McAndrews, Held & Malloy Attorneys to Participate in ACI’s Medical Device Patents Summit on Prosecution and Litigation Strategies


McAndrews, Held & Malloy shareholders Scott P. McBride and Eligio C. Pimentel will both serve as moderators at the American Conference Institute’s (ACI) 6th Advanced Summit on Medical Device Patents, February 25, 2016, in New York. McBride, who is a co-chair of the event for the fourth consecutive time, will also provide opening remarks. Both attorneys have years of experience litigating and prosecuting patent cases, with a particular emphasis on medical devices and healthcare equipment and supplies.

In the wake of challenging Federal Court decisions and USPTO rulings, having a comprehensive and practical understanding of prosecution and litigation strategies is more important than ever. The Summit will bring together key stakeholders in the industry, including in-house IP counsel, patent prosecutors and litigators, the USPTO and policy experts from across the nation. Attendees will share their collective intellectual property knowledge through interactive workshops and panels, and networking opportunities.

McBride is scheduled to moderate the panel, “View from the Bench: The Judicial Perspective on Medical Device Patent Litigation,” which is comprised of senior judges from around the United States. The judges will cover what arguments and claims the Court finds most effective, which will help attendees formulate future medical device patent strategies. Specific topics include:

  • The effects of contested USPTO procedures on patent litigation
  • The increase of litigation involving non-practicing entities and patent assertion entities

Pimentel will moderate the panel “In-House Roundtable: Strategic Considerations for Limiting Liability and Managing and Reducing Costs in Medical Device Patent Prosecution and Litigation.” The patent counsel involved will cover topics that include:

  • Considerations involved in selecting outside counsel for patent portfolio development
  • Determining countries for patent protection
  • Exploring the troubling steady increase in the size of medical device patent infringement verdicts

McAndrews, Held & Malloy is also a sponsor of the Medical Device Patents Summit.

For more information, including a complete agenda, or to register, click here.

Scott P. McBride‘s practice focuses primarily on the litigation and trial of patent cases in federal courts, before the Patent Trial and Appeal Board, and in reexamination proceedings before the Patent Office. He works with a wide array of businesses, particularly medical device and pharmaceutical companies. McBride has spoken nationally and internationally before clients, bar associations, and other audiences on PTAB trial practice, the America Invents Act, and the impact of Alice Corp. v. CLS Bank Int’l.  McBride has written amicus curiae briefs as counsel of record on behalf of more than 20 universities and technology transfer organizations before the United States Supreme Court in Bowman v. Monsanto and on behalf of the Association of Patent Law Firms in the groundbreaking Phillips v. AWH Corporation case.

Eligio C. Pimentel has litigated and tried complex, high-stakes patent cases in courts across the United States. He has represented his clients in billion-dollar federal court disputes, as well as in arbitrations, including one resulting in a $166 million dollar award in favor of his client. Pimentel also advises his clients on the acquisition, development and transfer of IP property during business mergers and divestitures, and on strategic management of corporate IP rights (e.g., patent and trademark portfolio management), freedom to operate opinions, brand protection, and licensing. Outside of his practice, Pimentel is a strong proponent of educational opportunities for economically disadvantaged children: he is a past member of the Board of Directors of the Mary Crane Center and the Cristo Rey Jesuit High School, and is a member of the Illinois State Board of Education, which he was appointed to in 2015 by Governor Bruce Rauner.