Garner K. Weng
Garner’s practice focuses on intellectual property and technology, and he is the Co-Chair of our Intellectual Property Practice. His undergraduate work in computer science adds value to a range of counseling, transactions, and disputes. Garner's experience includes handling intellectual-property and technology legal matters for: a leading multibillion-dollar computer-peripherals and consumer electronics company; a NYSE-listed reprographics company that is the largest in the U.S.; a Fortune 500 and Nasdaq 100 retailer that is the second-largest company in its industry sector; a Fortune 500 and NYSE-listed energy company; two transportation planning and coordination agencies; several public transit agencies; the world's largest nut processing and marketing company; the producer of the longest-running hit musical revue in theater history; and a number of other businesses, emerging companies, associations, and individuals. Garner also has extensive experience in niche areas such as serving as outside general counsel to industry trade associations and standards organizations and in representing and working with governmental entities on intellectual-property and technology issues. Overall, his approach emphasizes responsiveness and working toward solutions tailored to a client's specific goals.
While Garner has significant experience with large-scale litigation, one of his value propositions is the client orientation and efficiency he brings to defending cases that dictate balancing a vigorous defense with the amount of exposure. Many law firms concentrate on "bet the company" intellectual-property cases where cost is no object—and are less experienced with or less interested in other cases—for example, where there are "only" seven or eight digits of claimed damages. Garner, on the other hand, thrives in partnering with his clients to manage cases in line with the business directives. As one example, in leading the defense of a particular patent-infringement lawsuit seeking several millions of dollars in damages, Garner was able to keep the total legal fees and costs for approximately 15 months of work to under $200,000—after which the case was successfully settled. In several situations, clients have moved cases from other law firms to Garner because of his ability to manage fees in relation to the client's assessed value of the case.
Within the firm, Garner has been instrumental in helping the firm pursue its diversity goals. He was a long-standing member of the Management Committee; the Chair of the firm’s Emerging Companies Group, which focuses on early-stage and middle-stage companies and on technology matters; on the firm's Recruiting Committee; and on the firm’s Strategic Planning Committee, through which he was a contributing author to the firm’s strategic plan.
Garner has written and spoken extensively on intellectual property law, technology issues in law, and diversity in the legal profession. He is active in the community and has served in leadership positions for intellectual property professional associations and for minority bar associations and other diversity-focused organizations. Among other things, he has served as President of the Asian American Bar Association of the Greater Bay Area and Co-Chair of the Board of Directors of the California Minority Counsel Program. Garner has also led workshops for law students of traditionally underrepresented backgrounds to teach study skills, exam writing, and job interviewing and worked on a number of pro bono legal matters.
Areas of Focus
Admissions and Courts
Garner served as the lead (and sole) attorney in arguing and defending a TRO hearing regarding a software dispute, in which a much larger company sought a mandatory injunction to force his client to turn over software that it claimed to own—with the successful result of the judge declining to issue the TRO.
Garner first-chaired an arbitration hearing in which his client was accused of stealing trade secrets and had brought a cross-complaint—with the successful result of the arbitrator awarding damages only to his client.
Garner defended his client in a multi-district patent-litigation suit regarding technology allegedly used in certain computer, computer peripheral, and consumer-electronics products—and successfully negotiated a settlement.
Garner helped his client resolve a multilayer patent dispute involving technology used in certain computer peripherals, including defending a patent lawsuit brought by the other party, bringing a patent lawsuit on behalf of his client, and preparing and advising his client on bringing a complaint before the International Trade Commission—with this multifaceted strategy successfully helping lead to a settlement.
Garner second-chaired a trial in which his client brought trade-secrets and related breach-of-contract claims. In a several-day "mini trial" on a hotly disputed evidentiary issue in which the other side sought to exclude the very contract on which his client was suing, Garner cross-examined the defendant's CEO and was the lead attorney on the legal briefing. His client prevailed on the evidentiary issue—with this successful result helping lead to a settlement.
Garner negotiated a complex deal in which a multibillion dollar company would outsource its entire information-technology function, with the deal value in the tens of millions of dollars.
Garner counseled an organization on its procurement of and licensing of intellectual property rights to software to be used in a card device, with the deal value in the tens of millions of dollars.
Garner advised an organization on the technology aspects of its procurement process and Request for Proposal for the development of an expansive multi-location custom software solution, with the contract value just for the first phase in the tens of millions of dollars.
Garner drafted a multi-party and multi-country patent-licensing and product-distribution contract regarding wireless communication equipment in which his client had to manage the delicate relations between the other parties and overseeing manufacturing in Asia.
Garner has managed hundreds upon hundreds of trademark files, in the U.S. and internationally, including performing clearance searches, new filings, prosecution, and renewal and maintenance filings. This has included work on behalf of several world-famous brands for goods and services such as food products, retail services, energy products, hospitality services, financial services, and transit services, among others.
Garner has managed and worked on the brand enforcement and policing programs of several large companies, including cease-and-desist letters, escalation including Uniform Dispute Resolution Policy complaints and federal-court lawsuits, opposition and cancellation proceedings before the Trademark Trial and Appeal Board, and similar work through the management of local counsel in non-U.S. jurisdictions.
Bar Association of San Francisco (member, 2005 Diversity Taskforce)
San Francisco Intellectual Property Law Association
American Bar Association (Section on Intellectual Property Law; Co-Chair, 2006 Summer Meeting Committee; Co-Chair, 2005 Summer Meeting Committee; former member, Section on Litigation; former member, Committee on Intellectual Property Litigation)
International Trademark Association (former member, Committee on Membership and Subcommittee on Corporate Recruiting Strategy)
Law School Admission Project: Looking Beyond the LSAT (member, National Advisory Board)
California Minority Counsel Program (former Co-Chair of the Board of Directors; former Treasurer and Chair of Budget and Finance Committee; former member, Executive Committee; former Chair, Subcommittee on Recruitment and Retention; former Chair, 2004 Annual Conference Subcommittee)
Asian American Bar Association of the Greater Bay Area (former President; former Vice President; former Treasurer; former Secretary; former Director; former Co-Chair, Committee on Community Services; former member, Committee on Civil Rights)
National Asian Pacific American Bar Association (Conference Committee, 2004 Northern California Regional Conference)
"Attorneys Working Toward The Tipping Point For Diversity," San Francisco Attorney (Winter 2007)
"All-Star Career Transcends Billables," San Francisco Daily Journal (December 2006)
World Trademark Review, Bronze Category - "Individuals: Prosecution and Strategy" (2022)
California Minority Counsel Program Diversity Leader Hall of Fame (2016)
Northern California Super Lawyers, Intellectual Property Litigation (2011-2017)
Northern California Rising Stars (2009-2010)
"Best Lawyers Under 40," National Asian Pacific American Bar Association (2007)