Firm / Organisation

McAndrews, Held & Malloy, Ltd

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This content is provided by McAndrews, Held & Malloy, Ltd.

Co-Chairs: 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

Firm Overview:
McAndrews, Held & Malloy is a premier, full-service intellectual property and technology law firm. Some of the world’s largest and most iconic companies, as well as other businesses and innovators of all sizes and in virtually every field, rely on McAndrews to handle complex, high-stakes matters. While best known for its record of litigation success, the firm also excels in the strategic aspects of intellectual property. The firm is widely regarded as a leader in IP procurement, post-grant proceedings, IP opinions, and investigations, global portfolio management, IP development, licensing, M&A support, and design rights. McAndrews’ model affords clients extraordinary levels of senior-level attorney attention and commitment. That has generated a track record of winning that is exceptional. In addition, McAndrews concentrates wholly on IP, which results in the firm having distinct advantages in terms of both how it staffs client teams and how efficiently, economically, and effectively it serves clients. At a time when there is a battle for talent in this country, McAndrews is also proud to note that over 70 percent of its attorneys have spent their entire career at the firm.

IP Litigation (Trial & Appellate),
Post-Grant Practice,
ANDA/Biosimilar Practice,
Patent Prosecution,
IP Transactions,
Design Rights,

Main Areas of Practice:

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 favor, 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 representing clients in hundreds of patent interferences, inter partes reexaminations, and ex parte reexaminations. 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.

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 goto 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 Policys. McAndrews also devises strategies for preventing and addressing gray-market goods.