Overview
Ian Soule is a director in Sterne Kessler’s Mechanical & Design Practice Group, advising clients on patent portfolio strategy, patent prosecution, and Patent Trial and Appeal Board (PTAB) proceedings. His work includes the strategic preparation and prosecution of high-value patent applications for various mechanical, electromechanical, software-based, and biomedical technologies for a variety of clients. His technical expertise ranges from data center cooling systems, energy and power systems, and advanced medical diagnostic and medical device systems to automotive lighting and autonomous vehicle systems.
Ian focuses on developing and managing complex global patent portfolios that support monetization, licensing, and enforcement objectives. He helps clients strengthen patent claims against potential challenges before the PTAB and the USPTO’s Central Reexamination Unit (CRU). Drawing on his experience representing both patent owners and patent challengers in enforcement matters and PTAB proceedings, Ian provides strategic guidance on global prosecution, portfolio development, and IP audits, helping clients assess the strength of their portfolios and align their IP strategies with broader business goals.
Ian is actively involved in Patent Office Litigation, having served as counsel in numerous inter partes reviews having parallel district court litigation, handling all phases of the PTAB trial. He was a contributing author to Patent Office Litigation, Second Edition, published by Thomson Reuters Westlaw. Ian also counsels clients in due diligence activities along with strategic opinion drafting on patentability, freedom-to-operate, validity, and infringement.
Prior to joining Sterne Kessler, Ian spent nearly four years as a patent examiner at the USPTO, examining U.S. and Chapter II PCT patent applications related to heat exchange and thermal control systems. Other areas of his concentration at the PTO included nuclear cooling towers and other energy-related technologies such as solar, wind, hydroelectric, etc., electronics heat pipes and heat sinks design, vehicular HVAC and powertrain cooling, automatic HVAC control systems, process controls, LNG production and cryogenics. As lead classifier for his Art Unit, Ian implemented and managed a revised process that significantly reduced pending un-docketed cases by more than one third. He also managed the transition from the USPC classification system to CPC in his Art Unit. Additionally, Ian assisted in training new examiners in prior art searching and examining, and served as a negotiation authority for junior examiners during interviews.
Prior to joining the USPTO, Ian was an engineer at Lexmark International, where he coordinated technical and business checkpoints for products from the quoting stage, design freeze, tooling kick-off and approval, through start-of-production. His experience at Lexmark was internationally focused, where he coordinated and advised on design changes after SOP with teams in the Philippines and southern China.
During his undergraduate years, Ian studied acoustics and noise control, as well as vibrations and modal analysis. As part of a Capstone team, he designed noise abatement alternatives for a large industrial shot-blast machine. He also led a team that evaluated the school emergency notification system and performed modal analysis on a student enterprise snowboard design. In his spare time, Ian served as McNair League Head for the Michigan Tech Broomball League, where he developed an affinity for the “other” Blue Book, the colloquial term for the Broomball Rules and Regulations.
While in school, he worked at DENSO International America in an automotive test engineering and quality engineering co-op, serving as primary test engineer during a manufacturing plant correlation study. There, he performed application and development testing on both vehicle and bench systems, and proposed design changes and decisions to engineers and OEMs.
Education
- J.D., The George Washington University Law School, with honors
- B.S., Mechanical Engineering, Michigan Technological University, magna cum laude