Current Employment Position(s)

Sole Practitioner, since 2009

Lawyer Overview

Welcome to Crossan IP Law, LLC. For over 35 years now John R. Crossan has helped businesses, institutions, and individuals thrive and compete successfully with services provided by his specialized practice of Intellectual Property Law - shortened as IP Law. John R. Crossan has, with his clients, obtained and enforced or protected against patents, trademarks, copyrights, and trade secrets, and John R. Crossan has helped clients understand and use employment covenants and IP-related antitrust law. He has done this through litigation in Federal and state courts and other dispute resolution forums, here and abroad, through preparing and prosecuting applications, by negotiations and licensing, and through counseling of clients of all sizes.

John R. Crossan's career has progressed through practices in specialty boutique Chicago IP law firms from 1973 to 1998, and then in the IP section of a national financial services law firm in Chicago from 1998 to 2009. John R. Crossan is pleased now to offer current, returning, and new clients personalized, cost-efficient IP Law services in own IP Law Office in the Chicago Loop, at Three First National Plaza. Please call or write to discuss how we may best work together to benefit your business.

Mission Statement

John R. Crossan has, throughout his professional career, provided each client the highest level of specialty legal services, cost-effectively tailored to their business needs and objectives. John R. Crossan draws on his extensive experience to offer creative, knowledgeable skills for understanding and resolving business and competitive problems and for taking best advantage of business and competitive opportunities, using IP Law principles and tools in each case or situation. Each client's IP needs and objectives are foremost in each instance, and John R. Crossan will recognize or formulate those by working together with each client, always with a view to the facts, to the law, and to best policies and practices.

Experience

A sampling of the cases that John R. Crossan has litigated in each of the IP subject areas, with indications of their technical or business subject matter, is provided through the links here and below for patents, trademarks, copyrights, unfair competition, trade secrets, and related anti-trust areas.

When John R. Crossan started into the IP law practice in 1973 - then called Patent, Trademark, and Copyright law - most all attorneys had full-service IP practices. Each attorney then came to know the intricacies of all forms of the intellectual property practice - not as today where big-firms' attorneys' practices often are very narrowly confined and even simple but comprehensive advice must be gleaned from multiple counsel. John R. Crossan enjoys litigating and trying important patent, trademark, and unfair competition cases to final result or settlement and through appeal and certiorari petitions where warranted. John R. Crossan also prepares, files and prosecutes to issuance applications for patent and trademark, and he negotiates licenses for companies and individuals. John R. Crossan also gives copyright, trade secret, and antitrust advices to clients.

John R. Crossan started his IP Law practice at THE HILL FIRM in Chicago, first reviewing Patent Office actions for preparing amendments and soon after writing original applications. He got a good start into IP litigation, also. For instance, his senior partner sent him to Washington to do an invalidity search at the Patent Office, expecting John R. Crossan to spend a week there. However, John R. Crossan found knock-out art in the first hour and so returned to Chicago the same day - saving the small business client four days of fees. His partner and he won the trial, at Shreveport, LA, using the art that John R. Crossan had found together with supporting testimony of the local inventor.

John R. Crossan was recruited to the boutique firm of COOK WETZEL AND EGAN at the start of 1978. There he promptly helped to try and win jury verdicts against IBM while representing a Seattle manufacturing firm, enforcing a patent on a mechanism for a collator for copy machines. His partner and he won a $7.5 million jury verdict for just the first few years of production and leasing of IBM's Series III copiers. John R. Crossan largely wrote the appellee briefs to have the judgment upheld on appeal. More cases and trials ensued, including a case wherein John R. Crossan defended Ford Motor Company from a contingency-case patent infringement claim. John R. Crossan litigated and tried another automotive product patent to a jury in Detroit in 1988.

The Willian Brinks firm (now BRINKS HOFER GILSON & LIONE ) welcomed John R. Crossan at the start of 1989 to continue his litigation practice in the IP Law area. John R. Crossan litigated several patent infringement cases for Kimberly Clark and advised other Fortune 25 companies on patent and other issues, supervised patent application work for a major cell phone company, and counseled an agricultural equipment company on novelty and infringement issues. John R. Crossan also took on a contingency fee case for the law firm and a retired engineer in Toledo, Ohio, who alleged that he had been financially defrauded by his lawyer in a software development business venture. Starting with a copyright infringement claim, John R. Crossan and his team litigated and tried the case to a jury on misappropriation of corporate opportunity and attorney malpractice grounds. John R. Crossan's client there won a $22 million verdict.

Seeing much important IP litigation work go to general practice firms with IP sections, at the start of 1998 John R. Crossan joined CHAPMAN AND CUTLER, LLP, a national firm specializing in financial services law. In July 1998 the Federal Circuit Court of Appeals held that business methods should be patentable like any other methods (computer methods had been patented and upheld since the 1983 trials in Merrill Lynch's Cash Management Account cases). John R. Crossan then promptly filed for and obtained what seems to be just the second-issued pure business method patent, no. 6,338,040, for a method of preserving usefulness of gene-modification technology as against development of resistance in targeted bugs. Financial business methods never caught on, except in the federal tax area, and in October 2008 the Federal Circuit court has reversed itself and now requires a method either to use a specific machine or to transform an article, machine, or composition of matter. Subject to impending Supreme Court review, "pure" business methods are again unpatentable. John R. Crossan continued his IP litigation practice at Chapman, representing banks, importers, domestic manufacturers, and others in patent and trademark cases across the nation and internationally, including in recapturing several domain names from cybersquatters through federal court injunction proceedings and in ICANN binding arbitration cases.

John R. Crossan has now opened his own boutique IP Law practice, starting in April 2009. John R. Crossan's Law Office is located on the 50th floor of the Three First National Plaza building in the Chicago Loop. He will continue his successful IP Law practice there and invites current, returning, and prospective clients to call or write to discuss their Intellectual Property creation, protection, and exploitation needs. John R. Crossan's goal is to work with clients to achieve excellent results in their businesses and competitive positions.

Areas of Practice

• Intellectual Property Law
• Patents
• Trademarks
• Copyright
• Unfair Competition
• Trade Secrets
• Related Antitrust
• IP Services: Litigation
• Registration
• Licensing
• Counseling

Representative Clients

• Chrysler Corporation
• Ford Motor Company
• FASA Corporation
• Marquette Tool & Die Company

Representative Cases

• VAE Nortrak, VAE GmbH v. Progress Rail, CV-03-AR-1480-M (ND AL 2003)
• Sun Mountain Sports v. Clover Sports, Bennington Golf, Spalding Sports, CV 98-175-M-DWM (D.Missoula MT 1998)
• Libertyville Saddle Shop v. Dover Saddlery, 02C9193 (ND IL 2003)
• Rabbit Tanaka Corp. v. Various Importers, Resellers, N.D.IL (2008)
• Beneficial Franchise Co v. Bank One, Republic Bank & Trust, River City Bank, 00-C-2441 (N.D.IL 2000)
• Tri-Seal International v. Plastics Resources, 95-NC-08G (N.D.UT 1995)
• Tri-Seal International v. J.S. Plastics, 1991 U.S.Dist.. LEXIS 19603 (N.D.IL)
• Budd Co. v. Complax Corp., 19 USPQ2d 1318 (E.D.MI 1990)
• Stoller v. Ford Motor Company, 711 F.Supp. 1451 (N.D.IL 1989)
• Stoller v. Ford Motor Company, 784 F.Supp. 506 (1992)
• Kimberly-Clark Corp. v. James River, 131 FRD 607, 14 USPQ2d 2070 (N.D.GA 1989)
• AlliedSignal Corp. v. IHI Turbo America, 98-3191 (C.D. IL)
• PTC v. ICE and Helac Corporation , (High Court of Paris 1997)
• Deuer Mfg. Co. v. Kent Products Co., 17 USPQ2d 1379 (E.D.MI 1989)
• Simmons Fastener Corp. v. Illinois Tool Works, 630 F.Supp 1310, 230 USPQ 311 (N.D. NY 1986)
• C.R. Bard v. Baxter Travenol Laboratories, 84-7739 TJH (C.D.CA 1986)
• American Hospital Supply Corp. v. Baxter Travenol Laboratories
• AM International, Inc. v. National Business Systems, Inc., 546 F.Supp. 340 (N.D. IL 1982)
• Norfin v. IBM, 453 F.Supp. 1072 and 81 FRD 641 (D.CO 1978)
• Norfin v. IBM, 625 F.2d 357 (10th Cir. 1979)
• Arnold Industries v. Ram-Trol, Inc., 76-916 (W.D.LA 1978)
• Chapman and Cutler v. Forsyte Corp., ICANN / NAF Arbitration
• Harris N.A. v. First National Mortgage Sources, Inc., 07-CV-1092 (ND IL 2007)
• Chicago Architecture Foundation v. Domain Magic, LLC, 07-CV-764 (ND IL 2007)
• Low Book Sales v. Below Book Motors, Inc., 2:07-CV-3 (D. UT 2007)
• Dreyfus Corporation v. BMO, Harris Trust, 02-Civ.-10231 (SD NY 2002)
• Afni v. UpSource, Inc., 04-1386 (CD IL 2004)
• SyllogisTeks Company v. Syllogistics, 4:99 CV 1510 DJS (ED Mo. 1999)
• Low Book Sales v. Below Book Sales, 2:99 CV 293K (D Utah 1999)
• Northern Trust v. Northern States Financial Corp , (TTAB 1999)
• Ohio Art Co. v. Alan Watts, 49 USPQ2d 1957 (N.D.OH 1998)
• Incredible Technologies v. Virtual Technologies, 03-C-1183 (ND IL 2003)
• McGraw-Hill Companies, Inc. v. Stanard & Associates, 96-C-3231 (N.D.IL 1996)
• Total Plastics v. Kleerex International, Inc., 01-3947-CK (Ottawa Co. MI 2002)
• Delos Palmer v. Fox Software, 92-CV-7339 (N.D.OH 1994)
• Peripheral Devices Corporation v. Carl Ververs, 1995 U.S.Dist. LEXIS 11389 (N.D.IL)
• Carter Industries v. Dometic Corp. , (W.D.WA. 1994)

West Practice Categories

Licensing, Antitrust Law, Unfair Competition, Intellectual Property Law, Copyrights, Patents, Trade Secrets, Trademarks, Litigation & Appeals

Bar Admissions

• Illinois, 1974
• U.S. District Court Northern District of Illinois, 1974
• U.S. District Court Northern District of Illinois Trial Bar, 1982
• U.S. District Court Northern District of New York, 1989
• U.S. District Court Central District of California, 1989
• U.S. District Court Eastern District of Michigan, 1989
• U.S. District Court District of Utah, 2001
• U.S. District Court Central District of Illinois, 2001
• U.S. District Court Middle District of North Carolina, 2001
• U.S. District Court Eastern District of North Carolina, 2001
• U.S. District Court Western District of North Carolina, 2001
• U.S. District Court Northern District of Texas, 2001
• U.S. Court of Appeals 4th Circuit, 1979
• U.S. Court of Appeals 7th Circuit, 1979
• U.S. Court of Appeals 10th Circuit, 1979
• U.S. Court of Appeals 6th Circuit, 1989
• U.S. Court of Appeals Federal Circuit, 1983
• U.S. Patent and Trademark Office, 1974
• U.S. Supreme Court, 1985

Professional Associations and Memberships

• IP Law Association of Chicago, 2007 - 2009 (Vice-Chair, Litigation Committee)
• Virginia Engineering Foundation (University of Virginia), 1996 - 2003 (Board of Directors)
• Virginia Engineering Foundation (University of Virginia), 2000 - 2002 (President)
• Virginia Engineering Foundation (University of Virginia), 1998 - 2000 (Vice President)
• U.Va. School of Engineering, 1997 - 2003 (Dean's Advisory Council)
• American Bar Association, Section of Litigation, 2007 - 2008 (Subcommittee Chair)
• American Bar Association, IP Law Subsection, 2007 - 2008 (Subcommittee Chair)
• American Bar Association, Section of Intellectual Property Law, 2007 - 2008 (Subcommittee Chair)
• American Counsel Association, 1991 - 1995 (Board of Directors)

Honors and Awards

• Marquis Who's Who listings: World, America, American Law, Finance + Business
• Martindale-Hubble AV Peer Rating, 1985 - Present
• Elected, Peers as an Illinois Leading Lawyer Annually, 2006 - Present
• Elected, Peers as an Illinois Super Lawyer Annually, 2005 - Present

Classes and Seminars

• Speaker, Trial Practice and ADR Involving and Using 'Electronic Evidence", Illinois Institute for Continuing Legal Education Seminar, June 19, 1997
• Speaker, "Using Technology to Simplify Jury Presentations", Coopers & Lybrand IP Litigation Update, March 1, 1995
• Speaker, "Video Animations in Jury Presentations", American Bar Association General Practice Section, August 4, 1995
• Speaker, "Video Animations in Jury Presentations", American Bar Association General Practice Section, August 6, 1994
• Summary Judgment as a Tool for Cost-Effective Case Management, Willian Brinks 75th Anniversary Seminar. Chicago, September 10, 1992
• Chicago: Valuation of Paper Patents, AIPLA Meeting-Panel Organizer, 2006

Pro Bono Activities

• Chicago Architecture Foundation Auxiliary Board
• Chicago Yacht Club
• Executives' Club of Chicago
• University of Virginia Engineering Foundation

Past Employment Positions

• Chapman and Cutler, L.L.P., Counsel, then Partner, 1998 - 2009
• Brinks Hofer Gilson & Lione, Counsel, then Shareholder, 1988 - 1998
• Cook Wetzel & Egan, Associate, then Partner, 1977 - 1988
• Hill Gross Simpson Van Santen Steadman et al., Associate, 1973 - 1977
• IL Governor's Task Force-NE Region Mass Transportation, Staff Attorney, 1971 - 1973

Education

• University of Chicago Law School, Chicago, Illinois, March, 1974
  J.D.
• University of Virginia, Charlottesville, Virginia, 1969
  B.S.
  Honors: With Honors
  Major: Engineering Science

References

• Harris Bank & Trust Company

Published Works

• Quick Guide to the Patent Law for the Non-Specialist, Illinois Institute for Continuing Legal Education, 1994
• 7th Circuit Chapter, District Courts' Applications of KSR, ABA, 2009
• Contributor, Claim Construction in the Federal Circuit, IPLAC, 2008
• Self-Help Guide To Intellectual Property Protection, dblegal.com, March, 2000

Address

70 West Madison Street
Suite 5050
Chicago, IL 60602-4214

Phones

(312) 602-1071

Faxes

(312) 264-0770

Emails

Contact Us

Websites

http://crossaniplaw.com