Karim Z. Oussayef
Partner
- NEW YORK Phone: 212-351-3427 Fax: 212-351-3401
Mr. Oussayef is a first-chair trial lawyer who litigates high-stakes patent infringement and technology disputes. Trained as a computer scientist with a focus on artificial intelligence, Mr. Oussayef combines deep technical fluency with courtroom skill to represent market leaders, such as Google and IBM, as well as early-stage companies at the forefront of new technologies. His practice spans pre-suit investigations, licensing disputes, trials, and appeals, with particular experience in AI and computer networking. Mr. Oussayef also serves on the Firm’s Executive Committee and leads its strategic efforts to evaluate and adopt AI, and to develop responsible and effective policies for those technologies.
Representative Matters
Mr. Oussayef earned his J.D. from Boston University and his B.S. in Computer Science, with a focus on artificial intelligence, from the University of Rochester. Before joining Desmarais LLP, he was an associate in the Intellectual Property Group at Ropes & Gray LLP.
Representative Matters
- Google - Complete Defense in $1.8+ Billion Dispute: As lead trial counsel, secured a complete defense victory in a four-day bench trial on inequitable conduct by proving that the plaintiff had abandoned the patent application for years and later deceived the Patent Office by forging a co-inventor’s signature on the revival petition.
- Fitbit - Summary Judgment and Federal Circuit Affirmance in $100+ Million Bluetooth Case: Won summary judgment of non-infringement after leading a multi-defendant joint defense through discovery, then led the appellate team to a unanimous affirmance by the Federal Circuit.
- Multinational Technology Company - Favorable Pretrial Rulings Leading to Settlement in $100+ Million Patent Case: Secured highly favorable rulings on key issues at the final pretrial conference, prompting a favorable settlement on the morning of trial.
- IBM - $82.5 Million Jury Verdict: Co-tried IBM’s first plaintiff-side patent trial in decades. Karim’s cross-examination of the opposing technical expert and key fact witnesses helped secure the verdict and contributed to his recognition as a Law360 Rising Star.
- Global Technology Company - Favorable Resolution in Financial Technology Jury Trial: As lead trial counsel, persuaded the jury to reject willful infringement allegations, limiting damages to a small fraction of the initial demand and paving the way for a favorable settlement.
- Appellate Victories: Several victories before the Federal Circuit; convinced a panel of judges to unanimously overturn the Patent Trial and Appeal Board on two independent inter partes review decisions.
Mr. Oussayef earned his J.D. from Boston University and his B.S. in Computer Science, with a focus on artificial intelligence, from the University of Rochester. Before joining Desmarais LLP, he was an associate in the Intellectual Property Group at Ropes & Gray LLP.
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 (2021-2025)
- IAM 1000 - Individual Recognition for Litigation
Memberships & Affiliations
- Massachusetts State Bar
- New York State Bar
- Google - Complete Defense in $1.8+ Billion Dispute: As lead trial counsel, secured a complete defense victory in a four-day bench trial on inequitable conduct by proving that the plaintiff had abandoned the patent application for years and later deceived the Patent Office by forging a co-inventor’s signature on the revival petition.
- Fitbit - Summary Judgment and Federal Circuit Affirmance in $100+ Million Bluetooth Case: Won summary judgment of non-infringement after leading a multi-defendant joint defense through discovery, then led the appellate team to a unanimous affirmance by the Federal Circuit.
- Multinational Technology Company - Favorable Pretrial Rulings Leading to Settlement in $100+ Million Patent Case: Secured highly favorable rulings on key issues at the final pretrial conference, prompting a favorable settlement on the morning of trial.
- IBM - $82.5 Million Jury Verdict: Co-tried IBM’s first plaintiff-side patent trial in decades. Karim’s cross-examination of the opposing technical expert and key fact witnesses helped secure the verdict and contributed to his recognition as a Law360 Rising Star.
- Global Technology Company - Favorable Resolution in Financial Technology Jury Trial: As lead trial counsel, persuaded the jury to reject willful infringement allegations, limiting damages to a small fraction of the initial demand and paving the way for a favorable settlement.
- Appellate Victories: Several victories before the Federal Circuit; convinced a panel of judges to unanimously overturn the Patent Trial and Appeal Board on two independent inter partes review decisions.
- "Deal Ends Google Patent Case Soon After Start Of $22.5M Trial" - Law360, November 12, 2024
- Guest Lecturer at the New York University School of Law - Patent Licensing - Monetization Perspectives Series (2020).
- Rising Star: Desmarais’ Karim Oussayef (2019). Read the Law360 article
- Fed. Circ. Says PTAB Wrongly Axed IBM Patent Claims (2019). Read the Law360 article (subsription required)
- Speaker at the Berkeley School of Law - Modern Jury Trials: Persuasive Techniques for Complex Technology Cases (2018).
- “Desmarais LLP Secures $82.5M Patent Win for IBM Over Groupon at Trial”
- Panelist at the District of Delaware - Bench & Bar Conference - Young Attorney Focus: Advancing Your Career and the Value of Mentors (2018).
- “Desmarais LLP Finalizes Favorable Settlement for IBM to End Lawsuit Against Priceline”
- Speaker at the Berkeley School of Law - Patent Jury Trials and How to Win Them (2017).
- Sasha Rao & Karim Oussayef, Structurally Similar, But Effectively Different?, Pharma Magazine November/December 2010, at 68.
- Karim Oussayef, Selective Privacy: Facilitating Market-Based Solutions to Data Breaches by Standardizing Internet Privacy Policies, 14 B.U. J. Sci. & Tech. L. 104 (2008).
- Desmarais LLP Secures Inequitable Conduct Defense Victory for Google in Patent Infringement Bench Trial
- Desmarais LLP Receives Top-Tier Practice, Attorney Rankings in IAM Patent 1000
- Desmarais LLP Earns Top-Tier IAM Patent 1000 Rankings, 16 Partners Recognized
- Best Lawyers Names John Desmarais ‘Lawyer of the Year,’ Recognizes 10 Desmarais LLP Attorneys
- Desmarais LLP Tops IAM Patent 1000 Rankings, 14 Partners Earn Individual Honors
- Best Lawyers Recognizes 10 Desmarais LLP Attorneys in 2023 Rankings
- IAM Patent 1000 Names Desmarais LLP Top National Firm, Highlights 13 Partners
- Best Lawyers Recognizes 5 Desmarais LLP Attorneys
- Desmarais LLP Wins Top 2021 IAM Patent 1000 Ranking, 12 Attorneys Honored
- Best Lawyers Highlights Desmarais LLP Attorneys, Names John Desmarais ‘Lawyer of the Year’
- Desmarais LLP Receives Top IAM Patent 1000 Ranking, 7 Attorneys Recognized
- Karim Oussayef Named Law360 Rising Star
- IBM Corp. v. Groupon, Inc.
EDUCATION
Boston University School of Law, J.D., 2008, magna cum laude, Executive Editor of the Journal of Science & Technology LawUniversity of Rochester, B.S., 2004, cum laude, Computer Science with High Departmental Distinction
ADMISSIONS
2009, New York2008, Massachusetts