Katherine G. Minarik
Bartlit Beck Herman Palenchar & Scott LLP, 2007-Present, Partner (since 2012)
Katherine represents multinational companies in high-stakes intellectual property litigation and commercial disputes, and has a track record of success at every stage of litigation including motions to dismiss, claim construction hearings, summary judgment motions, at trial, and on appeal. Her cases involve a broad range of technologies, including software, pharmaceutical compositions, antibodies, antibiotic treatments, elevator lifting systems, truck axles and RFID cards.
Katherine is a member of the American Law Institute. Katherine was named one of Best Lawyers' "Women of Influence" in 2016 and one of the Illinois Law Bulletin's "40 Illinois Attorneys Under Forty to Watch" in 2014.
Adjunct Professor, Northwestern University School of Law, 2011, 2012
National Women's Political Caucus, 2002-2003, Political Director
McKinsey & Company, New York, 1999-2001, Consultant
representative intellectual property and contract cases
Bayer HealthCare LLC v. Pfizer Inc. (U.S. District Court for the Northern District of Illinois)
Co-lead counsel for Bayer in a patent infringement action Bayer brought for damages and injunctive relief in connection with Pfizer’s animal health product, Advocin, a fluoroquinolone treatment for bovine respiratory disease. Managed case through fact and expert discovery, including all motion practice. Argued and defeated Pfizer summary judgment motion on indefiniteness. Argued and won summary judgment that Bayer's patent was not obvious, was not anticipated, and satisfied the written description requirement as a matter of law, defeating Pfizer's summary judgment motions on the same issues. Case settled confidentially shortly after those summary judgment victories.
Confidential AAA Arbitration (2016)
Together with Phil Beck, represented a Fortune 100 company in a confidential, multi-billion dollar dispute. The two-week arbitration hearing included testimony from numerous senior executives and expert witnesses. Obtained complete victory for our client.
Merck & Cie v. Watson Labs (U.S. District Court for the District of Delaware)
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®. Successfully obtained dismissal of first litigation on plaintiffs’ motion. Complete trial victory for Merck and Bayer in second litigation.
Monsanto Co. v. Pioneer, Inc. (U.S. District Court for the Eastern District of Missouri)
Counsel for Pioneer and DuPont in cross-patent infringement suits against Monsanto relating to seed sampling technology. Managed case through fact discovery and Markman briefing, including motion practice. Case settled.
Express Scripts v. Walgreen Co. (U.S. District for the Northern District of Illinois; Confidential Arbitration)
Counsel for Walgreens after Express Scripts sought a preliminary injunction action to shut down Walgreens’ “I choose Walgreens” communications campaign. Walgreens successfully moved to compel arbitration, and the case was transferred from federal court to an AAA arbitration. After a two day evidentiary hearing on the preliminary injunction motions, the arbitrator issued a ruling denying both parties’ requests for preliminary injunctive relief. Walgreens continued its “I choose Walgreens” campaign. Prior to the full hearing on the merits, the parties agreed to dismiss their respective claims. No other action has been or will be taken by either party with respect to this case.
Schindler Elevator Corp. v. Otis Elevator Corp. (U.S. District Court for the District of New Jersey)
Counsel for Otis in patent infringement suit relating to the destination dispatching systems used in high-rise elevators. Managed case through multiple years of fact discovery, including motion practice and two Markman hearings. Case settled favorably thereafter.
Inventio AG and Schindler Elevator Corp. v. Otis Elevator Corp. (U.S. District Court for the Southern District of New York; U.S. Court of Appeals for the Federal Circuit)
Counsel for Otis in patent infringement suit relating to destination dispatching systems used in high-rise elevators. Successfully obtained judgment of no damages for Otis following finding of infringement. On appeal, obtained reversal of jury verdict of validity. Authored successful argument on appeal to Federal Circuit that Inventio patent was invalid.
Bayer HealthCare LLC v. Abbott Laboratories, et al. (U.S. District Court for the District of Massachusetts)
Counsel for Bayer in a patent infringement action Bayer brought for damages in connection with Abbott’s flagship drug Humira®, a TNF-alpha antibody, through Markman hearing. Case settled favorably thereafter.
Bayer HealthCare LLC v. Centocor Ortho Biotech (U.S. District Court for the District of Massachusetts)
Counsel for Bayer in a patent infringement action Bayer brought for damages in connection with Centocor’s TNF-alpha antibody through Markman hearing. Case settled favorably thereafter.
Bayer Schering Pharma et al. v. Barr Laboratories (U.S. District Court for the District of New Jersey; U.S. Court of Appeals for the Federal Circuit)
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.
Other representative cases
Peugh v. United States (U.S. Supreme Court)
Lead counsel pro bono for amicus Illinois Association of Criminal Defense Lawyers. Co-authored amicus brief in support of successful cert petition. Authored amicus brief (the only amicus brief filed in the case) in support of petitioner, which was cited by the Court at oral argument (see link at 56:3-11). The Supreme Court ruled in favor of the petitioner in a 5-4 decision holding that the Ex Post Facto Clause limits retroactive increases in federal advisory Sentencing Guidelines.
Lead counsel for technology start-up on patent, trademark, and other intellectual property issues.
DK Acquisition Partners, L.P., et al. v. J.P. Morgan Chase & Co., et al.
Counsel for holders of more than $1 billion in Enron bank debt in their action against J.P. Morgan Chase & Co., Citigroup and affiliates, alleging fraud and other wrongdoing based on defendants’ knowledge of and participation in scheme to conceal Enron’s true financial condition. Case settled.
Amaranth LLC v. J.P. Morgan Chase & Co. (Supreme Court of the State of New York, County of New York)
Counsel for hedge fund and trading advisor in their action for breach of contract and tortious interference with prospective economic advantage against investment bank, commercial bank, and futures commission merchant.
Racepoint Partners, LLC v. JPMorgan Chase Bank (Supreme Court of the State of New York, County of New York)
Counsel for holders of more than $1 billion in Enron bonds in their action against JPMorgan Chase Bank as indenture trustee, alleging breach of contract, breach of implied duty of good faith and fair dealing, and breach of fiduciary duty.
Charter Communications, Inc. v. Irell & Manella, LLP (U.S. District Court for the Central District of California)
Arbitration counsel for plaintiff Charter Communications in $150 million legal malpractice action arising out of negligent documentation of substantial corporate acquisition. Confidential settlement reached.
Nicor Gas v. DiPaolo Co. (Circuit Court of Cook County, Illinois)
Lead trial counsel representing public utility gas company (Nicor Gas) in commercial litigation with roadwork contractor involving damage to gas lines. Judge ordered directed verdict for Nicor on liability. Jury awarded Nicor 100 percent of its claimed damages.
Wachter v. Kim (Supreme Court of the State of New York, County of New York)
Counsel for Karl Wachter in employment-related litigation against Dow Kim, founder of the investment firm Diamond Lake. Trial court dismissed claims and Mr. Wachter appealed to the New York Appellate Division, First Department. The Appellate Division granted Mr. Wachter’s appeal, reinstating his claims against Mr. Kim for breach of contract and unpaid wages under the New York Labor Law.
Cathey v. Ghosh, et al. (U.S. District Court for the Northern District of Illinois)
Counsel for inmate pro bono in mistreatment and product liability case. Case settled.
Flores v. A Taste of Heaven (Chicago Commission on Human Relations; Cook County Circuit Court; Illinois Appellate Court)
Lead trial counsel for plaintiff in pro bono employment discrimination case. Damages, including punitive damages, awarded to plaintiff. Judgment affirmed by Cook County Circuit Court on writ of certiorari and by Illinois appellate court.
Acknowledgements, presentations, and publications
“One Year After Alice v. CLS,” Managing Intellectual Property’s Women’s Leadership Forum (June 2015)
“Making Legal Economics Work for You,” National Association of Women Lawyers Mid-Year Meeting (March 2015)
“Understanding Alternative Fees,” Coalition of Women’s Initiatives in Law Event (August 2014)
“Expert Witnesses in Patent Litigation,” PLI Patent Litigation Faculty, (Oct. 2013)
David L. Applegate, Mark L. Levine, Katherine G. Minarik, and Paul Ripp, Direct and Cross-Examination of a Technology Expert in Patent Litigation, PLI Patent Litigation 2012 (Oct. 2012)
David L. Applegate, Mark L. Levine, Katherine G. Minarik, Direct and Cross-Examination of a Patent Damages Expert, PLI Patent Litigation 2011 (Oct. 2011)
"Drafting and Understanding Settlement Agreements," BBHPS Continuing Legal Education (June 2011)
Katherine G. Minarik, Word Games: Language, Intent, and Gender Discrimination Law Under the New Court, 1 Harv. L. & Pol’y Rev. 267 (2007)
Presentation on Legislation and Constitutional Change, American Democracy Institute Conference, Philadelphia (2006)
Presentation on Women’s Health Policy, Association of Reproductive Health Professionals, National Conference (2003)
- Phoenix, AZ (2016)