Overview

David P. Johnson is registered to practice before the U.S. Patent and Trademark Office and is admitted to various courts around the country. His practice includes all facets of intellectual property law, including complex intellectual property litigation and the preparation and prosecution of patent, trademark, and copyright applications in the U.S. and foreign countries. He has represented clients in courts throughout the country, in inter partes review proceedings at the Patent Trial and Appeal Board, reexamination proceedings at the United States Patent and Trademark Office, opposition and cancellation proceedings at the Trademark Trial and Appeal Board, and in a wide array of licensing and internet-related intellectual property disputes. He has experience in a variety of technological areas including wireless systems, fuel additives, medical devices, nutraceuticals, exercise equipment, sporting goods and the restaurant and furniture industries. Mr. Johnson has worked with multiple companies from start-up through publicly traded and has been intimately involved in developing IP strategy and associated portfolios for those companies.

When he is not practicing law, Dave enjoys spending time with his beautiful wife and children. They love hiking in the mountains, water skiing, and eating mom’s homemade birthday cakes. In his practice and at home, Dave strives to live by the three maxims his parents taught him as a young boy – try hard, do your best, and never give up.

Experience

Experience
  • 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).

Education

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

Admissions

Admissions
  • U.S. Circuit Court of Appeals, Ninth Circuit
  • Various federal district courts
  • Utah Supreme Court
  • Salt Lake County Bar
  • Nevada Supreme Court
  • Registered Patent Attorney, U.S. Patent and Trademark Office

Achievements

Achievements
  • 2015, “Utah Legal Elite”, Utah Business Magazine

Community Involvement

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

Memberships

Memberships
  • 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

Speaking Engagements

Speaking Engagements
  • Co-Presenter, Utah State Bar 2015 Summer Convention. “Intellectual Property Law for Non-IP Attorneys.” August 1, 2015

Publications

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