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.
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
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.
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
Komipharm (2014): The Komipharm cases involve an ownership and inventorship dispute, and include companion cases in Korea, Australia, European Union and the US all coordinated by Paul who has appeared in all jurisdictions except Korea. The underlying dispute involves a chemotherapy compound developed for Komipharm by a Dutch researcher – in which a former Komipharm employee asserted inventorship and ownership rights. Komipharm prevailed on both the inventorship and ownership issues in Korea and Australia – and the Munich District Court has affirmed the European Patent Office (EPO) decision was neither a sole nor co-inventor of the invention. The case in the US remains pending
Hitachi Koki (2013): Successfully represented Hitachi Koki against a lawsuit alleging infringement of seven patents. Milwaukee Electric Tool Corporation, et al., v. Hitachi Koki, et al., Case No. 2-09-cv-00948 (Eastern District of Wisconsin). In the lawsuit, Milwaukee Electric initially sought damages in the many tens of millions for inventions that it asserted covered all hand-held power tools powered by a rechargeable lithium-ion power source. Hitachi Koki filed a counter patent infringement suit in the Northern District of Georgia (Atlanta). McDermott prepared and filed requests to put the three most important Milwaukee Electric patents into inter partesreexamination – and the remaining “feature” patents into ex partereexamination. All requests were processed and granted as filed. As the inter partes reexamination proceedings wound to the inevitable appeals, Milwaukee Electric agreed that if McDermott ceased all participation in the reexamination proceedings, it would settle the two district court actions on terms very favorable to Hitachi Koki
US Court of Appeals for the District of Columbia Circuit
US District Court for the District of Columbia
US District Court for the Eastern District of Wisconsin
US Patent and Trademark Office
Pro Hac Vice Admissions: US District Courts for the Central and Northern Districts of California; US District Court for the Eastern District of Virginia; US District Courts for the Eastern and Western Districts of Texas; US District Court for the Western District of Missouri; US District Court for the Northern District Georgia and US District Court of Delaware
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