Rick D. Nydegger - Shareholder

Mr. Nydegger is a founding shareholder, and a former officer and managing director of the firm.  In the early years of his practice, he was engaged in trial practice, and assisted in successfully conducting several of the first major patent litigation matters handled by the Firm. Mr. Nydegger later developed an extensive prosecution practice, and is experienced in a variety of related intellectual property transactional matters, including preparation and drafting of opinions, licensing transactions, and conducting due diligence for the intellectual property portfolios of clients involved in early or later stage funding transactions, as well as various kinds of IP asset or corporate acquisition transactions. He currently manages many of the firm’s major clients in the electronic, software, information science, e-commerce and medical device technologies.  He has also served as a mediator and arbitrator in IP cases. Mr. Nydegger has worked closely with the U.S. Patent and Trademark Office in the development of several important policy initiatives over the years.  He participated in assisting PTO personnel with the drafting of several widely used Guidelines adopted by the U.S. Patent and Trademark Office for the use of its patent examining corp when conducting examination of software related inventions.  In July of 2003 he was appointed by the Secretary of the Department of Commerce to a three year term as Chair of the Patent Public Advisory Committee, which was created by statute in 1999 to advise the United States Patent and Trademark Office on matters concerning the “policies, goals, performance, budget and user fees of the USPTO with respect to patents.”  35 U.S.C. § 5(d).

 From 1989 to 1998, Mr. Nydegger served as an Adjunct Professor at the University of Utah’s S. J. Quinney Law School, and was recognized by the law school as an Honorary Alumnus in 2004.  Beginning in 1998, he was invited to serve on the adjunct faculty of Brigham Young University’s J. Reuben Clark Law School, where he helped to expand the school’s intellectual property curriculum.  He was made an honorary member of the Order of the Coif by the BYU Law School in 2003, and was recognized in 2005 as the BYU Law School’s Honored Alumnus of the Year.

 Mr. Nydegger is a well-respected authority in the field of patenting software, e-commerce and information science technology, and has lectured both nationally and internationally on that topic. He has published a number of articles, and has authored and co-authored several chapters in the treatise Electronic and Software Patents: Law and Practice (BNA Apr. 2000, 3d Ed. 2011).

 He served as the President of the AIPLA during 2003 – 2004, and has also served as a member of the AIPLA’s  Board of Directors, the Editorial Board of the AIPLA Quarterly Journal, Chair of the Mid-Winter Institute 2000,  Chair of the Electronic and Computer Law Committee, Chair of the Public Appointments Committee, and Chair of the Nominations Committee. In 2000 he was inducted as a Fellow of the AIPLA, one of twenty members to initially receive this honor for outstanding service.

Primary Practice Focus

• U.S. Prosecution of IP
  • Patent Prosecution, including Reissue and Re-examination Proceedings
  • Trademark Prosecution
  • Copyright Registrations
• International Prosecution of IP
  • Patent Prosecution
  • Trademark Prosecution

Other Practice Experience

• Appeals
  • Before the U. S. Supreme Court (Co-Author, Brief Amicus Curiae of the American Intellectual Property Lawyers Association, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005) (filed Jan. 24, 2005))
  • Before the Court of Appeals for the Federal Circuit and Other Regional Federal Circuit Courts of Appeal
  • Before the Patent Trial and Appeal Board of the U. S. Patent and Trademark Office
• Complex IP Litigation, Inter Partes Conflicts & Mediation and Arbitration
  • Arbitration
  • Mediation
  • U.S. Trademark Oppositions
  • European Patent and Trademark Oppositions
• Licensing, Other Transactional Work & Client Counseling
  • U. S. and Foreign Licensing of Intellectual Property Rights, Including Patents, Trademarks, Copyrights, Trade Secrets, and Know How
  • Employment Agreements & Invention Ownership
  • Non-Competition Covenants
  • Non-Disclosure Agreements
  • Assignments of Intellectual Property Rights
  • Patentability Opinions
  • Trademark Searches and Clearance Opinions
  • Patent Infringement Opinions
  • Due Diligence Investigations of IP Portfolios During Acquisition or Merger Transactions
  • Defensive Opinions of Non-infringement and Design Around Strategies

Technical Experience

• Electronics & Electrical Engineering
  • Integrated Circuit Design
  • Electrical & Electromechanical Systems
• Computer Systems, Software, E-Commerce, Business Methods & Information Technology
  • Hardware Systems
  • Software Systems and Architecture
  • E-Commerce Technologies and Business Methods
  • Internet Technologies
• Mechanics & Mechanical Engineering
  • Medical and Dental Devices
  • Exercise & Training Equipment
  • Sports Equipment
  • Manufacturing Equipment

Education

• J.D., cum laude, J. Reuben Clark Law School, Brigham Young University, 1977 (Honorary Member, Order of the Coif, 2002)
• B.S., cum laude, Brigham Young University, Electrical Engineering, 1974

Professional Admissions and Associations

• United States Supreme Court, 1990
• U.S. Circuit Court of Appeals, Fifth and Tenth Circuits, 1980
• U.S. Court of Appeals for the Federal Circuit, 1994
• U.S. district Court, Central District of Utah, 1977
• Utah State Bar, 1977
• Registered Patent Attorney, U.S. Patent and Trademark Office, 1977
• American Intellectual Property Law Association (AIPLA), 1984      
• American Bar Association, 1977

Other Information of Interest

• Recognized by the Managing Partners of the Top 30 Law Firms in Salt Lake as the Best Intellectual Property Lawyer, August 2003 Edition of Utah Business
• Best Lawyers in America, 1990 – present
• Chambers USA Band 1 Ranking, 2008 - present
• Who’s Who in American Law, 2000 – present
• Who’s Who in America, 2002 – present
• Who’s Who Legal: the International Who’s Who of Business Lawyers, 2005 – present; the International Who’s Who of Patent Lawyers, 2008 – present
• Guide To The World’s Leading Patent Law Practioners (Published by Managing Intellectual Property), 2007 – present

Second Language

• Portuguese

Community Involvement

Mr. Nydegger has been active in state legislative initiatives and local government matters, and in organizing and leading a number of charitable initiatives on behalf of the firm.