Benjamin C. Hsing

Partner
Ben Hsing

Ben Hsing is an accomplished trial lawyer with significant experience litigating patents across a broad range of technologies, including pharmaceutical compounds and formulations, telecommunication cables, treatment methods, genetically engineered seeds, medical devices, memory chips, light switches, imaging devices, and pet products. Ben has secured favorable results for major pharmaceutical and technology companies in numerous high-profile cases.

Ben regularly calls upon his experience as a patent examiner to provide comprehensive counsel to clients on matters before the U.S. Patent and Trademark Office (USPTO), including post-grant and contested patent office proceedings. He also conducts intellectual property (IP) due diligence investigations in connection with acquisitions and licensing deals. He is deeply involved in his clients’ matters, ensuring that he understands all aspects of their businesses and cases so that he can identify, dissect, and solve potential challenges facing his clients.

Experience

Government Experience

  • Patent examiner, USPTO, 1986 – 1990

Representative Matters

  • Achieved a total claim construction victory in a Hatch-Waxman action relating to a drug treating chronic myelogenous leukemia. The court adopted proposed constructions for all 15 terms in dispute
  • Won Federal Circuit appeal affirming Patent Trial and Appeal Board’s (PTAB) decisions that patents covering telecommunication cables were obvious
  • Served as lead counsel for a utility company defending an infringement suit on a patent covering an energy meter system
  • Represented an e-commerce company in a patent infringement suit on a patent covering a bar code scanner
  • Successfully defeated an Abbreviated New Drug Application (ANDA) challenge in the U.S. District Court for the District of Delaware for pharmaceutical clients concerning a drug for treating non-small-cell lung cancer. After a five-day bench trial, the court ruled that the two patents covering the drug and its use were not invalid
  • Won 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 client’s patent and awarded $16 million in damages
  • 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 (USITC) 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
  • 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

Insights

Credentials
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Education

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

Bar Admissions

  • New York

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York

Professional Memberships and Activities

  • Co-Chair, Intellectual Property Committee, Asian American Bar Association of New York
  • Former board member, Asian American Bar Association of New York
  • Member, American Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Presidential Task Force on Diversity Inclusion and Leadership, Intellectual Property Owners Association (2018-2019)

Recognition
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  • Super Lawyers, New York, 2006-2010, 2015-2020
  • Chambers USA, Intellectual Property, New York, 2013 – 2020
  • LMG Life Sciences
    • Life Sciences Star, General Patent Litigation, 2014 – 2020
    • Life Sciences Star, Patent Strategy & Management, 2014 – 2020
    • Life Sciences Star, Hatch-Waxman Patent Litigation (Branded), 2014 – 2020
    • Attorney of the Year, Patent Strategy & Management, 2017
    • Litigator of the Year Nominee, Hatch-Waxman (Branded), 2014