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 to WD Tex.: Denial of Transfer Motion was Clear Error, Abuse of Discretion
By Paul Devinsky on Oct 7, 2021
Posted In Patents
For the third time in as many months, the US Court of Appeals for the Federal Circuit found clear error in the US District Court for the Western District of Texas’s denial of a defendant’s motion to transfer venue. In re Juniper Networks, Inc., Case No. 21-160 (Fed. Cir. Sept. 24, 2021) (per curiam). WSOU...
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TTAB Cancellation Proceedings Not Preclusive in District Court, Even Between Same Parties
By Paul Devinsky on Sep 30, 2021
Posted In Trademarks
Addressing the preclusive effect of judgments by tribunals with limited jurisdiction, the US Court of Appeals for the Third Circuit held that trademark cancellation proceedings before the Trademark Trial & Appeal Board (TTAB) do not have preclusive effect against trademark infringement lawsuits in federal district courts. Beasley v. Howard, Case No. 20-1119 (3d Cir. Sept....
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Discretion to Authorize Hague Alternative Service on Foreign Defendant—it’s All About Time and Cost
By Paul Devinsky on Sep 23, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus, directing the US District Court for the Western District of Texas to dismiss multiple infringement actions for insufficient service of process and lack of personal jurisdiction where the plaintiff used alternative methods to effect service of process on...
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NDA Sunset Provision Means Trade Secret Use May Not Be Misappropriation
By Paul Devinsky on Sep 16, 2021
Posted In Trade Secrets
The US Court of Appeals for the Ninth Circuit reversed a district court ruling in a trade secret misappropriation case based on a non-disclosure agreement (NDA) that resulted in an award of more than $60 million, ruling that any disclosures that occurred after the termination date of the NDA were not subject to misappropriation claims....
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Federal Circuit: Contractual Arbitration Agreements Don’t Bind PTAB Institution Decisions
By Paul Devinsky on Sep 16, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit issued an order declining to intervene in inter partes review (IPR) institution decisions by the Patent Trial & Appeal Board (PTAB) and further denied a writ of mandamus to stay the PTAB’s IPR institution pending contractually required arbitration of the dispute between MaxPower and ROHM Japan....
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Notice Under § 287 Means Knowledge of Infringement, Not Knowledge of Patent
By Paul Devinsky on Sep 16, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court’s finding of liability for infringement that occurred prior to the filing of the action, explaining that notwithstanding the defendant’ admission that it was aware of the asserted patent, the actual notice requirement of § 287(a) is only satisfied when the recipient is...
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Material Information Submitted to FDA but Withheld from PTO Gives Rise to Inequitable Conduct
By Paul Devinsky on Sep 16, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found prior art submitted to the US Food and Drug Administration (FDA), yet withheld from the US Patent & Trademark Office (PTO) during prosecution of an asserted patent, sufficient evidence for a finding of inequitable conduct. Belcher Pharmaceuticals, LLC v. Hospira, Inc., Case No. 20-1799 (Fed....
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Sixth Circuit: It’s a Go on Plaintiff’s Claims Despite Arbitration Clause
By Paul Devinsky on Sep 16, 2021
Posted In Trade Secrets
The US Court of Appeals for the Sixth Circuit affirmed in part a district court’s grant of a stay pending arbitration, finding that as non-parties to the underlying arbitration agreement, defendants could not stay the plaintiff’s action against them by arguing that they were beneficiaries of the arbitration agreement. AtriCure, Inc. v. Meng, Case No....
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Lanham Act Reaches Foreign Defendants’ Extraterritorial Conduct, but Worldwide Injunction Too Broad
By Paul Devinsky on Sep 2, 2021
Posted In Trademarks
The US Court of Appeals for the Tenth Circuit upheld a district court’s injunction barring multiple foreign companies from directly or indirectly using a US remote control manufacturer’s trade dress based on the extraterritorial reach of the Lanham Act. However, the Court narrowed the scope of the worldwide injunction to countries where the US company...
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Footnote Doesn’t Preserve Claim Construction Argument, but Patent Owner Must Observe “Nose of Wax” Principle
By Paul Devinsky on Sep 2, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit rejected an insufficiently developed claim construction challenge and found noninfringement where the patentee argued that a key feature shared by the accused device and the prior art distinguished the prior art from the claimed invention. CommScope Technologies LLC v. Dali Wireless Inc., Case Nos. 20-1817; -1818...
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