With more than a decade of law-firm and in-house experience, John’s practice includes all aspects of IP litigation, prosecution and appeals work, as well as IP-focused merger and acquisition agreements.
John 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. He has also earned victories on behalf of his clients at the PTAB and TTAB.
Before joining Sheridan Ross, John 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, John served as a law student clerk to the Honorable Arthur J. Gajarsa, U.S. Court of Appeals for the Federal Circuit. Before attending law school, John worked for Amgen, Inc. where he researched, developed and implemented new methods of manufacturing interleukin-1 receptor antagonist, used to treat rheumatoid arthritis.
University of Colorado (B.A., Dean’s List, Molecular Cellular Developmental Biology, 1999)
Franklin Pierce Law Center (J.D., magna cum laude, 2004)
- Intellectual Property in Employment
- Intellectual Property Litigation
- Patent Litigation
- Patent Office Post Grant Proceedings
- Patent Prosecution
- Technology Transactions and Licensing
- Trade Secrets and Confidentiality
- Life Sciences
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
Presentations and Publications:
- 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.
- Author: Untangling the Nanothreads Between the Enablement and Written Description Requirements, Nanotechnology Law & Business, March 2017.
- 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.