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.
2019 IP Law Year in Review: Trademarks
By Eleanor B. Atkins, Rebecca Harker Duttry, Sarah Bro and Paul Devinsky on Feb 6, 2020
Posted In Trademarks
Executive Summary Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States Supreme Court in the 2020 term—such as the protectability of certain “.com” trademarks, as well as...
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Prior Covenant Insulates Party from Suit Despite Later Agreement
By Paul Devinsky on Jan 22, 2020
Posted In Patents
In a divided panel decision, the US Court of Appeals for the Federal Circuit concluded that a merger clause in the parties’ settlement agreement did not extinguish a prior covenant not to sue. Molon Motor & Coil Corp. v. Nidec Motor Corp., Case No. 19-1071 (Fed. Cir. Jan. 10, 2020) (Lourie, J) (Reyna, J, dissenting)....
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Room Temp Prior Art Has Chilling Effect on Broadening Claim Language
By Paul Devinsky on Jan 22, 2020
Posted In Patents
In a case involving a patented method for purifying antibodies, the US Court of Appeals for the Federal Circuit determined that the process of chilling a composition to below room temperature could be found both obvious and anticipated by a process that purified that composition at room temperature. Genentech, Inc. v. Hospira, Inc., Case No....
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IPR Institution Requires Reasonable Likelihood that Reference Is Printed Publication
By Paul Devinsky on Jan 22, 2020
Posted In America Invents Act
In a precedential opinion, the Patent Trial and Appeal Board (PTAB) held that, for institution of an inter partes review (IPR) based on a printed publication, the petitioner must establish a reasonable likelihood that the reference is a printed publication. Hulu, LLC v. Sound View Innovations, LLC, Case No. IPR2018-01039 (PTAB Dec. 20, 2019) (Boalick,...
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Determination of ‘Exceptional’ Under § 285 Must Be Made at the ‘Case’ Level
By Paul Devinsky on Jan 15, 2020
Posted In Patents
Addressing the proper test for shifting fees under 35 U.S.C. § 285, the US Court of Appeals for the Federal Circuit held that a district court erred when it shifted fees to the accused infringer because the district court found that only a series of events was exceptional but did not determine that the “case ”...
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PTAB Issues Updated Trial Practice Guide: Yearly Updates Expected
By Paul Devinsky on Jan 3, 2020
Posted In Uncategorized
On November 20, 2019, the Patent Trial and Appeal Board (PTAB) issued updated guidance for trial procedures in inter partes review (IPR) and post grant review (PGR) proceedings at the US Patent and Trademark Office in the new edition of the Trial Practice Guide. For easier reading and greater consistency, the new edition incorporates the prior updates released in...
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Supreme Court: PTO Not Entitled to Attorney’s Fees in District Court Appeals
By Paul Devinsky on Jan 2, 2020
Posted In Patents
PATENTS / PTO ATTORNEY’S FEES In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court from an adverse decision of the Patent Trial and Appeal Board...
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