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

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

Technologies

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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.

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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.

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GET In Touch

A few ways to GET In Touch
US Office

Telephone: 703-413-3000
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Tokyo Office

Telephone: +81-3-6212-0550
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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.

US Court Ruling Will Affect Royalty Rate Calculations For Licence Agreements

  • June 16, 2022
  • Article
  • IAM Media

Associated People


Andrew Ollis and Frank West authored an article featured in the June 15, 2022 on line edition of IAM Magazine, regarding the Federal Circuit’s June 3, 2022 holding in Pavo Solutions v. Kingston Technology Co., Appeal No. 21-1834. See, https://cafc.uscourts.gov/opinions-orders/21-1834.OPINION.6-3-2022_1960213.pdf.  The article "US Court Ruling Will Affect Royalty Rate Calculations for Licence Agreements," can be found on IAM Magazine's website. 

In that case, the Federal Circuit affirmed the jury verdict awarding $7.5 million in damages for Kingston’s infringement of Pavo’s patent and the district court’s 50% enhancement of damages based upon the jury’s finding that the infringement was willful.  The Federal Circuit rejected Kingston’s argument that the district court should have (i) limited the opinion of Pavo’s damages expert regarding a prior license to a discussion of the per unit royalty rate of $0.01 and (ii) excluded the expert’s reliance on the prior license’s express characterization of the per unit royalty as constituting 25% of the licensee’s profits.  Pavo’s expert relied upon that characterization to find that a 25:75 split of Kington’s profits on the accused products was a factor for consideration in determining a reasonable royalty.  The Federal Circuit also rejected Kingston’s argument that Pavo’s damages expert had not properly apportioned the royalty rate to exclude any value attributable to non-infringing features.  The Federal Circuit noted that both parties’ experts found the prior license to be technically and economically comparable (i.e. the same technology, product types, and patent rights as in suit), and therefore, that the royalty rate in the prior license had a “built-in” apportionment between non-infringing and infringing features.  The Federal Circuit also affirmed the district court’s judicial correction of the claim language, finding “[a]n obvious minor clerical error, by definition, does not mask that meaning [the intended claim language], so Kingston cannot hide behind the error to escape the jury’s verdict.”  Slip Op. at 16 (interpolation added). 

The ruling provides lessons for both patent owners and alleged infringers.  With respect to licenses, patent owners can plan a litigation damages strategy years in advance be including explanatory statements of financial terms in the license.  Alleged infringers should be wary of such statements and carefully consider whether the value obtained by relying upon the agreement outweighs any potential negative impact of such explanatory statements.  With respect to infringement, the parties should realize that uncorrected obvious errors in claim language may be corrected by a district court at trial and plan accordingly.