John R. Posthumus

John R. Posthumus

 

Posthumus focuses his practice on complex intellectual property litigation for high profile clients. John has represented numerous clients in a wide range of cases involving patent infringement claims on a variety of technologies and products including computer hardware and software, telecommunications, consumer electronics, the Internet, wireless technologies, e-commerce, and automotive electronics. John has experience in all phases of patent litigation, including claim construction (Markman Hearings), summary judgment, and trial.

John has also represented numerous clients in trademark and copyright infringement actions, trademark dilution actions, cyber squatting actions, and trademark opposition and cancellation proceedings. He has been involved with more than 30 consumer surveys conducted for litigation purposes, and he is also knowledgeable on trademark dilution law. John has been appointed to three consecutive two-year terms on the International Trademark Association's (INTA) Dilution and Well-Known Marks Committee and, in 2007, was appointed to a special INTA task force which harmonized the Model State Trademark Bill with the Federal Trademark Dilution Revision Act.

In every litigation, John works closely with clients to develop a cost-effective litigation strategy and management plan to achieve the client's objectives. He has worked in front of federal district courts throughout the country, and litigated matters before the Federal Circuit Court of Appeals and the Tenth Circuit Court of Appeals; and U.S. District Courts for the Districts of Colorado, Southern District of California, Central District of California, Northern District of California, District of Columbia, Delaware, Middle District of Florida, Northern District of Georgia, Northern District of Illinois, Northern District of Indiana, Eastern District of Michigan, District of Massachusetts, New Mexico, Eastern District of New York, Southern District of New York, Northern District of Oklahoma, Oregon, Southern District of Texas, Utah, Eastern District of Virginia, Western District of Washington, and Wyoming.

John is also licensed to practice in the U.S. Patent Office. Early in his career, he prepared and prosecuted over 100 patent applications in the areas of computer hardware and software, telecommunications, consumer electronics, photography and business methods.

John has received the highest AV® rating for legal skills, integrity, and professional excellence under the Martindale-Hubbell Peer Review Rating system, and is an active member of both the Colorado Bar Association's Patent, Trademark and Copyright section and the International Trademark Association. He is also a frequent speaker on intellectual property issues.

John received his Juris Doctorate in 1991 from the Franklin Pierce Law Center. Prior to law school, in 1987, he earned a Bachelor of Science degree in electrical engineering and computer science, specializing in digital computer design. John's senior project included designing and building a parallel processing computer. In 1987, John also obtained a Bachelor of Science degree in business administration, with an emphasis in corporate finance.

Areas of Concentration

· Intellectual property litigation (including patents, trademarks, unfair competition, false/misleading advertising, copyrights and trade secrets)

· Trial practice

· Attorney/client privilege issues and work product discovery issues

· Electronic discovery

· Advertising and trademark clearance

· Technology licensing

· Media and entertainment

Significant Representations

· Shane Co. v. George Thompson Diamond Company, (D.Colo. 2007) - Defending George Thompson Diamond Company in a trademark infringement suit; case pending.

· Kimpton Hotel & Restaurant Group, LLC v. Monaco Inn et al. (D.Colo. 2007) - Representing Kimpton Hotels in a trademark infringement suit involving the HOTEL MONACO trademark; case settled.

· Amerimax Real Estate Partners, Inc. v. RE/MAX International et al., (N.D.Ill . 2006) Representing RE/MAX in a trademark infringement suit; case pending.

· RE/MAX International v. Equity Max, Inc., et. al. (S.D.CAL. 2006) - Representing RE/MAX in a trademark infringement suit; case pending.

· Rates Technology Inc. v. Time Warner Telecom Inc. (E.D.NY 2006) - Defended Time Warner in patent infringement suit involving least cost routing patents; case dismissed.

· Omega Patents, LLC. v. Directed Electronics, Inc. (M.D.FL. 2005) - Defended Directed Electronics in a patent infringement suit involving interface modules for automotive convenience systems. Case settled after a two and one half week jury trial; terms are confidential.

· Adams v. Gateway, Inc. (D.Utah 2002) - Defended Gateway in a patent infringement suit involving floppy disk controller technology. Case settled on the first day of trial; terms are confidential.

· RE/MAX v. LendingTree (D.Colo. 2005) - Represented RE/MAX in a trademark infringement suit. RE/MAX charged that LendingTree referred customers to non-RE/MAX agents even though a request specifically had been made for a RE/MAX agent. Case settled; terms are confidential.

· Pannonia Farm, Inc. v. RE/MAX (D.D.C. 2005) - Defended RE/MAX in a copyright infringement suit involving the copyrights to Sherlock Holmes characters. Case involved a RE/MAX commercial shown nationally. RE/MAX prevailed on motion to dismiss No. 01-1697, 2005 WL 670193 (D.D.C. March 21, 2005).

· Represented Pulitzer Prize winning Author in an agreement that led to the filming of the movie "Brokeback Mountain" (2004).

· Wal-Mart Stores, Inc. v. Kmart Corporation (D.DE. 2003) - Represented Wal-Mart in a patent infringement suit involving bagging carousels. Case settled favorably to Wal-Mart; terms are confidential.

· Donchez v. Coors Brewing and Foote, Cone & Belding Advertising (D.Colo. 2003) - Defended Coors and FCB against claims of trademark infringement for use of Beerman character in advertising.

· RE/MAX International v. CBS and Viacom (D.Colo. 2002) - Represented RE/MAX in a trademark infringement suit involving the unauthorized use of RE/MAX trademarks by CSI television show; Case settled; terms are confidential. Vineland Corp. v. Confre Cellars (D.Colo. 2002) - Represented Vineland in a trademark infringement suit. Case settled; terms are confidential.

· EchoStar Communications v. Gemstar/TV Guide (D.Colo.; W.D.N.C. 2002) - Co-counsel with several firms in defense of antitrust claims involving alleged patent misuse and counter-claims of patent infringement. Technology involved interactive programming guides for cable and satellite technologies.

· RE/MAX International v. Google (D.Colo. 2000) - Represented RE/MAX in a successful litigation against Google. Case settled; terms are confidential.

· US WEST v. Hatten Communications (TTAB 2002) - Litigated opposition proceeding for Qwest/US WEST in US Trademark Office to prevent registration of the US East trademark. After oral argument before the TTAB.

· US WEST, Inc. v. US Web, Inc. (D.Colo. 2000) - Successful litigation brought by Qwest/US WEST against US Web for trademark infringement and dilution. After two years of litigation, US WEST obtained a settlement where US Web selected a different mark.

· RE/MAX International v. eBay (D.Colo. 2000) - Represented RE/MAX in a successful litigation against eBay for a national commercial showing RE/MAX's trademarks and trade dress. eBay agreed to cease use of the commercial.

Professional & Community Involvement

· Member, Colorado Bar Association

- Officer, Intellectual Property Section, 2008, 2009

· Member, International Trademark Association

- Part of team that drafted the Amicus Curiae Brief for INTA in Starbucks v. Wolfe's, 08-3331, (2nd Cir 2008)

- Member, Dilution and Well-Known Marks Committee - North America Subcommittee, 2008-2009

- Appointed to Special Task Force that Harmonized the Model State Trademark Bill with the Federal Trademark Dilution Revision Act, 2007

- Member, Dilution & Well-Known Marks Committee -- Defenses to Dilution Subcommittee, 2004-2005

- Member, Dilution and Well-Known Marks Committee -- North America Subcommittee, 2006-2007

· Member, Board of Directors, Legal Center for People with Disabilities and Older People

Awards & Recognition

· AV® Peer Review Rated

· Listed, Chambers & Partners USA Guide, an annual listing of the leading business lawyers and law firms in the world, 2009 edition

· Selected by Super Lawyers magazine and Colorado Super Lawyers magazine, 2009

Previous Employment

· Partner, LeBoeuf, Lamb, Greene & MacRae, LLP, 2000-2003

· Partner, Holme, Roberts & Owen, 1997-2000

· Associate, Sheridan, Ross & McIntosh, 1991-1997

Articles, Publications, & Lectures

Lectures

· Presenter, "Protecting Innovation in the Changing World of IP," AICPA National CFO Conference, May 2009

· Panelist, "The Realities of Patent IP Litigation," Silicon Flatirons, Evaluating Software Patents Conference, University of Colorado Law School, March 2009

· Presenter, "IP Issues for Mid-Cycle Companies," CLE Presentation to the Boulder County Intellectual Property Section, May 2008

· Panelist, "The Uses and Abuses of Intellectual Property," Silicon Flatirons Innovation, Intellectual Property and Entrepreneurship in the Information Industries Conference, University of Colorado Law School, March 2008

· Presenter, "IP Issues for Mid-Cycle Companies," CLE Presentation to 5th Annual Rocky Mountain Intellectual Property & Technology Institute, May 2007

· Presenter, "Application of the Attorney-Client Privilege and Work Product Doctrine in Corporate Legal Departments," CLE Presentation to Clients, 2005

· Presenter, "Trademarks, Advertising & Search Engines," CLE Presentation to 6th Annual Business Law Institute, 2005

· Guest Instructor, "Licensing Law," University of Denver Law School, Spring 2004

· Presenter, "Legal Department Communications and Record Retention," CLE Presentation to Clients, 2003

Miscellaneous

· Quoted, "Let's Get Ready to RRRUMBLE!," Denver Post, March 27, 2009

· Quoted, "Bilski Ruling in Patent Case Tough for Financial Businesses," Denver Business Journal, November 7, 2008

· Featured, "Protecting Great Ideas," Denver Business Journal, October 16, 2008

· Quoted, "Autonation's 'GO' faces legal challenge," Denver Business Journal, July 20, 2007

· Host, "Trademark Dilution Revision Act," International Trademark Association Denver Roundtable, April 2007

Articles

· Author, "A Patent Dilemma: The issue of patenting software in the EC," Tornado Insider, November/December 2001, No. 31