PRACTICE AREAS


Steven B. Pokotilow's practice focuses on the litigation and transfer of domestic and international patent, trademark and copyright rights. As manager of the intellectual property portfolios of a number of clients, Mr. Pokotilow is also regularly called upon to negotiate licensing agreements, as well as to provide advice and counsel on the intellectual property issues related to joint ventures and mergers and acquisitions.

As recent technological innovations have created new intellectual property rights and tested the boundaries of existing ones, Mr. Pokotilow’s roster of clients has grown to include computer hardware and software vendors, multi-media publishers and providers, manufacturers of television navigation systems, arterial puncture-closure medical devices, laboratory animal systems and products, ID pet recovery systems, high voltage underground products, and voice processing components. Other clients include developers of medical instruments, garments, luggage and cosmetic products, entertainment conglomerates, electronic tracking platforms, publishers of toy, hobby and sport memorabilia and investors in IP development ventures.

REPRESENTATIVE MATTERS

  • In a decision closely followed the Copyright Bar, obtained an en banc re-argument and reversal of a Third Circuit decision, resulting in a holding that part numbers used to identify panel fasteners, although created by a novel system, were not sufficiently original to be accorded copyright protection. The decision will have a considerable impact on the way in which products such as printer cartridges, batteries, etc., can be cross-referenced by competitors in sales and promotional materials.
  • Preserved client’s position as a leading manufacturer of animal identification devices by obtaining a Federal District Court ruling upholding the validity and enforceability of client’s patent for a unique implantable microchip. Following an affirmance by the U.S. Court of Appeals for the Federal Circuit, client was able to enforce a prior district court jury verdict permanently enjoining its opponent and largest competitor from making and selling similar microchips.
  • In a recent high-profile jury trial, obtained a defense verdict on behalf of a major pharmaceutical company after the jury rejected plaintiff’s assertion of prior trademark rights in the brand name of the company's new line of herbal supplements and found no evidence of trademark infringement, dilution or unfair competition under state or federal law.
  • As plaintiff’s counsel in a leading case initiated under the 1996 Federal Trademark Dilution Act, argued on behalf of major entertainment conglomerate that defendant had diluted plaintiff’s federally registered and famous slogan by identifying its services with a highly similar trademark.
  • In patent litigation decisions successfully enforcing a patent covering erasable markers and a patent covering collapsible luggage, obtained awards of attorney fees and treble damages. In patent litigation defending a claim of patent infringement on a 3-in-1 booklet, obtained a complete defense verdict and an award of attorney fees.
  • In a litigation in New Jersey, has been successful in dismissing claims that his client misappropriated ten trade secrets. The case also includes allegations regarding certain items of confidential information not rising to the level of trade secrets, which remain to be litigated.

HONORS & AWARDS

Mr. Pokotilow has been listed in Chambers USA: America’s Leading Lawyers for Business, Best Lawyers in America and Super Lawyers. He has also been nationally recommended by The Legal 500 United States.


MEMBERSHIPS

  • Member, American Bar Association
  • Member, International Trademark Association
    • Member, U.S. Legislation Committee
    • Leader, 2016 Leadership Team Program

SPEECHES & EVENTS

  • Speaker, "Updates in Trademark Dilution Law," New York Intellectual Property Law Association, June 17, 2008
  • Speaker, "Latest Developments in Complex Civil Litigation: An Analysis of the Federal Judicial Center's New Manual for Complex Litigation, Fourth," ALI-ABA, December 11-13, 2003

PUBLICATIONS

  • Co-author, "'Hot News' Doctrine Protects Investment Firms' Actionable Equity Recommendations," Stroock Special Bulletin, March 22, 2010
  • Co-author, "'Hot News' for Financial Index Issuers: Southern District Decision in The Associated Press v. All Headline News Corp.," Stroock Special Bulletin, March 4, 2009
  • Co-author, "Standard Setting Increasingly Under Siege," GEN: Genetic Engineering & Biotechnology News, March 1, 2009
  • Co-author, "In re Bilski: Federal Circuit Addresses Standard for Patentability of Business Methods," Stroock Intellectual Property Practice Group Special Bulletin, November 5, 2008
  • Co-author, "Standards Capture: A Threat to Standard Setting Organizations?" Stroock Special Bulletin, April 2008
  • Co-author, "KSR International Co. v. Teleflex, Inc.: Throttling Back a Rigid Approach to Obviousness," Stroock Special Bulletin, May 9, 2007
  • Co-author, "eSpeed Patent Ruled Unenforceable," Stroock Special Bulletin, April 10, 2007
  • Co-author, "Protection for Financial Indexes, ETFs, Other Products," New York Law Journal, September 29, 2006
  • Co-author, "Patent Injunctions: Quo Vadis," The Intellectual Property Strategist, August 1, 2006
  • Co-author, “Internet Pop-Up Advertise-ments: Do They Infringe?”, The Practical Litigator, pp. 21-25, January 2005
  • Co-author, “Identification of Intellectual Property Due Diligence Pitfalls in Cross-Border Transactions," LabToWallStreet.com, Winter 2004
  • Co-author, “File Early and File Often: A Pending Application is Your Best Approach to Capturing Your Competitor’s Product,” Patent Strategy and Management, Vol. 4, No. 9, January 2004
  • Co-author, “U.S. Patent Protection for European Inventions: Global Strategies for a Global Marketplace,” Screening: Trends in Drug Discovery, Vol. 4, March 2003, pp. 22-24
  • Co-author, “Are Descriptive Marks That Have Acquired Distinctiveness Protected Under the FTDA?” published at the INTA Trademark Dilution Forum, Spring 2003

ADMITTED TO PRACTICE

New York, 1974

U.S. District Court, Southern District of New York, 1984; U.S. District Court, Eastern District of New York, 1984; U.S. Court of Appeals, Second Circuit, 1975; U.S. Court of Appeals, Third Circuit, 1980; U.S. Court of Appeals, Seventh Circuit, 1987; U.S. Court of Appeals, Fourth Circuit, 1989; U.S. Court of Appeals, Federal Circuit, 1982; U.S. Supreme Court, 1987


PATENT ADMISSIONS

U.S. Patent & Trademark Office, 1973

EDUCATION

J.D., The American University, 1973

B.S., University of Maryland, 1968

 

PUBLICATIONS

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