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Paul Devinsky is a partner in the law firm of McDermott Will & Emery LLP based in the Washington D.C. office. As a member of the Intellectual Property, Media & Technology Department, Paul concentrates his practice on patent, trademark and copyright litigation and counseling, as well as on trade secret litigation and counseling, and on licensing and transactional matters and post-issuance PTO proceedings such as reissues, reexaminations and interferences.
Paul has extensive experience in litigating patent, trademark and unfair competition-based federal district court infringement actions and in litigating patent-based investigations before the U.S. International Trade Commission (ITC). He also has experience in litigating invention priority (interferences) and ownership disputes, in arbitrating trade secret disputes, in negotiating and drafting U.S. and international licenses for protecting technology, and negotiating and drafting manufacturing agreements, software agreements and general intellectual property-based agreements (for employees, consultants, unsolicited proposals, etc.), university licensing and U.S. government licensing, and ICANN domain name disputes. Paul presently serves as co-chair of the IP, Media & Technology Departments Transaction and Licensing Group.
In terms of patenting and/or litigating, Paul has particular experience in connection with protection of technology relating to semiconductor fabrication tools and processes, 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, programmable logic chips designs. He also has experience with nuclear fusion devices, heating, cooling and ventilation control systems, and in obtaining plant patents.
Paul has extensive experience in connection with performing intellectual property due diligence as an aspect of merger and acquisition activities, joint venture formation activities and/or venture capital financing and in connection with certain licensing situations, such as assignments for the benefit of a debtor-in-possession, and in a litigation settlement environment.
Paul has also handled intellectual property audits, for both start-up and mature technology clients, in order to plan and implement cost-effective intellectual property protection programs. He has represented clients before government agencies in connection with petitions for waiver of patent rights of inventions funded in whole or in part by U.S. government funding agreements.
In addition to serving four years as a patent examiner, Paul served for approximately four years as patent counsel to the U.S. Department of Energy, rising to the position of chief of patent litigation prior to entering private practice in 1980.
Paul has handled various inter-partes matters before the U.S. Patent and Trademark Office, Board of Patent Appeals and Interferences, including U.S. Department of Energy vs. Frisch et al., Piltch et al. vs. Szylagi et al., Nutrasweet vs. Ajinamato and others. He has also handled federal district court unfair competition cases, such as Toyotomi v. Saunders and Hartmann Luggage v. Seward Luggage, and patent infringement cases, including IJR v. Sodick Co. Ltd. et al., Japax v. Sodick Co. Ltd. et al., AGIE v. Sodick, IGT v. WMS Gaming, Harris v. Nokia et al., Ricoh v. CMC Magnetics Corp., et al., Naturopathic v. Dermal, Aerotel vs. IDT, and a patent license arbitration dispute, Actel vs. BTR. In addition, he has handled ITC 337 cases such as In re Certain Electrical Discharge Machines and Components Thereof and In re Certain Single In Line Memory Module Connectors, In re Certain Rechargeable Lithium Ion Batteries and In re Certain Mobile Telephone Handsets. Paul has also arbitrated trade secret disputes, including the IBA v. Theragentics arbitration.
Paul also maintains an active appellate docket, specializing in patent cases before the U.S. Court of Appeals for the Federal Circuit and has been involved in several landmark cases including In re Seagate and IGT v. WMS.
Paul is an editor and frequent contributor to McDermott’s IP Update as well as its annual IP Review, is the author of You and the Patenting Process (DOE/GC-003) and lectures on patent claim drafting and topics relating to protection of computer-related intellectual property and appellate practice at the Federal Circuit. He is on the faculty of the PRG (Patent Resource Group) Patent Bar Review course and has conducted seminars for corporate clients regarding effective use of agreements to secure intellectual property rights from employees, vendors and consultants and to safeguard and maintain domestic and international patent rights and trade secret rights. He has been published in the National Law Journal, IP Law 360, American University Law Review, The Legal Times, Technology Transfer Tactics and other publications.
Paul earned his bachelor’s degree in electrical engineering. He is admitted to the District of Columbia Bar and is registered to practice before the United States Patent and Trademark Office, the District Court for the District of Columbia, the United States Court of Appeals for the Federal Circuit, the United States Court of Appeals for the District of Columbia and has been admitted pro hac vice to the U.S. District Courts for the Eastern District of Pennsylvania, the Northern District of California, the Southern District of New York, the Northern District of Illinois and the Eastern District of Virginia.
Paul is a member of the AIPLA, the American Bar Association (patent, trademark and Copyright litigation section), the Federal Circuit Bar Association and the D.C. Bar Association (patent, trademark and copyright law section).
Education:
Catholic University of America, Columbus School of Law, J.D., 1978
City College of New York, B.S.E.E., 1971 |
