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.
Texas Appellate Court Clarifies Scope of Remand
By Paul Devinsky on Sep 9, 2020
Posted In Trade Secrets
The Texas Fourth Court of Appeals found that a new trial on misappropriation and fraud claims must include a non-appealed breach of contract claim arising from the same set of facts. Title Source, Inc. v. HouseCanary, Inc., Case No. 04-19-00044-CV (Tex. App. – San Antonio Aug. 26, 2020) (Watkins, J.). On June 3, 2020, the...
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No Bite on Parties’ Unenforceable Agreement to Agree to Sell Apple Trees
By Paul Devinsky on Sep 9, 2020
Posted In Food, Beverage & Agribusiness
The US Court of Appeals for the Federal Circuit affirmed a grant of summary judgment, finding that the option provision in the parties’ contract was an unenforceable agreement to agree. Phytelligence, Inc. v. Wash. State Univ., Case No. 2019-2216 (Fed. Cir. Aug. 27, 2020) (Reyna, J.). Phytelligence is an agricultural biotechnology company that used tissue...
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Use of Infringing Product, Misappropriated Trade Secrets May Continue—for a Licensing Fee
By Paul Devinsky on Sep 3, 2020
Posted In Copyrights
The US Court of Appeals for the Sixth Circuit affirmed a district court’s stay of a permanent injunction against copyright infringement and trade secret misappropriation, permitting the infringer to continue use of an infringing product and misappropriated trade secrets but requiring the infringer to pay a licensing fee. ECIMOS, LLC v. Carrier Corp., Case Nos....
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Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals
By Paul Devinsky on Sep 2, 2020
Posted In America Invents Act, Patents
Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions....
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Bugs in Space? Star Trek Plotline Does Not Infringe Tardigrade Video Game
By Paul Devinsky on Aug 27, 2020
Posted In Copyrights
The US Court of Appeals for the Second Circuit affirmed a district court’s pleadings-stage determination that certain Star Trek: Discovery characters and plotlines did not infringe copyrighted elements of a video game because there was not substantial similarity between protectible elements of the video game and the Discovery episodes. Abdin v. CBS Broad. Inc., Case...
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Attorney’s Fees Properly Awarded in Unsuccessful Trade Secret Misappropriation and Civil Theft Suit
By Paul Devinsky on Aug 26, 2020
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit affirmed a take-nothing judgment and an attorney’s fees award against plaintiffs in a trade secret misappropriation and civil theft suit under Texas law, finding that the fee award did not need to be segregated to various claims. ATOM Instrument Corp. v. Petroleum Analyzer Co., L.P., Case...
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Explain Yourself: “Untethered” Obviousness Determination Reversed
By Paul Devinsky on Aug 13, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit vacated in part and remanded a Patent Trial and Appeal Board (Board) determination of unpatentability because the Board did not adequately support its reasoning as to certain claims. Alacritech, Inc. v. Intel Corp., Case No. 19-1467 (Fed. Cir. July 31, 2020) (Stoll, J.). Intel petitioned for...
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Unlikely to Succeed: Preliminary Injunction Denied Despite Stipulation to Irreparable Harm
By Paul Devinsky on Aug 13, 2020
Posted In Patents
In a dispute over the terms of a settlement agreement, the US Court of Appeals for the Federal Circuit found that a patent owner was not entitled to a preliminary injunction despite a stipulation that it would be irreparably harmed if the accused infringer breached certain provisions of the agreement. Takeda Pharmaceuticals U.S.A., Inc. v....
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PTAB May Reject Substitute Claims Under Any Basis of Patentability
By Paul Devinsky on Aug 5, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board (PTAB) of jurisdiction in a co-pending inter partes review (IPR) proceeding involving the same claims, and held that it does...
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Unnamed Respondent Has Standing to Seek Rescission of ITC General Exclusion Order
By Paul Devinsky on Jul 30, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a US International Trade Commission (ITC) decision denying a petition for rescission of a general exclusion order (GEO) prohibiting importation of products accused of patent infringement, because a post-investigation invalidity attack is not a changed condition warranting rescission. Mayborn Grp., Ltd. v. Int’l Trade Comm’n,...
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