Donald R. Steinberg

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Donald R. Steinberg — Patent Litigation Practice Summary

Specialty / focus areas. Steinberg's practice centers on electronics, software, and networking technologies rather than pharma or life sciences. Published descriptions of his practice list microprocessors and other analog, digital, and mixed-signal devices; computer architecture and semiconductor manufacturing; operating systems and software applications; networking and communication systems; wireless communications; video compression; computer security; internet-based applications; consumer electronics and video games; electromechanical devices; financial services; and medical devices. His litigation experience spans federal district courts, the Federal Circuit (including appeals on summary judgment of noninfringement), and the ITC, where a Law360 Q&A describes him prevailing on all seven asserted patents in a multi-patent ITC investigation involving optical, control, and mechanical systems.

Side preference. The tracked data show a single district court appearance, and it is on the defense side: lead counsel for the PNC defendants in Intellectual Ventures I & II LLC v. PNC Financial Services Group, Inc. (W.D. Pa.). That is consistent with the broader record, which reads as a defense practice for operating companies — most visibly financial institutions and technology companies — accused of infringement by NPEs/PAEs, alongside offensive post-grant work on those clients' behalf. There is no indication of representing plaintiffs/NPEs in assertion campaigns; the volume of his work is on the defense and post-grant-challenge side.

Firm context. He is a partner in Wilmer Cutler Pickering Hale and Dorr's Boston office and formerly chaired the firm's Intellectual Property Department (he is identified as department chair in firm materials from roughly 2009 through at least 2018, including the firm's 2014 announcement of its 100th IPR filing and Fordham IP conference coverage). No prior firm history is reliably documented in the sources reviewed; note that at least one aggregator profile describes him in the past tense, but I found no verified announcement of a departure or retirement, so his current status should be confirmed with the firm.

Notable matters / outcomes. In the tracked case, he was lead counsel for PNC in the Intellectual Ventures litigation, and he was lead attorney for petitioners Bank of America and PNC in four CBM reviews against Intellectual Ventures I and II (CBM2014-00028, -00029, -00030, -00033) in which the PTAB invalidated the challenged claims of all four patents — firm materials describe the series as invalidating 83 claims asserted by a patent assertion entity against a group of major financial institutions. He also appeared on the WilmerHale team for defendants in Prism Technologies LLC v. Verisign/RSA Security and for Eastman Kodak in Ampex Corp. v. Eastman Kodak Co., both of which produced Federal Circuit summary affirmances of noninfringement judgments in February 2008 (firm press release; the specific case documents were not independently reviewed here).

PTAB / IPR experience. This is a substantial part of his practice, not an occasional add-on. Firm materials and PTAB records place him as counsel of record in numerous IPR, CBM, and reexamination proceedings, on both petitioner and patent-owner sides; he appeared for Intel in the Intel v. VLSI IPRs (e.g., IPR2020-00112) including the § 314(a)/Fintiv-related rehearing and POP request, and in IPR2017-00707 and IPR2017-01265. He is a registered patent attorney before the USPTO (Reg. No. 37,241).

Bar / education. JD, Harvard Law School, 1988; BSE in Electrical Engineering and Computer Science, Princeton University, 1984; law clerk to the Hon. Martin F. Loughlin, U.S. District Court for the District of New Hampshire, 1988–89; admitted in Massachusetts and before the USPTO. He also taught a seminar on current issues in patent law as an adjunct at New England School of Law in 2004–2005 and has been active in AIPLA's Patent Law Committee and the Intellectual Property Owners Association's Software and Business Methods Committee.