People

Donald R. Steinberg

Partner

Chair, Intellectual Property Department

Steinberg, Donald R.

Donald 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.

Honors & 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 2004-2013 editions of Boston Magazine
  • Selected by peers for inclusion in the 2013, 2014 and 2015 editions of the Best Lawyers in America for his communications law, litigation: intellectual property, patent law and copyright law practices
  • Selected as a 2013-14 "IP Star" by Managing IP magazine, a guidebook that identifies leading lawyers in the United States

Publications & News

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July 17, 2014

WilmerHale and 17 Partners Rank in Managing IP’s 2014-2015 IP Stars Handbook

Managing IP has released its second annual edition of its IP Stars Handbook—a guide that identifies the leading IP firms and lawyers in the United States—prominently ranking WilmerHale and 17 of its partners.

June 19, 2014

Unanimous U.S. Supreme Court Decides Closely-Watched Case on Patent Eligibility of Computer-Implemented Business Methods

In a unanimous decision authored by Justice Thomas, the Supreme Court today affirmed the Federal Circuit’s en banc decision invalidating the patents asserted by Alice Corporation against CLS Bank International as ineligible for patent protection under 35 U.S.C. §101 because they are directed to an abstract idea.

June 3, 2014

US Supreme Court Issues Two Unanimous Opinions Overturning Federal Circuit Patent Law Rulings

In two unanimous decisions handed down on June 2, the US Supreme Court overturned Federal Circuit rulings on patent indefiniteness and induced infringement. Both rulings added challenges for parties attempting to enforce patents.

May 1, 2014

U.S. Supreme Court Relaxes Standard and Confers Discretion to District Courts Over Awarding Attorney’s Fees in Patent Suits

In two unanimous decisions by Justice Sotomayor, the Supreme Court recently overturned the Federal Circuit’s decade-old framework for awarding attorney’s fees in patent cases, seemingly rendering the prospect of recovering such fees going forward far more likely.

January 21, 2014

Federal Circuit Finds Patentees Entitled to Additional Patent Term Adjustment

August 15, 2013

Best Lawyers in America® 2014 Recognizes Nearly 100 WilmerHale Partners, Naming Eight “Lawyer of the Year”

Nearly 100 WilmerHale lawyers have been selected for inclusion in the 20th edition of The Best Lawyers in America®—a respected peer-review publication in the legal industry.

May 31, 2013

Fourteen WilmerHale Partners Named as 2013-14 IP Stars by Managing IP

Managing IP magazine, a Euromoney Legal Media Group publication, has released its inaugural edition of IP Stars—a guidebook that identifies the leading IP firms and lawyers in the United States. WilmerHale is among the top nationally ranked firms in the guide and is rated highly in multiple states.

May 24, 2013

Chambers USA 2013 Final Results Announced

Chambers USA: America's Leading Lawyers for Business today announced its final rankings for the 2013 edition, in which 93 WilmerHale lawyers and 44 firm practice areas have been recognized as leading in their field.

May 13, 2013

A Divided Federal Circuit Affirms CLS Bank, Finding No Patent-Eligible Subject Matter Under 35 U.S.C. § 101

January 23, 2013

Recent Developments Relating to Patent Term Adjustments

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.

Practices

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Education

JD, cum laude, Harvard Law School, 1988

BSE, Electrical Engineering and Computer Science, magna cum laude, Princeton University, 1984, Phi Beta Kappa

Bar Admissions

Massachusetts

United States Patent and Trademark Office

Clerkships

The Hon. Martin F. Loughlin, US District Court for the District of New Hampshire, 1988 - 1989