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.
Advertising Falls within Commercial Activity Exception to Sovereign Immunity
By Paul Devinsky on Jun 18, 2020
Posted In Copyrights
The US Court of Appeals for the Second Circuit affirmed a district court’s denial of a motion to dismiss a copyright infringement suit on the ground of sovereign immunity, holding that advertising activity in the United States on behalf of a sovereign government falls within the commercial activity exception to sovereign immunity. Pablo Star Ltd. v....
Continue Reading
South Carolina Supreme Court Cannot Find “Economic Value” to Support Trade Secret
By Paul Devinsky on Jun 17, 2020
Posted In Trade Secrets
The South Carolina Supreme Court (S.C. Supreme Court) affirmed a state Court of Appeals finding that information taken by a minority LLC member did not have the requisite independent value to be considered a “trade secret” under the state’s Trade Secrets Act. Wilson v. Gandis, Case No. 27980 (S.C. June 3, 2020) (James, C.J.). In response...
Continue Reading
Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR
By Paul Devinsky on Jun 10, 2020
Posted In America Invents Act, Patents
Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course...
Continue Reading
Verdict Delivered: Shipment Notification Claims are Patent Ineligible—Even with Security Flair
By Paul Devinsky on May 28, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s pleadings-stage determination that a patent claim directed to a delivery notification system was subject matter ineligible under 35 U.S.C. § 101. Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, Case No. 19-1587 (Fed. Cir. May 14, 2020) (Prost, C.J.).
Continue Reading
Double Meaning Can Make Mark Distinctive
By Paul Devinsky on May 28, 2020
Posted In Trademarks
The US Court of Appeals for the Eleventh Circuit reversed a district court’s grant of summary judgment invalidating a service mark for lacking distinctiveness, finding that a reasonable jury could understand the mark to entail a double meaning and therefore making it sufficiently distinctive to receive trademark protection. Engineered Tax Servs., Inc. v. Scarpello Consulting,...
Continue Reading
Arthrex Extended to Inter Partes Re-examination
By Paul Devinsky on May 27, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), holding that its decision in Arthrex, Inc. v. Smith & Nephew, Inc. (IP Update, Vol. 22, No. 11) also...
Continue Reading
Light Beer Sweetener – Not So Sticky After All
By Paul Devinsky on May 19, 2020
Posted In Trademarks
The US Court of Appeals for the Seventh Circuit held that a brewing company’s statements that a competitor’s beers were made with corn syrup were not false and misleading under the Lanham Act because the competitor listed corn syrup as an ingredient in its beers. Molson Coors Beverage Co. USA LLC v. Anheuser-Busch Cos., LLC,...
Continue Reading
Willfulness Allegation, Failure to Appear Lead to Nondischargeable Judgment
By Paul Devinsky on May 19, 2020
Posted In Trade Secrets
The US Court of Appeals for the Sixth Circuit affirmed that a state court’s finding of “willful and malicious injury” in connection with the misappropriation of trade secrets entitled the plaintiff, in the defendant’s subsequent bankruptcy proceeding, to summary judgment of nondischargeability on collateral estoppel grounds. In re Hill, Case No. 19-5861 (6th Cir. May...
Continue Reading
Trade Secret Misappropriators Fail to Launch in Rocket Facility
By Paul Devinsky on May 14, 2020
Posted In Trade Secrets
Addressing a variety of challenges to a judgment against defendants in a trade secret misappropriation action, the US Court of Appeals for the Third Circuit found that the plaintiff had standing on the basis of lawful possession (as opposed to ownership) of the trade secret materials and that the damages awarded, including punitives, was supported...
Continue Reading
“Waive” Goodbye to Belated Argument that Administrative Patent Judges’ Appointment is Unconstitutional
By Paul Devinsky on May 14, 2020
Posted In America Invents Act, Patents
Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges’ (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and therefore waivable. Ciena Corp. v. Oyster Optics, LLC, Case No. 19-2117 (Fed. Cir. Jan. 28, 2020) (O’Malley, J.) (reissued as precedential May...
Continue Reading
