Steinberg_Donald

Donald R. Steinberg

Steinberg_Donald

Donald R. Steinberg

Partner

  • Chair, Intellectual Property Department

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.

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.
  • Uncertainty on Estoppel of Claims Amended at the PTAB

    In this article published by Bloomberg Law, Donald Steinberg and Jennifer Graber analyze whether the estoppel provisions of the America Invents Act should reach claims that are amended during inter partes proceedings.

    August 20, 2018
    Read More
  • Don Steinberg Named Among the 2019 Best Lawyers in America®

    Partner Don Steinberg was recognized for his communications law, litigation: intellectual property, patent law and copyright law practices.

    August 15, 2018
    Read More

Recognition

  • Award Text

    Top Lawyer for Intellectual Property, Patent and Copyright Law

    Best Lawyers in America®

    2013-2019

  • Award Text

    Recognized as an IP Star

    Managing IP

    2013-2018

  • Award Text

    Recommended for Intellectual Property

    The Legal 500 United States

    2016-2018

  • Recommended in the 2016, 2017 and 2018 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
  • Selected by peers for inclusion in the 2013-2019 editions of the Best Lawyers in America for his communications law, litigation: intellectual property, patent law and copyright law practices
  • 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 as a 2013-2018 IP Star by Managing IP, a guidebook that identifies leading IP lawyers in the United States

Insights & News

Credentials

  • Education

    • JD, Harvard Law School, 1988

      cum laude
    • BSE, Electrical Engineering and Computer Science, Princeton University, 1984

      magna cum laude Phi Beta Kappa
  • 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

Credentials