Paul Devinsky

Paul Devinsky

McDermott Will & Emery

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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 Checkpoint Systems v All-Tag Sec 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

It’s Not All that Bleak for Patent Owners at the PTAB

LKQ Corp. v. Clearlamp, LLC; MicroStrategy, Inc. v. Zillow, Inc.; Kyocera Corp. v. Softview LLC - In addition to the many IPRs and CBM reported in this issue, the Patent Trial and Appeal Board (PTAB) has now issued...more

5/15/2014 - Covered Business Method Patents Covered Business Method Proceedings Inter Partes Review Proceedings Kyocera Obviousness Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Trulia Zillow

High Court Will Take Up Standard of Review of Factual Findings in Claim Construction

Teva Pharmaceuticals USA Inc. et al. v. Sandoz Inc. et al. - In a case that will likely determine the standard of review used by the U.S. Court of Appeals for the Federal Circuit over lower court claim constructions,...more

5/13/2014 - Patent Litigation Patents SCOTUS Standard of Review Teva Pharmaceuticals

Unanimous Supreme Court: “Exceptional” Patent Cases Determined at District Court’s Discretion with Appellate Review only for Abuse...

With respect to the two related questions before the Supreme Court of the United States, the court held that (1) the prior standard used by the U.S. Court of Appeals for the Federal Circuit for determining whether a case is...more

5/5/2014 - Attorney's Fees Brooks Furniture Exceptional Case Highmark v. Allcare Octane Fitness v. ICON Patent Infringement Patent Litigation Patents SCOTUS

Federal Circuit to Judge Posner: eBay Analysis Is a Must

The U.S. Court of Appeals for the Federal Circuit (in a case that attracted a dozen amici briefs) affirmed a district court ruling by Circuit Judge Posner (sitting by designation) that the holder of the FRAND-encumbered SEP...more

5/2/2014 - Apple eBay Test FRAND Patent Infringement Patent Litigation Patents Standards-Essential Patents Technology

Therasense and the Fight for Fees on Fees

Therasense, Inc. v. Becton, Dickinson and Co. - In the attorneys’ fee portion of this seminal case on inequitable conduct, the U.S. Court of Appeals for the Federal Circuit has concluded that the defendants, while...more

5/1/2014 - Abbott Laboratories Attorney's Fees Corporate Counsel Fees Patent Infringement Patent Litigation Patents Prejudgment Interest Therasense

Data Transaction Claim Not Patent Eligible - Cyberfone Systems, LLC v. CNN Interactive, Inc., et al.

The U.S. Court of Appeals for the Federal Circuit, in a ruling designated as non-precedential, affirmed the district court finding that a claimed method involved an “abstract idea” and was therefore not patent eligible. ...more

4/7/2014 - Patent Litigation Patent-Eligible Subject Matter Patents

A “Program” Is Just a Set of Instructions - Ancora Technologies, Inc. v. Apple, Inc.

In a case essentially decided on a single disputed claim construction, the U.S. Court of Appeals for the Federal Circuit rejected a narrow construction of the claim term “program” and construed the term, consistent with its...more

4/3/2014 - Apple Patent Litigation Patents

Not So Fast … New Claim Construction Required Contempt Proceeding - Proveris Scientific Corp. v. Innovasystems, Inc.

Applying the TiVo standard on finding of contempt when an infringer releases a new or modified product, the U.S. Court of Appeals for the Federal Circuit vacated the district court’s contempt order, concluding that a new...more

2/27/2014 - Claim Construction Contempt Patent Infringement Patent Litigation Patents TiVo

De Novo Review of District Court Claim Construction Is Here to Stay—For Now

The en banc Federal Circuit, in a 6–4 decision, invoked the doctrine of stare decisis and decided to retain the de novo standard for appellate review of district court claim constructions....more

2/25/2014 - Claim Construction Patent Infringement Patent Litigation Patents Trial de Novo

Is “Insolubly Ambiguous” the Correct Standard to Determine Compliance with Sec 112?

The U.S. Supreme Court granted certiorari on a petition challenging the U.S. Court of Appeals for the Federal Circuit’s standard for determining when a patent claim is indefinite under 35 U.S.C. §112, ¶ 2. See IP Update,...more

2/4/2014 - Ambiguous Nautilus Inc. v. Biosig Instruments Patent Litigation Patents SCOTUS

Unanimous Supreme Court to Federal Circuit: Burden of Proof on Infringement on Patentee, Even in Declaratory Judgment - Medtronic,...

A unanimous Supreme Court of the United States, in a decision authored by Justice Breyer, reversed the U.S. Court of Appeals for the Federal Circuit, holding that the patentee bears the burden of persuasion on the issue of...more

1/30/2014 - Burden of Proof Declaratory Judgments Evidence Medtronic v Boston Scientific Medtronics Patent Infringement Patent Litigation Patents SCOTUS

Unanimous Supreme Court: Burden of Proof on Infringement Always on Patentee

In terms of the question presented, the Supreme Court of the United States answered that when a licensee seeks declaratory judgment against a patentee, asserting that its products do not infringe the licensed patent, “the...more

1/24/2014 - Burden of Proof Medtronics Patent Infringement Patent Litigation Patents SCOTUS

The Innovation Act

On December 5, 2013, the House approved the Innovation Act, H.R. 3309, primarily intended to address abusive behavior by patent owners in infringement litigation. The bill passed by a bipartisan vote of 325-91....more

1/6/2014 - Innovation Act Patent Reform Patents

Cert Alert and Other News from the Supreme Court

1—The U.S. Supreme Court granted a petition for writ of certiorari in a case challenging patent eligibility (under § 101) of method claims directed to a software embodiment and a corresponding system. Alice Corp. Pty. Ltd....more

1/3/2014 - Certiorari Patent Litigation Patent Ownership Patent-Eligible Subject Matter Patents SCOTUS

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