Philip L. Hirschhorn
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Philip L. Hirschhorn

Shareholder

New York, NY
 
 
 

How Phil Helps Clients

With more than 25 years' experience as an intellectual property (IP) trial lawyer, Phil still enjoys the learning process that takes place with a new client and a new challenge.

Phil’s extensive experience includes bench and jury trials and arbitrations (including one, centered on a biotechnology product, that lasted nine months). He has represented clients in Hatch-Waxman (Paragraph IV) litigations, has worked in diverse industries such as graphics, visualization technologies, medical device, chemical and consumer products, and also has experience handling copyright and trademark/trade dress litigation.

Work hard to find a practical solution -- but be willing to fight all the way to achieve the client's goals.

In patent litigation, Phil has counseled clients on the interplay between Patent Office and district court proceedings. He has represented clients involved in proceedings in or with the Patent Office, including § 145 actions to obtain patents, ex parte and inter partes reexaminations and, with the advent of the America Invents Act, adversarial post-grant proceedings, including inter partes reviews.

Phil is the managing shareholder for Buchanan's New York City office and the former co-chair of the firm's IP Section.

What Clients Can Expect

One aspect of Phil's success is his ability to take difficult legal and technical questions and translate them for courts and juries. He works with clients to fully understand their business, including how IP litigation affects business objectives.

Clients know that Phil will go the extra mile, on his own or as he manages a team effort, to resolve the client's issues.

Proof Points

  • IP Star, Managing Intellectual Property, 2013-2016, 2018
  • IAM's Patent 1000 List, 2014-2016, 2018
  • Obtained bench trial victory and subsequent Federal Circuit affirmance in inventorship dispute over gas barrier protections for polyester containers like PET soda bottles.
  • Settled patent infringement case for patent owner of food processing machinery during damages and willfulness trial after obtaining Federal Circuit affirmance of summary judgment of infringement and no invalidity.
  • Obtained dismissals of actions for patent and domain name infringement for a sports equipment company.
  • Defended pharmaceutical client's brand name anti-depressant drug from infringing generic drug product in Hatch-Waxman bench trial.
  • Defended patent owner at invalidity jury trial of computer hardware patent directed to computer graphics.
  • Defended a consumer product company's new product from claims of infringement from market leader.
  • Obtained defense victory in bench trial over alleged illegal use of LinkedIn account.
  • Guided appeals from patent office obviousness determination and subsequent litigation on behalf of patent holder on medical device to prevent deep vein thrombosis leading to settlement.
  • Tried successful arbitration for reimbursement under patent licensing agreement for share of multi-billion dollar pharmaceutical market.

Phil's representative litigation experience includes:

  • Zoetis, LLC v. Roadrunner Pharmacy, Inc., Civil Action No. 15-3193 NLH/AMD (D.N.J.) (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 (D. Ariz.) (patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
  • Zoetis, LLC v. Attix Pharms. Inc., Civil Action No. 16-02640-PHX-DJH (D. Ariz.) (patent infringement action involving FDA-approved canine anti-itch remedy, Apoquel®)
  • Ethox Chemicals LLC and James Tanner v. The Coca-Cola Company, United States District Court for the District of South Carolina. Omitted inventor action under 35 U.S.C. § 256 concerning gas barrier technology.
  • Cheese Systems, Inc. v. Tetra Pak Cheese and Powder Systems, Inc., United States District Court for the Western District of Wisconsin. Guided patent owners in successful infringement action to summary judgment, appeal and trial.
  • Eagle v. Edcomm, Inc., United States District Court for the Eastern District of Pennsylvania. Trial counsel in defense of suit involving alleged theft of LinkedIn account resulting in no damages and no equitable relief.
  • Glaxo Wellcome, Inc. v. Eon Labs Manufacturing, Inc., United States District Court for the Southern District of New York. Trial counsel for branded pharmaceutical company in Hatch-Waxman litigation against generic drug company regarding anti-depressant.
  • Wm. Wrigley Jr. Company v. Cadbury Adams USA LLC, United States District Court for the 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., United States District Court for the Western District of Wisconsin. 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, United States District Court for the 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.
  • Glaxo Wellcome, Inc. v. Andrx, United States District Court for the Middle District of Florida. Representation of branded pharmaceutical company in Hatch-Waxman litigation against ANDA filer regarding anti-depressant.
  • Glaxo Group Ltd. v. Amneal Pharm., United States District Court for the District of New Jersey. Represent branded pharmaceutical company in Hatch-Waxman litigation regarding aqueous ranitidine.
  • Metrologic Instruments, Inc. v. Symbol Technologies, United States District Court for the District of New Jersey. Represent patent owner in patent infringement lawsuit directed to bar code scanning technologies.
  • PSC Scanning, Inc. v. Metrologic Instruments, Inc., United States District Court for the District of Oregon. Defense of bar code scanner manufacturer against claims of patent infringement.
  • Powers Fasteners, Inc. v. Illinois Tool Works, United States District Court for the 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., United States District Court for the Southern District of New York. Represent plaintiff in trade secret misappropriation case against former consultant.
  • Novamedix Ltd. v. Kinetic Concepts, Inc., United States District Court for the Western District of Texas. 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., United States District Court for the 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.
  • Takeda Pharm. et al. v. Aurobindo Pharm., United States District Court for the Southern District of New York. Defense of ANDA filer in Hatch-Waxman litigations regarding pharmaceuticals for the treatment of diabetes.
  • Internet Machines LLC v. Inventure, Inc., et al., United States District Court for the Eastern District of Texas. Defense of alleged infringer from claims of patent infringement related to peripheral component interface switching technology.

Outside the Office

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.