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.
Stated Purpose More Decisive than Definition in Construing Claims
By Paul Devinsky on Mar 25, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) obviousness decision, finding the decision was infected by an erroneous claim construction that failed to consider the purpose of the claimed invention. Kaken Pharmaceutical Co., LTD v. Iancu, Case No. 18-2232 (Fed. Cir. Mar. 13 2020)(Taranto, J.). Kaken...
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Choosing Advocacy over Candor Renders Patent Unenforceable
By Paul Devinsky on Mar 19, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit upheld the district court’s finding that the patents-in-suit were unenforceable due to inequitable conduct because of a failure to disclose information related to an offer for sale of the claimed invention made more than one year prior to the critical date. GS Cleantech Corp v Adkins...
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Internet Sales Lead to Personal Jurisdiction Despite No Physical Presence
By Paul Devinsky on Mar 12, 2020
Posted In Trademarks
Addressing the issue of personal jurisdiction in a trademark infringement case, the US Court of Appeals for the Seventh Circuit reversed the district court and concluded that the plaintiff had made a prima facie showing that defendants, who had no physical presence in the forum state, were subject to personal jurisdiction based on sales to...
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Federal Circuit Confirms Time Bar Under § 315(b) Is Waivable
By Paul Devinsky on Feb 27, 2020
Posted In America Invents Act, Patents
Notwithstanding the jurisdictional nature of the time bar under § 315(b), the US Court of Appeals for the Federal Circuit determined that a party may waive a time bar argument if it failed to raise the issue with the Patent Trial and Appeal Board (PTAB) during the inter partes review (IPR) proceeding. Acoustic Tech. Inc. v....
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2019 IP Law Year in Review: Copyrights
By Jodi Benassi, Mary Hallerman and Paul Devinsky on Feb 27, 2020
Posted In Copyrights
Executive Summary In many ways, copyright jurisprudence in 2019 was a study in contrasts. While certain cases represented a “back to basics” approach, answering fundamental questions such as “When can a copyright owner sue for copyright infringement?” and “What costs can a prevailing copyright owner recover?,” others addressed thorny issues involving fair use and the...
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2019 IP Law Year in Review: Patents
By Paul Devinsky on Feb 20, 2020
Posted In Patents
Executive Summary 2019 was another important year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that may affect your company’s litigation, patent prosecution or business strategy. This special report on patents discusses some of the most important cases from 2019 from the US...
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2019 IP Law Year in Review: European Issues
By Dr. Philip Uecker, Laura Morelli, Dr. Henrik Holzapfel, Charles de Raignac and Paul Devinsky on Feb 13, 2020
Posted In Copyrights, Patents, Trademarks
Executive Summary The last year of the 2010s has been prolific in terms of important new pieces of legislation and case law within the European Union, and in France and Germany in particular. Indeed, the European Parliament and the EU Council adopted in April 17, 2019, a controversial directive (Directive 2019/790 on copyright and related...
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PTAB May Not Cancel Indefinite Claims in IPR, No Matter What
By Paul Devinsky on Feb 13, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit imposed limits on what the Patent Trial and Appeal Board (PTAB) is authorized to do by statute when dealing with challenged claims in an inter partes review (IPR) that it finds to be too indefinite to apply prior art. Samsung Elecs. Am., Inc. v. Prisua Eng’g...
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2019 IP Law Year in Review: Trademarks
By Eleanor B. Atkins, Rebecca Harker Duttry, Sarah Bro and Paul Devinsky on Feb 6, 2020
Posted In Trademarks
Executive Summary Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States Supreme Court in the 2020 term—such as the protectability of certain “.com” trademarks, as well as...
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Prior Covenant Insulates Party from Suit Despite Later Agreement
By Paul Devinsky on Jan 22, 2020
Posted In Patents
In a divided panel decision, the US Court of Appeals for the Federal Circuit concluded that a merger clause in the parties’ settlement agreement did not extinguish a prior covenant not to sue. Molon Motor & Coil Corp. v. Nidec Motor Corp., Case No. 19-1071 (Fed. Cir. Jan. 10, 2020) (Lourie, J) (Reyna, J, dissenting)....
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