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Paul Devinsky

Counsel

Washington, DC

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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
  • 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
Recognitions
  • Best Lawyers in America, Litigation – Patent, 2021-2026
  • Intellectual Asset Management (IAM) Patent 1000 – The World’s Leading Patent Practitioners, 2017
  • The Legal 500, 2015
  • Super Lawyer, 2011 to present
  • America’s Most Honored Professionals

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Capabilities and industries
Intellectual Property Technology Technology & Commercial Transactions Patent Litigation Trademark, Copyright, & Advertising Litigation Patent Portfolio Strategy & Counseling IP Licensing & Transactions Trade Secrets
Regional markets
Japan United States
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
  • City College of New York, BS, Electrical Engineering
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
  • 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
Languages
  • English