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Background

Steven Katz works closely with his clients to solve their most intractable intellectual property issues, both in the courtroom and out.  When litigation is necessary, Mr. Katz is a zealous, creative, and efficient advocate, whether the client is a Fortune 50 company or a startup, and Mr. Katz works tirelessly to achieve the best result possible.  For example, Mr. Katz recently obtained summary judgment of non-infringement in a high stakes suit on a billion dollar product line.  Mr. Katz has also successfully defended bet-the-company patent litigations for smaller companies where the core products of the companies were at risk.

Mr. Katz leverages his engineering background in each matter, and when working with CTOs and design engineers, Mr. Katz is able to “speak their language.”  Mr. Katz learns the client’s business and helps devise winning strategies, which often includes fighting for and obtaining early litigation victories to resolve the entire dispute or bring about favorable settlements.

Mr. Katz routinely argues at Markman hearings, the key event in any patent litigation, and has a winning track record of presenting claim construction arguments in an easy-to-understand manner that delivers positive results for his clients. He also develops and presents technology tutorials to federal judges in connection with the Markman hearings.

Mr. Katz counsels clients in advance of litigation concerning patent disputes and patent portfolio development, and when necessary, he helps clients negotiate patent licenses to avoid litigation. He also leads due diligence projects in connection with patent acquisitions and patent assertions.  Mr. Katz prides himself on mastering the technology of each client so that he can devise the most effective strategy for each IP dispute.

Mr. Katz practices in federal courts throughout the country, representing both plaintiffs and defendants in patent litigation, before the International Trade Commission in Section 337 proceedings, and before the Federal Circuit Court of Appeals. Mr. Katz also practices before the Patent Trial and Appeal Board in inter partes review proceedings.

Mr. Katz has experience in a wide range of technologies, ranging from telecommunications and networking to medical devices. Mr. Katz’s experience spans operating systems, digital signal processors, telecommunication standards, semiconductors, LED technologies, robotics, consumer devices, surgical instruments, cryptography, seismic detection, digital television, e-commerce systems, image processing, electronic circuits, and enterprise and consumer software.

Mr. Katz has also served as an adjunct professor at Boston University School of Law where he taught Trial Advocacy.

Prior to joining Fish & Richardson, Mr. Katz was a law clerk for Judge Lourie of the United States Court of Appeals for the Federal Circuit. Prior to becoming a lawyer, Mr. Katz was a practicing electrical engineer and circuit designer for Telecommunications Techniques Corporation, a leading supplier of digital telecommunication circuit analyzers.

Education

Columbia University Law School 1995
J.D.
Staff Editor, Columbia-VLA Journal of Law & the Arts
Harlan Fiske Stone Scholar


Johns Hopkins University 1992
Electrical Engineering, M.S.


University of Pennsylvania 1988
Electrical Engineering, B.S.
magna cum laude

Admissions

  • U.S. Patent and Trademark Office 1999
  • New York 1996
  • Massachusetts 1999
  • U.S. Court of Appeals for the Federal Circuit

Clerkships

United States Court of Appeals for the Federal Circuit, The Honorable Alan D. Lourie, 1996 - 1998

Other Distinctions

Instructor, National Institutes of Trial Advocacy, Regional Trial Skills Course

Adjunct Professor, Boston University School of Law, Trial Advocacy

“Negotiating Arbitration Clauses for Patent Disputes,” The Resolver, Federal Bar Association, Spring 2016.

“Uniloc: The 25% Rule and the Entire Market Value Rule,” Boston Breakfast Series, Boston, Massachusetts, April, 2011.

“Patent Damages: Recent Developments and their Impact on Patent Valuation,” Fish & Richardson P.C. Intellectual Property Seminar, Munich, Germany, 2011.

“Claim Drafting – A Litigator’s Perspective,” Fish & Richardson P.C. Intellectual Property Seminar, Munich, Germany, 2010.

Publications

Now More than Ever, Petitioners and Patent Owners Must Consider the Impact of Amendments in IPR,” Fish Post-Grant Blog, March 29, 2019.

The ‘On Sale Bar’ Remains a Trap for the Unwary,Fish Litigation Blog, January 30, 2019.

“Using Alternative Dispute Resolution (ADR) in Patent Infringement Cases: A Conversation with David Allgeyer and Steven Katz, patent attorneys and ADR practitioners,” The Federal Lawyer, September 2017.

“Negotiating Arbitration Clauses for Patent Disputes,” The Federal Lawyer, November 2016.

Experience

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