Overview

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.

Experience

Experience
  • 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, Chemical, Biotechnology and Life Sciences, Electrical, and Mechanical Arts

Representative Cases

  • Allsteel Inc. v. DIRTT Environmental Solutions LTD, IPR20015-01690 (PTAB Apr. 4, 2016) (represented patent owner to defeat a petition to institute inter parte review of U.S. Pat. No. 8,024,901)
  • Atlas Copco Airpower N.V. v. Kaeser Kompressoren SE, IPR2015-01421 (PTAB Dec. 28, 2015) (represented petitioner to obtain institution of inter parte review of U.S. Pat. No. 8,349,054)
  • Altaira, LLC v. Eze Castle Software LLC, Civil Action No. 140904588 (Dist. Utah 2014) (won summary judgment asserting claims for breach of a software license agreement)
  • Westwater Products, LLC v. Idylwilde, Inc., Civil Action No. 2:13-cv-00628-DN (Dist. Utah 2014) (asserted claims of patent infringement and mediated the case to a confidential settlement)
  • Daniels Health Sciences, LLC v. Vascular Health Sciences, LLC, et al., Civil Action No. 4:12-cv-1986 (S. Dist. Texas 2014) (defended against claims for theft of trade secrets; resumed the case after a preliminary injunction, issued against the defendant, had been affirmed on appeal to the Sixth Circuit; on remand to the district court, won a motion to narrow the preliminary injunction to allow the client to resume selling its product; implemented a litigation strategy that resulted in 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) (defended against patent infringement claims by a so-called “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) (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)
  • ThermoLife International, LLC v. Black Market Distribution, LLC (case not filed 2013) (defended against threatened patent infringement claims by a so-called “patent troll”; implemented a strategy that caused the prospective plaintiff to walk away without a settlement and without filing patent infringement claims)
  • Leonard B. Barshack and Erin P. Smith v. Twitter, Inc. and Sun Valley Company, Civil Action No. cv-13-293 (Dist. Idaho 2013) (won a motion to dismiss claims for breach of contract and breach of good faith and fair dealing; won a motion for summary judgment on claims for injunctive relief, tortious interference with a contract, and defamation)
  • InvestmentSignlas, LLC v. Irrisoft, Inc., Civil Action No. 10-cv-600-SM (D. New Hampshire 2011) (defended against claims of patent infringement; implemented a litigation strategy that resulted in a settlement wherein the defendant obtained a royalty-free license to practice the asserted patents, right to sublicense the patents, right to retain all sublicense fees until litigations costs and fees had been recovered and 50% of any sublicense fees thereafter)
  • 2004-2005, Law Clerk to Honorable Judge Randall Rader on the U.S. Court of Appeals for the Federal Circuit

Education

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

Admissions

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

Achievements

Achievements
  • 2015 – 2017, The Best Lawyers in America©

Memberships

Memberships
  • 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

Speaking Engagements

Speaking Engagements
  • 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)

Languages

Languages
  • Italian