McAndrews, Held & Malloy

Firm overview:

Chicago-based firm McAndrews is dedicated exclusively to IP, offering clients a full-service model. Most of the firm’s attorneys are experienced in both patent prosecution and litigation. Patent prosecution is one of McAndrews’ largest practices and it takes a personal approach to the work, devoting senior-attorney time to clients and fostering long term relationships. Clients praise the firm’s “cost-sensitive approach” as well as quality of work.

Litigation is the firm’s biggest practice, and it claims one of the largest single teams of US Patent and Trademark Office-registered attorneys with science and engineering degrees. As a midsized firm, McAndrews is able to staff litigation teams efficiently while drawing on a bench of technical expertise to handle complex disputes.

Team overview:

Christopher Carani is named by a peer as one of the top design patent lawyers and he has earned significant recognition for his work in the field. A shareholder at the firm, Carani has been at McAndrews since 1995 and represents some of the world’s most design-centric companies, procuring design rights around the globe as well as litigating them in court. A peer says he “really knows what he’s doing both in litigation and prosecution. I recommend him totally, without reservation.”

Peter McAndrews is involved in all aspects of patent litigation, acquisition and counselling and his name is brought up by peers as a go-to IP attorney. Most recently, he has worked with innovators in the fields of wireless communications, computer engineering and science, and food and beverage packaging.

Key matters:

Contentious:

• Purdue Pharma v Accord Healthcare, US Court of Appeals for the Federal Circuit, 2024.

In December 2024, a panel of circuit judges affirmed the decision of a lower court invalidating five patents asserted by Purdue against Accord. Generics and biosimilars manufacturer Accord had filed an abbreviated new drug application (ANDA) to market its own version of Purdue’s OxyContin tablets, which Purdue alleged would infringe the patents-in-suit.

A team of Alex Menchaca, Ben Mahon, and Brad Loren from McAndrews represented Accord.

• McAndrews represented Metrom Rail in defence against a challenge to the client’s patent by Siemens Mobility, Ground Transportation Systems and Piper Networks. In November 2024, the USPTO declined to institute an inter partes review of Metrom Rail’s patent, with McAndrews having shown that the issues raised in the petition were substantially the same as those already considered during prosecution.
• Columbia Sportswear v Seirus, 2023.

Chris Carani successfully argued a case of first impression in this design patent dispute, which created new law on the issue of proper scope of comparison prior art used in infringement analysis for design patents.

Clients:

Accord Healthcare, Columbia Sportswear, Metrom Rail.