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.
US-China Agreement Supports International Injunction Against Alleged Chinese Counterfeiter Under State Law
By Paul Devinsky on Feb 4, 2021
Posted In Trade Secrets
Addressing for the first time whether state law has extraterritorial scope, the US Court of Appeals for the Sixth Circuit upheld a worldwide preliminary injunction against an alleged Chinese counterfeiter’s use of alleged trade secrets, citing a new US-China trade agreement. AtriCure, Inc. v. Meng, Case No. 20-3264 (6th Cir. Jan. 21, 2021) (McKeague, J.)...
Continue Reading
No More Bites at the Apple: Intervening Junior User Can Force You to Get Your Head Out of the Cloud(s)
By Paul Devinsky on Feb 4, 2021
Posted In Trademarks
Addressing how a mark’s intervening junior user’s success can affect a senior user, the US Court of Appeals for the Fourth Circuit upheld a grant of summary judgment in favor of the junior user and the issuance of a permanent injunction for any commercial use of the disputed terms by the senior user. RXD Media,...
Continue Reading
No Appellate Jurisdiction to Review Post-Verdict Appeal of Previously Denied SJ Motion
By Paul Devinsky on Jan 21, 2021
Posted In Trademarks
In a closely watched trademark/counterfeiting case, the US Court of Appeals for the Second Circuit affirmed a judgment for contributory infringement, award of permanent injunction and monetary damage award against a commercial landlord found to have been willfully blind to trademark infringement and counterfeiting occurring on its leased property. Omega SA v. 375 Canal, LLC,...
Continue Reading
State University Challenges Board on Sovereign Immunity in Inter Partes Review
By Paul Devinsky on Jan 14, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit reiterated that “[s]overeign immunity does not apply to IPR proceedings when the patent owner is a state.” Board of Regents of the University of Texas System v. Baylor College of Medicine, Case No. 20-1469 (Fed. Cir. Dec. 10, 2020) (per curiam). Baylor College of Medicine petitioned...
Continue Reading
New or Not, Object-Oriented Simulation Patent Ineligible Under § 101
By Paul Devinsky on Jan 14, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s pleadings-stage determination that patent claims directed to an object-oriented simulation were subject matter ineligible under 35 USC § 101. Simio, LLC v. FlexSim Software Prod., Inc., Case No. 20-1171 (Fed. Cir. Dec 29, 2020) (Prost, C.J.). Simio filed suit against FlexSim for...
Continue Reading
PTAB Designates Two Precedential Opinions for Evaluating Impact of District Court Litigations on Discretionary Denial under § 314(a)
By Paul Devinsky on Jan 7, 2021
Posted In Patents
In the wake of its May 13, 2020, precedential decision in Apple v. Fintiv, Inc., the Patent Trial and Appeal Board designated as precedential two additional decisions that weigh the Fintiv factors. In Fintiv, the Board articulated six factors for consideration when determining to exercise discretion to deny institution of an inter partes review (IPR)...
Continue Reading
PTAB Designates Three Opinions as Precedential
By Paul Devinsky on Dec 17, 2020
Posted In America Invents Act, Patents
In RPX Corp. v. Applications in Internet Time, LLC, Case Nos. IPR2015-01750, -01751, -01752 (Oct. 2, 2020) (Boalick, CAPJ) (designated precedential on Dec. 4, 2020), the Patent Trial and Appeal Board (Board) terminated institution of RPX’s petitions for inter partes review (IPR) because Salesforce—served with a complaint more than one year before—should have been named...
Continue Reading
“Icy” Guidance on Polaroid Factors
By Paul Devinsky on Dec 3, 2020
Posted In Trademarks
In a “somewhat unusual” trademark case involving directly competing products and marks using the same words, the US Court of Appeals for the Second Circuit reversed in part and affirmed in part the grant of summary judgment for the accused infringer on trademark infringement and dilution claims. The Court found that the similarity of the...
Continue Reading
Covered Business Method Threshold Review Is Not Appealable
By Paul Devinsky on Nov 24, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit found that in view of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the Patent Trial and Appeal Board’s threshold determination that a patent qualifies for covered business method (CBM) review is closely tied to the institution decision and is therefore...
Continue Reading
Sticky Situation? Circumstantial Evidence Can Support Intent to Confuse in Trade Dress Claims
By Paul Devinsky on Nov 4, 2020
Posted In Trademarks
The US Court of Appeals for the 11th Circuit reversed a district court’s grant of summary judgment for the defendant on trade dress infringement and trade dress dilution claims, finding that evidence relating to the likelihood of confusion was not viewed in the light most favorable to the plaintiff. However, the Court affirmed the grant...
Continue Reading
