Biography

Benjamin Hershkowitz is a partner in the New York office of Gibson, Dunn & Crutcher where he is a member of Gibson Dunn's Intellectual Property Practice.  Mr. Hershkowitz focuses his practice on intellectual property litigation, particularly complex patent litigation.  In addition, Mr. Hershkowitz has extensive experience successfully representing clients in trademark, copyright, trade secret, computer fraud and antitrust matters.  Mr. Hershkowitz has represented companies ranging from the world's leading technology companies to innovative start-ups.

Mr. Hershkowitz has regularly served as lead counsel in courts around the country.  His work has garnered him recognition by Chambers USA:  America's Leading Lawyers for Business in the area of Intellectual Property:  Patent, noting that he is "extremely helpful and efficient, and an excellent writer and advocate" as well as IAM Patent 1000  which commented that he is "adept at weaving stories around complex technical issues."  Mr. Hershkowitz's litigation experience has covered a wide range of technologies including computer networking equipment, optical transmitters, cellular telephony, voicemail, semiconductors, computer hardware and software, e-mail, e-commerce, video on demand, compact discs, liquid crystal displays, VoIP, business methods, digital rights management, electromechanical industrial equipment and Internet and information technologies and protocols.

Mr. Hershkowitz also regularly counsels clients in technology transactions, including both the licensing in and licensing out of patents, technology and know-how.  In addition, he works with clients to acquire and divest patent and other intellectual property assets.  Mr. Hershkowitz also handles intellectual property matters arising in corporate transactions, including mergers and acquisitions and strategic alliances.  He further provides guidance to clients in establishing internal procedures and policies for addressing intellectual property issues and handling copyright software audits.

Mr. Hershkowitz is a frequent author and speaker and served for five years as the Editor-in-Chief of Patent Strategy & Management, an Incisive Media newsletter.  Recent article topics include patent damages, selecting and working with expert witnesses, and the intersection of patents, antitrust and standards setting organizations.  Mr. Hershkowitz has spoken on trade secrets, the licensing of intellectual property, collaborative research agreements, computer software and business method patents, patent standardization and patent pooling arrangements, and prior art searching to various organizations such as the ABA, NYIPLA, LSI, ACCA, Computer Law Association, PLI and IPIC.  Mr. Hershkowitz is a former Chair of the Committee on Internet Law for the NYIPLA and is active as a member of the Hon. William C. Conner Inn of Court.

Prior to joining Gibson Dunn, Mr. Hershkowitz was a partner at Goodwin Procter in its New York office.  Before that, he worked for an intellectual property boutique and interned in the chambers of both a Federal District Judge and a Federal Magistrate Judge.  Mr. Hershkowitz graduated from Rutgers University, College of Engineering (with highest honors) in 1990 and New York University, School of Law, in 1993, where he helped launch the Environmental Law Journal.  He is also registered to practice before the United States Patent & Trademark Office.

Recently Concluded Representative Litigations

  • Sharp:  Represented Sharp in defending against patents directed toward LED lighting.  Cao v. Sharp (D. Utah 2011).
  • Foot Locker:  Represented Foot Locker in defending against a patent directed toward Internet searching.  Select Retrieval v. FootLocker (D. Del. 2011).
  • Foot Locker:  Represented Foot Locker in defending against a patent directed to tracking of packages.  Eclipse IP v. Foot Locker (N.D. Ill. 2011).
  • Sharp:  Represented Sharp in defending against a patent directed toward LED lighting.  Convinced plaintiff to voluntarily withdraw the case.  Takion v. Sharp (W.D. Wash. 2011).
  • Cablevision:  Represented Cablevision in defending against a multi-patent case brought against Cablevision's video-on-demand offerings.  Pragmatus v. Cablevision (D. Del. 2011).
  • Cablevision:  Represented Cablevision in defending against a patent directed toward cable modem termination systems.  Convinced plaintiff to voluntarily withdraw the case.  Ceres II v. Cablevision (D. Del. 2011).
  • Shazam:  Represented Shazam in defending against a patent directed toward music identification systems.  Iceberg v. Shazam (E.D. Va. 2010).
  • Cablevision:  Represented Cablevision in defending against a patent directed toward Cablevision's voice offerings.  Convinced plaintiff to voluntarily withdraw the case.  Ceres I v. Cablevision (D. Del. 2010).
  • Ricoh:  Represented Ricoh in defending against a patent directed toward Blu-ray DVD players.  PacID v. Ricoh (E.D. Tex. 2010).
  • Foot Locker:  Represented Foot Locker in defending against a patent directed toward Internet search and mapping features.  GeoTag v. Foot Locker (E.D. Tex. 2010).
  • Shazam Entertainment:  Represented Shazam Entertainment in defending against patents directed toward watermark and identification of music.  Digimarc v. Shazam Entertainment (D. Ore. 2009).
  • U.S. mobile phone carrier:  Represented a U.S. mobile phone carrier in defending against patents directed toward the interface between handsets and base stations.
  • Sharp:  Represented Sharp in defending against a patent directed toward Blu-ray DVD players.  PACid v. Sharp (E.D. Tex. 2009).
  • U.S. mobile phone carrier:  Represented a U.S. mobile phone carrier in defending against a patent directed toward billing for location-based services.  Case was settled after motion for judgment on the pleadings was brought by defendants.
  • U.S. mobile phone carrier:  Represented a U.S. mobile phone carrier in defending against a patent directed toward location based services in conjunction with traffic-related data.  Case was settled after reexamination of patents brought before USPTO.
  • Sharp:  Represented Sharp in defending against a patent directed at security for Blu-ray DVD players.  Case was voluntarily dismissed by DSS shortly after Sharp brought a motion to dismiss.  DSS v. Sharp (E.D. Tex. 2009).
  • Sharp:  Represented Sharp in defending against patents directed toward video projectors.  Light Valve Solutions v. Sharp (N.D. Ga. 2008).
  • U.S. mobile phone carrier:  Represented a U.S. mobile phone carrier in defending against patents directed toward e-commerce billing.
  • NICE Systems:  Represented NICE Systems in defending against a patent directed toward security systems.  Multi-Format v. NICE (D.N.J. 2008).
  • Cablevision:  Represented Cablevision in defending against two patents directed at voice over IP telephony.  Case was dismissed after Cablevision secured an order awarding dismissal with prejudice and sanctions due to discovery violations.  Rates Technology Inc. v. Cablevision (E.D.N.Y. 2007).
  • Cablevision:  Represented Cablevision in defending against two patents directed toward visual voicemail.  Klausner Technologies v. Cablevision (E.D.N.Y. 2007).
  • Cablevision:  Represented Cablevision in defending against a patent directed toward pay- per-view ordering.  Tele-Guia Talking Yellow Pages v. Cablevision (S.D.N.Y. 2007).
  • Cablevision:  Represented Cablevision in defending against four patents directed at video on demand.  Judgment was entered in favor of Cablevision after securing invalidity due to indefiniteness of all asserted claims.  The case was affirmed by the Court of Appeals for the Federal Circuit.  In re Acacia (E.D.N.Y. 2005/ M.D.L. 2005).

Other Recent Representative Matters

  • Telecommunications company and financial institution:  Represented a telecommunications company and financial institution in connection with software audit by the Software & Information Industry Association and Business Software Alliance.
  • Licensing in and licensing out of technology and patents:  Represented consumer electronics companies, telecommunications companies, retail and software companies as well as financial institutions in connection with licensing in and licensing out of technology and patents.
  • Telecommunications and software companies:  Represented telecommunications and software companies in developing strategic intellectual property plans.
  • Internet companies and e-commerce retailers:  Represented Internet companies and e-commerce retailers in connection with establishing intellectual property forms and agreements.
  • Companies and financial institutions:  Represented companies and financial institutions in intellectual property due diligence in connection with acquisitions and investments.

Selected Publications and Presentations

  • Presenter, "Litigating Patent License Agreements," Gibson, Dunn & Crutcher LLP Intellectual Property Institute, April 28, 2010 (Presentation).
  • Presenter, "Dealing with Expert Witnesses," Gibson, Dunn & Crutcher LLP, February 2010 (Presentation).
  • Presenter, "Lost Profits as Damages," NYIPLA Conference:  Preparation of a Patent Damages Case for Trial, December 3, 2009 (Presentation).
  • Author, "Keep Your SSO Promises," IP Law360, June 2, 2008 (Article).
  • Author, "What is Reasonable?," Law Journal Newsletters, Patent Strategy & Management, May 2008, Vol. 8, No. 12 (Article).
  • Author, "Selecting Experts In Patent Cases—A Few Simple Considerations," Law Journal Newsletters, Patent Strategy & Management, February 2008/March 2008, Vol. 8 Nos. 9/10 (Article).
  • Author, "Patent Licensing—The Devil is in the Details," Licensing, Vol. 27, No. 5, May 2007 (Article).
  • Speaker, "Patent Licensing from a Litigator's Perspective," PLI Advanced Licensing Seminar, March 1–2, 2007 (Speech).
  • Author, "10 Simple Steps to Ensure Software Licensing Compliance," IP360, March 1, 2007 (Article).

Education

  • New York University - 1993 - Juris Doctor
  • Rutgers University - 1990 - Bachelor of Science

Admissions

  • New Jersey Bar
  • New York Bar