Practice Experience

Thomas J. Rossa is practices in both our Tucson and our Salt Lake City office. He joined the firm in January 2012 bringing to us extensive intellectual property experience including four years as the chief patent counsel for a fortune 800 corporation.

Mr. Rossa has been involved in all aspects of intellectual property law including transactions, licensing and litigation. He has been involved in many mergers and acquisitions as well as numerous licensing matters and related technology transfers. He has prepared and advanced applications leading to the issue of hundreds of patents in the United States and many patents in foreign countries.

Mr. Rossa has litigated throughout the United States dealing primarily in intellectual property matters including patent infringement matters, trademark disputes, covenants not to compete, trade secret issues and related licensing and contract matters. He has appeared in the U.S. International Trade Commission  and in over 20 Federal District Courts and numerous state courts. He has also appeared in several state appellate courts including the Utah Supreme court, and six federal appeals courts including the Court of Appeals For the Federal Circuit and the U.S. Supreme Court. He has also managed patent litigation in Canada, Germany, France and Japan. He has also conducted a patent validity trial in the European Patent Office.

Some of the technologies that he had dealt with include, water purification, industrial filters, mining equipment, software, exercise equipment, electrical controls, a wide variety of sporting goods including ski/winter outdoor products, industrial filters, intravenous therapy (catheters), the artificial heart, electronic sensors, medical beds, vinyl products, credit card reward systems, natural gas processing technology, oil well extraction technology, plastic resins and related fillers, industrial coatings, packaging equipment, business methods, application software; video streaming; robotics, adhesive application equipment, enzymes, aneurism repair and lung therapies He has served as an expert witness on issues relating to patents and licensing and to the transfer and recordation of patent assignment documents.. He has also lectured on intellectual property to various bar and business organizations.

Mr. Rossa has an undergraduate degree in engineering with substantial additional work in mathematics and nuclear physics. He also completed substantial graduate work in nuclear engineering and electronics. He served in the U.S. Navy including four years on a nuclear submarine. He left active service in 1970 but continued in the Naval Reserve retiring as a Navy Captain in 1986.

Education:

• J.D., University of Utah, 1973
• B.S., U.S. Naval Academy, 1963

Accomplishments/Affiliations:

• Utah State Bar Intellectual Property Law Section, member, 1973-Present
• Utah State Bar Lawyers Benefits Committee, Chairman, 1977-1979
• Utah State Bar Credit Union, President, 1978-1979
• Utah State Bar Intellectual Property Law Section, Chairman, 1977-1978
• Utah State Bar Judiciary Committee, member, 1978
• Utah State Bar Bridge-The-Gap Committee, Co-Chair, 1974-1975
• Utah State Bar Fee Arbitration Committee 1997- Present (Vice Chair 2009- )
• United Way, Chairman of various allocation committees, 1986-1998
• Utah Issues, Board Member, 1991-1992
• Utah Council for Citizen Diplomacy Board Member 2005-2010, VP 2009-11
• US Naval Academy Alumni Association Intermountain Chapter, President 2006-Present
• Utah Business Magazine, Selected as one of Utah's Legal Elite 2005-12
• Utah Legal Leader Utah Business Magazine 2009
• Selected for inclusion in Best Lawyers in America 2010, 2011, 2012 and 2013
• Utah JayCees 1974-79 Various Officer Positions
• Salt Lake United Way Committees and legal Assistance 1985-2002

Licensed:

• Utah State Bar 1973
• Ohio State Bar 1981
• U.S. District Court, District of Utah 1973
• U.S. Court of Appeals, Tenth Circuit 1973
• U.S. Court of Appeals, Ninth Circuit s1976
• U.S. Court of Customs and Patent Appeals 1981
• U.S. Court of Appeals, Fifth Circuit 1982
• U.S. Court of Appeals, Eleventh Circuit 1983
• U.S. Court of Appeals, Federal Circuit 1983
• U.S. International Trade Commission 1984
• U.S. Supreme Court 1986
• U.S. District Court, Central District of Illinois 1995
• U.S. District Court, District of Colorado 2004
• U.S. Patent and Trademark Office, Reg. #26,799 1973

Bar Associations:

• American Bar Association (Intellectual Property Law Section)
• American Intellectual Property Law Association (Various Committees)
• Federal Bar Association (Varous Committee
• Utah State Bar (Intellectual Property Law Section)
• Federal Circuit Bar Association
• Licensing Executive Society
• Ohio State Bar (Inactive)

Reported Cases:

• Engineered Sports Products Inc. v. Brunswick, et al., 362 F.Supp. 722 (D. Utah 1973).
• Time Commercial Finance Corp. v. Brimhall, 575 P.2d 701 (Utah, 1978).
• In re Convertible Rowing Exerciser Patent Litig., 616 F. Supp. 1134, 228 U.S.P.Q. 726 (Del. 1985).
• Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 2 U.S.P.Q. 2d 1490 (Fed. Cir. 1987).
• Allen Archery, Inc. v. Browning Mfg. Co., 898 F.2d 787, 14 U.S.P.Q. 2d 1156 (Fed. Cir. 1987).
• Diversified Products, Corp. v. U.S. Int'l Trade Com. (Weslo, Inc. Intervenor), 824 F.2d 980 (1987)
• Envirotech Corp. v. Westech Engineering, Inc., 713 F.Supp. 372, 11 U.S.P.Q.2d 1804 (D.Utah 1989).
• In re Convertible Rowing Exerciser Patent Litig., 721 F.Supp. 596, 12 U.S.P.Q. 2d 1275 (Del. 1989).
• Envirotech Corp. v. Westech Eng. Inc., 904 F.2d 1571, 15 U.S.P.Q. 2d (Fed. Cir. 1990);
• reh'g denied, 1990.
• Weslo, Inc. v. Diversified Products, Corp., 498 U.S. 897 111 S.Ct. 248 (1990)
• In re Convertible Rowing Exerciser Patent Litig., 903 F.2d 822 (Fed. Cir. 1990) reh'g denied, 1990.
• In re Convertible Rowing Exerciser Patent Litig., 817 F. Supp. 434, 25 Fed. R. Serv. 3d 1112 (Del, 1993).
• In re Convertible Rowing Exerciser Patent Litig., 814 F. Supp. 1197, 26 U.S.P.Q. 2d 1677 (Del. 1993).
• Envirotech Corp. v. Callahan, 236 Utah Adv. Rep. 11, 872 P.2d 487 (Utah Ct. App. 1994).
• Ultradent Products v. Life-Like Cosmetics, Inc., 127 F.3d 1065, 44 U.S.P.Q.2d 1336 (Fed. Cir. 1997).
• Continental Lab. Prods. v. Medax Int'l, 1999 U.S. Dist. Lexis 15383 (S.D.Cal. 1999).
• Continental Lab. Prods. v. Medax Int'l, 114 F.Supp. 2d 992 (S.D.Cal. 2000).
• Continental Lab. Prods. v. Medax Int'l, 195 F.R.D. 675 (S.D.Cal. 2000).
• Ultradent Products, Inc. v. Dentsply International, Inc., 344 F. Supp. 2d 1306 (D. Utah 2004)
• Techni-Graphic Servs. v. Majestic Homes, Inc., 2005 U.S. Dist. LEXIS 5910 (D. Utah 2005)
• Sensitron v. Wallace, 504 F.Supp. 2d 1180 (D. Utah 2007)
• Seirus Innovative Accessories, Inc. v. Do-Gree Fashions, Ltd., 2008 US. Dist. Lexis 20520 (2008)
• Seirus Innovative Accessories, Inc. v. Do-Gree Fashions, Ltd., 544 F. Supp 2d 1284, 2008 US. Dist. Lexis 20520 (2008)