Intellectual Property Associate

Steven Z. Luksenberg

*-** **** ******, ***. *** • Long Island City, NY 11101

908-***-**** • ******.*.**********@*****.***

LEGAL EXPERIENCE

LIPPES MATHIAS LLP1, New York, NY

Intellectual Property, of Counsel (contract), July 2024 – Present Patent Litigation

• Assist in litigating investigations before the International Trade Commission, drafting motions, expert reports, and discovery requests and responses.

• Strategize and collaborate in drafting inter partes review petitions, expert declarations, and research related issues.

PHILLIPS NIZER LLP1, New York, NY

Intellectual Property Associate (contract), September 2022 – July 2024 Patent Litigation

• Investigated and researched complex legal issues raised on appeal to the Federal Circuit.

• Assisted in constructing and finalizing briefs and memoranda submitted in matters before the Federal Circuit as well as district courts.

SILLS CUMMIS & GROSS P.C., New York, NY

Intellectual Property Associate, July 2017 – September 2022 Patent Litigation

• Drafted Markman briefs, summary judgment, dismissal and transfer motions, and invalidity contentions.

• Participated in inter partes review proceedings, including preparing petitions for institution, patent owner responses, and expert declarations as well as developing strategies for oral hearings.

• Prepared freedom-to-operate opinions and reports.

• Developed comprehensive non-infringement, invalidity, claim construction, and damage exposure positions.

• Assessed and prepared case strategies for client marketing presentations. KING & SPALDING, New York, NY

Intellectual Property Associate, September 2011 – April 2017 Brand Protection

• Litigated trademark opposition, cancellation, and UDRP proceedings.

• Preserved integrity and value of client intellectual property through various enforcement mechanisms, including submitting letters of protest and DMCA takedown notices, as well as drafting 250+ distinct cease and desist letters and managing matters to successful resolutions.

• Streamlined utilization of client’s trademark and domain name watch services and Corsearch brand protection program.

• Counseled clients on developing trademark monitoring strategies, including creating guidelines and protocols to efficiently assess and prioritize potential infringements.

• Drafted and negotiated settlement and coexistence agreements.

• Advised clients on domain name management, including addressing the rapidly developing gTLD landscape. Patent Litigation

• Drafted summary judgment motions, Markman briefs, expert reports, infringement and invalidity contentions.

• Developed comprehensive non-infringement, invalidity, claim construction, and damage exposure positions.

• Prepared thorough patent file history analyses to identify potential issues arising from examination process.

• Oversaw all day-to-day aspects of fact and expert discovery, including serving and responding to discovery requests, managing document productions, and preparing witness deposition outlines.

• Assessed vast product portfolios to determine scope of potential infringement and exposure. 1 Joined firm with partner from Sills Cummis & Gross P.C.

• Maintained database of client licenses, product information, and marketing materials to efficiently facilitate the discovery process and assess damage exposure and reasonable royalty positions.

• Prepared weekly reports of recent IP-related court decisions for practice group, highlighting those particularly relevant to firm’s ongoing matters.

• Coordinated with in-house counsel to identify relevant custodians and generate litigation hold notices.

• Interviewed technical and business personnel to develop and refine non-infringement and liability-reduction theories.

Business/Client Development

• Managed and maintained firm’s patent litigation database, cataloguing all representations in district court proceedings by client, jurisdiction, judge, and technology for use in marketing presentations and responses to RFPs.

• Updated firm’s IP litigation webpages to highlight recent successes and new practice group initiatives.

• Delivered internal presentations to the intellectual property group. EDUCATION

ST. JOHN’S UNIVERSITY SCHOOL OF LAW, Jamaica, NY

Juris Doctor, June 2011 GPA: 3.54

Senior Staff Member, St. John’s Law Review

Dean’s List; CALI Excellence Award Recipient: Contracts II and Drafting Litigation Documents & Contracts Intellectual Property Law Society; Jewish Law Students Association LEHIGH UNIVERSITY, Bethlehem, PA

Bachelor of Science, magna cum laude, Electrical Engineering, May 2008 GPA: 3.60 Dean’s List; Phi Beta Kappa Honor Society; Sigma Phi Epsilon Fraternity PROFESSIONAL MEMBERSHIPS

Hon. William C. Conner Inn of Court; NYIPLA; AIPLA ADMISSIONS

New York, New Jersey; Eastern and Southern Districts of New York, District of New Jersey United States Patent & Trademark Office

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