Overview

Rick D. Nydegger is registered to practice before the U.S. Patent and Trademark Office, and is admitted to the U.S. Supreme Court, the Federal Circuit Court of Appeals, and the Utah Supreme Court. He has extensive experience in the prosecution of electronic, software, information science, e-commerce technologies and medical device technologies, and represents many of Workman Nydegger’s major clients in these areas. He assisted in litigating many of the early patent litigation cases handled by the Firm. He has served as a mediator and also as an arbitrator in a number of major patent cases. He has extensive licensing experience, and frequently counsels clients in the areas of offensive and defensive IP portfolio management, due diligence for IP asset acquisitions and mergers. Mr. Nydegger is nationally known for his work leading several major IP associations (including the American Intellectual Property Law Association, the National Council of Intellectual Property Law Associations, and the National Inventors’ Hall of Fame).

He is also well known for his work with the U. S. Patent Office in assisting in the development of policy and other initiatives, having served as Chair of the Patent Public Advisory Committee by appointment of the Secretary of the Department of Commerce. He also served as an adjunct professor of Intellectual Property for over a decade, and has frequently lectured and published a number of articles and other writings in the field of Intellectual Property. Mr. Nydegger has been the recipient of numerous awards and recognitions in the field of Intellectual Property.

Experience

Experience
  • 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 has worked closely with the U.S. Patent and Trademark Office (USPTO) in the development of several important policy initiatives over the years. He assisted with the drafting of several widely used Guidelines adopted by the USPTO for the use of its patent examining corp when conducting examination of software related inventions. In July 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 U.S. 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).
  • Mr. Nydegger has been a frequent spokesman for the American Intellectual Property Law Association (comprised of some 17,000 private and corporate intellectual property practitioners) on legislative and regulatory developments. He was counsel of record and co-author of AIPLA’s amicus brief in Metro-Goldwyn-Mayer Studios Inc., et al. v. Grokster, LTD, et al. (U.S. Sup. Ct. No. 04-480, 6/27/05). He was the principal author of the AIPLA’s response to the Commissioner’s Request for Comments on Computer-Related Inventions (1994), its amicus brief in In re Beauregard (Fed. Cir. 1995), and its response to the European Patent Commission’s Green Paper Requesting Comments On the Patentability of Computer Software in the European Patent Office (1997). He served as spokesman for the AIPLA on the USPTO’s Roundtable On Business Method Patents (1999) and was asked to lead a special task force of the AIPLA in working with the USPTO on the development of its 21st Century Strategic Plan. He served as the President of the AIPLA during 2003 – 2004, and in 2000 he was inducted as a Fellow of the AIPLA, one of 20 members to initially receive this honor for outstanding service.

Education

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, Electrical Engineering Brigham Young University, 1974

Admissions

Admissions
  • Registered Patent Attorney, U.S. Patent and Trademark Office, 1977
  • Utah State Bar, 1977 – Present
  • American Bar Association, 1977 – Present
  • Federal Circuit Bar Association, 1982 – Present
  • United States Supreme Court, 1990
  • U.S. Court of Appeals for the Federal Circuit, 1994
  • U.S. Circuit Court of Appeals, Fifth and Tenth Circuits, 1980
  • U.S. District Court, Central District of Utah, 1977
  • Utah State Supreme Court, 1977

Achievements

Achievements
  • Listed in The Best Lawyers in America©, 1990 – 2017
  • The Best Lawyers in America©, “Lawyer of the Year” – Patent Law for Salt Lake City, 2014
  • 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;
  • International Who’s Who of Patent Lawyers, 2008 – present
  • Guide To The World’s Leading Patent Law Practitioners (Published by Managing Intellectual Property), 2007 – present
  • Fortune Magazine – Listing of Top Rated Lawyers in Intellectual Property, 2013
  • InterContinental Finance Magazine’s Top 500 Lawyers in the World, 2013 – present
  • Listed In Intellectual Asset Magazine’s Patent 1000 of Top IP Attorneys World Wide, 2012 – present
  • Listed in Expert Guides – Patents, 2015 – present
  • Martindale-Hubbell “AV” Preeminent® Peer Review Rating, 1984 – present
  • Mountain States Super Lawyers, 2007 – present
  • “Utah Legal Elite”, Utah Business Magazine, 2003 – present
  • Alumnus of the Year, Brigham Young University J. Reuben Clark law School, 2005
  • Honorary Alumnus of the Year, University of Utah S. J. Quinney Law School, 2004
  • 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 Magazine
  • Honorary Member, J. Reuben Clark Law School Chapter of the Order of the Coif, 2002
  • Trustees’ Full Four-Year Academic Undergraduate Scholarship, Brigham Young University, 1967 – 68, 1970 – 73
  • Eta Kappa Nu Honor Society for Engineers, 1973
  • Sterling Scholar in Mathematics, Hillcrest High School, 1967

Community Involvement

Community Involvement
  • Economic Development Corporation of Utah (Board of Trustees, 2008 – 2009)
  • Utah State Centennial Commission (Chair, Lawyers Centennial Committee, 1996 – 1997)
  • United Way
  • The Children’s Center
  • BYU Law School Alumni Association
  • Collegiate Inventors’ Competition, National Inventors Hall of Fame
  • Camp Invention, National Inventors Hall of Fame
  • Primary Children’s Medical Center
  • Salt Lake County Sheriff’s Association
  • Utah Food Bank
  • The Road House

Memberships

Memberships
  • American Intellectual Property Law Association (AIPLA), 1984 – present (President, 2003– 2004)
  • Patent Public Advisory Committee (Chair) (created by the Patent and Trademark Office Efficiency Act of 1999, to advise the U. S. Patent and Trademark Office on matters relating to the USPTO’s policies, goals, performance and budget
  • National Inventors Hall of Fame (President, 2003 – 2005)
  • National Council of Intellectual Property Law Association (President, 2000 – 2001)
  • American Intellectual Property Law Education Foundation (Member, Board of Trustees, 2000-2003)
  • United States Supreme Court Historical Society (Trustee)

Speaking Engagements

Speaking Engagements
  • “Empowering Innovation Through Enhanced Patent Quality,” USPTO Symposium, Alexandria, VA April 2016
  • “The Other Worlds: CBM and PGR Patent Office Trial Proceedings,” Practicing Law Institute’s Patent Office Trial Proceedings Under the AIA, San Francisco, CA, March 2016
  • “The USPTO 21st Century Strategic Plan: Review and Update” and “User Views On the New International Preliminary Report On Patentability Procedure (Merger of Chapters I and II): Advantages, Problems and Future Opportunities,” both presented at “Colloquium on Reform of the Patent Cooperation Treaty: Where Are We, and Where Are We Going?” Sponsored by The American Intellectual Property Law Association (AIPLA) and The Federation Internationale des Conseils en Propriete Industrialle (FICPI), Nice, France, April 8 – 9, 2003
  • Participant (by invitation of the doj/ftc) in the DOJ/FTC hearings on “Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy” Washington, D.C. 2002
  • “B2B, B2C and Other ‘Business Methods’: To Be or Not To Be Patent Eligible?” International Chamber of Commerce, Fifth International Symposium: “Protecting IP Assets In the New Millennium, Paris, France, February 2001
  • “Advanced Electronic and Software Patent Practice Series: Drafting E-Commerce and Software Claims in View of Current Claim Interpretation Cases,” AIPLA Tri-City Program (Washington, DC, New Orleans and San Francisco), April – June 2000
  • “Understanding the American Inventors’ Protection Act of 1999: Inter Parties Reexamination,” Practicing Law Institute, San Francisco, CA, March 2000
  • Panelist (by invitation of the Assistant Sec. of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office), USPTO Roundtable On Patentability of Business Method Patents, Washington, D.C., 2000
  • “Working With IP Counsel to Enhance the Asset Value of An IP Portfolio for A Small Business Enterprise,” Rensselaer Polytechnic Institute, October 1999
  • “Understanding Litigation Concerns When Enforcing ‘Means or Step Plus Function’ Claims,” Patent Academy of the United States Patent and Trademark Office, August 1999
  • “Taking It To the Bank:   The Impact of State Street Bank on Protecting E-Commerce Software,” AIPLA Spring Meeting, Chicago, Ill., April 1999
  • “Drafting Means-Plus-Function Claims,” Cleveland Intellectual Property Law Association, Fall 1998
  • “Drafting Means-Plus-Function Claims,” Advanced Seminars on Claim Drafting, AIPLA Annual Meeting, Washington, D.C., October 1998
  • “Claim Drafting In the Electronics, Computer, and Software Arts,” Advanced Electronics and Computer Software Patent Practice Seminar, AIPLA Electronics and Computer Law Committee Tri-City Program (New York, Houston and San Diego), May – June, 1998
  • “Counseling the Small Business Enterprise On Intellectual Property Issues,” the APEC Intellectual Property Rights Business Conference on Intellectual Property Rights and Their Development in the APEC Region, organized by the Japan Institute of Invention and Innovation (JIII) and sponsored by the Japanese Patent Office, Osaka, Japan, October 1997
  • “Software Patent Protection,” co-sponsored by Delta Light & Acoustic and the Danish Patent Office, Copenhagen, Denmark, September 1997
  • “19th Mid-Winter Institute: The Law of Computer-Related Technology IV,” American Intellectual Property Law Association, January 1996
  • PTO Day, Intellectual Property Owners and U.S. Patent and Trademark Office, 1994 Annual Meeting, Washington, D.C.
  • Patent Program, ABA Section of Intellectual Property Law, Spring 1994, Washington, D.C.
  • “The Law of Computer Related Technology, American Intellectual Property Law Association, La Quinta, CA, 1992 Mid-winter Meeting
  • “Significant Developments In Computer Law, University of Dayton Law School, 1991
  • “Basic Computer and Electronic Practice,” 1990 Tri-City (N.Y., Chicago, L.A.) CLE Program of the AIPLA Electronic and Computer Law Committee, May – June, 1990
  • “Electronic and Computer Patent Law,” Practicing Law Institute, 1990 (NYC, NY)
  • “Computer Law – Best Mode,” American Intellectual Property Law Association, Washington, D.C., 1990 Annual Meeting

Publications

Publications

Scholarly Articles/Publications

  • “B2B, B2C and Other ‘Business Methods’: To Be Or Not To Be Patent Eligible?” University of Baltimore Intellectual Property Law Journal, Vol. 9, No. 2 (2001)
  •  Co-Author of Chapter 9 “Functional Claim Drafting in the Electronics, Computer and Software Arts,” and Co-Author of Chapter 14 “Design Around Techniques,” Electronic and Software Patents: Law and Practice (BNA Apr. 2000, 3rd Ed. (AIPLA) 2015)
  • “Traversing the Section 112, Paragraph Six Field of Land Mines: Does In re Donaldson Adequately Defuse the Problems Stemming From Lack of Consistency in and Among the PTO and the Federal Circuit in Construing Means-Plus-Function Claims?” Journal of the Patent and Trademark Office Society (Part I) Vol. 76, No. 12 (1994) (Part II) Vol. 77, No. 1 (1995)
  • “Practical and Legal Considerations In Drafting A U.S. Patent Application for Computer-Related Inventions,” Rutgers Computer and Technology Law Journal, Vol. 18, No. 1 (1992)

 

Authorship of Other Professional Writings

  • 2005, Counsel of Record and Co-author, Brief Amicus Curiae of the American Intellectual Property Law Association in Metro-Goldwyn-Mayer Inc., et al. v. Grokster, LTD, et al. (545 U.S. 913 (2005))
  • 2002 – 2003, Lead the AIPLA Task Force on Patent Quality, which assisted the U. S. Patent and Trademark Office in the Development of its 21st Century Strategic Plan
  • 1997, Principal Author, Response of the American Intellectual Property Law Association (AIPLA) to the European Patent Commission’s Green Paper Requesting Comments on the Patentability of Computer Software in the European Patent Office
  • 1995, Principal Author, Brief for the American Intellectual Property Law Association as Amicus Curiae, In re Beauregard, United States Court of Appeals for the Federal Circuit, March 1995 (in support of U.S. Patent Application 07/521,858 for “A System and Method for Utilizing Fast Polygon Fill Routines in a Graphic Display” of IBM Corp.)
  • Principal Author, Response of the American Intellectual Property Law Association to the Request of the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks for Comments on Patent Protection for Software-Related inventions, March 1994

Languages

Languages
  • Portuguese