Donald R. Steinberg


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

  • 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 2013-2016 editions of the Best Lawyers in America for his communications law, litigation: intellectual property, patent law and copyright law practices
  • Selected as a 2013-2015 "IP Star" by Managing IP magazine, a guidebook that identifies leading IP lawyers in the United States

Publications & News


November 9, 2015

Form vs. Substance In Means-Plus-Function Analysis

An article by Don Steinberg and Andrea Pacelli, 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).

December 11, 2014

Inter Partes Review And A Soon-To-Expire Patent

An article by Don Steinberg, Yung-Hoon Ha and Natalie Pous, published by Law360 on December 11, 2014.

November 7, 2014

WilmerHale Reaches Milestone 100th Inter Partes Review Filing

WilmerHale has filed its 100th Inter Partes Review (IPR), marking a significant milestone in the post-America Invents Act (AIA) era.

July 17, 2014

WilmerHale and 16 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 16 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.

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.


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JD, cum laude, Harvard Law School, 1988

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

Bar Admissions


United States Patent and Trademark Office


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