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.

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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

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Recognition


  • Intellectual Asset Management (IAM) Patent 1000 – The World’s Leading Patent Practitioners, 2017
  • The Legal 500, 2015
  • Super Lawyer, 2011 to present

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Community


  • American Bar Association, Patent, Trademark and Copyright Litigation Section
  • American Intellectual Property Law Association (AIPLA)
  • DC Bar Association, Patent, Trademark and Copyright Law Section
  • Federal Circuit Bar Association

Credentials


Education
Catholic University of America, Columbus School of Law, JD, 1978
City College of New York, BS, Electrical Engineering, 1971

Admissions
District of Columbia

Courts / Agencies
Supreme Court of the United States
US Court of Appeals for the Federal Circuit
US Court of Appeals for the Fourth Circuit

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Paul Devinsky

Insights & Events / Media

IP Update / May 2015

Law360 / April 27, 2015

The Latest In The Neverending Story Of Bard V. WL Gore

Intellectual Property Today / February 28, 2014

The Innovation Act

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