Kaye Scholer

In addition to his litigation and appellate practice, Ben counsels a variety of U.S. and international clients regarding U.S. intellectual property law by providing them with infringement, validity, enforceability and clearance opinions, and by advising them in licensing and antitrust matters. Ben also has extensive experience in conducting intellectual property due diligence investigations in connection with acquisitions and licensing deals. He also counsels and assists clients in procuring both U.S. and foreign patents.

Ben’s practice has encompassed an array of technologies, including chemicals, biotechnology, pharmaceuticals, polymers and semiconductors. For example, he has counseled clients and litigated in the fields of pharmaceutical compounds and formulations, genetically engineered seeds, industrial and environmental catalysts, fibers, memory chips, and imaging devices. He obtained invaluable experience in the prosecution of patent applications before the U.S. Patent and Trademark Office by serving as a Patent Examiner for four years.

Ben is an active member of the legal community. Ben recently became a member of the prestigious Sedona Conference’s Working Group 10 on Patent Litigation Best Practices (WG10). WG10 will develop best practices and recommendations for patent litigation case management in the post-America Invents Act environment. Ben is also a former member of the Council of the Intellectual Property Law Section of the American Bar Association and a former Director of the Asian American Bar Association of New York.

Representative Patent Litigation Experience

• OSI Pharmaceuticals, Inc. et al. v. Mylan Pharmaceuticals, Inc. (D. Del.): Successfully defeated an ANDA challenge in the US District Court for the District of Delaware for clients OSI Pharmaceuticals, Inc., Pfizer, Inc. and Genentech, Inc. Mylan Pharmaceuticals, Inc. challenged both the patent covering the compound erlotinib, the active ingredient in Tarceva®, as well as a second patent covering the method of using erlotinib to treat non-small cell lung cancer. Annual worldwide sales of Tarceva total approximately one billion dollars. After a 5-day bench trial, the Court ruled that the two patents covering Tarceva and its use are not invalid.
  
  
• Sanofi-Aventis Deutschland GmbH et al v. Glenmark Pharmaceuticals Inc., USA et al (D.N.J.): Secured a favorable jury verdict for Sanofi-Aventis in a suit against Glenmark Pharmaceuticals Ltd. 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.
  
  
• Aventis Pharma Deutschland GmbH et al. v. Lupin Pharmaceuticals, Inc. et al. (E.D. Va.): Co-lead counsel for Aventis in an infringement suit against Lupin on a patent covering the anti-hypertensive drug ramipril. Summary judgment of infringement entered against defendants. After a two-week trial, the court ruled that the patent is valid and enforceable. This victory was selected as a Noteworthy Case by The National Law Journal for its 2006 Defense Hot List.
  
  
• Chiron Corp. v. SourceCF, Inc. et al. (N.D. Cal.): Co-lead counsel for Chiron in patent infringement suit. Permanent injunction entered against defendants.
  
  
• Aventis Pharma Deutschland GmbH et al. v. Cobalt Pharmaceuticals, Inc. (D. Mass.): Co-lead counsel for plaintiff Aventis in an infringement suit against Cobalt on patents related to the anti-hypertensive drug Ramipril®.
  
  
• 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): Represented respondent Macronix, a Taiwanese company, in a Section 337 proceeding in the U.S. International Trade Commission against charge brought by Atmel Corp. that Macronix infringed a patent covering semiconductor chips. After a two-week hearing, the Administrative Law Judge ruled that the Atmel patent was unenforceable and not infringed.
  
  
• Union Carbide v. Shell Oil Company et al. (D. Del.): Prosecution of infringement action on behalf of Union Carbide against Shell on three patents relating to catalysts for making ethylene oxide. After a three-week trial, the district court granted JMOL in favor of Union Carbide on all validity issues, and the Federal Circuit affirmed grant of new trial on infringement.
  
  
• Enzon, Inc. v. Shearwater Polymers, Inc. (D. Ala.): Defended Shearwater against a patent infringement suit brought by Enzon on a patent covering polymers that can be attached to therapeutic proteins.
  
  
• Abbott Laboratories v. Pfizer, Inc. (N.D. Ill.): Represented Pfizer in litigation brought by Abbott alleging that Pfizer’s Trovan® antibiotic infringed an Abbott patent covering certain fluoroquinolone compounds.
  
  
• CIBA Vision v. Alcon Labs. (N.D. Tex.): Represented CIBA in an infringement suit against Alcon on a patent relating to an ophthalmic solution.
  
  
• Therma-Tru Corp. v. J-M Manufacturing Co. (E.D. Mich.): Represented J-M against charge that it infringed Therma-Tru’s patent covering thermoplastic doors. The district court granted J-M’s motion to dismiss, which the Federal Circuit affirmed.
  
  
• Bayer AG v. Barr Labs. (S.D. N.Y.): Represented Bayer in an infringement suit against Barr on a patent covering Bayer’s Ciprofloxacin® antibiotic.

Additional Experience

Worked four years as Patent Examiner in the United States Patent and Trademark Office in the areas of electrochemistry, chemical coating processes, and polymeric compositions.

Prosecuted hundreds of patent applications involving pharmaceuticals, chemical compounds and compositions, polymers, and biotechnology.

Authored numerous opinions on patents involving chemicals, polymer resins, genetically engineered seeds, pharmaceuticals, imaging devices, and telecommunication systems.