Adam G. Kelly

Partner
Adam Kelly

Adam Kelly advises clients throughout the world on intellectual property matters inside and outside the courtroom. Inside the courtroom, Adam advises clients across a wide variety of agency and federal court actions before numerous U.S. District Courts, the U.S. Court of Appeals for the Federal Circuit, the International Trade Commission (ITC), the U.S. Customs Office, and the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO).

He represents clients through all litigation phases, ranging from pre-suit due diligence through trial and appeal, and he has advised on issues arising from antitrust, infringement, invalidity, prosecution misconduct, unfair business practices, and intangible asset valuation. Adam also has significant experience with obtaining and defending against various types of security bonds, restraining orders, preliminary injunctive relief, and monetary damages. He applies a well-reasoned, pragmatic approach to his legal practice.

Internationally, Adam has assisted clients with intellectual property matters before the China National Intellectual Property Administration (formerly the State Intellectual Property Office or SIPO), the European Patent Office, the Taiwan Intellectual Property Office, and the Korean Patent Office. He frequently speaks on and authors articles regarding intellectual property matters, and he has lectured to judges, practitioners, and students in Beijing, Dublin, Hong Kong, Shanghai, Taipei, and York. Notably, Adam participated with a U.S. delegation to conduct a mock jury trial on trademark infringement before the Supreme People’s Court of the People’s Republic of China in Beijing. And he has taught U.S. intellectual property law to numerous Chinese and Taiwanese judges and practitioners. His international outreach has helped create a global network of intellectual property professionals to serve his clients, and, as a result, he frequently counsels international clients on wide-ranging legal matters within the United States.

Outside the courtroom, Adam has significant experience counseling clients on how to competitively use intellectual property to increase market share, revenues, and industry influence by implementing effective strategies to address advertising, branding, corporate transactions, technology acquisition, and procurement. His advice has been incorporated into business strategies involving asset purchase agreements, licensing transactions, corporate due diligence, secured financial transactions, employment policies, research and development agreements, secrecy agreements, and joint ventures.

Adam’s clients hail from such varied industries as agricultural science, biotechnology, electronic trading, golf equipment, green energy, hospitality, medical devices, pharmaceuticals, telecommunications, and transportation.

Experience

Representative Matters

  • Represented a global hospitality company in several copyright and patent infringement actions brought by non-practicing entities in the Central District of California, Eastern District of Texas, and District of Delaware
  • Represented a leading innovator of personal transport devices in design patent infringement actions against over a hundred foreign e-commerce sellers in the Northern District of Illinois. That representation secured temporary restraining orders, preliminary injunctions, and civil contempt with an award of attorneys' fees and costs
  • Represented a global future and options trading exchange in patent infringement action asserted by a non-practicing entity in the Southern District of New York. Advised and counseled on matters involving enforcement, protection, and storage of propriety data
  • Represented a high-performance golf equipment company in a variety of domestic and international branding, intellectual property, and litigation matters. Crafted and negotiated numerous distribution and sponsorship agreements with various golf professionals and advised on corporate, finance, and tax matters
  • Secured a favorable outcome for an international charting and trading software leader in a nationally prominent patent infringement action brought by a trading platform involving patents directed to graphical user interfaces for trading commodities in the Northern District of Illinois
  • Represented an international charting and trading software leader and various co-defendants in a patent infringement action brought in the Eastern District of Texas
  • Represented an international charting and trading software leader in several Covered Business Method Review proceedings before the Patent Trial and Appeal Board brought under the America Invents Act
  • Represented a provider of biological in vitro products before the U.S. Court of Appeals for the Federal Circuit and the Northern District of Illinois in a patent case regarding methods for creating multi-cryopreserved hepatocyte preparations. That representation secured preliminary injunctive relief, which the Federal Circuit affirmed in a precedential opinion. That representation also secured a second appellate victory, where in another precedential opinion, the Federal Circuit reversed the district court's decision that the asserted patent was invalid for improperly claiming patent-ineligible subject matter under 35 U.S.C. § 101
  • Represented a provider of biological in vitro products in both ex parte review and inter partes review proceedings, which affirmed the validity of a patent involving methods for making multi-cryopreserved hepatocyte preparations
  • Represented a green technology development company in global patent portfolio and risk analyses matters relating to compressed natural gas/diesel engine technology, bioremediation, and graphene manufacturing processes and applications
  • Represented a diagnostic testing company regarding assays for rapid evaluation of microorganism contamination and materials for testing the impact of drugs on hepatic function
  • Represented a leading global provider of high-quality biological specimens before the European Patent Office in The Hague, Netherlands, by orally arguing before the appellate division, which then affirmed the validity of the European counterpart to the LiverPool® patent
  • Represented a functional food manufacturer in a patent infringement action in the Western District of Wisconsin regarding methods for creating non-caloric, cellulosic gel compositions from agricultural by-products

Insights

Credentials
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Education

  • J.D. University of Illinois Chicago
  • M.S. Biology Purdue University
  • B.A. Biology Indiana University

Bar Admissions

  • Illinois
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin

Clerk Experience

  • The Honorable Ronald Guzman U.S. District Court for the Northern District of Illinois

Professional Memberships and Activities

  • Chair emeritus, Illinois Intellectual Property Alliance
  • Past president, Richard Linn Chapter, American Inns of Court
  • Past president, Intellectual Property Law Association of Chicago
  • Member, Board of Trustees, American Inns of Court
  • Member, Executive Board, United States Intellectual Property Alliance
  • Member, Federal Trial Bar
  • Member, Federal Circuit Bar Association
  • Advisor, Chicago Inventors Organization (formerly, Chicago Black Inventors and Entrepreneurs Organization)
  • Advisor, Intellectual Property Advisory Board, University of Illinois Chicago Law School
  • Guest lecturer, University of Illinois Chicago Law School
  • Guest lecturer, DePaul Law School
  • Member, Skokie Country Club

Recognition
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  • IAM Patent 1000: The World's Leading Patent Professionals, Litigation, Illinois, 2022
  • American Inns of Court, Professionalism Award for the Federal Circuit, 2022
  • The Best Lawyers in America
    • Best Lawyer, Patent Litigation, Intellectual Property Litigation and Patent Law, 2016 – 2023
    • Lawyer of the Year, Patent Litigation, Chicago, 2022
  • Super Lawyers
    • Top 100, Illinois, 2014 – 2020
    • Intellectual Property and Intellectual Property Litigation, Illinois, 2013 – 2023
    • Rising Star, Intellectual Property and Intellectual Property Litigation, Illinois, 2011 – 2012
  • Leading Lawyers Network, Top Lawyers, Patent Law, Illinois, 2015
  • Chambers USA, Intellectual Property, Illinois, 2013 – 2023
  • Managing Intellectual Property, IP Star, 2013 – 2022
  • Law Bulletin Publishing Company, 40 Illinois Attorneys Under Forty to Watch, 2013
  • National Law Journal, Chicago's 40 Under 40, 2013

Community
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Volunteerism

  • Advisor, North Shore Warhawks Hockey Club
  • Member, Men’s Golf Committee, Lurie Children’s Hospital Annual Golf Pro-Am Championship

Personal Activities

  • Adam is a proud supporter of girls’ ice hockey and may be found in ice arenas throughout the Midwest, watching his daughters play for their all-girls hockey club, the North Shore Warhawks. He is also an avid golfer who enjoys traveling with clients and friends domestically and abroad to play on beautiful courses and create memorable experiences. His favorite courses include National Golf Links, Royal Dornoch, Waterville, and Winnetka National