- UCLA School of Law (J.D., 1980), Note and Comment Editor of the UCLA Law Review; Editor of the Federal Communications Law Journal
- University of California, Berkeley (B.A., 1976), with high honors
Jonathan Steinberg is a partner emeritus in the litigation and intellectual property groups. He has extensive experience in complex litigation in federal and state courts, including the litigation of constitutional issues under the United States and California constitutions, and the litigation of intellectual property disputes involving patents, trademarks and copyrights.
The Chambers Leading Lawyers for Business Guide has named Mr. Steinberg one of the top Intellectual Property lawyers in the United States every year since 2005.
The Legal 500 guide has consistently recognized Mr. Steinberg for his work in patent litigation.
The Best Lawyers in America named Mr. Steinberg to its list for intellectual property law in 2009, 2010, 2011, 2012 and 2013.
Mr. Steinberg was selected for inclusion in the 2009 edition of California's Who's Who Legal, the strategic legal partner of the ABA section of International Law.
Mr. Steinberg frequently lectures and writes on issues of intellectual property law. Since 2006, its inaugural year, he has served on the Planning Committee of the USC Gould School of Law Intellectual Property Institute, and has been a featured speaker at the Institute. In 2002, he was a featured speaker at the Practicing Law Seminar on Patent Litigation. In 2001 and 2000, he was a featured speaker at the Practicing Law Institute Seminar on Antitrust and Intellectual Property. He presented a paper titled “Attorneys’ Opinions and Willful Infringement” at the Insight Conference on Jury Trials in Patent and Technology Litigation in 1998, and was the lead speaker at the 1999 ABA Conference on Patent, Trademark and Copyright Law: Litigation and Corporate Practice. Mr. Steinberg became a partner of the firm in 1986.
In 1981, Mr. Steinberg served as an extern law clerk to the Honorable Abner J. Mikva of the United States Court of Appeal for the District of Columbia Circuit, and joined Irell & Manella in the same year.
As a second year associate, Mr. Steinberg served as lead counsel for 28 members of Congress in the now-famed California redistricting battles of the early 1980's, and argued Legislature of the State of California, et al. v. George Deukmejian, et. al., 34 Cal. 3d 658 (1983) before the California Supreme Court. In 1987, on behalf of the same congressional clients, Mr. Steinberg secured the dismissal of a partisan gerrymandering challenge to California’s congressional districts, which was affirmed by the United States Supreme Court in Badham v. Eu, 109 S. Ct. 829 (1989).
In 1985, Mr. Steinberg co-sponsored a national symposium on redistricting law at UCLA School of Law, to which he contributed an article: Jonathan H. Steinberg and Daniel H. Lowenstein, “The Quest for Legislative Redistricting in the Public Interest; Elusive or Illusory?” 33 UCLA L. Rev. 1 (1985). The article was quoted in three separate opinions in the United States Supreme Court’s recent adjudication of Vieth, et al. v. Jubelirer, et al., 124 S. Ct. 1769 (2004).
Mr. Steinberg’s intellectual property practice embraces patent, trademark, copyright, and trade secret litigation. Recent representative matters include:
St. Jude Medical v. Access Closure, Inc. (W.D. Ark.): Represented St. Jude Medical in a patent case alleging infringement of St. Jude's patents relating to vascular closure devices. The jury returned a unanimous verdict of willful patent infringement, and $21.7 million in damages.
Tessera, Inc. v. Micron Technology, Inc., et al. (E.D. Tex.): Represented Tessera Inc., a global leader in the development and licensing of semiconductor packaging technology, in a patent infringement case against Micron Technology and Infineon Technologies AG, two of the world's largest manufacturers of DRAM. Shortly before trial, both Micron and Infineon agreed to settle the case for $30M and $50M, respectively, and to enter into royalty-bearing licenses to Tessera's patents. Currently representing Tessera in a variety of additional litigation and transactional matters, including (1) an arbitration before the International Chamber of Commerce (Case No. 14 268/EBS) against Amkor Technology, Inc. in which the company seeks unpaid royalties exceeding 100 million dollars; (2) the appeal from an investigation before the United States International Trade Commission (Case No. 337-TA-605) in which Tessera won an exclusion order against the importation of infringing products being imported by Qualcomm, Inc., Freescale Semiconductor, Inc., ATI Technologies, Inc., Spansion Inc., Spansion LLC, and ST Microelectronics N.V; and (3) a patent infringement and breach of contract litigation in the Northern District of California (Case No. C-05-04063 CW) against Advanced Micro Devices, Inc.; Spansion LLC; Advanced Semiconductor Engineering, Inc.; ASE (U.S.) Inc.; ChipMOS Technologies Inc.; ChipMOS U.S.A., Inc.; Siliconware Precision Industries Co., Ltd.; Siliconware USA Inc.; STMicroelectronics N.V.; STMicroelectronics, Inc. and STATS ChipPAC, Inc.
Biosense Webster, Inc. v. Endocardial Solutions, Inc. (C.D. Cal.): Represented Endocardial Solutions in a patent action centering on a heart mapping and ablation technology, which settled after Endocardial Solutions, Inc. secured new patent claims.
Grayzel v. St. Jude Medical (D. N.J.): Represented St. Jude Medical in an action alleging infringement of patent relating to St. Jude’s Angioseal™ device for arterial repair. Won summary judgment invalidating patent, which was unanimously affirmed by the Federal Circuit.
Edwards Lifesciences Corp. v. St. Jude Medical (C.D. Cal.): Represented St. Jude Medical in an action alleging infringement of three patents relating to angioplasty devices and the treatment of porcine heart valves for humans. The case settled after claim construction and the deposition of Edwards Lifesciences' named inventor.
Bloomstein v. Lucas Digital (II) (N.D. Cal.): Represented Lucas Digital and Industrial Light & Magic in an action challenging digital techniques employed in Star Wars Episode 1: The Phantom Menace and Star Wars Episode 2: Attack of the Clones. Lucas and Industrial Light & Magic prevailed on all issues.
Applied Materials v. Novellus Systems (N.D. Cal.): Represented Novellus Systems in litigation involving patents relating to physical vapor deposition processes and equipment. After original plaintiff Applied Materials was forced to withdraw one of its patents and summary judgment of non-infringement was granted on another, Applied Materials settled the case by providing a royalty-free cross license and multi-million dollar payment to Novellus.
Semitool v. Novellus (N.D. Cal.): Represented Novellus in a patent case involving the use of copper in semiconductor manufacture. Obtained summary judgment of non-infringement, which was affirmed in the Federal Circuit.
Bloomstein v. Lucas Digital (I) (N.D. Cal.): Represented Lucas Digital and Industrial Light & Magic in an action in the Northern District of California alleging infringement of software patents claimed to cover the special effects created in the film Forrest Gump. Obtained summary adjudication of invalidity on one of two patents asserted, summary judgment of non-infringement on another patent, and an affirmance in the Federal Circuit.
Intel v. AMD, Cyrix (D. Del.): Represented Intel Corporation in the District of Delaware against Advanced Micro Devices and Cyrix in an action centering on Intel’s MMX™ media enhancement technology. AMD and Cyrix agreed to acknowledge Intel’s MMX™ mark and to cease infringing activities.
Intel v. DEC (N.D. Cal.): Represented Intel Corporation in the Northern District of California against Digital Equipment Corporation in an action alleging trade secret violations and breach of nondisclosure agreements.
CST v. Lucas Digital (N.D. Cal.): Represented Lucas Digital in an action alleging infringement of patents relating to digital film techniques. Obtained dismissal of all claims.
Conner Peripherals (N.D. Cal.): Represented Western Digital in patent litigation between Conner Peripherals and Western Digital, and between Conner Peripherals and IBM. The district judge presiding over the case, which involved 21 patents, termed it the “largest patent case in the country.” After two years of litigation, Conner Peripherals dismissed all of its claims against Western Digital.
- Mr. Steinberg has served as a director of the Los Angeles County Bar Association’s public interest law organization, Public Counsel, and as a director of The Western Law Center for Disability. He also serves as Chairman of the Board of Directors of iPalpiti International, and is an enthusiastic supporter of classical music. In 2002, he was appointed to the editorial board of the Election Law Journal. Mr. Steinberg has been on the planning committee of the USC Gould School of Law Intellectual Property Institute since 2004.
Bar & Court Admissions
- 1981, California
- United States Supreme Court; U.S. Court of Appeals, Ninth and Federal Circuits; U.S. District Court for the districts of Northern, Central and Eastern California; U.S. District Court for the Eastern District of Texas; U.S. District Court for the District of Colorado