Huestis

Erik A. Huestis

Partner
Co-Chair, Technology Industry Group, Registered Patent Attorney
New York

I provide IP strategy to companies on the leading edge of computing.

Erik Huestis represents technology companies and research universities in intellectual property matters. His practice encompasses patent prosecution and strategy, as well as high technology aspects of intellectual property litigation, export control, licensing, and corporate transactions.

Erik provides intellectual property advice to companies at all phases of development, from pre-funding through the Fortune 50. He works with clients in a variety of industries, including telecommunications, software, biotechnology, medical devices and consumer products. Erik’s recent focus has included artificial intelligence in the genomics and medical imaging space, cryptography, quantum computing, and neuromorphic computing. 

Erik’s background is in computer science, and his industry experience includes several startup companies in the peer-to-peer and mobile software spaces. As a result of his prior work as a software engineer, he is a named inventor of six U.S. patents.  

Education

  • Fordham University School of Law, J.D.
  • Cornell University, B.A. in Computer Science

Bar and Court Admissions

BAR ADMISSIONS
  • New York
  • New Jersey
COURT ADMISSIONS
  • U.S. Patent & Trademark Office (Agency)
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the District of New Jersey

Experience

  • Patent prosecution counsel for research university for licensed quantum computing portfolio related to quantum/classical algorithms.
  • Patent prosecution counsel for research university for licensed portfolio related to neutral atom-based quantum computers.
  • Patent prosecution counsel for drug discovery company for portfolio related to artificial intelligence based target identification algorithms.
  • Patent prosecution counsel for remote sensing company for portfolio related to geospatial analysis using satellite imagery.
  • Patent prosecution counsel for research university for silicon photonics portfolio.
  • Patent prosecution counsel for Fortune 50 technology company for neuromorphic computing portfolio.
  • Patent prosecution counsel for Fortune 50 technology company for computer-aided diagnosis portfolio.
  • Successfully argued PTAB appeal on patent application directed to media streaming technology.
  • Represented Fortune 50 technology company in two successful PTAB appeals on patent applications directed to content encryption technologies.
  • Represented mobile payment company in successful defense of CBM challenge.
  • Represented seller in asset sale of worldwide patent portfolio including approximately a thousand families.
  • Counsel for complainant in a section 337 action concerning herbicide chemical composition and processes.
  • Counsel for defendant in patent infringement lawsuit involving 18 patents in automotive technology.
  • Counsel for closely held telecommunication company in acquisition of VoIP technology and business unit.

Honors & Involvement

INVOLVEMENT
  • Trustee, Poughkeepsie Day School (2022-present)
  • Entrepreneurship at Cornell Advisory Council (2015-present)
  • Blackstone LaunchPad at Cornell Mentor (2016-present)
  • Recurring Guest Lecturer, Northeastern University, Bioengineering 5850 - Design of Implants (Fall 2017-present)
  • Cleantech Open Northeast Mentor (2016-2019)
  • Pitch Competition Judge, Johnson Women in Technology Conference (2017, 2018)

Speaking Engagements

  • "Startup shark tank: How do small fish survive and thrive in a big quantum pond?," The Economist’s Commercializing Quantum conference (May 17, 2022) 
  • "The Path from Quantum Computing Innovation to Patent," IEEE Quantum Computing Innovation Summit (January 10, 2022)
  • "Digital Therapeutics Seminar Series: Part II," Foley Hoag webinar (June 10, 2021)
  • "101: Frustrations of Patent Eligibility," Foley Hoag webinar (October 21, 2020)