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

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

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.

PTAB Updates: Director Vidal Grants Director Review, Sets Schedule and Authorizes Amicus Briefing

  • July 14, 2022
  • Article

Associated People

Associated Practices


On July 7, 2022, Director Kathi Vidal granted Director review of the PTAB decisions in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064, Paper 47 (PTAB July 7, 2022) and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, Paper 35 (PTAB July 7, 2022).

Director Vidal also issued several orders identifying the issues subject to review, setting the schedule for the Director review process and authorizing party briefing and amicus briefing.  Director Vidal noted that the proceedings present issues of first impression and involve issues of particular importance to the Office.  See our June 23 and April 22 posts on the Director review process for the full list of issues that warrant Director review. 

The following issues were identified as relevant and subject to review in each case: 

  • What actions the Director, and by delegation the Board, should take when faced with evidence of an abuse of process or conduct that otherwise thwarts, as opposed to advances, the goals of the Office and/or the America Invents Act (AIA); and
  • How the Director, and by delegation the Board, should assess conduct to determine if it constitutes an abuse of process, or if it thwarts, as opposed to advances, the goals of the Office and/or the AIA, and what conduct should be considered as such.

Director Vidal noted that the Board did not err in its decision to institute review of a meritorious petition where the challenged patent was previously litigated in district court and was the subject of previous IPR proceedings not instituted based on Fintiv.  She further clarified that none of the challenges presented in the cases have yet been adjudicated, either by the Board or by the district court in parallel litigation.  Accordingly, Director Vidal stated that no further briefing is permitted as to the merits of the unpatentability challenges as it pertains to institution or the Fintiv or General Plastic factors.  The order also noted that new declaratory evidence is not permitted.  The parties were authorized to submit initial briefing, limited to the above-identified policy issues.  Director Vidal also authorized the parties to file responsive briefing.

With respect to the amicus briefing, Director Vidal authorized amicus curiae to submit briefs to Director_PTABDecision_Review@uspto.gov.  The order noted that the amicus briefs must be limited to the above-identified policy issues, must be no more than 25 pages and must be submitted by August 4, 2022.  Director Vidal clarified that amici are not authorized to submit evidence.   In addition, she stated that the Board will enter the amicus curiae briefs into the record.

The orders, and the status of other Director review requests, can be found here.  More information about the interim Director review process can be found here.

We will continue to monitor developments in this area and provide updates on our website.