Manny Pokotilow and the digital revolution
Published in 2008 Pennsylvania Super Lawyers magazine
on May 23, 2008
Updated on June 11, 2009
Manny Pokotilow always wanted to walk among the stars. Literally.
“I graduated from high school in 1956 and the big talk was the astronaut program,” he says. “I thought it was the most exciting thing in the world.”
As a boy growing up in Passaic, he showed an early aptitude as a gadgeteer.
“What I remember is that he would build electronic devices at home. The Heathkits, the build-your-own TV-electronic-devices kits, he’d do that,” says youngest brother Steven. “I remember he once had a project where he built an airplane model. It was the biggest thing I ever saw—the wingspan must’ve been five feet.”
It was clear that Pokotilow would go into a technological field; the question was whether he’d make it there unscathed.
“Once there was a fire at the house,” says Steven, himself now a patent lawyer at New York’s Stroock & Stroock & Lavan. “The family was supposed to go to the circus, but Manny and our middle brother, Howie, started a fire in their room doing some project.”
Undeterred, Pokotilow learned that nearly everyone in the newly announced space program was an electrical engineer. He enrolled in Newark College of Engineering, now the New Jersey Institute of Technology, and set his sights on space.
Only two years into college, however, Pokotilow discovered he’d have to give up the dream—he flunked the depth-perception test that was part of his Air Force ROTC training. But when he graduated from college in 1960 with a B.S. in electrical engineering, he still wanted to be at the forefront of technology. So he called a college friend working at the U.S. Patent Office in Washington, D.C.
“I felt that rocket ships would be controlled by computers because people couldn’t do the calculations fast enough,” he says. “And what better way to learn about computers than reading the patent applications coming into the Patent Office?”
“The upshot is, in 1960 he calls me up and asks me, ‘Marty, what do you think about me coming down to work for the Patent Office and becoming a patent lawyer?'” says Martin P. Hoffman, now an intellectual-property lawyer with Hoffman, Wasson & Gitler of Arlington, Va. “I said, ‘That’s a great idea.’ I like to joke that I’m the one who got him started on his illustrious career.”
Pokotilow worked among what was then a small brotherhood of patent examiners and, at night, attended American University in pursuit of his J.D. In 1964-the same year he graduated from law school—Pokotilow earned a place in history when he approved a patent that had been languishing at the Patent Office since 1947. It was for the ENIAC, the world’s first programmed general-purpose digital computer, which was created by two engineers from the University of Pennsylvania who had been involved for nearly two decades in a patent-interference suit with IBM. (They eventually won their suit.)
Before graduating, he started working at the law firm of legendary Philadelphia councilman David Cohen, which put him to work on discovery in a case on behalf of Ultronics, a South Jersey company that created a digital stock market ticker display. Ultronics alleged that Western Union and another company conspired to ruin its business. After two weeks of sifting through a room full of documents, Pokotilow found the smoking gun.
“I see a letter that basically says, ‘Here’s how we’ll keep Ultronics out of the business,’ from Western Union to this company called Trans-Lux,” Pokotilow says. “That won the case.”
But it didn’t win him a job. Nevertheless, Cohen was impressed enough to give Pokotilow freelance work in several labor cases, which provided the young attorney invaluable courtroom time.
“It was great for me, because most people in patent law take years to get experience in litigation,” Pokotilow says.
His real passion was still the burgeoning computer industry. In 1965, he testified before Congress, explaining why computer programs should be patentable subject matter—a debate in which he’d play a key role 17 years later.
“As a result, over the next several years, the Patent Office became much more updated with the realities of life,” he says. “At that time it was very clear the entire future of computers was in computer programs.”
The same year Pokotilow testified before Congress, Caesar, Rivise, Bernstein & Cohen decided it needed someone with digital expertise.
“One day you may meet the guy with the cure for cancer or a guy with a new eyeglass frame,” says Barry Stein, a partner at Caesar, Rivise. “Manny and I are the two technogeeks. As soon as the new things come out, we have to be the first to have them. He had the first high-definition TV, the first Atari. Manny’s a kid at heart.”
In the early ’80s, his expertise and hunch about the importance of computers led him to a critical role in one of the seminal cases in computer history.
“Apple Computer was making the Apple II, the first successful personal computer in the United States. One of my friends and clients, Barry Borden, then looking for a company to start, came to me during a game of tennis and said, ‘Manny, I got a question for you. Is there anything that would prevent me from copying the Apple II Plus operating system if I were to make another computer of my own?’ I said, ‘The only thing preventing you making a copy is if they patented the structure of their operating system or the software they’re using in the operating system.’ He said, ‘They only have copyrights.’ And I said, ‘Copyrights can’t protect an operating system.'”
So Borden founded Franklin Computer Corporation in Burlington, N.J., and in early 1982 began marketing the Franklin Ace 100 and Franklin Ace 1000, clones of the Apple II and Apple II Plus. On May 12, 1982, Apple sued Franklin in the U.S. District Court for the Eastern District of Pennsylvania and asked for an injunction on the sale of Franklin computers. Pokotilow was Franklin’s lead counsel in the copyright matter.
“It was 1982, the year my daughter graduated from Lower Merion High School,” he says. “I remember because I missed her graduation. It was right during the middle of the preliminary injunction.”
It was the Wild West era of computers. It was still unclear which, if any, intellectual property laws applied to inventions that would have been totally inconceivable to the pre-20th-century minds that laid the foundations of patents and copyrights. Many people, including those at Apple, seemed not to grasp the concept that programs might be patentable.
In seeking the injunction, Apple argued that the 1980 amendment to the Copyright Act meant that copyrights applied to all computer programs. Pokotilow countered that the amendment was hardly universal, and that in the Franklin case, the more applicable protection was a patent—something Apple could no longer seek, as its computers had been on the market for more than a year.
Pokotilow argued that, by definition, functional parts of an invention were protected by patent and that creative works were covered by copyright. Nothing in a computer is more essential to its functioning than its operating-system software; therefore, Apple’s mere copyright was insufficient to prevent Franklin’s clones from getting to market. The judge agreed and denied the injunction.
Apple appealed to the U.S. Court of Appeals for the 3rd Circuit in 1983, but a corporate shake-up had stripped Borden of decision-making power and a different attorney took over.
“I didn’t get to argue the case, and everything I had offered was ignored, and it broke my heart when Apple was able to get a reversal,” Pokotilow says. “It was that decision that led to the monopoly you have of Microsoft and Apple today, with computer programs being copyrightable.”
Apart from his work on the ENIAC case, Pokotilow developed a reputation as a seasoned veteran in intellectual property law. In 1996, in WAWA Dairy Farms v. Haaf, he won the first injunction issued under the 1995 Trademark Dilution Act. “You don’t want to call him an oracle, but that’s pretty close,” says WAWA general counsel Mark Suprenant.
Pokotilow is currently trying to invalidate a patent in Sanofi-Aventis and Bristol-Myers Squibb v. Apotex, a multibillion-dollar case involving the hugely successful heart medication Plavix. (The case is currently with the Court of Appeals for the Federal Circuit.) Through it all, he’s been well served by his signature grin and ability to cut through technical jargon to the heart of a case.
“I think it’s because he’s an engineer,” says Pokotilow’s wife, Marcy C. Panzer, a lawyer and chairwoman of the board of St. Edmonds Federal Savings Bank. “He sees the roots, the foundation, the platform on which everything stands and how it all works. He likes to solve problems.”
In 2003, Pokotilow’s ability to handle esoteric cases brought his life full circle. That year, Eminem and his Shady Ltd. Clothing line was sued by a Las Vegas company. A few years earlier, the rapper’s marketing representative had called Pokotilow to register “Eminem” and “Slim Shady” as trademarks. Now he was being asked to work with him again; only this time, his client had become one of the biggest musicians in the world.
The would-be astronaut finally got to walk among the stars.