Lawyer Overview

Irah Donner is a partner in the firm's Intellectual Property Department, and a member of the interdisciplinary Intellectual Property Litigation Practice Group. Mr. Donner concentrates on patent prosecution, technology audits, intellectual property transactional due diligence, licensing and litigation support.

Practice

Mr. Donner's practice focuses on the counseling, acquisition and enforcement of all forms of intellectual property rights, with particular emphasis in the patenting of business methods, Internet, financial products and computer hardware and software patent applications. Mr. Donner has significant industry experience in designing software applications for large-scale computer systems due to his work in the facility analysis and control field at Bell Communications Research (BELLCORE), as well as in designing software-implemented controllers for paralyzed muscle at the Cleveland Veterans Administration Hospital.

Recent Highlights

• Part of team defending financial institution in a patent infringement suit relating to automatic credit card approval system. Summary judgment of no-infringement affirmed on appeal to Federal Circuit
• Representation of company for global framework for distributing software applications worldwide
• Representation of company for online quote system for insurance product
• Representation of company for computer system used to periodically fix currency exchange prices
• Representation of company for medical integrated decision support system  
• Representation of company for web database and/or interaction system for staffing of personnel in various employment related fields
• Representation of company for low energy method for changing the inclinations of orbiting satellites
• Representation of company for inductor-capacitor resonant circuits

Honors and Awards

Mr. Donner was named a New York Super Lawyer. He was also recognized as one of the 2007 Top Attorneys In the New York Metro Area by The New York Times.

Professional Activities

• Adjunct professor of law at the American University, Washington College of Law, teaching the course "Patent Prosecution," from 2001-2004
• Member of Japan Practice Group of American Intellectual Property Law Association
• Former associate editor for the American Bar Association (ABA) Computer Litigation legal journal
• Former circuit reporter for the ABA IP Litigation legal journal
• Former computer law editor of IEEE COMPUTER magazine

Recent Speaking Engagements

• Securities Industry and Financial Market Association, Patent Law Symposium For Financial Institutions – February 27, 2007
• National Association of Patent Practitioners – "Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.–Will It Ever End?" – July 13, 2004
• Patent Resources Group – "Inventorship, Ownership, Assignment, Representation and Allowance" – 2001-2008
• New Jersey Chapter of National Association of Patent Practitioners – "Doctrine of Equivalents and Prosecution History Estoppel" – October 23, 2002

Publications

Mr. Donner has published the following books:

• Patent Prosecution: Practice and Procedure Before the U.S. Patent Office, BNA, 5th Edition 2007 & 2008 Supplement.
• Patent Prosecution Case Digest, BNA, 2008 Edition.
• Patent Prosecution Forms, BNA, 1998.
• Guidelines and Tips for Prosecuting Computer Inventions and Designs, DB Publishing, 1998.

He has published many articles, including articles on patenting computer software and hardware-related applications, including:

• "A New-and-Improved Formula to Calculate Statutory Subject Matter for Inventions with Algorithms," 15 European Intellectual Property Review 394 (November 1993).

More recent published articles include:

• "Trade-Offs in Defending Willful Infringement Charge," New York Law Journal, Special Section on Intellectual Property (April 23, 2007).
• "Festo is Back! On Remand the Federal Circuit Answers Four More Questions," Journal of Patent Trademark Office Society 86 (February 2004): 89.
• "Patent or Perish – the Best Defense Is Offense," Potomac Tech Journal 2, no. 30 (July 23, 2001).
• "Auditing Assets Regularly Is Vital to Firm's Health," Potomac Tech Journal 2, no. 13 (March 26, 2001).
• "Everything You Need to Know About E-commerce Patents," Potomac Tech Journal 1, no. 24 (July 10, 2000).
• "The Perils of Poor Drafting," Legal Times (April 12, 1999).

Areas of Practice

• Intellectual Property
• Financial Services
• Information Technology
• Internet, E-Commerce and New Media
• Telecommunications
• Patent
• Copyright
• Proprietary Information and Trade Secrets
• Due Diligence and Opinions
• Licensing and Technology Transfer
• Litigation
• Intellectual Property Litigation

Representative Cases

• HSBC Finance Corporation
• Rosco

West Practice Categories

Alternative Dispute Resolution, Arbitration, Banking & Finance Law, Copyrights, Intellectual Property Law, International Telecommunications, Litigation & Appeals, Patents, Technology Licensing, Telecommunications, Trade Secrets, Trademarks, Wireless Communications

Bar Admissions

• New York
• District of Columbia
• New Jersey

Education

• Case Western Reserve University School of Law
  JD
  Honors: magna cum laude
• Case School of Engineering
  MS, Systems Engineering
  Honors:  
• Case School of Engineering
  BS, Systems Engineering
  Honors: with High Honors

Published Works

• Trade-Offs in Defending Willful Infringement Charge, 2007
• Method for Compensating a Manager Eligible for Patent Protection, 2005
• Anticipation by Inherency, 2003
• New Festo Decision Focuses on Foreseeability of Equivalents, 2003
• Who Invented Hyperlinks? IP Audit Uncovers Potentially Valuable Patent, 2002
• Who Invented Hyperlinks? Summary Judgment for the Defendant in the BT Case, 2002

Address

399 Park Avenue
New York, NY 10022

Phones

+1 212 230 8887 (Business Phone)

Faxes

+1 212 230 8888 (Business Fax)

Emails

Contact Us (Business Email)

Websites

www.wilmerhale.com