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.
Venue Manipulation Obviates Geographically Bounded Claims in Venue Analysis
By Paul Devinsky on Jul 8, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit issued a rare grant of two mandamus petitions directing the US District Court for the Western District of Texas to transfer the underlying patent infringement actions to the US District Court for the Northern District of California pursuant to 28 U.S.C. § 1404(a). In re: Samsung...
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Don’t Let Prophetic Examples Work Against You
By Paul Devinsky on Jul 8, 2021
Posted In Patents
On July 1, 2021, the US Patent & Trademark Office (PTO) issued a notice reminding patent applicants that when their applications contain both prophetic and working examples, they must make a clear distinction between the two. Prophetic examples illustrate reasonably expected results or anticipated results. They stem from experiments that have not been actually performed...
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What Does it Take to Plead Trade Secret Misappropriation Under the DTSA?
By Paul Devinsky on Jun 24, 2021
Posted In Trade Secrets
Addressing the pleading standard under the Defend Trade Secrets Act (DTSA) and New Jersey Trade Secrets Act (NJTSA), the US Court of Appeals for the Third Circuit vacated the district court’s dismissal of a third amended complaint for trade secrets misappropriation and remanded for further proceedings. Oakwood Labs. LLC v. Thanoo, Case No. 19-3707 (3d...
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10th Circuit Falls into Line on Exceptionality Doctrine in Lanham Act Cases
By Paul Devinsky on Jun 17, 2021
Posted In Trademarks
Addressing whether the term “exceptional case” in the Patent Act differs in meaning from the same term used in the Lanham Act, the US Court of Appeals for the 10th Circuit upheld an award of attorneys’ fees granted under a motion filed under 15 U.S.C. 1117(a) and clarified that the exceptional case standard in the...
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Supreme Court to Consider Fraudulent Intent in Copyright Registration
By Paul Devinsky on Jun 3, 2021
Posted In Cert Alert, Copyrights
The Supreme Court of the United States agreed to consider whether a copyright registration accurately reflecting a work can nevertheless be invalidated without fraudulent intent. Unicolors Inc. v. H&M Hennes & Mauritz LP, Case No. 20-915 (Supr. Ct. June 1, 2021) (certiorari granted) The US Court of Appeals for the Ninth Circuit reversed a district...
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Not With a Bang but a Whimper
By Paul Devinsky on May 27, 2021
Posted In Copyrights
In a non-precedential Order issued by the US Court of Appeals for the Federal Circuit—on remand from the US Supreme Court’s April 2021 decision upholding Google’s fair use defense to Oracle’s copyright infringement claim—the Court recalled its mandate in the case “solely with respect to fair use,” leaving intact the Federal Circuit’s May 2014 judgment...
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Texas Citizens Participation Act Does Not Protect Communications About Private Transactions
By Paul Devinsky on May 27, 2021
Posted In Trade Secrets
The Texas Court of Appeals in the 14th Circuit denied an interlocutory appeal from the trial court’s denial of a motion to dismiss under the Texas Citizens Participation Act (TCPA), holding that TCPA does not protect communications concerning a private transaction between private parties. Post Acute Medical, LLC v. Meridian Hospital Systems Corporation, No. 14-19-00546-CV...
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Confused? How Do You Factor That?
By Paul Devinsky on May 27, 2021
Posted In Trademarks
Considering the eight-factor likelihood of confusion test, the US Court of Appeals for the Sixth Circuit affirmed the district court’s finding on all factors, concluding that two competing marks in the transportation logistics industry are overlapping to the extent that consumers would likely be confused. AWGI, LLC v. Atlas Trucking Co., LLC, Case No. 20-1726...
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Initial Confusion? Relax, Eighth Circuit Has Your Number
By Paul Devinsky on May 20, 2021
Posted In Trademarks
Addressing a novel issue regarding when confusion must occur for it to be actionable, the US Court of Appeals for the Eighth Circuit concluded that initial-interest confusion was a viable infringement theory. Select Comfort Corp. v. Baxter, Case No. 19-1113 (8th Cir. May 11, 2021) (Melloy, J.) Select Comfort owns registered trademarks, including “SELECT COMFORT,”...
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New Perspective on Specific Personal Jurisdiction in Patent DJ Venue
By Paul Devinsky on May 20, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that the minimum contacts or purposeful availment test for specific personal jurisdiction was satisfied where a patent owner sent multiple infringement notice letters and other communications to a resident of California who then filed for declaratory judgment of non-infringement in federal district court in California....
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