John Smith Strikes Again (But We Saw It Coming): Strategic Product Redesign in MedTech

When our MedTech client approached us, the stakes were high. They had already developed a prototype for a medical device, built the related machinery, and invested around two million euros. The objective was clear: enter the U.S. market and attract funding to scale. However, as often happens in the pre-go-to-market phase, a Freedom to Operate (FTO) analysis was required—to assess whether the product could be commercialized without infringing on existing intellectual property.

The FTO results were unexpected: some key components of the solution were already patented. Not by a large corporation, but by a single inventor, whom we’ll call John Smith for privacy reasons (of our client). His invention shared one of the fundamental principles of our customer’s technology, putting the entire project at potential risk.

That’s when Erre Quadro’s intervention, through its IP Intelligence and Strategic Analysis capabilities, became crucial in turning a problem into an opportunity.

John Smith, the Inventor… and Entrepreneur

Our initial patent analysis revealed a key insight: Smith was not a one-time inventor. He had filed multiple patents on the same technology, demonstrating deep expertise and a well-defined strategy. Furthermore, in 2008, approximately 10 of these patents had been reissued—typically indicating a change in assignee and likely acquisition by a new company. Upon deeper investigation, we found that a major U.S. company, a direct competitor of our client, had purchased and republished the patents.

Figura 1: John Smith Patent Activity

At the same time, Smith had begun patenting a new generation of the same technology. This wasn’t coincidental: by cross-referencing diverse sources—patent databases, LinkedIn, financial records, press releases, and trademark registries—we discovered that he was replicating exactly what he had done back in 2002: founding a startup, transferring IP to it, building a team, developing a prototype, bringing it to market, and ultimately selling it to a large player. In essence, Smith was a direct link in the competitor’s chain.

Predicting the Future… with Data

At that point, the key question became: “What will Smith do next?”
Thanks to extensive analysis of unstructured, multisource data, Erre Quadro was able not only to reconstruct the inventor’s past but also to predict his next moves with high accuracy. He had already founded a new company, hired new personnel, filed new trademarks, and was actively seeking funding to develop the technology further. It was clear he was assembling a new “ready-to-sell package,” likely targeted again at the same large competitor.

This scenario made any negotiation with Smith highly unlikely—not just due to strategic risk, but also because of pricing. Competing with a multinational offer would be nearly impossible. Treating him as a “small inventor open to negotiation” would have been a major miscalculation. The only viable route was to act on the product itself to eliminate any possible infringement.

And So… Design Around!

With our support, the client chose the safest path: a design around strategy. To eliminate legal and economic risks, they decided to redefine the product’s features and functionality with us, making it not only non-overlapping with other patents but also technologically superior.

During this redesign process, the team introduced a series of innovative features that not only avoided Smith’s patents but added real engineering value. These innovations led to new patent filings, enriching the client’s IP portfolio. As a result, the client was able to present investors with a product that wasn’t just legally safe—but technologically advanced and IP-protected, significantly increasing its market appeal.

When a Threat Becomes an Opportunity

This story took place ten years ago, and today we can confirm how it ended. Our prediction was spot on: John Smith did, in fact, sell his technology to our client’s main competitor. But by that time, our client was fully prepared. They had a new, more competitive product—free from legal threats and ready to tackle the U.S. market with a differentiated, patented solution that attracted investors. And that’s exactly what happened: thanks to the newly created IP during the design around phase, the client secured two million dollars in funding to launch their U.S. startup.

The case of Smith is emblematic. It shows just how critical it is today to go beyond traditional patent analysis. IP is a strategic game played across multiple arenas: technological, legal, competitive, and financial. Having a cross-disciplinary vision, supported by integrated data and the ability to anticipate future scenarios, is what makes the difference between a project at risk of failure and one that hits the market stronger than ever.
Because in a world where innovation moves fast, it’s not the first to arrive who wins—but the one who knows where others are headed… and gets there before they do.