the firm's post-grant practitioners are some of the most experienced in the country.

Technologies

Artificial Intelligence (AI)
Artificial Intelligence (AI)
Digital Health
Digital Health
Energy & Renewables
Energy & Renewables

Fast Facts

About Our

Law Firm

About Our Law Firm

Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.

Get to know our

History

Get to know our History

1968
Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.

Our Local and

Global Reach

Our Local and Global Reach

Outside the US, we service companies based in Japan, France, Germany, Italy, Saudi Arabia, and farther corners of the world. Our culturally aware attorneys speak many languages, including Japanese, French, German, Mandarin, Korean, Russian, Arabic, Farsi, Chinese.

A few of our

ACCOLADES

A few of our ACCOLADES

Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.

OPPORTUNITIES FOR YOUR

Career

OPPORTUNITIES FOR YOUR Career

From the minute you walk through our doors, you'll become a valuable part of a team that fosters a culture of innovation, client service and collegiality.

A few ways to

GET In Touch

A few ways to GET In Touch
US Office

Telephone: 703-413-3000
Learn More +


Tokyo Office

Telephone: +81-3-6212-0550
Learn More +

Downloadable

Patent Forms

Downloadable Patent Forms

The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.

August 2022 Federal Circuit Updates

  • September 1, 2022
  • Firm News

Update by Donald R. McPhail

In Hologic, Inc. v. Minerva Surgical, Inc., No. 2019-2054 (August 11, 2022), a panel consisting of Judges Stoll*, Clevenger, and Wallach considered whether assignor estoppel precluded Minerva’s validity challenge to claim 1 of U.S. Patent No. 9,095,348 based on an earlier assignment of U.S. Patent No. 6,813,520 to Hologic from Minerva’s founder. This case had been remanded by the Supreme Court following its decision in Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298 (2021) holding that assignor estoppel remained a valid doctrine, but “only when an inventor says one thing (explicitly or implicitly) in assigning a patent and the opposite in litigating against the patent’s owner.” The panel was therefore tasked with determining whether claim 1 of the ’348 patent was “materially broader” than the claims of the ‘520 patent.  Ultimately finding that it was not, the panel held that Minerva was estopped from challenging the validity of the claim.

In Click-to-Call Technologies LP v. Ingenico, Inc., No. 2022-1016 (August 17, 2022), a panel consisting of Judges Stoll*, Schall, and Cunningham considered the application of 35 U.S.C. § 315(e)(2) to an IPR that had been instituted by the Board on less than all petitioned grounds.  Significantly, the non-instituted grounds challenged a claim (claim 27) that the instituted grounds did not challenge. During the pendency of the IPR, the Supreme Court decided SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018) and overruled the practice of partial institutions by the Board.  Ingenico, however, never sought remand after SAS for the Board to consider the challenge on the non-instituted grounds.  The panel concluded that Ingenico was estopped from challenging the validity of claim 27 due to IPR estoppel.

In In re Killian, No. 2021-2113 (August 23, 2022), a panel consisting of Judges Taranto, Clevenger, and Chen* considered whether a method of determining eligibility for Social Security disability benefits was patentable subject matter under 35 U.S.C. § 101. This case came up on appeal from the Patent Trial & Appeal Board, which had affirmed the examiner’s rejection for lack of patentable subject matter. Considering the first prong of the Alice test, the panel determined that the claimed process was an abstract mental process which could be performed in the human mind and was therefore patent-ineligible. Turning to the second prong, the panel agreed with the Board that there was no inventive concept to be found in the steps recited in the claims on appeal. The panel therefore held that the claims were not directed to patentable subject matter.