Mr. Oussayef recently secured summary judgment of noninfringement for a leading consumer electronics company in patent litigation involving Bluetooth communication technology with hundreds of millions of dollars at stake. Mr. Oussayef led the efforts of a multi-defendant joint defense group through claim construction, fact depositions, and expert discovery. Following a summary judgment hearing, at which Mr. Oussayef argued the issues specific to his client and common to other defendants, the court ruled that none of the defendants infringed any asserted claim for multiple independent reasons.
Together with partner John Desmarais, Mr. Oussayef tried IBM’s first trial as a patentee in decades, helping secure an $82.5 million jury verdict on behalf of IBM. Leading up to trial, Mr. Oussayef successfully argued dispositive issues involving claim construction, patent eligibility, and infringement. At trial, Mr. Oussayef examined IBM’s technical expert and cross-examined three of Groupon’s witnesses, including Groupon’s technical expert. The two-week trial resulted in a finding of willful infringement on all four patents-in-suit. These accomplishments were featured by Law360: “Karim Oussayef of Desmarais LLP loves the legal and technical aspects of his practice, and his dedication to both came in handy when he helped IBM Corp. score an $82.5 million jury trial verdict in a case accusing Groupon of infringing e-commerce patents, landing him a spot as one of four technology law practitioners under age 40 honored by Law360 as Rising Stars.”
Mr. Oussayef is an experienced appellate advocate as well. For example, before the Federal Circuit, Mr. Oussayef successfully argued for the reversal of two inter partes review (IPR) decisions on appeal. Law360 reported on that accomplishment in an article titled, “Fed. Circ. Says PTAB Wrongly Axed IBM Patent Claims.”
Mr. Oussayef has extensive experience managing complex and fast-paced technology litigations. He represented LifeCell Corporation against TELA Bio, Inc. in a trade secret and unfair competition case involving surgical mesh products, where he defended and deposed dozens of witnesses across the country before the case settled. Mr. Oussayef also defended Cisco, ARRIS, Time Warner Cable, and several other technology companies in patent infringement actions involving 29 patents asserted by a non-practicing entity, Rockstar, created by Apple, Microsoft, Ericsson, Sony, and Blackberry. In that case, Mr. Oussayef managed a team of attorneys from several law firms engaged in simultaneous district court actions and patent office proceedings.
Mr. Oussayef is active in the firm’s pro bono and attorney development efforts. Mr. Oussayef has helped expand Desmarais LLP’s pro bono practice and has served as pro bono counsel in matters involving political asylum and not-for-profit intellectual property licenses. Mr. Oussayef helps direct the firm’s trial training program, where Desmarais LLP associates have the opportunity to run a multi-day mock trial, with partners acting as judges, actors acting as witnesses, and volunteers acting as jurors.
Mr. Oussayef earned his law degree from Boston University and studied computer science as an undergraduate at the University of Rochester, where he focused on artificial intelligence. He was president of the debate team, where he was an Academic All-American and competed against schools from across the country. His decision to pursue technology litigation arose from combining those interests.
Before joining Desmarais LLP, Mr. Oussayef was an associate in the Intellectual Property Group at Ropes & Gray LLP.
Prior Experience
- Associate, Desmarais LLP, New York, New York, 2011-2016
- Associate, Ropes & Gray LLP, New York, New York, 2008-2010
Courts
- United States District Court for the Eastern District of New York
- United States District Court for the Southern District of New York
- United States Court of Appeals for the Federal Circuit
Other Distinctions
- Best Lawyers - Individual Recognition for Patent Law (2021-2023)
- IAM 1000 - Individual Recognition for Patent Litigation (2021-2023)
- IAM 1000 - Individual Recognition for Litigation (2020)
- Law360 Rising Star (2019)
- New York Metro Rising Star (2014-2019)
Memberships & Affiliations
- Massachusetts State Bar
- New York State Bar