Cozen O’Connor: Pavane, Martin B.

Martin B. Pavane

Vice Chair, Intellectual Property Department
Co-Chair, Hatch-Waxman & Biologics Litigation

New York

(212) 883-4994

(646) 588-1478

Martin B. Pavane is a litigator and registered patent attorney with more than 30 years of experience litigating intellectual property cases. He has been lead trial counsel in many patent, trademark and copyright cases throughout the United States, including many jury trials. At Cozen O’Connor, Martin currently holds the titles of vice chair of the Intellectual Property practice group and vice chair of the ANDA and Biologics practice group, and he is also on the Board of Directors of the firm. He has been named a New York Super Lawyer in intellectual property litigation since the inception of that designation.

During the early part of his career, Martin practiced extensively before the U.S. Patent and Trademark Office, where he prosecuted patent applications and handled appeals before the Board of Patent Appeals and Interferences. From 1981 to 1996, Martin was an associate adjunct professor of law at New York Law School, where he taught both patent and trademark law. He has also lectured at the Generic Pharmaceutical Association's Industry Legal Symposiums, at the Generic Drug Summit and the Patent Protection and Life Cycle Management program, both of which were sponsored by the Institute for International Research, and at Paragraph IV Disputes conferences sponsored by the American Conference Institute. Martin has also authored or co-authored numerous articles in the area of intellectual property law.

Martin's cases have encompassed a wide variety of industries, including electronics, printing, pharmaceuticals, optics, automotive and industrial machinery. Martin has also argued extensively before the federal courts of appeal. His notable reported decisions include:

  • Cumberland Pharmaceuticals Inc. v. Sagent Agila LLC and Sagent Pharmaceuticals, Inc., 2013 U.S. Dist. LEXIS 156834 (D. Del. 2013)
  • King Pharms., Inc. v Eon Labs, Inc., 427 Fed. Appx. 896 (Fed Cir. 2011);
  • King Pharms., Inc. v. Eon Labs., Inc., 616 F.3d 1267 (Fed. Cir. 2010);
  • Pharm. Res., Inc. and Par Pharm., Inc. v. Roxane Labs., Inc., 253 Fed. Appx. 26 (Fed. Cir. 2007);
  • Novartis Pharmaceuticals Corp. v. Eon Labs Manufacturing, Inc., 363 F.3d 1306 (Fed. Cir. 2004);
  • Well-Made Toy Mfg. Corp. v. Goffa International Corp., 354 F.3d 112 (2d Cir. 2003);
  • Nadel v. Isaksson, 321 F.3d 266 (2d Cir. 2003);
  • Elite Licensing, Inc. v. Thomas Plastics, Inc., 250 F.Supp.2d 372 (S.D.N.Y. 2003);
  • Bristol-Myers Squibb Company v. Ben Venue Laboratories, Inc., 246 F.3d 1368 (Fed. Cir. 2001);
  • Nadel v. Play-By-Play Toys & Novelties, Inc., 208 F.3d 368 (2d Cir. 2000);
  • Thermalloy, Inc. v. Aavid Engineering, Inc., 121 F.3d 691 (Fed. Cir. 1997);
  • In Time Prods. v. Toy Biz, 38 F.3d 660 (2d. Cir. 1994); 
  • Wallace International Silversmiths, Inc. v. Godinger Silver Art Co., Inc., 916 F.2d 76 (2d Cir. 1990).

In addition to his litigation practice, Martin counsels clients concerning the protection of their intellectual property rights and the avoidance of third-party rights.

Martin is a member of the American Bar Association, the New York Bar Association, Federal Circuit Bar Association, the New York Intellectual Property Law Association and the Institute for Intellectual Property.

Martin is admitted to the bar of the state of New York, and is admitted to practice before the U.S. Supreme Court; the U.S. Courts of Appeals for the Federal Circuit, Second Circuit, Fourth Circuit and Ninth Circuit; the U.S. Court of Federal Claims; the U.S. District Courts for the Eastern and Southern Districts of New York, the Western District of Wisconsin, the District of Colorado, and the Eastern District of Texas; and the U.S. Patent and Trademark Office.

Martin received a bachelor's degree in electrical engineering from Cooper Union in 1972, where he was on the Dean's List, and a law degree from New York Law School in 1975 where he was on the law review and graduated cum laude.

News

The Startup Drugmaker's Post-Helsinn Survival Guide

January 25, 2019

Martin Pavane discussed with Law360 about filing your patent application as soon as you have something to sell.

18 Cozen O'Connor Attorneys Named New York Metro Super Lawyers and Rising Stars

September 21, 2018

Super Lawyers has named 17 Cozen O'Connor attorneys to its 2018 New York Super Lawyers and Rising Stars list. Twelve were recognized as Super Lawyers and five were named "Rising Stars."

12 Cozen O’Connor Attorneys Named 2017 New York Metro Super Lawyers and Rising Stars

October 19, 2017

Super Lawyers has named 12 attorneys at Cozen O’Connor to its 2017 lists of top practitioners in the New York metro area. Six were recognized as Super Lawyers and six were named “Rising Stars,” a list that recognizes attorneys under the age of 40.

Cozen O'Connor Intellectual Property Attorneys Featured in IP Stars 2017

May 26, 2017

Six Cozen O'Connor Intellectual Property attorneys were featured in IP Stars 2017.

Alanna Miller and Martin Pavane Discuss Supreme Court Case

May 11, 2017

Alanna Miller, Associate in Cozen O'Connor's New York Office, and Martin Pavane, Vice Chair of Cozen O'Connor's Intellectual Property Department, were featured in Recycling Times Magazine.

19 Cozen O'Connor Attorneys Recognized as New York Super Lawyers and Rising Stars

October 05, 2016

The 2016 New York Metro edition of Super Lawyers Magazine, published by Thomson Reuters, has named 21 Cozen O’Connor attorneys to its list of Super Lawyers and Rising Stars.

21 Cozen O'Connor Attorneys Recognized as New York Super Lawyers and Rising Stars

October 05, 2015

The 2015 New York Metro edition of Super Lawyers Magazine, published by Thomson Reuters, has named 21 Cozen O’Connor attorneys to its list of Super Lawyers and Rising Stars.

16 Cozen O’Connor Attorneys Recognized as New York Super Lawyers and Rising Stars

September 23, 2014

The 2014 New York Metro edition of Super Lawyers Magazine, published by Thomson Reuters, has named 16 Cozen O’Connor attorneys to its list of Super Lawyers and Rising Stars.

Publications

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.

Confidential Sales of an Invention Do Not Avoid the “On Sale” Bar Under the America Invents Act [Alert]

January 23, 2019

Martin B. Pavane and Darren S. Mogil discuss the U.S. Supreme Court decision in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.

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.

When A Patent Disclosure Is Not A Disclosure [Law360]

November 14, 2018

Martin Pavane, vice chair, and Darren Mogil, a member of Cozen O'Connor's Intellectual Property department, co-authored an article in Law360 on the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

When is a Disclosure Not a Disclosure? [Alert]

November 01, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's decision in FWP IP APS v. Biogen MA, Inc., an appeal from a Patent Trial and Appeal Board decision in an interference between FWP and Biogen.

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.

The Importance of Properly Maintaining Priority [Intellectual Property Alert]

October 03, 2018

Martin B. Pavane and Darren S. Mogil discuss the Federal Circuit's opinion in Natural Alternatives International, Inc. v. Iancu, concerning priority claims in familial patent applications.

Nobel Biocare Services AG v. Instradent USA, Inc. – When is a Printed Publication Publicly Available? [Intellectual Property Alert]

October 03, 2018

Martin B. Pavane and Darren S. Mogil discuss how this case provides guidance on how a party seeking to use a publication as prior art can establish when that publication became publicly available, which is the paramount requirement for establishing the date on which the printed publication qualifies as prior art.

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.

Attorney-Client Privilege Can Protect Multi-Purpose Corporate Communications [Intellectual Property Alert]

July 05, 2018

Martin B. Pavane and Darren S. Mogil discuss the Court of Appeals for the District of Columbia Circuit's decision in the Court of Appeals for the District of Columbia Circuit, Federal Trade Commission v. Boehringer Ingelheim Pharmaceuticals, Inc.

The Use of IPR Institution Denial Decisions in Litigation [Intellectual Property Alert]

October 24, 2017

Darren Mogil and Marty Pavane discuss the important issue that arises at trial when the PTAB denies institution of an IPR.

Evidence Postdating a Patent’s Priority Date May Be Relevant to Written Description and Enablement [Intellectual Property Alert]

October 19, 2017

Martin Pavane and Darren Mogil discuss the Federal Circuit's decision in Amgen Inc. v. Sanofi.

Petitioner has the Burden of Proving Unpatentability of Amended Patent Claims in IPRs [Intellectual Property Alert]

October 12, 2017

Darren Mogil discuses Aqua Products, Inc. v. Matal and how it will likely lead to an increase the number of proposed claim amendments allowed by the PTAB.

Venue in Patent Infringement Actions: The Federal Circuit’s Raytheon Co. v. Cray, Inc. Decision [Intellectual Property Alert]

September 28, 2017

In the wake of the U.S. Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, district courts have been faced with numerous motions to transfer venue. In response to those motions, district courts have developed varying tests for analyzing whether venue is proper. One such test was crafted by Judge Gilstrap of the Eastern District of Texas in a June 29, 2017, opinion in Raytheon Co. v. Cray, Inc., denying defendant Cray’s motion to transfer venue. Believing that the district court erroneously determined that venue was proper in the Eastern District of Texas, Cray petitioned the Federal Circuit for a writ of mandamus.

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.

Supreme Court: Reverse Payment Settlements Subject to Antitrust Scrutiny [Intellectual Property Alert]

June 25, 2013

On June 17, 2013, the U.S. Supreme Court handed down a decision that addressed a “reverse payment” settlement agreement between a brand-name pharmaceutical company and multiple generic drug companies. The Supreme Court held that a settlement agreement in which a patentee pays an accused infringer not to enter the market – even if the agreement allows market entry before the patent term expires – is not presumptively lawful and is still subject to antitrust scrutiny.

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.

Events & Seminars

Past Events

8th Annual Pharma IPR Conference

March 06, 2019 - Mumbai, Maharashtra

Paragraph IV Disputes

April 23, 2018 - New York, NY

9th Annual Paragraph IV Disputes Conference

April 27, 2015 - New York, NY

RT Imaging Summit

October 15, 2014 - Zhuhai, China

Education

  • New York Law School, J.D., cum laude, 1975
  • Cooper Union, B.S.E.E., 1972
  • New York
  • United States Patent and Trademark Office
  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Second Circuit
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. Court of Federal Claims
  • U.S. District Court -- Eastern District of New York
  • U.S. District Court -- Southern District of New York
  • U.S. District Court -- Western District of Wisconsin
  • U.S. District Court -- Colorado
  • U.S. District Court -- Eastern District of Texas
  • American Intellectual Property Law Association
  • Federal Circuit Bar Association
  • International Intellectual Property Society
  • New York Intellectual Property Law Association
  • New York State Bar Association