John C. Heuton
Associate
(720) 376-6911

390 Interlocken Crescent
Suite #890
Broomfield, CO 80021 

With more than a decade of law-firm and in-house experience, Mr. Heuton’s practice includes all aspects of IP litigation, prosecution and appeals work, as well as IP-focused merger and acquisition agreements. 

Mr. Heuton has represented clients in federal courts across the country in patent, trademark and contract disputes. He prepares and prosecutes patent and trademark applications and appeals covering diverse technologies including medical device, biotechnology and telecommunications. Mr. Heuton has also earned victories on behalf of his clients at the PTAB and TTAB.

Prior to joining Sheridan Ross, Mr. Heuton was in-house IP counsel at Level 3 Communications where he managed patent litigations, procured patent rights, managed an international trademark portfolio, conducted due-diligence projects, and negotiated vendor and sales agreements. He also worked at the IP law firm, Fitzpatrick, Cella, Harper & Scinto in Manhattan.

During law school, Mr. Heuton served as a student-law clerk to the Honorable Arthur J. Gajarsa, U.S. Court of Appeals for the Federal Circuit. Before attending law school, Mr. Heuton worked for Amgen, Inc. where he researched, developed and implemented new methods of manufacturing interleukin-1 receptor antagonist, used to treat rheumatoid arthritis.

Trade Secrets and Confidentiality
Technology Transactions and Licensing
Pharmaceuticals
Patent Prosecution
Patent Litigation
Patent Office Post-Grant Proceedings
Life Sciences
Intellectual Property Litigation
Intellectual Property in Employment

University of Colorado (B.A., Dean's List, Molecular Cellular Developmental Biology, 1999)

Franklin Pierce Law Center (J.D., magna cum laude, 2004)

Colorado, 2009

New York, 2005

United States Patent and Trademark Office, 2008

United States District Court for the Eastern District of New York, 2006

United States of District Court for the Southern District of New York, 2006

United States Court of Appeals for the Federal Circuit, 2005

Colorado IP Inn of Court, Board Member, 2013 to present

Author: Neither the Well-Known Marks Doctrine nor KORUS Provides Basis for a Prior Use Claim, International Trademark Association’s INTA Bulletin, Feb. 15, 2018.

Jury Finds Willful Infringement in IP Trial, Law Week Colorado, Nov. 16, 2015, read full article

Wright & McGill v. Active Outdoors LLC et al. (D. Colo.) – Counsel for Plaintiff seeking declaratory judgment of patent and trade dress invalidity and non-infringement pertaining to outdoor equipment products.

Inspire Commerce, Inc. v enVista Interactive Solutions LLC dba Enspire Commerce et al. (D. Colo.) – Counsel for Plaintiff asserting trademark infringement and seeking cancellation of competitor’s trademark.

Aspen Roofing, Inc. v. Aspen Contracting, Inc. (D. Colo.) – Counsel for Plaintiff asserting unfair competition under the Lanham Act and violations under the C.C.P.A, among other claims.

Litens Automotive v. Zen S.A. and Zen North America Corp. (S.D. Fla.) – Counsel for Defendants against claims of patent infringement relating to overrunning alternator decoupler pulleys. Defendants also asserted a patent misuse affirmative defense.  The action was resolved through settlement on terms favorable to Defendants.

Oldcastle Precast, Inc. v. Jensen Enterprises, Inc., d/b/a Jensen Precast (E.D. Cal.) – Counsel for Plaintiff asserting claims of patent infringement against a competitor in the precast concrete industry. The action resolved through settlement on terms favorable to Plaintiff.

RD Fashion Group LLC v. Joseph McEvoy d/b/a Ridin Dirty Inc. (T.T.A.B.) – Represented clothing retailer in successful cancellation action against the mark “RYDIN DIRTY.”

Futurm Communications LLC v. Adaptive Communications LLC et al. (Jeff. Cty. Colo.) – Counsel for Defendant against claims of trade secret misappropriation and breach of contract, among other claims.

Austin Fresh Burger Bar Concepts LLC v. 5280 Sliders LLC et al. (D. Colo.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

WCM Industries, Inc. v. Danco, Inc. (D. Colo.) – Counsel for Plaintiff asserting patent infringement pertaining to plumbing technology.

WCM Industries, Inc. v. BlueVue, Inc. (D. Colo.) – Counsel for Plaintiff asserting patent infringement pertaining to plumbing technology.

WCM Industries v. IPS Corp. (W.D. Tenn.) — Trial counsel for plaintiff in a patent infringement action involving multiple patents related to bath waste and overflow products. Following two-week jury trial, received a jury verdict in favor of plaintiff on all claims asserted, including a finding of willful infringement by defendant. Successfully defended against counterclaims of invalidity and non-infringement. Court granted request to enhance the jury’s damage award due to willful infringement.  Court found that: “based on the egregious nature of IPS’s conduct, that treble damages are appropriate.” Court trebled amount to more than $4.1 million.

WCM Industries, Inc. v. Federal Process Corporation, et al. (W.D. Tenn.) – Counsel for Plaintiff asserting patent infringement pertaining to plumbing technology.

WCM Industries, Inc. v. Federal Process Corporation, et al. (U.S. ITC) – Counsel for Plaintiff asserting patent infringement pertaining to plumbing technology.

WCM Industries, Inc. v. Legend Valve & Fitting, Inc. (D. Colo.) – Counsel for Plaintiff asserting trade dress infringement and unfair competition.

WCM Industries, Inc. v. The Keeney Manufacturing Company, et al. (W.D. Tenn.) – Counsel for Plaintiff asserting patent infringement pertaining to plumbing technology.

RE/MAX, LLC v. Shenzhen Remax Co., Ltd. et al. (D. Colo.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

RE/MAX, LLC v. Quality Living, LLC et al. (D. Colo.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

RE/MAX, LLC v. Macahon and Property Advisors, Ltd. (N.D. Ill.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

RE/MAX, LLC v. American Property Services Co. dba America’s 1st Realty, et al. (M.D. N.C.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

RE/MAX, LLC v. Property Professionals of Tampa Bay, Inc. et al.  (M.D. Fla.) – Counsel for Plaintiff asserting trademark infringement and unfair competition.

RE/MAX, LLC v. GRP Realty, LLC et al.  (D. Colo.) – Counsel for Plaintiff asserting trademark infringement and breach of contract.

Symbology Innovations, LLC v. RE/MAX, LLC (E.D. Tex.) – Counsel for Defendant against claims of patent infringement.

Creative Stone Mfg., Inc. v. Genstone Enterprises, LLC (C.D. Cal.) – Counsel for Defendant in action pertaining to trademark infringement.

Byler v. Elicit Life LLC (D. Colo.) – Counsel for Defendants against claims of inappropriate use of a common law trademark.

Swift Distrib., LLC v. Starin Mktg. Inc. (D. Colo.) – Counsel for Plaintiff asserting breach of contract.

 

In-House Litigation Experience

Level 3 Communications, LLC  v. Limelight Networks (E.D. Va.) – In-house counsel for Plaintiff asserting claims of patent infringement pertaining to content delivery networks.

C2 Communications Technologies Inc. v. Level 3 Communications, LLC, et al. (E.D. Tex.) – In-house counsel for Defendant against claims of patent infringement pertaining to VOIP networks.

AIP Acquisition LLC v. Level 3 Communications LLC (D. Del.) – In-house counsel for Defendant against claims of patent infringement pertaining to connectivity between circuit-switched and packet-switched networks.

Rates Technology Inc. v. Level 3 Communications, LLC (S.D.N.Y.) – In-house counsel for Defendant against claims of patent infringement pertaining to VOIP networks.

Tierra Telecom, Inc. v. Level 3 Communications, LLC, et al. (E.D. Va.) – In-house counsel for Defendant against claims of patent infringement pertaining to VOIP networks.

 

Prior Law Firm Experience

Nano-Proprietary, Inc. v. Canon Inc. (5th Cir.) – Counsel for Appellant successfully obtaining reversal of summary judgment at district court level.

Nano-Proprietary, Inc. v. Canon Inc. and Canon U.S.A., Inc.  (W.D. Tex.) – Counsel for Defendants obtaining jury verdict awarding zero dollars in damages in a patent licensing dispute involving flat-panel television technology.

GlaxoSmithKline v. Dr. Reddy’s et al. (D. Del.) – Counsel for Plaintiff in Hatch-Waxman patent litigation pertaining to migraine treatment Imitrex® (sumatriptan).

Pfizer Inc., LLC v. Ranbaxy Pharmaceuticals, Inc. et al. (Fed. Cir.) – Counsel for Appellee successfully obtaining affirmance of preliminary injunction granted by district court.

 

Pfizer Inc., LLC v. Ranbaxy Pharmaceuticals, Inc. et al. (D.N.J.) – Counsel for plaintiff obtaining preliminary injunction halting competitor from entering market for angiotensin converting enzyme (“ACE”) inhibitors such as Accupril® (quinapril).