Thomas G. Pasternak

• tpasternak@steptoe.com
• vCard
• Chicago Office

Thomas G. Pasternak is a partner Steptoe’s Chicago office where his primary focus is in the areas of patent and trademark litigation.

Mr. Pasternak represents clients in a diverse range of technologies including:

• Automotive Technology
• Battery Technology
• Biotechnology
• Cellular Telephony
• Consumer Products
• E-commerce and Business Methods
• Electrical and Electronic Products
• Molecular Diagnostics
• Paper Products
• Polymer Chemistry and Packaging
• Semiconductors

Mr. Pasternak is particularly well-versed in areas related to electrical engineering, having gained insight from his undergraduate and graduate coursework, and his service aboard a US Naval nuclear submarine.  As a result, he has ably litigated patents in the electrical engineering field, as well as in cases involving chemical products and medical devices.  In addition, he has extensive patent prosecution and licensing experience, and has written and prosecuted hundreds of patent applications in many technologies, including medical devices and various mechanical and electro-mechanical technologies.

Mr. Pasternak has represented clients in several Hatch-Waxman actions and has been the lead lawyer in several “rocket docket” litigations in Wisconsin and Virginia.  His recent litigation successes include:

• Defeating a motion for a preliminary injunction for Amazon in Delaware in a patent infringement matter
• Winning a motion for summary judgment in a trade matter filed against La Cafetiere by Bodum, Inc.
• Winning a jury verdict in a trial in the Western District of Wisconsin that led to a finding of willful infringement
• Winning summary judgment of patent invalidity and non-infringement, as well as obtaining attorneys’ fees for his client, in the Eastern District of Virginia
• Winning a trade dress case relating to French press coffee makers on summary judgment in the Northern District of Illinois
• Favorably settling a case in the Eastern District of Michigan involving heated seats and over two dozen patents

Mr. Pasternak has extensive experience litigating cases in the ITC, and he frequently argues before the Federal and Seventh Circuits and frequently represents prisoners in Civil Rights actions.

Representative Matters

Some of Mr. Pasternak's representative matters include:

Patent Litigation:

• Abbott Laboratoires, et al v. Glenmark Pharmaceuticals, Inc. et al (D.N.J. 2007)
• Alcoa, Inc. v. The Packmate Company and Mo Products, Inc. (E.D. Vir. 2007)
• American Radio LLC v. Qualcomm, Broadcom, Intel, and Cisco (C.D. Ca. 2012)
• B.F. Goodrich v. Allied Signal (D. Del 1993)
• Beststop v. Steelhorse (W.D. Wis. 2000)
• Bodum USA, Inc. v. La Cafetiere, Inc. (N.D. Ill. 2007)
• Cistron Biotechnology v. Immunex (W.D. Wash. 1993)
• ETS v. CBOT, et al (S.D. Tex. 1999)
• Girafa.com, Inc. v. Amazon.com, et al (D. Del. 2007)
• IPXL Holdings v. Amazon.com, Inc. (N.D. Vir. 2004)
• James River v. Hallmark Cards, Inc. (E.D. Wis. 1993)
• Langeman Manufacturing, Ltd. v. Vortex Sprayliners, Inc. (W.D.Wis. 2007)
• Maytag v. Whirlpool (S.D. Iowa 2003)
• New Medium Technologies, LLC v. Miranda Technologies, Inc. (N.D. Ill. 2005)
• Nilssen v. Motorola (N.D. Ill. 1996)
• Nilssen v. Motorola (N.D. Ill. 1998)
• Nilssen v. Osram Sylvania (N.D. Ill. 2001)
• Olesky v. General Electric (N.D. Ill. 2006)
• Pure Fishing, Inc. v. Normark Corporation d/b/a Rapala (D.S.C. 2010)
• Pure Fishing, Inc. v. Shimano American Corporation (D.S.C. 2010)
• Ricoh Co., et al v. Katun Corp. (D.N.J. 2003)
• S.C.Johnson v. Pliant Corp. (E.D. Mich. 2002)
• Spedire v. FedEx et al. (W.D. Pa. 2010)
• Sunbeam Products, Inc. v. Global Marketing Corporation, et al. (E.D. Vir. 2009)
• Sunbeam Products, Inc. v. Hamilton Beach Brands, Inc., et al.  (E.D. Vir. 2009)
• Sunbeam Products, Inc. v. HoMedics, Inc. (W.D. Wis. 2008)
• Technology Innovations LLC v. Amazon.com, Inc. (D. Del. 2011
• Technology Innovations LLC v. Amazon.com, Inc. (S.D. Tex. 2011)
• Third Wave Technologies, Inc. v. Stratagene Corporation (W.D. Wis. 2005)
• Third Wave Technologies, Inc. v. Eragen Biosciences (W.D. Wis. 2003)
• Thomas & Betts v. AEA (N.D. Ill. 1999)
• Trading Technologies v. REFCO (W.D. Wis. 2004)
• Trek Bicycle Corporation v. Electrik Motion II, LLC (W.D. Wis. 2007)
• Uniroyal v. Omnova (N.D. Ohio 2008)
• W.E.T. Automotive Systems Ltd. v. Amerigon, Inc. (E.D. Mich. 2010)

Trademark Litigation:

• Mario Tricoci Hair Salons and Day Spas, Inc. v. Franco Tricoci Salon and Spa Schaumburg, LLC, et al. (N.D. Ill. 2010)
• Trek Bicycle Corporation v. Trek Winery, LLC (W.D. Wis. 2009)

Section 337/ITC Litigation:

• In the Matter of Mobile Electronic Devices, Including Wireless Communication Devices, Portable Music and Data Processing Devices, and Tablet Computer; Inv. No. 337-TA-794 (2011) – Represented complainant Samsung Electronics Co., Ltd. in a patent infringement suit against Apple, Inc. involving wireless communications technology.
• Certain Mobile Devices Incorporating Haptics; Inv. No. 337-TA-834 (2012) – Represented respondent Motorola Mobility, LLC in a patent infringement suit brought by Immersion Corporation involving haptic feedback technology (settlement favorable to Motorola Mobility, LLC).

Noteworthy

• Adjunct Professor, Valparaiso University
• Adjunct Professor, Loyola Chicago School of Law
• Society of Automotive Engineers 
• Lecturer, “Intellectual Property Law for Engineers.”

Select News & Events

• Illinois Super Lawyers Recognizes Steptoe Partners
• FCBA 2012 International Series, “Quality, Efficiency & Change: Best Practices in Today’s Global IP, Trade & Procurement Community”, December 7, 2012
• Korean Corporate Counsel Retreat - The Top Twenty Changes in Patent Litigation in the Past Twenty Years
• Smart TV Global Summit 2012 - The Smart TV Patent Wars
• Steptoe ITC Seminars - Taiwan, 2011 - 2012
• Law360 Features Thomas Pasternak for Top Litigators Q&A
• Media Quote Tom Pasternak on La Cafetiere Win
• Steptoe Victorious in Trademark Case for Trek Winery
• Thomas Pasternak Joins Steptoe's IP Group
• Patent Litigation Panel, Seventh Circuit Bar Association, 2009
• Ethics Issues in Intellectual Property Practice, Tennessee Bar Association, 2008

Selected Publications

• Global-Tech: Is Justice Willfully Blind?
  June 30, 2011, Law360
• "Making Joint Defense Agreements Work," Litigation, Vol. 34, No. 4, Summer 2008
• "Declaratory Judgment Jurisdiction: A Dance on the Razor’s Edge," Side Bar ch. 9, p. 1043 2001 Principles of Patent Law, Cases and Materials, 2nd ed., by Donald S. Chisum, et al.

Professional Affiliations

• Eastern District of Texas Bar Association
• Federal Circuit Bar Association
• Intellectual Property Owners Association (IPO)
• The Richard Linn American Inn of Court