Benjamin C. Hsing

Partner

New York
T +1.212.589.4260
F +1.212.589.4201

"[a] superb lawyer with great litigation instincts."

— Chambers USA 2015

Overview

A patent litigator possessing experience with a range of technologies, Ben Hsing focuses his practice on the enforcement of patent rights in the life sciences industry, with a concentration in Hatch-Waxman Abbreviated New Drug Application (ANDA)-based litigations. Ben is an accomplished trial lawyer, having tried numerous high-profile cases on behalf of major pharmaceutical and technology companies. As a former patent examiner, Ben is well-versed in United States Patent and Trademark Office proceedings and assists clients in postgrant and contested patent office proceedings. He is also experienced in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals. Ben is always deeply involved in his clients' matters, ensuring that he understands all aspects of their businesses and the cases at hand so that he will be able to fully identify, dissect and solve the potential challenges facing his clients.

According to Chambers USA 2014, Ben is a "favorite of high-profile branded drug companies." He is an active member of the legal community and frequently speaks on topics involving intellectual property and litigation.

Select Experience

  • Achieved a total claim construction victory for a client in a Hatch-Waxman action relating to the drug Sprycel for treating chronic myelogenous leukemia. The court adopted proposed constructions for all 15 terms in dispute. Bristol-Myers Squibb Co. v. Apotex Inc. (D. N.J.).
  • Successfully defeated an ANDA challenge in the U.S. District Court for the District of Delaware for pharmaceutical clients concerning Tarceva for treating non-small-cell lung cancer. After a five-day bench trial, the court ruled that the two patents covering Tarceva and its use were not invalid. OSI Pharmaceuticals Inc. et al. v. Mylan Pharmaceuticals Inc. (D. Del.).
  • Secured a favorable jury verdict for a French multinational pharmaceutical company in a suit against a pharmaceutical company in the U.S. District Court for the District of New Jersey. The jury confirmed the validity of the Sanofi-Aventis Deutschland GmbH patent for Tarka and awarded $16 million in damages. Sanofi-Aventis Deutschland GmbH et al v. Glenmark Pharmaceuticals Inc. USA et al. (D. N.J.).
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Experience

  • Achieved a total claim construction victory for a client in a Hatch-Waxman action relating to the drug Sprycel for treating chronic myelogenous leukemia. The court adopted proposed constructions for all 15 terms in dispute. Bristol-Myers Squibb Co. v. Apotex Inc. (D. N.J.).
  • Successfully defeated an ANDA challenge in the U.S. District Court for the District of Delaware for pharmaceutical clients concerning Tarceva for treating non-small-cell lung cancer. After a five-day bench trial, the court ruled that the two patents covering Tarceva and its use were not invalid. OSI Pharmaceuticals Inc. et al. v. Mylan Pharmaceuticals Inc. (D. Del.).
  • Secured a favorable jury verdict for a French multinational pharmaceutical company in a suit against a pharmaceutical company in the U.S. District Court for the District of New Jersey. The jury confirmed the validity of the Sanofi-Aventis Deutschland GmbH patent for Tarka and awarded $16 million in damages. Sanofi-Aventis Deutschland GmbH et al v. Glenmark Pharmaceuticals Inc. USA et al. (D. N.J.).
  • Was co-lead counsel for a French multinational pharmaceutical company in an infringement suit on a patent covering the antihypertensive drug Ramipril. Summary judgment of infringement was entered against the defendants. After a two-week trial, the court ruled that the patent was valid and enforceable. This victory was selected as a Noteworthy Case by The National Law Journal for its 2006 Defense Hot List. Aventis Pharma Deutschland GmbH et al. v. Lupin Pharmaceuticals Inc. et al. (E. D. Va.).
  • Was co-lead counsel for an American multinational biotechnology firm in a patent infringement suit. Permanent injunction was entered against the defendants. Chiron Corp. v. SourceCF Inc. et al. (N. D. Cal.).
  • Was co-lead counsel for the plaintiff, a French multinational pharmaceutical company, in an infringement suit against a Canadian pharmaceutical company on patents related to the antihypertensive drug Ramipril. Aventis Pharma Deutschland GmbH et al. v. Cobalt Pharmaceuticals Inc. (D. Mass.).
  • Represented the respondent, a leading Taiwanese integrated device manufacturer in the nonvolatile memory market, in a Section 337 proceeding at the U.S. International Trade Commission against a charge brought by a semiconductor manufacturer that the client infringed a patent covering semiconductor chips. After a two-week hearing, the administrative law judge ruled that the patent was unenforceable and not infringed. In the Matter of Certain EPROM, EEPROM, Flash Memory, and Flash Microcontroller Semiconductor Devices and Products Containing Same (U.S. Int'l Trade Comm'n).
  • Participated in the prosecution of an infringement action on behalf of a chemical company on three patents relating to catalysts for making ethylene oxide. After a three-week trial, the district court granted judgment as a matter of law in favor of the client on all validity issues, and the Federal Circuit affirmed grant of a new trial on infringement. Union Carbide v. Shell Oil Co. et al. (D. Del.).

Recognitions and Memberships

Recognitions

  • Chambers USA: Intellectual Property in New York (2013 to 2017)
  • LMG Life Sciences Star (2014 to 2017)
    • General Patent Litigation
    • Patent Strategy & Management
    • Hatch-Waxman Patent Litigation (Generic)
    • Nominated for Hatch-Waxman (Branded) Litigator of the Year (2014)
  • New York Metro "Super Lawyer" (2006 to 2010, 2015 to 2017)

Memberships

  • American Bar Association
  • Asian American Bar Association of New York: Former Board Member
  • American Intellectual Property Law Association
  • Legal Services NYC: Board Member

Pro Bono

  • Supervised asylum cases as partner-in-charge, including successfully obtaining asylum for a Russian LGBT client.    

Industries

Prior Positions

  • United States Patent and Trademark Office: Patent Examiner (1986 to 1990)

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. Patent and Trademark Office, Registration No. 34,528
  • U.S. District Court, Southern District of New York
  • U.S. District Court, Eastern District of New York
  • New York

Education

  • J.D., The George Washington University Law School, 1991, Highest Honors, Order of the Coif, The George Washington Law Review, Moot Court Board
  • M.S., Chemical Engineering, Columbia University, 1986
  • B.S., Chemical Engineering, Columbia University, 1984
  • B.A., Columbia University, 1983

Languages

  • Mandarin Chinese