Our People

John P. Luther

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Phone: (312) 427-1300 | Fax: (312) 427-6663

John P. Luther is a partner in the Chicago office of Ladas & Parry.

He has been an intellectual property litigator for over twenty years, and has been lead counsel in such important matters as Dorr-Oliver v. Fluid-Quip, widely cited in initial interest confusion trademark infringement cases, and Xechem v. University of Texas M.D.Anderson Cancer Center, a controversial decision in which the Federal Circuit Court of Appeals ruled that a suit for correction of patent inventorship against a state university was blocked by Eleventh Amendment sovereign immunity.

John recently successfully defended Delta Airlines as lead counsel in a copyright infringement case brought by Wiley Publishing in the Southern District of New York, and as lead defense counsel in a patent infringement case brought in the Northern District of Illinois involving batting training techniques used in Major League Baseball and in which he obtained the first ruling in this jurisdiction that the Illinois Absolute litigation privilege does not preempt federal causes of action and does not apply to bad faith cease and desist letters.

John has authored and prosecuted many patents, both domestically and overseas, and has appeared before the Board of Patent Appeals and Interferences successfully arguing for patentability many times. His patent practice has been primarily in the pharmaceutical and chemical arenas, and most recently in the Internet and telecommunications arts.

Prior to joining Ladas & Parry, John practiced with both boutique and large national firms and was Vice President and General Counsel of a start-up biopharmaceutical firm specializing in anti-cancer, anti-viral, anti-infective and anti-sickle cell anemia drugs.

REPRESENTATIVE LITIGATIONS:

  • Amer Sports v. Nordica, Northern District of Illinois; pending patent infringement action.
  • Fuel Tech v. Pan Asia, Northern District of Texas; pending patent litigation; settled successfully for client
  • Pan Asia.Flexiteek v. Tech-Dek, Southern District of Florida; pending patent litigation.
  • Furnace Brook v. Hickory Farms, Northern District of Illinois; won summary judgement for client Hickory Farms and prevailed on appeal to Federal Circuit, 2011.
  • Delta Airlines v. Sotolonap, District of Florida; Representing Delta Airlines in pending trademark litigation.
  • Davidson v. Schneider et al, Northern District of Illinois; pending breach of contract action.
  • Ad Notom v. Blue Vision, Northern District of Illinois, 2011; patent infringement action successfully settled for client.
  • Whitserve v. Dennemeyer, 2011; patent infringement action successfully settled for client.
  • Simonian v. Blistex, Northern District of Illinois, 2011; Qui Fam action successfully settled for client
  • Blistex International Star Registry v. Cheung, Northern District of Illinois; obtained first ruling in the 7th Circuit in pending trademark infringement action authorizing service of process by email
  • Darden Corporation v. Joseph, Lead counsel in pending trademark infringement action in Northern District of Illinois.
  • Lucifer Lighting Inc. v. Luzifer Lamps, N.D. Illinois, Action for trademark infringement; obtained default judgement against Spanish defendants.
  • CP Films, Inc. v. Solar Lunar Performance Film, 07 CV 7338, Southern District of New York; Lead counsel in trademark infringement and cybersquatting action; settled favorably for client.
  • Ventura Foods, LLC v. Supreme Oil Company Incorporated, 07 CV 7338, Southern District of New York; Lead counsel defending a national food products company against claims of trademark and trade dress infringement and related state causes of action; settled favorably for client.
  • Luster Products, Inc. v. Intimate Beauty Corporation and Victoria’s Secret Catalogue, Inc., 05 CV 4527, Northern District of Illinois, 2005; Pending action for trademark infringement and related causes of action.
  • John Wiley & Sons, Inc. & Wiley Publishing, Inc. v. Delta Airlines, Inc., 06 CV 11424, Southern District of New York, 2007; Lead counsel representing Delta Airlines in a copyright, trademark/trade dress, unfair competition action; Obtained favorable settlement.
  • SRAM Corporation v. Formula S.R.L. et al., 06 C 1025, Northern District of Illinois 2006. Second chair defense counsel in pending patent infringement actions.
  • Conditioned Ocular Enhancement v. Bonaventura et al. Lead defense counsel in pending patent
  • infringement action in the Northern District of Illinois, Chicago.
  • Xechem v. University of Texas M.D. Anderson Cancer Center et al., 382 F3d 1324 (Fed.Cir. 2004) cert. den. 161 L.ED.2d 111, 125 S.Ct.1314 (U.S. 2005). Lead counsel in declaratory judgment action to correct patent inventorship and ownership and defense of alleged patent infringement of new pharmaceutical formulations for paclitaxel-based oncology products.
  • Mailblocks v. Spam Arrest (W.D. Washington 2003). Defended client against alleged infringement of two spam blocking patents; plaintiff’s motion for preliminary injunction denied after convincing the court of the probable invalidity of both patents; case settled favorably for client.
  • Health-Partners (E.D. Pa. 1998). Lead counsel in copyright infringement and unfair competition action; obtained favorable settlement for defendant Health Partners.
  • ENSR Corporation v. N-Star Corporation (D.N.J. 1995). Lead counsel in action for trademark infringement, unfair competition and related state causes of action; settled favorably for trademark owner.
  • Geka-Brush v. Plastek (N.D. OH 1995). Lead counsel in action for patent infringement, trade
  • dress/trademark infringement and unfair competition; Favorable settlement for client patent/trademark owner Geka-Brush.
  • Dorr-Olivier v. Fluid Quid 894 F. Supp. 1190 (N.D. Ill, 1995). Trademark, trade dress, unfair competition and counterfeiting litigation; obtained large damage award; one the first initial interest confusion cases in the Seventh Circuit.
  • Dorr-Oliver v. Fluid Quid 834 F. Supp. 1008 (N.D. Ill, 1993). Lead counsel in trademark, trade dress, unfair competition and counterfeiting litigation; denial of defendant’s motion for summary judgment to eliminate damage award; district court and subsequently 7th Circuit adopted proposed test for determination of generic trademarks.
  • Dorr-Oliver v. Pic-Tec, Inc. (N.D. Ill, 1993). Lead counsel in trademark, trade dress, unfair competition and counterfeiting litigation for infringement of client’s large-scale corn processing machinery; case settled favorably for client Dorr-Oliver.
  • Advanced Telecommunication Network v. American Telnet, Inc. (D.C. N.J. 1997). Second chair in defending unfair competition and trademark infringement action; settled.
  • CITA Americas, Inc. v. Lance L. Gooberman, M.D., et al. (N.J. Superior Ct. 1996). Second chair in defending trademark infringement, unfair competition and trade secret theft action; case partially
  • dismissed during discovery and remaining counts withdrawn.
  • U.S. v. Hsu (E.D. PA 1997). Assisted in defending client against allegations of attempted trade secret theft and conspiracy to steal trade secrets related to spore production of paclitaxel-containing compounds; settled.

Pineapple Grove Designs V. Chemcrest Corporation, Ltd. (S.D. N.Y. 1998). Assisted in defending client against alleged copyright infringement and unfair competition; settled.

Education

Chemistry, University of Massachusetts (B.S.  1977)
Molecular Biochemistry, Boston College (M.S. 1981)
University of Oklahoma (J.D.)

Practice Areas
  • Patents – Chemistry
  • U.S.Litigation
  • European Litigation

 

Admissions

Oklahoma
Washington
U.S. District Court for the Northern District of Illinois
Seventh Circuit Court of Appeals
U.S. District Court for the Western District of Washington
Ninth Circuit Court of Appeals
Court of Appeals for the Federal Circuit
U.S. Supreme Court
U.S. Court of International Trade
U.S. Patent and Trademark Office – Registered Patent Attorney
U.S. Court of Federal Claims

Key Industries
  • Pharmaceuticals
  • Telecommunications
  • Information Systems