Steven J Henry

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