Adam K. Mortara
Bartlit Beck Herman Palenchar & Scott LLP, 2003-Present, Partner (since 2007)
Lecturer in Law, University of Chicago Law School, 2007-Present
Courses: Federal Habeas Corpus; Federal Jurisdiction
Awards: Lecturer of the Year, 2008-2009
INTELLECTUAL PROPERTY LITIGATION
Merck & Cie v. Watson Labs (D. Del.)
Lead trial counsel for Merck & Cie and its exclusive licensee Bayer (with my partner Scott McBride) in Hatch-Waxman litigation against challenger seeking to market generic versions of the oral contraceptives Beyaz® and Safyral®. Complete trial victory for Merck and Bayer.
Endo Pharmaceutical Solutions Inc. v. Paddock Laboratories LLC (D. Del.)
Lead trial counsel (with my partner Scott McBride) for plaintiffs in ANDA litigation relating to Endo's Aveed® testosterone undecanoate injection. Case pending.
Bayer Pharma v. Watson & Lupin Ltd. (D. Del.) Lead trial counsel for Bayer (with my partner Scott McBride) in Hatch-Waxman litigation against challengers seeking to market a generic version of the oral contraceptive Natazia®. Case pending.
IGT v. Aristocrat (D. Nev.)
Lead trial counsel for IGT (with my partner Brian Swanson) in 32-patent litigation relating to Aristocrat’s infringement of IGT’s patents on gaming inventions. Case pending..
Bally Gaming v. IGT (Clark County, Nevada)
Lead trial counsel for IGT in patent license dispute. Case pending.
Cloud Satchel v. Amazon.com (D. Del.)
Lead trial counsel for Amazon.com in patent infringement case relating to document database and retrieval technology and the Kindle portable reader. Won summary judgment of invalidity. Affirmed by the Federal Circuit. Read more here.
UbiComm v. Zappos (D. Del.)
Lead trial counsel for Zappos in patent infringement case relating to e-mail reminder systems. Won judgment of invalidity under § 101 on a Rule 12 motion. UbiComm chose not to pursue an appeal. Read more here.
WMS Gaming v. IGT (N.D. Ill.)
Lead trial counsel for IGT in breach of contract action brought in connection with patent licensing agreement on gaming machine technology. WMS moved for a temporary restraining order. After briefing and oral argument, Court ruled that IGT prevailed on every factor in the test for injunctive relief. TRO denied. Case settled thereafter.
Costantino v. Seilz (Fed. Cir.)
Lead appellate counsel for junior party in appeal of interference action regarding chemical process for manufacturing certain sex hormones. Argued and won complete victory at the Federal Circuit. Read more here.
Neology v. Federal Signal and 3M (D. Del & ITC)
Lead counsel (along with my partner Hamilton Hill) for Federal Signal and 3M defending patent infringement suits brought by Neology relating to various RFID technologies. Neology originally sued Federal Signal in the District of Delaware and moved for a preliminary injunction. After an evidentiary hearing and oral argument, we defeated Neology’s preliminary injunction motion. While District Court case proceeded, Neology also brought an action against Federal Signal and 3M in the International Trade Commission. Both matters settled before trial.
E.I. du Pont de Nemours and Company v. Heraeus Materials Technology LLC (D. Del. & D. Or.)
Trial counsel for DuPont in patent infringement cases relating to conductive pastes used in the manufacture of solar cells. Argued and defeated defendant's motion for summary judgment of non-infringement. Cases settled thereafter.
Pioneer Hi-Bred v. Monsanto (S.D. Iowa)
Lead trial counsel (along with my partner Brian Swanson) for Pioneer in patent infringement suit against Monsanto relating to corn seed production techniques. Case settled favorably.
Stillman v. Novartis Consumer Health (C.D. Cal.)
Trial counsel for Novartis in patent infringement action relating to soluble fiber products. Case settled favorably.
ICOR International, Inc. v. E.I. du Pont de Nemours and Company (S.D. Ind.)
Trial counsel for DuPont in declaratory judgment and patent false marking case. ICOR alleged that its proposed R-438A refrigerant (a generic version of DuPont's ISCEON® MO99™ product) would not infringe DuPont's patent on R-438A and that DuPont falsely marked its MO99™ product. Case ended with ICOR agreeing to dismiss these claims with prejudice.
Bayer Schering Pharma AG & Bayer HealthCare Pharmaceuticals Inc. v. Teva, et al. (N.D. Ill.)
Trial counsel for Bayer in Lanham Act false advertising and patent infringement case arising out of Teva's launch of a generic version of Bayer's YAZ® oral contraceptive and product literature claiming that Teva's generic contains Bayer's patented betadex clathrate formulation. Bayer moved for a temporary restraining order on June 15, 2010. On June 16, the Court heard argument. Teva contended that Bayer could not show likelihood of success on the merits of its claims and that Bayer was not entitled to emergency relief. During proceedings, the Court read a tentative ruling finding that Bayer was entitled to a TRO. Teva agreed to remedial measures including a weekly e-mail blast for three months directed at pharmacists and calling attention to its false prescribing information. Court entered agreed order regarding these remedial measures and required compliance reporting from Teva.
Click here for more information.
Saso Golf, Inc. v. Nike, Inc. (N.D. Ill.)
Co-lead trial counsel (with my partner Hamilton Hill) for Japanese golf club manufacturer Saso against Nike. Case involves Saso's invention for improving metal wood performance and Nike's leading metal wood clubs. Case pending.
Novartis Vaccines and Diagnostics, Inc. & Novo Nordisk A/S v. Bayer HealthCare LLC, et al. (E.D. Tex.)
Trial counsel for Bayer HealthCare in patent case involving recombinant Factor VIII product KOGENATE FS®. Case settled on favorable terms.
Bayer HealthCare LLC v. Abbott Laboratories, et al. (D. Mass.)
Trial counsel for Bayer HealthCare LLC in patent case involving Abbott’s Humira® TNF-alpha antibody. Case settled favorably.
EMC Corporation v. Hewlett-Packard Company, Inc. (Fed. Cir.)
Represented Hewlett-Packard in appeal of adverse trial verdict in District of Massachusetts relating to Hewlett-Packard’s storage appliances. Case settled while appeal pending.
Hewlett-Packard Company, Inc. v. EMC Corporation (N.D. Cal.)
Represented Hewlett-Packard in litigation involving multiple patents (13) where client was both plaintiff and defendant. Case settled while motion for summary judgment pending.
Bayer Schering Pharma AG & Bayer HealthCare Pharmaceuticals, Inc. v. Barr Labs (D. N. J. & Fed. Cir.)
Trial counsel for Bayer Schering in Hatch-Waxman litigation against challenger seeking to market generic version of leading oral contraceptive Yasmin®. Bench trial held November-December 2007. Ruling in favor of Barr at trial level. Federal Circuit affirmed in 2-1 panel decision.
Aventis Behring v. Bayer HealthCare LLC & Bayer Corporation (E.D. Pa. & Montgomery County Circuit Court)
Trial counsel for Bayer in breach of contract and patent litigation relating to recombinant Factor VIII concentrates used in treatment of hemophilia. Cases settled on very favorable terms immediately after Bayer won motion for early bifurcated trial of Bayer’s affirmative license defense.
Gen-Probe Incorporated v. Bayer HealthCare LLC & Bayer Corporation (S.D. Cal.)
Trial counsel for Bayer in multiple patent infringement actions involving nucleic acid detection assays. Cases settled.
ENVIRONMENTAL AND PUBLIC UTILITY LITIGATION
Hott v. Nicor Gas Company (N.D. Ill.)
Lead counsel in CERCLA cost recovery action by landowner against Nicor Gas Company. Case settled favorably.
Alan Dikcis v. Nicor Gas Company (Cook County Chancery Court)
Lead trial counsel for Nicor Gas Company in class action case involving Nicor’s natural gas billing practices. Won dismissal of complaint with prejudice.
Michael Dikcis v. Nicor Gas Company (Cook County Chancery Court and First District Appellate Court)
Lead trial counsel (with my colleague Kate Swift) in follow-up billing class action involving the same issues as in the Alan Dikcis case. Again won dismissal with prejudice in the trial court, with Ms. Swift arguing the motion for Nicor. Judgment affirmed on appeal by the First District, with Ms. Swift again arguing for Nicor.
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In re: Manufactured Gas Plant Cost Allocations (CPR Arbitration)
Co-lead counsel (with my partner Christopher Landgraff) for Nicor Gas Company in 38 separate cost allocation arbitrations with Commonwealth Edison. Nicor sought to allocate remediation costs for environmental cleanup the parties jointly undertook at former manufactured gas plant sites in Illinois. Parties agreed to final cost allocation, and received approval for the allocation from the Illinois Commerce Commission.
APPELLATE AND PRO BONO REPRESENTATIONS
Wilson v. Warden (Eleventh Circuit)
Appointed by the en banc Eleventh Circuit to brief and argue as special amicus in a capital habeas corpus case addressing whether and when unexplained adjudications by state courts can constitute “adjudications on the merits” for purposes of 28 U.S.C. § 2254(d). Read more here.
Bryant v. United States (Eleventh Circuit)
Appointed by the Eleventh Circuit to brief and argue as special amicus in a case raising issues regarding the scope of the savings clause of section 2255(e) and the availability of habeas corpus relief for federal prisoners.
Radlax Gateway Hotel, LLC v. Amalgamated Bank (Supreme Court of the United States)
Lead appellate counsel representing a group of bankruptcy scholars in connection with amicus briefs urging certiorari and then affirmance at the merits stage. Case involves the permissibility of credit bidding at bankruptcy auctions. On December 12, 2011 the Court granted the petition and set the case for argument. On May 29, 2012 the Court affirmed.
Click here to read one of the briefs.
Hunter v. United States (Supreme Court of the United States and Eleventh Circuit)
Lead appellate counsel representing a group of habeas corpus and criminal law scholars in connection with amicus brief at the certiorari stage and on remand at the Eleventh Circuit. Case involves analysis of statutory construction and constitutional issues related to certificates of appealability for sentencing claims. After Supreme Court remand, Eleventh Circuit sua sponte invited our continued participation in the case.
Click here to read the Supreme Court brief.
Click here to read the Eleventh Circuit brief.
Turner v. Rogers (Supreme Court of the United States)
Lead appellate counsel (with my colleague Asha Spencer) representing two law professors in connection with amicus brief at the merits stage. Case involves whether a dead-beat dad who failed to pay child support had a right to an appointed lawyer before he was found in civil contempt.
Click here to read the brief.
Turner v. Nicor Gas Company (Illinois Appellate Court, Second District)
Lead appellate counsel for Nicor Gas Company in appeal of summary judgment in personal injury case arising from gas leak and explosion. Appellate court ruled that Nicor had no duty to plaintiffs; a complete victory.
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Jane Doe v. John Doe (DuPage County Circuit Court)
Pro bono representation of mother seeking unpaid child support under a California support order. Brought suit to enforce order in Illinois and case settled with defendant paying 100% of unpaid principal.
Acknowledgements, presentations, and publications
Comment, The Case Against Retroactive Application of the Foreign Sovereign Immunities Act of 1976, 68 U Chi L Rev 253 (2001)
Burdett, J.K.; Mortara, A.K.; Electronic Structure and Properties of the Bunz' Polymers, Chemistry of Materials, 1997, 9, 812
Burdett, J.K.; Mortara, A.K.; Metal-Insulator Transitions and Possible Quantum Effects in Supported Nickel Monolayers, Chemistry of Materials, 1995, 7, 1922
- Merck & Cie, et. al. v. Watson Labs (Beyaz®/Safyral® Litigation) (D. Del. 2015)
- Vioxx Trials (2006)