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.
Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial
By Paul Devinsky on Jul 22, 2020
Posted In America Invents Act, Patents
The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to discretionarily deny institution under § 314(a). In Apple Inc. v. Fintiv, Inc., Case No. IPR2020-00019, Paper 15 (USPTO May 13, 2020) (Horner, APJ)...
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Third Parties Not Responsible for Defective Motion to Seal
By Paul Devinsky on Jul 22, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit held that a district court did not abuse its discretion in denying reconsideration of a previous order denying a litigant’s defective motion to seal with regard to the litigant’s own information, but vacated and remanded for further consideration with regard to third-party information. Uniloc 2017 LLC...
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Patent Owners Beware: Serial Filings, Rent-Seeking May Be Grounds for Adverse Fee Award
By Paul Devinsky on Jul 15, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s denial of attorney’s fees to an accused infringer, finding the district court did not properly consider the Patent Owner’s manner of litigation, including the history of plaintiff’s actions in other jurisdictions and the broader context of its litigation practices. Elec....
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“All Substantial Rights” Test Informative in Obviousness-Type Double Patenting Context
By Paul Devinsky on Jul 15, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit endorsed for the first time the “all substantial rights” test to determine whether inventions are commonly owned for purposes of obviousness-type double patenting validity analysis of a later patent. Immunex Corp. v. Sandoz, Inc., Case No. 20-1037 (Fed. Cir. July 1, 2020) (O’Malley, J.) (Reyna, J.,...
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Fifth Circuit Drills Down to Details in Drilling Database Disagreement
By Paul Devinsky on Jul 15, 2020
Posted In Copyrights
In a wide ranging opinion, the US Court of Appeals for the Fifth Circuit held that copying unimportant database schema from a proprietary database did not constitute infringement. The Court also held that where the technological measure that the defendant allegedly circumvented did not effectively control access to the work, there was no Digital Millennium...
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Stick to Your Guns: PTAB Should Rarely Issue New Grounds of Unpatentability
By Paul Devinsky on Jul 15, 2020
Posted In Patents
The Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) issued a precedential opinion in an inter partes review (IPR) to resolve two questions: May the PTAB raise a ground of unpatentability not developed by the petitioner? If it does so, must the PTAB provide the parties notice and an opportunity to respond to...
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Reliance on Common Sense Permitted in Obviousness Analysis
By Paul Devinsky on Jul 9, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit affirmed a final written decision from the Patent Trial and Appeal Board (PTAB) finding patent claims directed to aircraft lavatories obvious based on prior art because a skilled artisan would have used common sense to incorporate a missing limitation into the prior art. B/E Aerospace, Inc....
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Improper Use of Voluntarily Communicated Trade Secrets Sufficient to Maintain Action for Misappropriation in Texas
By Paul Devinsky on Jul 1, 2020
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit held that, under Texas law, a plaintiff can sustain an action for trade secret misappropriation even if the plaintiff voluntarily communicated the alleged trade secrets to the defendant. Hoover Panel Systems, Inc. v. HAT Contract, Inc., Case No. 19-10650 (5th Cir. June 17, 2020) (per curiam).
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Damages Award Crumbles in Texas Concrete Manufacturing Row
By Paul Devinsky on Jul 1, 2020
Posted In Trade Secrets
The Supreme Court of Texas held that a limited partner had standing to sue for alleged loss in the value of its interest in the partnership, but reversed a damages award in favor of that limited partner for insufficient evidence. Pike v. Texas EMC Management, LLC, Case No. 17-0557 (Tex. June 19, 2020) (Busby, J)...
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Texas Appeals Court: Try Again, and This Time Get the Jury Instructions Right
By Paul Devinsky on Jun 18, 2020
Posted In Trade Secrets
A Texas Court of Appeals reversed a jury verdict for the plaintiff on claims of trade secret misappropriation under the Texas Uniform Trade Secrets Act (TUTSA) and fraud. The Court reversed the misappropriation verdict because the jury form commingled valid and invalid theories of liability, and reversed the fraud verdict because the jury instructions permitted...
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