Melvin Garner

Partner & Chair of JApan practice

Melvin Garner’s practice includes all phases of patent, trademark and copyright litigation and procurement involving various technologies.  The technologies include laser applications, video circuits, telecommunications (particularly cellular phones), optics (including lenses for photolithographic equipment), sintered materials, office products, medical devices, and computer hardware and software (including gaming systems).

Mr. Garner also counsels a wide variety of clients.  This often involves providing or supervising the preparation and prosecution of patent applications.  He also frequently provides infringement opinions for potential plaintiffs, non-infringement opinions for potential defendants and validity opinions for both litigants and inventors.

Mel has been lead counsel in over 30 litigations.  These litigations have included patent and trade dress infringement.  He has also handled cases involving copyright in computer databases and user interfaces. He has appeared as an expert witness in trials throughout the country, and has served as a mediator in a patent litigation.

His approach is to find out the business goal of the client and its present position.  Then he seeks to utilize the client’s assets and available prosecution, litigation and negotiation strategies to help the client reach its business goal.

Mel is the author of Chapter 13, “Intellectual Property Protection of E-Commerce” and Chapter 58, “Trade Secret Causes of Action and Defenses, Including Sample Pleadings,” Intellectual Property Counseling and Litigation, Matthew Bender (2010).  In addition, he is a frequent lecturer at AIPLA and PLI events.

Mel is a former member of the Board of Directors of the National Inventors Hall of Fame. He is listed in Euromoney’s Guide to the World’s Leading Patent Law Experts, Who’s Who Legal – Patents, and New York Super Lawyers.

Education

• Brooklyn Law School, J.D., 1973

• New York University, MSEE., 1967

• Drexel University, BSEE, 1964

Representative Matters

KAMDEM-OUAFFO V. PEPSICO INC. ET AL., 14-cv-227 (KMK) (S.D.N.Y.)

KAMDEM-OUAFFO V. PEPSICO INC. ET AL., 2016-1668 (FED. CIR.)

PECORINO ET AL. V. VUTEC CORP. ET AL., 11-CV-6312 (PKC) (E.D.N.Y.)

NORTHSTAR BALLOONS LLC V. AMSCAN,PARTY CITY ET AL., 14-CV-3500 (S.D.N.Y.)

Expert Witness Experience 

Mel Garner was engaged by the Duval law firm as an expert witness.  The Duval firm was general counsel to the plaintiff, Protostorm, which had developed a video game. Duval hired the Antonelli firm to file a Patent Cooperation Treaty (PCT) international patent application for Protostorm on the video game.  In filing the application Antonelli neglected to designate the United States, so no patent protection was sought for the U.S.  Protostorm asserted that the potential claims in the application would have covered popular video games on the market. In the ensuing malpractice litigation, Antonelli cross-claimed against Duval on the basis that it should have discovered Antonelli’s mistake.  By way of an expert report and deposition testimony, Mel opined that the Duval firm, as a general practice firm with no patent expertise, would not have been capable of detecting the Antonelli mistake and that Duval should have undertaken other steps to preserve Protostorm’s patent rights.  Mel was called to testify at a trial of the matter in the U.S. District Court for the Eastern District of New York.  On the morning he was to testify, Antonelli dropped Duval from the case. Ultimately Antonelli was found liable for malpractice and several millions of dollars in damages were awarded to Protostorm.

Protostorm v. Antonelli and Antonelli v. Duval

Mel Garner was hired as an expert witness of Abbott Laboratories in an antitrust case.  The issue was the validity of a patent license.  Mel provided an expert report and gave a deposition to the effect that the license was valid and not an antitrust violation. Prior to trial the U.S. District Court for the District of Delaware granted summary judgment in Abbott’s favor.

Ethypharm v. Abbott

This was a patent infringement suit.  Mel Garner provided an opinion of counsel that the client, Brookwood Companies was not a willful infringer because the patent was invalid and not infringed by the client Brookwood.  Mel was prepared to, but ultimately was not required to testify at trial. However, the client received a favorable verdict.

Nextec Applications v. Brookwood Companies

This was a suit by Jacobs and Sanders for legal fees and a countersuit by the Estate that the fees were too high.  Attorney Jacobs filed for bankruptcy and Mel Garner provided an affidavit on the issue for use by the bankruptcy court.  The matter is ongoing.

Rothschild Estate v. Albert Jacobs and Troutman Sanders