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.
Too Good to Be True? Federal Circuit Demands Evidence of Reliance on Favorable Ruling, Stipulation
By Paul Devinsky on Nov 4, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit held that notwithstanding a stipulation on claim construction, a party may still induce infringement absent proof that it actually relied on the stipulation, and that mere inaction, absent an affirmative act to encourage infringement, cannot be the basis for a claim of inducement. The Federal Circuit...
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Size Matters in Obviousness Analysis
By Paul Devinsky on Oct 29, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed in part and reversed in part two Patent Trial and Appeal Board (Board) decisions, finding that the Board erred in its construction of certain claim terms relating to an artificial heart valve that does not require removal of the damaged native heart valve. St. Jude...
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Only Human: Broadest Reasonable Interpretation Standard Applies to Intentionally Expired Patent
By Paul Devinsky on Oct 22, 2020
Posted In Life Sciences, Patents
Affirming an invalidity finding by the Patent and Trial Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit found that the claims of the now-expired patent should be construed under the broadest reasonable interpretation (BRI) standard, and not under the Phillips standard, because the patent owner intentionally gave up the remainder of...
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Significant Third-Party Discovery Too Complex for ITC Early Disposition Program
By Jay Reiziss and Paul Devinsky on Oct 22, 2020
Posted In Patents, Technology
The US International Trade Commission (ITC) denied a proposed respondent’s request to use the early disposition program to determine whether a complainant met the domestic industry requirement in a Section 337 investigation. The ITC concluded that the issues proposed for resolution were too complex to be decided within 100 days of institution because significant third-party...
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Non-Respondent’s Product Cannot Be Adjudicated for Infringement in Context of General Exclusion Order
By Jay Reiziss and Paul Devinsky on Oct 15, 2020
Posted In Patents
The US International Trade Commission issued a general exclusion order (GEO) excluding from entry into the United States products infringing patents directed to luxury vinyl tile, but vacated findings in the Initial Determination (ID) adjudicating infringement for products belonging to entities not named as respondents in the investigation. The Commission explained that a finding should...
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By the Book: Unauthorized Material Doesn’t Forfeit Training Guide’s Copyright Protection
By Paul Devinsky on Oct 8, 2020
Posted In Copyrights
The US Court of Appeals for the Sixth Circuit affirmed a jury verdict in favor of a copyright owner in a lawsuit alleging infringement of the copyright in a home-services training manual, finding that the jury was correctly instructed that a work’s incorporation of some copyrighted content does not invalidate the copyright in the work’s...
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Product-by-Process Analysis Applies to Method of Treatment Claims
By Paul Devinsky on Oct 8, 2020
Posted In Patents
In a case relating to use of recombinant human interferon-β (IFN-β) proteins for the treatment of viral diseases, the US Court of Appeals for the Federal Circuit ruled that a “product-by-process” analysis applies even when the product-by-process limitation is nested within a method of treatment claim. Biogen MA Inc. v. EMD Serono, Inc., et al.,...
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“Can’t Hold Us” Liable: Macklemore & Ryan Lewis Win Affirmance in Copyright Suit
By Paul Devinsky on Oct 8, 2020
Posted In Copyrights
The US Court of Appeals for the Fifth Circuit affirmed a grant of summary judgment on the issue of copyright infringement and an award of attorneys’ fees against the plaintiff under the Copyright Act. Although the Court noted that it lacked jurisdiction to review sanctions against the plaintiff’s attorney, it observed that counsel went beyond...
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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable
By Paul Devinsky on Sep 16, 2020
Posted In Patents
Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City...
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Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction
By Paul Devinsky on Sep 16, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.). Egenera sued Cisco for infringement...
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