Thomas Rooney’s practice focuses on intellectual property matters, including litigation, prosecution, and patent counseling. Representative technologies include oilfield services, medical devices, pharmaceuticals, software, home appliances, and other mechanical or electronic devices.
Mr. Rooney has worked on patent, trade secret, trademark, breach of contract, and related litigation in several District Courts and the International Trade Commission. He has also represented parties in inter partes reviews and reexaminations before the U.S. Patent and Trademark Office. He also counsels clients with patent clearance opinions to avoid litigation in the first place.
Mr. Rooney also has experience drafting and prosecuting patent applications in a variety of fields, including drug delivery systems, chemistry, nanotechnology and energy-related technologies. He has prosecuted patents for both large companies and start-ups, as well as several universities.
- Representation of a manufacturer and supplier of ophthalmic lasers in related patent infringement cases (Central District of California)
- Representation of a semiconductor manufacturer in the inter partes reviews of patents for plasma sputtering processes (USPTO)
- Representation of a supplier of quality assurance software for linear accelerators used in radiation oncology in litigation involving claims of trade secret misappropriation and breach of contract (Southern District of Texas & Arbitration)
- Representation of a construction equipment manufacturer in a patent and trade secret investigation before the International Trade Commission involving variable position counterweight systems for crawler cranes (USITC)
- Representation of a provider of safety lighting products in litigation against a former licensee involving theft of trade secrets, breach of contract and other claims (Harris County Court)
- Representation of a biotechnology company and a university in a patent case involving fluorescent tagging of nucleotides (District of Connecticut)
- Representation of a subsea equipment manufacturer in a patent case involving underwater umbilicals and a concurrent inter partes reexamination of the asserted patent (Southern District of Texas & USPTO)
- Representation of an oilfield service company in a patent case involving well completion tools (Northern District of Texas)
- Representation of a vending machine manufacturer in a patent case involving automated vending machines (Eastern District of Texas)
- Representation of a drug formulation company in a patent infringement case involving nanocrystal drug delivery technology (Eastern District of Texas)
- Representation of an appliance manufacturer in an eight-patent case involving refrigerator and freezer technology (District of Delaware)
- Representation of an appliance manufacturer before the International Trade Commission in an investigation involving indoor ice making systems for refrigerators (USITC)
Publications, Speeches & Presentations
The Three-Legged Stool: The Federal Circuit's Review of the Patent Trial and Appeal Board Under the Administrative Procedure ActBlog Post
PTAB Trials Blog
The "Substantial New Question" Standard Lives: The Increasing Importance of Relying on New Art and ArgumentExternal Articles
Presentation at HYLA 2014