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Experienced Intellectual Property Attorney, Wendy K. Akbar

Patent, Trademark, Trade Secret, Copyright and Other Intellectual Property Law and Litigation.

Location: 1938 East Osborn Road
Phoenix, Arizona 85016
Phone:
Fax: 602-631-4529
E-mail: E-mail Me
vCard: Wendy K. Akbar vCard

Wendy K. Akbar represents clients in all aspects of intellectual property, particularly patent infringement and invalidity litigation, trademark, trade dress and copyright litigation, and Lanham Act, unfair competition, trade secret, false advertising and licensing disputes. She also advises and assists clients in intellectual property transactions such as licenses and other agreements, and helps companies to identify, protect, license and audit their intellectual property assets. Ms. Akbar’s clients include companies of all sizes as well as individuals. She has represented major semiconductor technology companies, medical device and pharmaceutical drug manufacturers, retail website entrepreneurs, and companies in industries including aviation, sports, confectionary, food and beverage, beauty/cosmetic, gambling and gaming, software, hydroponics, multimedia, automobile, outdoor outfitting, artificial intelligence, and a variety of healthcare areas. She has appeared in courts throughout the country — including in Arizona, New York, California, Wisconsin, New Jersey, Texas, Nevada , Illinois and Delaware – in intellectual property and other disputes, including in bench trials, jury trials and arbitrations.

Ms. Akbar obtained her Juris Doctorate degree from the University of Pennsylvania Law School and her undergraduate degree from Swarthmore College with High Honors. Prior to moving to Arizona, Ms. Akbar worked for close to five years as an associate at Patterson Belknap Webb & Tyler LLP in New York City, where among other things she assisted national and international pharmaceutical and medical devices companies in enforcing and defending their intellectual property. She then practiced in the Phoenix office of national law firm of Quarles & Brady LLP prior to joining Venjuris.

Ms. Akbar is AV Preeminent® rated by Martindale-Hubbell®, representing the highest rating in legal ability and ethical standards. She has been recognized as a “Southwest Super Lawyer Rising Star” each year since 2012, an honor given to only 2.5% of eligible Arizona attorneys, and has been named one of Arizona’s Top Rated Attorneys.

Representative Cases

Patent Litigation

  • Represented client in automobile industry against patents concerning diesel engine oil cooling systems and methods.
  • Represented inventor of lip plumping and exercising tool, in patent infringement action.
  • Represented client in complex litigation concerning online video game “botting” software and popular massive multiplayer online role-playing (MMORPG) game.
  • Defended semiconductor research and development company in patent infringement and invalidity litigation concerning semiconductor manufacturing processes involving probe cards and probe card analyzers.
  • Represented international semiconductor research and manufacturing company in arbitration of patent infringement and invalidity issues arising out of a license agreement concerning field-effect transistors such as trench MOSFETs, culminating in a finding of non-infringement by the company.
  • Represented Fortune 50 company in asserting and protecting its groundbreaking patents on coronary stents (listed in IP Worldwide, “Top 10 Patents that Changed the World” (2002)) in patent infringement and invalidity trials and arbitrations.
  • Represented multimedia companies in patent infringement and validity litigation involving websites, computer hardware and software in relation to online golf course reservation systems, gambling casinos, and other retail websites, and represented retailers in the healthcare, food and beverage, outdoor sporting and multiple other industries.
  • Represented companies in numerous industries threatened with patent infringement by and/or sued by non-practicing entities (“patent trolls”). Worked with coalition of real estate organizations and related entities to develop collaborative procedure for responding to patent troll threats and litigation.
  • Represented branded drug manufacturer in an ANDA infringement litigation involving a top antipsychotic drug, the patent for which was found valid and infringed, and an injunction granted to prevent generic incursion before the patent expired.

Trademark, Trade Secret, Copyright and Other Intellectual Property

  • Represented software developer of natural language processing tools, in multiple intellectual property and related actions to protect and defend intellectual property.
  • Represented web hosting companies in international arbitration proceedings concerning trade secret misappropriation, breach of contract, and related allegations.
  • Represented various healthcare, confectionery, food and beverage, sporting goods, franchisors and other industry clients in registering, enforcing and protecting their trademarks, trade dress, copyrights, trade secrets and domain names in federal court, state court, the United States Patent and Trademark Office and the Trademark Trial & Appeal Board.
  • Represented diagnostic sleep disorder testing centers in trademark infringement action in federal court,
  • Represented inventor of weight loss management program, in a trade secret misappropriation and trademark infringement action against a former client.
  • Represented major pizza company and artificial sugar manufacturer in false advertising and comparative advertising disputes in federal court.
  • Worked with major maintenance, repair and overhaul company for commercial, military and business aviation, to identify their trade secrets and other intellectual property, and to determine strategies to protect and enhance its value.
  • Represented manufacturer of leading prescription anti-epilepsy and antipsychotic drugs in connection with investigations by the United States Department of Justice, of off-label promotion and anti-kickback issues.
  • Represented pharmaceutical company in antitrust litigation under the Sherman Act, against a competitor accused of illegal and coercive contract bundling.

Electronic Discovery

  • Significant experience in all aspects of electronic discovery, including complex data preservation issues, managing high-volume electronically-stored information (ESI) productions, and e-discovery motion practice.
  • Assist clients in creation, auditing and modification of record retention policies, including working with international, privately owned packaged food company to create and enforce record retention policy.
  • Ms. Akbar is an ACEDS certified electronic discovery specialist, and has been invited to speak and author on issues related to electronic discovery and record retention.

Professional Recognition

  • Recognized as AV Preeminent® Rated attorney by Martindale-Hubbell®
  • Named one of Arizona’s Top Rated Lawyers by ALM and Martindale-Hubbell®
  • Selected for inclusion in the 2012, 2013 and 2014 Southwest Super Lawyers® Rising Stars list (Intellectual Property Litigation).
  • Selected as a “Forty Under 40” honoree by the Phoenix Business Journal (2011).
  • Recognized as Certified E-Discovery Specialist (CEDS) (2011).
  • Greater Phoenix Chamber of Commerce ATHENA Young Professional Award Recipient (2009).
  • Arizona State Bar Leadership Institute (Member, 2008-2009).

Representative Seminars and Publications

  • Co-presenter (pending), “On Your Mark, Get Set . . . Register!:  The Anatomy of a Trademark, the Nuts and Bolts of the U.S. Trademark Application Process, and a Primer on International Registration,” Association of Corporate Counsel (March 2017).
  • Co-presenter, “The Base of, and Treble With, Music Law:  Music Law, from Overture to Fade-Out,” National Business Institute (May 2015).
  • Winner, Annual Creative Arts Competition for Arizona Attorney Magazine of the State Bar of Arizona, Fiction Category, “The Thirteenth Story” (April 2015).
  • Co-author and presenter, “Patenting Change:  Prosecution and Litigation After the 2013 AIA and 2014 Supreme Court Term.”, Association of Corporate Counsel (March 2015).
  • Co-author, Textbook: “Entertainment Law: Music” (2014).
  • Co-author and presenter, “Attacking Patent Trolls with Sword and Shield: Effective Offensive and Defensive Strategies for Dealing with Troll Threats and Litigation,” Association of Corporate Counsel (March 2014).
  • Author, “One Ring to Rule Them All?” E-Discovery Search Methodology in Patent Litigation in Light of Recent Model Orders and Case Law, Quarles & Brady LLP E-Discovery Bytes Blog, July 2012.
  • Co-presenter, “Ethical Considerations of Social Media for in-House Counsel and their Companies,” Specialized CLE for In-House Counsel, June 2012.
  • Co-author , Article and Presentation, “Ethics Surrounding the Use of Social Media in Litigation and Daily Practice,” DRI Business Litigation and Intellectual Property Seminar, New York City, May 2012.
  • Quoted, “For the Records: Technology Advances e-Discovery and Information Management,” In Business Magazine, October 2011.
  • Author, “Evidence that Bytes: E-Discovery in the Age of Hidden Data, Clouds, Facebook, Twitter and the Digital Family,” Journal of Internet Law, vol. 13(1), July 2011.
  • Author, “Dr. Seuss, Cheese and Social Media, Parts I and II: Ethical Pitfalls Impacting Attorneys and their Clients,” Quarles & Brady LLP E-Discovery Bytes Blog, June and July 2011.
  • Featured, “Lawyer Spotlight,” American Bar Association, May 2011.
  • Chapter author, “Lawyers, Lead On: Lawyers with Disabilities Share Their Insights,” C. Basas et al., eds., American Bar Association, March 2011.
  • Co-author, “E-Discovery in the Age of Facebook, Twitter & the Digital Family,” Family Advocate, Fall 2010.
  • Co-author, “‘Because Something Must be Done’: When Companies Go Overboard Trying to Save on E-Discovery Costs,” Quarles & Brady LLP E-Discovery Bytes Blog, August 2010.
  • Featured, “Taking risks pay off for female leaders,” The Arizona Republic, June 11, 2010.
  • Featured, “Three Honored as 2009 ATHENAs,” Impact, November 2009.
  • Author, “Digital Voicemail in E-Discovery — or Dealing with Cerberus, the Three-Headed Dog From Hell,” Quarles & Brady LLP E-Discovery Bytes Blog, November 2009.
  • Quoted, “Protect Your Ideas,” Impact, November 2009.
  • Quoted, “European Privacy Laws an E-Discovery Stumbling Block,” Law360, July 2009.
  • Author, “The Ringmaster or the Clown? Dealing with the E-Discovery Elephant in the Room,” Quarles & Brady LLP E-Discovery Bytes Blog, July 2009.
  • Author, “Getting TIFFed Off: The Dangers of Not Going Native with ESI … Or, the Perils of Killing the Bunny,” Quarles & Brady LLP E-Discovery Bytes Blog, March 2009.
  • Co-author, “Presentation: Managing Intellectual Property Rights and Patent Infringement Risks in Clinical Trials;” Sixth National Conference On Managing Legal Risks In Structuring And
  • Conducting Clinical Trials; Feb. 27-28, 2007.

Professional and Civic Associations

  • Arizona Center for Disability Law (Board of Directors, 2010-present; Chair of Legal Committee, Board of Directors, 2011-2016).
  • Arizona Science and Engineering Fair (Advisory Board, 2008-present).
  • Arizona State Bar Committee on Persons with Disabilities in the Legal Profession (Chair, 2009-2011; Member, 2008-2015).
  • Maricopa County Bar Association (Member, Intellectual Property and Litigation & Technology Law sections)
  • New York State Bar Association (Member).
  • Scottsdale Bar Association (Member).
  • State Bar of Arizona (Member, Intellectual Property Section).

Volunteer Experience

  • Judge Pro Tempore, Superior Court of the State of Arizona, Maricopa County (2013-present).
  • Court-Appointed Advisor (Family Court) (2011-present).

Certified Legal Specialties

  • Association of Certified E-Discovery Specialists (ACEDS) Certified Electronic Discovery Specialist

Bar Admission

  • New York, 2003
  • Arizona, 2008
  • U.S. District Court, Southern District of New York, 2003
  • U.S. District Court, Eastern District of New York, 2003
  • U.S. Court of Appeals for the Federal Circuit, 2006
  • U.S. District Court, District of Arizona, 2008
  • U.S. District Court, Western District of Wisconsin, 2011
  • U.S. District Court, Northern District of Illinois, 2012
  • U.S. Court of Appeals for the Ninth Circuit, 2014

Education

  • University of Pennsylvania Law School, Philadelphia, PA
    • J.D — 2002
    • Journal of Constitutional Law, Senior Editor
    • Law Clerk for U.S. District Court Judge Victor Marrero, S.D.N.Y., Summer 2000.
  • Swarthmore College
    • B.A. — 1999
    • Major: Cognitive Psychology

Past Employment Positions

  • Quarles & Brady LLP, Phoenix, AZ (2007-2012).
  • Patterson Belknap Webb & Tyler LLP, New York, NY (2002-2007).

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