Wilhelm L. Rao | McAndrews

Wilhelm L. Rao

wrao@mcandrews-ip.com
312.775.8190


Wilhelm L. Rao Shareholder 312.775.8190 Overview Practices & Industries Related Experience Honors & Awards Professional & Community Involvement Presentations & Publications Wil Rao is a seasoned patent lawyer and shareholder at McAndrews, Held & Malloy, Ltd., a firm known for its exceptional, hands-on IP practice. He is recognized by IAM’s Patent 1000, Strategy 300, and Strategy 300: Global Leaders, and Managing Intellectual Property’s IP Stars. IAM said clients turn to Wil “when victory in a dispute is a commercial imperative.” It also noted that he “maintains many long-term connections with those he represents, not least as a result of his ability to productively and commercially address any patent issue.” He has been with the firm since 1997 and counsels clients ranging from Fortune 500 corporations to small startups and individuals. His practice focuses on all facets of IP, including IP litigation and procurement, as well as technology transfer, licensing, and IP strategy. He frequently writes and presents on these topics in media publications and conferences throughout the world. He leverages both litigation and procurement mindsets to strategically counsel clients, an uncommon skill combination that has delivered exceptional results. Wil is a trial-experienced litigator. He handles all facets of complex litigation, including pre-filing investigations to examining witnesses at trial. His court successes range from patent jury trials – including one that defined the written description law – to a landmark trade secret case under section 337 proceedings before the U.S. International Trade Commission. His cases have included both single patent, single forum cases and multi-venue, multi-IP, multi-party litigations that proceed in numerous countries. Wil’s appellate practice concentrates on the Court of Appeals for the Federal Circuit. In procurement, Wil harnesses his litigation experience to provide forward-thinking strategic counseling in patent prosecution, written opinions, licensing, and inter partes/post-grant reviews. His work here has involved a wide range of technology areas, including medical devices, gaming equipment, sporting goods and equipment, HVAC, railway equipment, heavy machinery, baby/children’s products, consumer electronics, graphical user interfaces, furniture, hardware and tools, dental equipment, pigments, lubricants, and product design. EDUCATION Chicago-Kent College of Law, J.D., with honors Washington University, M.S.E. Washington University, B.S., cum laude BAR ADMISSIONS/REGISTRATIONS Illinois U.S. District Court for the Northern District of Illinois Western District of Wisconsin U.S. Court of Appeals for the Federal Circuit U.S. Patent and Trademark Office Education Chicago-Kent College of Law, J.D., with honors Washington University, M.S.E. Washington University, B.S., cum laude Practices Design Rights IP Transactions IP Litigation Patent Prosecution Post-Grant Practice Trademarks & Copyrights Bar Admissions/Registrations Illinois U.S. District Court for the Northern District of Illinois Western District of Wisconsin U.S. Court of Appeals for the Federal Circuit U.S. Patent and Trademark Office Industries Chemical Consumer Products Computer & Electronics Technology Industrial & Mechanical Medical Devices Related Experience In the Matter of Certain Cast Steel Railway Wheels, Investigation No. 337-TA-655, before the International Trade Commission (pending) (trade secret misappropriation) ICU Medical, Inc. v. ALARIS Medical Systems, Inc., No. 2008-1077 (Fed. Cir. 2009) (appeal, patent infringement) In Re Certain Catheters, Consoles And Other Apparatus For Cryosurgery, And Components Thereof, Investigation No. 337-TA-642, before the International Trade Commission (2008) (patent infringement) CryoCor et al v. CryoCath, 08-0031-GMS (Delaware) (patent infringement)ICU Medical, Inc. v. ALARIS Medical Systems, Inc., No. SA CV 04-0689 MRP (VBKx) (C.D. Cal. 2004-07) (patent infringement) Judicial Extern for the Honorable Blanche Manning of the Northern District of Illinois Teaching Assistant: Evidence and Evidence Advocacy; graduate level Advanced Material Strength and Elasticity at Washington University Honors & Awards Managing Intellectual Property IP Star IAM Patent 1000 Illinois Rising Stars, Super Lawyers, 2007, 2008, 2009 Chicago-Kent College of Law Academic Scholar Highest academic honors in Patent Law, Evidence, Trial Advocacy and Practice Before the Federal Circuit Professional & Community Involvement Member, Intellectual Property Owners Association Member, International Trademark Association Member, International Association for the Protection of Intellectual Property Committee Member, American Intellectual Property Law Association Patent Office Practice Committee, Federal Circuit Bar Association Member, ITC Trial Lawyers Association Member of IP, Litigation and Law Practice Management Sections, American Bar Association Member, Illinois State Bar Association Past Co-Chair of the Market Power Committee and Patent Litigation Committee, Intellectual Property Owners Association Member, Chicago-Kent Trial Advocacy Team Presentations & Publications Presentations Speaker, “Litigation Lessons: Tips for HVACR Companies to Navigate an IP Litigation,” AHR Expo, February 2026 Panelist, “The Debate: Round 2 – To Catalogue or Not to Catalogue Your Trade Secrets,” Trade Secret Legal Protection Summit, September 2025 Guest, The Lexology Podcast, discussing today’s trade secret landscape, July 2025 Speaker, ACI’s ITC Litigation and Enforcement Conference, April 2025 Speaker, “Trade Secret Protection in HVACR: An Enterprise-Wide Concern,” AHR Expo, February 2025 Speaker, “Strategies for Effective Management of ITC Proceedings and Considerations for External Counsel,” ACI’s ITC Litigation and Enforcement Conference, May 2024 Panelist, “Making Money: What Corporations & Investors Want to See in HVACR IP Portfolios,” AHR Expo, January 2024 Moderator, “Strategies and Insight on Effectively Managing ITC Proceedings and Considerations for Outside Counsel,” ACI’s ITC Litigation and Enforcement Conference, March 2023 Speaker, “How Things Look Matter – But How Do You Protect Them,” AHR Expo, February 2023 Speaker, “Evaluating Trends in Filings and Dispositions of 337 Proceedings,” ACI’s ITC Litigation & Enforcement Conference, May 2022 Presenter, “Intellectual Property Protections for Your Hottest and Coolest HVACR Innovations,” AHR Expo, February 2022 Panelist, “Evaluating the Implications of Trade Secret Jurisprudence at the ITC,” ACI’s ITC Litigation and Enforcement Conference, July 2021 Moderator, “What the Election Means for the Patent World,” IAM’s IP, November 2020 Panelist, “Enforcing IP Rights through Section 337 of the U.S. International Trade Commission,” USPTO China IP Roadshow, October 2017 “Mitigating Trade Secret Theft: An Update On U.S. Gov’t Enforcement Strategies,” Ocean Tomo’s 2013 Trade Secret Management & Monetization Symposium, September 2013 “Guarding the Company Jewels: Tips For Dynamically Securing Trade Secrets,” 2013 Global IP & Innovation Summit (Shanghai), Managing Intellectual Property, September 2013 “Where Are Things Really at in Terms of IP Protection in China Now?” 2013 Managing Intellectual Property’s IP in China Symposium: Growth and Opportunities for U.S. Companies, April 2013 Publications Wil Rao and Christian Hallerud, “Patent Laws and Regulations Trends in U.S. Patent Damages: A Bildungsroman” International and Comparative Legal Guides Patents 2026 (October 2025) Wil Rao and Rocco Screnci, “Trade Secrets: USA,” Lexology Panoramic: Trade Secrets (November 2025) Wil Rao and Christian Hallerud, “Patent Litigation: USA,” Lexology Panoramic: Patent Litigation (October 2025) “Patent Litigation: USA,” Lexology Panoramic: Patent Litigation (December 2024) “Trade Secrets: USA,” Lexology Panoramic: Trade Secrets (November 2024) Wil Rao and Scott McBride, “ITC is a Powerful Tool for Rights Holders to Protect IP at Border,” Bloomberg Law (July 2024) Wil Rao, Dunstan Barnes, and Andrew Mills, “AI,” in International Comparative Legal Guides: Patents (2024) “How Can You Enforce Your Patents When You Have Limited Capital?” Built In Chicago (April 2021) Wil Rao and Bob Surrette, “Seven Steps for Securing Trade Secret Value in IP Deals,” Intellectual Asset Management Yearbook (2020) “Unusual Patent Probe Is Seen Targeting Chinese Device Maker,” Medical Device Daily (October 2013) “7 Open Questions In The IP World,” Inside Counsel Magazine (February 2013) View File. “Apple v Samsung: Swipe, Pinch and Zoom to the Courtroom,” The Economist (September 2012) View File. “Annual Review of Intellectual Property Law Developments,” American Bar Association (2011) “Navigating IP Litigation Landmines in the United States,” China Medical Device Manufacturer (August 2011) IP Litigation and the ITC: A Primer, MX – Medtech Executive (September 2010) Practices Design Rights IP Transactions IP Litigation Patent Prosecution Post-Grant Practice Trademarks & Copyrights Industries Chemical Consumer Products Computer & Electronics Technology Industrial & Mechanical Medical Devices In the Matter of Certain Cast Steel Railway Wheels, Investigation No. 337-TA-655, before the International Trade Commission (pending) (trade secret misappropriation) ICU Medical, Inc. v. ALARIS Medical Systems, Inc., No. 2008-1077 (Fed. Cir. 2009) (appeal, patent infringement) In Re Certain Catheters, Consoles And Other Apparatus For Cryosurgery, And Components Thereof, Investigation No. 337-TA-642, before the International Trade Commission (2008) (patent infringement) CryoCor et al v. CryoCath, 08-0031-GMS (Delaware) (patent infringement)ICU Medical, Inc. v. ALARIS Medical Systems, Inc., No. SA CV 04-0689 MRP (VBKx) (C.D. Cal. 2004-07) (patent infringement) Judicial Extern for the Honorable Blanche Manning of the Northern District of Illinois Teaching Assistant: Evidence and Evidence Advocacy; graduate level Advanced Material Strength and Elasticity at Washington University Managing Intellectual Property IP Star IAM Patent 1000 Illinois Rising Stars, Super Lawyers, 2007, 2008, 2009 Chicago-Kent College of Law Academic Scholar Highest academic honors in Patent Law, Evidence, Trial Advocacy and Practice Before the Federal Circuit Member, Intellectual Property Owners Association Member, International Trademark Association Member, International Association for the Protection of Intellectual Property Committee Member, American Intellectual Property Law Association Patent Office Practice Committee, Federal Circuit Bar Association Member, ITC Trial Lawyers Association Member of IP, Litigation and Law Practice Management Sections, American Bar Association Member, Illinois State Bar Association Past Co-Chair of the Market Power Committee and Patent Litigation Committee, Intellectual Property Owners Association Member, Chicago-Kent Trial Advocacy Team Presentations Speaker, “Litigation Lessons: Tips for HVACR Companies to Navigate an IP Litigation,” AHR Expo, February 2026 Panelist, “The Debate: Round 2 – To Catalogue or Not to Catalogue Your Trade Secrets,” Trade Secret Legal Protection Summit, September 2025 Guest, The Lexology Podcast, discussing today’s trade secret landscape, July 2025 Speaker, ACI’s ITC Litigation and Enforcement Conference, April 2025 Speaker, “Trade Secret Protection in HVACR: An Enterprise-Wide Concern,” AHR Expo, February 2025 Speaker, “Strategies for Effective Management of ITC Proceedings and Considerations for External Counsel,” ACI’s ITC Litigation and Enforcement Conference, May 2024 Panelist, “Making Money: What Corporations & Investors Want to See in HVACR IP Portfolios,” AHR Expo, January 2024 Moderator, “Strategies and Insight on Effectively Managing ITC Proceedings and Considerations for Outside Counsel,” ACI’s ITC Litigation and Enforcement Conference, March 2023 Speaker, “How Things Look Matter – But How Do You Protect Them,” AHR Expo, February 2023 Speaker, “Evaluating Trends in Filings and Dispositions of 337 Proceedings,” ACI’s ITC Litigation & Enforcement Conference, May 2022 Presenter, “Intellectual Property Protections for Your Hottest and Coolest HVACR Innovations,” AHR Expo, February 2022 Panelist, “Evaluating the Implications of Trade Secret Jurisprudence at the ITC,” ACI’s ITC Litigation and Enforcement Conference, July 2021 Moderator, “What the Election Means for the Patent World,” IAM’s IP, November 2020 Panelist, “Enforcing IP Rights through Section 337 of the U.S. International Trade Commission,” USPTO China IP Roadshow, October 2017 “Mitigating Trade Secret Theft: An Update On U.S. Gov’t Enforcement Strategies,” Ocean Tomo’s 2013 Trade Secret Management & Monetization Symposium, September 2013 “Guarding the Company Jewels: Tips For Dynamically Securing Trade Secrets,” 2013 Global IP & Innovation Summit (Shanghai), Managing Intellectual Property, September 2013 “Where Are Things Really at in Terms of IP Protection in China Now?” 2013 Managing Intellectual Property’s IP in China Symposium: Growth and Opportunities for U.S. Companies, April 2013 Publications Wil Rao and Christian Hallerud, “Patent Laws and Regulations Trends in U.S. Patent Damages: A Bildungsroman” International and Comparative Legal Guides Patents 2026 (October 2025) Wil Rao and Rocco Screnci, “Trade Secrets: USA,” Lexology Panoramic: Trade Secrets (November 2025) Wil Rao and Christian Hallerud, “Patent Litigation: USA,” Lexology Panoramic: Patent Litigation (October 2025) “Patent Litigation: USA,” Lexology Panoramic: Patent Litigation (December 2024) “Trade Secrets: USA,” Lexology Panoramic: Trade Secrets (November 2024) Wil Rao and Scott McBride, “ITC is a Powerful Tool for Rights Holders to Protect IP at Border,” Bloomberg Law (July 2024) Wil Rao, Dunstan Barnes, and Andrew Mills, “AI,” in International Comparative Legal Guides: Patents (2024) “How Can You Enforce Your Patents When You Have Limited Capital?” Built In Chicago (April 2021) Wil Rao and Bob Surrette, “Seven Steps for Securing Trade Secret Value in IP Deals,” Intellectual Asset Management Yearbook (2020) “Unusual Patent Probe Is Seen Targeting Chinese Device Maker,” Medical Device Daily (October 2013) “7 Open Questions In The IP World,” Inside Counsel Magazine (February 2013) View File. “Apple v Samsung: Swipe, Pinch and Zoom to the Courtroom,” The Economist (September 2012) View File. “Annual Review of Intellectual Property Law Developments,” American Bar Association (2011) “Navigating IP Litigation Landmines in the United States,” China Medical Device Manufacturer (August 2011) IP Litigation and the ITC: A Primer, MX – Medtech Executive (September 2010)