McAndrews Held & Malloy
(The following information was supplied by the firm)
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
IP Litigation (Trial & Appellate),
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
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.
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.
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.
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.
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.
IP: Patents: Contentious
IP: Patents: Prosecution
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 […]
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 […]