Adam K. Mortara
Bartlit Beck Herman Palenchar & Scott LLP, 2003-Present, Partner (since 2007)
In December 2011, Crain's Chicago Business named Adam to its 40 Under 40 List. Adam was the only lawyer selected from a group of over 700 nominees. Read more here. And in May 2012, Legal Media Group's Life Sciences recognized Adam as a "Life Sciences Star."
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
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.
Bayer Pharma v. Watson & Lupin Ltd. (D. Del.)
Lead trial counsel for Bayer (with my partner Brian Prestes) in Hatch-Waxman litigation against challengers seeking to market a generic version of the oral contraceptive Natazia®.
Merck & Cie v. Watson Labs (D. Del.)
Lead trial counsel for Merck & Cie and its exclusive licensee Bayer in Hatch-Waxman litigation against challenger seeking to market a generic version of the oral contraceptive Beyaz®.
Bayer Schering Pharma AG & Bayer HealthCare Pharmaceuticals, Inc. v. Watson Labs, et al. (D. Nev.)
Trial counsel for Bayer Schering in Hatch-Waxman litigation against challengers seeking to market generic versions of oral contraceptive YAZ®. The district court granted Bayer's motions for summary judgment of validity, infringement, and enforceability. Bayer's claims for damages are pending.
Neology v. Federal Signal Corporation (D. Del.)
Lead trial counsel (along with my partner Hamilton Hill) for Federal Signal defending patent infringement suit brought by Neology relating to various RFID technologies. Defeated Neology’s preliminary injunction motion after an evidentiary hearing and oral argument. Rest of case still pending.
E.I. du Pont de Nemours and Company v. Heraeus Materials Technology LLC (D. Del. & D. Or.)
Trial counsel for DuPont in patent infringement case relating to conductive pastes used in the manufacture of solar cells. Case pending.
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
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 (with my colleague Vince Buccola) 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.
Click here for more information.
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
- Vioxx Trials (2006)