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

Yorikatsu  Hohokabe, Ph.D.
Kevin L. Hartman, Ph.D.
Daniel J. Pereira, Ph.D.
Brian B. Darville
Andrew M. Ollis
Robert W. Downs
Sameer  Gokhale
John  Sipos
James R. Love
Derek  Lightner, Ph.D.
Teddy S. Gron
Carl E. Schlier
Stefan Uwe  Koschmieder, Ph.D.
Elissa L. Sanford
Jeffrey B. McIntyre
Christopher I. Donahue
Philippe J.C. Signore, Ph.D.
Long  Phan, Ph.D.
Jay E. Rowe, Jr., Ph.D.
Kevin M. McKinley
Jianping (James)  Wu
Christopher  Ricciuti
Dale M. Shaw
Stephen G. Baxter, Ph.D.
Colin B. Harris
David M. Longo, Ph.D.
Eric W. Schweibenz
Frank J. West
Yuki  Onoe
Robert  Tarcu
Yuanyi (Alex) Zhang, Ph.D.
Craig R. Feinberg
Robert T. Pous
Tia D. Fenton
Kurt M. Berger, Ph.D.
Marina I. Miller, Ph.D.
Diane  Jones
Arthur I. Neustadt
Steven B. Chang
Chika (Teranishi) Iitoyo
Kevin Ross  Davis
John S. Kern
Nicholas  Rosa, Ph.D.
Kasumi  Kanetaka
Alec M. Royka
Grace E. Kim
John F. Presper
Aldo  Martinez
Bogdan A. Zinchenko
Norman F. Oblon
J. Derek  Mason, Ph.D., CLP
Richard D. Kelly
Edwin D. Garlepp
Akihiro  Yamazaki
Thomas M. Cunningham, Ph.D.
Jenchieh (Joseph) Yuan
Alexander B. Englehart
Eckhard H. Kuesters
Ryan W. Smith
Tao  Feng, Ph.D.
Charles L. Gholz

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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.

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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.

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Global Reach

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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.

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ACCOLADES

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

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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.

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Telephone: 703-413-3000
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Telephone: +81-3-6212-0550
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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.

In a Rule 12(b)(6) Motion to Dismiss Patentee's IPR Arguments Doom Its Complaint for Patent Infringement

  • June 8, 2022
  • Article

Associated People

Associated Technologies


On June 6, Judge Albright granted Meta Platforms. Inc.’s (Meta) 12(b)(6) motion to dismiss a complaint filed by Grecia Estate Holdings LLC in part relying on Grecia’s representations in IPR2016-00789 (IPR) to the PTAB that successfully defeated institution of the IPR.

The complaint alleged infringement of claim 16 of U.S.P. 8,402,555 (‘555). Claim 16 reads:

16. The computer program product of claim 15, wherein the membership verification token comprises at least one token selected from a group consisting of a purchase permission, a rental permission, or membership permission coupled to a royalty scheme;

wherein the permission is represented by one or more of a letter, number, combination of letters and numbers phrase, authorization, list, interface button or an instrument of trade for access rights of the encrypted digital media.

Claim 15 required that the “membership verification token provided by a first user, corresponding to the encrypted digital media” which is also a limitation of claim 16. Grecia in its complaint asserted that Facebook user’s “PayPal account or Debit and Credit Card number” was the “membership verification token.” However, in the IPR Grecia asserted in its POPR that credit card information could not be the token because a credit number corresponds to the credit card account and not digital media. In the IPR the assertion carried the day for Grecia and institution of the IPR was denied. As a result, the court found that Grecia’s allegations in the complaint contradict its prior statements in the IPR as to the scope of the claim. The court found that Grecia failed to “articulate why it is plausible that the accused product infringes the patent claim.” The court concluded Grecia cannot plausibly allege infringement on this ground.

The key point is that representations made in an IPR as to claim scope can provide a basis for a dismissal on the pleadings. The IPR was treated by the court as part of the prosecution history of the patent citing Aylus Networks, Inc. v. Apple, Inc., 856 F.3d 1353, 1362 n.3 (Fed. Cir. 2017). As such in an IPR one must be careful in arguing for patentability not to create a history which makes pleading infringement difficult or impossible.