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ryanodonnell
Main phone
215.568.6400
Education
  • Temple University, B.S. Biochemistry and Biology, cum laude, 1998
  • Temple University Beasley School of Law, J.D., 2002
Ryan W. O’Donnell
Professional Experience

Ryan’s practice focuses on chemical, biotechnology, medical devices, and mechanical patent prosecution, intellectual property litigation and licensing, and conducting validity, infringement and freedom to operate analyses.

Client Work

Ryan represents universities and companies of various sizes in intellectual property counseling, litigation, and licensing.  Ryan’s practice is primarily concentrated in biotechnology, chemical, and mechanical technologies.

Ryan has served as trial counsel in patent infringement disputes in various U.S. Federal District Courts, the U.S. Court of Appeals for the Federal Circuit and Ninth Circuit, and before the International Trade Commission (ITC).  He also served as lead counsel at several Markman claim construction hearings.   Ryan has obtained several favorable claim construction opinions in patent infringement matters and has negotiated the successful pre-trial resolution of several complex intellectual property matters.

Ryan works with his clients to routinely review their intellectual property assets and provide counseling on new and creative ways to maximize the value of those assets through licensing, enforcement, or strategic partnerships.  Ryan has played a key role in assisting his clients with successful industry-wide licensing programs and mutual cross-licensing programs.

Ryan also has significant experience with USPTO inter partes review (“IPR”) and reexamination proceedings.  Ryan has represented his client in over a dozen IPR proceedings.  When Ryan has represented patent owners in IPR proceedings, he has received favorable outcomes for his clients, including a decision by the USPTO Patent Trial and Appeal Board (“PTAB”) denying institution of inter partes review in full based on the patent owner’s preliminary response, and decisions instituting IPR on a limited subset of the claims for which IPR was requested.  When Ryan has represented petitioners in IPR proceedings, he has received favorable decisions, including, the cancellation of all claims for which IPR was requested and cancellation of the majority of the claims being asserted in co-pending litigation. Ryan has also successfully argued before the USPTO Patent Trial and Appeal Board in several inter partes review and reexamination proceedings.

Previous Work

Ryan has industry experience as a medical device analyst at ECRI Institute and as a research assistant in a cellular and biochemical research lab at Temple University.

Professional Activities

Philadelphia Intellectual Property Law Association (PIPLA)
Association of University Technology Managers (AUTM)
New Jersey Technology Council (NJTC)
Philadelphia Brehon Law Society
Irish American Business Chamber and Network
Institute of Food Technologists (IFT)
Pennsylvania Bar Association
Philadelphia Bar Association

Publications, Presentations and Recognitions

Publications

“Social Networking Sites Present Challenges for Copyright Protection,” R. O’Donnell and A. Mehta; The Legal Intelligencer, March 2010

“The Continued Importance of Opinions of Counsel in Willful Infringement Cases,” A. Volpe, L. Shi and R. O’Donnell, March 2010

“The Outlook of Reasonable Royalty Damages After Lucent Techs,” A. Volpe and R. O’Donnell; The Legal Intelligencer, February 2010

Presentations

“Intellectual Property Monetization,” Brehon Law Society US/Ireland Legal Symposium, Westport, County Mayo, Ireland (May 11-13, 2011)

“Trends in Post-Bilski Cases: The Federal Courts and USPTO Board of Patent Appeals and Interferences,” Philadelphia Intellectual Property Law Association (October 2009)

“Intellectual Property Rights And Food Technology,” Institute of Food Technologists Annual Meeting (June 2007)

“Protecting Your Intellectual Property,” The Emerging Business Series, Temple University (2007)

“Protecting Your Business Assets: An Intellectual Property Primer,” Greater Philadelphia Chamber of Commerce Business Expo (April 2005)

Recognitions

Ryan was selected for inclusion in Pennsylvania Super Lawyers® Rising Stars, published by Thomson Reuters, from 2012-2015.

Bar and Court Admissions

Commonwealth of Pennsylvania
State of New Jersey
U.S. Courts of Appeals for the Federal Circuit
U.S. Court of Appeals for the Third Circuit
U.S. Courts of Appeals for the Ninth Circuit
United States District Court for the Eastern District of Pennsylvania
United States District Court for the District of New Jersey
United States District of Nebraska
United States Patent and Trademark Office

Life Beyond the Law

“I enjoy spending time with my wife and our two boys.  My favorite times are spent on the beach in Ocean City, NJ with my family, even when I am being buried up to my neck in sand.  I am an avid soccer fan.  I coach my children’s soccer teams, and I continue to play in a men’s league.  I also enjoy outdoor activities such as running, biking, and skiing.”