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.
Federal Circuit Sinks Another Attempt to Use PTO Guidance
By Paul Devinsky on May 7, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit found claims directed to methods of fishing to be patent ineligible, affirming a Patent Trial and Appeal Board (PTAB) decision that the claims were directed to the abstract idea of selecting a fishing hook based on observed water conditions. In re: Christopher John Rudy, Case No....
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PTAB Time Bar Application in Instituting IPR Proceedings Nonappealable
By Paul Devinsky on May 7, 2020
Posted In America Invents Act, Patents
Addressing the scope of review of the Patent Trial and Appeal Board’s (PTAB’s) application of the one-year time bar of 35 USC § 315(b) in deciding whether to institute an inter partes review (IPR) proceeding, the Supreme Court of the United States held that application of the time bar by the PTAB is nonappealable. Thryv,...
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Computer Fraud and Abuse Act Set for Initial Supreme Court Review
By Paul Devinsky on May 7, 2020
Posted In Cert Alert
In the wake of a 5-4 circuit court split, the Supreme Court of the United States granted certiorari to review the 1986 Computer Fraud and Abuse Act (CFAA) and specifically whether a person who is authorized to access information on a computer for certain purposes violates the CFAA if he accesses the same information for an improper purpose. Van Buren v....
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Patent Term Extension Only Applies to Approved Product
By Paul Devinsky on May 7, 2020
Posted In Patents
In a case relating to a patented method for treating multiple sclerosis, the US Court of Appeals for the Federal Circuit found that patent term extension (PTE) only applies to methods of using the approved product as defined under the relevant statute, 35 U.S.C. § 156, even if the patent claim is broad enough to...
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Defendant Not “Prevailing Party” for Purposes of Attorneys’ Fees After Voluntary Dismissal Without Prejudice
By Paul Devinsky on Apr 30, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees under § 285, finding that a defendant is not a “prevailing party” for purposes of collecting attorneys’ fees where the plaintiff voluntarily dismissed its case without prejudice and there was no final court decision designating either litigant as...
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Neither AIA Proceeding nor Government Infringement Constitute Fifth Amendment Taking
By Paul Devinsky on Apr 30, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit upheld a US Court of Federal Claims dismissal, rejecting arguments that patent infringement is a taking under the Fifth Amendment. Golden v. United States, Case No. 19-2134 (Fed. Cir. Apr. 10, 2020) (O’Malley, J.).
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Belt Fastener Trade Dress Conveyed as Invalid for Being Functional
By Paul Devinsky on Apr 15, 2020
Posted In Trademarks
The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., Case No. 19-2035 (7th Cir. Apr....
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PTAB Sets Double Standard for Qualifying Reference as “Printed Publication”
By Paul Devinsky on Apr 15, 2020
Posted In Patents
The Patent Trial and Appeal Board (PTAB) designated an appeal decision as precedential, holding that an examiner may apply a lower standard for establishing public availability of a prior art reference as compared to a petitioner in an inter partes review (IPR). Ex parte Grillo-López, Appeal No. 2018-006082 (USPTO Jan. 31, 2020) (Chang, APJ) (denying...
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PTAB Designates Two Opinions Precedential and One Opinion Informative, Further Clarifying the Scope of the Board’s Discretion under § 325(d) to Decline Institution
By Paul Devinsky on Apr 9, 2020
Posted In America Invents Act, Patents
Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative.
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Rock Dust Dust-Up: Failure to Preserve Issues, Present Evidence at Trial Dooms Appeal
By Paul Devinsky on Apr 2, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a jury verdict of infringement of a design patent on grounds that purported appellate issues had not been properly presented to the trial court. Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., Case No. 18-1904 (Fed. Cir. Mar. 16, 2020)...
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