Intellectual Property P C

Steven Z. Luksenberg

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

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

SUMMARY

Intellectual Property Litigation Attorney with a J.D. from St. John’s University School of Law, St. John’s Law Review, and a B.S. in Electrical Engineering, magna cum laude, from Lehigh University. Substantial patent litigation experience in district courts, as well as the Federal Circuit, International Trade Commission, and Patent Trials and Appeal Board, covering a range of technologies, including cellular devices, LED design and manufacturing, parking lot guidance systems, smart watches, battery charging topologies, circuit electronics, optical processing, global position systems, mobile applications, medical devices, and bottle designs. LEGAL EXPERIENCE

LIPPES MATHIAS LLP (joined firm with partner from Sills Cummis & Gross P.C.), 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 LLP (joined firm with partner from Sills Cummis & Gross P.C.), 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 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.

• 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.

Brand Protection

• 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.

• Litigated trademark opposition, cancellation, and UDRP proceedings.

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

• 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. 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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