Paul Devinsky
Subscribe to Paul Devinsky's PostsPaul Devinsky advises clients on patent, trademark and trademark litigation and counseling, as well as copyright counseling. He is also active in intellectual property (IP) licensing, transactions and due diligence, as well as post-issuance US Patent and Trademark Office (USPTO) proceedings such as reissues and inter partes review, covered business method patent review and post grant review, and appellate (Federal Circuit) advocacy. Read Paul Devinsky's full bio.
Corresponding Structure Necessary to Support ‘Module’ Claim Element
By Paul Devinsky on Mar 11, 2021
Posted In Patents
In determining whether a claim element invoked 35 USC § 112, ¶ 6, the US Court of Appeals for the Federal Circuit concluded that “module” was a nonce term and required sufficient corresponding structure in the patent specification to avoid indefiniteness under 35 USC § 112, ¶ 2. Rain Computing, Inc. v. Samsung Electronics Co.,...
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Ahoy There: If License Terms Not Clearly Intended to Be a Condition Precedent, It’s a Covenant
By Paul Devinsky on Mar 4, 2021
Posted In Copyrights
The US Court of Appeals for the Federal Circuit held that the US Court of Federal Claims erred by failing to consider defendant’s non-compliance with the terms of an implied license, vacating the claims court’s finding of non-infringement and remanding the case for a calculation of damages. Bitmanagement Software GmbH v. U.S., Case No. 20-1139...
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Colorful Non-Functionality Argument Misses the (Design) Mark
By Paul Devinsky on Mar 4, 2021
Posted In Trademarks
Addressing the functionality of colors in design marks, the US Court of Appeals for the Second Circuit reversed the district court’s entry of judgment for a trademark owner on its unfair competition and trademark claims, ruling that where color is used as an indicator of size or parts matching, it is functional and does not...
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Doesn’t Scan: Skin Cancer Detection Device Just Combination of Familiar Elements
By Paul Devinsky on Feb 25, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit overturned a finding of non-obviousness of certain claims relating to a device for the detection of skin cancer, finding that the Patent Trial & Appeal Board erred in applying the law of obviousness. Canfield Scientific, Inc. v. Melanoscan, LLC, Case No. 19-1927 (Fed. Cir. Feb. 18,...
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Impossible; Cloud Storage Patent Claims Invalid for Indefiniteness or Not Infringed
By Paul Devinsky on Feb 25, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s determination that three patents directed to data synchronization were indefinite as lacking sufficient disclosed structure to support a means plus function claim element, as impossible in terms of claim scope or not infringed. Synchronoss Technologies, Inc. v. Dropbox. Inc., Case Nos. 19-2196,...
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Agreement to One Is Not Consent to All
By Paul Devinsky on Feb 25, 2021
Posted In Trademarks
Addressing a myriad of issues involving unauthorized use of professional models’ photographs for gentlemen’s clubs’ promotional materials, the US Court of Appeals for the Second Circuit held that the district court erred in its interpretation of “consent,” and vacated and remanded to adjudicate the scope of the consent given. The Second Circuit simultaneously affirmed the...
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The Future of Skinny Labeling in Patent Litigation Will be Reconsidered
By Paul Devinsky on Feb 25, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit has now vacated its prior ruling finding induced infringement based on so-called skinny labeling on a pharmaceutical product. GlaxoSmithKline LLC v. Teva Pharmaceuticals USA Inc., Case no.18-1876 (Fed. Cir. Feb. 9, 2021) PER CURIAM. The case concerns communications regarding generic approvals and “skinny labels,” which permit...
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Old Dawg, New Tricks: Bankruptcy Successor Is Also Inter Partes Re-Exam Successor
By Paul Devinsky on Feb 18, 2021
Posted In Patents
Reversing the Patent Trial and Appeal Board, the US Court of Appeals for the Federal Circuit concluded that because a plaintiff was a successor in bankruptcy, it was a successor in an inter partes re-examination. The Court held that the plaintiff should be substituted for the original requestor following the sale of the original re-examination...
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$6 Million Verdict Vacated in Flooring Tech Trade Secrets Row
By Paul Devinsky on Feb 11, 2021
Posted In Trade Secrets
The US Court of Appeals for the 11th Circuit reversed a judgment of trade secret misappropriation because the plaintiff had not proved that the defendant’s duty to maintain the secret arose at the time it acquired the secret. AcryliCon USA, LLC v. Silikal GmbH, Case No. 17-15737 (11th Cir. Jan. 26, 2021) (Tjoflat, J.) AcryliCon...
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Eight-Month Delay on Transfer Motion Ruling Is “Egregious,” Warrants Stay
By Paul Devinsky on Feb 11, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit issued a rare grant of a mandamus petition directing a district court to stay proceedings until ruling on a pending motion to transfer, stating that the district court’s eight-month delay in ruling on the motion while allowing substantive issues to proceed “amounted to egregious delay and...
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