Ben Katzenellenbogen

Partner

Orange County

949-760-0404

ben.katzenellenbogen@knobbe.com

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Overview

Experience

Recognition

Resources

Benjamin A. Katzenellenbogen has been litigating intellectual property disputes for more than 20 years, with an emphasis on patent litigation, particularly pharmaceutical cases in the Hatch-Waxman context. Ben regularly appears in district courts throughout the country, as well as in California state courts.

Ben has represented clients across a broad range of technologies, and has considerable experience in trademark, trade secret, copyright, unfair competition, and state law issues. Exemplary engagements are listed in the Experience section, organized by legal issue and technology area.

Ben has represented branded and generic drug manufacturers in Hatch-Waxman litigation involving a number of drugs, including: Seroquel XR® (first-to-file), Nexium® (first-to-file), Provigil® (first-to-file), Antara®, Intuniv®, Oxecta®, and Evomela®.

Ben has handled cases throughout the litigation process, from preliminary injunctions and motions to dismiss, to class certification, Markman (claim construction), and summary judgment, all the way through trial and post-trial motions. He has argued before the United States Court of Appeals for the Ninth Circuit and the California Court of Appeal, and appeared before the Federal Circuit.

Ben holds a B.S. in General Chemistry from the University of California – Los Angeles (UCLA) and a J.D. from Harvard Law School. He served as a Judicial Clerk to Judge Ronald M. Whyte at the U.S. District Court for the Northern District of California (San Jose division).

Ben has been selected for inclusion in the "Southern California Super Lawyers" list by Super Lawyers magazine for his work in intellectual property litigation.

Clerk Experience

Clerk to the Honorable Ronald M. Whyte in the Northern District of California, San Jose Division, 1999‑2000.

Education

Harvard Law School (J.D., 1999), cum laude

University of California - Los Angeles (UCLA) (B.S. General Chemistry, 1996), summa cum laude

Harvard Law School

University of California - Los Angeles (UCLA)

State Bar of California

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

U.S. District Court - Central District of California

U.S. District Court - Northern District of California

U.S. Patent and Trademark Office

Automotive, Transportation & Power Sports

Construction & Home Improvement

Media & Entertainment

Medical Devices & Procedures

Pharmaceuticals

Sporting Goods & Recreation

Practice Areas

Consumer Products Litigation

Appellate Litigation

Hatch-Waxman Litigation

CyDex Pharmaceuticals, Inc. v. Alembic Global Holding S.A., et al.

Represent plaintiff in patent infringement action in the District of Delaware relating to pharmaceutical compositions of Captisol®-enabled Melphalan HCl (the active ingredient in Evomela®).

Novartis Pharmaceuticals, Corp. v. Glenmark Pharmaceuticals, Inc., et al.

Defend patent infringement action in the District of Delaware relating to pharmaceutical compositions of fingolimod (the active ingredient in Novartis’s Gilenya® product).

Horizon Pharma Ireland Ltd., et al. v. Lupin Pharmaceuticals, Inc., et al.

Defended six patent infringement actions in the District of New Jersey (Camden) on more than a dozen patents relating to topical pharmaceutical compositions of diclofenac sodium (the active ingredient in Horizon’s Pennsaid® product).

Sanofi-Aventis U.S., LLC, Aventisub LLC, and Genzyme Corp, et al. v. Glenmark Pharmaceuticals, Inc., et al.

Defended patent infringement action in the District of Delaware relating to pharmaceutical compositions of teriflunomide (the active ingredient in Sanofi’s Aubagio® product).

Gilead Sciences, Inc., Hoffmann-La Roche, Inc., Genentech, Inc., et al. v. Lupin Pharmaceuticals, Inc., et al.

Defended patent infringement action in the District of Maryland relating to pharmaceutical compositions of oseltamivir (the active ingredient in Hoffmann-La Roche’s Tamiflu® product).

Acura Pharmaceuticals, Inc. v. Impax Laboratories, Inc.

Defended patent infringement action in the District of Delaware on three patents relating to pharmaceutical compositions of oxycodone (the active ingredient in Acura’s Oxecta® product).

Lupin Atlantis Holdings S.A. v. Ranbaxy Laboratories. Ltd. et al.

Defended patent infringement action in the Southern District of New York relating to pharmaceutical compositions of fenofibrate (the active ingredient in Lupin’s Antara® product).

Shire LLC and Supernus Pharms., Inc. v. Impax Laboratories, Inc., et al.

Defended patent infringement action in the Northern District of California relating to pharmaceutical compositions of guanfacine (the active ingredient in Shire’s Intuniv® product). Obtained summary judgment of non-infringement on one patent and achieved favorable settlement for client.

AstraZeneca Pharmaceuticals LP v. Handa Pharmaceuticals, LLC., et al.

Defended patent infringement action in the District of New Jersey relating to pharmaceutical compositions of quetiapine fumarate (the active ingredient in AstraZeneca’s Seroquel XR® product).

AstraZeneca AB et al. v. Ranbaxy Laboratories. Ltd. et al.

Defended patent infringement action in the District of New Jersey relating to pharmaceutical compositions of esomeprazole magnesium (the active ingredient in AstraZeneca’s Nexium® product).

Cephalon, Inc. v. Ranbaxy Laboratories Ltd., et al.

Defended patent infringement action in the District of New Jersey relating to pharmaceutical compositions of modafinil (the active ingredient in Cephalon’s Provigil® product).

MegaHouse Corp. v. Anjar Co. LLC, Becker Associates, LLC, Jonathan Becker, Patti Becker, et al.

Represent plaintiff asserting claims for trademark and trade dress infringement, false designation of origin, unfair competition, breach of contract, and breach of fiduciary duty in the Central District of California (Los Angeles) regarding the iconic game “Othello®.” Obtained favorable settlement confirming ownership of all disputed Othello® trademarks and all disputed Othello® registrations.

Gravel Farms Racing, LLC and Ken Block v. Mad Media LLC

Represented plaintiff asserting claims for trademark infringement, trademark dilution, false designation of origin, cyber squatting, breach of contract, misappropriation of the right of publicity, and unfair competition in the Central District of California (Los Angeles) relating to the www.gymkhana.com website. Achieved favorable early stage settlement establishing ownership of all disputed trademarks, domain names, and other intellectual property.

Bern Unlimited v. Dye Precision, Inc., et al.

Defended trademark infringement, trademark dilution and unfair competition action in the District of Massachusetts (Boston) in multi-defendant case regarding alleged product configuration trade dress for helmets for use in action sports.

Kythera Biopharmaceuticals, Inc. v. Lithera, Inc.

Defended trademark infringement, unfair competition, and trademark cancellation action in the Central District of California (Los Angeles) between clinical stage pharmaceutical companies.

Koni B.V. v. Tenneco Inc., et al.

Represented plaintiff asserting claims for trade secret misappropriation, breach of contract, fraud, unfair competition, and unjust enrichment in the Northern District of Illinois (Chicago) relating to frequency selective damping technology for automotive shock absorbers.

American Products Co., Inc. v. Law Offices of Geller, Steward & Foley, LLP, et al.

Represented plaintiff asserting claims for unfair business practices and interference with contractual relationships and prospective economic advantage in California Superior Court (Riverside County) relating to a law firm’s improper assertion of California Business and Professions Code Section 17200 claims against distributors of client’s products.

Eric Angelini a/k/a “Trixter” v. Ford Motor Co. and Hoonigan Industries, LLC.

Defended copyright infringement actionin the Central District of California (Los Angeles) relating to alleged background use of street art. Filed motion to dismiss that caused plaintiff to dismiss the litigation.

Rhodes v. Rhodes Music Corp., et al.

Defended trademark infringement, copyright infringement, breach of contract, and misappropriation of rights of publicity action in the Central District of California (Los Angeles) and before the United States Court of Appeals for the Ninth Circuit relating to Rhodes electric pianos. Took over case on appeal after entry of summary judgment against our client. Obtained reversal of summary judgment and, through strategic use of counterclaims in related state court proceedings, achieved favorable settlement that included obtaining ownership of all Rhodes trademarks.

Freeplay Music, LLC v. Makita Corp. and Makita U.S.A., Inc.

Defended copyright infringement action in the Southern District of New York relating to use of background music in internet videos.

Financial Industry Regulatory Authority (FINRA) v. Training Consultants LLC et al.

Defended copyright infringement action in the Central District of California (Santa Ana) relating to secure test questions. Successfully narrowed scope of preliminary injunction sought by plaintiff and achieved favorable settlement for client.

MS Solutions, Inc. v. Retail Solution Providers, LLC, et al.

Represented plaintiff asserting claims for breach of contract in California Superior Court (Riverside County) and before the California Court of Appeal (4th District) relating to copyrighted software. Successfully amended judgment obtained by prior counsel to name additional corporations as judgment debtors.

Martin Goodwin v. Charles Moeller, et al.

Represented plaintiff asserting claims for copyright infringement on appeal before the United States Court of Appeals for the Ninth Circuit. Successfully obtained vacateur of dismissal with prejudice entered by the Central District of California when the client was represented by prior counsel.

Applied Food Sciences v. Monster Beverage Corp.

Defended patent infringement action in the Western District of Texas (Waco) relating to use of compositions containing glucuronolactone. Obtained dismissal with prejudice in light of invalidating prior art.

The Tawnsaura Group v. Anabol Naturals | The Tawnsaura Group v. Swanson Health Products, Inc.

Defended patent infringement action in the Central District of California (Los Angeles) on behalf of two defendants in multi-defendant case brought by a non-practicing entity relating to methods of use of L-citrulline.

Aspen Medical Products, Inc. v. Novitas Medical LLC

Defended design patent infringement and unfair competition action in the Central District of California (Los Angeles) relating to spinal bracing products.

Vitrolife AB v. Life Global LLC et al.

Represented plaintiff asserting claims of patent infringement in the Central District of California (Los Angeles) and the District of Connecticut relating to in vitro fertilization media.

Transonic Systems, Inc. v. Non-Invasive Medical Technologies Corp.

Represented plaintiff asserting claims of patent infringement in the District of Utah (Salt Lake City) and on appeal before United States Court of Appeals for the Federal Circuit regarding technology for measuring shunt blood flow in kidney dialysis patients. Defended against patent infringement counterclaims regarding related technology.

Koni B.V. v. Tenneco Inc., et al.

Dane Technologies, Inc. v. Gatekeeper Systems, Inc.

Defended patent infringement action in the District of Minnesota relating to motorized shopping cart retrievers. Obtained favorable settlement for client. Invalidated asserted patent claims through strategic use of ex parte reexamination proceedings.

Makita Corp. and Makita U.S.A., Inc. v. Kastar (U.S.A.), Inc.

Represented plaintiff asserting claims forpatent infringement and false designation of origin, in the Central District of California (Los Angeles) relating to lithium ion batteries. Obtained consent judgment, damages, and permanent injunction.

P2i, Ltd. v. Europlasma NV

Defended patent infringement action in the Central District of California (Santa Ana) relating to equipment for using pulsed plasma to create oil and water repellant coatings.

Brand Marketing Group, LLC d/b/a Thermablaster v. Continental Appliances, Inc. d/b/a ProCom, et al.

Defended defamation, product disparagement, and interference with contractual relations action in the Western District of Pennsylvania (Pittsburg) after removing lawsuit from the Court of Common Pleas of Allegheny County, Pennsylvania.

Continental Appliances, Inc. v. John Thomas, et al.

Represented plaintiff asserting claims for product disparagement, unfair competition, false advertising, and defamation in the Northern District of California (San Jose) relating to an internet video.

Faro Technologies, Inc. v. Cimcore Corp.. Romer, Inc., Hexagon Metrology N.A., et al.

Defended two cases in the Middle District of Florida (Orlando) relating to coordinate measuring machines. One involving claims of false advertising, product disparagement and unfair competition, and the other involving claims of patent infringement.

Bern Unlimited v. Dye Precision, Inc., et al.

Michael Mapp v. Razor USA, LLC et al.

Defended patent infringement action in the Eastern District of Virginia (Alexandria) relating to skateboard ramps.

Callaway Golf Co. v. Dunlop Slazenger Group Americas, Inc. d/b/a Maxfli

Represented plaintiff asserting claims for patent infringement and false advertising in the District of Delaware relating to golf ball aerodynamics and flight characteristics. Defended against counterclaims for trade secret misappropriation. Jury found in favor of client on false advertising claims and awarded no damages on counterclaim for trade secret misappropriation.

Bridgestone Sports Co., Ltd. v. Callaway Golf Co., et al.

Defended patent infringement action in the Northern District of Georgia (Atlanta) relating to golf ball structure and materials.

Advanced Thermal Sciences Corp. v. Applied Materials, Inc.

Represented BE Aerospace subsidiary regarding inventorship and patent ownership dispute in the Central District of California (Santa Ana) relating to temperature control systems for semiconductor fabrication equipment. After a bench trial, the Court issued a favorable 126-page opinion establishing our client was the sole inventor and owner of its patents, determining the defendant breached the parties’ joint development agreement by filing ten patent applications on our client’s technology, awarding breach of contract damages, and dismissing all counterclaims. The Court also awarded our client sole ownership of various claims in the defendant’s patent applications. Following entry of Judgment, the defendant agreed to pay our client’s attorneys’ fees.

Pilates Technologies LLC v. Guthy-Renker, Corp. et al.

Represented plaintiff asserting claims for correction of inventorship, breach of contract, fraud and unfair competition in the Central District of California (Los Angeles) relating to pilates exercise equipment.

Delphi Connection Systems, LLC v. Charles Hokanson, et al.

Represented defendant/counterclaimant in dispute regarding ownership of patents and technology relating to medical valve assemblies in California Superior Court (Orange County).

Rohr, Inc. d/b/a Goodrich Aerostructures v. Sheets Mfg., Inc.

Represented plaintiff asserting claims for breach of contract in California Superior Court (San Diego County and Ventura County) relating to technology for manufacturing noselip assemblies for aircraft engine nacelles. Achieved comprehensive audit rights as part of favorable settlement for client.

Physicians Healthsource, Inc. v. Masimo Corp., et al.

Defend potential class action for alleged violation of the Telephone Consumer Protection Act in the Central District of California (Santa Ana) relating to facsimiles regarding medical devices. Obtained stay pending FCC elimination of the “solicited fax rule,” successfully opposed class certification, obtained finding that class counsel and class representatives were inadequate to represent the class, obtained Ninth Circuit denial of Rule 23(f) request for interlocutory Rule 23(f) appeal, and obtained partial summary judgment on plaintiffs’ individual claims.

Michael Freeman v. CSK Auto, Inc. | Michael Freeman v. The Pep Boys Manny Moe & Jack of California

Defended two potential class actions for unfair business practices in California Superior Court (Riverside County) relating to automotive accessory lights. Successfully defeated repeated attempts at class certification in both cases and achieved favorable settlements for both clients.

Awards & Honors

Selected for inclusion in the 2017 and 2018 "Southern California Super Lawyers" list by Super Lawyers magazine for his work in intellectual property litigation
Consistently named a “Rising Star” in Intellectual Property Litigation by Super Lawyers magazine (2005 - 2014)

Articles

Ben Katzenellenbogen and Paul Stewart, "What USPTO's Disclosure Duties Notice Says And Doesn't Say," Law360 (September 2022)

Ben Katzenellenbogen and Paul Stewart, "The Federal Circuit in August: Considerations in Assignor Estoppel," Law360 (August 2022)

"How to Pull Off the Great Balancing Act," Law Practice Today Roundtable (June 2016)

"Should Pythagoras Have Been Entitled To A Patent?" Law360 (July 2011)

“Are You Asking Your Outside Counsel The Right Questions?” Association of Corporate Counsel Newsletter (February 2008)

“Top 10 Questions You Should Be Asking Your IP Counsel” Daily Journal IP Supplement

“Ten Important Questions To Ask When Selecting Your Outside Counsel” San Diego Daily Transcript

“Trends in Patent Litigation: The Changing Landscape of Patent Litigation” Orange County Bar Association, Intellectual Property Technology Law Meeting, Costa Mesa, California (March 2007)

“Trends in Patent Litigation” Patent Law Institute 2007: The Impact of Recent Developments on Your Practice, San Francisco, California (January 2007)

Speeches & Seminars

"The Supreme Court Weighs in on the On-Sale Bar and the State of Secret Prior Art," ACI Paragraph IV Disputes Conference, New York, New York (April 2019)

"Paragraph IV Litigation Year in Review: Present Developments and Future Forecast," ACI Paragraph IV Disputes Conference, New York, New York (April 2018)

"Exploring Possible New Grounds Paragraph IV Invalidity Challenges: How 101 Rejections Under Myriad and Findings of 112 Indefiniteness Under Nautilus May Alter Paragraph IV Litigation," ACI Paragraph IV Disputes Conference, New York, NY (April 2015)

“Let the Games Begin: Advanced Strategies for Drafting and Perfecting Pleadings and Effectively Using Dispositive Motions in Paragraph IV Disputes” Panel Moderator with Paul A. Ragusa, Eighth Annual Paragraph IV Disputes Conference, New York, NY (April 2014)

Luncheon Presentation, Seventh Annual Paragraph IV Disputes Conference, New York, NY (May 2013)

“From Cambridge to the Court: Harvard Law Alumni Discuss Their Judicial Careers,” Harvard Law School Association of Orange County, Panel Moderator with Hon. Cormac J. Carney & Hon Darrell S. Mavis (July 2012)