Louis has extensive experience in inter partes and covered business method patent reviews, and prosecutes ex parte re-examinations for petitioners/requestors and patent owners. He travels to, and lectures extensively, in Japan. Louis has extensive knowledge of firearms and medical devices.

Overview
Representative Matters
Insights
Awards

For more than 20 years, Louis has focused his practice on litigation, prosecution, and client counseling in the automotive, medical device, battery, molded plastic, and electromechanical areas and, more recently, blockchain. He also focuses on providing legal opinions on issues relating to patentability, freedom to operate, noninfringement, and invalidity.

An important portion of Louis’ practice involves managing portfolios for U.S. and Japanese clients, as well as auditing and performing due diligence on intellectual property assets in the furtherance of licensing.

Louis has represented clients in a wide range of technologies, including DVD, audio equipment, cellular telephone, digital rights management, digital watermarking, internet content provision, optics for digital cameras, cutting tools, dialysis machines, absorbent articles, semiconductors, printed circuit board, circuit board connector technologies, fuel cells, and lithium batteries.

Prior to entering the practice of law, Louis was a civil engineer with a concentration and master’s degree in water and hydraulics, and worked as a professional engineer in three states. He also worked extensively in water treatment and with hydraulic machinery.

  • For two separate patent owners, secured denials of inter partes review; both of the patents were in active litigation.
  • Represented a patent owner in both an inter partes review and a covered business method patent review, and brought both to a successful settlement.
  • Represented a patent owner in an inter partes re-examination and successfully reversed 10 grounds of rejection without a claim amendment.
  • Obtained a decision by the Patent Trial and Appeal Board to overturn an examiner’s determination of unpatentability, securing the patenting of a multicolor lip balm in an ex parte re-examination.
  • Managed patent portfolios for clients ranging from startups to multibillion-dollar corporations in both the U.S. and Japan.
  • Counseled clients on strategies involving the use of utility and design patents, trademarks, copyrights, and trade secrets to protect their intellectual property.
  • Legal 500 United States — ranked as one of the leading patent litigation attorneys in the United States
  • Thomson Reuters Stand-out Lawyer (2018, 2021) – independently rated lawyers

For more than 20 years, Louis has focused his practice on litigation, prosecution, and client counseling in the automotive, medical device, battery, molded plastic, and electromechanical areas and, more recently, blockchain. He also focuses on providing legal opinions on issues relating to patentability, freedom to operate, noninfringement, and invalidity.

An important portion of Louis’ practice involves managing portfolios for U.S. and Japanese clients, as well as auditing and performing due diligence on intellectual property assets in the furtherance of licensing.

Louis has represented clients in a wide range of technologies, including DVD, audio equipment, cellular telephone, digital rights management, digital watermarking, internet content provision, optics for digital cameras, cutting tools, dialysis machines, absorbent articles, semiconductors, printed circuit board, circuit board connector technologies, fuel cells, and lithium batteries.

Prior to entering the practice of law, Louis was a civil engineer with a concentration and master’s degree in water and hydraulics, and worked as a professional engineer in three states. He also worked extensively in water treatment and with hydraulic machinery.

  • For two separate patent owners, secured denials of inter partes review; both of the patents were in active litigation.
  • Represented a patent owner in both an inter partes review and a covered business method patent review, and brought both to a successful settlement.
  • Represented a patent owner in an inter partes re-examination and successfully reversed 10 grounds of rejection without a claim amendment.
  • Obtained a decision by the Patent Trial and Appeal Board to overturn an examiner’s determination of unpatentability, securing the patenting of a multicolor lip balm in an ex parte re-examination.
  • Managed patent portfolios for clients ranging from startups to multibillion-dollar corporations in both the U.S. and Japan.
  • Counseled clients on strategies involving the use of utility and design patents, trademarks, copyrights, and trade secrets to protect their intellectual property.
  • Legal 500 United States — ranked as one of the leading patent litigation attorneys in the United States
  • Thomson Reuters Stand-out Lawyer (2018, 2021) – independently rated lawyers

Education

  • Elizabeth Haub School of Law at Pace University, J.D., magna cum laude, 2001
  • Lehigh University, M.S., 1995
  • Lehigh University, B.S., 1993

Bar Admissions

  • New York
  • New Jersey
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. District Court, Southern District of New York
  • U.S. District Court, Eastern District of New York
  • U.S. District Court, District of New Jersey
  • Presenter, “How to Train Your Patent Attorney,” SBDC@UCI Beall Applied Innovation Incubator, September 16, 2020.
  • Speaker, “Overview of the Attorney-Client Privilege and the Work Product Doctrine,” meeting of New York City-based Japanese in-house counsel, July 2014.
  • Co-speaker, “Administrative Proceedings Created by the America Invents Act and Their Impact on Generic Pharmaceutical Litigation,” Tokyo, Japan, May 2014.
  • Co-speaker, “IP and Antitrust Compliance,” Business Research Institute, Tokyo, Japan, May 2014.
  • Speaker, “Finding the Inventive Concept of Your Idea – and Other IP Tips,” Inventors Association of Manhattan, New York City, December 2013.
  • Co-speaker, “Post-Grant Proceedings: The First Year in Review, Best and Worst Practices,” Global IP Professional Institute (GIPPI), Japan, November 2013.
  • Co-speaker and panelist, “Overview of the Status of Litigation and E-Discovery in the U.S. With a View Toward Japanese Companies,” Japan, July 2013.
  • Co-speaker, “Preparing a Patent Specification Considering Japanese, U.S. and EP Patent Laws,” Business Research Institute, Tokyo, Japan, July 2013.
  • Co-speaker, “Comparison of Post-AIA Rules With European First-to-File Rules and Opposition Proceedings,” Japan, February 2013.
  • Co-speaker, “America Invents Act (AIA): What You Need to Know,” Japan, October 2012.
  • Co-speaker, “Apple v. Samsung and What It Teaches About U.S. Patent Litigation,” Business Research Institute, Tokyo, Japan, October 2012.
  • Co-speaker, “Post-Grant Proceedings Under the Leahy-Smith America Invents Act (AIA),” Japan, July 2012.
  • Speaker, “Patent Damages Undergoing a Dramatic Makeover,” Foundation for Accounting Education, New York City, April 2012.