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.
The Future of Skinny Labeling in Patent Litigation Will be Reconsidered
By Paul Devinsky on Feb 25, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit has now vacated its prior ruling finding induced infringement based on so-called skinny labeling on a pharmaceutical product. GlaxoSmithKline LLC v. Teva Pharmaceuticals USA Inc., Case no.18-1876 (Fed. Cir. Feb. 9, 2021) PER CURIAM. The case concerns communications regarding generic approvals and “skinny labels,” which permit...
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PTAB Designates Two Precedential Opinions for Evaluating Impact of District Court Litigations on Discretionary Denial under § 314(a)
By Paul Devinsky on Jan 7, 2021
Posted In Patents
In the wake of its May 13, 2020, precedential decision in Apple v. Fintiv, Inc., the Patent Trial and Appeal Board designated as precedential two additional decisions that weigh the Fintiv factors. In Fintiv, the Board articulated six factors for consideration when determining to exercise discretion to deny institution of an inter partes review (IPR)...
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PTAB Designates Three Opinions as Precedential
By Paul Devinsky on Dec 17, 2020
Posted In America Invents Act, Patents
In RPX Corp. v. Applications in Internet Time, LLC, Case Nos. IPR2015-01750, -01751, -01752 (Oct. 2, 2020) (Boalick, CAPJ) (designated precedential on Dec. 4, 2020), the Patent Trial and Appeal Board (Board) terminated institution of RPX’s petitions for inter partes review (IPR) because Salesforce—served with a complaint more than one year before—should have been named...
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Covered Business Method Threshold Review Is Not Appealable
By Paul Devinsky on Nov 24, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit found that in view of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the Patent Trial and Appeal Board’s threshold determination that a patent qualifies for covered business method (CBM) review is closely tied to the institution decision and is therefore...
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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable
By Paul Devinsky on Sep 16, 2020
Posted In Patents
Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City...
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Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals
By Paul Devinsky on Sep 2, 2020
Posted In America Invents Act, Patents
Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions....
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PTAB May Reject Substitute Claims Under Any Basis of Patentability
By Paul Devinsky on Aug 5, 2020
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board (PTAB) of jurisdiction in a co-pending inter partes review (IPR) proceeding involving the same claims, and held that it does...
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Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial
By Paul Devinsky on Jul 22, 2020
Posted In America Invents Act, Patents
The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to discretionarily deny institution under § 314(a). In Apple Inc. v. Fintiv, Inc., Case No. IPR2020-00019, Paper 15 (USPTO May 13, 2020) (Horner, APJ)...
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Stick to Your Guns: PTAB Should Rarely Issue New Grounds of Unpatentability
By Paul Devinsky on Jul 15, 2020
Posted In Patents
The Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) issued a precedential opinion in an inter partes review (IPR) to resolve two questions: May the PTAB raise a ground of unpatentability not developed by the petitioner? If it does so, must the PTAB provide the parties notice and an opportunity to respond to...
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Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR
By Paul Devinsky on Jun 10, 2020
Posted In America Invents Act, Patents
Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course...
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