FRAND rulings in places such as the UK and China.

The CJEU’s BSH decision – which opens the door for EU-based courts to rule on infringement of patents granted in non-EU member states – looks set to drag the United States into the jurisdiction wars much more directly. We have already seen this happen with the Onesta v BMW case, in which an effort to enforce US patent rights in Germany drew a swift response from Judge Alan Albright in the Western District of Texas, who issued an anti-suit injunction. That has teed up a Federal Circuit appeal which – although not a SEP case – will be closely watched by the FRAND world.

A global voice for SEP owners?

Perhaps the most important trend for SEP owners to watch in the year ahead is the US administration’s potential emergence as a more active force in FRAND policy questions globally.

Since her appointment as the DOJ Antitrust Division’s deputy assistant attorney general for international, policy and appellate matters, Dina Kallay has taken several public positions favourable to SEP owners. She has affirmed the serious threat to innovation from hold-out, raised concerns over so-called ‘royalty-free’ standards and described licensing negotiation groups as illegal buyers’ cartels.

Furthermore, the USPTO’s recently announced SEP Working Group is another signal that the US government may start to push back against policies in other jurisdictions which could be detrimental to standards innovation. The stated goals of this body are restoring robust patent holder remedies, facilitating participation in standards-setting and promoting transparency.

Executive action

The positive shifts in the US environment for SEP owners have been the result of energetic executive and agency-level policy. It remains to be seen whether the administration will attempt to put its weight behind the various legislative patent reform proposals – to undo the eBay framework, reform Section 101 and legislate PTAB changes – that have thus far failed to gain traction. If legislative reforms are too tall a task, then future changes in administration could once again bring a dramatic swing of the pendulum.

Alex Debski is director, licensing at Sisvel US and counsel, legal & business at the Sisvel Group