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.
Exclusive Licensee Has Constitutional but Not Statutory Standing
By Paul Devinsky on Dec 9, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated the dismissal of an exclusive licensee’s complaint for lack of statutory and constitutional standing, despite affirming that the licensee had no statutory standing where the district court erroneously found no constitutional standing. Univ. of So. Florida Res. Found., Inc. v. Fujifilm Med. Sys. U.S.A., Inc.,...
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Federal Circuit Reverses Judge Stark Decision, Finds Computer Network Patent Eligible
By Paul Devinsky on Dec 9, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that a representative claim was directed to a patent-eligible improvement to computer functionality, and therefore reversed a decision authored by Judge Leonard P. Stark as a sitting judge in the US District Court for the District of Delaware. Mentone Solutions LLC v. Digi International Inc.,...
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Dispute on Arbitrability Needs an Arbitrator
By Paul Devinsky on Dec 2, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that a license agreement between two parties required an arbitrator to determine whether a dispute between the parties had to be heard by an arbitrator. ROHM Semiconductor USA, LLC v. MaxPower Semiconductor, Inc., Case No. 21-1709 (Fed. Cir. Nov. 12, 2021) (O’Malley, J.) MaxPower owns...
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Standing Challenge Brews Trouble in Trademark Dispute
By Paul Devinsky on Nov 4, 2021
Posted In Trademarks
Addressing for the first time Article III standing in a trademark case, the US Court of Appeals for the Federal Circuit held that hypothetical future injury is insufficient to establish standing to oppose a trademark application. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, Case No. 20-2277 (Fed. Cir. Oct. 27, 2021) (Dyk, J.) Brooklyn...
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This Case Is Both Hot and Exceptional—Attorneys’ Fees and Inequitable Conduct
By Paul Devinsky on Oct 28, 2021
Posted In Patents
In a second visit to the US Court of Appeals for the Federal Circuit, after the Court affirmed a finding of unenforceability due to inequitable conduct based on “bad faith” non-disclosure of statutory bar prior sales on the first visit, the Court affirmed a remand award of attorneys’ fees based on a finding of exceptionality...
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Means-Plus-Function Claims: Don’t Forget the “Way”
By Paul Devinsky on Oct 21, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first means-plus-function claim, and because the specification lacked disclosure of a structure for the “way” to perform a second means-plus-function claim....
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NDA Forum Selection Clause Doesn’t Bar IPR in Response to Subsequent Infringement Suit
By Paul Devinsky on Oct 21, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed the denial of a preliminary injunction that would have forced the accused infringer to seek dismissal of its petitions for inter partes review (IPR) based on a forum-selection clause in an earlier nondisclosure agreement (NDA). Kannuu Pty Ltd. v. Samsung Elects. Co, Ltd., Case No....
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Design Patent Prior Art Must Be From Same or Analogous Field as Claimed Article of Manufacture
By Paul Devinsky on Oct 14, 2021
Posted In Patents
Finding that the Patent Trial & Appeal Board (Board) applied an erroneous interpretation of claim scope, the US Court of Appeals for the Federal Circuit reversed a Board decision upholding an examiner’s rejection of a lip implant design patent as anticipated by a non-analogous art tool. In re: SurgiSil, Case No. 20-1940 (Fed. Cir. Oct....
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Ex Parte Reexamination Not Allowed After Failed IPR Challenge
By Paul Devinsky on Oct 14, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that ex parte reexamination was unavailable to a challenger who repeatedly tried and failed to raise the same arguments for the same patent in a prior inter partes review (IPR) proceeding. In re: Vivint, Inc., Case No. 20-1992 (Fed. Cir. Sept. 29, 2021) (Moore, C.J.)...
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No Immunity: State Right of Publicity Law is § 230 “Law Pertaining to Intellectual Property”
By Paul Devinsky on Oct 7, 2021
Posted In Trademarks
The US Court of Appeals for the Third Circuit held that § 230 of the Communications Decency Act, 47 U.S.C. § 230(c), does not preclude claims based on state intellectual property laws, reversing in part a district court’s dismissal of a plaintiff’s state law claims for violation of her right of publicity. Hepp v. Facebook,...
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