Melvin C. Garner


Melvin Garner is a partner in the Patent Practice and Litigation Practice Groups at Leason Ellis, where he heads the firm’s Japan Practice Group.  Mel works with individuals and companies in the US to obtain patents and to manage their patent portfolios. He provides opinions on patentability and patent infringement. Further, Mel represents clients in patent and trade secret litigations. Mel also helps Japanese and Chinese companies obtain patents in the US and defends them in US patent litigation. Mel’s domestic and foreign clients operate in a wide range of industries including ultrasonic testing, lighting, medical devices, automotive, machine tool, chemical, and university research. Mel enjoys learning about client’s problems and fashioning efficient solutions to those problems.

Mel has been an expert witness in over 20 cases.  He is the author of numerous articles and is a frequent lecturer at the Practicing Law Institute. Mel is a Past President of both the New York Intellectual Property Law Association and the American Intellectual Property Law Association. He is currently a member of the Executive Committee of the Hon. William C. Conner Inn of Court. He also serves on the Magistrate Judge Merit Selection Panel for the Southern District of New York. 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.  Mel has a JD from Brooklyn Law School, where he was an editor of the Law Review. He received a BSEE from Drexel University and an MSEE from New York University.

  • Brooklyn Law School, J.D., 1973
  • New York University, M.S.E.E., Electrical Engineering, 1967
  • Drexel University, B.S.E.E., Electrical Engineering, 1964
  • New York
  • Registered Patent Attorney: U.S. Patent and Trademark Office
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. Second Circuit Court of Appeals
  • U.S. Federal Circuit Court of Appeals
  • U.S. Supreme Court
  • Darby & Darby PC, Partner, 1982-2010
  • Brumbaugh, Graves, Donohue & Raymond, Associate, 1973-1981
  • Bell Telephone Laboratories, Patent Agent, 1971-1973
  • William C. Conner Inn of Court, Executive Committee, Member
  • American Intellectual Property Law Association, President, 2005-2006
  • New York Intellectual Property Law Association, President, 2003-2004
  • “Checklist of Trade Secret Causes of Action and Defenses, Including Sample Pleading,” Intellectual Property Counseling and Litigation, Ch. 58, 2009
  • “Intellectual Property Protection of E-Commerce,” Intellectual Property Counseling and Litigation, Ch. 13, 2009
  • “Advanced Claim Drafting and Amendment Writing Workshop for Electronics and Computer-Related Subject Matter,” 11th Annual Patent Prosecution Workshop, Practising Law Institute, 2004
  • “Inevitable Disclosure of Trade Secrets by the Departing Employee,” Selected Legal Papers, American Intellectual Property Law Association, 1995
  • “Discovery and Related Motion Practice,” Anatomy of Patent Litigation, Practising Law Institute,1994
  • Practising Law Institute, “Advanced Licensing Agreements,” 2007-present
  • Practising Law Institute, “Handling Intellectual Property Issues in Business Transactions,” 2007-present
  • Practising Law Institute, “Patent Prosecution Basics Course,” 1992-2004
  • Practising Law Institute, “Advanced Patent Prosecution Workshop,” 1992-2004
  • AIPLA, “Advanced Patent Litigation Seminar,” 2001
  • Lazare Kaplan v. GIA & Photoscribe, Civ. Action 06-CV-4005
    (S.D.N.Y. 2008)
  • Patent Infringement Jury Trial
  • Concept Innovation v. CFM Corp., Civ. Action No. 04C 3345
    (N. D. Ill 2004)
  • Patent infringement case settled with a recovery by client
  • P. Intellectual Properties LLC v. Nobel Biocare et al., Civil Action No. 99-3136 (D.N.J. 2004)
  • Patent infringement settled with multi-million dollar recovery by client
  • OP Solutions, Inc. v. Intellectual Property Network, Ltd., 52 U.S.P.Q.2d 1818 (S.D.N.Y. 1999)
  • Judgment for client in computer software copyright case
  • Pitney Bowes, Inc. v. Bell & Howell Mail Processing Systems, Civ. Action No. 99 263 GMS (D. Del. 1999)
  • Patent Infringement settled with client receiving millions of dollars
  • Universal Gym Equip., Inc. v. ERWA Exercise Equip. Ltd., 229 U.S.P.Q. 335 (D Md. 1985), 827 F.2d 1542 (Fed. Cir. 1987)
  • Judgment for client in trade secret case