Cozen O’Connor: Neiman, Marilyn

Marilyn Neiman

Member

New York

(212) 883-4985

(646) 588-1476

Recent Publication:

The Tangential Exception to the Presumption of Prosecution History Estoppel [Alert]

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's split decision in Ajinomoto Co., Inc. v. ITC.

Marilyn Neiman is a litigator and registered patent attorney with extensive experience in patent litigation from the inception of a case through trial, settlement or disposition by motion practice.

Marilyn has been counsel in many patent, trademark and copyright cases throughout the United States, as well as commercial cases. A significant portion of her work includes patent litigations under the Hatch-Waxman Act. Marilyn has extensive experience litigating highly specialized Hatch-Waxman statutory patent infringement actions involving pharmaceutical drugs, including acetylcysteine, bosutinib, cinacalcet, fexofenadine, fulvestrant, metaxalone, plerixafor, and zoledronic acid. She also has extensive appellate experience before federal appellate courts.  In addition to her litigation practice, Marilyn counsels clients concerning the protection of their intellectual property rights, including providing patent validity and infringement opinions. She has represented generic pharmaceutical companies, as well as many other companies involved in a wide range of products and services, including construction equipment, internet technology, and robotic surgery. She represents both patentees and accused infringers.

She is a member of the New York County Lawyers' Association and its Federal Courts Committee.

She has a bachelor's degree in biology from Cornell University, attended two years of medical school at the College of Medicine and Dentistry of New Jersey (passing Part I of the National Medical Boards) and has a law degree from Pace University School of Law.

  

Experience

News

Marilyn Neiman Quoted in Intellectual Property Watch Regarding Anti-Patent Troll Law

February 19, 2015

Marilyn Neiman, a member in the firm's Intellectual Property practice group, is quoted in Intellectual Property Watch in an article discussing the Innovation Act, and how this bill aimed at patent trolls would cause many changes to US patent law. Marilyn also discusses the effects this would have on patent litigation.

Cozen O’Connor Elects 20 Associates to Membership

March 27, 2013

Ian Blum, Alphonso Collins, Kathryn Crary, Lynnette Espy-Williams, Elizabeth Featherman, Matthew Glazer, Nelsy Gomez, Andrea Hammel, Keenya Harrold, Charles Jesuit, Jr., Lezlie Madden, Marilyn Neiman, Tracey Nguyen, Cartherine Rosato Reilly, Megan Scheib, Daniel Schuch, John Schwartz, Shari Shapiro, Marko Stamenkovic, and Norasha Williams have been elected to membership in the firm.

Publications

The Tangential Exception to the Presumption of Prosecution History Estoppel [Alert]

August 19, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's split decision in Ajinomoto Co., Inc. v. ITC.

Medical Diagnostic Patent Ineligible Under Section 101 [Alert]

April 09, 2019

Marilyn Neiman and Martin B. Pavane discuss problems with Section 101 and a possible legislative solution expected by early summer.

Experimental-Use Exception [Alert]

April 02, 2019

Marilyn Neiman and Martin B. Pavane discuss the decision in Barry v. Medtronic, Inc.

Inconsistency Between the Patent Term Adjustment Statute and Its Regulations [Alert]

January 30, 2019

Marilyn Neiman and Martin B. Pavane discuss the Federal Circuit's decision in Supernus Pharmaceuticals, Inc. v. Iancu.

PTAB Not Bound by Federal Circuit’s Findings on Appeal From Preliminary Injunction [Alert]

January 10, 2019

Marilyn Neiman and Martin B. Pavane discuss PTAB's denial of Aurobindo’s challenge of the validity U.S. Patent No. 6,866,866. Over six years ago, the Federal Circuit found that a substantial question of invalidity had been raised.

Recovery of Damages on a Bond in Connection with a TRO Barring a Pharmaceutical Product Launch [Alert]

December 18, 2018

Marilyn Neiman and Martin B. Pavane discuss the District of Delaware's granting defendants $31,871,027, plus prejudgment interest of $463,272.09, on a bond issued in connection with a temporary restraining order.

Deterring Gaming of the Generic Drug Approval Process by the Use of Citizen Petitions [Intellectual Property Alert]

October 15, 2018

Marilyn Neiman, David Reichenberg, and Martin B. Pavane discuss the FDA's updated guidance on citizen petitions that now includes factors that the FDA will consider in determining whether a citizen petition is submitted for the primary purpose of delaying approval of a generic drug.

FDA’S Clarification of 180-Day Exclusivity Rules [Intellectual Property Alert]

August 23, 2018

Marilyn Neiman and Martin B. Pavane discuss a July 13, 2018, letter issued by the FDA to ANDA applicants that clarifies who qualifies as a First Applicant and when the failure to market forfeiture is triggered.

Sham Litigation in a Hatch-Waxman Action [Intellectual Property Alert]

July 09, 2018

Marilyn Neiman and Martin B. Pavane discuss the largest award in a litigated FTC antitrust case and what it means for brand pharma and their Hatch-Waxman case filings.

Issues High Court Will Address in Patent Laches Case [Law 360]

May 23, 2016

Marilyn Neiman discusses a recent U.S. Supreme Court decision in her Law 360 article,

BPCIA Litigation [InsideCounsel]

December 07, 2015

Marilyn Neiman, a member of Cozen O’Connor’s Intellectual Property department, discusses the Biologics Price Competition and Innovation Act of 2009 (BPCIA).

Dow and Teva: Indefiniteness Defense Can Be Powerful Weapon [Law360]

October 28, 2015

Marilyn Neiman discusses The Federal Circuit’s recent decisions in The Dow Chemical Company v. Nova Chemicals Corporation (Canada) (Fed. Cir. Aug. 28, 2015)[2] and Teva Pharms. USA Inc. v. Sandoz Inc., (Fed. Cir. June 18, 2015)[3].

Pre-Emption of State-Law Design-Defect Claim Against Generic Drug Company [Intellectual Property Alert]

July 03, 2013

On June 24, 2013, in a 5-4 decision, the U.S. Supreme Court in Mutual Pharmaceutical Co., Inc. v. Bartlett held that state-law design-defect claims based on the inadequacy of a generic drug’s labeled warnings are pre-empted by federal law. This decision reversed the 1st Circuit’s affirmance of a jury verdict awarding Bartlett more than $21 million on her design-defect claim against Mutual Pharmaceutical under New Hampshire law.

IP: Supreme Court Holds That the “First Sale” Doctrine Applies to Copies of a Copyrighted Work Lawfully Made Abroad [InsideCounsel]

April 16, 2013

On March 19, in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court, reversing the 2nd Circuit, resolving conflicting decisions from the federal appellate courts, and rejecting the solicitor general’s arguments, held that the “first sale” doctrine applies to lawful copies of a copyrighted work first sold abroad.

Supreme Court Prometheus Decision On Patent-Eligible Subject Matter [Intellectual Property Group Alert!]

March 21, 2012

Supreme Court Prometheus Decision On Patent-Eligible Subject Matter - Intellectual Property Group Alert! - On March 20, 2012, the Supreme Court of the United States in Mayo Collaborative Services v. Prometheus Laboratories, Inc. held Prometheus' patent claims covering processes that help doctors determine whether a given dosage level of thiopurine drugs is too low or too high are not patentable and are invalid under 35 U.S.C. § 101, for “effectively
claim[ing] the underlying laws of nature themselves.”

Events & Seminars

Past Events

Supreme Court IP Cases – October Term 2018

March 14, 2019 - New York, NY

Law360 Tweet Chat on the Innovation Act

February 11, 2015 - Tweet Chat

Education

  • Pace University School of Law, J.D., 1979
  • Cornell University, B.S., 1974
  • New Jersey
  • New York
  • United States Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court -- Eastern District of New York
  • U.S. District Court -- Southern District of New York
  • U.S. Supreme Court