Paul Devinsky

Paul Devinsky

McDermott Will & Emery

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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

Federal Circuit to Consider International Patent Exhaustion En Banc - Lexmark International, Inc. v. Impression Products, Inc.

The U.S. Court of Appeals for the Federal Circuit has sua sponte ordered an en banc hearing to consider the issue of international patent exhaustion. Lexmark International, Inc. v. Impression Products, Inc., Case No. 14-1617...more

5/15/2015 - Appeals Lexmark Patent Exhaustion Patent Litigation Patents

Luck Runs Out for Lucky Brand - Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc.

Addressing whether a trademark holder’s victory in a prior lawsuit barred a subsequent action on new acts of infringement, the U. S. Court of Appeals for the Second Circuit overturned a district court’s summary judgment and...more

4/9/2015 - Appeals Fashion Branding Fashion Industry Trademark Infringement Trademarks

The Apparently Never-Ending Story of Bard v. W.L. Gore - Bard Peripheral Vascular Inc. and C.R. Bard, Inc. v. W.L. Gore &...

In a case centered about patent that matured from an application filed 40 years ago, a case that has been pending for 12 years and that just completed its fourth engagement at the appellate level, the U.S. Court of Appeals...more

3/3/2015 - Appeals Medical Devices Patent Infringement Patent Litigation Patents

Defense of Laches in Patent Cases to Be Reviewed En Banc - SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products,...

The U.S. Court of Appeals for the Federal Circuit has order for en banc review of the defense of laches in patent cases in order to evaluate the impact of the Supreme Court’s laches decision in the copyright case Petrella v....more

2/16/2015 - Infringement Intellectual Property Litigation Laches Patent Infringement Patent Litigation Patents Petrella v. MGM Statute of Limitations

Supreme Court: Claim Construction Is Subject to Hybrid Review - Teva Pharmaceuticals USA v. Sandoz, Inc.

In a 7–2 decision penned by Justice Breyer, the Supreme Court of the United States overturned the de novo standard as the sole standard of review issues arising in claim construction. Teva Pharmaceuticals USA v. Sandoz,...more

2/4/2015 - Claim Construction Clear Error Standard De Novo Standard of Review Federal Rules of Civil Procedure Patent Litigation Patents Pharmaceutical Pharmaceutical Manufacturers Pharmaceutical Patents SCOTUS Teva v Sandoz

Patent Claim Construction Now Subject to Hybrid Review

In a 7–2 decision penned by Justice Breyer, the Supreme Court of the United States overturned the de novo standard as the sole standard of review of issues arising in claim construction. Teva Pharmaceuticals USA v. Sandoz,...more

1/23/2015 - Claim Construction Clear Error Standard De Novo Standard of Review Federal Rules of Civil Procedure Patent Litigation Patents Pharmaceutical Pharmaceutical Manufacturers Pharmaceutical Patents SCOTUS Teva v Sandoz

Back to the Future—Supreme Court to Review Rule On Post-Expiration Patent Royalties

Kimble v. Marvel Enterprises - The U.S. Court of Appeals for the Ninth Circuit, in affirming a district court decision that toy maker Marvel was not required to make payments after the expiration of a patent,...more

1/20/2015 - IP License Kimble v Marvel Enterprises License Agreements Patent Exhaustion Patent Royalties Patents SCOTUS

Supreme Court to Consider Scope of “Good Faith” Belief and the Intent Requirement of § 271(b)

Commil USA v. Cisco Systems - Earlier this year, the U.S. Court of Appeals for the Federal Circuit ruled that a good-faith belief that a patent is invalid may negate the element of intent required to prove induced...more

1/20/2015 - Appeals Cisco v CommilUSA Good Faith Induced Infringement Patent Infringement Patent Litigation Patents SCOTUS

Getting It Right the First Time

United State Postal Service v. Return Mail, Inc.; Conopco, Inc. v. The Proctor & Gamble Co. - Two recent orders by the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) emphasize...more

12/2/2014 - Covered Business Method Proceedings Inter Partes Review Proceedings Patent Trial and Appeal Board Petitions for Review Prior Art Proctor & Gamble USPS USPTO

Post-Alice Federal Circuit Finds Internet Advertising Method to Not Be Patent Eligible

Citing the Supreme Court of the United States’ Spring 2014 decision in Alice Corp. v. CLS Bank, the U.S. Court of Appeals for the Federal Circuit reversed itself and concluded that a claimed method for distributing online...more

11/19/2014 - Advertising Appeals CLS Bank v Alice Corp Copyright Digital Media Patent Infringement Patent Litigation Patent-Eligible Subject Matter Patents Transformativeness Ultramercial v Hulu WildTangent v Ultramercial

Federal Circuit Remands Trio of Attorneys’ Fee Award Cases Back to District Courts

Icon Health & Fitness, Inc. v. Octane Fitness, LLC; Checkpoint Systems, Inc. v. All-Tag Sec., S.A.; Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc. - In the span of 10 days, and in the wake of the U.S Supreme Court...more

10/15/2014 - Appeals De Novo Standard of Review Exceptional Case Highmark v. Allcare Octane Fitness v. ICON Remand SCOTUS

Post-Therasense IC Alive and Kicking at the Federal Circuit

Apotex Inc. v. UCB, Inc. - After finding that a patent owner had made several misrepresentations to the Patent and Trademark Office (PTO) during prosecution, the U.S. Court of Appeals for the Federal Circuit concluded...more

10/2/2014 - Administrative Appeals Apotex Misrepresentation Patent Litigation Patents Pharmaceutical Manufacturers Pharmaceutical Patents USPTO

Per Second Circuit: Full Text Searchable Database Is Fair Use

Authors Guild, Inc., et al. v. HathiTrust, et al. - The U.S. Court of Appeals for the Second Circuit, affirming a district court summary judgment ruling in favor of a consortium of authors, ruled that the unauthorized...more

8/18/2014 - Copyright Copyright Infringement Databases Fair Use

Cert Alert: Is Trademark Tacking a Fact Issue or Legal Issue?

Hana Financial, Inc. v. Hana Bank & Hana Financial Group - In trademark law “tacking” is a practice whereby an applicant for registration can establish an earlier priority date by adding the period of use of an older...more

8/14/2014 - Tacking Trademark Litigation Trademarks

Cert Alert: Is TTAB Decision on Likelihood of Confusion Preclusive?

B&B Hardware, Inc. v. Hargis Industries, Inc. - The U.S. Supreme Court has agreed to review a decision of the U.S. Court of Appeals for the Eighth Circuit (in turn affirming a district court decision) finding the mark...more

8/14/2014 - Trademark Litigation Trademark Trial and Appeal Board Trademarks

Federal Circuit Orders Stay Pending Completion of CBM Review

Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more

7/17/2014 - America Invents Act Appeals Covered Business Method Patents Covered Business Method Proceedings Highmark v. Allcare Order to Stay Patent Litigation Patent Trial and Appeal Board Patents Post-Grant Review Salesforce

Federal Circuit to Review Consideration of Induced Infringement at the ITC En Banc

Suprema, Inc. v. International Trade Commission - The U.S. Court of Appeals for the Federal Circuit has granted en banc review in the case of Suprema, Inc. v. International Trade Commission in order to consider whether...more

6/9/2014 - Induced Infringement ITC Jurisdiction Patent Infringement Patent Litigation Patents Suprema

Supreme Court: Patent Claims Must Provide “Clear Notice” To What Is Claimed

On June 2, 2014, the unanimous Supreme Court of the United States, in Nautilus, Inc. v. Biosig Instruments, Inc., a case that focused on the standard for compliance with the “definiteness” requirement of 35 U.S.C. § 112, ¶ 2,...more

6/5/2014 - Definiteness Indefiniteness Nautilus Inc. v. Biosig Instruments Notice Requirements Patent Infringement Patent Litigation Patents SCOTUS

Supreme Court Keeps Raging Bull Copyright Suit in the Ring

In a ruling that could potentially increase the number of copyright infringement actions, the Supreme Court of the United States has resolved a conflict among the circuits, holding that the equitable defense of laches cannot...more

5/21/2014 - Copyright Copyright Infringement Corporate Counsel MGM Petrella v. MGM SCOTUS Statute of Limitations The Copyright Act

Stock Photo Agency Need Not List All Photographs in Its Compilation

Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co. - Joining with the U.S. Court of Appeals for the Fourth Circuit, the U.S. Court of Appeals for the Ninth Circuit ruled that a stock photo agency is the valid...more

5/19/2014 - Copyright Copyright Infringement Copyright Office Photographs

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