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.
Half-Baked Case: No Misappropriation or False Advertising Given Over-Broad Allegations
By Paul Devinsky on Mar 31, 2022
Posted In Trade Secrets, Trademarks
The US Court of Appeals for the Tenth Circuit affirmed a district court’s grant of summary judgment in favor of a defendant baker on a trade dress infringement claim and reversed the district court’s denial of the defendant baker’s motions for judgment as a matter of law on trade secrets misappropriation and false advertising claims....
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Not a Bullseye: Defendant Must Rebut Presumption That Claims Lacking “Means” Language Don’t Fall Under § 112 ¶ 6
By Paul Devinsky on Mar 31, 2022
Posted In Patents
Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim terms would have been understood to connote sufficiently definite structure to avoid means-plus-function construction. Dyfan, LLC v. Target...
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Patent Venue Statute Doesn’t Apply to Third-Party Counterclaim Defendant; Acts in Furtherance of Partnership May Be Imputed to Partner for Venue Purposes
By Paul Devinsky on Mar 24, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s determination of proper venue, finding that the patent venue statute, 28 U.S.C. § 1400(b), does not apply to a third-party counterclaim defendant and that acts done by separate entities in furtherance of a partnership can be imputed to a partner for purposes...
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Eighth Circuit Defends Use of Term “Patent Troll,” Vacates Injunction against Infringement Defendant
By Paul Devinsky on Mar 24, 2022
Posted In Patents
The US Court of Appeals for the Eighth Circuit vacated an injunction restraining defendants from engaging in certain allegedly harassing conduct because there was no evidence tying the defendants to the alleged misconduct and reassigned the case to a new district judge to obviate any doubts about the judge’s impartiality. Tumey v. Mycroft AI, Inc.,...
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Self-Dealing Lawyer Held Jointly and Severally Liable in Trade Secret Misappropriation
By Paul Devinsky on Mar 17, 2022
Posted In Trade Secrets
The US Court of Appeals for the Fifth Circuit affirmed a judgment holding a lawyer jointly and severally liable for trade secret misappropriation and fraudulent transfer and enjoining any further use of the trade secrets until a money judgment against the lawyer-purchased client business was satisfied. Thomas v. Hughes, Case No. 20-50671 (5th Cir. Mar....
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Dude, Where’s My Venue? Texas Car Dealerships Aren’t Distributor Agents
By Paul Devinsky on Mar 17, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a district court’s denial of motions made by two car distributors to transfer cases out of the Western District of Texas for improper venue, finding that the patent owner failed to establish that franchised car dealerships in the judicial district were agents of the manufacturers...
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Lawyers Scolded but Not Sanctioned for Violating Federal Circuit’s COVID-19 Rules
By Paul Devinsky on Mar 10, 2022
Posted In Uncategorized
The US Court of Appeals for the Federal Circuit decided not to impose sanctions for violation of its COVID-19 restrictions on the number of counsel permitted to attend oral argument, citing the involved lawyers’ “earnest remorse.” In re Violation of the Revised Protocols for In-Person Arguments and Related Order, Case No. 22-9000 (Fed. Cir. Feb....
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California, I’m Coming Home: Transfer to Venue Where Products Were Designed Is Appropriate
By Paul Devinsky on Mar 10, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit denied a patent owner’s petition for writ of mandamus, finding that the district court properly transferred a case from the Eastern District of Virginia to the Northern District of California because the center of the alleged infringing activities occurred in California. In re: SunStone Information Defense,...
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Message Received: Service of Complaint by Email Found Sufficient
By Paul Devinsky on Mar 3, 2022
Posted In Trademarks
The US Court of Appeals for the Fifth Circuit affirmed the district court’s entry of default judgment against the defendant because email service of the complaint was proper under the Federal Rules of Civil Procedure and the Texas Rules of Civil Procedure. Viahart, L.L.C. v. He GangPeng, Che Haixing, Aszune, Case No. 21-40166 (5th Cir....
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Federal Circuit Issues Errata: IPR Estoppel Applies Only to Challenged Claims
By Paul Devinsky on Mar 3, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit issued an errata to its opinion in California Institute of Technology v. Broadcom Limited, clarifying that inter partes review (IPR) estoppel under 35 USC § 315(e) does not apply to unasserted claims. California Institute of Technology v. Broadcom Limited, Case Nos. 20-2222; 21-1527 (Fed. Cir. Feb....
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