Media Mentions
2012
“Inventor of Method for Making Compound Is Joint Inventor of Compound’s Patent Claim, Federal Circuit Rules”
National Law Journal, January 23, 2012
Paul Devinsky warned that a Federal Circuit decision finding the inventor of a process to synthesize a compound to be co-inventor of the compound itself means that patent applicants should be wary of over-broad claims that avoid prior art. If a patent genus (class) is innovative, Mr. Devinsky said, “You have to look to people who either devised a method of making the genus, [or] developed compounds that fall within the genus because they are inventors.”
Paul Devinsky, Intellectual Property, IP Litigation
“High Court’s USPTO Evidence Ruling Could Sting Agencies”
Law360, January 6, 2012
Paul Devinsky contended that an anticipated Supreme Court of the United States ruling on the extent of new evidence that patent applicants can present to a district court after the U.S. Patent and Trademark Office has rejected their application will likely have limited impact because the new patent reform law allows for a direct appeal only to the Federal Circuit, not a district court.
Paul Devinsky, Intellectual Property, Patent Prosecution
2011
“Fighting Movie Piracy Seen Likely to Swamp U.S. Trade Agency”
Bloomberg News, December 7, 2011
Paul Devinsky said that a proposal for the International Trade Commission to do more policing of foreign websites accused of Internet and media piracy would require new judges, support staff, hearing rooms and an expansion of the Office of Unfair Import Investigations. “You’re not going to see too many of these foreign websites show up with lawyers,” Mr. Devinsky noted. “Someone’s going to have to stand up for the public interest to make sure there’s no overreaching.”
Paul Devinsky, Intellectual Property, Patent Prosecution
“Congress Approves Historic Patent Legislation”
National Journal, September 8, 2011
Paul Devinsky welcomed the new patent reform law, saying that, “While some controversial issues remain to be tackled, most in the patent community hope that [the law’s] steps towards harmonization and procedures to filter out undeserving patents will go a long way towards strengthening the overall system without damaging the incentives to innovate.”
Paul Devinsky, Intellectual Property
“Leahy: Amending Patent Bill Would Be Unnecessary Delay”
National Journal, September 8, 2011
Paul Devinsky said that while many in the patent community support a Senate patent reform bill amendment to prohibit diverting PTO fees, they do not want wrangling over such an amendment to delay passage of the bill. Mr. Devinsky still expected that the House-passed bill, which does not prohibit diversion, “is likely to pass intact” in the Senate, but added that “the latest attempt to impose an amendment will likely prevent the bill from being a ‘mission accomplished’ passage” in President Obama’s 9/8 congressional address to propose a jobs program.
Paul Devinsky, Intellectual Property
“IP Cases to Watch at the District Court Level”
Law360, June 21, 2011
Paul Devinsky assessed the Federal Circuit’s hearing of appeals on two lower court decisions that rejected qui tam false patent marking lawsuits under the false marking statute. “How these cases get resolved is a serious issue because the Federal Circuit could – subject to Supreme Court review – wipe out false marking qui tam cases without congressional activity if it agrees with the Pennsylvania and Ohio courts,” he said.
Paul Devinsky, Intellectual Property
“Microsoft Loses $290m Final Appeal”
Financial Times, June 9, 2011
Paul Devinsky assessed a unanimous US Supreme Court ruling that upheld the current “clear and convincing” standard for demonstrating patent infringement, a standard that Microsoft had argued was too high and was used by so-called patent trolls to make infringement claims. “I’m sure the [trolls] are rejoicing and the defense bar are scratching their heads,” Mr. Devinsky said, noting that a lower standard would have left defendants in patent suits needing to show that more than 50 per cent of the evidence supported their cases, compared to the 70-80 per cent requirement under the “clear and convincing” test.
Paul Devinsky, Intellectual Property
“Microsoft Loses at Top U.S. Court in Patent Case Involving Toronto’s i4i”
Bloomberg.com, June 9, 2011
Paul Devinsky observed that although the U.S. Supreme Court, in upholding the “clear and convincing” standard for patent infringement, said that Congress could change this standard of proof, such change is unlikely. “It’s been criticized for many years and Congress has looked at the statute many times over the years and never felt the need to change it,” Mr. Devinsky said. “If this is confronted directly by statute, it would be hugely controversial.”
Paul Devinsky, Intellectual Property
“Microsoft v. i4i: How High Will the Future Barrier to Invalidity Be?”
Bloomberg Law Reports, April 4, 2011
Paul Devinsky and Keith Stolte considered the Supreme Court’s agreement to hear this case, in which petitioner Microsoft and other large corporations as amici seek to overturn the Federal Circuit’s decades-old standard that a challenge to patent validity based on prior art not considered by the PTO must be based on “clear and convincing” evidence. The authors note that Microsoft characterizes this standard as inflexible and wants a return to the former preponderance standard, in which a defendant seeking to invalidate a patent must merely show that the evidence makes it more likely than not that the patent is invalid.
Paul Devinsky, Keith M. Stolte, Intellectual Property
“En Banc Decision Allows Rejected Patent Applicants to Introduce New Evidence”
Inside Counsel, February 1, 2011
Paul Devinsky assessed an en banc Federal Circuit decision that removes limits on new evidence that patent applicants can enter in a Section 145 civil action to challenge a Patent & Trademark Office (USPTO) decision to deny patent rights. “The USPTO, for years now, has been trying to weed [Section]145[cases] out of the jurisprudence to avoid having to deal with new evidence,” Mr. Devinsky said. “I think it was becoming disruptive and a waste of time…” He added that district court applicants should not “leave any gray area in connection with the issue of whether or not you introduced new evidence and turned it into a de novo review.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
“US Supreme Court Expected to Weaken Patent Validity”
Intellectual Property Watch, January 12, 2011
Paul Devinsky predicted that the Supreme Court’s eventual ruling in Microsoft Corp. v. i4i Ltd. Partnership could create a “sea change” in U.S. patent law that would “affect what patent applications are filed, how patent applications are prosecuted, … and how patents are litigated.” The case focuses on whether a jury can strike down a patent as invalid, and Mr. Devinsky foresees that a Supreme Court decision “reducing the presumption of validity would make patents less powerful and more likely to be overturned.”
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
2010
Paul Devinsky was quoted extensively in an April 8 Law360 review of intellectual property enforcement in China. Mr. Devinsky noted that, because trademark proceedings against infringers move quickly, "Companies may have a lot of work to do to protect against counterfeiting, but if they put their fingers in a lot of holes they can diligently police their marks and prevent specific activities." Infringement damages are relatively limited so, as Mr. Devinsky stated, "what a company may win may not appear to be a victory."
Paul Devinsky, Intellectual Property
2009
Paul Devinsky and Robert Walters were featured in Law360 (September 15) examining the unique procedures for U.S. ITC cases. Compared to patent litigation in U.S. district courts, Mr. Walters said, ITC proceedings move much quicker: "There's an extremely short discovery period, and you get to the trial very quickly. None of the [district courts] will get you to trial that quickly." Mr. Devinsky added that ITC complaints must be much more detailed than those filed in federal court. "A very well prepared team for a district court case would be a very poorly prepared team for an ITC case," he observed," adding that if there is not sufficient documentation when seeking to bar a class of product imports, "your chance of getting a general exclusion order diminishes to near zero." In short, Mr. Devinsky said, lawyers who approach ITC cases like district court ones "are going to find themselves in some difficult spots."
Paul Devinsky, Robert J. Walters, Intellectual Property, International Trade Commission, IP Litigation
William Gaede and Paul Devinsky were both quoted in Law360 on June 1 concerning the U.S. Supreme Court's decision to hear an appeal of In re: Bilski, in which the Federal Circuit Court limited business method patentability. "The position the Supreme Court will have to address," Mr. Gaede said, "is whether the test for patentability of processes or methods defined by the Federal Circuit is too rigid a reading of Supreme Court precedent that could result in stifling innovation in emerging industries." Mr. Devinsky noted that a key question was whether the Court would let the Federal Circuit "down easy" or deliver a strong reversal, adding: "The patent world will soon learn just how high a threshold Section 101 presents to patent-eligible subject matter."
Paul Devinsky, William Gaede, Intellectual Property, IP Litigation, Patent Prosecution
Paul Devinsky commented favorably for Law360 on May concerning the possible nomination of Q. Todd Dickinson, executive director of the American Intellectual Property Law Association, to head the U.S. Patent & Trademark Office. "Dickinson is well equipped to return us to a time when people felt less combative, when customers and members of the patent office did not always feel so much at war," Mr. Devinsky said. He added that the new director will face substantial challenges in implementing policy changes being considered by Congress: "The USPTO does not have enough staff to handle them. This is going to be a big resource allocation issue."
Paul Devinsky, Intellectual Property
Paul Devinsky was quoted on February 2 by Law360 in an article regarding an International Trade Commission (ITC) case brought by Saxon Innovations LLC, a suspected patent troll, against Nokia Corporation, Research in Motion Ltd. and several other companies. The ITC has not traditionally been a popular forum for nonpracticing entities because the commission can award only exclusion orders on the importation of infringing goods and not monetary damages. Mr. Devinsky noted that an exclusion order, however, is functionally equivalent to an injunction issued by a district court. "A respondent, facing an exclusion order, is likely to agree to a coercive settlement in order to avoid disruption in its business since it is unlikely to get a stay of an exclusion order pending its appeal to the Federal Circuit," he said.
Paul Devinsky, Intellectual Property, International Trade Commission
2008
Paul Devinsky was quoted in the July 30 issue of The Tech Transfer Blog in an article regarding the growing tension in the tech transfer community over whether TTOs should be seen as profit or cost centers. Mr. Devinsky noted that universities tread dangerous ground by trying to run TTOs as profit centers. "Every university doesn't have the leverage of MIT, Harvard, Scripps, or Stanford. There seems to be a certain uniformity in approach, with everyone insisting on clauses that might be appropriate for dealing with a seasoned researcher at a particular university but not appropriate across the board," he said. "Many times, what universities think they can squeeze out of some piece of technology just isn't rational. Even when dealing with incubators and start-ups, many tech transfer folks insist on deal terms that almost seem calculated to create barriers to the success of the emerging company," he added.
Paul Devinsky, Intellectual Property, Licensing
Paul Devinsky was quoted in the June 2008 issue of Inside Counsel in an article regarding the Federal Circuit's ruling in the case of David Barstow, a former employee of Schlumberger Technology Corporation who invented software while employed by the company. The court ruled that Schlumberger must prove that the patents at issue were related to or suggested by David's work for the company in order to gain ownership. "This was a huge signal to the district court judge that unless Schlumberger did something to make people think the inventions belonged to the company, the inventions belong to David Barstow," Mr. Devinsky said. As for whether companies should create internal review processes for determining whether they own employees' inventions, Mr. Devinsky noted that "most companies will not be happy to make a decision on whether or not they own something."
Paul Devinsky, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the May 15 issue of IP Law360 in an article regarding Professor John F. Duffy's claim that patent appeals judges may have been unconstitutionally appointed since 2000. Mr. Devinsky noted, however, that although this throws into question any decision made by judges appointed since early 2000, few cases will have the information needed to push the issue forward. "It's not like there's this mushroom cloud on the horizon. We're not going to see a widespread number of cases where this is going to come up," Mr. Devinsky said.
Paul Devinsky, Patent Prosecution
Paul Devinsky was quoted in the May 1 issue of CFO Magazine in an article regarding whether business-process methods should be protected by patent law. On May 8, the U.S. Court of Appeals for the Federal Circuit will hear In Re Bernard L. Bilski and Rand A. Warsaw and may deliver a decision that clarifies where to draw the line on patentable subject matter. Mr. Devinsky noted, however, that if Bilski doesn’t decide the matter, the business-method patent issue will be "all teed up for the Supreme Court."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
Paul Devinsky was quoted extensively in the January 2008 issue of Technology Transfer Tactics in an article regarding sublicensing strategies for tech transfer offices. Click here to access the full text article.
Paul Devinsky, Intellectual Property, Licensing
2007
Paul Devinsky was quoted in a September 11 article by Technology Daily regarding patent holding firm NTP's decision to sue several of the nation's largest wireless carriers for alleged patent infringement. Mr. Devinsky's prediction is that the defendants would move for an immediate stay pending conclusion of the re-examination and that the stay would be granted. He suggested that NTP may be concerned about pending patent litigation on Capitol Hill and that NTP "is seeking to be certain their damage claim is calculated under the current statute."
Paul Devinsky, Intellectual Property, IP Litigation, Patent Prosecution
Paul Devinsky was quoted in the May issue of ABA Journal regarding the issues behind patenting tax strategies. Mr. Devinsky states, “If you think a patent claim is invalid, you have to get your patent attorney involved and get an opinion of counsel stating that the claim is invalid—which is one of the best ways to protect yourself...." “That’s a pretty big deal every time you want to file a tax return for a major client.”
Paul Devinsky, Intellectual Property, Patent Prosecution, Trademark/Brand Protection & Enforcement
Paul Devinsky was quoted by Reuters on January 9 in regard to the Supreme Court's decision in favor of MedImmune. Mr. Devinsky commented that the decision could prompt patent owners to put conditions in their licenses that trigger immediate termination when a patent's validity is challenged.
Paul Devinsky, Intellectual Property
2006
On October 25 on AccountingWEB.com, an article on the patenting of tax strategies references the article, "Whose Tax Law Is It?" by Paul Devinsky published in the October 16 issue of Legal Times. The article references the author's statement that tax patents could lead to unequal treatment under the tax code, becoming "government issued barbed wire" for some taxpayers.
Paul Devinsky, Intellectual Property, Tax
On Friday, October 20, the front page of The New York Times business section included an article on the patenting of tax strategies with a significant reference to the article, "Whose Tax Law Is It?" by Paul Devinsky published in the October 16 issue of Legal Times. This article also appeared in the International Herald Tribune on October 19 and the Kansas City Star on October 25.
Paul Devinsky, Intellectual Property, Tax
Paul Devinsky was quoted by Globe and Mail on April 11 regarding China Unicom Ltd.’s. new push mail service called "RedBerry" and its possible trademark infringement of the "BlackBerry" name. Mr. Devinsky commented that the consumers' likelihood of confusion would be strong enough for Research in Motion (RIM) to have a persuasive case. Mr. Devinsky also said "RIM's position would probably be enhanced in a Chinese court if China Mobile joined any action against RedBerry. Ultimately, any legal fight would hinge on who registered the trademark and service mark for BlackBerry first in China…"
Paul Devinsky, Intellectual Property, IP Litigation
Paul Devinsky was quoted in the Friday, March 3 release of IPLaw 360 following the Research in Motion (RIM) settlement with NTP, Inc. Mr. Devinsky stated, ""This settlement is not unexpected. Judge Spencer's insistence that he would soon issue a judgment and his impatience that an agreement had not yet been made were clear indicators that the parties needed to come to a business resolution."
Paul Devinsky, Intellectual Property
Paul Devinsky was quoted in The Globe and Mail on February 25 regarding the Blackberry case and stated, "RIM should go gung-ho and implement its design around and be done with it, or it should settle...". "Obviously, there are huge egos at play here on both sides."
Paul Devinsky, Intellectual Property
Paul Devinsky was quoted by the National Journal's Technology Daily on January 23 in the article, "Supreme Court Declines Review of Blackberry Dispute." Mr. Devinksy commented, "Basically, RIM has to figure out a way of either getting [U.S. District] Judge [James] Spencer to issue his injunction, and put it on stay pending Patent and Trademark Office developments, or they're going to have to settle..."
Paul Devinsky, Intellectual Property, IP Litigation
2005
Paul Devinsky was quoted in the December 1 issue of the Globe and Mail regarding the Research in Motion intellectual property litigation. Paul commented that the best legal strategy would be to remove any claims of infringement from the start.
Paul Devinsky, Intellectual Property
2004
Ray Lupo and Paul Devinsky were quoted in the National Law Journal on February 9 on the Federal Circuit's shifting views on how to define the words or claims that describe the scope of a patent. In Texas Digital Systems it ruled that dictionary definitions are the first source for construing the meaning of a claim. "The court backed off on Texas Digital," commented Mr. Lupo. It has tried to harmonize Texas digital with a 1996 decision (Vitronics) where it established tools courts should use to evaluate claim constructions. In the Vitronics decision specifications in the patent were considered the most important tool. "In Judge Richard Linn's view, you go to the dictionary first, and only if the specification is inconsistent with the dictionary need it be considered," commented Mr. Devinsky. "In Judge Michel's view, the specification has to be consulted in every claim construction."
Paul Devinsky, Raphael V. Lupo, Intellectual Property, IP Litigation
2003
Paul Devinsky was quoted in the February 21 issue of Hedge World in regard to the Sandor Document dispute, and explaining the two types of prior art defenses, anticipation and obviousness, in U.S. patent litigation. Mr. Devinsky outlined that anticipation requires a single piece of prior art that teaches everything within the scope of the plaintiff's patent claims.
Paul Devinsky, Intellectual Property
2002
Paul Devinsky was quoted in the November 16 issue of International Financing Review regarding the newest U.S. patent law which provides a right of appeal in patent re-examination proceedings. Mr. Devinsky commented on business method patents and the inability to local "prior art," in previous business method patent filings.
Paul Devinsky, Intellectual Property
Paul Devinsky was quoted in the September 5 issue of Financial Times regarding a 30-year old document, unearthed in a Chicago basement that could provide evidence of "prior art" in an electronic trading patent dispute. Mr. Devinsky commented that if the document is prior art, the Wagner patent, which registered the idea of electronic trading for commodity futures in 1990 could be invalid.
