Recently, Mr. Oussayef directed a team of attorneys preparing for trial in the defense of a digital services company against a patent infringement claim with over $100 million at stake. By successfully arguing key issues at the final pretrial conference, he secured favorable rulings that positioned the client for victory. The case settled the morning of trial on favorable terms.
In a case involving Bluetooth technology, Mr. Oussayef obtained summary judgment of noninfringement for a major consumer electronics company with hundreds of millions of dollars at stake. He 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 issued a decisive opinion that none of the defendants infringed for multiple independent reasons. He then led the appeal team, argued before the Federal Circuit, and secured a unanimous decision affirming the judgment for all defendants.
As first-chair trial counsel, Mr. Oussayef defended a global technology leader in a patent infringement jury trial concerning financial transaction products. The jury rejected the plaintiff’s claims of willful infringement and awarded only a small fraction of what the plaintiff sought. The case settled shortly thereafter on favorable terms.
Together with partner John Desmarais, Mr. Oussayef tried IBM’s first trial as a patentee in decades, securing an $82.5 million jury verdict on behalf of IBM. Mr. Oussayef’s cross-examination of Groupon’s technical expert and key fact witnesses was instrumental to the outcome. His accomplishments earned recognition from Law360, which named him a Rising Star: “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 a seasoned appellate advocate and appears regularly before the Federal Circuit. In one notable case, he successfully convinced a panel of judges to unanimously overturn the Patent Trial and Appeal Board on two independent inter partes review decisions. This victory was highlighted by Law360 in the article, “Fed. Circ. Says PTAB Wrongly Axed IBM Patent Claims.”
Mr. Oussayef is also committed to pro bono advocacy and attorney development. He helped expand Desmarais LLP’s pro bono practice and has served as counsel in matters involving political asylum and guardianship for minor children at risk for deportation. He also helps direct the firm’s trial training program, where Desmarais LLP associates have the opportunity to present a multi-day mock trial, with partners acting as judges, actors acting as witnesses, and volunteers acting as jurors.
Mr. Oussayef earned his J.D. from Boston University and his B.S. in Computer Science from the University of Rochester, with a focus 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