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Roylance, Abrams, Berdo
 & Goodman, L.L.P.

1300 19th Street, NW
Suite 600
Washington D.C. 20036
P | 202.659.9076
F | 202.659.9344

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 Lance G.  Johnson 

Lance G. Johnson, a partner of the firm, specializes in patent and trademark matters. He has extensive experience in litigation, domain name dispute (UDRP) and resolution proceedings, and conducting specialty proceedings before the U.S. Patent and Trademark Office (USPTO). His experience at the USPTO includes inter partes and ex parte reexaminations, reissues, trademark oppositions, appeals and interferences. His clients include Fortune 500, domestic and foreign companies.

Mr. Johnson was the first attorney to file and successfully win a reexamination request for patent owners and third parties and has defended against third party reexamination requests filed as a prelude to litigation. He represents clients in patent and trademark infringement matters in the U.S. and in foreign countries from complaint through appellate decision.

Mr. Johnson's areas of expertise include petroleum and synthetic fuels processing. He also has significant experience in the preparation and prosecution of patent applications in chemical, mechanical and software technologies. Mr. Johnson, who has served as an expert witness, started his career as a patent examiner at the USPTO.

Education

The George Washington University Law School, J.D., 1987

Iowa State University, B.S. in Chemical Engineering, 1982

Professional Affiliations

Liaison, Science and Technology Law Section, Standing Committee on Technology and Information Systems, American Bar Association

Member, Science and Technology Section Subcommittee on Nanotechnology, American Bar Association

Member and past Section Council member, Science and Technology Section, American Bar Association

Member, Emerging Technology Subcommittee on Nanotechnology, American Intellectual Property Law Association

Member, District of Columbia Bar Association

Member, Virginia Bar Association 

Past Contributing Associate Editor, Bulletin of Law, Science and Technology, American Bar Association

Past Co-chair, Science and Technology Law Section Committee on Crime and Privacy, American Bar Association

Past Liaison, Standing Committee on Publishing Oversight, American Bar Association 

Past Member, Internet Policy Committee, Science and Technology Law Section Committee on Crime and Privacy, American Bar Association 

Past Columnist, "Recent CAFC Decisions", Litigation Section Newsletter, American Bar Association

Bar & Court Admissions

District of Columbia

Virginia

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals, Fourth Circuit

U.S. Court of Appeals, Seventh Circuit

U.S. District Court, District of Columbia

U.S. District Court, Eastern District of Virginia

U.S. Patent and Trademark Office

U.S. Supreme Court

Select Representative Cases

Hubbell Incorporated v. SomersKemf, LLC – design patent and trade dress infringement

Hubbell Incorporated v. The Watt Stopper – prosecuted claims and defended against counterclaims of patent infringement

Hubbell Incorporated v. Acuity Brands, Inc. – design patent and trade dress infringement

Normark Corporation v. Pure Fishing, Inc. – trade dress infringement

Hubbell Incorporated v. U.S. Pole Company, Inc. – design patent and trade dress infringement

Central Mfg. Co. v. Pure Fishing, Inc. – trademark case with counterclaims for unfair business practices and prior judgment liability

Countrywide Financial Corporation v. Web Domain Names – domain name dispute

Countrywide Financial Corporation v. Texas International Property Associates – domain name dispute

TayMac Corporation v. Hubbell Incorporated – patent infringement

Hubbell Incorporated v. Genlyte Thomas Group – patent infringement

Inter Partes Reexamination of US 6,232,427 “Esterification Method”, Control no. 95/000,001 

Publications

Editor and co-author, "E-mail for Client Communications: A Multinationed Survey," Bulletin of Law, Science and Technology Law, American Bar Association, May 2000

Career Highlights

  • First attorney to file an inter partes reexamination request before the USPTO and succeeded in having all claims of the patent ruled invalid or disclaimed.
  • Highly successful in multiple UDRP proceedings and third party reexamination requests filed as a prelude to litigation.
  • Won a milestone case against a perennial litigant involved with at least 49 trademark cases in the Northern District of Illinois since 1988 and known user of frivolous lawsuits. The Judge's decision, in December 2006, ended years of trademark abuse and extortionate protection schemes against organizations throughout the world.
  • In re Leo Stoller, Case No. 05 B 64075, slip op. 9/26/06 (Bankr. N.D. Ill.)

Seminars

"Out of the Business – NIH Denies Invitation to Control Drug Prices"

Speaker, AIPLA's Chemical Practice Subcommittee, May 2005

"Broadening Reissue as a Strategic Response to Inter Partes Reexamination"

Speaker, AIPLA Spring Meeting, May 2004

"Inter Partes Reexamination Round Table Testimony"

Speaker, USPTO, February 2004

"Inter Partes Reexamination: The USPTO Alternative to Patent Litigation"

Speaker, Houston Intellectual Property Law Institute, October 2003

© 2007 Roylance, Abrams, Berdo & Goodman, L.L.P. All rights reserved.