McAndrews Held & Malloy
(The following information was supplied by the firm)
Firm Overview
McAndrews, Held & Malloy is a premier, full-service intellectual property and technology law firm. From world-class patent portfolio development, trademark, and design protection to its exceptional record of litigation success against highly regarded law firms, McAndrews excels at all things IP. That is why the firm is relied upon by industry-leading companies, as well as businesses and innovators of all sizes and in virtually every technical field. McAndrews is also uniquely positioned and structured to serve clients efficiently and effectively, providing exceptional lawyers, insights, service, and value. Clients appreciate the firm’s collaborative, team-based approach, as well as the extraordinarily high levels of hands-on senior-attorney attention its model affords. In addition, McAndrews’ IP-only focus delivers a competitive advantage to its clients in solving their IP challenges. McAndrews is also proud to note that over 70 percent of its attorneys have spent their entire career at the firm.
Managing Partner: Robert A. Surrette, Esq.
Number of partners: 41
Number of lawyers: 74
Languages: Arabic, Chinese, English, German, Italian, Hindi, Japanese, Korean, Polish, Punjabi, Spanish, Urdu
Practice Areas
IP Litigation (Trial & Appellate),
Post-Grant Practice,
ANDA/Biosimilar Practice,
Patent Prosecution,
IP Transactions,
Design Rights,
Trademarks
Main Areas of Expertise
IP Litigation (Trial & Appellate)
Since its founding, McAndrews has garnered a reputation as an exceptional IP law firm through its success in the courtroom. The firm’s trial attorneys have degrees in science and engineering from top academic institutions. McAndrews lawyers are masters of distilling complex technology concepts and effectively communicating those concepts to non-technical arbiters. Some recent examples of success include:
■An affirmance from the U.S. Court of Appeals for the Federal Circuit of a $254 million judgment for Stryker Corporation – one of the largest enhanced damage awards in patent history
■The Federal Circuit affirmed the district court judgment of non-infringement for McAndrews client Piramal Healthcare. Piramal filed an Abbreviated New Drug Application (ANDA) to market a generic version of Sensipar (cinacalcet), a drug for treating hyperparathyroidism in patients on dialysis. Amgen, the maker of Sensipar, responded by filing suit against Piramal for patent infringement. The case went to trial in Delaware and the court ruled in Piramal’s favour, finding that Piramal’s cinacalcet product does not infringe any of the asserted claims of Amgen’s patent
■Relating to isothermal DNA amplification methods, McAndrews represented Ionian Technologies and Abbott Laboratories in two Inter Partes Review proceedings filed by EnviroLogix, obtaining decisions denying institution of the IPRs on all grounds
Patent Post-Grant
Setting McAndrews above most firms in the nation, it has decades of trial experience at the PTAB and its predecessor in hundreds of inter partes reviews, post-grant reviews, and patent interferences. Numerous inter partes re-examinations and ex parte re-examinations round out its full-scope post grant practice. It is therefore no surprise that McAndrews has one of the most active PTAB dockets — on behalf of both petitioners and patent owners.
ANDA/Biosimilar
McAndrews counsels clients in matters arising at the interface between patent law, the FDA approval process, and litigation relating to Abbreviated New Drug Applications (ANDAs) and biosimilars. McAndrews’ patent lawyers represent clients in all aspects of ANDA/biosimilars patent law, including exclusivity strategies, patent validity and infringement analyses, and ANDA and biosimilar litigation.
Patent Prosecution
McAndrews patent lawyers have garnered national recognition for their experience in obtaining patents for clients across a vast array of technologies ranging from mechanical systems and pharmaceutical compounds to complex electrical systems and medical devices. McAndrews patent attorneys practice every aspect of patent prosecution, including: strategically developing and managing patent portfolios domestically and internationally, executing patent mining and mapping, and conducting patent landscape.
IP Transactions
McAndrews extensive experience in IP makes it a go to law firm for high-stakes IP acquisitions, sales and licensing. Its lawyers advise on the full spectrum of IP transactions important to the value of the client’s IP, and have experience in matters ranging from a single patent license transaction to IP acquisitions/divestures in excess of $1 billion. Within this practice area, the firm assists clients with a wide range of specialized transactional services, including: due-diligence investigations, M&A support, government contracts, licensing, joint ventures and technology transfers and donations.
Design Rights
McAndrews has long been considered a thought leader in US and international design law. The firm has been tapped to secure and enforce some of the world’s most iconic designs for some of the world’s largest companies, including in the furniture, medical devices, fashion and consumer electronics industries. McAndrews’ attorneys are often called upon to deliver creative design patent prosecution strategies for market preservation, design-around recommendations for entire product lines and innovative integration of design rights with trade dress and other IP protection.
Trademarks & Copyrights
McAndrews’ trademark and copyright lawyers offer skilled management of large, small, and single portfolios, including their branded products and services, and their technologies. Its lawyers regularly advise on the determination, adoption, use, and protection of trademarks, domestically and internationally. They counsel on the acquisition of marks and names and litigate before the Trademark Trial and Appeal Board, in the courts and under the Uniform Domain Name Dispute Resolution Policy’s. McAndrews also devises strategies for preventing and addressing gray-market goods.
Key Contacts
Firm Rankings
IP
Band 1
IP: Patents
Band 1
IP: Patents: Contentious
Band 1
9.5
IP: Patents: Prosecution
Band 1
9.5
IP: Patents: Transactions
Band 3
7.0
IP: Trademarks
Band 2
8.0
IP: trademarks: Contentious
Band 3
7.0
IP: Trademarks: Prosecution
Band 3
7.0
Leading Lawyers
Articles
Corporate Collision featured a panel discussion followed by a networking reception and opportunities to meet with startups. Speakers included (from left to right) Matthew Marrone, Colleen Wright, Kanav Setia, and Wayne Bradley. “The Polsky Center has a very long track record of innovation,” said Samir Mayekar, associate vice president and managing director of the Polsky […]
Pat Arnold discusses advantages to a trademark owner of initiating a proceeding before the Trademark Trial and Appeal Board (TTAB) when also facing the choice of filing a lawsuit in federal court. A trademark owner that needs to enforce its rights may often face a choice between initiating an opposition or cancellation proceeding before the […]
A jury in Los Angeles recently cleared celebrity tattoo artist Kat Von D (“KVD”) of copyright infringement. Plaintiff Jeffrey Sedlik, an award-winning photographer, took an iconic photograph of world-famous jazz musician Miles Davis. Sedlik is the sole and exclusive owner of the copyright for the portrait which was first published in 1989 and registered in […]
Christopher V. Carani and Dunstan H. Barnes Author Bloomberg Law Article The framework for assessing the obviousness of design patents is at risk. With the Federal Circuit oral arguments slated for Feb. 5, Chris and Dunstan highlight the wisdom of the current Rosen-Durling framework in this article. The two provide background, context, and examples urging the Federal Circuit to […]
Wil Rao Quoted in National Law Journal Article Highlighting the Increasing Popularity of the ITC for IP Enforcement and Subsequent Impact on Some Law Firm Hiring In the National Law Journal article, “Law Firms Are Building Out ITC Practices Amid Steady Demand in IP Practices,” reporter Abigail Adcox highlights the ITC as an “increasingly preferred venue when […]
Ron DiCerbo’s Article on a Game-Changing Federal Circuit Decision Featured in World Trademark Review Ron explains the impact of the Spireon v Flex Federal Circuit decision in this World Trademark Review article, “Surprise Federal Circuit decision shifts burden of proof to make trademark proceedings easier for defendants.” He outlines what the decision means to plaintiffs attempting […]
Chris Carani and Dunstan Barnes authored an amicus brief filed on behalf of The American Intellectual Property Law Association (AIPLA) with the Court of Appeals for the Federal Circuit in the pending en banc review of LKQ Corp. v. GM Global Technology Operations LLC. The case marks only the third time in the history of the Federal Circuit […]
Troy Groetken shed light on the importance of trade secrets, specifically in the life sciences and pharmaceutical arenas. He also answered questions about how trade secrets contribute to a company’s value and how companies can go about establishing an effective trade secret protection program. Corporate Counsel Business Journal Interviews Troy Groetken Read the full interview here.
Following a decision from the U.S. Court of Appeals for the Federal Circuit granting a rare en banc review of a design patent case, LKQ v. GM, Chris provides commentary in IPWatchdog on the potential implications. He said: “The case marks a historic occasion in design patent jurisprudence; it is only the second time that the en […]
The future is not obvious for design patent challenges. Chris provides his perspective on the recent LKQ v. GM case in a Law360 article: “The current test prohibits ‘contrived, artificial arguments for obviousness’ that are based on combining multiple earlier designs…The truth is that the constituent elements of any claimed design, if you break it down to […]
While most people recognise that they should protect their brand names and logos as trade marks, they often overlook the importance of protecting the trade dress – the unique look and feel – of their products and product packaging. This allows competitors to imitate their trade dress and cause consumer confusion. Ron DiCerbo authored a […]
In every due diligence involving a life science transaction, the parties (a.k.a. “buyer/ licensee/collaborator/partner” and “seller/licensor/collaborator/other partner”) need to identify various risks and obstacles that must be addressed. For example, both parties will want to understand key topics such as valuation modeling, valuation timing, intellectual property, the asset transfer process, representations and warranties, recent case […]
Christopher and Dunstan contributed to Lexology’s annual reference guide, where they discuss design patent infringement. They explore the role that logos play when analyzing design patent infringement and how the Federal Circuit has analyzed such design patent infringement. Read more
Whether or not your business is quantum-focused, quantum technology is rapidly emerging and forward-thinking companies will position themselves to take advantage of its benefits. Intellectual property has proven to be a primary driver of growth and profitability in many technical industries, and quantum will be no different. Ready or not, quantum computing and the revolutionary […]
Press Releases
Sanjay, a nationally recognized trial attorney, has joined McAndrews as a Shareholder. He has deep experience representing leading life science and technology companies in federal district courts, before the Patent Trial and Appeal Board, and in Section 337 investigations at the U.S. International Trade Commission. In addition to his active litigation practice, he manages patent […]
On Thursday, January 18, 2024, the annual Diversity Scholarship Foundation Unity Gala will include the 21st Swearing-In of Bar Presidents ceremony. As the incoming FALA Chicago president, McAndrews’ Alan Montera will participate in the parade of presidents. McAndrews is a proud supporter of the Gala, which is one of the premier fundraising events for the Diversity Scholarship Foundation. […]
McAndrews is pleased to share that Chris, Troy, Wil, Malaika, and Tom have all been selected as IAM Strategy 300 Global Leaders 2024. IAM Strategy 300 identifies the leading experts in IP, and recognition as an IAM Strategy 300 Global Leader 2024 elevates these attorneys even further.
Chris was recently recognized with the AIPPI Award of Merit at the AIPPI 2023 World Congress held in Istanbul, Turkey. According to the organization, Chris was deserving of this award for his many years of leadership at AIPPI and his “brilliant work and perseverance in leading the US Group to host the Congress last year in […]
Chris Tuinenga’s practice focuses on patent prosecution in the chemical and life sciences industries. Having joined McAndrews from another firm, Chris received his J.D. from Chicago-Kent College of Law. While in law school, he was Executive Associate Editor of the Journal of Intellectual Property and a member of the Intellectual Property Law Society. He also […]
On September 15, 2023, in a case of first impression, the Federal Circuit vacated a jury verdict of non-infringement in the design patent dispute between Columbia Sportswear and Seirus Innovative Accessories. On behalf of Columbia Sportswear, Christopher V. Carani argued the appeal, which dealt with the fundamental issue of what is the proper scope of comparison prior […]
IAM just released its IAM Strategy 300: The World’s Leading IP Strategists. Five seasoned McAndrews IP attorneys are among those identified for this highly selective list. As explained by IAM, they were vetted through an extensive research process to identify practitioners “leading the way in the development and implementation of strategies that maximize the value […]
Every year, Best Lawyers designates individuals from specific practice areas and geographic locations as Lawyers of the Year. These selections are based on a peer review process, and those with the highest overall feedback in particular practices and demographic areas receive the honor. Sharon was also named a Best Lawyer in America by the publication. Congratulations […]
McAndrews, Held & Malloy is pleased to announce the election of Matthew Marrone and Ryan Pianetto to Shareholders. Matt practices in all areas of intellectual property law, focusing on litigation and transactional work. He has experience preparing and prosecuting numerous patent applications on diverse technologies such as quantum computing, aviation systems, medical devices, e-commerce platforms, and more. Much […]
Congratulations to Christopher V. Carani, Troy Groetken, Herb Hart, Sharon Hwang, Ed Mas, Eligio Pimentel, Wil Rao, and Malaika Tyson, all designated as “Patent Stars 2023.” Managing IP calls these attorneys “leading practitioners in IP.” Click here to learn more
McAndrews secured a complete victory for its client Fibar USA LLC when on June 27, 2019 Pinek IP LLC dismissed its lawsuit against Fibar in the United States District Court of the Northern District of Illinois Eastern Division. Chicago-based Fibar is a unit of wireless smart home and home automation company Fibar Group S.A. based […]
Congrats to Matt Marrone on being elected to the IPLAC Board. Matt has been a long-time member of the organization and previously served as their CLE Committee Chair and Co-Chair of the Symposium Committee. IPLAC helps to advance IP rights through education, collaboration, and advocacy.
McAndrews, Held & Malloy is pleased to announce the election of Sarine Hagopian, Ben Mahon, Ashley Ratycz, Matt Rudd, and Alex Vogler to Partner Sarine R. Hagopian is a Partner at McAndrews whose practice focuses on design protection, design portfolio management, and corporate intellectual property strategy. Sarine has experience in a wide range of IP-related areas of law, including freedom to […]
In addition to Pat, Ron, and Hank’s listing in the WTR 1000, the firm is also recognized. The publication’s write-up speaks for itself. Excerpts include: “Dynamic technology and IP boutique McAndrews is sought after by highly innovative and successful companies in need of watertight patent and trademark protection and robust representation in conflict scenarios, which it has navigated […]
Carey is a partner at McAndrews. She practices in all areas of intellectual property law, focusing on patent litigation and IP due diligence. Carey helps clients to expand their IP portfolios through mergers and acquisitions, and helps them enforce and defend their IP in litigation. Carey has experience with a wide range of technologies, including […]
Shakarr focuses on patent prosecution in the life science and medical device industries. Shakarr is currently finishing her Ph.D. in Neuroscience at Weill Cornell Medicine (NYC). Her dissertation focuses on the therapeutic use of soluble adenylyl cyclase inhibitors. After she graduated with a B.A. in Biology from Wesleyan College, she completed research on blast-induced traumatic […]
Rocco Screnci focuses on litigation, with a particular emphasis on medical-device and Hatch-Watchman litigation. Rocco earned his B.S. in Chemistry at the University of Miami in Coral Gables, Florida, and his J.D. from Case Western Reserve University in Cleveland, Ohio. He previously worked in intellectual property at a regional IP boutique firm in Cleveland, as […]
The Leadership Council on Legal Diversity (LCLD) Recognizes McAndrews with the 2022 Compass Award McAndrews is proud to be an LCLD Compass Award winner. This designation showcases member firms whose high level of involvement in LCLD programs underscores their commitment to building more diverse organizations and a more inclusive legal profession.
On Oct. 26 at 9:05 Eastern, Matt Marrone will deliver a keynote address on “Government Initiatives and the Law – Strategic Guidance to Prepare Your Organization for the Quantum Revolution.” The event aims to “provide attendees with a deep understanding of the current impact of quantum technology on cybersecurity and how it will evolve.” Click here to […]
Intellectual Property Law Association of Chicago (IPLAC) Annual IP Symposium Features Panel with Dunstan Barnes 12.01.22 6:37am Dunstan Barnes is speaking on the panel “What’s New in Patent Law?” on November 3 from 1:15-2:15 p.m. central, during IPLAC’s Annual IP Symposium. McAndrews’ Matt Marrone is on the organization’s Symposium Committee and helped plan and coordinate this year’s event, […]
McAndrews is proud to be nationally and regionally ranked as a Tier 1 law firm for Litigation – Intellectual Property, Patent Law, and Trademark Law. According to the publication, “these rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations, peer review from leading attorneys, and review of […]
McAndrews is proud to be recognized by Top Ranked Legal, an online aggregator of lawyer and law firm rankings, in a multitude of categories: Top Ten IP Firms in Illinois (ranked #3) Band 1 for General IP Band 1 for General IP Patents (10/10 ranking) Band 1 for General IP Patents Contentious (9/10 ranking) Band […]
Congratulations to firm President Bob Surrette on being named to Illinois Tech’s Board of Trustees. Bob graduated from Illinois Tech’s law program, Chicago-Kent College of Law. Founded more than 20 years ago, Chicago-Kent’s Intellectual Property Law Program is one of the strongest in the country, reflecting and anticipating the ever-changing nature and challenges of the contemporary IP […]
McAndrews Awarded the Chicago Committee’s 2022 Commitment and Investment Diversity Award (Mid-Size Firm) s an organization dedicated to advancing minority attorneys and transforming the legal profession, the Chicago Committee on Minorities in Large Law Firms (the “Chicago Committee”) has recognized McAndrews with its 2022 Commitment and Investment Diversity Award (mid-size firm). The Committee cited McAndrews’ […]
U.S. News – Best Lawyers “Best Law Firms” Recognizes McAndrews as a Tier 1 Law Firm Both Nationally and Regionally for 2023 11.28.22 10:17am McAndrews is proud to be nationally and regionally ranked as a Tier 1 law firm for Litigation – Intellectual Property, Patent Law, and Trademark Law. According to the publication, “these rankings […]
Gene Volchenko focuses on intellectual property litigation and transactional matters. He has experience in pre-suit investigations and assessment, motion practice, and advanced legal research. Gene graduated from Chicago-Kent College of Law, where he was the Treasurer of the Intellectual Property Law Society, and an Associate Editor of the college’s Journal of Intellectual Property. He also […]