
John Heuton
OF COUNSEL
CONTACT
[email protected]
3333 Lee Parkway
Suite 460
Dallas, TX 75219
Phone: (214) 521-6400
Fax: (214) 764-8392
With over fifteen years of in-house and law firm experience, Mr. Heuton has represented a variety of individuals, start-ups, and Fortune 500 companies to implement litigation strategies to establish a strategic plan for meeting overall business goals and objectives. Prior to joining Charhon Callahan Robson & Garza, he worked for intellectual property boutique law firms in Manhattan and Denver. Mr. Heuton also gained valuable experience working in-house as intellectual property counsel for a large multinational telecommunications company, allowing him to see the legal challenges that businesses face through an internal lens. Today, he uses this valuable insight to offer clients a complete solution in order to implement intellectual property strategies in federal courts across the country and before the USPTO Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Mr. Heuton is a registered patent attorney.
Mr. Heuton served as law clerk to the Honorable Arthur J. Gajarsa at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. The Federal Circuit hears all appeals for claims of patent infringement in federal court, among other intellectual property related matters. Before law school, Mr. Heuton worked at Amgen, Inc. where he improved methods of manufacturing interleukin-1 receptor antagonist (IL-1RA) protein.
EDUCATION
J.D., Franklin Piece Law Center (now University of New Hampshire School of Law)
Magna Cum Laude (top 10%)
Law Review
Highest grades for Patent Law, Patent Practicing and Procedure, and Antitrust Law
B.A., University of Colorado, Boulder
Molecular Cellular Developmental Biology; minor Biochemistry
Dean’s List
PATENT LITIGATION
GLAXO GROUP LTD D/B/A GLAXOSMITHKLINE V. DR. REDDY’S LABORATORIES, LTD, (S.D.N.Y.)
represented plaintiff in Hatch Waxman patent litigation pertaining to the migraine medication Imitrex®
NANO-PROPRIETARY, INC. V. CANON INC. AND CANON U.S.A., INC., (W.D. TEX.)
represented defendants through jury trial resulting in a verdict awarding zero dollars in damages to plaintiff
NANO-PROPRIETARY, INC. V. CANON INC., (5TH CIR.)
represented appellee and succeeded in having the jury’s verdict of no damages affirmed and the trial court’s grant of summary judgment reversed in its entirety resulting in a complete victory on behalf of the client
PFIZER, INC. V. TEVA PHARMACEUTICALS U.S.A., INC., (D.N.J.)
represented plaintiff in Hatch Waxman patent litigation where we succeeded in halting sales of a generic quinapril product marketed by generic pharmaceutical manufacturers
PFIZER, INC. V. TEVA PHARMACEUTICALS U.S.A., INC., (FED. CIR.)
represented appellant and persuaded the Federal Circuit to affirm the preliminary injunction granted by the D.N.J.
SP TECHNOLOGIES V. CANON INC. (E.D.N.Y.)
represented defendant in patent infringement action, which settled on terms favorable to our client
TYCO HEALTHCARE GROUP LP, ET AL. V. MUTUAL PHARM CO., ET AL., (D.N.J.)
represented plaintiffs asserting patent infringement under the Hatch Waxman Act
AIP ACQUISITION LLC V. LEVEL 3 COMMUNICATIONS, INC., (E.D. TEX.)
managed patent litigation pertaining to routing telecommunication traffic according to economic considerations and assisted in prior art searches and drafting of inter partes review
C2 COMMUNICATIONS TECHS., INC. V. LEVEL 3 COMMUNICATIONS, LLC, ET AL., (E.D. TEX.)
managed patent litigation pertaining to VoIP technology and served as the corporate representative for Level 3 during jury trial
GLOBETECTRUST LLC V. LEVEL 3 COMMUNICATIONS, LLC, (D. DEL.)
managed patent litigation pertaining to “dead reckoning” routing of data packets
LEVEL 3 COMMUNICATIONS, LLC ET AL. V. LIMELIGHT NETWORKS, INC., (E.D. TEX.)
managed patent litigation pertaining to content delivery network (CDN) including overseeing large e-discovery review and production and responding to discovery requests
RATES TECH. INC. V. LEVEL COMMUNICATIONS, INC. AND GLOBAL CROSSING LTD., (S.D.N.Y)
managed patent litigation and successfully obtained settlement on terms favorable to Level 3
TIERRA TELECOM, INC. V. LEVEL 3 COMMUNICATIONS, INC., ET AL., (E.D. VA.)
managed patent litigation including collection of responsive e-discovery and preparation of fact witnesses
ASPEN ROOFING, INC. V. ASPEN CONTRACTING, INC., CIV. (D. COLO.)
counsel for plaintiff asserting unfair competition under the Lanham Act and violations under the C.C.P.A. 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 and obtained favorable settlement
BYLER V. ELICIT LIFE LLC ET AL., (D. COLO.)
counsel for plaintiff trademark and copyright holder
LEVEL 3 COMMUNICATIONS, LLC ET AL. V. LIMELIGHT NETWORKS, INC., (E.D. TEX.)
managed patent litigation pertaining to content delivery network (CDN) including overseeing large e-discovery review and production and responding to discovery requests
CQG, INC. AND CQG, LLC V. CHART TRADING DEV., LLC, (PTAB)
counsel for petitioner requesting review under the transitional program for covered business method patents of the AIA and obtaining an Order holding that the challenged claims unpatentable
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
IN RE CERTAIN OVERFLOW AND DRAIN ASSEMBLIES FOR BATHTUBS AND COMPONENTS THEREOF, INV. (USITC)
counsel for complainant and successfully instituting an investigation pursuant to 19 U.S.C. § 1337
INSPIRE COMMERCE, INC V. ENVISTA INTERACTIVE SOLUTIONS LLC D/B/A ENSPIRE COMMERCE, (D. COLO.)
counsel for plaintiff asserting trademark infringement and seeking cancellation of competitor’s trademark
LEVEL TERRAIN, LLC V. AMAZON.COM, INC. ET AL., (D. COLO.)
counsel for Level Terrain, LLC in patent infringement action against largest on-line retailer and obtained settlement favorable to plaintiff patent holder
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 and the action was resolved through settlement on terms favorable to Defendants
MEISINGER USA, LLC V. BRASSELER U.S.A. INC., (D. COLO.)
local counsel for defendants and obtained settlement favorable to defendants
NO-BULL ENT., LLC V. ZB PRODS, LLC, (W.D. MICH.)
counsel for plaintiff asserting patent infringement against competitor and obtaining settlement on terms favorable to client
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., (TTAB)
counsel for petitioner clothing retailer in successful cancellation action against the mark RYDIN DIRTY
RE/MAX LLC V. GRP REALTY, LLC ET AL., (D. COLO.)
counsel for plaintiff trademark holder
RE/MAX LLC V. QUALITY LIVING, LLC ET AL., (D. COLO.)
counsel for plaintiff trademark holder and obtained treble damages and attorneys’ fees
SWIFT DISTRIBUTION, LLC V. STARIN MARKETING, INC., (D. COLO.)
counsel for plaintiff asserting theft of trade secrets, among other claims
TERUMO BCT, INC. V. NOBLE HOUSE GROUP PARTY LTD., (PTAB)
counsel for petitioner Terumo BCT, Inc., a global leader in blood component and cellular technologies, to earn a favorable inter partes review (IPR) decision from the Patent Trial and Appeal Board (PTAB)
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, INC. V. FEDERAL PROCESS CORP., ET AL., (W.D. TENN.)
counsel for plaintiff asserting patent infringement pertaining to plumbing technology
WCM INDUSTRIES, INC. V. IPS CORP., ET AL., (W.D. TENN.)
counsel for plaintiff asserting patent infringement and obtaining a jury verdict finding willful infringement and awarding treble monetary damages and attorneys’ fees
WCM INDUSTRIES, INC. V. LEGEND VALVE & FITTING, INC., (D. COLO.)
counsel for plaintiff patent holder and obtained settlement favorable to the client
WRIGHT & MCGILL CO V. ACTIVE OUTDOORS LLC ET AL., (D. COLO.)
counsel for plaintiff and counterclaim defendant seeking declaratory judgment of patent and trade dress invalidity and non-infringement pertaining to outdoor equipment products which settled on favorable terms
TACO BELL IP HOLDER, LLC V. ILLEGAL PETE'S, LLC, (TTAB)
counsel for trademark applicant restaurateur in trademark opposition proceeding which settled on favorable terms
PERRY STREET SOFTWARE, INC. V. JEDI TECHNOLOGIES, INC., (S.D.N.Y.)
counsel for plaintiff and counterclaim defendant seeking declaratory judgment of patent invalidity and non-infringement pertaining to mobile dating applications
BRIGHT DATA LTD. V. CODE200, UAB ET AL., (E.D. TEX.)
counsel for defendants against claims of patent infringement pertaining to proxy server technologies
BRIGHT DATA LTD. V. TESO LT, UAB, ET AL., (E.D. TEX.)
counsel for defendants against claims of patent infringement pertaining to proxy server technologies
SABLE NETWORKS, INC. AND SABLE IP, LLC V. CLOUDFLARE, INC., (W.D. TEX.)
counsel for defendant against claims of patent infringement pertaining to telecommunication buffering technologies
ADMISSIONS AND HONORS
States of Colorado and New York
US Court of Appeals for the 5th Circuit, the 10th Circuit, the Federal Circuit, and various district courts across the US
United States Patent and Trademark Office
Past Board Member, the Colorado Intellectual Property American Inn of Court