Michael A.Oblon

Partner

Washington + 1.202.879.3815

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Michael Oblon focuses on patent and trade secret litigation and counseling for companies that develop software, electronics, and electromechanical products. He also develops company-specific trade secret policies and manages patent portfolios (including strategic patent prosecution) for several leading companies in these fields.

Michael litigates in state and federal district courts across the United States and in the International Trade Commission (ITC), Court of Federal Claims, and Court of Appeals for the Federal Circuit. He maintains an active technology-based trade secret litigation practice on behalf of trade secret owners and companies accused of misappropriation. Michael has secured exclusion orders at the ITC and significant monetary settlements for clients as plaintiffs in patent and trade secret disputes. On behalf of defendants he has won several patent cases on summary judgment of noninfringement and/or invalidity, concerning technical subject matters including hearing aid signal processing circuitry, database systems, missile countermeasure technology, and various aspects of wireless communications systems and web-based music streaming. Michael also represents clients in proceedings before the United States Patent and Trademark Office (USPTO) and has successfully argued before the Patent Trial and Appeals Board (PTAB).

Michael has been an adjunct faculty member at the University of Maryland for several years where he teaches an intellectual property course to engineering and business school students. He also has lectured about intellectual property at the University of Pennsylvania and at corporations and CLE seminars and has been quoted in articles in leading IP legal publications. Michael is a member of the American Intellectual Property Law Association, the Federal Circuit Bar Association, and the Giles Rich American Inn of Court.

Experience

  • NXP resolves patent infringement claims brought by competitor MediaTek in ITCJones Day represented NXP Semiconductors N.V. et al. as respondents/defendants in a patent infringement dispute brought by competitor MediaTek Inc. et al. before the International Trade Commission (ITC) and the United States District Court for the Central District of California.
  • NXP settles global patent dispute with MediaTek over semiconductor technologyJones Day represented NXP Semiconductors N.V. et al. as complainant/plaintiff in a patent infringement dispute against competitor MediaTek Inc. et al. before the International Trade Commission (ITC) and the United States District Court for the Central District of California. 
  • Coya Therapeutics announces its initial public offeringJones Day represented Coya Therapeutics Inc. as IP counsel in connection with its December 2022 initial public offering.
  • Velodyne defeats trade secret misappropriation claims at ITC and District CourtJones Day successfully defended leading lidar developer Velodyne Lidar USA, Inc. against trade secret misappropriation claims in the International Trade Commission and U.S. District Court for the Northern District of California, resulting in Complainant voluntarily withdrawing its Complaint and terminating the ITC investigation, and dismissing its district court claims with prejudice.
  • Nikon obtains prompt voluntarily dismissal of complaint alleging infringement of media content and storage patentOn behalf of Nikon, Jones Day successfully persuaded Rothschild Broadcast Distribution Systems to voluntarily dismiss its complaint after identifying a strong patent-ineligible invalidity and several strong non-infringement positions in response to allegations that Nikon infringed a patent generally relating to media content storage and delivery.
  • Nikon obtains immediate voluntary dismissal after presenting dispositive defense to patent infringement allegationsOn behalf of Nikon Corporation, Jones Day successfully convinced the plaintiff to voluntarily dismiss its lawsuit against Nikon after Jones Day identified a dispositive defense against allegations that Nikon infringed a patent generally relating to media systems for transferring digital files.
  • Horizon Technologies raises capital in Series A roundJones Day advised Horizon Technologies in its Series A financing led by Maven Capital Partners with participation from Virgin Money.
  • Hikvision successfully dismisses patent suit involving security systemsJones Day successfully represented Hikvision USA Inc. in dismissing claims of patent infringement in a case brought by Richman Technology Corp. in the Central District of California.
  • Hikvision successfully dismisses patent suit involving body camera technologyJones Day obtained a complete dismissal for defendant Hikvision USA Inc. of a patent infringement lawsuit brought by Stormborn Technologies LLC in the Central District of California.
  • Nicoya Health merges with Coya Therapeutics and raises Series A FinancingJones Day represented Nicoya Health, Inc. in its merger with and into Coya Therapeutics, Inc., and the surviving company's $10 million Series A Preferred Stock financing.
  • Twilio invalidates all asserted patent claims and obtains dismissal in the District of Delaware's first telephonic "Section 101 Day"Jones Day successfully defended Twilio Inc. against patent infringement claims brought by Pivital IP in the District of Delaware, invalidating all asserted claims and obtaining a complete dismissal with prejudice.
  • Deezer obtains dismissal of patent infringement lawsuit relating to music streaming technologyJones Day obtained a dismissal of a patent litigation brought by Data Scape Limited against Deezer Inc. for alleged infringement of music streaming technology patents.

    • The following represents experience acquired prior to joining Jones Day.

    Trade Secret Litigation

    Health IT 2 Business Solutions (now Codice) v. Trusted Health Plan, Superior Court of the District of Columbia. As lead counsel, represented Codice as trade secret plaintiff asserting claims against Trusted for breaching a teaming agreement, misusing Codice's IT software algorithms, and committing fraud to obtain a $600 million prime contract for providing Medicaid managed health plan services for the District of Columbia. Case settled favorably for plaintiff.

    Positron Systems, Inc. v. Wyle Labs, Superior Court of the State of California, Los Angeles County. Represented Wyle Labs, a defense contractor for the Air Force, against claims that it allegedly misappropriated Positron's SBIR technical data concerning X-ray technology for detecting hidden corrosion in aircraft. Positron dropped all asserted technical trade secrets after depositions of its management and former employees and of third parties.

    PowerDsine Inc. and PowerDsine Ltd. v. Ami Semiconductor Inc. and Ami Semiconductor Belgium BVBA, U.S. District Court for the Southern District of New York. As co-lead counsel, defended AMI Semiconductor (Belgium) against PowerDsine's (Israel) claims that AMI breached a nondisclosure agreement pertaining to disclosure of information related to mixed-signal application specific integrated circuits for Power over Ethernet applications. Case settled favorably for AMI during trial after cross-examination of plaintiffs' fact witnesses and technical expert.

    Vesta Corporation v. Amdocs Management Ltd. and Amdocs, Inc., U.S. District Court for the District of Oregon. Represented Vesta as trade secret plaintiff asserting that Amdocs breached nondisclosure agreements and misappropriated Vesta's technical and business trade secrets to develop a competing prepaid payment solution for mobile networks. Defeated Amdocs's motion for summary judgment (and argued motion). Case settled favorably shortly before trial.

    International Trade Commission Patent Litigation

    In Re Certain Multi-Domain Test and Measurement Instruments 337-TA-1104. As lead counsel, represented Tektronix Inc. as complainant in investigation of two patents relating to multi-domain oscilloscopes, resulting in Consent Order excluding accused products.

    In Re Certain Ground Fault Circuit Interrupters and Products Containing Same 337-TA-615. As lead counsel, represented Wenzhou Trimone as a respondent in investigation of three patents relating to GFCI technology. Two patents found not infringed after hearing and third patent ultimately found not infringed after appeal.

    In Re Certain Baseband Processor Chips and Chipsets, Transmitter and Receiver (Radio) Chips, Power Control Chips, and Products Containing Same, Including Cellular Telephone Handsets 337-TA-543. Represented Broadcom Corporation as complainant in high-profile patent litigation asserting five patents relating to systems and chipsets for wireless communications. Lead technical attorney for asserted patent found to be valid and infringed.

    In Re Certain Display Controllers and Products Containing the Same 337-TA-491. Represented MStar Semiconductor Inc. as a respondent in investigation of three patents relating to flat-panel display controller technology.

    U.S. Court of Federal Claims §1498 Litigation

    Unitrac LLC v. United States (and Northrop Grumman, Intervenor). As lead counsel in Court of Federal Claims and Federal Circuit, represented third-party intervenor Northrop Grumman in §1498 patent case relating to database technology for tracking item unique identifiers for military inventory. Invalidated asserted patents on summary judgment, affirmed on appeal to Federal Circuit.

    3rd Eye Surveillance, LLC v. United States (and Northrop Grumman, Intervenor). Represented third-party intervenor Northrop Grumman in §1498 patent case related to enhancing security alarm systems through the use of real-time video or real-time image information.

    Eastern District of Virginia Patent Litigation

    Bytemark, Inc. v. GlobeSherpa, Inc. As lead counsel, defended GlobeSherpa in patent case relating to visual validated ticketing technology. Settled after mediation with magistrate judge.

    Coinstar Inc. v. Coin X Change, LLC. As technical lead, represented Coinstar Inc. in patent case relating to consumer coin-counting machines and the networking of such machines. Case settled after expert discovery.

    Murex v. Vicinity Corporation. Defended Vicinity Corporation in multipatent litigation concerning systems and methods for routing telephone calls based upon caller location. Case settled favorably after fact discovery.

    Premium Products, Inc. and Spiegel v. Pro Performance Sports, LLC, Amazon.com, The Sports Authority, and Dick's Sporting Goods. As lead counsel, represented defendants in patent cases relating to football kicking tees. Won motion to disqualify plaintiff's counsel. Case settled favorably after expert discovery.

    Select Notifications Media, LLC. v. Neustar, Inc. As lead counsel, defended Neustar in patent case relating to domain name system technology. Case settled favorably for Neustar.

    SmarTire Systems Inc. v. Schrader-Bridgeport International Inc. As co-lead counsel, defended Schrader in patent litigation concerning automotive tire pressure monitoring systems. Case settled favorably after summary judgment arguments.

    District Court Patent Litigation

    Broadcom Corporation v. Qualcomm Inc., U.S. District Court for the Central District of California. Represented Broadcom Corporation as plaintiff in patent litigation concerning cellular telephone technology.

    Color Kinetics Inc. v. TIR Systems Ltd., U.S. District Court for the District of Massachusetts. Represented TIR as defendant in patent litigation concerning LED architectural lighting systems.

    HTC Corporation, et al. v. IPCom GmbH & Co. KG, U.S. District Court for the District of Columbia. Represented HTC as declaratory judgment plaintiff and counterclaim defendant in patent infringement lawsuit in which HTC mobile telephones are alleged to infringe patents relating to synchronization, handover, and access authorization in Global System for Mobile Communications (GSM) and 3rd Generation Partnership Project (3GPP) networks. Won summary judgment of noninfringement on two patents, and third patent was rejected in reexamination.

    Intouch Group, Inc. v. Amazon.com, Inc., et al., U.S. District Court for the Northern District of California. Defended DiscoverMusic.com in patent litigation concerning a method for streaming music samples. Asserted patent invalidated on summary judgment.

    ON Semiconductor Corporation, et al. v. Hynix Semiconductor Inc., et al., U.S. District Court for the Eastern District of Texas. Represented ON Semiconductor as the patentee in a lawsuit claiming infringement of multiple patents covering circuitry used in flash memory and dynamic random access memory. Case settled favorably.

    Pacific Scientific Energetic Materials Co. v. Ensign-Bickford Aerospace & Defense Company, U.S. District Court for the District of Arizona. As lead counsel, represented Pacific Scientific as declaratory judgment plaintiff and counterclaim defendant in patent infringement lawsuit relating to ordnance firing systems. Won affirmative defense relating to §1498 on summary judgment.

    Palomar Medical Devices Inc. and The Massachusetts General Hospital Corporation v. Cutera Inc., U.S. District Court for the District of Massachusetts. Represented Palomar and MGH in enforcement of patents relating to an apparatus for performing aesthetic laser hair removal.

    Selene Communication Technologies, LLC v. Fluke Networks, U.S. District Court for the District of Delaware. As lead counsel, represented Fluke Networks in patent case relating to technique for integrating an intrusion detection process with a computer server process being monitored. Plaintiff stipulated to dismissal after fact discovery.

    Sound Design Technologies, Ltd. v. Oticon, Inc., U.S. District Court for the District of Arizona. Represented declaratory judgment plaintiff Sound Design in patent case relating to hearing aid circuitry. Won motion for summary judgment of noninfringement.

    Rohde & Schwarz v. Tektronix, Inc., U.S. District Court for the Central District of California. As lead counsel, represented Tektronix in lawsuit concerning digital triggering for oscilloscopes.

    VMware Inc. v. Connectix Corporation and Microsoft Corporation, U.S. District Court for the Northern District of California. Represented VMware as both a plaintiff and counterclaim defendant in lawsuit concerning virtual machine software patents.

    Federal Circuit Appeals

    IPCom GmbH & Co. KG v. HTC Corporation, Nos. 12-1659, 15-1754. Served as lead counsel and argued. On behalf of Appellee HTC, secured affirmances of summary judgment of noninfringement in district court and cancellation of claims in PTAB inter partes reexamination.

    HTC Corporation v. IPCom GmbH & Co. KG, No. 11-1004. Served as lead counsel and argued. On behalf of Appellee HTC, argued for affirmance of summary judgment of indefiniteness in U.S. District Court for the District of Columbia, Case No. 08-CV-1897. Reversed.

    IPCom GmbH & Co. KG v. HTC Corporation, No. 18-1349. Represented Appellee HTC in pending appeal from cancellation of claims from U.S. Patent & Trademark Office Patent Trial and Appeal Board, Case No. 95/001,193. Affirmed.

    Pacific Scientific Energetic Materials Company v. Ensign-Bickford Aerospace & Defense Company, No. 13-1424. Served as lead counsel and argued. On behalf of Appellee Pacific Scientific, secured affirmance of summary judgment from District of Arizona, Case No. 10-CV-2252.

    Oticon, Inc. v. Sound Design Technologies, Ltd., No. 14-1006. As lead counsel, represented Appellee Sound Design in appeal of summary judgment of noninfringement from U.S. District Court for the District of Arizona, Case No. 11-CV-1375. Appellant withdrew appeal after briefing.

    Omega Engineering Inc. v. Raytek Corporation, et al., No. 05-1122. Retained to represent Appellant Raytek to appeal $40 million willfulness finding at trial. Case settled favorably for Raytek after briefing.

    View All

    January 2024 White Paper

    2023 Annual Review: Key U.S. Trade Secret Developments

    June 2023 Commentary

    Trade Secrets and Generative AI: Protective Measures In an Evolving Technological Landscape

    December 2021 White Paper

    Navigating Trade Secret Identification During Discovery: Timing & Scope

    Speaking Engagements

    • April 19, 2023
      “Situational Awareness in Trade Secret Damages,” Speaker Panel Moderator, Jones Day Continuing Legal Education
    • March 22, 2023
      “Considering Ethics, Morality, and Liability In the Context of Intellectual Property for Engineers and Business Management,” Guest Lecturer, University of Virginia School of Engineering and Applied Science
    • March 22, 2023
      “Litigating Trade Secrets Cases,” Guest Lecturer, University of Virginia Law School
    • October 13, 2022
      “Is It Really Just Obvious? An Economic, Social, and Moral Evaluation Of Intellectual Property Protection,” Guest Lecturer, Johns Hopkins University Whiting School of Engineering
    • May 22, 2022
      “Entrepreneurship – The Synergy of An Idea, Business Development, and IP,” Speaker/Panelist, IEEE Signal Processing Society Inaugural Entrepreneurship Forum

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