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.
Just Compensation Based on Hypothetical Negotiation
By Paul Devinsky on Jan 16, 2025
Posted In Copyrights
In a long-standing copyright dispute on its second visit to the US Court of Appeals for the Federal Circuit, the Court affirmed the modest damages award from the US Court of Federal Claims, ruling that a hypothetical negotiation between the parties would have resulted in a license in the amount awarded by the claims court....
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Final Rule on DMCA Grants Circumvention Exemptions
By Paul Devinsky on Oct 31, 2024
Posted In Copyrights
On October 25, 2024, the Librarian of Congress Carla Hayden adopted a final rule granting exemptions to a Digital Millennium Copyright Act (DMCA) provision that prohibits circumvention of technological measures that control access to copyrighted works. The new final rule went into effect October 28, 2024. In 1998, as part of the DMCA, Congress added...
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Word From on High: Provide Reasoned Explanation When Departing From Established Practice
By Paul Devinsky on Dec 7, 2023
Posted In Trademarks
In a decision on motion in an appeal from the Trademark Trial & Appeal Board, the US Court of Appeals for the Federal Circuit admonished the Board on remand to “furnish a reasoned explanation” when departing from its “established practice” on the issue of waiver. Universal Life Church Monastery v. American Marriage Ministries, Case No....
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Here’s a Great Concept: Fraud After Registration Is Not a Basis for Cancellation
By Paul Devinsky on Oct 26, 2023
Posted In Trademarks
In a split panel decision, the US Court of Appeals for the Federal Circuit overturned the Trademark Trial & Appeal Board and ruled that a fraudulent declaration under Section 15 of the Lanham Act is not a basis for cancellation of an otherwise incontestable registered mark. Great Concepts, LLC v. Chutter, Inc., Case No. 22-1212 (Fed....
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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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