For a wide range of technologies and industries, including medical devices, mechanical products and electronics; Thomas I. Ross has litigated successfully in district courts throughout the United States and in the International Trade Commission (ITC) on matters involving patents, trademarks, copyrights, and trade secrets. He has first-chaired numerous trials, both bench and jury, and has been the lead attorney on a number of appeals before the Federal Circuit Court of Appeals and other Circuit Courts. His skills derive from his experience, as well as his training in mechanical engineering and work as an examiner at the U.S. Patent and Trademark Office. He has been engaged for expert testimony on patent law and Patent Office practices.

Recent Client Work

  • Mr. Ross first-chaired a seven-day jury trial in the Applied Biosystems v. Illumina, et al. case in which we successfully represented the defendants.  The issue was patent ownership of a new method of DNA sequencing by ligation, conceived by a former employee of Applied Biosystems while he had worked there.  The jury agreed with us that Illumina owned the patents.
  • The South Dakota Supreme Court handed Mr. Ross a win in the trademark infringement dispute Dakota Industries v. Cabela’s, after he had already obtained a favorable judgment for Cabela’s in the lower court. He successfully argued that plaintiff abandoned the trademark through non-use.

Detailed Biography

Representative Experience

Since 2003, Mr. Ross has won 4 of 5 of his Intellectual Property trials and 5 of 6 appeal cases.  In addition to those noted above, they include the following, where * denotes our client.

  • *Golden Voice Technology & Training v. Rockwell International, et al. Golden Voice’s patents for a call center operator voice storage and retrieval system were found infringed in a jury trial, where we presented the jury with actual and animated demonstrations of the subject technologies.  The jury found Rockwell infringed and that the infringement had been willful.  The verdict, including willfulness, was affirmed by the Federal Circuit Court of Appeals.
  • The Illinois Coalition Against Handgun Violence (ICAHV) v. *Illinois State Rifle Association (ISRA).  When the ICAHV failed to re-register its corporate name, the ISRA registered the ICAHV corporate name and promoted pro-gun legislation under the auspices of ICAHV.  A trademark infringement action ensued.  Mr. Ross averted the temporary restraining order with ISRA stipulating not to use the ICAHV moniker.  Further, although infringement was found in a bench trial, the assessment of damages was reduced from what the ICAHV had sought.
  • ADC Communications v. *Switchcraft, Inc. ADC’s patent covered a switching jack with impedance matching afforded by fin-shaped "waveguides"  adjacent the stationary and movable conductors.  ADC marketed its patented jack for the transmission of high-definition television signals.  Switchcraft’s competing jack design was a PCB-based switching jack that included fin-shaped walls between conductor strips.  The jury concluded that ADC failed to carry its burden of proving by a preponderance of the evidence that the fins in the Switchcraft jack did in fact impedance match.  In his JMOL decision, the judge cited Switchcraft’s explanation and test evidence as supporting the jury’s verdict of non-infringement.
  • Bass Pro Trademarks v. *Cabela’s. Cabela’s appealed the lower court’s finding of contempt for violation of a patent infringement consent judgment.  On appeal, Mr. Ross successfully argued that the new product did not infringe, a necessary prerequisite for finding contempt of a patent judgment; and the Federal Circuit Court of Appeals vacated the contempt order and sanctions.
  • *Franklin Electric v. Dover (OPW).  We were engaged to handle the appeal of a lower court’s summary judgment of non-infringement of Franklin’s patent on an improved fuel multi-port sump containment assembly.  The Federal Circuit Court of Appeals expressly adopted Mr. Ross’ reasoning, rejecting the lower court’s narrow view of the patent and claim construction, and remanded for further proceedings.

Background and Credentials

Thomas I. Ross is a seasoned intellectual property litigator who has experienced repeated success in litigation and at trial.  He has led cases in federal district courts throughout the United States, as well as numerous appeals before the United States Courts of Appeals for the Federal Circuit and other regional Circuit Courts, ITC actions, and arbitration and mediation hearings. In addition to his prior work as an examiner in the USPTO, Mr. Ross also served as a law clerk at the Patent Office Board of Patent Appeals and Interferences.

He has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer." Mr. Ross was also selected for inclusion in the 2013 Illinois Super Lawyers® list. Only five percent of the lawyers in the state were selected for this honor. 

Mr. Ross has a B.S. degree in Mechanical Engineering from Purdue University, and received his J.D. in 1979 from Georgetown University Law Center.

His broad range of experience encompasses such technologies and products as:

  • Plastic injection molding machines
  • Mechanical seals
  • Semiconductor manufacturing equipment
  • Head technology for magnetic recording
  • Wireless communications network systems
  • Computer power supply circuitry
  • Medical devices and technology
  • Pharmaceutical compounds
  • Feedback controls
  • Operational circuitry
  • Metals alloying and casting equipment
  • Hook and loop fasteners
  • Digital subtraction angiography
  • Cryogenic cooling systems

Publications and speeches

  • "Enforcing Intellectual Property Rights in China," China Business Review (October-December 2012)
  • "Patent enforcement in China is on the upswing," InsideCounsel, October 9, 2012.
  • "3 litigation strategies for enforcing IP rights in China," InsideCounsel, September 25, 2012.
  • "China’s alternative administrative route for enforcing intellectual property," InsideCounsel, August 28, 2012.
  • "China is worth it despite the risks," Crain's Chicago Business (August 22, 2011)
  • "Patent Damages," IPLAC Patent Symposium (Fall 2010)
  • "Our Federal Circuit: Its History and Precedents," MGB Academy (February 2010)
  • "Trade Secret Protection And The Biofuels Industry," Biofuels Journal Webinar (Spring 2009)
  • "Cross-Examination Techniques," Law Bulletin Litigation Skills II Conference (Spring 2008)
  • "Making Patent Plaintiffs Pay," Law Bulletin Corporate IP Conference (Spring 2006)
  • "Making Patent Plaintiffs Pay," Intellectual Property Technology and Law Journal (June 2006)
  • "A Discussion Of Issues Affecting Court Reporters Presented By The Engate Patents," NCRA Journal Of Court Reporting (June 2003)
  • "Intellectual property protection for trade secrets and know-how," Building And Enforcing Intellectual Property Value, Globe White Page (2003)

Professional Honors

  • Fellow, Litigation Counsel of America  (invitation-only, national trial lawyer honorary society)
  • Member, Barristers of the Patent Law (invitation-only, regional patent trial lawyer honorary society)
  • Listed in Leading Lawyers Illinois (invitation-only, regional lawyer honorary society)
  • Listed in Who’s Who in American Law
  • Martindale-Hubbell® AV Peer Review Rating™

Community and Professional Involvement

  • ITC Trial Lawyers Association
  • Intellectual Property Law Section, American Bar Association
  • Litigation Section, American Bar Association
  • Federal Circuit Court of Appeals Bar Association

Representative Matters

Other cases Mr. Ross has litigated include:

Adolph Hottinger Maschinenbau GmbH v. George Fischer Foundry Systems Inc.*
Zurich Arbitral Tribunal
Case Type(s): Antitrust

Foseco International Ltd. et al. v. Swiss Aluminium Ltd.* et al.
Northern District of Illinois
Case Type(s): Antitrust

Erickson v. Trinity Theatre Inc.*
Northern District of Illinois
Case Type(s): Copyright Infringement

Real Estate Data Inc. v. The Sidwell Co.*
Northern District of Illinois
Case Type(s): Copyright Infringement

In re Dental Prophylaxis Devices (Dentsply International Corp. v. Electro Medical Systems SA*
U.S. International Trade Commission
Case Type(s): Patent Infringement

In re Slide Fastener Stringers (Talon Corp. v. YKK*)
U.S. International Trade Commission
Case Type(s): Patent Infringement

Chromalloy Corp. v. Turbine Components Corp.*
District of Connecticut
Case Type(s): Patent Infringement

Coherent Inc. v. Boreal Laser Ltd.*
Northern District of California
Case Type(s): Patent Infringement

Consolidated Aluminum Corp.* v. Foseco International et al.
Northern District of Illinois
Case Type(s): Patent Infringement

Eastman Kodak Co. v. Sony Corp.*
Eastern District of Texas
Case Type(s): Patent Infringement

Electro Medical Systems SA* v. Dentsply International, Inc., et al.
Eastern District of New York
Case Type(s): Patent Infringement

Engate, Inc. v. WordWave, Inc.,* et al.
Northern District of Illinois
Case Type(s): Patent Infringement

General American Transportation Corp.* v. Cyro-Trans, Inc.
Northern District of Illinois
Case Type(s): Patent Infringement

Husky Injection Molding Systems Ltd.* v. Electra Form Inc.
Southern District of Ohio
Case Type(s): Patent Infringement

Husky Injection Molding Systems Ltd.* v. R&D Tool and Engineering
Western District of Missouri
Case Type(s): Patent Infringement

Itron, Inc. v. CellNet Data Systems, Inc.*
District of Minnesota
Case Type(s): Patent Infringement

Linear Technology Corp.* v. Impala Linear Corp., et al.
Northern District of California
Case Type(s): Patent Infringement

Medtronic Corp. v. Siemens-Pacesetter Inc.*
Southern District of Florida
Case Type(s): Patent Infringement

Siemens-Elema AB* v. Puritan-Bennett Corp.
Southern District of California
Case Type(s): Patent Infringement

Société L'Oréal, S.A. v. Revlon Consumer Products Corp.*
Southern District of New York
Case Type(s): Patent Infringement

Solomon, et al. v. Cabela’s, Inc.,* et al.
Eastern District of Texas
Case Type(s): Patent Infringement%

Short Biography

Education

  • Georgetown University Law Center, J.D.
  • Purdue University, B.S., Mechanical Engineering

Practices

Industries

Admissions

  • Illinois
  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of Illinois, Trial Bar

Publications

Memberships

  • ITC Trial Lawyers Association

  • American Bar Association (ABA)

  • Federal Circuit Bar Association

News

Events

Thomas I. Ross

Partner

For a wide range of technologies and industries, including medical devices, mechanical products and electronics; Thomas I. Ross has litigated successfully in district courts throughout the United States and in the International Trade Commission (ITC) on matters involving patents, trademarks, copyrights, and trade secrets. He has first-chaired numerous trials, both bench and jury, and has been the lead attorney on a number of appeals before the Federal Circuit Court of Appeals and other Circuit Courts. His skills derive from his experience, as well as his training in mechanical engineering and work as an examiner at the U.S. Patent and Trademark Office. He has been engaged for expert testimony on patent law and Patent Office practices.

  • T.312.474.6635
  • F.312.474.0448

Thomas I. Ross

Thomas I. Ross

Recent Client Work

  • Mr. Ross first-chaired a seven-day jury trial in the Applied Biosystems v. Illumina, et al. case in which we successfully represented the defendants.  The issue was patent ownership of a new method of DNA sequencing by ligation, conceived by a former employee of Applied Biosystems while he had worked there.  The jury agreed with us that Illumina owned the patents.
  • The South Dakota Supreme Court handed Mr. Ross a win in the trademark infringement dispute Dakota Industries v. Cabela’s, after he had already obtained a favorable judgment for Cabela’s in the lower court. He successfully argued that plaintiff abandoned the trademark through non-use.

Detailed Biography

Representative Experience

Since 2003, Mr. Ross has won 4 of 5 of his Intellectual Property trials and 5 of 6 appeal cases.  In addition to those noted above, they include the following, where * denotes our client.

  • *Golden Voice Technology & Training v. Rockwell International, et al. Golden Voice’s patents for a call center operator voice storage and retrieval system were found infringed in a jury trial, where we presented the jury with actual and animated demonstrations of the subject technologies.  The jury found Rockwell infringed and that the infringement had been willful.  The verdict, including willfulness, was affirmed by the Federal Circuit Court of Appeals.
  • The Illinois Coalition Against Handgun Violence (ICAHV) v. *Illinois State Rifle Association (ISRA).  When the ICAHV failed to re-register its corporate name, the ISRA registered the ICAHV corporate name and promoted pro-gun legislation under the auspices of ICAHV.  A trademark infringement action ensued.  Mr. Ross averted the temporary restraining order with ISRA stipulating not to use the ICAHV moniker.  Further, although infringement was found in a bench trial, the assessment of damages was reduced from what the ICAHV had sought.
  • ADC Communications v. *Switchcraft, Inc. ADC’s patent covered a switching jack with impedance matching afforded by fin-shaped "waveguides"  adjacent the stationary and movable conductors.  ADC marketed its patented jack for the transmission of high-definition television signals.  Switchcraft’s competing jack design was a PCB-based switching jack that included fin-shaped walls between conductor strips.  The jury concluded that ADC failed to carry its burden of proving by a preponderance of the evidence that the fins in the Switchcraft jack did in fact impedance match.  In his JMOL decision, the judge cited Switchcraft’s explanation and test evidence as supporting the jury’s verdict of non-infringement.
  • Bass Pro Trademarks v. *Cabela’s. Cabela’s appealed the lower court’s finding of contempt for violation of a patent infringement consent judgment.  On appeal, Mr. Ross successfully argued that the new product did not infringe, a necessary prerequisite for finding contempt of a patent judgment; and the Federal Circuit Court of Appeals vacated the contempt order and sanctions.
  • *Franklin Electric v. Dover (OPW).  We were engaged to handle the appeal of a lower court’s summary judgment of non-infringement of Franklin’s patent on an improved fuel multi-port sump containment assembly.  The Federal Circuit Court of Appeals expressly adopted Mr. Ross’ reasoning, rejecting the lower court’s narrow view of the patent and claim construction, and remanded for further proceedings.

Background and Credentials

Thomas I. Ross is a seasoned intellectual property litigator who has experienced repeated success in litigation and at trial.  He has led cases in federal district courts throughout the United States, as well as numerous appeals before the United States Courts of Appeals for the Federal Circuit and other regional Circuit Courts, ITC actions, and arbitration and mediation hearings. In addition to his prior work as an examiner in the USPTO, Mr. Ross also served as a law clerk at the Patent Office Board of Patent Appeals and Interferences.

He has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer." Mr. Ross was also selected for inclusion in the 2013 Illinois Super Lawyers® list. Only five percent of the lawyers in the state were selected for this honor. 

Mr. Ross has a B.S. degree in Mechanical Engineering from Purdue University, and received his J.D. in 1979 from Georgetown University Law Center.

His broad range of experience encompasses such technologies and products as:

  • Plastic injection molding machines
  • Mechanical seals
  • Semiconductor manufacturing equipment
  • Head technology for magnetic recording
  • Wireless communications network systems
  • Computer power supply circuitry
  • Medical devices and technology
  • Pharmaceutical compounds
  • Feedback controls
  • Operational circuitry
  • Metals alloying and casting equipment
  • Hook and loop fasteners
  • Digital subtraction angiography
  • Cryogenic cooling systems

Publications and speeches

  • "Enforcing Intellectual Property Rights in China," China Business Review (October-December 2012)
  • "Patent enforcement in China is on the upswing," InsideCounsel, October 9, 2012.
  • "3 litigation strategies for enforcing IP rights in China," InsideCounsel, September 25, 2012.
  • "China’s alternative administrative route for enforcing intellectual property," InsideCounsel, August 28, 2012.
  • "China is worth it despite the risks," Crain's Chicago Business (August 22, 2011)
  • "Patent Damages," IPLAC Patent Symposium (Fall 2010)
  • "Our Federal Circuit: Its History and Precedents," MGB Academy (February 2010)
  • "Trade Secret Protection And The Biofuels Industry," Biofuels Journal Webinar (Spring 2009)
  • "Cross-Examination Techniques," Law Bulletin Litigation Skills II Conference (Spring 2008)
  • "Making Patent Plaintiffs Pay," Law Bulletin Corporate IP Conference (Spring 2006)
  • "Making Patent Plaintiffs Pay," Intellectual Property Technology and Law Journal (June 2006)
  • "A Discussion Of Issues Affecting Court Reporters Presented By The Engate Patents," NCRA Journal Of Court Reporting (June 2003)
  • "Intellectual property protection for trade secrets and know-how," Building And Enforcing Intellectual Property Value, Globe White Page (2003)

Professional Honors

  • Fellow, Litigation Counsel of America  (invitation-only, national trial lawyer honorary society)
  • Member, Barristers of the Patent Law (invitation-only, regional patent trial lawyer honorary society)
  • Listed in Leading Lawyers Illinois (invitation-only, regional lawyer honorary society)
  • Listed in Who’s Who in American Law
  • Martindale-Hubbell® AV Peer Review Rating™

Community and Professional Involvement

  • ITC Trial Lawyers Association
  • Intellectual Property Law Section, American Bar Association
  • Litigation Section, American Bar Association
  • Federal Circuit Court of Appeals Bar Association

Representative Matters

Other cases Mr. Ross has litigated include:

Adolph Hottinger Maschinenbau GmbH v. George Fischer Foundry Systems Inc.*
Zurich Arbitral Tribunal
Case Type(s): Antitrust

Foseco International Ltd. et al. v. Swiss Aluminium Ltd.* et al.
Northern District of Illinois
Case Type(s): Antitrust

Erickson v. Trinity Theatre Inc.*
Northern District of Illinois
Case Type(s): Copyright Infringement

Real Estate Data Inc. v. The Sidwell Co.*
Northern District of Illinois
Case Type(s): Copyright Infringement

In re Dental Prophylaxis Devices (Dentsply International Corp. v. Electro Medical Systems SA*
U.S. International Trade Commission
Case Type(s): Patent Infringement

In re Slide Fastener Stringers (Talon Corp. v. YKK*)
U.S. International Trade Commission
Case Type(s): Patent Infringement

Chromalloy Corp. v. Turbine Components Corp.*
District of Connecticut
Case Type(s): Patent Infringement

Coherent Inc. v. Boreal Laser Ltd.*
Northern District of California
Case Type(s): Patent Infringement

Consolidated Aluminum Corp.* v. Foseco International et al.
Northern District of Illinois
Case Type(s): Patent Infringement

Eastman Kodak Co. v. Sony Corp.*
Eastern District of Texas
Case Type(s): Patent Infringement

Electro Medical Systems SA* v. Dentsply International, Inc., et al.
Eastern District of New York
Case Type(s): Patent Infringement

Engate, Inc. v. WordWave, Inc.,* et al.
Northern District of Illinois
Case Type(s): Patent Infringement

General American Transportation Corp.* v. Cyro-Trans, Inc.
Northern District of Illinois
Case Type(s): Patent Infringement

Husky Injection Molding Systems Ltd.* v. Electra Form Inc.
Southern District of Ohio
Case Type(s): Patent Infringement

Husky Injection Molding Systems Ltd.* v. R&D Tool and Engineering
Western District of Missouri
Case Type(s): Patent Infringement

Itron, Inc. v. CellNet Data Systems, Inc.*
District of Minnesota
Case Type(s): Patent Infringement

Linear Technology Corp.* v. Impala Linear Corp., et al.
Northern District of California
Case Type(s): Patent Infringement

Medtronic Corp. v. Siemens-Pacesetter Inc.*
Southern District of Florida
Case Type(s): Patent Infringement

Siemens-Elema AB* v. Puritan-Bennett Corp.
Southern District of California
Case Type(s): Patent Infringement

Société L'Oréal, S.A. v. Revlon Consumer Products Corp.*
Southern District of New York
Case Type(s): Patent Infringement

Solomon, et al. v. Cabela’s, Inc.,* et al.
Eastern District of Texas
Case Type(s): Patent Infringement%

Short Biography

Thomas I. Ross

Education

  • Georgetown University Law Center, J.D.
  • Purdue University, B.S., Mechanical Engineering

Practices

Industries

Admissions

  • Illinois
  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. District Court, Eastern District of Wisconsin
  • U.S. Patent and Trademark Office
  • U.S. District Court, Northern District of Illinois, Trial Bar

Publications

Memberships

  • ITC Trial Lawyers Association

  • American Bar Association (ABA)

  • Federal Circuit Bar Association

News

Events

©2013 Marshall, Gerstein & Borun LLP