Thomas Pasternak is a trial lawyer focusing on patent and trademark litigation. Mr. Pasternak has represented clients in a diverse range of technologies, including e-commerce and business methods, molecular diagnostics, automotive technology and products, semiconductors and biotechnology, polymer chemistry and packaging, electrical and electronic products, battery technology, paper products, cellular telephony, and consumer products. He has a particularly strong background in electrical engineering due to his undergraduate and graduate coursework, his experience aboard a nuclear submarine, and his experience on many cases dealing with electrical engineering. He has handled trademark and trade dress matters for a variety of clients in a variety of industries. He also has extensive patent prosecution and licensing experience.

Mr. Pasternak has been responsible for several “rocket docket” litigations in Wisconsin and Virginia. He has also been responsible for litigation involving numerous patents, large teams from multiple offices, and multiple defendants. For example, Mr. Pasternak recently tried a case in the Western District of Wisconsin that led to a finding of willful infringement in favor of his client. He also recently led a team that won summary judgment of patent invalidity and non-infringement, as well as obtaining attorneys’ fees for his client, in the Eastern District of Virginia.

He comes to DLA Piper from R.R. Donnelley & Sons, where he served as its vice president and chief patent counsel. Before that, he was in private practice as a partner at Kirkland & Ellis. Prior to law school, he served in the United States Navy aboard the U.S.S. Haddo, SSN-604.

Representative Matters

Patent Infringement Litigation:

• Abbott Laboratories, et al. v. Glenmark Pharmaceuticals, Inc., et al. (D.N.J. 2007)
• Girafa.com, Inc. v. Amazon.com, et al. (D. Del. 2007)
• Langeman Manufacturing, Ltd. v. Vortex Sprayliners, Inc. (W.D. Wis. 2007)
• New Medium Technologies, LLC v. Miranda Technologies, Inc. (N.D. Ill. 2005)
• Trading Technologies v. REFCO (N.D. Ill. 2005)
• Third Wave Technologies v. Stratagene (W.D. Wis. 2004)
• IPXL Holdings v. Amazon.com, Inc. (N.D. Va. 2004)
• Maytag v. Whirlpool (S.D. Iowa 2003)
• Ricoh Co., et al., v. Katun Corp. (D.N.J. 2003)
• Third Wave Technologies v. Eragen (W.D. Wis. 2002)
• Beststop v. Steelhorse (W.D. Wis. 2000)
• Nilssen v. Osram Sylvania (N.D. Ill. 2001)
• Thomas & Betts v. AEA (N.D. Ill. 1999)
• ETS v. CBOT, et al. (S.D. Texas 1999)
• Nilssen v. MagneTek (N.D. Ill. 1998)
• Nilssen v. Motorola (N.D. Ill. 1996)
• James River v. Hallmark Cards, Inc. (E.D. Wis. 1993)
• B.F. Goodrich v. AlliedSignal (D. Del. 1993)

• Alcoa, Inc. v. The Packmate Company and Mo Products, Inc. (E.D. Va 2007)
• Bodum USA, Inc. v. LaCafetiére, Inc. (N.D. Ill. 2007)
• Trek Bicycle Corporation v. Electrik Motion II, LLC (W.D. Wis. 2007)
• S.C. Johnson v. Pliant Corp. (E.D. Mich. 2002)
• Cistron Biotechnology v. Immunex (W.D. Wash. 1993)

Teaching Positions

• Adjunct Professor, Valparaiso University
• Adjunct Professor, Loyola Chicago School of Law
• Society of Automotive Engineers, teaching “Intellectual Property Law For Engineers”

Admissions

• Illinois

Memberships

• Licensing Executives Society (LES)
• Intellectual Property Owners (IPO)
• The Richard Linn American Inn of Court
• The Sedona Conference Working Group on Electronic Discovery

Publications

• "Declaratory Judgment Jurisdiction: A Dance On The Razor's Edge," published in Principles Of Patent Law, Cases and Materials, by Donald S. Chisum, et al., (2nd ed., copyright 2001), Side Bar, ch. 9, p. 1043

Seminars

• "2008 Ethics Issues in Intellectual Property Practice for the Tennessee Bar Association"
• "Blindfold or Binoculars? The Pros and Cons of Conducting IP Clearance Searches Before New Product Launch"
• "The New E-Discovery Rules - Will Someone PLEASE Just Tell Me What I Need To Know?!"