Paul Devinsky

Paul Devinsky

McDermott Will & Emery

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Supreme Court to Review Registrability of Disparaging Trademarks

On September 29, 2016, the Supreme Court of the United States granted a petition for certiorari to consider the constitutionality of a provision of the US trademark laws directed to the registrability of disparaging...more

11/10/2016 - Disparagement First Amendment Free Speech Lanham Act Petition for Writ of Certiorari Popular The Slants Trademark Registration Trademark Trial and Appeal Board Trademarks Unconstitutional Condition

Iqbal/Twombly Pleading Standard Governs Joint Patent Infringement Claims

Addressing the pleading standard under which a joint patent infringement claim must be reviewed, the US Court of Appeals for the Federal Circuit affirmed the dismissal of a complaint of patent infringement, finding that the...more

11/7/2016 - Appeals Federal Rules of Civil Procedure Joint Infringement Patent Infringement Patents Pleading Standards Twombly/Iqbal Pleading Standard

Smartphone Patent War: En Banc Federal Circuit Rebukes Earlier Panel Decision and Reinstates Jury Verdicts for Apple against...

In its October 7 en banc decision in Apple v. Samsung, the US Court of Appeals for the Federal Circuit, without benefit of en banc briefing, issued an unusual opinion overturning a panel decision for the purpose of...more

10/12/2016 - Appeals Apple Apple v Samsung En Banc Review Obviousness Patent Infringement Patent Litigation Patent Validity Patents Prior Art Samsung Smartphones Substantial Evidence Standard

PTO Must Apply Phillips Standard when Construing Expired Patents **WEB ONLY**

In an opinion addressing the standard for claim construction of a patent that expires during reexamination, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s)...more

10/6/2016 - Appeals Broadest Reasonable Interpretation Standard Claim Construction Patent Expiration Patent Trial and Appeal Board Patent Validity Patents USPTO

Korea Quarterly - September 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

9/23/2016 - Arbitration Agreements Arbitrators Claim Construction CLS Bank v Alice Corp Internal Investigations International Arbitration Korea Patent Ownership Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents USPTO

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

9/2/2016 - America Invents Act Appeals Burden of Persuasion Burden of Production Claim Amendments En Banc Review Patent Ownership Patent Trial and Appeal Board Patents Prior Art Sua Sponte USPTO

Korea Quarterly - August 2016

Controlling Costs in International Arbitration - Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more

8/22/2016 - America Invents Act Arbitration Computer-Related Inventions Covered Business Method Patents Internal Investigations International Arbitration Korea Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents USPTO White Collar Crimes

Inducement and Risk of Liability for Worldwide Sales

The Supreme Court of the United States agreed to review a decision by the US Court of Appeals for the Federal Circuit regarding active inducement infringement under 35 USC § 271(f)(1) in a case important to US manufacturers...more

7/29/2016 - Appeals Certiorari Component Parts Doctrine Cross-Border Transactions Damages Induced Infringement Judgment As A Matter Of Law Life Technologies v Promega Manufacturer Liability Patent Infringement Patents Reversal SCOTUS

Inter Partes Review Institution Decisions Not Appealable, Broadest Reasonable Interpretation Remains Standard

In Depth - The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more

6/30/2016 - America Invents Act Appeals Broadest Reasonable Interpretation Standard Claim Construction Cuozzo Speed Technologies v Lee Inter Partes Review (IPR) Proceeding Judicial Review Patent Trial and Appeal Board Patents SCOTUS Standard of Review USPTO

Kirtsaeng II: Fees in Copyright Cases Depends on Reasonableness of Litigation Position

In Depth - Under 17 USC § 505, a “court may … award a reasonable attorney’s fee to the prevailing party.” However, when deciding whether to award attorneys’ fees under the Copyright Act’s fee-shifting provision, 17 USC...more

6/24/2016 - Appeals Attorney's Fees Copyright Infringement Fee-Shifting Judicial Discretion Kirtsaeng v. John Wiley & Sons Objective Unreasonableness Standard Prevailing Party SCOTUS The Copyright Act

Yet Another Bite at this Apple: Damages in Design Patent Cases - Samsung Electronics Co., Ltd. v. Apple Inc.

The Supreme Court of the United States has now agreed to review a 2015 decision by the US Court of Appeals for the Federal Circuit regarding the proper measure of damages in cases of design patent infringement. Samsung...more

4/7/2016 - Apple v Samsung Attorney's Fees Calculation of Damages Claim Construction Copyright Cuozzo Speed Technologies v Lee Design Patent Enhanced Damages Patent Infringement

Absent Contemporaneous Objection to Order for Single Trial on Subset of Claims, No Due Process Violation - Nuance Communications...

The US Court of Appeals for the Federal Circuit ruled that a patent owner’s due process rights were not violated when a district court found that the defendant did not infringe all of the originally asserted patents, even...more

4/6/2016 - Due Process Patent Infringement Patent Litigation

Federal Circuit Precedents on Domestic and International Patent Exhaustion Principles Remain Unchanged (Lexmark Int’l, Inc., v....

The en banc U. S. Court of Appeals for the Federal Circuit issued its long awaited (10-2) decision, reaffirming the court’s prior rulings in Mallinckrodt and Jazz Photo that a seller can use its patent rights to block resale...more

2/24/2016 - Appeals First Sale Doctrine Foreign Sales Kirtsaeng v. John Wiley & Sons Lexmark Patent Exhaustion Patent Infringement Patents Quanta Resales Agreements

Federal Circuit Rules Its Precedents on Domestic and International Patent Exhaustion Principles Not Changed by Supreme Court Cases

Lexmark International, Inc., v. Impression Products, Inc., Case Nos. 14-1617, -1619 (Fed Cir, Feb. 12, 2016) (en banc) (Taranto, J., joined by Prost, CJ and Newman, Lourie, Moore, O’Malley, Reyna, Wallach, Chen and Stoll, JJ)...more

2/19/2016 - First Sale Doctrine Foreign Sales Kirtsaeng v. John Wiley & Sons Lexmark Patent Exhaustion Patent Infringement Patent Litigation Quanta SCOTUS The Copyright Act

PTAB Denies Institution Where Claim Indefiniteness Precludes Application of Prior Art to the Claims

The Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review (IPR) after determining that the challenged claims were indefinite and that therefore the Board could not apply the prior art to...more

12/8/2015 - Claim Construction Honda Indefiniteness Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Prior Art

Federal Circuit to Consider On-Sale Bar En Banc - The Medicines Company v. Hospira, Inc.

Addressing the application of the on-sale bar under § 102(b), the U.S. Court of Appeals for the Federal Circuit, in The Medicines Company v. Hospira, Inc., Case Nos. 14-1469; 14-1504, found that the claims of an asserted...more

12/4/2015 - Amicus Briefs DOJ En Banc Review Hospira On-Sale Bar Patent Applications Patent Invalidity

Supreme Court to Review Federal Circuit Standard for Treble Damage Awards Under § 284 - Halo Electronics, Inc. v. Pulse...

Taking its first IP cases of the current session, the Supreme Court has granted certiorari in two § 284 enhanced fee award patent cases: Halo Electronics, Inc. v. Pulse Electronics, Inc., S.Ct. No. 14-1513 (Oct. 19, 2015) and...more

11/5/2015 - Attorney's Fees Certiorari Damages Enhanced Penalties Halo v Pulse Octane Fitness v. ICON Patent Infringement Patent Litigation Patents SCOTUS Stryker Ortho Treble Damages Willful Infringement

PTAB Continues to Evolve Its Covered Business Method Patent Jurisprudence - International Internet Technologies, LLC and Red Rock...

In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more

10/7/2015 - Abstract Ideas America Invents Act CLS Bank v Alice Corp Covered Business Method Proceedings Patent Expiration Patent Infringement Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Versata

PTAB Petition Must Specifically Explain the Grounds for Invalidity - Apple Inc., v. ContentGuard Holdings, Inc.

In a trio of orders addressing the extent of express explanation required in a petition for post-grant review, the Patent Trial and Appeal Board (PTAB or Board) found each petition defective for lack of explanation regarding...more

9/9/2015 - Apple Inter Partes Review (IPR) Proceeding Patent Infringement Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patents Post-Grant Review Prior Art

Teva Review Standard Controls Lighting Ballast on Remand - Lighting Ballast Control LLC v. Philips Electronics North America Corp.

In yet another post-Teva claim construction case (see discussion of Teva v. Sandoz, Shire Development v. Watson Pharmaceuticals, Kaneka Corp. v. Xiamen Kingdomway Grp. and TomTom, Inc. v. Adolph cases (this edition) the U.S....more

7/31/2015 - Appeals Claim Construction Clear Error Standard De Novo Standard of Review Extrinsic Evidence Means-Plus-Function Patent Infringement Patents Standard of Review Teva v Sandoz

Expert Testimony Not Always a Guarantee for Appellate Review with Deference - Shire Development v. Watson Pharmaceuticals; Teva...

Addressing the impact of expert testimony used during claim construction, the U.S. Court of Appeals for the Federal Circuit in a case remanded by the U.S. Supreme Court, following its January 5, 2015 decision in Teva...more

7/30/2015 - Appeals Claim Construction Clear Error Standard Expert Testimony Patent Litigation Patents Pharmaceutical Patents Shire Development v Watson Standard of Review Teva v Sandoz

No “Apportionment” Requirement for Design Patent Damages - Apple, Inc. v. Samsung Elecs. Am., Inc.

Addressing the issue of damages for trade dress and design patents, the U.S. Court of Appeals for the Federal Circuit upheld the bulk of Apple’s roughly $930 million damages award, noting that there is no apportionment...more

7/3/2015 - Appeals Apple Apple v Samsung Apportionment Design Patent Patent Infringement Patent Litigation Patents Samsung Trade Dress

What Was Old Is New Again for Means + Function Claim Elements

The U.S. Court of Appeals for the Federal Circuit, sitting en banc for the limited purpose of revisiting when claims invoke the means-plus-function language of 35 U.S.C. § 112, ¶ 6 (§ 112(6)) (now § 112(f)) replaced a part of...more

6/19/2015 - Intellectual Property Litigation Means-Plus-Function Patent Infringement Patent Litigation Patents Software

Good Faith Belief in Invalidity No Defense to Active Inducement

The U.S. Supreme Court (Justice Kennedy writing for the majority) has now eliminated a defense that has been available to parties accused of actively inducing patent infringement under 35 USC § 271(b). The Court held that a...more

5/29/2015 - Cisco Cisco v CommilUSA Good Faith Honest Belief Defense Induced Infringement Patent Infringement Patent Invalidity Patent Litigation Patents SCOTUS

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