McAndrews, Held & Malloy


	Christopher V. Carani Shareholder Email. ccarani@mcandrews-ip.com Tel. (312) 775-8000 Practice Areas Intellectual Property Litigation; Patent and Trademark Procurement, Protection and Portfolio Management; Intellectual Property Licensing; Industrial Design (design patents, trade dress, copyrights); Design Patent Litigation; ITC Litigations; Intellectual Property Opinions and Investigations; Anti-piracy/anti-counterfeiting solutions. Education University of Chicago, J.D. Marquette University, B.S. Bar Admissions Member of the bar of the U.S. Supreme Court, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Seventh Circuit, and U.S. District Court for the Northern District of Illinois. Registered to practice before the U.S. Patent and Trademark Office. Admitted to practice in Illinois. Professional Experience Christopher V. Carani is a partner at McAndrews, Held & Malloy, where he has been since 1995. Chris has garnered the requisite litigation experience needed to succeed in this fast-paced, complex field. Chris focuses on advising companies of any size, with special emphasis on securing and enforcing intellectual property rights (patent, trademark and copyright). Through his practice, Chris has gained significant experience counseling clients in a wide-range of industries, including the following: (alphabetical order) apparel, accessories and footwear, automotive accessories, baby/children's products, beauty/hair care, bottle design, candies and confectionaries, cell phones and accessories, computers and computer accessories, computer software, consumer electronics and accessories, consumer retail products, cutlery, dental equipment, eyecare and eyewear, fabric design, fashion design, financial services, furniture, gaming, hardware and tools, home furnishings and house wares, industrial machinery, insurance services, jewelry, lawn and garden, lighting (indoor/outdoor), medical devices, music composition, musical instruments and accessories, non-woven fabrics, novelty items, packaging, refractometers, restaurant and beverage industry, safety devices, sporting goods and athletic equipment, toys and games, and visual arts. Chris is nationally recognized expert in the field of design law, which regards the protection and enforcement of product design through the use of copyrights, trade dress and design patents. He has successfully litigated numerous disputes regarding design rights. He has also served as a consultant and expert witness in numerous design law cases. Chris’s recent publication, “The New ‘Extra-Ordinary’ Observer Test for Design Patent Infringement,” which regards the law of design patent infringement, was selected as one of the 20 best law review articles of 2009 for inclusion in the Thompson Reuters (West) Patent Law Review 2010. Chris represented the American Intellectual Property Law Association in the landmark design patent case Egyptian Goddess v. Swisa, where the positions set forth in his amicus briefs were ultimately adopted by the Federal Circuit having reshaped the law on design patents. Chris graduated from the University of Chicago Law School. During his studies there, Chris focused his efforts on intellectual property and antitrust law. Between his second and third year of law school, Chris also completed studies at the Universitá di Siena, in Siena, Italy. Prior to attending law school, Chris earned a Bachelor of Science in Engineering (minor in Mathematics) from Marquette University. Chris honed his litigation skills during his appointment as a Judicial Law Clerk to the Honorable Rebecca R. Pallmeyer, United States District Court for the Northern District of Illinois. While working for Judge Pallmeyer, Chris prepared numerous opinions, attended numerous trials, and observed several judicial settlement conferences. This invaluable experience has provided Chris with substantial and critical insight into the inner workings of the federal judicial system. Chris was the recipient of the four-year Chick Evans Scholarship issued by the Western Golf Association. During his studies at Marquette University, Chris conducted extensive research on extrusion techniques for engineering thermoplastics, resins, compounds and alloys. In a survey of his peers published in Chicago magazine and Super Lawyers magazine, Chris was named as one of Illinois' "Rising Stars" in intellectual property law for years 2007, 2008, 2009 and 2010. Memberships • Member of Advisory Design Council for The School of The Art Institute of Chicago (Term 2010-11) • Intellectual Property Owners Association • American Intellectual Property Law Association (AIPLA), Appointed Chairperson of Committee on Industrial Design (2006-08, 2008-10) • Federal Circuit Bar Association • American Bar Association (Member of Industrial Designs Committee) • Illinois State Bar Association • Justinian Society of Italian American Lawyers • Chicago Bar Association • Federation Internationale des Conseils en Propriete Industrielle Presentations Keynote Speaker: "Design Law for Designers: The In's and Out's," Apparel's 2010 Tech Conference, Hosted by the Fashion Institute of Technology, New York, New York, November 2010 Invited Speaker: "Product and Package Design Protection Using Design Patents," Intellectual Property Owners Association, Annual Meeting, Atlanta, Georgia, September 2010 Invited Speaker: "The Anatomy Design Patent Litigation," American Intellectual Property Law Association Webinar, June 2010 Invited Speaker: "Looks Matter; How to Protect Product Designs While Creating Valuable Assets," NeoCon's World's Trade Fair, Chicago, Illinois, June 2010 Guest Lecturer: "Point of Ornamentality Test? Navigating Richardson v. Stanley Works," American Intellectual Property Law Association, New York, NY, May 2010 Invited Speaker: "Triple Play: Case Analyses of Three Recent Federal Circuit Design Patent Cases, International Seaway v. Walgreens, Crocs v. ITC, and Richardson v. Stanley Works," Intellectual Property Owners Association, April 2010 Invited Speaker: "Who is the "Ordinary Ovserver" in Design Patent Jurisprudence?" Chicago-Kent College of Law, Chicago, Illinois, April 2010 Guest Lecturer: "Industrial Designer's Guide to Intellectual Property Law," School of the Art Institute of Chicago, Department of Architecture, Interior Architecture, and Designed Objects, Chicago, Illinois, March 2010 Invited Speaker: "Comparative Analysis Between U.S. Design Patent System and European Community Design Registration System," Office of Harmonization and Internal Markets (OHIM) and World Intellectual Property Organization, Alicante, Spain, September 2009 Guest Speaker: "An Analysis of Post-Egyptian Goddess Case Law," American Intellectual Property Law Association, San Diego, CA, May 2009 Invited Speaker: "Egyptian Goddess, Inc. v. Swisa, Inc.: Shock and Aftershock, An Analysis of the En Banc Decision and Its Effect on Design Patent Litigation," United States Patent & Trademark Office, Design Day 2009, Alexandria, VA, April 2009 Guest Faculty Member: "Litigating Design Patents Under Egyptian Goddess," American Bar Association, Chicago, IL, December 2008 Guest Faculty Member: "Egyptian Goddess v. Swisa: Fundamental Change for Design Patent Law," Practicing Law Institute, New York, NY, October 2008 Guest Panelist: "Egyptian Goddess v. Swisa: Design Patent Law And The Shape Of Things To Come," Federal Circuit Bar Association, Washington, D.C., October 2008 Guest Lecturer: Egyptian Goddess, Inc. v. Swisa, Inc.: The Most Important Design Patent Case Since 1871," American Intellectual Property Law Association, Washington, D.C., October 2008 Guest Lecturer: "Egyptian Goddess, Inc. v. Swisa, Inc.: The En Banc Federal Circuit Court Searches For The Rosetta Stone for Design Patent Jurisprudence," Intellectual Property Law Association of Florida, Miami, FL, October 2008 Guest Lecturer: "The Path to Meaningful Design Patent Protection," Industrial Designer Society of America, Chicago, Illinois, February 2008 Guest Lecturer: "The Big Five: The Federal Circuit's Five Most Recent Design Patent Opinions - What's Going On?," American Intellectual Property Law Association, Washington, D.C., October 2007 Guest Lecturer: "U.S. Design Law: Driven to Tears, Driven to a Sui Generis Design Registration System," Intellectual Property Owners Association, New York, New York, September 2007 Guest Lecturer: "Mediation, Improvisation, and All That Jazz," Chicago Bar Association and the Center for Conflict Resolution, Chicago, IL, May 2007 Guest Lecturer: "Design Patent Litigation: Design Patent's Point of Novelty Test," Chicago Bar Association, Chicago, IL, February 2007 Guest Lecturer: "What's the Point?: A Comprehensive Analysis of Design Patent's Point of Novelty Test," American Intellectual Property Law Association, New Orleans, Lousiana, January 2007 Guest Lecturer: "The State of Design Patent Infringement in View of Federal Circuit's Opinion in Lawman Armor v. Winner," American Intellectual Property Law Association, Washington, D.C., October 2006 Guest Lecturer: "Claim Construction and the Application of Markman to Design Patent Litigation," American Intellectual Property Law Association, Washington, D.C., October 2005 Guest Lecturer: Design Patent Infringement Remedies: Profits, Damages and Injunctions, American Intellectual Property Law Association, Orlando, FL, January 2005 The Industrial Design Trinity: Copyrights, Trade Dress and Design Patents, Chicago Bar Association, Chicago, IL, April 2004 Design Patent Litigation: The Functionality Doctrine, Chicago Bar Association, Chicago, IL, July 2003 Publications and Press Don't Knock It, Footwear Plus Magazine (June 2010). View File. Design patents get boost from Federal Circuit, The National Law Journal (May 2010). View File. Profile on Chirs Carani: Design Patents and All That Jazz, Chicago Lawyer Magazine (April 2010). View File. Principal Counsel of Record for American Intellectual Property Law Association (AIPLA) in the design patent case Richardson v. Stanley Works, Inc., 2009-1354 (Fed. Cir. 2010). Mr. Carani authored an amicus brief on behalf of the AIPLA in support of the petition for rehearing en banc. View File. Press Release: Thomas Reuters (West) Publishing Selects Carani's Law Review Article as one of the Year's 20 Best Law Review Articles, March 2010. View File. Design Law & Furniture Patent Enforcement, Office Furniture & Design Magazine, Fall 2009 Egyptian Goddess Puts Teeth in U.S. Design Patents, Executive Counsel Magazine, (September/October 2009), Volume 6, Number 4 Design Protection and Enforcement for the Kitchen and Bath Industry, KB&B Magazine, (July 2009) Design Law & Footwear: Landmark Case Fundamentally Alters Design Patent Enforcement, Shoe Retailing Today, National Shoe Retailers Association (NSRA) (July-Aug. 2009). View File. The New "Extra-Ordinary" Observer Test for Design Patent Infringement-On a Crash Course With the Supreme Court's Precedent in Gorham v. White, 8 J. Marshall Rev. Intell. Prop. L. 354 (May 2009). View File. "Egyptian Goddess, Inc. v. Swisa, Inc.: Shock and Aftershock, An Analysis of the En Banc Decision and Its Effect on Design Patent Litigation," United States Patent & Trademark Office, Design Day 2009, Alexandria, VA, April 2009. View File. Egyptian Goddess v. Swisa: En Banc Federal Circuit Court Searches For The Rosetta Stone For Design Patent Jurisprudence, Intellectual Property Today, October 2008. View File. Egyptian Goddess v. Swisa: En Banc Federal Circuit Court Puts Teeth Back In Design Patents, Intellectual Property Today, September 2008. View File. Federal Circuit Scraps Point of Novelty Test, IP Law 360, September 2008. View File. En Banc Court Weighs Eliminating Litton's Point of Novelty Infringement Inquiry, Bureau of National Affairs (BNA) Patent Trademark & Copyright Journal, Vol. 76, No. 1871, June 2008. View File. Federal Circuit Examines Design Patent Test, IP Law 360, June 2008. View File. Principal Counsel of Record for Industrial Designers Society of America (IDSA) before the United States Supreme Court in the design patent case Calmar, Inc. v. Arminak & Assoc., No. 07-1263 (U.S. Supreme Court 2008). On May 5, 2008, Mr. Carani filed an amicus curiae brief on behalf of IDSA in support of the petition for Writ of Certiorari. To view a summary of the argument, click here: View File. To view the brief as filed, click here: View File. "Egyptian Goddess, Inc. v. Swisa, Inc.: Will The En Banc Federal Circuit Court Find The Rosetta Stone for Design Patent Jurisprudence," Illinois Continuing Legal Education credit pending, Chicago, Illinois, March 2008. View File. Principal Counsel of Record for American Intellectual Property Law Association (AIPLA) in the precedential design patent case Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562 (Fed. Cir. 2007). On February 5, 2008, Mr. Carani filed a brief on behalf of AIPLA as an Amicus Curiae at the En Banc stage. This case represents the first time the Federal Circuit Court of Appeals has addressed a design patent case en banc. View File. Design Patents Get Their Day in Court, The American Lawyer, January 2008. View File. Principal Counsel of Record for American Intellectual Property Law Association (AIPLA) in the precedential design patent case Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562 (Fed. Cir. 2007). AIPLA filed a brief in the matter as an Amicus Curiae at the petition for rehearing stage. View File. Principal Counsel of Record for American Intellectual Property Law Association (AIPLA) in the precedential design patent case Lawman v. Winner, 05-1253 (Fed. Cir. 2006). AIPLA filed a brief in the matter as an Amicus Curiae. View File. Looks Matter: Protect Your Product Designs with Intellectual Property While Creating Valuable Assets, The Super Show, Sporting Goods Convention, International Business Intelligence Series, Orlando, FL, January 2005. View File. Design Patents: A Picture is Worth a Thousand Words, Sports Product Innovation Network, 2005. View File. Design Patents: A Picture is Worth a Thousand Words, Sports Products Innovation Network, 2005 (Chinese Translation). View File. Technology Transfers In and Out of China, Global Intellectual Property Asset Management Report, October 2004. View File. What Every U.S. Corporation Should Know About China's Patent Protection and Enforcement, Association of Patent Law Firms, Chicago, IL, September 2004. View File. Back to Top