Philip L. Hirschhorn Partner

• Bio//
• Representative Matters//
• Articles & Presentations//
• Honors & Awards//
• Get To Know//

Philip L. Hirschhorn focuses his practice on patent litigation and counseling. He prides himself on working with clients to understand their businesses thoroughly, including the ways in which intellectual property litigation affects their business objectives. Clients can rest assured that Phil will go the extra mile, both on his own and as part of a team, to help clients solve their legal challenges.

Phil’s extensive experience, spanning more than 30 years, includes bench trials, jury trials, and arbitrations. He has represented clients in traditional infringement/validity litigations as well as Hatch-Waxman (Paragraph IV) litigations.  Phil also has experience handling copyright, trademark/trade dress, and trade secret litigation. Phil advises clients on commercial patent licensing agreements.  The subject matter of these engagements is diverse, including chemical, pharmaceutical, consumer products, medical devices, graphics, visualization technologies, apparel, and radiotherapy software and devices.

In addition to his patent litigation experience, Phil counsels clients on the interplay between the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and district court actions. He has extensive PTAB litigation experience, having assisted both patent owners and petitioners.

Phil’s prowess in intellectual property law has earned him many accolades over the years. Managing Intellectual Property has named him an IP Star nearly every year since 2013, and he has been named among IAM’s Patent 1000 list several times. He also has been named a New York Super Lawyer in the practice area of patent litigation.

Phil earned a bachelor’s degree from Columbia College and his law degree from Fordham University School of Law, where he also served as Associate Editor of the Fordham Law Review and Editor of the Fordham Environmental Law Report.

Phil is a frequent speaker on IP litigation topics such as recent developments in Paragraph IV litigation, patent damages, and trade secret litigation.  He is a current Co-Chair of the PTAB/TTAB committee of the Federal Circuit Bar Association and the immediate past chair of the Patents Committee of the New York City Bar Association.

Memberships

• The Federal Circuit Bar Association, PTAB/TTAB Committee, Co-Chair
• New York City Bar Association, Former Chair, Patents Committee
• New York Intellectual Property Law Association
• Intellectual Property Owner’s Association, Patent Litigation Committee

Representative Matters

Representative litigation experience includes:

• PeriRx, Inc. v. The Regents of the University of California, et al., Civil Action No. 2:20-cv-02212 (Eastern District of Pennsylvania) – (Defend The Regents in patent licensing dispute)
• Best Medical International, Inc. v. Elekta AB et al., Civil Action No. 1-19-cv-03409 (Northern District of Georgia) - (Enforcing patents on radiation therapy for the treatment of tumors)
• Best Medical International, Inc. v. Varian Medical Systems, Inc. et al., Civil Action No. 1-18-cv-01599 (District of Delaware) - (Enforcing patents on radiation therapy for the treatment of tumors)
• H. Lundbeck A/S et al. v. MSN Laboratories Private Limited et al., Civil Action No.: 1-18-cv-00114 (District of Delaware) – (Challenging patents on vortioxetine)
• Forest Laboratories, LLC f/k/a Forest Laboratories, Inc. et al v. MSN Laboratories Private Limited et al., Civil Action No.: 2-17-cv-10140 (District of New Jersey) – (Challenging patents on levomilnacipran)
• Boehringer Ingelheim Pharms. Inc. v. HEC Pharm. Co., Ltd., Civil Action No. 3:15-cv-05982 (District of New Jersey) – (Challenging patents on linagliptin)
• Align Technology, Inc. v. 3Shape A/S and 3Shape Inc., Civil Action No. 17-1646 (LPS) (District of Delaware) – (Defense of patent infringement claims regarding intraoral scanners and software for the use of intraoral scanners)
• Merck Sharp & Dohme Corp. v. MSN Laboratories Private Limited, et al., Civil Action No.: 3-18-cv-00675 (District of New Jersey) – (Challenging patent on fosaprepitant)
• Tianhai Lace USA, Inc., v. Lord & Taylor LLC, et al., Civil Action No. 1:17-cv-01328 (Southern District of New York) (Defend apparel manufacturer and customer in actions regarding alleged copyright infringement)
• Tianhai Lace USA, Inc., v. Lord & Taylor LLC, et al., Civil Action No. 1:18-cv-06616 (Southern District of New York) (Defend apparel manufacturer and customer in actions regarding alleged copyright infringement)
• Silcotek Corp. v. Entech Instrs. Inc., Civil Action No. 2:18-cv-03274 (Central District of California) (Defend against assertion of patent on passivating gas in a gas transfer system)
• Horizon Pharm, Ireland Ltd. v. IGI Laboratories, Inc., Civil Action No. 1:15-cv-05022 (District of New Jersey) – (Hatch-Waxman litigation regarding diclofenac)
• Respire Medical Holdings LLC v. Oravanosa, LLC, Civil Action No. 1:16-cv-05880 (KPF) (Southern District of New York) – (Defend patent infringement claims regarding oral devices for the treatment of obstructive sleep apnea)
• Sirona Dental Sys. GmbH v. 3Shape A/S, 1:15-cv-00278 (District of Delaware) – (Defend against patent infringement claims on dental imaging systems)
• Zoetis, LLC v. Roadrunner Pharmacy, Inc., Civil Action No. 15-3193 NLH/AMD (District of New Jersey) (Patent and trademark infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
• Zoetis, LLC v. AX Pharm. Corp., Civil Action No. 16-02642-PHX-GMS (District of Arizona) (Patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
• Zoetis, LLC v. Attix Pharms. Inc., Civil Action No. 16-02640-PHX-DJH (District of Arizona) (Patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
• In re Application of Akebia Therapeutics, Inc. for an Order Granting Leave to Issue Subpoena for the Taking of Discovery Pursuant to 28 U.S.C. 1782, 3:14-mc-80294-JD (Northern District of California) – (Defend against discovery of confidential material in response to subpoenas issued pursuant to § 1782)
• Boehringer Ingelheim Pharms. Inc. v Accord Healthcare, et al., Civil Action No. 3:16-cv-00852 (District of New Jersey) – (Represent generic manufacturer in Hatch-Waxman dispute against charges of infringement related to linagliptin/Tradjenta® and linagliptin and metformin/Jentadueto®)
• Novartis Pharms. Corp. v. Pharmaceutics Int’l Inc., Civil Action No. 2:14-cv-01347 (District of New Jersey) – (Defend Hatch-Waxman dispute concerning zoledronic acid or Zometa®)
• Olaf Sööt Design, LLC v. Stage Technologies Inc. and Metropolitan Opera Association, Inc., Civil Action No. 13-cv-7326 (Southern District of New York) – (Defend patent infringement regarding stage winch systems)
• Novartis Pharms. Corp. v. Actavis LLC, Civil Action No. 2:13-cv-01028 (District of New Jersey) – (Defend Hatch-Waxman dispute concerning zoledronic acid or Zometa® and Reclast®)
• Ethox Chemicals LLC and James Tanner v. The Coca-Cola Company, Civil Action No. 6:12-cv-01682 (District of South Carolina) – (Omitted inventor action under 35 U.S.C. § 256 concerning gas barrier technology)
• Luitpold v. Amneal Pharms., et al., 3:12-cv-05064 (District of New Jersey) – (Hatch Waxman litigation assertion regarding ketorolac tromethamine)
• Li v. Flyboard, Inc., Civil Action No. 12-cv-61323 (Southern District of Florida) – (Defend patent litigation regarding water jet recreational devices)
• Novartis Pharms. Corp. v. Wockhardt USA LLC, et al., Civil Action No. 2:12-cv-03967 (District of New Jersey) – (Hatch-Waxman litigation regarding zoledronic acid)
• Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., Civil Action No. 11-cv-21-C (Western District of Wisconsin) – (Guided patent owners in successful infringement action through summary judgment, appeal and trial)
• Eagle v. Edcomm, Inc., Civil Action No. 11-4303(RB) (Eastern District of Pennsylvania) – (Trial counsel in defense of suit involving alleged theft of LinkedIn account resulting in no damages and no equitable relief)
• Wm. Wrigley Jr. Company v. Cadbury Adams USA LLC, Civil Action No. 1:04-cv-00346 (Northern District of Illinois) – (Defense of leading confectionery company against charges of patent infringement related to use of physiological cooling agents in chewing gums)
• Silicon Graphics, Inc. v. ATI Technologies, et al., Civil Action No. 06-cv-0611 (Western District of Wisconsin), 2008-1334 (Federal Circuit) – (Representation of patent holder at trial in action for patent infringement resulting in jury verdict in defense of computer graphics technology)
• S.C. Johnson & Sons, Inc., et al. v. The Dial Corporation, Civil Action No. 3:08-cv-00505 (Western District of Wisconsin) – (Defense of a leading consumer goods company against charges of patent infringement related to heating technology for plug-in air fresheners)
• Takeda Pharm. et al. v. Aurobindo Pharm., Civil Action No. 1:10-cv-00247 (Southern District of New York) (Defense of ANDA filer in Hatch-Waxman litigations regarding pharmaceuticals for the treatment of diabetes)
• Glaxo Group Ltd. v. Amneal Pharm., Civil Action No. 2:08-cv-00493 (District of New Jersey) – (Represent branded pharmaceutical company in Hatch-Waxman litigation regarding aqueous ranitidine)
• Glaxo Wellcome, Inc. v. Eon Labs Manufacturing, Inc., Civil Action No. 1:00-cv-09089 (Southern District of New York) (Trial counsel for branded pharmaceutical company in Hatch-Waxman litigation against generic drug company regarding anti-depressant and smoking cessation drugs)
• Glaxo Wellcome, Inc. v. Andrx, Civil Action No. 02-1348 (Southern District of Florida) – (Representation of branded pharmaceutical company in Hatch-Waxman litigation against ANDA filer regarding anti-depressant)
• Metrologic Instruments, Inc. v. Symbol Technologies, Civil Action No. 2-06-cv-2199 (District of New Jersey) – (Represent patent owner in patent infringement lawsuit directed to bar code scanning technologies)
• PSC Scanning, Inc. v. Metrologic Instruments, Inc., Civil Action No. 6-04-cv-6150 (District of Oregon) – (Defense of bar code scanner manufacturer against claims of patent infringement)
• Powers Fasteners, Inc. v. Illinois Tool Works, Civil Action No. 1:06-cv-11500 (Southern District of New York) – (Represent patent owner in patent infringement action against competitor for novel screw fastener technology)
• Financial Technologies International Inc. v. DataSmith LLC, et al., Civil Action No. 1:99-cv-9351 (Southern District of New York) – (Represent plaintiff in trade secret misappropriation case against former consultant)
• Novamedix Ltd. v. Kinetic Concepts, Inc., (Western District of Texas) – Civil Action No. s-92-cv-00177 (Represent medical device manufacturer in action for patent infringement and trade secret misappropriation against competitor in deep vein thrombosis prevention device)
• M.J. Woods Inc. v. Unilever, et al., Civil Action No. 1:01-cv-3135 (Southern District of New York and American Arbitration Association) – (Defense of a leading consumer goods company in successful trial defense of trade secret misappropriation and patent licensing issues)
• Ortho Pharmaceutical Corp. v. Amgen, (Endispute Arbitration) – (Represent claimant at trial in patent licensing dispute related to multi-billion dollar biologic)
• Internet Machines LLC v. Inventure, Inc., et al., Civil Action No. 6:10-cv-00023 (Eastern District of Texas) – (Defense of alleged infringer from claims of patent infringement related to peripheral component interface switching technology)

Representative International Trade Commission experience includes:

• In re Certain Color Intraoral Scanners and Related Hardware and Software, Investigation No. 337-TA-1091 (defense of respondent in multi-patent proceeding)

Phil’s representative PTAB experience includes:

• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00053
• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00071
• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00072
• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00075
• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00076
• Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00077
• Elekta Inc. v. Best Medical International, Inc., IPR2020-00067
• Elekta Inc. v. Best Medical International, Inc., IPR2020-00070
• Elekta Inc. v. Best Medical International, Inc., IPR2020-00073
• Elekta Inc. v. Best Medical International, Inc., IPR2020-00074
• 3Shape Medical A/S v. Sirona Dental Systems GmbH, IPR2016-00481
• Stage Technologies, Inc. v. Olaf Sööt Design, LLC, IPR2015-00116
• Stage Technologies, Inc. v. Olaf Sööt Design, LLC, IPR2015-00117

Articles & Presentations

Duncan Parking as a Case Study in Avoiding DOE Infringement, Leveraging Claim Construction and Joint Inventorship at the PTAB and in Federal Court // February 25, 2021
Panitch attorneys Philip L. Hirschhorn and Aaron L.J. Pereira use the Federal Circuit’s 2019 decision in Duncan Parking Techs. v. IPS Group as a vehicle to discuss established and emerging patent law issues in joint inventorship, doctrine of equivalents infringement, claim construction, and case management strategies. Read more

Panitch Schwarze Attorneys to Present at Intellectual Property Law (CLE), Live Webcast // December 16, 2020
Panitch Schwarze partner Philip L. Hirschhorn and attorney Aaron L.J. Pereira will present at an Intellectual Property Law CLE webcast presented by The Knowledge Group.  Read more

Panitch Schwarze Partners to Present at The IP Strategy Virtual Summit // November 3, 2020
Erin M. Dunston and Philip L. Hirschhorn will take part in a virtual summit that discusses how patent practitioners build a cohesive strategy with options around these legal and budget challenges. Read more

Panitch Schwarze Partner Philip L. Hirschhorn Discusses Moving to a New Firm During a Global Pandemic // October 30, 2020
Partner Philip L. Hirschhorn recently spoke with Managing IP, a leading source of news and insight into global intellectual property trends and topics, about making a lateral move during the ongoing pandemic of novel coronavirus.  Read more

Panitch Schwarze Partners Named Among 2020 ‘IP Stars’ and IAM Patent 1000 // July 9, 2020
Panitch Schwarze Belisario & Nadel LLP is pleased to announce that Managing Intellectual Property has named intellectual property attorneys Erin M. Dunston and Philip L. Hirschhorn 2020 IP Stars. Dunston and Hirschhorn were also recently named part of the IAM Patent 1000 for litigation – Dunston for the D.C. Metro Area and Hirschhorn for New York.  Dunston was also ranked nationally for post-grant proceedings.  Read more

Panitch Schwarze Team to Discuss Hatch-Waxman Disputes in District Court and at the PTAB // June 29, 2020
Panitch Schwarze partners Travis W. Bliss, Erin M. Dunston, and Philip L. Hirschhorn and Panitch Schwarze counsel Aaron Pereira are teaming up to present a webinar for Lawline on the interplay between district court and PTAB practice, including strategic considerations and recent developments. Read more

Panitch Schwarze Partner to Discuss Global IP Issues at Federal Circuit Bar Association Bench & Bar // May 14, 2020
Panitch Schwarze partner, Philip L. Hirschhorn, joins a panel of fellow thought leaders at the Innovation and Incentive Systems webinar to discuss the types of incentives (and disincentives) that exist in the Global IP community and their impact on innovation. Read more

Panitch Schwarze Lands Powerhouse IP Litigation and Life Sciences Group // April 10, 2020
Panitch Schwarze Belisario & Nadel has expanded its IP life sciences and litigation practices by adding a formidable group of patent litigators and prosecutors. Read more

Honors & Awards

• IP Star, Managing Intellectual Property, 2013-2016, 2018-2020
• Patent 1000, IAM, 2014-2016, 2018-2020
• Super Lawyer, New York Metro area, 2017-2019

Get To Know

When not in the office, Phil enjoys spending time traveling and actively exploring new places, like a hike in the Rockies, skiing in Utah, walking on the Great Wall of China, or riding a bike through Paris.