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James J. Lukas, Jr.

James J. Lukas, Jr. focuses his practice on intellectual property litigation with a particular emphasis on patent litigation and related client counseling. He has experience with complex patent litigation cases in federal district courts throughout the country, including both enforcing patent rights and defending against charges of infringement on behalf of clients. He has first-chaired trials and claim construction and summary judgment hearings, and he has argued before the Court of Appeals for the Federal Circuit, the Seventh Circuit, and the Second Circuit. James' litigation experience includes successes at trial and at summary judgment, and the creation of settlements as a result of positive claim construction and summary judgment rulings. He also has lead counsel experience in proceedings before the Patent Trial and Appeal Board (PTAB), including inter partes reviews (IPRs) and interferences. James also has experience conducting arbitrations and mediations on behalf of his clients.

James has represented clients in patent disputes involving a broad range of technologies, including electronics, computer hardware and software, medical devices, biotechnology, pharmaceuticals, mechanical devices, wireless communications, automotive, Internet and eCommerce, and protective equipment.

His experience includes all aspects of patent, trademark, copyright, trade secret, and unfair competition litigation from pre-litigation investigation and preparation of pleadings through all phases of discovery, motion practice, claim construction and summary judgment hearings, pre-trial, trial, post-trial, and appeals.

Concentrations

  • Intellectual property
  • Patent litigation
  • Copyright litigation
  • Trademark and trade dress litigation
  • Trade secret and unfair competition litigation

取扱分野

実績紹介

Proprietary Technology (Consumer Electronics, Computer Hardware and Software, Internet, & Mobile Communications)

  •  In re: Gates, No. 18-2331 (Fed. Cir.):  Representation of Gates in the appeal of the Patent Trial and Appeal Board’s rejection of pending claims involving remote control technology. Obtained a reversal of the rejection.
  • Wi-LAN, Inc. v. LG Electronics, Inc. et al., No. 18cv1577 (S.D. Cal.): Representation of LG in the defense of a four patent infringement action involving wireless communication technology.
  • Security5, LLC v. Revolar Inc., No. 16cv1645 (S.D. Cal.): Representation of Revolar in the defense of a patent infringement action involving portable security devices.
  • Rockstar Consortium US LP, Inc. v. LG Electronics, Inc. et al., No. 13cv898 / 14-150 (E.D. Tex./Fed. Cir.): Representation of LG in the defense of a seven patent infringement action involving Google’s Android OS for mobile communication devices. Obtained a writ of mandamus from the Federal Circuit reversing the district court’s denial of a motion to stay or transfer.
  • LG Electronics, Inc. v. Wi-LAN USA, Inc. et al., No. 13cv2237 / No. 14-3035 (S.D.N.Y./2d Cir.): Representation of LG in an action to enjoin arbitration.
  • Wi-LAN, Inc. v. LG Electronics, Inc. et al., No. 12cv23611 / No. 13cv4895 (S.D. Fla. /D.N.J.): Representation of LG in the defense of a patent infringement action involving television display technology.
  • Trading Technologies Int’l, Inc. v. BGC Partners, Inc. et al., No. 10cv715 / No. 12-1583 (N.D. Ill./Fed. Cir.): Representation of OptionsXpress and Open E Cry in the defense of a twelve patent infringement action involving electronic trading interfaces. Obtained settlement without trial.
  • Voxpath RS, LLC v. LG Electronics, Inc. et al., No. 12cv952 (D.N.J.): Representation of Samsung in the defense of a two patent infringement action involving optical recording and reading systems (e.g., CD, DVD and Blu-ray players). Obtained settlement without trial.
  • Wi-LAN, Inc. v. LG Electronics, Inc. et al., No. 10cv432 / Nos. 11-1626, 12-1273 (S.D.N.Y./Fed. Cir.): Representation of LG in the defense of a patent infringement action involving broadcast parental control blocking technology for televisions. Obtained summary judgment of non-infringement and a per curiam affirmance on appeal.
  • Universal Electronics Inc. v. Logitech, Inc. et al., No. 11cv1056 (C.D. Cal.): Representation of Universal Electronics in the enforcement of a 17 patent infringement action involving remote control technology. Obtained settlement without trial.
  • Network Signatures, Inc. v. Anheuser-Busch Companies, Inc., No. 11cv920 (C.D. Cal.): Representation of Anheuser-Busch in the defense of a patent infringement action involving encryption technology. Obtained a dismissal without trial after patent-in-suit was found unenforceable at summary judgment in separate action.
  • Select Retrieval, LLC v. ABT Electronics, Inc. et al., No. 11cv3752 (N.D. Ill.): Representation of Sears, Grainger and FansEdge in the defense of a patent infringement action involving hierarchical database searching. Obtained settlement without trial.
  • Oplus Technologies, Ltd. v. Sears Holdings Corp. et al., Nos. 11cv8539, 11cv9017, 11cv9027, 11cv9029 (N.D. Ill.): Representation of Sears in the defense of multiple two patent infringement actions involving video signal technology. Obtained dismissals without trial.
  • Aloft Media, LLC v. Compuware Corp., et al., No. 10cv256 (E.D. Tex.): Representation of OptionsXpress in the defense of a two patent infringement action involving computer-implemented decision-making technology. Obtained settlement without trial.
  • MSTG, Inc. v. Research in Motion Limited et al., No. 08cv7411 (N.D. Ill.): Representation of Verizon Wireless in the defense of a three patent infringement action involving cellular and radio transmission technology. Obtained a claims construction ruling and settlement without trial.
  • TQP Development, LLC v. Merrill Lynch &Co., Inc. et al., No. 08cv471(E.D. Tex.): Representation of E*TRADE in the defense of a patent infringement action involving encryption technology. Obtained settlement without trial.
  • Parallel Networks, LLC v. Netflix, Inc. et al., No. 07cv562 (E.D. Tex.): Representation of E*TRADE in the defense of a two patent infringement action involving web server technology. Obtained settlement without trial after obtaining a claims construction ruling which eventually led to plaintiff effectively conceding the invalidity of the patents-in-suit by filing a covenant not to sue the remaining defendants to avoid the court granting a pending motion for summary judgment of invalidity.
  • Constellation IP, LLC v. The Allstate Corp. et al., No. 07cv132 (E.D. Tex.): Representation of E*TRADE in the defense of a patent infringement action involving electronic sales presentation system technology. Obtained a settlement without trial.
  • Trontech Licensing Inc. v. Thomson, Inc. et al., No. 06cv451 (E.D. Tex.): Representation of V-Tech in the defense of a three patent infringement action involving telephone answering machine technology. Obtained a settlement without trial after the court granted summary judgment of invalidity (indefiniteness) of several asserted claims of the patents-in-suit.

Medical Devices & Pharmaceutical

  • Exergen Corporation v. Brooklands, Inc., No. 12cv12243 (D. Mass.): Representation of Brooklands in the defense of a patent infringement action involving temporal artery thermometers. Obtained summary judgment of invalidity.
  • Teva Women’s Health, Inc. v. Mylan Pharmaceuticals, Inc. et al., Nos. 10cv1234, 10cv1235   (D.N.J.): Representation of Teva in the enforcement of ANDA cases involving female oral contraceptives.
  • PolyMASC Pharmaceuticals, PLC v. Alza Corp., No. 01cv228 (D. Del.): Representation of Alza in the defense of a patent infringement action involving pharmaceutical carrier systems. Obtained a settlement without trial after the court granted summary judgment of non-infringement.
  • Braun Medical, Inc. v. Johnson & Johnson, Inc., No. 00cv380 (E.D. Pa.): Representation of Johnson & Johnson in the defense of a declaratory judgment patent action involving medical safety catheters. Obtained a settlement without trial.
  • McNeil-PPC, Inc. v. Bayer Corp., No. 99cv4733 (E.D. Pa.): Representation of McNeil in the enforcement of a patent infringement action involving over-the-counter pain reliever gelcaps. Obtained a jury verdict of infringement and a permanent injunction.
  • C.R. Bard, Inc. v. Medtronic, Inc., No. 99-1475 (Fed. Cir.): Representation of Medtronic in the appeal of a patent infringement action involving arterial blood filters. The Federal Circuit vacated the lower court’s infringement finding and on remand Medtronic obtained a jury verdict of non-infringement.

Mechanical Devices & Sports Equipment

  • Chervon (HK) Limited v. One World Techs., Inc. et al., Case No. 19cv1293 (D. Del.): Representation of Chervon in the enforcement of a five patent infringement action involving lawn mower technology.
  • Klein Tools, Inc. v. IDEAL Industries, Inc., No. 19cv3604 (N.D. Ill.): Representation of IDEAL in the defense of a five patent infringement action involving laser marking technology.
  • All-Cell Techs. v. Chervon North America, Inc., No. 18cv1419 (N.D. Ill.): Representation of Chervon in the defense of a four patent infringement action involving battery technology.
  • Kranos IP Corp. v. Riddell, Inc., No. 17cv443 (E.D. Tex.): Representation of Schutt Sports in the enforcement of a three patent infringement action involving protective helmets.
  • Riddell, Inc. v. Kranos Corp. d/b/a Schutt Sports, No. 16cv4496 (N.D. Ill.): Representation of Schutt Sports in the defense of a three patent infringement action involving protective helmets and fasteners.
  • Riddell, Inc. v. Rawlings Sporting Goods, Inc., No. 15cv71 (N.D. Ill.): Representation of Rawlings in the defense of a four patent infringement action involving protective helmets and shoulder pads. Obtained a settlement without trial.
  • DB Industries, Inc. v. Aero Co., No. 08cv1856 (D. Minn.): Representation of Aero in the defense of a patent infringement action involving fall arrest equipment. Obtained a settlement without trial.
  • Molon Motor & Coil Corp. v. Merkle-Korff Industries, Inc., No. 04cv5134 (N.D. Ill.): Representation of Merkle-Korff in the defense of a patent infringement action involving gear motors for refrigerators. Obtained a settlement without trial.
  • Unique Coupons, Inc. v. Northfield Corp., No. 99cv7445 (N.D. Ill.): Representation of Unique in the enforcement of patent infringement action involving coupon dispensing machines. Obtained settlement during appeal after the jury sustained validity of patent-in-suit.

Automotive Systems, Catalysts, Packaging & Textiles

  • Standard Textile Co., Inc. v. J&R United Industries, Inc., No. 17cv61815 (S.D. Fla.): Representation of J&R in the defense of a patent infringement action involving bed sheet technology. Obtained a settlement without trial.
  • Intercontinental Great Brands LLC v. Kellogg North America Co. et al., No. 13cv321 (N.D. Ill.): Representation of Kellogg in the defense of a patent infringement action involving resealable packaging. Obtained summary judgment of invalidity and no literal infringement.
  • The Boler Co. v. Arvinmeritor, Inc., No. 03cv4589 (N.D. Ill.): Representation of the Boler Company and Hendrickson in the enforcement of a patent infringement action involving semi-trailer suspension systems. Obtained a settlement without trial.
  • The Boler Co. v. Watson & Chalin, Inc., No. 03cv1266 (N.D. Ohio): Representation of the Boler Company in the enforcement of a patent infringement action involving semi-trailer suspension systems. Obtained a settlement without trial.
  • Phillips Petroleum Co. v. Exxon Corp., No. 98cv638 (D. Del.): Representation of Phillips Petroleum in the enforcement of a patent infringement action involving metallocene catalysts. Obtained a post-trial settlement after jury sustained validity of patent-in-suit.
  • Caesars Enterprise Services, LLC v. Tipping Point Gaming, LLC, No. A-18-769136-B (Nev.): Representation of Caesars in the defense of trade secret and breach counterclaims.
  • ISACA v. Telecommunication Systems, Inc. et al., No. 17cv2066 (N.D. Ill.): Representation of ISACA in an action for injunctive and declaratory relief.
  • VitalGo, Inc. v. Kreg Therapeutics, Inc. et al., No. 16cv5577 (N.D. Ill.): Representation of VitalGo in the enforcement of its copyrights and marks in a copyright infringement, trademark infringement, and unfair competition action.
  • Springboards to Education, Inc. v. W.W. Grainger, Inc., No. 16cv2398 (N.D. Tex.): Representation of W.W. Grainger in the defense of a trademark infringement and unfair competition action. Obtained a dismissal of all claims without trial.
  • UL LLC v. Swagway, LLC et al., No. 16cv0075 (N.D. Ind.): Representation of UL in the enforcement of its “UL” marks in a trademark counterfeiting and unfair competition action. Obtained a settlement and permanent injunction without trial.
  • Mori Lee, LLC. v. Sears Holdings Corporation et al., No. 13cv3656 (S.D.N.Y.): Representation of Sears in the defense of a five-count trademark infringement and unfair competition action involving a bridal dress manufacturer’s trademark. Obtained summary judgment of no trademark infringement and no unfair competition on all counts.
  • Kreg Therapeutics, Inc. v. VitalGo, Inc., No. 11cv6771 (N.D. Ill.): Representation of VitalGo in the defense of a breach of contract action.
  • Sears, Roebuck and Co. v. Rockhard Labs, Inc. et al., No. 11cv2483 (N.D. Ill.): Representation of Sears in the enforcement of its “Die Hard” marks in a trademark infringement, trademark dilution, cybersquatting, and unfair competition action. Obtained a settlement and permanent injunction without trial.
  • Rearden LLC v. Rearden Commerce Inc., No. 06cv73667 (N.D. Cal.): Representation of Rearden Commerce in the defense of a multiple count trademark infringement suit. Obtained a summary judgment ruling on all counts and a settlement after the Ninth Circuit reversed the lower court’s holding.
  • Renaissance Mktg., Inc. v. America Online, Inc. et al., No. 06cv1636 (N.D. Ill.): Representation of America Online and MTV in the defense of a copyright infringement action involving a music video. Obtained a settlement without trial.

°Certain of the above representations were handled by Mr. Lukas prior to his joining Greenberg Traurig, LLP.

  • F.B.I., Special Agent, 2002-2004

受賞歴・所属団体

  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Intellectual Property Law Association of Chicago (IPLAC)
  • Member, Intellectual Property Owners Association (IPO)

学歴・資格・言語

学歴
  • 法務博士, DePaul University College of Law, 1999
  • B.S., Biology, Illinois Wesleyan University, 1996
弁護士資格
  • 米国 イリノイ州
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Second Circuit
言語