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, where he played a key role in securing recent successes for our clients Sony Corporation and BTG plc. He has also worked on a series of reexamination and inter partes review requests while coordinating related litigations and ensuring that the post grant strategy complements the litigation strategy.

Charlie previously served as a legal intern in the Connecticut Attorney General’s office, where he assisted with litigation arising from a quasi-public state agency’s loss of $220 million in Enron’s collapse. He also worked as a summer associate at Pfizer Global Research and Development, where he carried out organic chemistry synthesis projects as part of Pfizer’s efforts to develop cheaper and more efficient ways to produce drugs under development.

While attending Harvard College, Charlie carried out a series of research projects concerning atmospheric and computational chemistry.

Client testimonial:
"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."
Client testimonial:
"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."

ITC Litigation

  • Certain Electrical Connectors and Cages, Components, and Products Containing the Same Thereof, Investigation No. 337-TA-1241: Currently representing Amphenol in asserting multiple patents against competitor.  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 assertion against competitor of patent Charlie helped secure via an earlier Federal Circuit appeal and subsequent § 145 action. Resolved favorably for BTG 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.
  • Represents Kantar Media Audiences and its related company WPP plc in a case where TRA Global (now owned by TiVo) asserted three patents directed to a method of directing advertisements to particular audiences, and brought claims of trade secret misappropriation, breach of contract, and inducing breach of fiduciary duties. 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.

Post-Grant Proceedings

  • 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. (IPR2016­00483, ­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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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, where he played a key role in securing recent successes for our clients Sony Corporation and BTG plc. He has also worked on a series of reexamination and inter partes review requests while coordinating related litigations and ensuring that the post grant strategy complements the litigation strategy.

Charlie previously served as a legal intern in the Connecticut Attorney General’s office, where he assisted with litigation arising from a quasi-public state agency’s loss of $220 million in Enron’s collapse. He also worked as a summer associate at Pfizer Global Research and Development, where he carried out organic chemistry synthesis projects as part of Pfizer’s efforts to develop cheaper and more efficient ways to produce drugs under development.

While attending Harvard College, Charlie carried out a series of research projects concerning atmospheric and computational chemistry.

Client testimonial:
"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."
Client testimonial:
"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."

ITC Litigation

  • Certain Electrical Connectors and Cages, Components, and Products Containing the Same Thereof, Investigation No. 337-TA-1241: Currently representing Amphenol in asserting multiple patents against competitor.  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 assertion against competitor of patent Charlie helped secure via an earlier Federal Circuit appeal and subsequent § 145 action. Resolved favorably for BTG 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.
  • Represents Kantar Media Audiences and its related company WPP plc in a case where TRA Global (now owned by TiVo) asserted three patents directed to a method of directing advertisements to particular audiences, and brought claims of trade secret misappropriation, breach of contract, and inducing breach of fiduciary duties. 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.

Post-Grant Proceedings

  • 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. (IPR2016­00483, ­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