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.
Drink Up, but Not with Lehman Brand
By Paul Devinsky on Jun 9, 2022
Posted In Trademarks
In the context of an opposition proceeding, the US Court of Appeals for the Federal Circuit upheld a Trademark Trial & Appeal Board (Board) refusal to register a trademark based on likelihood of confusion with a famous but expired mark, notwithstanding the applicant’s assertion of abandonment of the mark by the original registrant. Tiger Lily...
Continue Reading
Eighth Circuit Defends Use of Term “Patent Troll,” Vacates Injunction against Infringement Defendant
By Paul Devinsky on Mar 24, 2022
Posted In Patents
The US Court of Appeals for the Eighth Circuit vacated an injunction restraining defendants from engaging in certain allegedly harassing conduct because there was no evidence tying the defendants to the alleged misconduct and reassigned the case to a new district judge to obviate any doubts about the judge’s impartiality. Tumey v. Mycroft AI, Inc.,...
Continue Reading
Self-Dealing Lawyer Held Jointly and Severally Liable in Trade Secret Misappropriation
By Paul Devinsky on Mar 17, 2022
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit affirmed a judgment holding a lawyer jointly and severally liable for trade secret misappropriation and fraudulent transfer and enjoining any further use of the trade secrets until a money judgment against the lawyer-purchased client business was satisfied. Thomas v. Hughes, Case No. 20-50671 (5th Cir. Mar....
Continue Reading
Lawyers Scolded but Not Sanctioned for Violating Federal Circuit’s COVID-19 Rules
By Paul Devinsky on Mar 10, 2022
Posted In Uncategorized
The US Court of Appeals for the Federal Circuit decided not to impose sanctions for violation of its COVID-19 restrictions on the number of counsel permitted to attend oral argument, citing the involved lawyers’ “earnest remorse.” In re Violation of the Revised Protocols for In-Person Arguments and Related Order, Case No. 22-9000 (Fed. Cir. Feb....
Continue Reading
Third-Party Licensing Information May Be Exception to General Right of Public Access to Court Records
By Paul Devinsky on Feb 24, 2022
Posted In Patents
In a second appeal relating to sealing third-party licensing information, the US Court of Appeals for the Federal Circuit vacated and remanded a district court’s order denying a motion to seal because the district court failed to follow the Federal Circuit’s previous instruction to make particularized determinations regarding the information. Uniloc USA, Inc. v. Apple...
Continue Reading
Federal Circuit Divided on Whether Skinny Labeling Compliance Precludes Inducement or Supports Equitable Estoppel
By Paul Devinsky on Feb 24, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit denied a generic drug manufacturer’s petition for en banc review of a panel opinion finding induced infringement liability despite the manufacturer’s adherence to skinny labeling rules, and suggested that equitable estoppel was the appropriate vehicle for considering whether the branded drug manufacturer’s representations to the US...
Continue Reading
Precision Is Paramount: Court Enforces Terms of Email Agreement in Settlement
By Paul Devinsky on Feb 17, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed a district court order enforcing one party’s version of a settlement agreement, finding that version unsupported by the record. The Court found that the other party’s version accurately reflected the parties’ understanding. PlasmaCam, Inc. v. CNCElectronics, LLC, Case No. 21-1689 (Fed. Cir. Feb. 3, 2022)...
Continue Reading
Sixth Circuit Endorses Sealing of Filings to Protect Confidentiality of Alleged Trade Secrets
By Paul Devinsky on Jan 27, 2022
Posted In Trade Secrets
On appeal from a dismissal based on a failure to state a claim for misappropriation of trade secrets, the US Court of Appeals for the Sixth Circuit granted the litigants’ motion to seal their briefs and file publicly available redacted versions in order to protect the confidentiality of the appellant’s alleged trade secrets. Magnesium Machine,...
Continue Reading
Shots Fired: Challenger Must Have Requisite Standing Before Appealing Unfavorable IPR Decisions
By Paul Devinsky on Dec 16, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found, in the context of an appeal from an inter partes review (IPR) decision, that the appellant had Article III standing and affirmed a Patent Trial & Appeal Board (Board) decision, holding the challenged claims unpatentable as obvious. ModernaTX, Inc. v. Arbutus Biopharma Corporation, Case No....
Continue Reading
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.,...
Continue Reading
