August 24, 2014

2014 AIPPI Toronto – World Intellectual Property Congress – Design Rights to Get Spotlight

AIPPI’s World Intellectual Property Congress will be held inToronto, Canada from September 14-17, 2014. Design rights will be front and center with two high profile spots on the main program.

First, on Monday, September 15, from 12:30-14:00, there will be a lunchtime panel entitled “The Extension of the Hague International Design Protection System.”  Here are the panelists and some topic details:

Christian Archambeau, Vice-President of OHIM, will give a keynote address outlining the history and experience of OHIM with the Hague International Design Protection System.

Gregoire Bisson, Director of the Hague Registry at WIPO will provide an overview of the Hague System and comment on the changes needed for it to be workable for countries having an examination system.

It will be followed by a panel discussion by representatives who will provide a brief overview of the current status of matters in their respective offices. This panel comprises Hideo Hato, Advisor to the Commissioner and Former Commissioner, JPO; Joon Seok Lee, Deputy Commissioner, KIPO; and David R. Gerk, Office of Policy and External Affairs, USPTO.

ALSO, on Monday, September 15 from 4-6:30pm DESIGN LAW will be the subject matter of the Mock International IP Arbitration.  (I will be one of the counsel.)  The AIPPI Boston Congress in 2008 featured a mock patent trial that focused on five different jurisdictions.  At the AIPPI Paris Congress in 2010 an international panel of judges discussed selected patent law issues. The Seoul Congress in 2012 featured a mock patent trial with judges and lawyers from leading jurisdictions conducting the trial of an IT case. Following on from the success of these mock trial presentations, the Toronto Congress will showcase a mock International IP arbitration.  Further evincing the arrival of design rights into mainstream IP discourse, the arbitration will regard design rights! 

Specifically, the parties will arbitrate the landmark Canadian industrial design case of Bodum USA Inc and PI Design AG v Trudeau Corporation (1889) Inc, 2012 FC 1128under U.S. Design LawBodum is to Canada design law, what Gorham v. White is to the U.S. design law.  (One of the counsel involved in the Mock Arbitration, Francois Guay, was lead counsel for Trudeau (the prevailing party) in the actual case.)

 The arbitrators, counsel and expert witness have been selected and are as follows:

Arbitral Tribunal:

 Chair: Richard Kreindler, Cleary Gottlieb Steen & Hamilton LLP –Germany

 Co-Arbitrator: Richard Tan, Tan Arbitrators –Singapore

 Co-Arbitrator: Dan Bereskin – Bereskin & Parr LLP –Canada

Plaintiff Team:

Counsel: François Guay, Smart & Biggar /Fetherstonhaugh –Canada

Counsel: Brian Gray, Norton Rose Fulbright –Canada

Expert: Iván Poli – Marval, O’Farell & Mairal –Argentina

Defendant Team:

Counsel: Christopher Carani – McAndrews, Held & Malloy, Ltd. -USA

Counsel: Steve Bauer, Proskauer Rose – USA

 Expert: Mario Franzosi, Franzosi Dal Negro Setti – Italy

FACTS: In the Mock Arbitration the Complainant is named Fancy Glass Designs Inc.  The Respondent is named Useful Glass Designs Inc.  There are two U.S. Design Patents at issue.  There are two accused glass designs.  Both the patented and accused designs incoporate a double-walled desing feature.  The feature has both utilitarian and design aspects.  A central issue in the arbitration will be how this feature should be dealt with when considering claim construction.  (aka “scope of protection.”) Below are some at-a-glance slides of the facts of the case. 

Filed under: Press — ChrisCarani @ 10:14 pm

August 5, 2013

Carani Interviewed on CNBC Regarding President Obama’s Veto of Import Ban on iPhones and iPads

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Christopher Carani, McAndrews, Held & Malloy attorney, discusses the Obama administration’s overturning of a U.S. International Trade commission’s decision to ban the sale of older iPhones and iPads.
Filed under: Press — ChrisCarani @ 8:51 pm

July 10, 2013

Carani to Present on Design Law at 8th Annual Door County Intellectual Property Academy

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July 18, 2013 – July 19, 2013

Stone Harbor Resort & Conference Center
107 North First Ave
Sturgeon Bay , WI

About the Program
The IP Section of the State Bar of Wisconsin presents our Eighth Annual Door County IP Academy. Join your colleagues in beautiful Sturgeon Bay, Wisconsin on Thursday, July 18 and Friday, July 19, 2013 for a continuing legal education program focusing on cutting edge analysis of today’s hottest IP issues. Link to program:

This year’s IP Academy will feature world-renowned speakers, including chief judges, USPTO officials, leading in-house counselors, jury consultants, and IP subject matter experts, all presenting best-in-class IP CLE sessions.

Christopher Carani - McAndrews Held & Malloy

Chief Judge Randall Rader – United States Court of Appeals for the Federal Circuit

Manny Schecter – Chief Patent Counsel at IBM

Chief Judge James Smith – Chief Administrative Patent Judge over the Patent Trial and Appeal Board  

Mike Dillon – General Counsel of Adobe Systems, Inc.

Ted Davis –  Kilpatrick Townsend & Stockton LLP

Tom Irving – Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Eric Rudich - Senior Litigation Consultant with Magna Legal Services


Bios for Faculty: 2013 Intellectual Property Academy

Christopher Carani is a partner & shareholder with McAndrews Held & Malloy, a Chicago-based IP firm. For 15 years, he has been a leading voice in design law, counseling clients on strategic design protection and enforcement issues. Chris currently chairs the ABA’s Design Rights Committee and is the past chair of the AIPLA’s Industrial Designs Committee. He has a nation-wide audience as a frequent contributor to CNN on IP issues, and other media outlets as well, including the NY Times, Wall Street Journal, Forbes, NPR, PBS TV, CNBC TV, BBC, Bloomberg TV, and Reuters. In the landmark design patent case of Egyptian Goddess v. Swisa, Chris authored amicus briefs on behalf of AIPLA at both the petition and en banc stages, taking positions that helped set forth the ultimately re-shaped law on design patents by the Federal Circuit.

Ted Davis is a partner in the Atlanta office of Kilpatrick Townsend & Stockton LLP, where he divides his practice between client counseling and litigation in the fields of TM, copyright, false advertising, and unfair competition law.  Ted is also currently the CFO for the ABA’s IP Section, as well as a former member of the Board of Directors of INTA, for which he has provided primary representation for a number of amicus curiae briefs filed with the US Supreme Court.  He has taught as an adjunct professor at Emory University, the University of Georgia, and the John Marshall law schools, and has testified numerous times before Congress on substantive TM and Internet issues.  Ted is also a former Editor-in-Chief of the Georgia Bar Journal and, while in law school, he also served as Notes Editor for the Virginia Law Review.  His articles on IP subjects and matters have appeared in at least the Minnesota Law Review, the University of Illinois Law Review, the Washington & Lee Law Review, the Ohio State Law Journal, the Wake Forest Law Review, the Florida Law Review, and the Vanderbilt Journal of Transnational Law, as well as in numerous specialized publications, such as the Trademark Reporter and the Journal of IP Law.

Mike Dillon joins us from San Jose, CA, where he is currently serving as the GC of Adobe Systems, Inc. This is Mike’s 4th GC role, after having also done so for Silver Spring Networks, Sun Microsystems, Inc. (“Sun”), and ONI Systems Corp. With full responsibility for all legal functions at these organizations, he also managed all of the legal support for Sun’s $7.4B sale to Oracle Corporation. Mike will be sharing some of the perspectives he has gained during his career as a GC and in-house counsel.

Tom Irving is a partner in the Washington DC office of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, for whom he has practiced IP law for some 38 years in their DC and Belgian offices.  His practice includes patent counseling, design-arounds, due diligence, enforceability and infringement analyses, interferences, litigation and pre-litigation analyses, prosecution, re-examinations, re-issues, and validity analyses, particularly in the chemical and pharmaceutical fields, as well as Orange Book listing patents covering FDA-approved drugs.  Tom has lectured to an estimated some 20,000 people on the American Invents Act (“AIA”), and he is apparently an original and sole inventor of a Jedi Master Mixer, which utilizes both AIA transition sections 3n1 and 3n2.  In addition, Tom has also, for some 20 years, served as a principal teacher of a PRG Chemical Patent Practice Course.  He also originated PRG’s Orange Book and Due Diligence courses.  Tom frequently presents to many state bar associations, national bar associations, and law schools.  Tom also lectures extensively in China on US patent law.  Tom has also published law review articles in Dayton, Santa Clara, and Virginia law journals.  He is a long running selectee of America’s Best Lawyers and IAM.

Chief Judge Randall Rader joins us from the United States Court of Appeals for the Federal Circuit.  He was appointed to the Federal Circuit by President George H. W. Bush in 1990 and assumed the duties of Chief Judge on June 1, 2010.  He was appointed to the United States Claims Court (now the US Court of Federal Claims) by President Ronald W. Reagan in 1988.  Chief Judge Rader’s most prized title may well be “Professor Rader,” however, and there probably isn’t an IP practitioner, world-wide, whose daily practice has not been affected by our esteemed Chief!

Eric Rudich is a Senior Litigation Consultant with Magna Legal Services in New York, New York.  He is an expert in jury psychology and specializes in identifying and testing trial themes and strategies, creating persuasive visual graphics, developing sophisticated juror profiles, and preparing trial witnesses. Dr. Rudich has consulted on hundreds of civil and criminal cases throughout the US, and he has developed a unique niche of consulting on IP jury trials.  He has also appeared as an invited guest on CourtTV and MSNBC, conducted numerous CLEs, spoken at numerous litigation conferences, and published several articles in leading legal journals.

Manny Schecter is the Chief Patent Counsel at IBM, the #1 recipient of US patents for 20 consecutive years. He believes that the patent system is not broken, but can certainly be improved. He also believes that we can reduce patent litigation by promoting certainty early in the patent life cycle, particularly by enhancing claim clarity. Manny also organized a Peer-to-Patent project, a highly-regarded patent quality initiative, elements of which were ultimately incorporated into the AIA’s patent examination procedures.

Chief Judge James Smith is the Chief Administrative Patent Judge over the Patent Trial and Appeal Board (PTAB), which is, as of September 16, 2012, the successor to the Board of Patent Appeals and Interferences (BPAI).  Appointed by Director David Kappos and beloved by all, he began this new role on May 8, 2011, having most recently served as the Chief IP Counsel for Baxter International.  Chief Judge Smith replaced Chief Judge Michael Fleming, who stepped down in 2010, and Jay Moore who had been the Acting Chief Judge for several months.  And Chief Judge Smith marked the transition from the BPAI to the PTAB by keeping the PTAB open and staffed during the entire 24-hour period of its first day!

Filed under: Press — ChrisCarani @ 11:04 pm

June 6, 2013

Carani Interiewed on BloombergTV regarding ITC’s Import Ban on Certain iPhones and iPads for Violating Samsung FRAND Patent

 (Bloomberg) — Christopher Carani, a partner at McAndrews, Held Malloy, talks about a U.S. trade agency’s decision that Apple Inc. infringed a patent owned by Samsung Electronics.
Apple Inc. faces a ban on imports of some older devices, including the iPhone 4, iPhone 3GS, iPhone 3, iPad 3G and iPad 2 3G made for ATT Inc. Carani speaks with Jon Erlichman on Bloomberg Television’s “Bloomberg West.” (Source: Bloomberg)Apple Import Ban May Be Vetoed, Carani Says




Filed under: Press — ChrisCarani @ 10:32 pm

May 28, 2013

Carani to Present at Chicago Bar Association


CLE Description: In the world-wide battle royale between consumer tech titans Apple and Samsung, design rights have taken center stage.  The lion share of the $1.05B jury award in the U.S. case relates to Samsung’s infringement of design patents.  In the wake of this blockbuster verdict, companies and practitioners the world over are taking a second, hard look at design rights. In this CLE, leading design patent attorney Christopher V. Carani of McAndrews, Held & Malloy, Ltd. will discuss (1) cutting edge design prosecution techniques to protect not only the industrial design, but also the graphic user interfaces and icons, and (2) various design-specific litigation issues, including design patent infringement, functionality, claim construction, obviousness, anticipation and remedies.  Further, the presentation will include a discussion of recent design patent cases, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care.  Lastly, the presentation will include suggested best practices for filing for design protection under the Hague Agreement.

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Time: 12:15-1:30pm

The Chicago Bar Association
321 S Plymouth Ct
Chicago, IL 60604
(312) 554-2000
Filed under: Press — ChrisCarani @ 11:58 pm

May 22, 2013

Intellectual Property Owners Association Webinar, 5/23, 2pmET, Advanced Design Patent Prosecution Topics, Speakers: Carani (McAndrews), Maksym (Nike) and Sincavage (USPTO)

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Register Now!
IPO’s weekly one-hour webinar series on current topics in IP; hosted by Pamela Sherrid, former editor of IP Law & Business magazine.
Registration Fee
$120 per user per webinar
Government/Academic rates are
available upon request

Design Patent Prosecution: Advanced Topics
Thursday, May 23, at 2:00PM ET

The number of applications for design patents at the USPTO is growing rapidly, with some of that increase coming from corporations and IP practitioners with relatively little experience with that form of IP protection. Design filings are expected to surge more after the U.S. joins the Hague Agreement, an international design filing treaty, later this year. Our panel, which includes a leading U.S. design patent practitioner, an in-house counsel at a corporation recognized as making effective use of design patents, and a USPTO design practice specialist, will offer useful advice on:

  • USPTO’s view of common pitfalls in design patent prosecution   
  • In-house perspective on best practices for filing design patents  
  • Advanced technical prosecution techniques
  • Recent design patent jurisprudence, including the U.S. Court of Appeals for the Federal Circuit’s opinion in In Re Owens and the USPTO’s first grant of an inter partes review of a design patent in Munchkin v. Luv n’ Care 
  • USPTO’s controversial proposed tightening of amendment and continuation practice based on insufficient written description support



Christopher V. Carani is a partner at McAndrews Held & Malloyin Chicago and active member of IPO’s Industrial Designs Committee.  Chris is a leading voice in the field of design law, counseling clients on a wide range of strategic design protection and enforcement issues.  Chris currently chairs the ABA’s Design Rights Committee, and is the past chair of AIPLA’s Industrial Designs Committee.   In the landmark U.S. design patent case Egyptian Goddess v. Swisa, he authored amicus briefs on behalf of the AIPLA at both the petition and en banc stages; he also penned amicus brief in other significant design patent cases including Lawman Armor Corp. v. Winner Int’l LLC, Calmar, Inc. v. Arminak & Assoc., and Richardson v. Stanley Works, Inc.
Katie Maksym is a design patent counsel for Nike, based in Beaverton, Oregon. Nike is among the top five design patent holders in the U.S. Katie is responsible for Nike’s design patent filing and litigation strategy. She also works in the marketplace to enforce Nike’s IP against counterfeiters and infringers and therefore prefers not to publish her photograph.
Joel Sincavage is a supervisory design patent examiner at the USPTO, serving as a Teaching Quality Assurance Specialist. He trains examiners of design patents and advises the USPTO on practice, procedure and legal implementation of design patent laws, rules and court decisions. He joined the USPTO in 1989.
Filed under: Press — ChrisCarani @ 10:40 pm

May 9, 2013

Design Infringement Remedies: When Sorry is Not Enough


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McAndrews, Held & Malloy Shareholder Christopher V. Carani was a featured speaker at the American Intellectual Property Law Association (AIPLA) 2013 Spring Meeting on May 2, 2013, in Seattle. At the event, Chris presented a comparative and historical analysis of the available remedies for design patents, trademarks and copyrights, and their application in the landmark case Apple v. Samsung. He focused on a series of U.S. Supreme Court decisions from the late 1800′s regarding carpet designs (“The Carpet Wars”) that culminated in the Design Patent Act of 1887.   See Dobson v. Hartford (1885); Dobson v. Bigelow (1885); Dobson v. Dornan (1886).  A copy of his slide deck can be viewed here. Remedies for Design Infringement (AIPLA Spring Meeting 2013) (Carani) (FINAL) (4 panel)

AIPLA’s Spring Meeting is an annual, three-day event that provides attendees with in-depth educational tracks on the latest developments in intellectual property law. A copy of the program is found here: Program 2013 AIPLA Spring.   For the educational track focused on design law, Carani shared the stage with other notable design patent experts:

Tracy-Gene G. Durkin, Sterne Kessler Goldstein & Fox, PLLC, Washington, DC: Protecting the Look of Smartphone Apps— Design Patent, Trademark and Copyright Protection for Icons and GUIs

Richard Stockton, Banner & Witcoff, Ltd., Chicago, IL: Functionality in the Design World—The Doctrine of Functionality and Its Implications in Design Protection

Christopher V.  Carani, McAndrews Held & Malloy, Ltd., Chicago, IL; Design Law Infringement Remedies: When Sorry Is Not Enough

Lance D. Reich, Lee & Hayes, PLLC, Seattle, WA: Design Protection on a Global Scale—Now and After the Patent Law Treaties

Francois Guay, Smart & Biggar/Fetherstonhaugh, Ottawa, Ontario, Canada: Design Protection inCanada—The Double-Wall Perspective

Filed under: Press — ChrisCarani @ 9:02 pm

April 17, 2013

McAndrews, Held & Malloy Shareholder Christopher V. Carani to Speak at USPTO’s Seventh Annual Design Day Conference

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McAndrews, Held & Malloy Shareholder Christopher V. Caraniwill present at the U.S. Patent & Trademark Office’s (USPTO) Design Day 2013: Designs in the New Digital Age, on April 22, 2013. Chris, along with co-presenters Charles L. Mauro (Mauro New Media) and Robert S. Katz (Banner & Witcoff), will speak before the USPTO’s patent examiners and discuss current design patent jurisprudence along with issues on how errors in prosecution can ultimately impact enforcement efforts.

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At Design Day 2013, Chris will join other attorneys, judges, examiners and industrial designers from across the country to exchange ideas and educate each other on important issues impacting the design patent practice. Topics include: 

  • How the USPTO is preparing to examine applications filed under the Hague Agreement
  • Rules and techniques relating to claiming icons and graphical user interfaces in the United States and Japan
  • Microsoft’s design patent portfolio
  • Design patents in post-grant proceedings
  • Best practices to obtain the strongest protection of industrial designs in the United States

Design Day is open to all and there is no fee to attend. To register, visit:

Filed under: Press — ChrisCarani @ 8:31 pm

March 8, 2013

Northwestern’s Eighth Annual JTIP Symposium – Litigation the Meaning of FRAND

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McAndrews, Held & Malloy Shareholder Christopher V. Carani will present at the Eighth Annual JTIP Symposium, hosted by the Northwestern Journal of Technology and Intellectual Property (JTIP), in conjunction with the Searle Center on Law, Regulation and Economic Growth. Carani will participate in the session titled, “FRAND: What constitutes reasonable patent licensing terms?” on March 8, 2013, from 12:45-2:30 pm.

Specifically, Carani will present on the implications of the FTC’s decision and consent order in relation to its investigation of Google related to Standard Essential Patents and FRAND licensing. Other speakers featured on the distinguished panel include:

•     Latonia Gordon, Director, Standards Policy, Microsoft
•     Alden Abbott, Director, Global Patent Law & Competition Strategy, Blackberry
•     Mark Snyder, Corporate Litigation, Qualcomm
•     Jorge L. Contreras, American University College of Law, Contreras Legal Strategy LLC
•     Jason Sheasby, Irell & Manella

Other topics at the Eighth Annual JTIP Symposium include:
•     Net Neutrality: Government Overreach or the Key to Innovation?
•     The Past, Present and Future of Social Media

Each year, the JTIP Symposium brings together students, academics and practitioners from across the country to discuss legal topics at the forefront of technology and intellectual property.  For more information and to register, click here.

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The full program is available here. 2013 Symposium Program

Filed under: Press — ChrisCarani @ 12:37 am

February 28, 2013

Stanford Law School Hosts Major Design Law Conference, April 5-6 2013

Design Patents in the Modern World Conference

Date: April 5-6, 2013

Location:  Stanford Law School.  The Law School is located at 559 Nathan Abbott Way, Stanford CA 94305.

Conference description:

“Stanford Law School will host a major conference on design patents April 5-6, 2013. Long neglected in practice and academic scholarship,design patents have exploded in importance as a result both of recent changes in the law and high-profile cases like Apple v. Samsung.  Drawing on the experience of lawyers, in-house counsel and academics, our conference will explore both practical and policy ramifications of these developments.  Along with the public conference, on April 5, Stanford will host a one-day academic symposium with papers on design patents from the leading scholars in the world on these issues.”

Confirmed speakers:

Sarah Burstein, University of Oklahoma
Christopher V. Carani, McAndrews Held & Malloy, Ltd.
Dennis Crouch, University of Missouri
Alan Morgan Datri, WIPO
Brian Hanlon, USPTO
Laura Heymann, William & Mary Law School
James Juo, Fulwider Patton
Robert Katz, Banner & Witcoff
Mark Lemley, Stanford Law School
Jaime Lemons, Nike
Katie Maksym, Nike
Michael Meehan, Google Inc.
Mark McKenna, Notre Dame Law School
Tom Moga, Shook Hardy & Bacon
John Pratt, Kilpatrick Townsend
Michael Risch, Villanova
Perry Saidman, Saidman Design Law
Michael Risch, Villanova Law School 

Program for April 5th Design Patents in the Modern World Public Conference: Link

Program for April 6th Design Patents Academic Conference: Link


The conference is co-sponsored by the Stanford Program in Law, Science, & Technology, Google, Samsung Electronics, and Nike.

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Filed under: Press — ChrisCarani @ 1:41 pm
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