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Dominic Rota

Associate

Dominic Rota concentrates his practice in all areas of intellectual property, namely, patents, trademarks, and copyrights, and he counsels clients on a broad range of matters for emerging technologies, such as artificial intelligence (AI).

Featured Video


AI and Intellectual Property December 14, 2023

Featured Experience


Obtained summary judgment of invalidity of a patent asserted against a client in technology relating to innovative solutions for hoisting and laterally inserting an object into a building.

Advised a client on the deployment of an on-premises large language model (LLM) service and AI-supported security system, including preparation of customer-facing agreements for implementation in health care, education, and other sectors.

Counseled a client through adoption of AI-driven search tool in an online catalog of licensed third-party textbooks, including advice on permissible access to copyright-protected content to enhance capability of the search.

Professional Biography


Mr. Rota is member of the Firm's Intellectual Property Group and the Firm's Artificial Intelligence (AI) Team. He regularly guides clients through the prosecution and enforcement of their patent and trademark portfolios and provides counsel on legal matters that implicate technology or software, and newly emerging technologies, including generative artificial intelligence (AI).

Though Mr. Rota is a registered patent attorney, his experience exceeds that of patent prosecution. He prosecutes both patents and trademarks before and through the United States Patent and Trademark Office (USPTO). Moreover, he has experience in litigating the infringement and validity of patents in federal district court and at the Patent Trial and Appeal Board. This is coupled with experience in litigating trademarks in federal court and before the Trademark Trial and Appeal Board. Beyond patents and trademarks, he has experience in resolving disputes and litigating issues of copyright and trade-dress infringement. Through his experience in high-stakes intellectual property litigation, he is uniquely equipped with the ability to prepare and defend against lawsuits, advising clients in all aspects of the litigation from complaint through discovery, and through summary judgment and pre-trial preparation.

Mr. Rota's practice is not merely limited to the prosecution and enforcement of intellectual property rights. He also has an extensive background in advising on various licensing agreements, including trademark, copyright, and patent licensing agreements. Equally, he assists clients with preparing and negotiating various agreements that touch upon technology, including software-development and software-licensing agreements (e.g., on-premises and software-as-a-service (SaaS) agreements), website services and web hosting agreements, joint development agreements, and other technology agreements. He also assists in counseling clients through mergers and acquisitions, identifying key risks in diligence, such as compliance with open-source licensing and chain-of-title for intellectual property ownership and control.

Beyond issues of intellectual property, Mr. Rota provides counsel to clients on issues arising in emerging technologies, including generative AI, blockchain, Web 3.0, and non-fungible tokens (NFTs). He helps clients come into compliance with federal and state legal frameworks directed to online platforms, including adherence to the California Consumer Privacy Act (CCPA), European Union's General Data Protection Regulation (GDPR), and other applicable federal and state data privacy procedures. Furthermore, he works with clients on strategizing or otherwise negotiating the use and licensing of data, and in particular, permissible uses of data in generative AI technologies.

During law school, Mr. Rota served as an in-house law clerk for a health care technology in the business of connecting clinical, administrative, and payment processes. He also performed considerable research on the inevitable impact quantum-computing power will have on the public and private infrastructures.

  • Obtained summary judgment of invalidity of a patent asserted against a client in technology relating to innovative solutions for hoisting and laterally inserting an object into a building.

  • Advised a client on the deployment of an on-premises large language model (LLM) service and AI-supported security system, including preparation of customer-facing agreements for implementation in health care, education, and other sectors.

  • Counseled a client through adoption of AI-driven search tool in an online catalog of licensed third-party textbooks, including advice on permissible access to copyright-protected content to enhance capability of the search.

  • Achieved dismissal of patent-infringement claims against a name-brand automotive company by investigating and identifying a fatal venue issue, all before having to answer the complaint.

  • Represented a construction machinery entity in various inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.

  • Obtained a judgment on the pleadings asserted against a patent infringement client in the technology relating to dealer management and location devices.

  • Defeated a motion for a temporary restraining order and preliminary injunction against a music festival client.

  • Achieved a favorable settlement for a client pursuing federal trade-dress infringement claims in the retail basket and carting industry.

  • Achieved a favorable settlement for a client defending against federal trademark infringement claims in the hospitality industry.

  • Prosecuted patents in the mechanical, electrical, computer-information systems, and software industries before the U.S. Patent and Trademark Office.

  • Listed in Best Lawyers: Ones to Watch® in America for Intellectual Property Law, Litigation - Intellectual Property, and Patent Law (2021 – 2025)
  • Nashville Bar Association – Young Lawyers Division Enterprise Award (2021)
  • Member – Nashville Bar Association
    • Board Member, Young Lawyers Division
      • Co-Chair, Carbolic Smoke Ball Committee
  • Member – American Bar Association
  • Member – Tennessee Bar Association
  • Co-presenter – "Issues Related to Inventorship," Tennessee Intellectual Property Law Association (TIPLA) (May 2022)
  • Co-presenter – "'Counselor, You're Muted': Maintaining Ethics and Professionalism in a Post-COVID World," Tennessee Bar Association Intellectual Property Section (April 2021)

Education

  • Belmont University College of Law, J.D., 2019, magna cum laude
    • Executive Development and Technology Editor, Belmont Law Review
  • Belmont University, B.S., 2015, cum laude

Admissions

  • Tennessee, 2019
  • U.S. Patent and Trademark Office, 2019
  • U.S. District Court for the Middle District of Tennessee
  • U.S. District Court for the Western District of Tennessee
  • U.S. District Court for the Eastern District of Tennessee

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