Wendy E. Miller

Wendy specializes in intellectual property litigation, counseling, licensing and portfolio development, including:

  • Litigating intellectual property disputes and appeals in the U.S. Courts and the U.S. Patent and Trademark Office, including disputes involving patents, trademarks, copyright, false advertising and unfair competition;
  • Prosecuting ex parte and inter partes trademark matters before the U.S. Patent and Trademark Office, specializing in high-tech trademark matters;
  • Conducting intellectual property analyses and providing opinions on patent validity and infringement, and trademark clearance, validity and infringement
  • Advising and negotiating agreements involving the licensing and transfer of intellectual property rights

EDUCATION

  • J.D., The George Washington University (1989)
  • B.S., in Physics, Pennsylvania State University (1986)

BAR ADMISSION

  • New York State
  • United States Supreme Court
  • United States Courts of Appeal for the First, Third, Ninth and Federal Circuits
  • United States District Courts for the Southern and Eastern Districts of New York and the District of New Jersey
  • United States Patent & Trademark Office, registered patent attorney

REPRESENTATIVE MATTERS AND REPORTED DECISIONS

  • Represented an inventor in an appeal to the Court of Appeals for the Federal Circuit and the U.S. Supreme Court, presenting arguments for modification of the patent law concerning the printed matter doctrine.  In re Roni Gordon, 534 Fed.Appx. 991 (Fed. Cir. 2013), cert. denied, 134 S.Ct. 1346 (2014)
  • On the team representing a major consumer appliance manufacturer as plaintiff in a patent infringement action. Obtained two preliminary injunctions against the defendants, and a $4.5 million jury verdict including a finding of willful infringement. A final Judgment of $4.8 million was affirmed by the Court of Appeals for the Federal Circuit and the U.S. Supreme Court.  The Supreme Court decision represents a modification of the law of inducing patent infringement.  Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. ___, 2011 WL 2119109 (2011); *SEB S.A. v. Montgomery Ward & Co., Inc.; 137 F. Supp.2d 285 (S.D.N.Y. 2001); 77 F. Supp.2d 399 (S.D.N.Y. 1999), aff'd, 243 F.3d 566 (Fed. Cir. 2000)
  • On the team representing a manufacturer of magnetic snap fasteners as a defendant in a patent infringement action. Obtained judgment as a matter of law at the close of the plaintiff's case at trial, resulting in a dismissal of the complaint. Also obtained post-trial sanctions against the plaintiff.  The judgment and sanctions were affirmed by the Court of Appeals for the Federal Circuit.  Advanced Magnetic Closures, Inc. v. *Rome Fastener Corp., 607 F.3d 817 (Fed. Cir. 2010)
  • On the team representing a manufacturer of x-ray mammography products as a defendant in a patent infringement lawsuit. Obtained an order dismissing the complaint on summary judgment.  Sokolov v. *Lorad Corp. and *Hologic, Inc., 476 F. Supp.2d 130 (D. Conn. 2007)
  • On the team representing a manufacturer of magnetic snap fasteners as a plaintiff in a patent infringement action. Obtained a $4.5 million jury verdict including a finding of willful infringement, and an order awarding the plaintiff enhanced damages and attorneys' fees. A final judgment of $7.1 million was affirmed by the Court of Appeals for the Federal Circuit. *Romag Fasteners, Inc. v. Mitzi Int'l Handbag & Accessories, 323 F. Supp.2d 512 (S.D.N.Y. 2004); 2005 WL 78585 (S.D.N.Y. 2005); 2005 WL 351741 (S.D.N.Y. 2005), aff'd, 168 Fed.Appx. 425 (Fed. Cir.), cert. denied, 549 U.S. 822 (2006)
  • On the team representing a major optical disc replicator as a defendant in a copyright infringement lawsuit. Obtained an order awarding the defendant its attorneys' fees following grant of summary judgment against the plaintiff.  Arclightz & Films Pvt. Ltd. v. Video Palace Inc. and *Cinram International Inc. et al., 67 U.S.P.Q.2d 1152 (S.D.N.Y. 2003); Arclightz & Films Pvt. Ltd. v. Video Palace Inc. and *Cinram International Inc. et al., 2003 WL 22434153 (S.D.N.Y. 2003)

SPEAKING ENGAGEMENTS AND HONORS

  • Speaker, National Association of Women Lawyers, General Counsel Institute, 2009, 2014
  • Speaker, New York Intellectual Property Law Association, 2010 Fall CLE Program, November 2010
  • Speaker, International Intellectual Property Society, "Contours of Induced Patent Infringement," February 2012
  • Speaker, 28th Annual Joint Patent Practice Seminar, "Global-Tech v. SEB (Supreme Court May 2011):  What change may be coming for joint infringement?"  April 2012
  • Speaker, Third Annual Supreme Court Review, CUNY School of Law, Hispanic National Bar Association and Puerto Rican Bar Association, September 2012
  • Speaker, Annual Conference on Intellectual Property Law & Policy at Fordham Law School, 2011, 2013-2015, 2017
  • New York Metro Area Super Lawyers, 2010, 2013-2017
  • New York Metro Area Super Lawyers, The Top Women, 2013-2018
  • Leading Trademark Practitioner, Euromoney Expert Guide, 2016