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Steven J Henry

Steven J Henry

Practice areas:

Patent Application, Licensing, Patent Infringement, Copyright Infringement

Steven Henry

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About Me

Steve Henry has broad experience in all aspects of intellectual property, with special expertise in the protection of communications and computer-related inventions (hardware and software), semiconductors, instrumentation and other electronic technologies and business methods, including financial systems. His practice spans the entire range of prosecution, litigation, licensing, and client counseling. He is particularly interested in fostering the growth of technology-based companies, large and small, by developing effective IP strategies.


Steve has litigated patent and trademark infringement suits and patent interferences for smaller and Fortune 500 companies, predominantly in the fields of computer hardware/software and telecommunications. He has served as a AAA-appointed arbitrator in technology-related disputes. Several of the patents Steve has written have been successfully asserted in litigation or in cross-licensing negotiations.


Representative Matters

  • Co-counsel to Signature Financial Group and architect of the landmark decision it won from Federal Circuit in State Street Bank and Trust v. Signature Financial Group which upheld eligibility of most software-implemented systems for patent protection and opened the door to patents for business methods.

  • Prepared multiple startup companies to clear IP barriers and develop and execute strategies to build portfolios and enhance value for acquisition. These include companies in combustion systems instrumentation, web publishing software, dental prosthetics, communications hardware and software, and other fields.

  • Developed novel licensing terms for numerous licensees and licensors and negotiated transactions on both sides, including joint ventures, university licenses, cross-licenses, etc.

  • Sucessfully handled USPTO Interference proceedings on behalf of Analog Devices, Inc., Hewlett-Packard and Raytheon.

  • Co-founded data security company, oversaw development of its patent portfolio and negotiated licensing of portfolio in what may become a large enforcement program covering a major media standard.

  • Co-founded an FPGA company and built its patent portfolio until acquisition by a public company.

  • Developed patent and licensing strategy for internet software startup that resulted in license to multiple parties, creation of a public non-profit organization to exploit some aspects on an open source basis, and enforcement through patent litigation of other aspects of portfolio.

  • Negotiated agreement to acquire multimillion dollar software product line from Intel.

  • Successfully petitioned the Copyright Office to register copyright in font software on behalf of Bitstream, Inc. and testified at rule-making hearings held by Register of Copyrights.

  • Served as lead counsel in Raxton v. Anania, representing successful defendant in trademark infringement dispute in which defendant obtained an injunction against plaintiff, and in which U.S. Court of Appeals for the First Circuit twice vindicated defendant and reversed the district court. Also succeeded in disqualifying replacement counsel for plaintiff and in bringing contempt proceeding, resulting in seizure order.

  • Represented Bitstream and Adobe Systems in successful litigation against font software copyright infringer.


Previous Experience

Cesari & McKenna, associate attorney and partner, 1978-1985.


RCA, Astro-Electronics Division - engineering intern, 1970-73, research and design of advanced communication and imaging systems for satellites.


Professional and Civic Activities

American Bar Association


American Intellectual Property Law Association


Boston Bar Association


Boston Patent Law Association



  • Past President

  • Co-chair, Computer Law Committee


Georgetown Club of Boston


Institute of Electrical and Electronic Engineers


Licensing Executives Society



  • Certified Licensing Professional (CFP)


MIT Alumni Association



  • Class Treasurer and Co-Class Agent


MIT Club of Boston


MIT Educational Council


Honors and Awards

Steve has repeatedly been elected a Massachusetts’ “Super Lawyer” in intellectual property law and has has been named to Best Lawyers in America 2008 Edition. He has also been listed in Who’s Who in American Law and carries the highest possible rating from the Martindale-Hubbell legal directory.


Steve has been elected to Sigma Xi (scientific research society-honorary), received the Robert C. Watson award from the American Intellectual Property Law Association, and has been named as a Certified Licensing Professional by the Licensing Executives Society.


In law school, Steve served as editor of Law & Policy in International Business.


Also Noteworthy

Before finishing law school, Steve participated in three patent infringement and licensing litigations. He was also an adjunct professor at Suffolk University Law School for several years, teaching patent law. He is a frequent writer and lecturer on intellectual property developments and strategies.


Steve holds an Extra Class Amateur Radio license and has held Commercial Radiotelephone (First Class) and Radiotelegraph (second class) licenses from the FCC.


Recent Articles and Presentations

March 2008 - File European Patents Now to Beat April 1 Fee

November 9, 2007 - Licensing Relationships

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Practice Areas

Licensed since 1977

  1. Patent Application: 50%
    40 years
  2. Licensing: 20%
    40 years
  3. Patent Infringement: 15%
    40 years
  4. Copyright Infringement: 5%
    40 years

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Contact Info

Federal Reserve Plaza
600 Atlantic Avenue
Boston, MA, 02210-2206

600 Atlantic Avenue
Boston, MA, 02210

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Resume

License
StateStatusAcquiredUpdated
MAActive197704/14/2015
DCInactive 197607/19/2014

Professional Misconduct

We have not found any instances of professional misconduct for this lawyer.
Avvo Contributions
Legal Answers
Awards
Award NameGrantorDate Granted
Best lawyer, Intellectual PropertyBest Lawyers in America2009
Boston Super Lawyer, Intellectual PropertySuper Lawyers2008
Best Lawyer, Intellectual PropertyBest Lawyers in America2008
Boston SuperLawyer, Intellectual PropertySuper Lawyers2007
Boston Super Lawyer, Intellectual PropertySuper Lawyers2006
AV RatingMartindale-Hubbell1985
Who's Who in American LawMarquis Who's Who1978
Robert C. Watson AwardAmerican Patent Law Association1976
Editor, Law & Policy in Int'l Bus.Georgetown U Law Ctr1975

Work Experience
TitleCompany NameDuration
Adjunct Prof. of Patent LawSuffolk Law School1983 - 1986

Associations
Association NamePosition NameDuration
Licensing Executives SocietyN/A1998 - Present
Boston Bar AssociationN/A1990 - Present
Boston Patent Law AssociationPast President; Co-chair, Computer law Committee1978 - Present
American Bar AssociationN/A1975 - Present
American Intellectual Property Law AssociationN/A1975 - Present
Sigma Xi, Scientific Research SocietyN/A1973 - Present
Institute of Electrical and Electronics EngineersMember, Computer and Communications Societies1971 - Present

Legal Cases
Case NameOutcome
State St. Bank and Tr Co v Signature Financial GroupReversed SJ that business method not statutory

See all Legal Cases 

Publications
Publication NameTitleDate
National Law JournalLawyers become unwilling bankers2006
Risk & Insurance MagazineAn Age of Emboldened Davids2005
New England In-House MagazineSCO Group's Threat of Litigation Against LINUX Users: How Should You Respond2004
The Internet EncyclopediaOpen Source Development and Licensing2003
Bio-IT WorldThe Hidden Costs of 'Free' Software2003
Mass High TechStandardizing Participation in Standards Organizations2003
Boston Business JournalIndustry Showdown in the Courts: Software vs. Finance1999
Law & Pol. in Int'l Bus.Note: “Is a Compulsory Patent Licensing Statue Necessary? A Study of the U.S. and Foreign Experience,”1975

Education
School NameMajorDegreeGraduated
Georgetown University Law CenterLawJD - Juris Doctor1976
Massachusetts Institute of TechnologyElectrical EngineeringSB and SM1973

Speaking Engagements
Conference NameTitleDate
Licensing: Seizing Opportunities and Mitigating RisksLicensing Relationships2007
LES/AUTM 2006 Spring MeetingDealing with Divorce in IP Collaborations: The Top 10 Contract Provisions You Will Wish You Had2006
MCLE 8th Annual Intellectual Property ConferenceDeveloping Patent Portfolios and the CREATE (Cooperative Research and Technology Enhancement) Act2005
Mass Technology Leadership Council Legal Issues SeriesHow do you get the most from your IP in an acquisition2005
LES/AUTM Spring MeetingOpen Source Licenses and IP Management: Understanding its Possibilities and Avoiding its Pitfalls2004