Paul J. LaVanway

Shareholder

Email: plavanway@fredlaw.com
Office: 612.492.7387
Assistant: Tina Blissbenbach, 612.492.7675

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PRIMARY SERVICES

Intellectual Property Patents

ADDITIONAL EXPERTISE

Intellectual Property Litigation IP Due Diligence Life Sciences Corporate Sustainability & Social Responsibility

Overview

Working at the intersection of law and technology, Paul helps technology developers protect and defend their intellectual property assets and also guides technology users through the complex landscape of third-party intellectual property ownership.

With an emphasis on providing practical, actionable advice, he counsels clients on a wide range of strategic patent issues.

Paul’s value-added approach to patent acquisition and portfolio management focuses on securing commercially valuable patent rights that maximize protection for technology developers and limit the ability of competitors to compete within a technology space. He also advises product manufacturers and technology users on risk management regarding third-party owned patents. He regularly leads large clearance investigations and opines on competitor patents, enabling technology users to understand and manage the risks inherent to operating in a competitive environment of third-party patent ownership.

While Paul seeks to avoid costly and disruptive patent disputes for his clients, he is comfortable working on contested proceedings. He handles patent licensing and infringement demands by competitors companies and patent trolls. He also engages in post-grant proceedings before the U.S. Patent and Trademark Office, including representing both patent owners and defendants in contested inter partes proceedings and litigation reissue actions. Paul works closely with the firm’s intellectual property litigators when advising on disputes and provides strategic support on patent lawsuits.

Paul works on a wide range of technologies, including chemical compositions and processes, medical devices, software, and mechanical and electro-mechanical systems. Paul is particularly adept at handling chemical and process-based technologies, having worked as a Law Clerk in 3M’s Office of Intellectual Property Counsel prior to joining Fredrikson & Byron and having also worked as a process engineer for ExxonMobil Research & Engineering Co. prior to law school.

Experience

REPRESENTATIVE EXPERIENCE

Patent Acquisition and Portfolio Management

Experienced with a wide range of technologies. Projects have involved subject matter such as chemical cleaning formulations, renewable fuels, dermatological compositions, food compositions and processing technology, films and coatings, magnetic storage media, optical sensors, electrochemical systems, radioisotope detectors and nuclear medicine hardware and software, medical electrical stimulation hardware and therapy delivery methods, drug infusion devices, industrial processes, oil sands processing technology, extrusion equipment, networked environments, and software.
Managed a worldwide portfolio of patent applications on behalf of a market leading medical company. Handled prosecution on dozens of patent applications in nine different countries, implementing a complex protection strategy to achieve strategic, worldwide protection for the subject technology.
Directed prosecution efforts on behalf of a major glass technology company on a family of fifty plus patent applications. With filings in over a dozen countries, coordinated global prosecution efforts to achieve streamlined and synchronized protection.

Freedom to Practice Analysis and Strategic Patent Investigations

Led a global freedom to practice analysis for a market leading manufacturer of personal protective equipment developing a new line of fire fighter protection hardware. After identifying a portfolio of approximately 2000 patents within the relevant technical field, executed screening protocols and worked collaboratively with client technical personnel to efficiently filter the large portfolio down to a handful of salient third-party patents. The results of the analysis helped guide the client’s risk management efforts, including strategic technical design of the new product and ensuring infringement indemnifications from third-party suppliers.
Represented a Fortune 1000 company preparing to launch a high-stakes patent infringement suit against a major semiconductor manufacturer to evaluate the risk of a patent infringement counterclaim by the manufacturer. While analyzing a patent portfolio that included thousands of issued patents and pending patent applications, worked with the client’s international product team to strategically analyze the portfolio, resulting in a thorough risk assessment.
Conducted a patent landscape analysis for a leading medical device manufacturer evaluating entry into a new technical field already dominated by key competitors. Using prototype design concepts as a basis for the analysis, executed a comprehensive patent analysis to determine potential opportunity within the technical space and to advise on strategic design choices to minimize the risk of an infringement claim.

Contested Proceedings

Represented a Fortune 1000 franchisor in allegations of patent infringement leveled by its main competitor relating to mobile application software technology. Working with the firm’s IP litigation personnel, executed a structured technical and legal investigation of the allegations. Working from a position of strength based on the comprehensive investigation, reengaged the competitor to collaboratively resolve the dispute without monetary payment or costly litigation.
Drafted and successfully initiated an inter partes reexamination (“IPR”) proceeding attacking a patent held by one of the largest Chinese outsourcing manufacturers and component suppliers. The U.S. Patent and Trademark Office adopted all the proposed rejections and maintained rejections of all the claims through the IPR, in the process rejecting the patent owner’s arguments of patentability in favor of the client’s countervailing arguments.
Prepared and initiated a reissue proceeding of a litigated patent on behalf of an industrial furnace manufactured as part of an overall litigation strategy. The litigation defendant filed third-party comments in the reissue opposing the action. After developing a coordinated response strategy with the litigation, filed a rebuttal response successfully challenging the third-party comments.
Represented a top twenty travel website threatened by a patent troll engaging in a patent enforcement campaign against all the major players in the industry. Structured an aggressive response to the patent troll’s demands, causing the troll to abandon the enforcement efforts against the client.

Articles & Presentations

America Invents Act

October 1, 2011

By Paul J. LaVanway, Jr.

The most significant revamping of United States patent law in the last 50 years was enacted on September 16, 2011, with President Obama’s signature of the America Invents Act. The Act, which will be implemented over the next 18 months, changes the procedures for obtaining new patents and provides new tools for challenging existing patents.

“Time To Re-Evaluate Your Competitive Intelligence Efforts,” Law360 (Sept. 3, 2014)
“The Growth of Idea Ownership: Patent Infringement and Risk Management within the Chemical Process Industries,” American Institute of Chemical Engineers 2014 Spring Meeting, New Orleans, LA (April 2, 2014)
“America Invents Act,” FredALERT: Intellectual Property, October 2011
“Patent Licensing and Discretion: Reevaluating the Discretionary Prong of Declaratory Judgment Jurisdiction After MedImmune,” 92 MINN. L. REV. 1966, 2008

Honors & Education

EDUCATION

University of Minnesota Law School, J.D., 2009, magna cum laude
University of Wisconsin - Madison, B.S., Chemical Engineering, 2004, with distinction

BAR ADMISSIONS

Minnesota, 2009
U.S. Patent & Trademark Office, 2009

HONORS

Order of the Coif, Member
Minnesota Law Review, Managing Editor, 2008-2009; staff member, 2007-2008

Professional Activities

PROFESSIONAL ACTIVITIES

American Institute of Chemical Engineers
Minnesota Intellectual Property Law Association
Judicial Extern, Honorable John R. Tunheim, U.S. District Court for the District of Minnesota, January - May 2009