Wilhelm L. Rao Shareholder
312.775.8190
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 both IAM Patent 1000 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 handled 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, 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 Owner’s Association
- Member, Chicago-Kent Trial Advocacy Team
Publications
- Unusual Patent Probe Is Seen Targeting Chinese Device Maker, Medical Device Daily (October 7, 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 1, 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)
Presentations
- “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
- 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, 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 Owner’s Association
- Member, Chicago-Kent Trial Advocacy Team
- Unusual Patent Probe Is Seen Targeting Chinese Device Maker, Medical Device Daily (October 7, 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 1, 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)
- “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
|
