John S. Letchinger

Partner

Chicago
T +1.312.416.6206
F +1.312.416.6260

"[John] offers a 'high level of very fast and efficient service' and 'does a very good job of using the level of the detail to break down complex business problems.'"

— Chambers USA 2017

Overview

John Letchinger is an accomplished trial attorney, having handled a wide scope of intellectual property and related commercial disputes. He regularly represents industry-leading manufacturers, marketing companies and retailers, litigating complex disputes and taking many cases to trial and appeal. In addition to this significant trial experience, John is a respected counselor to clients in complex and multifaceted intellectual property, marketing and advertising, contracting, business partnering, and related matters. John is a practical, present and accessible advocate for his clients, remaining constantly aware of the unique aspects of his clients' needs.

John has been recognized by Chambers USA since 2010 and IAM Patent since 2014. He has twice been named a BTI Client Service All-Star, most recently in 2017.

Select Experience

  • Successfully prosecuted a trade secrets case involving the misappropriation of product concepts, which Learning Curve, the declaratory judgment plaintiff, wrongly patented and transformed into an industry-leading product. After nine years of litigation, including a jury verdict in the client's favor, the Seventh Circuit issued a precedent-setting opinion, ruled in PlayWood's favor (reinstating a jury verdict that awarded an 8 percent royalty) and remanded the case for trial on punitive damages. The case soon settled on favorable terms for PlayWood. Learning Curve Toys, Inc. v. PlayWood Toys, Inc., 342 F.3d 714 (7th Cir. 2003).
  • Successfully defended a national retailer in a dispute with a landlord through appeal to the Indiana Court of Appeals. Brownsburg Station Partners LLC v. Claire's Boutiques, Inc., 997 N.E.2d 1093 (2013).
  • National IP counsel to a Fortune 500 retailer, including serving as lead counsel in more than a dozen patent infringement cases and providing counsel on general IP and advertising, marketing, privacy issues, and complex commercial matters.
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Experience

  • Successfully prosecuted a trade secrets case involving the misappropriation of product concepts, which Learning Curve, the declaratory judgment plaintiff, wrongly patented and transformed into an industry-leading product. After nine years of litigation, including a jury verdict in the client's favor, the Seventh Circuit issued a precedent-setting opinion, ruled in PlayWood's favor (reinstating a jury verdict that awarded an 8 percent royalty) and remanded the case for trial on punitive damages. The case soon settled on favorable terms for PlayWood. Learning Curve Toys, Inc. v. PlayWood Toys, Inc., 342 F.3d 714 (7th Cir. 2003).
  • Successfully defended a national retailer in a dispute with a landlord through appeal to the Indiana Court of Appeals. Brownsburg Station Partners LLC v. Claire's Boutiques, Inc., 997 N.E.2d 1093 (2013).
  • National IP counsel to a Fortune 500 retailer, including serving as lead counsel in more than a dozen patent infringement cases and providing counsel on general IP and advertising, marketing, privacy issues, and complex commercial matters.
  • Lead representation of an online travel company in complex commercial matters, intellectual property disputes and ongoing transaction matters involving multiparty agreements.
  • National IP and litigation counsel to a prominent national flooring and home improvement company.
  • Lead representation of a major energy supply company (ESCO) in intellectual property and unfair competition disputes.
  • Successfully represented RBM Consulting, a start-up voting equipment and services company, in an AAA arbitration involving breach of contract claims against Dominion Voting Systems. After a seven-day hearing, the panel found in RBM's favor and awarded RBM approximately $5 million in lost commission damages. After Dominion challenged the award, the Circuit Court of Cook County confirmed the arbitration award and entered judgment in RBM's favor.
  • Successfully represented Motorola Mobility in multiple patent infringement cases.
  • Lead representation in a high-profile data security dispute regarding fraudulent credit card transactions, payment card industry standards and alleged security violations.
  • Successfully represented a tool manufacturer, trying the invalidity and damages portion of a patent infringement case after the court had entered summary judgment in favor of the plaintiff on infringement. The case was resolved in favor of the client on damages.
  • Successfully represented TouchCom Technologies, Inc., in an intellectual property license dispute against Dresser, Inc., before a three-member AAA arbitration panel. After a week-long trial, the panel ruled in TouchCom's favor. The award paved the way to a multimillion-dollar settlement of TouchCom's pending patent infringement case against an industry-leading manufacturer of gasoline dispensing products.
  • Successfully prosecuted a patent infringement case through trial and appeal on behalf of industry-leading Quickie Manufacturing Corporation. The Federal Circuit affirmed the District Court's infringement finding. In its memorandum opinion, the District Court specifically noted that John had repeatedly impeached Libman's primary witness, its chief executive officer, and made a finding that the witness was not credible. Libman Company v. Quickie Manufacturing Corporation, 74 Fed. Appx. 900, 2003 WL 22025068 (Fed. Cir. 2003).
  • Successfully defended Ondeo Nalco Company (declaratory judgment plaintiff) in a patent infringement case in the District of Delaware involving a chemical additive and method for manufacturing paper. After opening statements and during examination of Eka's first expert witness during jury trial, Ondeo Nalco moved for a mistrial, arguing that opposing counsel had improperly elicited testimony in violation of prior rulings by the court. The court granted Ondeo Nalco's request for a mistrial and the case favorably settled shortly thereafter.
  • Successfully defended Northfield Corporation in a patent infringement case through trial and appeal. The case was bet-the-company for Northfield, as it threatened its primary product line. After a jury verdict of noninfringement in favor of Northfield, the case settled following oral argument before the Federal Circuit on Northfield's appeal of the District Court's denial of attorney's fees. 
  • Represented a leading supplier of gifts and novelties in an unfair competition and breach of license dispute, including oral hearing on a motion for preliminary injunction. In combating the wide range of defenses asserted by defendants, John was able to convince the District Court that advertising under the Lanham Act included oral statements made to attendees at trade shows.
  • Represented a leading consumer products manufacturer in multiple unfair competition, Lanham Act and copyright cases against competitors involving product and product packaging claims and misrepresentations, colors, trademarks and trade dress. The cases settled favorably, resulting in changes to defendants' products and packaging. 
  • Defended Samsung Corporation in a patent infringement case filed against several leading manufacturers of cellular phones. The accused devices were cellular camera phones. After moving the court to bifurcate damages and liability, Samsung was able to settle the case.
  • Successfully defended copyright, trade secret and breach of contract claims against a newly formed software company composed of several former employees of the plaintiff company, including the author and creator of the plaintiffs' competitive auditing software. In an attempt to exploit the limited resources of a nascent company, the plaintiffs turned to litigation in an effort to put the new company out of business. On the eve of trial, the case settled following entry of summary judgment in favor of the defendants on the copyright infringement claims.
  • Defended a leading manufacturer of animal litter in a patent infringement case. With the plaintiff having waited years to bring suit after first contacting our client, the defense developed compelling evidence of noninfringement and invalidity, in addition to laches and estoppel. The case settled following the deposition of the inventor and defendant's submission of expert reports.
  • Prosecuted a copyright infringement action relating to the misappropriation and copying of technical drawings. While the case was on appeal to the Seventh Circuit following a protracted bench trial, it settled on favorable terms.
  • Successfully defended Tensor Corporation in Rule to Show Cause proceedings. Tensor Corporation purchased out of bankruptcy the assets of Dev Corporation, which was forced out of business following the entry of an injunction against it in a case brought by Rockwell International. Rockwell later filed a Rule to Show Cause motion against Tensor, accusing it of violating the permanent injunction previously entered against Dev. After convincing the District Court to dismiss the proceedings on privity and timing grounds, and following two appeals to the Seventh Circuit, the case settled before the court ever heard argument on the merits. 
  • Regularly serves as outside counsel for all intellectual property matters for public and private corporations, including prosecution of patents, trademarks and copyrights; maintenance of intellectual property portfolios; advertising and marketing clearance; and pre-litigation counseling, strategy and clearance. Provides ongoing counsel to numerous clients in intellectual property due diligence matters and the creation and maintenance of outside inventor programs.
  • Lead representation of industry-leading retailers, manufacturers and marketing companies in a wide range of complex commercial and intellectual property disputes, marketing and advertising issues, and general business and contracting matters.
  • Routinely represents clients in restrictive covenant and classification matters.
  • Advises companies on all matters regarding compliance requirements, customer and media relations, cooperation with law enforcement agencies, forensic analysis of financial transactions, and proper determination of liability and source of security intrusions. 

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in Illinois (2010 to 2017)
  • IAM Patent 1000 – The World's Leading Patent Practitioners
    • Illinois: Recognized for Patent litigation (2014 to 2017)
  • BTI Client Service IP All-Star (2014, 2017)
  • Chicago Lawyer and Chicago Daily Law Bulletin: 40 Under 40 List
  • Illinois "Super Lawyer" (2009, 2013 to 2017)

Pro Bono

  • Represented and obtained a favorable settlement on behalf of a prisoner in a case wherein the prisoner alleged to have been denied proper medical treatment. 

Emerging Issues

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, First Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. District Court, Northern District of Illinois, Trial Bar
  • U.S. District Court, Central District of Illinois
  • Illinois

Education

  • J.D., University of Illinois College of Law, 1991, cum laude
  • B.S., Northwestern University, 1988