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.