Ronald “Hank” Spuhler is a Shareholder at McAndrews and has a broad base of experience counseling clients in all aspects of intellectual property law across a wide array of businesses and technologies.
Hank has appeared in dozens of patent infringement cases in district court and before the Federal Circuit and International Trade Commission and has counseled clients on practice before the Patent Trial and Appeal Board. His experience spans various products and technologies, including cellular and satellite technology, wireless networking systems, GPS products, medical devices, and sporting equipment. Hank also has extensive experience in RAND litigation involving cellular, Wi-Fi, Bluetooth, and DSL standards. Of note, Hank was part of a team that obtained an $891 million settlement on behalf of a client in the semiconductor industry, and he played a lead role in a patent case before former Senior Judge James Holderman of the Northern District of Illinois, which the court characterized as “one of the best-presented cases I have had in my career” and “an exercise in excellence from a litigation standpoint.”
Hank also has significant experience in trademark, trade dress, and copyright law matters. He has served as lead counsel on several actions involving trademark/copyright infringement and trademark dilution, and has been involved in dozens of opposition and cancellation proceedings before the Trademark Trial and Appeal Board and corresponding foreign tribunals. He is well versed in domain name issues, having filed and prosecuted several domain name disputes before ICANN under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and registered numerous trademarks with ICANN in connection with the release of new gTLDs.
In addition to litigation, Hank assists clients in developing successful and lucrative IP portfolios through strategic prosecution to protect key products and/or generate licensing revenue. Hank has counseled clients in acquiring IP rights through licensing or acquisition, including representation in multiple corporate/asset acquisitions collectively valued at over $3.5 billion. Hank is also a member of the International Trademark Association’s Pro Bono Committee and Communications subcommittee and an active member of Minnesota’s LegalCORPS pro bono program. Through these organizations, Hank has represented numerous pro bono clients in trademark and copyright matters.
EDUCATION
Chicago-Kent College of Law, J.D., with honors
Purdue University, B.S., with honors
BAR ADMISSIONS/REGISTRATIONS
Illinois
U.S. District Court for the Northern District of Illinois
U.S. Court of Appeals for the Federal Circuit
U.S. Patent and Trademark Office
Minnesota
Education
Chicago-Kent College of Law, J.D., with honors
Purdue University, B.S., with honors
Practices
IP Transactions
IP Litigation
Patent Prosecution
Post-Grant Practice
Trademarks & Copyrights
Bar Admissions/Registrations
Illinois
U.S. District Court for the Northern District of Illinois
U.S. Court of Appeals for the Federal Circuit
U.S. Patent and Trademark Office
Minnesota
Industries
Consumer Products
Computer & Electronics Technology
Industrial & Mechanical
Medical Devices
Representative Matters
Represented Broadcom Corporation in acquiring patents covering wireless networks from Unova, Inc. in 2002 for $24M (many prosecuted by MHM prior to acquisition); after further development/strategic prosecution of the portfolio, Broadcom asserted several of these patents against competitors in the mobile phone market, including Qualcomm – who paid Broadcom $891M (in addition to a non-assert) to settle the litigation.
Representing Sears Brands, LLC and its affiliates in developing, maintaining and enforcing its IP portfolio (500+ patents and 3,000+ trademarks worldwide). Involved (including, in most instances, having primary responsibility) in resolving dozens of patent and trademark infringement disputes, many reaching an amicable resolution without court intervention.
Represented MaxLinear, Inc. in defending infringement allegations raised by Cresta Technology Corp. before the ITC. 337-TA-910. The Commission found no violation by MaxLinear or its customers. Also first-chaired inter partes review of asserted patent, in which the Board found all asserted claims to be unpatentable. IPR2015-00592.
Represented Riddell Corporation (lead counsel) in seven inter partes review proceedings involving three football helmet patents asserted in district court. The Board declined to institute review on 48 of the challenged claims, and confirmed the patentability of nearly all the remaining claims – including all of the challenged claims of USP 8,813,269.
Representing Netlist, Inc. in 16 inter partes review proceedings involving patents covering computer memory technology. The Board declined to institute review in seven of the proceedings. For those proceedings that have reached a Final Written Decision, the Board has held that at least one asserted claim remains patentable (and in two proceedings, confirmed all claims are patentable).
Represented clients in vetting/valuing intellectual property assets in nearly two dozen corporate or asset acquisitions including, for example:
Represented Sears Brands, LLC in the sale of its Craftsman business unit; estimated value of deal was $900M
Represented Broadcom Corp. in its acquisition of Global Locate, Inc. (GPS technology); estimated value of deal was $226M
Represented MaxLinear, Inc. in its acquisition of Entropic Communications, Inc. (semiconductors for set-top boxes); estimated value of deal was $287M
Represented American Medical Systems, Inc. in its acquisition of Laserscope (medical laser for treating BPH); estimated value of deal was $715M
Represented MaxLinear, Inc. in its acquisition of Exar Corp. (analog mixed-signal ICs); estimated value of deal was $687M
Represented Tactacam, L.L.C. (lead counsel) in defending infringement allegations raised by patent owner in district court. Holmberg v. Tactacam, L.L.C. et al., Case No. 17-cv-01577 (D. Minn. 2017). Plaintiff voluntarily dismissed complaint after briefing/argument on motion to dismiss.
Professional and Community Involvement
AIPLA
INTA
Volunteer attorney for several not-for-profit organizations, including assisting with cases involving IP matters and the Violence Against Women Act (“VAWA”)
Represented Broadcom Corporation in acquiring patents covering wireless networks from Unova, Inc. in 2002 for $24M (many prosecuted by MHM prior to acquisition); after further development/strategic prosecution of the portfolio, Broadcom asserted several of these patents against competitors in the mobile phone market, including Qualcomm – who paid Broadcom $891M (in addition to a non-assert) to settle the litigation.
Representing Sears Brands, LLC and its affiliates in developing, maintaining and enforcing its IP portfolio (500+ patents and 3,000+ trademarks worldwide). Involved (including, in most instances, having primary responsibility) in resolving dozens of patent and trademark infringement disputes, many reaching an amicable resolution without court intervention.
Represented MaxLinear, Inc. in defending infringement allegations raised by Cresta Technology Corp. before the ITC. 337-TA-910. The Commission found no violation by MaxLinear or its customers. Also first-chaired inter partes review of asserted patent, in which the Board found all asserted claims to be unpatentable. IPR2015-00592.
Represented Riddell Corporation (lead counsel) in seven inter partes review proceedings involving three football helmet patents asserted in district court. The Board declined to institute review on 48 of the challenged claims, and confirmed the patentability of nearly all the remaining claims – including all of the challenged claims of USP 8,813,269.
Representing Netlist, Inc. in 16 inter partes review proceedings involving patents covering computer memory technology. The Board declined to institute review in seven of the proceedings. For those proceedings that have reached a Final Written Decision, the Board has held that at least one asserted claim remains patentable (and in two proceedings, confirmed all claims are patentable).
Represented clients in vetting/valuing intellectual property assets in nearly two dozen corporate or asset acquisitions including, for example:
Represented Sears Brands, LLC in the sale of its Craftsman business unit; estimated value of deal was $900M
Represented Broadcom Corp. in its acquisition of Global Locate, Inc. (GPS technology); estimated value of deal was $226M
Represented MaxLinear, Inc. in its acquisition of Entropic Communications, Inc. (semiconductors for set-top boxes); estimated value of deal was $287M
Represented American Medical Systems, Inc. in its acquisition of Laserscope (medical laser for treating BPH); estimated value of deal was $715M
Represented MaxLinear, Inc. in its acquisition of Exar Corp. (analog mixed-signal ICs); estimated value of deal was $687M
Represented Tactacam, L.L.C. (lead counsel) in defending infringement allegations raised by patent owner in district court. Holmberg v. Tactacam, L.L.C. et al., Case No. 17-cv-01577 (D. Minn. 2017). Plaintiff voluntarily dismissed complaint after briefing/argument on motion to dismiss.
AIPLA
INTA
Volunteer attorney for several not-for-profit organizations, including assisting with cases involving IP matters and the Violence Against Women Act (“VAWA”)
