Charlie Steenburg works with clients in patent litigation, trade secret cases, and other contested matters. He has extensive experience representing clients in district court and also at the International Trade Commission (ITC), where he played a key role in securing recent successes for our clients Sony Corporation, Amphenol, and BTG plc. Charlie has also worked on a series of reexamination and inter partes review (IPR) requests while coordinating related litigations and ensuring that the post-grant strategy complements the litigation strategy. Charlie has successfully argued at both the PTAB and the Federal Circuit while securing victories for our client Smith & Nephew.
Charlie served on Wolf Greenfield’s Executive Committee for six years.
Charlie is a brilliant lawyer and an invaluable source of legal knowledge. In connection with complex legal or technical issues, he is able to quickly understand the most salient issues and craft an effective strategy to resolve the same.
He is a brilliant attorney and a walking database of law and facts. He is skillful in applying that knowledge to create the most persuasive arguments through his writing and otherwise.
Charlie Steenburg has a great mastery of the law, and when I have questions about legal issues I go to him and get the quick and accurate response I need. He’s one of the best legal resources I have now.
- Certain Electrical Connectors and Cages, Components, and Products Containing the Same Thereof, Investigation No. 337-TA-1241: Representing Amphenol against competitor and obtained initial determination that competitor violated Amphenol’s patent rights. Handled multiple witnesses at recently completed evidentiary hearing.
- Certain Touch-Controlled Mobile Devices, Computers, and Components Thereof, Investigation No. 337-TA-1193: Day-to-day case lead for client Sony in defense of multi-patent ITC action involving touch control technologies. Resolved favorably for Sony through confidential settlement.
- Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Investigation No. 337-TA-1076: Day-to-day case lead for client Sony in defense of multi-patent ITC action involving magnetic data storage tapes and cartridges. Ultimately led to favorable global settlement.
- Antivenom Compositions and Products Containing the Same, Investigation No. 337-TA-903: Represented BTG in asserting a rattlesnake antivenom patent Charlie helped secure through an earlier Federal Circuit appeal and subsequent district court litigation against the Patent Office. Resolved favorably for BTG against competitor through confidential settlement on eve of hearing.
- Point-to-Point Network Communications Devices and Products Containing Same, Investigation No. 337-TA-892: Day-to-day case lead for client Sony in defense of multi-patent ITC action involving networking technologies. Resolved favorably for Sony through confidential settlement shortly before the trial was set to commence.
- Consumer Electronics and Display Devices and Products, Investigation No. 337-TA-836: Day-to-day case lead for client Sony in defense of multi-patent ITC action involving graphics processing, LCD, and CPU technologies. Resolved favorably to Sony through confidential settlement shortly before the trial was set to commence.
District Court Litigation
- Represented Sony before the United States District Court for the Northern District of California in a multi-patent declaratory judgment action against Rovi. Case led to successful settlement.
- Successfully defended Kantar Media Audiences and its related company WPP plc in multi-pronged IP case pursued by TiVo concerning technology for targeted advertisements. Successfully defeated TRA’s patent infringement and trade secret claims at summary judgment. On remand from appeal, succeeded in eliminating TRA’s $200 million compensatory damages claim and achieving stipulated judgment of non-infringement, followed by attorney-fee award.
- Represented Smith & Nephew before the United States District Court for the Eastern District of Texas in a thirteen-patent litigation concerning sports medicine devices.
- Defended Sony in the Eastern District of Texas. Working with Mike Rader, Charlie secured summary that one of the two asserted patents related to display technologies was invalid, after which the case settled favorably for Sony.
- Filed IPR on behalf of Smith & Nephew against patent concerning orthopedic surgery devices and obtained final written decision finding all challenged claims unpatentable. Successfully defended PTAB’s finding on appeal to the Federal Circuit and obtained a precedential decision in Smith & Nephew’s favor recognizing the PTAB’s authority to consider priority issues in IPRs. The Federal Circuit’s decision also confirmed the Patent Office’s ability to function during transitional periods without a Senate-confirmed Director. Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328, 1331 (Fed. Cir. 2022)
- Secured three institution decisions for petitioner against patents related to pharmaceutical compounds. In response to the petition, the patent owner statutorily disclaimed all challenged claims.
- In five separate decisions, Charlie convinced the Board to institute IPR trials against 39 out of 39 challenged claims concerning medical device technologies. The institution decisions lead, in part, to the patent owner dismissing the challenged patents from a co-pending litigation and dramatically shrinking the potential damages base. (IPR2016-00483, -00484, -00485, -00486, and -00487).
- Boston IP Inn of Court
- Repeatedly named to The Best Lawyers in America®
- Repeatedly named to the list of Massachusetts Super Lawyers in the field of intellectual property law
- Phi Beta Kappa
- Editor, Harvard Journal of Law and Technology and Harvard Environmental Law Review
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January 27, 2022 | Virtual - Live Video Broadcast