Chad E. Nydegger

Chad E. Nydegger is both a first-chair litigator and intellectual property prosecution portfolio manager. His litigation experience includes representing clients to assert and defend against claims of patent infringement, trademark infringement, theft of trade secrets, false advertising, unfair competition claims, copyright infringement, and related contractual disputes. He also represents clients in inter partes reviews and trademark oppositions before the U.S. Patent and Trademark Office. On the prosecution side of the practice, his work includes the preparation, filing and prosecution of provisional, design and utility patent applications in the mechanical, software, and nutraceutical arts, and the preparation, filing and prosecution of trademark applications. Mr. Nydegger ensures each client he works with receives the time and attention needed to understand and navigate the specific intellectual property issues confronting him or her and how those issues play into the client’s overall business and IP portfolio goals and strategies.

• Complex IP Litigation, Inter Partes Conflicts, Mediation and Arbitration
• Appeals before the Court of Appeals for the Federal Circuit and other Regional Federal Circuit Courts of Appeal and before the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office
• Licensing, other Transactional Work and Client Counseling
• Nutraceutical, Medical, Chemical, Biotechnology and Life Sciences, Electrical, and Mechanical Arts

Representative Cases and Experience:

• Humboldt B.V., et al. v. Lornic Design, Inc., Civil Action No. 1:17-cv-983 (W. Dist. Michigan, Sept. 9, 2019) (Lead counsel: obtained order in favor of plaintiff granting summary judgment of infringement of U.S. Pat. No. 9,433,225)
• Allsteel Inc. v. DIRTT Environmental Solutions Ltd., IPR2015-01691 (PTAB April 22, 2019) (Lead counsel: decision for patent owner upholding the validity of key challenged claims of U.S. Pat. No. 8,024,901 in inter partes review)
• Novex Biotech, LLC v. Performix, LLC, Civil Action No. 2:19-cv-00021-BSJ (Dist. Utah 2019) (Lead counsel: defended against claims of false advertising and unfair competition; implemented litigation strategy that resulted in plaintiff voluntarily dismissing the case)
• Wasatch Medical Group, LLC v. Mark Saunders, et al., Civil Action No. 190901641 (Dist. Utah 2019) (Lead counsel: defended against claims of theft of trade secret; implemented a litigation strategy that resulted in a “walk-away” settlement without defendants having to answer the complaint)
• Nox Medical Ehf v. Natus Neurology Inc., Civil Action No. 1:15-cv-00709-RGA (Dist. Delaware 2018) (Lead counsel: jury verdict for plaintiff finding willful patent infringement and no patent invalidity; bench trial verdict for plaintiff finding no unenforceability of U.S. Pat. No. 9,059,532 for inequitable conduct)
• Natus Neurology Inc. v. Nox Medical Ehf, IPR2016-01822 (PTAB March 21, 2018) (Lead counsel: decision for patent owner upholding the validity of all challenged claims of U.S. Pat. No. 9,059,532 in inter partes review)
• Atlas Copco Airpower N.V. v. Kaeser Kompressoren SE, IPR2015-01421 (PTAB December 23 ,2016) (Lead counsel: decision for challenger striking down key claims of U.S. Pat. No. 8,349,054 in inter partes review)
• Altaira, LLC v. Eze Castl Software LLC, Civil Action No. 140904588 (Dist. Utah 2014) (Lead counsel: summary judgment for plaintiff finding defendant breached a software license agreement)
• Daniels Health Sciences, LLC v. Vascular Health Sciences, LLC, et al., Civil Action No. 4:12-cv-1986 (S. Dist. Texas 2014) (Lead counsel: assumed representation of the defendant against claims for theft of trade secret and trademark infringement after a preliminary injunction had issued against the defendant and been affirmed on appeal to the Sixth Circuit; successfully narrowed the preliminary injunction so as to not cover the defendant’s products; implemented a litigation strategy that moved the case to mediation and a “walk-away” settlement)
• Harcol Research, LLC v. Black Market Distribution, LLC, Civil Action No. 2:13-cv-711 (E. Dist. Texas 2014) (Lead counsel: defended against patent infringement claims by a patent troll; negotiated a favorable confidential settlement at minimal cost to the client)
• D&D Plastics, LLC, et al. v. J&B Concepts LLC, et al., Civil Action No. 1409000683 (Dist. Utah 2014) (Lead counsel: litigated cross-claims for breach of contract, tortious interference with business relations, and related claims; successfully mediated the case to a favorable settlement prior to discovery)
• 2004-2005, Law Clerk to Honorable Judge Randall Rader on the U.S. Court of Appeals for the Federal Circuit

• J.D., high honors, Order of the Coif, George Washington University Law School, 2003
• B.S. Business Management, Finance Emphasis, Brigham Young University, 2000

• Utah State Bar
• U.S. Court of Appeals for the Federal Circuit
• Registered Patent Attorney, U.S. Patent and Trademark Office

• 2015 – 2022, The Best Lawyers in America©

• American Intellectual Property Lawyers Association (AIPLA)
• Utah State Bar – Intellectual Property Section
• David K. Winder IP Inn of Court (Co-chair of Pupilage 1)
• Federal Circuit Bar Association

• Utah Partners in Business – Trade Secrets and Employee Agreements: Tips and Traps to Protecting Your Business (April 2016)
• David K. Winder IP Inn of Court (January 2016)

• Italian