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.
Full Scope of Claimed Invention Must Be Enabled
By Paul Devinsky on May 20, 2021
Posted In Patents
In a case relating to nucleic acid sequencing, the US Court of Appeals for the Federal Circuit upheld a jury verdict of non-enablement because a skilled artisan would have only known how to successfully practice a narrow range of the full scope of the nucleic acids covered by the asserted claim at the time of...
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Targeted Advertising Still Patent Ineligible Subject Matter
By Paul Devinsky on May 20, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found that targeted advertising is still an abstract idea and that a system providing targeted advertising must utilize something more than generic features and routine functions to be eligible for patent protection. Free Stream Media Corp. v. Alphonso Inc., Case No. 19-1506 (Fed. Cir. May 11,...
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Use is ACTUALLY Measured by Benefit
By Paul Devinsky on May 13, 2021
Posted In Trademarks
Addressing whether a service mark owner had established a protectable interest in his marks through actual or analogous use, the US Court of Appeals for the 10th Circuit reversed in part the district court’s grant of summary judgment for the alleged infringer, explaining that by focusing on sales, the district court applied the wrong legal...
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Blueprint Blooper: Floor Plan Copyright Infringement Requires Virtually Identical Copying
By Paul Devinsky on May 6, 2021
Posted In Copyrights
Addressing whether a home builder’s floor plans infringed the plaintiff’s architectural copyrights, the US Court of Appeals for the Seventh Circuit affirmed a lower court’s entry of summary judgment against the plaintiff, finding that only a virtually identical design would infringe the plaintiff’s “thin copyright” in its floor plans. Design Basics, LLC v. Signature Construction,...
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Employment Agreement Assignment Provisions Don’t Reach Post-Employment Inventions
By Paul Devinsky on May 6, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit rejected a biotechnology company’s argument that assignment provisions in its employment agreements granted ownership rights in post-employment inventions. Bio-Rad Laboratories, Inc. v. Int’l Trade Comm’n, Case No. 20-1785 (Fed. Cir. Apr. 29, 2021) (Taranto, J.) 10X filed an International Trade Commission (ITC) complaint against Bio-Rad, alleging...
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School’s Out: Trademark Settlement Agreement Enforceable
By Paul Devinsky on Apr 29, 2021
Posted In Trademarks
Addressing issues relating to jurisdiction, contract enforceability and trademarks, the US Court of Appeals for the First Circuit concluded that two schools that used similar names had a valid and enforceable settlement agreement obligating one school to pay for the other to change its name. The Commonwealth School, Inc. v. Commonwealth Academy Holdings LLC, Case...
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Fourth Estate Registration Requirement Defeats Pro Se Copyright Infringement Plaintiff
By Paul Devinsky on Apr 29, 2021
Posted In Copyrights
The US Court of Appeals for the First Circuit affirmed dismissal of a copyright infringement claim for failure to register the copyright, and affirmed summary judgment against plaintiff on related state law claims where the plaintiff was deemed to have admitted statements that undermined its claims. Foss v. Marvic Inc., Case No. 20-1008 (1st Cir....
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Old Dawg, Still the Same Tricks: Bankruptcy Asset Successor is Also Inter Partes Re-Exam Successor
By Paul Devinsky on Apr 29, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit issued a modified opinion correcting certain facts relating to a decision in which it originally concluded that because a plaintiff was a successor in bankruptcy, it was a successor in an inter partes re-examination. Mojave Desert Holdings, LLC v. Crocs, Inc., Case No. 20-1167 (Fed. Cir....
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You Want Some “Metchup” with That?
By Paul Devinsky on Apr 22, 2021
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit found no infringement by a large, well-known company that used the registered mark of an individual whose own use was local and generated only a few sales and minimal profits. The Court vacated and remanded the case to determine whether plaintiff had abandoned the mark. Dennis...
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If it’s Not Legit, You Can’t Admit
By Paul Devinsky on Apr 15, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court ruling of non-infringement based on the inadmissibility of unauthenticated printouts of source code as evidence. Wi-LAN Inc. v. Sharp Elecs. Corp., Case No. 20-1041 (Fed. Cir. Apr. 6, 2021) (Dyk, J.) In 2015, Wi-LAN brought two separate patent infringement suits against Sharp...
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