Paul Devinsky

Overview

Paul 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.

Paul has extensive experience in the following:

Litigating patent infringement and validity disputes in federal district courts and before the International Trade Commission, as well as invention ownership (and (USPTO) inequitable conduct issues) disputes
Post Issuance Proceedings before the Patent Trial and Appeal Board under the AIA
Litigation, trademark and trade dress disputes
Arbitrating trade secret disputes
Copyright counseling
Serving as lead counsel in numerous appellate matters before the US Court of Appeals for the Federal Circuit
Negotiating and drafting US and international licenses for protecting technology, general intellectual property agreements, settlement agreements, and industry-specific agreements related to manufacturing, software and other sectors
Handling matters pertaining to university and US government licensing
Litigating Internet Corporation for Assigned Names and Numbers (ICANN) domain name disputes
Managing intellectual property due diligence in connection with reorganizations, tax restructurings, mergers, acquisitions or liquidation proceedings

Paul has particular experience in connection with protecting the technology relating to semiconductor fabrication tools and processes, semiconductor architecture, machine tools and machine tool controllers, computer-related devices, telecom and internet-related technologies, laser technologies, ion beam technologies, medical and biotech devices, consumer and industrial electronics, telephony, computer-controlled electro-mechanical systems, automotive electronics, nuclear fuel assemblies and reactors (fission and fusion), programmable logic chips designs, power tools, digital optics, cameras and photocopiers, rechargeable Li-ion batteries, enforcement of and defending against Standard Essential Patents (SEPs) and reasonable and non-discriminatory terms (RAND) licensing, esp. 802.11, Moving Picture Experts Group (MPEG) and H. 264 standards and integrated circuits. His transactional work focuses on domestic and international IP licensing settlement agreements and due diligence audits. Paul also frequently handles intellectual property audits for start-up and mature technology clients in order to plan and implement cost-effective intellectual property protection programs.

Paul lectures frequently on IP topics of current interest, appears regularly as a speaker at domestic and international symposiums, and delivers private lectures for clients.

In addition to serving approximately four years as a patent examiner, Paul served as patent counsel to the US Department of Energy, rising to the position of chief of patent litigation prior to entering private practice in 1980.

Paul is editor in chief and frequent contributor to McDermott’s IP Update and is a thought leader, authoring numerous articles appearing in major legal and intellectual property publications.

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Results

Funai (2015): Served as lead counsel in In the Matter of Certain Audiovisual Components and Products Containing the Same, (International Trade Commission, Case No. 337-TA-837). Successfully represented Funai Electric Co., Funai Corporation, P&F USA, Inc. and Funai Service Corp. (Funai) in a two-year investigation concerning an International Trade Commission (ITC) complain which accused Funai and its integrated circuit suppliers of infringing four patents, including three that were alleged to be standard essential. The Commission’s final ruling on LSI’s Wi-Fi patent (which was the only patent that remained in issue at the end of the investigation), secured a complete victory for Funai, finding that the patent was invalid and not infringed by Funai and that moreover the complainants had failed to satisfy the domestic-industry requirement for ITC jurisdiction. The Federal Circuit unanimously affirmed the ITC in March 2015 (LSI Corporation, Agere Systems, LLC v. United States International Trade Commission (USITC 337-TA-837)), confirming that domestic industries based on licensing activities do not exist unless the licensees make or import articles that practice the patent(s) alleged to have been infringed
Ricoh (2015): Cyberfone Systems, LLC v. Ricoh Electronics, Inc. et al., District of Delaware, Case No. 14-1490-SLR (2015). Originally filed in the Eastern District of Texas (ED TX) but moved to the District of Delaware (D. Del.) upon a rare successful Motion to Transfer granted by Judge Gilstrap of the ED TX. Soon after the transfer from the ED TX to D. Del., a petition for inter partes review (IPR) (Case No. 1401490) was filed. At about the time the Patent Owner’s Statement was due in the IPR, the matter settled on terms favorable to Ricoh
Zodiac Pool Systems (2015): Successfully represented Zodiac Pool Systems, a leading manufacturer of automatic pool cleaners and equipment, in an inter partes review stemming from claims of infringement brought by Aqua Products, in its patent covering a robotic water pool cleaner. Zodiac Pool Systems, Inc., Petitioner v. Aqua Products, Inc., Patent Owner (Case IPR2013-00159) – of Aqua Products’ patent, which the Patent Trial and Appeal Board (PTAB) found all claims invalid on several grounds and denied Aqua Products’ motion to amend claims

Recognitions

The Best Lawyers in America 2022-2024, Litigation – Patent
Intellectual Asset Management (IAM) Patent 1000 – The World’s Leading Patent Practitioners, 2017
The Legal 500, 2015
Super Lawyer, 2011 to present