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.
Supreme Court to Consider Whether Lanham Act Reaches Foreign Defendants’ Extraterritorial Conduct
By Paul Devinsky on Nov 10, 2022
Posted In Cert Alert, Trademarks
The Supreme Court of the United States agreed to review the geographic scope of the Lanham Act and the extent to which trademark owners can use US trademarks to police foreign sales. Abitron Austria GmbH et al. v. Hetronic International Inc., Case No. 21-1043 (Supr. Ct. Nov. 4, 2022) (certiorari granted). The question presented is...
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Color Me Unsurprised: No Preclusion of Plaintiff’s Claims
By Paul Devinsky on Oct 27, 2022
Posted In Trademarks
The US Court of Appeals for the Seventh Circuit reversed the lower court’s order determining that the plaintiff’s federal lawsuit was barred under the doctrines of claim and issue preclusion, noting an Illinois law exception on claim preclusion and finding no issue preclusion. Creation Supply, Inc. v. Selective Ins. Co. of the Southeast, Case No....
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EU Unified Patent Court Announces Intent to Launch on April 1, 2023
By Dr. Henrik Holzapfel and Paul Devinsky on Oct 20, 2022
Posted In EU Update, Patents
The EU Unified Patent Court (UPC) announced a launch date of April 1, 2023, however, the announced date should be regarded as a statement of intent for it could change. The launch timing has been the subject of various delays and setbacks, several due to unresolved legal issues. The UPC has also published an almost...
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And the Band Played On: Reviewing Rule 54(b) Partial Summary Judgment Based on Who Did What to Whom and When
By Paul Devinsky on Oct 6, 2022
Posted In Trade Secrets
In a case where the cast of characters on both sides of the v. evolved during the lead-up to the litigation as the litigants negotiated third-party deals and formed new entities, the US Court of Appeals for the First Circuit (characterizing the matter as the “entrepreneurial equivalent of musical chairs”) affirmed a dismissal of a...
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Nothing Private about Relator’s Qui Tam Action Info
By Paul Devinsky on Sep 22, 2022
Posted In Patents
The US Court of Appeals for the Ninth Circuit reversed a district court’s order denying the defendants’ motion to dismiss a qui tam action under the False Claims Act (FCA) and remanded for further proceedings. U.S. ex rel Silbersher v. Allergan, Inc., Case No. 21-15420 (9th Cir. Aug. 25, 2022) (Gould, Bennett, Nelson, JJ) Relator...
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CAFC Pulls Final Loose Thread in Nike-Adidas Patent Row
By Paul Devinsky on Sep 22, 2022
Posted In Patents
Issuing a third and final decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision invalidating the last remaining claim of a Nike footwear textile patent. Nike, Inc. v. Adidas AG, Case No. 21-1903 (Fed. Cir. Sept. 1, 2022) (Prost, Chen, Stoll, JJ.) (non-precedential) Adidas filed...
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Play It Again and Again (Sam): Meanwhile No Injunction, No Fees
By Paul Devinsky on Sep 15, 2022
Posted In Trade Secrets
In its third opportunity to review the district court’s decision in this trade secret case involving flooring, the US Court of Appeals for the Eleventh Circuit again reversed, this time vacating a permanent injunction and an award of attorneys’ fees. The Eleventh Circuit noted that the district court failed to make the findings required to...
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Implied Copyright License to Photographs of Artist Formerly Known as Prince
By Paul Devinsky on Sep 15, 2022
Posted In Copyrights
The US Court of Appeals for the Eighth Circuit upheld a ruling that a marketer had an implied copyright license to distribute marketing materials containing digital copies of photographs of the late musical artist Prince. Beaulieu v. Stockwell, Case No. 21-3833 (8th Cir. Aug. 30, 2022) (Gruender, Benton, Grasz, JJ.) Allen Beaulieu was Prince’s personal...
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Thee I Dismiss: No Love for Failure to Add Necessary Party
By Paul Devinsky on Sep 8, 2022
Posted In Trademarks
After concluding that a trademark owner’s case for failure to add a necessary party was untenable, the US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of the case because the necessary party enjoyed sovereign immunity and could not be added. Lee et al. v. Anthony Lawrence Collection, L.L.C. et al.,...
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Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)
By Paul Devinsky on Aug 25, 2022
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by another” under pre-America Invents Act § 102(e). LSI Corp. v. Regents of Univ. of Minnesota, Case No....
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