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 and 217 editions of The Legal 500 United States for intellectual property: patent litigation: ITC, intellectual property: patent litigation: full coverage, intellectual property: patents: prosecution 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 each edition of Boston Magazine since 2004
  • 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 2013-2017 IP Star by Managing IP, a guidebook that identifies leading IP lawyers in the United States

Publications & News

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August 16, 2017

Inside WilmerHale’s Approach to Matter Management for IP

Outside counsel use matter management tools for a plethora of reasons—from creating budgets, to managing the progress of matters, to measuring staffing levels—all in an effort to provide predictably and transparency to clients. This article discusses the firm's approach to matter management for patent prosecution and for post-grant proceedings.

August 16, 2017

WilmerHale Lawyers Named Among the 2018 Best Lawyers in America®, Nine Recognized as Lawyers of the Year

Best Lawyers in America®—the oldest and most respected peer-review publication in the legal industry—recognizes 107 WilmerHale lawyers and names nine partners as Lawyers of the Year in its 24th edition.

August 7, 2017

The Use of Applicant Admitted Prior Art in IPR Petitions

In this article published by Bloomberg BNA's Patent, Trademark & Copyright Journal,  Don Steinberg, Yung-Hoon Ha and Liv Herriot explore how the Patent Trial and Appeals Board has considered Applicant Admitted Prior Art (AAPA) when a petitioner has relied upon it as part of one or more of its grounds in its IPR petition requesting the Board invalidate a patent. The authors provide recommendations for both petitioners and patent owners based on how the Board has decided on this issue.

June 9, 2017

The Legal 500 United States 2017 Recognizes 125 WilmerHale Lawyers Across 28 Practice Areas

The Legal 500 United States has released its 2017 rankings, recommending 125 WilmerHale lawyers—including 12 who are named to its elite “Leading Lawyers” list and two on its “Next Generation Lawyers” list—and 28 practice areas in its 11th edition.

June 8, 2017

WilmerHale Partners and Practices Named Among Managing Intellectual Property's 2017 IP Stars

IP Stars identifies lawyers based on their practice and industry experience, and recommendations from their peers and clients.

January 17, 2017

Four Factors Influencing Enhanced Damages After Halo

In this article published by Law360, Donald Steinberg, Heather Petruzzi and Margareta Sorenson consider district court decisions on enhanced damages issued within the first six months after Halo, particularly focusing on the factors that influence whether enhanced damages are ultimately awarded.

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.

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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