David P. Johnson

Dave Johnson’s practice focuses on complex litigation involving technology and intellectual property, with a particular emphasis on patent, trade secret, copyright, and trademark litigation, as well as administrative law issues. He has successfully represented clients in disputes in federal district and appellate courts. He also provides strategic counseling on a broad range of intellectual property, competitive, and business issues. Mr. Johnson has represented clients across a wide range of technologies, including medical devices, consumer products, computer hardware and software, consumer electronics, electronic commerce, the furniture industry, the restaurant industry, and the pharmaceutical industry. Mr. Johnson also has a wealth of experience efficiently enforcing his client’s rights in electronic commerce marketplaces.

In addition to his litigation experience, Mr. Johnson has significant experience representing clients before the US Patent and Trademark Office in all phases, including drafting and prosecuting patent and trademark applications. He counsels his clients regarding the management of their intellectual property portfolios around the world.

• Led a team that obtained a temporary restraining order and preliminary injunction in a case involving unfair competition, trademark, copyright, and design patent claims.  Negotiated a permanent injunction and settlement of the case, achieving the client’s goals while also saving it huge amounts of attorneys’ fees and costs. (2016).
• Defended one of the firm’s clients that was sued for cancellation of various of its trademarks, some of which have been in place for nearly thirty years. The complaint asserted claims for cancellation based on alleged fraud on the trademark office, cancellation for falsely suggesting a connection with the plaintiff, cancellation for likelihood of confusion, and declaratory judgment of non-infringement. Successful in forcing a withdrawal of the fraud and false suggestion of a connection claims, and obtained a dismissal of the complaint for lack of case or controversy. The dismissal saved the client the considerable expense of the cancellation/declaratory judgment trial. (2015).
• Led district court and appellate team that challenged an action of a state administrative agency as invalid for failure to engage in the steps required by the state administrative procedure act.  After the district court dismissed the case, Mr. Johnson successfully won reversal at the Supreme Court on appeal.  (2016).
• Defended compliance software company in patent infringement litigation and lead efforts to file inter partes review (“IPR”) petition concerning the asserted patent.  Despite having already fought a different IPR proceeding against the same patent for more than six months, the patent owner requested adverse judgment within three weeks of reading the IPR petition prepared by Mr. Johnson and his team.  Shortly after requesting adverse judgment the defendant dismissed its claims in the litigation. (2014).
• Defended furniture company in multi-patent, multi-defendant patent infringement litigation involving kit claims in a utility patent.  Successfully negotiated a favorable settlement.  (2013).
• Represented plaintiff in unfair competition, trade secret misappropriation, and breach of contract matters regarding a former employee and business purchaser.  Successfully negotiated settlement after a year of hard fought litigation, thereby saving the client huge amounts of attorneys’ fees and costs and the risk associated with trial. (2013).
• Represented applicant in trademark opposition proceedings against a large, nationwide representative organization for physicians in the United States.  Opposer ultimately withdrew the oppositions. (2013).

• J.D., S.J. Quinney College of Law, University of Utah, 2010
• B.S., Civil and Environmental Engineering, University of Utah, 2007

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

• 2015, “Utah Legal Elite,” Utah Business Magazine
• 2018, Litigation- Patents, The Best Lawyers in America

• S.J. Quinney College of Law IP Moot Court Team, Coach (2012-present)
• William Penn PTA Board Member, Super Dad Advisor

• Aldon J. Anderson American Inn of Court
• David K. Winder IP Inn of Court
• Intellectual Property Owners Association (IPO) – U.S. Trademark Committee
• Workman Nydegger – recruiting committee
• Workman Nydegger – business development committee

• Presenter, The Knowledge Group Live Webcast. “Practical Tips and Strategies in Prosecuting and Litigating Design Patent Claims.” May 3, 2018
• Presenter, Silicon Slopes. “Intellectual Property in the World of Internet Commerce & Foreign Manufacturers.” June 28, 2017
• Co-Presenter, Utah State Bar 2015 Summer Convention. “Intellectual Property Law for Non-IP Attorneys.” August 1, 2015

• David P. Johnson, “Proper Jurisdiction: Understanding Personal Jurisdiction in the Age of Internet Commerce,” Utah Business magazine, September 30, 2015