Donald Steinberg is the chair of the firm’s Intellectual Property Department, a member of the firm’s Management Committee and a member of the Intellectual Property Litigation Practice Group. He joined the firm in 1994.
Practice
Mr. Steinberg’s practice focuses on advising clients on intellectual property matters, obtaining patent and trademark protection, and intellectual property litigation.
With patent advice and prosecution, Mr. Steinberg’s clients include designers and developers of analog, digital and mixed signal devices; computerized database and searching systems; operating systems; networking systems; electromechanical devices; internet-based applications and medical devices.
Mr. Steinberg has experience with patent and copyright litigation in the federal courts, involving various aspects of computer software and hardware, computer networking, electronic devices, wireless communications, video compression, semiconductor manufacturing and computer security. His recent experience includes being part of the teams that:
- filed an amicus brief in the Federal Circuit in the In re Bilski case, and was one of two amici that participated in oral argument;
- obtained summary judgment of non-infringement, and a summary affirmance by the Federal Circuit of a patent relating to electronic image storage systems;
- obtained a jury verdict of non-infringement of two patents relating to video compression, with the trial court also finding the patents unenforceable for failure to disclose them to a standards-setting organization and finding the case exceptional, findings affirmed by the Federal Circuit.
With trademark matters, Mr. Steinberg’s clients include a variety of computer software and networking systems companies, as well as clients in a variety of other fields, including management consulting and consumer products. He has extensive experience before the Trademark Trial and Appeal Board, including successful trials of opposition and cancelation proceedings involving medical devices and games.
Professional Activities
Mr. Steinberg is a member of the Software and Business Methods Committee of the Intellectual Property Owners Association. In 2004 and 2005, he taught a seminar on current issues in patent law as an adjunct faculty member of the New England School of Law. He serves on the Advisory Council for the Department of Electrical Engineering at Princeton University.
Honors and Awards
- Recognized as a Massachusetts leader in the intellectual property field in each edition since 2005 of Chambers USA: America’s Leading Lawyers for Business
- Named a “New England Super Lawyer” (formerly “Massachusetts Super Lawyer”) in the 2004-2011 editions of Boston Magazine
Recent Publications
- Christian Duvernoy, Naboth van den Broek, Klaus Schubert, Hans-Georg Kamann, Donald R. Steinberg, Roberto Grasso, “Europe's New Strategy for the Future of IPRs in the Digital Age: Launch of a Legislative and Regulatory Debate,” June 23, 2011
- David L. Cavanaugh, Donald R. Steinberg, “U.S. Patent and Trademark Office Issues Final Rule to Implement Prioritized Examination "Track 1,” April 11, 2011
- James B. Lampert, Nels T. Lippert, James L. Quarles III, Donald R. Steinberg, “Bilski Loses—The Machine or Transformation Test is Important, but Not Exclusive,” June 28, 2010
- Donald R. Steinberg,“Mixed Decision From Federal Circuit Regarding PTO Rules,” March 23, 2009
- Q&A With WilmerHale's Donald Steinberg, published in IP Law360, May 22, 2009
- MJ Edwards and Donald Steinberg, “The Implications of Bilski: Patentable Subject Matter in the United States” IDEA: The Intellectual Property Law Review, Vol. 49: No.3 – 2009
- Donald Steinberg and Jeffrey Lee, “Patentees Confront Bans on Reverse Engineering,” Special to the National Law Journal – January 2009
- Donald Steinberg and MJ Edwards, “What is Patentable: Patentable Subject Matter in the United States,” AIPLA Mid-Winter Institute – January 2009
- William F. Lee, David B. Bassett, Donald R. Steinberg, Felicia H. Ellsworth, “Federal Circuit Decision in In re Bilski Has Far-Reaching Implications” – October 2008
- Randolph D. Moss, Donald R. Steinberg, Ariel B. Waldman, “Statute Attempts to Fix Perceived Constitutional Problem in the Law Governing the Appointment of Administrative Patent and Administrative Trademark Judges” – August 2008
- Donald R. Steinberg and David Chavous, “Supreme Court Review of Patent Cases: What Will Follow Ebay, Medimmune, and KSR?” Journal of High Technology Law, Vol. VIII: No.2, 2008
Recent Speaking Engagements
- WilmerHale Waltham – Presentation entitled: “The America Invents Act” – November 2011
- WilmerHale Intellectual Property Conference – Panel entitled: “Financial Services Patent Litigation Issues” – October 2011
- Boston Patent Law Association – Presentation entitled “Bilski: How will the decision affect your patent practice?" – October 2010
- International Property Owners Association Webinar: Bilski Decision – July 2010
- WilmerHale Intellectual Property Conference – Presentation entitled: “Patentable Subject Matter from Business Methods and Software to Diagnostics” – May 2010
- Harvard Journal of Law & Technology – Panel entitled “Bilski & Method Patents” – April 2010
- Boston Bar Association – Presentation entitled “The Status of Patentable Subject Matter: A Bilski Update Following Oral Argument in the Supreme Court” – December 2009
- Pacific Rim Advisory Council Conference – Panel entitled “Getting it Right from the Beginning: Protecting Technology with Patents in the United States, Japan and Canada” – April 2009
- American Intellectual Property Law Association Mid-Winter Conference – Presentation entitled “Patentable Subject Matter in the United States: Lessons Since Bilski” – January 2009
- Boston Patent Law Association Computer Law and Biotechnology Committees – Seminar entitled “The Bounds of Patent Eligibility in the Aftermath of the Bilski Decision” – January 2009
- Boston Bar Association – Presentation entitled “In re Bilski–A New World For Prosecution and Litigation of Software and Business Method Patents, or Not?” – December 2008
- Strafford Publications, Inc. – Webinar entitled “Best Practices for Patent Claims Post-Bilski” – December 2008
- Boston Patent Law Association Computer Law Committee – Panel entitled “In re Bilski: How Will the Federal Circuit Define the Bounds of Patentability?” – October 2008
- The Harvard Law School Conference on Intellectual Property Law – Panel entitled “The Law of Obviousness after KSR: What is (or should be) Decided by Whom and When” – September 2008
