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 and 2014 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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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. The 2014 list also highlights eight WilmerHale partners who have been named "Lawyer of the Year" by Best Lawyers.

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

December 18, 2012

Intellectual Property Law in 2012

With another successful year in 2012, we are stepping back to consider some of the highlights in intellectual property law and our IP practice. The continued implementation of the America Invents Act has led to new thinking about patent strategy and the use of various post-grant proceedings. The courts and practitioners have continued to wrestle with the scope of patentable subject matter, direct and indirect infringement, inequitable conduct, damages, and other issues. At the same time, the intersection of IP and other areas of law continues to expand, such as with the scrutiny concerning the adequacy of disclosures of patent rights during standards-setting. Our IP practice has been active in these and other areas.

June 7, 2012

Chambers USA 2012 Final Results Announced

March 30, 2012

Chambers USA 2012 Preliminary Results Announced

June 23, 2011

Europe's New Strategy for the Future of IPRs in the Digital Age: Launch of a Legislative and Regulatory Debate

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