Ryan W. O'Donnell
Ryan chairs Volpe Koenig’s Life Sciences practice group and brings his in-depth industry experience to bear in representing universities and companies of all sizes. His clients appreciate his personable approach and thorough understanding of their needs and business goals. He routinely reviews their intellectual property assets and provides 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.
His technical emphasis is primarily concentrated in biotechnology, chemical and mechanical technologies. Ryan’s work includes patent prosecution, intellectual property litigation and licensing. He also regularly conducts validity, infringement and freedom to operate analyses on behalf of clients.
As a skillful litigator, Ryan has negotiated the successful pre-trial resolution of several complex intellectual property matters and 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 has also served as lead counsel at several Markman claim construction hearings and obtained several favorable claim construction opinions in patent infringement matters.
Ryan is fully experienced with USPTO inter partes review (IPR) and reexamination proceedings, having represented clients in more than a dozen IPR proceedings. When representing patent owners in IPR proceedings, he has achieved favorable outcomes, 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 representing petitioners in IPR proceedings, he has also obtained 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’s experience also includes arguing before the USPTO Patent Trial and Appeal Board in several inter partes review and reexamination proceedings.
Previous Work and Industry Experience
Ryan’s industry experience includes serving as a medical device analyst and as a research assistant in a cellular and biochemical research lab.
Life Beyond Law
Ryan enjoys outdoor activities such as soccer, running, golf, and skiing, and spending quality time with his family and friends. His is an avid Temple University fan and enjoys attending Temple football and basketball games.
Insights & Resources
- Webinar for Japan Foreign Associates- Cut Costs, Not Quality- How IP Counsel Can Manage Patent Portfolio CostsWebinar04.14.2021
- Webinar-The Revolving Door: Intellectual Property Issues for Incoming and Outgoing Employees and ContractorsWebinar03.18.2021
This week on IP Goes Pop! fellow Volpe Koenig Shareholder Ryan O’Donnell joins co-hosts Michael Snyder and Joseph Gushue to explore the technical world of the TV show Silicon Valley, the intellectual property (IP) challenges faced by fictional compression algorithm company Pied Piper, and how realistic those challenges are to those of real world tech start-ups.
Michael, Joe, and Ryan consider “what they could have done” in connection with the IP tropes presented through some of the IP-heavy Silicon Valley episodes. They compare and contrast what happens in the show with the way real-world start-ups approach similar scenarios. From patent clearance and licensing, to trademarks, to copyrights, to identifying the different legal entities involved in possible IP disputes, this podcast episode underscores how important it is to know your IP rights from the start of any venture.
- Imagine That IP Law Blog, 02.23.2021
- Imagine That IP Law Blog, 02.26.2020
- Imagine That IP Law Blog, 02.15.2017
Honors and Activities
- Selected by attorney peers for inclusion in The Best Lawyers in America®, published by Best Lawyers LLC, for Litigation – Intellectual Property, Patent Law and Trademark Law, (2014-2021) View methodology used for selection.
Selected to the New Jersey Super Lawyers® list, published by Thomson Reuters, (2017-2018, 2022) View methodology used for selection.
Selected to the New Jersey Super Lawyers® - Rising Star list, published by Thomson Reuters, (2012-2015)
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- Life Sciences Collaborative Advisory Board
- Association of University Technology Managers
- New Jersey Intellectual Property Law Association
- Central Bucks Chamber of Commerce, Vice President, Intellectual Property
- Irish American Business Chamber and Network
Temple University Beasley School of Law, J.D.
Temple University, B.S., Biochemistry and Biology, cum laude
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Third Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the Eastern District of Pennsylvania
U.S. District Court for the District of New Jersey
U.S. District Court for the District of Nebraska
U.S. Patent and Trademark Office