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.
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.
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.
Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.
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.
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.
April 28-30, 2024
November 16, 2023 - In-Person in Munich
October 27, 2023
Before LOURIE, MOORE, and REYNA, Circuit Judges. Illumina, Inc. and Sequenom, Inc. ("Illumina") filed suit against Ariosa Diagnostics, Inc., Roche Sequencing Solutions, Inc., and Roche Molecular Systems, Inc. ("Roche") alleging infringement of U.S. Patents 9,580,751 and 9,738,931. Roche moved for summary judgment that the asserted claims were invalid under 35 U.S.C. § 101. The district court granted Roche's motion holding that the claims of the '751 and '931 patents were directed to ineligible subject matter. Illumina appealed. The Federal Circuit ("the Court") reversed the district court's grant of summary judgment and remanded for further proceedings.
A patent listing in the Orange Book provides the innovator drug company with a potent tool for excluding generic competitors who wish an ANDA application or 505(b)(2) drug approval applications relying upon the innovator's efficacy and safety data. If a patent is listed in the Orange Book the generic applicant must provide notice to the NDA holder and the patentee (if different) of the application's filing. The patentee then has 45 days to initiate litigation which would cause a 30-month stay of the FDA approval of the generic drug. Normally patents to a drug's packaging are not listable in the Orange Book, however, an exception exists for packaging which also functions as the drug's applicator. Sanofi took advantage of this provision to list U.S.P. 8,556,864 (‘864 patent) which was directed to the drive mechanism used in its injector pen for its Lantus® insulin product. The product plus injector was sold as Lantus Solostar®.
On March 23, 2020, approximately two months after all briefs were submitted, the Fed. Cir. has denied the outstanding petitions for panel rehearing and rehearing en banc in Arthrex, Inv. v. Smith & Nephew, Inc. (CAFC No. 2018-2140) (decision here). As a reminder, the Arthrex panel concluded that the PTAB's Administrative Patent Judges (APJs) were improperly appointed principal officers under the Constitution's Appointments Clause. To remedy this deficiency, the panel severed the APJ's Title 5 removal protections, thereby (according to the panel) rendering APJs inferior officers and prospectively curing any Appointments Clause infirmity in PTAB final written decisions post October 31, 2019. The Fed. Cir.'s rehearing denial leaves a change to the current Arthrex remedy in the hands of Congress or the Supreme Court.
Last March I wrote about the PTAB's Precedential Opinion Panel (POP) taking up its first case in Proppant Express Invs., LLC et al. v. Oren Tech., LLC (article here). In that case, the POP concluded that, where fairness requires it, 35 U.S.C. § 315(c) allows a petitioner to file an otherwise time-barred IPR petition and join that petition to its previously-instituted IPR to request joinder and consideration of new issues ("issue joinder"). Although this tool was rarely used, issue joinder allowed an IPR petitioner to attempt to add new claims/grounds to a previously instituted IPR if, for example, those claims were asserted by the patent owner after petitioners' one-year-filing window. Just over a year later, the Fed. Cir. has reversed this POP decision.
Oblon has been featured in Attorney at Law on February 14, 2020 – "Oblon Secures No. 1 Ranking for Most Utility Patents in 2019." This post highlights our ranking for securing the most utility patents in 2019 and our recent promoted partners Yuki Onoe and Daniel Pereira, as co-heads of the Chemical Patent Prosecution Group.
Attorney at Law
In Samsung Electronics America, Inc. v. Prisua Engineering Corp., the Fed. Cir. confirmed that, outside of the context of a motion to amend, the PTAB cannot cancel claims for indefiniteness in an IPR proceeding. Specifically, the Court found that if the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, the proper course for the PTAB to follow "is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or103. It would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR."
In Energy Intelligence Grp., Inc. v. Kayne Anderson Capital Advisors, L.P., 2020 U.S. App. LEXIS 1347, __ F.3d __ (5th Cir. Jan. 15, 2020), on an issue of first impression, the Fifth Circuit held that a mitigation defense is not an absolute defense to statutory damages for copyright infringement or DMCA violations.