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.
This Case Is Both Hot and Exceptional—Attorneys’ Fees and Inequitable Conduct
By Paul Devinsky on Oct 28, 2021
Posted In Patents
In a second visit to the US Court of Appeals for the Federal Circuit, after the Court affirmed a finding of unenforceability due to inequitable conduct based on “bad faith” non-disclosure of statutory bar prior sales on the first visit, the Court affirmed a remand award of attorneys’ fees based on a finding of exceptionality...
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Means-Plus-Function Claims: Don’t Forget the “Way”
By Paul Devinsky on Oct 21, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first means-plus-function claim, and because the specification lacked disclosure of a structure for the “way” to perform a second means-plus-function claim....
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No Immunity: State Right of Publicity Law is § 230 “Law Pertaining to Intellectual Property”
By Paul Devinsky on Oct 7, 2021
Posted In Trademarks
The US Court of Appeals for the Third Circuit held that § 230 of the Communications Decency Act, 47 U.S.C. § 230(c), does not preclude claims based on state intellectual property laws, reversing in part a district court’s dismissal of a plaintiff’s state law claims for violation of her right of publicity. Hepp v. Facebook,...
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Material Information Submitted to FDA but Withheld from PTO Gives Rise to Inequitable Conduct
By Paul Devinsky on Sep 16, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit found prior art submitted to the US Food and Drug Administration (FDA), yet withheld from the US Patent & Trademark Office (PTO) during prosecution of an asserted patent, sufficient evidence for a finding of inequitable conduct. Belcher Pharmaceuticals, LLC v. Hospira, Inc., Case No. 20-1799 (Fed....
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If Intrinsic Evidence Provides a Clear Meaning, Just Stop
By Paul Devinsky on Aug 19, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a final written decision of the Patent Trial & Appeal Board (Board) based on its finding that the Board erred in its ultimate claim construction by relying on extrinsic evidence that was inconsistent with the intrinsic evidence. Seabed Geosolutions (US) Inc. v. Magseis FF LLC,...
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Supreme Court to Consider Fraudulent Intent in Copyright Registration
By Paul Devinsky on Jun 3, 2021
Posted In Cert Alert, Copyrights
The Supreme Court of the United States agreed to consider whether a copyright registration accurately reflecting a work can nevertheless be invalidated without fraudulent intent. Unicolors Inc. v. H&M Hennes & Mauritz LP, Case No. 20-915 (Supr. Ct. June 1, 2021) (certiorari granted) The US Court of Appeals for the Ninth Circuit reversed a district...
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Confused? How Do You Factor That?
By Paul Devinsky on May 27, 2021
Posted In Trademarks
Considering the eight-factor likelihood of confusion test, the US Court of Appeals for the Sixth Circuit affirmed the district court’s finding on all factors, concluding that two competing marks in the transportation logistics industry are overlapping to the extent that consumers would likely be confused. AWGI, LLC v. Atlas Trucking Co., LLC, Case No. 20-1726...
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Initial Confusion? Relax, Eighth Circuit Has Your Number
By Paul Devinsky on May 20, 2021
Posted In Trademarks
Addressing a novel issue regarding when confusion must occur for it to be actionable, the US Court of Appeals for the Eighth Circuit concluded that initial-interest confusion was a viable infringement theory. Select Comfort Corp. v. Baxter, Case No. 19-1113 (8th Cir. May 11, 2021) (Melloy, J.) Select Comfort owns registered trademarks, including “SELECT COMFORT,”...
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New Perspective on Specific Personal Jurisdiction in Patent DJ Venue
By Paul Devinsky on May 20, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that the minimum contacts or purposeful availment test for specific personal jurisdiction was satisfied where a patent owner sent multiple infringement notice letters and other communications to a resident of California who then filed for declaratory judgment of non-infringement in federal district court in California....
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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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