R. Whitney Johnson

R. Whitney Johnson

Partner & Chair: Technology and Intellectual Property Group
Salt Lake City, UT
Overview

About Whit

R. Whitney “Whit” Johnson is a partner of the firm and currently is chair of the firm’s Technology and Intellectual Property (IP) group. He concentrates his practice on providing patent-related services including U.S. and foreign patent procurement, patent portfolio management and strategic counseling. His practice encompasses patent preparation and prosecution, patent opinions, due diligence investigations, audits, pre-litigation patent analysis and trademark procurement. In addition to advising clients on developing, protecting, and utilizing intellectual property rights, Whit counsels clients on intellectual property licensing and other transactions involving intellectual property assets. He also counsels clients on intellectual property litigation matters.

Whit worked as a systems engineer for Northrop Grumman Space Systems Division in Azusa, California.

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Experience

Experience

Patent Procurement and Portfolio Management

  • Represents large and small software companies, computer hardware companies, medical device companies and safety equipment companies, ranging from Fortune 500-sized to start-ups, managing worldwide patent estates. Experience includes preparation and prosecution of U.S. and international patents, patent portfolio management and strategic counseling.

Patent Opinion Practice

  • Provides noninfringement, invalidity and freedom-to-operate opinions; product clearance analysis; due diligence investigation; and guidance regarding designing around patents.

Technology Areas

  • Computer software technologies and business methods including media content distribution, Internet commerce, cloud computing, Internet of Things (IoT), blockchain, web applications, software as a service (SaaS), mobile applications, artificial intelligence (AI), computer networking, user interfaces, heads-up displays, social networking, speech synthesis and video games.
  • Computing hardware technologies including semiconductor devices, electronics, low power always listening (LPAL) systems and network security devices.
  • Communications technology including LTE.
  • Mechanical and electro-mechanical technologies, including automotive safety systems and optical systems and bar code scanning.
  • Energy storage and utilization including energy storage systems and smart grid and grid edge components
  • Medical devices including transcatheter cardiac repair devices, vascular access technologies, catheters, stents, inflation systems and tissue repair technologies.
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Honors

Honors & Activities

  • Board Member, Salt Lake County Economic Development Revolving Loan Fund (EDRLF) Advisory Committee, 2014-present
  • Judge, Utah Entrepreneur Challenge, 2010-present
  • Mentor, Wayne Brown Institute, 2011-present
  • Board Member, University of Utah College of Engineering Alumni Association, 2009-2015
  • Selected as one of “America’s Leading Lawyers for Business” (Utah) by Chambers USA (currently: Intellectual Property), 2017-2019
  • Listed among Rising Stars (Intellectual Property), Mountain States Super Lawyers®, 2016-2017 
  • Included in Utah Business Legal Elite (Intellectual Property), listed since 2017
  • Member of the David K. Winder IP Inn of Court
  • Member, Intellectual Property Section of the Utah State Bar
  • Member, American Intellectual Property Law Association
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Insights & Presentations

Insights & Presentations

  • Blockchain + Renewables = Red Tape?,” Renewable Energy World, March/April 2018
  • “Blockchain 101 for Legal Counsel,” Corporate Section, Alaska Bar Association, Jan. 18, 2017
  • “What Physician Entrepreneurs Need to Know about Patents,” The Society of Physician Entrepreneurs of Salt Lake City, May 26, 2016  
  • “Intellectual Property for Entrepreneurs,” Student Entrepreneurs Conference, eBay Inc., Sept. 26, 2015
  • Co-Presenter, “Intellectual Property for Entrepreneurs,” Student Entrepreneurs Conference, eBay Inc., Oct. 29, 2013
  • Before the Deal: Architecture of Intellectual Property Due Diligence,” The Enterprise, Aug. 13-17, 2012
  • Co-Presenter, “Bilski Round Two: What Is Patentable in Light of the Supreme Court’s Recent Decision?,” Stoel Rives LLP, Salt Lake City, Utah, Nov. 18, 2010
  • Co-Presenter, “Business Organization: The Right Structure for the Right Idea,” Student Entrepreneurs Conference, University of Utah, Oct. 30, 2010
  • “Intellectual Property: It’s Not Just For Lawyers,” Student Entrepreneurs Conference, University of Utah, Nov. 7, 2009
  • “Are Software and Business Methods Still Patentable After In re Bilski?” Intellectual Property Series, Salt Lake City, Utah, Jan. 22, 2009
  • “From Patent Pending to Patent Holding,” The Enterprise, Oct. 13-17, 2008
  • “Trademark for Creating a Kid-Friendly Cyber-Playground on the Internet,” Utah Law Review 465, 2006



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