People

Donald R. Steinberg

Partner

Chair, Intellectual Property Department

Steinberg, Donald R.

Don Steinberg’s practice focuses on advising clients on intellectual property matters, obtaining patent and trademark protection, intellectual property litigation, and post-grant proceedings before the Patent and Trademark Office. His clients include designers and developers of microprocessors and other analog, digital and mixed signal devices; networking systems; video games; internet-based applications; computer security; financial services; 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.

He has worked on numerous contested proceedings within the Patent Office, including inter partes review (IPR), covered business method (CBM), and ex parte and inter partes re-examination proceedings representing both petitioners and patent owners. His recent experience includes being the lead attorney in four CBM trials against a non-practicing entity that resulted in the Board invalidating all claims of the four patents.

Honors & Awards

  • Recommended in the 2016 edition of The Legal 500 United States for intellectual property: patent litigation: ITC, intellectual property: patent litigation: full coverage, and intellectual property: trade secrets
  • Recognized as a 2005-2013 Massachusetts leader in the intellectual property field by Chambers USA: America's Leading Lawyers for Business 
  • Named a "New England Super Lawyer” (formerly "Massachusetts Super Lawyer”) in the 2004-2015 editions of Boston Magazine
  • Selected by peers for inclusion in the 2013-2017 editions of the Best Lawyers in America for his communications law, litigation: intellectual property, patent law and copyright law practices
  • Selected as a 2013-2016 IP Star by Managing IP, a guidebook that identifies leading IP lawyers in the United States

Publications & News

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August 15, 2016

WilmerHale Lawyers Named Among the 2017 Best Lawyers in America®, Six Recognized as Lawyers of the Year

Best Lawyers in America®—a respected peer-review publication in the legal industry—recognizes 101 WilmerHale lawyers and names six partners as Lawyers of the Year in its 23rd edition.

June 22, 2016

The Legal 500 United States 2016 Recognizes 111 WilmerHale Lawyers Across 30 Practice Areas

The guide's rankings are based on a series of criteria, including client feedback, interviews with private practice lawyers, and its own research.

June 20, 2016

How the PTAB Treats Pre-Institution Factual Disputes

An article by Don Steinberg and Michael Smith, published in BNA's Patent, Trademark & Copyright Journal, explores how PTAB panels have addressed pre-institution factual disputes and the potential impact of the PTAB's recent rule changes.

May 17, 2016

WilmerHale Attorneys and Practices Recognized in 2016 edition of IP Stars Handbook

The fourth edition of the IP Stars Handbook—a Managing IP guide that identifies the leading IP firms and lawyers in the world—has been released and it prominently ranks WilmerHale and 19 of its partners.

March 14, 2016

WilmerHale Named a Top IP Law Firm From Coast to Coast

Both the Boston Business Journal and Silicon Valley Business Journal have ranked WilmerHale a Top Intellectual Property Firm, based on local attorney headcount.

December 18, 2015

The Prevailing Uncertainty of a Second Bite at the Apple at the PTAB Under § 325(d) in Multiple Proceeding Cases

An article by Don Steinberg and Adele Frankel, published in Bloomberg BNA's Patent, Trademark & Copyright Journal on December 18, 2015.

November 9, 2015

Form vs. Substance In Means-Plus-Function Analysis

An article co-authored by Don Steinberg, published by Law360 on November 6, 2015.

July 6, 2015

Managing IP Recognizes WilmerHale, Attorneys in 2015 IP Stars Handbook

Managing Intellectual Property has released the third 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 18 of its partners.

April 21, 2015

WilmerHale Partners Showcase Thought Leadership During Fordham IP Conference

On April 8 and 9, WilmerHale intellectual property and IP litigation partners joined an international lineup of prominent judges, government officials, academics and private practitioners for the 23rd Annual Fordham Intellectual Property Conference, held for only the second time at Cambridge University in the United Kingdom.

December 17, 2014

USPTO Issues Updated Guidance on Patent Subject Matter Eligibility

The United States Patent and Trademark Office (USPTO) has issued updated guidance laying out the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. 101. 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014).

Professional Activities

Mr. Steinberg is a member of the Patent Law Committee of the American Intellectual Property Law Association (AIPLA). 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.

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

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