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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) and quantum computing.

Overview


  • 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
  • Tennessee, 2019
  • U.S. Patent and Trademark Office, 2019
  • U.S. Court of Appeals for the Federal Circuit
  • 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

Dominic Rota is a registered patent attorney and a member of the Firm's Intellectual Property Group. Dominic counsels clients on the core protection and enforcement of their IP assets through patents, copyrights, and trademarks, while also working with clients to identify other means of protecting their most valuable assets, including through strategic contractual protections and confidentiality programs.

Dominic is a member of the Firm's artificial intelligence (AI) team and the quantum technology team, in which he advises clients on fundamental legal issues underlying these groundbreaking technologies, including licensable use and intellectual-property rights.

Intellectual Property: Protection and Enforcement

As a registered patent attorney, Dominic helps clients secure, manage, and enforce their patent and trademark portfolios. He prosecutes patents and trademarks before the United States Patent and Trademark Office (USPTO), from first filing through registration. Throughout that process, he works to align each client's portfolio with its business goals and technology.

His practice goes beyond prosecution to enforcement and defense. He has litigated patent infringement and validity in federal district court and before the Patent Trial and Appeal Board. He has also litigated trademark matters in federal court and before the Trademark Trial and Appeal Board. He resolves and litigates disputes over copyright and trade-dress infringement, so clients can rely on him across the full range of their intellectual property.

This work in high-stakes intellectual property litigation has prepared Dominic to bring claims and to defend against them. His litigation experience also shapes his prosecution work, because he builds portfolios that can hold up when they are enforced or challenged.

Technology Transactions

Dominic helps clients turn their intellectual property and technology into well-protected business assets through carefully structured agreements. He drafts and negotiates trademark, copyright, and patent licenses. He also handles a wide range of technology agreements, including software-development and software-licensing agreements (both on-premises and software-as-a-service (SaaS)), website services and web hosting agreements, application development agreements, and other commercial technology arrangements.

In these deals, he focuses on the provisions that protect a client's interests most directly: ownership and allocation of IP rights, confidentiality, warranties, indemnification, and limitations of liability.

Dominic also advises clients on information security and data-privacy compliance. This includes the California Consumer Privacy Act (CCPA), the European Union's General Data Protection Regulation (GDPR), and other federal and state privacy laws. He drafts and negotiates data processing agreements, security requirements, and breach-notification obligations.

In mergers and acquisitions, he helps identify key IP and technology risks during diligence, such as open-source license compliance and chain of title for IP ownership and control.

Emerging Technologies

Dominic advises clients on emerging technologies, including generative AI and quantum-computing technology. He helps clients develop strategy for, and negotiate the use and licensing of, valuable data, with a particular focus on permissible uses of data in generative AI technologies.

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  • Represented a Fortune 500 medical device company in negotiating a range of technology, AI, and connected-device arrangements, including agreements with an AI-enabled marketing analytics provider, operating system support services for medical device hardware, and IoT integrations supporting connected medical device ecosystems.

  • Advised a client on the structure of a negotiation for obtaining a license to copyright-protected literary content for use in connection with an AI-enabled educational tool.

  • Counseled a federal government contractor on the structure of IP licensing rights among prime contractors, subcontractors, and suppliers in connection with a defense project.

  • Managed, prosecuted, and coordinated the domestic and foreign patent portfolio for a major manufacturer and seller in the consumer-products industry.

  • Managed, prosecuted, and coordinated the domestic and foreign patent portfolio for a major manufacturer of protective medical equipment.

  • 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.

  • 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.

  • 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 – 2026)
  • Nashville Bar Foundation Leadership Forum – Class of 2027
  • Nashville Bar Association – Young Lawyers Division Enterprise Award (2021)
  • Member – Nashville Bar Association
    • Former Board Member, Young Lawyers Division
      • Former 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)

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