Being strategic about where to pursue foreign patent protection can go a long way in efficiently using available resources while still acquiring meaningful protection for an invention.
Ryan M. Spanheimer
Assistant: Anise Krull, 612.492.7635
“I enjoy learning about new technologies and then creating and implementing strategies to maximize the business value of these technologies.”
Ryan works with clients to protect and defend their innovations through the strategic use of intellectual property. His practice primarily involves patent-related matters where he focuses on acquiring patent rights that optimize the value of his clients’ inventions and evaluating patents of competitors so that informed business decisions can be made.
Ryan has experience in a wide range of patent matters. This includes comprehensive U.S. and international patent acquisition and portfolio management where he leverages his understanding of his clients’ business objectives to secure patent rights that provide competitive value in relevant markets. Ryan frequently conducts complex freedom to operate analyses to help clients minimize patent infringement risk during product development and find solutions consistent with clients’ goals. In addition, he defends against patent infringement and licensing demands and investigates competitor products for patent enforcement. Ryan also performs patent due diligence in connection with mergers and acquisitions, including competitive patent landscape and target company patent valuation assessments.
In his patent practice, Ryan has worked with an array of technologies, including medical devices in a variety of fields (including cardiac, vascular, neuro, orthopedic and ocular), medical imaging and diagnostic procedures, thermal imaging, mobile communications/networking, connected devices, software, gas turbine engines, mechanical and electromechanical aerospace applications, fire and life safety devices, construction and agricultural equipment, industrial control systems, and manufacturing processes.
Prior to joining Fredrikson, Ryan spent time working in the intellectual property department at Emerson Electric Company, as a judicial intern for the Honorable Rudolph Randa at the U.S. District Court, Eastern District of Wisconsin, and as a research assistant to Marquette Law School Dean Joseph Kearney.
Drafted and prosecuted U.S. patent applications for a large medical company to obtain comprehensive patent protection of a next generation add-on to a market leading product line to maintain the client’s competitive position in that market. Also directed and coordinated prosecution of foreign patent applications to obtain corresponding patent coverage in valuable foreign markets for the product line.
Identified and prosecuted strategic continuation patent applications to expand a global industrial conglomerate’s patent portfolio in a market sector experiencing a new entrant resulting in further limiting the space within which the new entrant could compete.
Worked with a large medical company to develop a patent portfolio of technology for protecting replacement components central to the client’s business model for a key product.
Freedom to Operate Analyses
Represented a multinational industrial conglomerate developing a new connected device platform. Analyzed a large number of competitor patents that had been asserted by that competitor against all major companies already in the space. Identified strong noninfringement and invalidity positions for each of the competitor patents allowing the client to move forward with the new platform from a position of strength.
Conducted a global freedom to operate analysis for an aerospace manufacturer developing an improved heat transfer mechanism for a billion dollar product line. Reviewed thousands of third party patents in the relevant technology space to ultimately identify a handful of relevant patents. Worked collaboratively with the client’s technical team to finalize a design for the mechanism that reduced infringement risk without sacrificing design performance.
Conducted a global freedom to operate analysis for a leading medical company developing a new software analytical tool. Efficiently screened through hundreds of patents in the technology space to identify several relevant third party patents. Used the results of this analysis to guide the client’s product development efforts and minimize patent infringement risk.
Represented a multinational home products company in defending against an infringement and licensing demand by a patent troll. Comprehensively evaluated the technical and legal merits of the demand. Used this comprehensive evaluation to construct an aggressive response establishing that the troll’s patents were invalid causing the troll to abandon the infringement and licensing demand without compensation.
Represented an engine manufacturer and services provider in a pre-suit investigation of a main competitor’s product. Analyzed the technical design of the competitor’s product in view of the client’s patent portfolio to identify strong patent infringement claims for enforcement. Also analyzed the competitor’s patent portfolio in view of the client’s product to evaluate the risk of a patent infringement counterclaim against the client on enforcement. Communicated the merits and risks to management so that an informed business decision as to enforcement could be made.
Post Grant Proceedings
Represented a medical imaging company in an Opposition Proceeding brought by a third party against the client’s patent in Japan. The third party was alleging that the client’s patent was obvious and should be revoked. Crafted arguments in response to these allegations that convinced the trial examiners to maintain the client’s patent without any reduction in the scope of protection afforded by the client’s patent.
Member of a team defending a drug infusion device manufacturer against patent infringement claims. Analyzed the validity of the asserted patents and constructed strong invalidity positions for each. Successfully petitioned for, and instituted, inter partes reviews attacking each of the asserted patents.
Patent Due Diligence
Represented a large private equity firm in analyzing the patent portfolio of a target company as well as patent infringement risk associated with the target company’s primary product line. Provided the client with an assessment as to the relative strength and value of the target company’s patent portfolio in the relevant market to inform the client’s acquisition strategy and valuation. Also provided the client with a patent infringement risk level assessment associated with the target company’s primary product line and specific strategies for working to minimize risk post-acquisition.
Represented a leading global medical device company in evaluating the patent portfolios of a number of potential acquisition targets in a selected market. Provided the client with a comprehensive evaluation of the relative strength and value of each potential acquisition target’s patent portfolio allowing the client to make an informed business decision in its acquisition strategy in the selected market.
Articles & Presentations
January 26, 2017
Replacement components can be big business. However, the replacement component market may quickly become crowded with competitors attracted by lucrative profit margins. Accordingly, considering strategies for replacement component patent protection at the product development stage can be critical. By planning at the outset of product development, a company can “design into” patent protection for the replacement component itself.
PUBLICATIONS & PRESENTATIONS
- Co-presenter, “The Top IP Business Issues Arising from the Pandemic,” Midwest Intellectual Property Institute, October 1, 2020
- Presenter, “Intellectual Property: Patents, Trademarks, Copyrights, & Trade Secrets,” Minnesota Chinese Association for Science and Technology, Annual Conference December 9, 2018
- “Kimble v. Marvel Entertainment, LLC: Royalty Payments After Patent Term Expiration,” chapter co-author with Tom Hipkins, The IP Book, 2015
Honors & Education
- Marquette University Law School, J.D., magna cum laude, 2013
- Marquette University, B.S. in Civil Engineering, minor in Business Administration, 2010
- Minnesota, 2013
- Wisconsin, 2013
- U.S. Patent & Trademark Office, 2015
- Patent Pro Bono Achievement Certificate, United States Patent and Trademark Office, 2019
- Minnesota State Bar Association, North Star Lawyer, 2015
- Marquette Law Review (2012, 2013); Editorial Board Member; Note and Comment Editor
- CALI award recipient: Advanced Legal Writing; Business Associations
- Minnesota Intellectual Property Law Association (MIPLA)