Martin S. Masar III, PhD

Associate
martin.masar@kattenlaw.com
Chicago Office
p+1.312.902.5616
f+1.312.902.1061
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Overview

Dr. Martin Masar has varied experience in patent litigation and prosecution, with emphasis in the scientific fields of chemistry, pharmaceutical arts, nanotechnology and biotechnology. Marty’s recent focus and experience has been in pharmaceutical patent litigation relating to the Hatch-Waxman Act and other pharmaceutical and cosmetic contexts, including participating in more than half a dozen trials, arguing motions, deposing fact and expert witnesses, and preparing opinions, briefs and Paragraph IV Notice letters for more than three dozen pharmaceutical or cosmetic products. He has also been involved in trademark, antitrust and unfair competition litigations.

Marty has authored a number of articles and advisories related to pharmaceutical patent litigation.

Marty began his career in patent law as a technical specialist and patent agent at an independent intellectual property firm. He has prepared and prosecuted patent applications for a number of clients from an array of technical fields, including nanotechnology-based mass spectrometry methods and apparatus, nanotechnology-based computer chip coolers, radiation therapy methods for cancer treatment, breathable polymers, fire detection systems, medicine dispensing systems and methods, and dietary supplements.

While attending law school, Marty was a member of the DePaul Law Review. He received awards in patent law courses, including the 2007 Robert Chambers Award in Patent Law and CALI Awards in Biotechnology Patent Strategies, Advanced Patent Law Seminar and Patent Law. He also received CALI Awards in Legal Writing, Evidence, Legal Profession and Pre-Trial Civil Litigation. He graduated in the top 5 percent of his class.

As part of his doctoral studies, Marty worked with Professor Chad A. Mirkin at Northwestern University. His dissertation research related to the synthesis and development of protein mimics that were useful in catalysis and sensing applications. This work led to six publications in peer-reviewed technical journals, including Journal of the American Chemical Society and Accounts of Chemical Research. Marty received one of the 100 annual fellowships from the Multidisciplinary University Research Initiative (MURI), a division of the US Department of Defense.

Publications

Legal

Effects of the Federal Circuit Judges on Hatch-Waxman Litigation, Masar, Martin S. III, 19 DePaul J. Art Tech. & Intell. Prop. L. 315 (2008-2009).

Scientific

Allosterically Regulated Supramolecular Catalysis of Acyl Transfer Reactions for Signal Amplification and Detection of Small Molecules, Martin S. Masar III, Nathan C. Gianneschi, Christopher G. Oliveri, Charlotte L. Stern, SonBinh T. Nguyen, and Chad A. Mirkin, Journal of the American Chemical Society 2007 129 (33), 10149-10158.

Development of a Coordination Chemistry-Based Approach for Functional Supramolecular Structures, Nathan C. Gianneschi, Martin S. Masar III, and Chad A. Mirkin, Accounts of Chemical Research 2005 38 (11), 825-837.

Binuclear Copper(I) Macrocycles Synthesized via the Weak-Link Approach,Martin S. Masar III, Chad A. Mirkin, Charlotte L. Stern, Lev N. Zakharov, and Arnold L. Rheingold, Inorganic Chemistry 2004 43 (15), 4693-4701.

Fine-Tuning the Weak-Link Approach: Effect of Ligand Electron Density on the Formation of Rhodium(I) and Iridium(I) Metallomacrocycles,Martin S. Masar III, Maxim V. Ovchinnikov, Chad A. Mirkin, Lev N. Zakharov, and Arnold L. Rheingold, Inorganic Chemistry 2003 42 (21), 6851-6858.

Rh(II) and Rh(I) Two-Legged Piano-Stool Complexes: Structure, Reactivity, and Electronic Properties, Felicia M. Dixon, Martin S. Masar III, Peter E. Doan, Joshua R. Farrell, Frederick P. Arnold Jr., Chad A. Mirkin, Christopher D. Incarvito, Lev N. Zakharov, and Arnold L. Rheingold, Inorganic Chemistry 2003 42 (10), 3245-3255.

Shown below is a selection of Martin’s engagements.

Experience
  • Representation of Apotex, Inc. as part of the trial team in the Provigil® (modafinil) patent litigation in the Eastern District of Pennsylvania, where the issues of infringement, invalidity and unenforceability were resolved in Apotex’s favor. Apotex, Inc. v. Cephalon, Inc., Civ. Act. No. 2:06-cv-2768, 2012 WL 1080148 (E.D. Pa. Mar. 28, 2012); Apotex, Inc. v. Cephalon, Inc., Civ. Act. No. 2:06-cv-2768, 2011 WL 6090696 (E.D. Pa. Nov. 7, 2011).
  • Representation of Apotex, Inc. in a case involving a generic version of the billion-dollar-a-year narcolepsy drug Provigil in which, applying the stringent Therasense standard for inequitable conduct, the court found that Apotex provided inequitable conduct by clear and convincing evidence. The court also found the patent invalid and Apotex's proposed product did not infringe. This ruling opened the door for Apotex's antitrust claims, which are still being litigated. Apotex, Inc. v. Cephalon, Inc., 2011 WL 6090696 (E.D. Pa. 2011), aff'd, Case No. 2012-1417 (Fed. Cir. Apr. 8, 2013).
  • Representation of Apotex, Inc. in a patent infringement case relating to Apotex's proposed generic version of linezolid tablets, an antibiotic. Pharmacia & Upjohn v. Apotex, Inc., Case No. 1:13-cv-2034 (N.D. Ill.).
  • Representation of Apotex, Inc. in a patent infringement action asserting claims to certain methods for the manufacturing process for making a stable form of quinapril magnesium. Apotex, Inc. v. Mylan, et al., Case No. 0:12-cv-60704 (S.D. Fla.).
  • Representation of Apotex, Inc. in a case in which Alcon alleged that Apotex had infringed on its patents on its generic version of the eyedrop Patanol, with Apotex proving that most of the asserted patent claims were obvious. Alcon Research, Ltd. v. Apotex Inc., Case No. 1:06-cv-1642, 2008 WL 2905898 (S.D. Ind. 2008).
  • Defense of Kimberly-Clark against claims that it monopolized or attempted to monopolize the sale of disposable training pants.

Education

  • JD, DePaul University College of Law
  • PhD, Inorganic Chemistry, Northwestern University
  • BS, Chemistry, Gettysburg College

Bar Admissions

  • Illinois

Court Admissions

  • US Patent & Trademark Office
  • US District Court, Northern District of Illinois

Memberships

  • American Chemical Society
  • Phi Kappa Phi

Languages

  • Spanish
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