Amol Parikh
Subscribe to Amol Parikh's PostsAmol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Most recently, Amol was recognized in February 2019 with the International Law Office’s “2019 Client Choice Award” for Intellectual Property in Illinois. The award recognizes “excellent client care” and the “ability to add real value to clients’ business above and beyond the other players in the market,” and winners may only be nominated by corporate counsel. Read Amol Parikh's full bio.
2020 IP Law Year in Review: Patents
By Amol Parikh and Cecilia Choy, Ph.D. on Jan 28, 2021
Posted In Patents
Executive Summary In 2020, the US Supreme Court and Court of Appeals for the Federal Circuit continued to refine key aspects of intellectual property law on issues that will have an impact on litigation, patent prosecution and business strategy. This Special Report discusses some of the most important decisions. The Federal Circuit issued several panel...
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Supreme Court to Consider Doctrine of Assignor Estoppel in Patent Cases
By Amol Parikh on Jan 14, 2021
Posted In Cert Alert, Patents
The Supreme Court of the United States agreed to review assignor estoppel in patent cases. Minerva Surgical, Inc. v. Hologic, Inc., et al., Case No. 20-440 (Supr. Ct. Jan. 8, 2021) (certiorari granted). The question presented is: Whether a defendant in a patent infringement action who assigned the patent, or is in privity with an...
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Transfer Motions Must Take Top Priority
By Amol Parikh on Nov 19, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit granted an accused infringer’s mandamus petition to transfer a case from the Western District of Texas to the Northern District of California, concluding that the district court “barreled ahead” on the merits before addressing the transfer motion and clearly abused its discretion in denying transfer. In...
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Venue in Hatch-Waxman Cases Limited to District Where ANDA Is Submitted
By Amol Parikh on Nov 11, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit found that in cases brought under the Hatch-Waxman Act, for purposes of determining venue, infringement occurs only in districts where actions related to the submission of an abbreviated new drug application (ANDA) occur, and not in all locations where future distribution of the generic products specified...
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First-to-File Rule Must Be Followed Unless Compelling Circumstances Justify Exception
By Amol Parikh on Nov 4, 2020
Posted In Patents
Vacating and remanding a district court’s decision not to transfer a case, the US Court of Appeals for the Federal Circuit granted a petition for a writ of mandamus because the district court did not consider whether the first-to-file rule favored keeping the case in the second-filed court. In re: Nitro, Case No. 20-142 (Fed....
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Supreme Court to Consider Whether PTAB Judges Are Unconstitutionally Appointed
By Amol Parikh on Oct 22, 2020
Posted In Cert Alert
The Supreme Court of the United States agreed to consider whether Patent Trial and Appeal Board (PTAB) judges are unconstitutionally appointed. The United States of America v. Arthrex, Inc., Case Nos. 19-1452, -1458, -1459 (Supr. Ct. October 13, 2020) (certiorari granted). In what quickly turned into a controversial decision, the US Court of Appeals for the...
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Overcoming Heavy Burden Required to Succeed on Venue-Related Writ of Mandamus
By Amol Parikh on Sep 29, 2020
Posted In Patents, Technology
Addressing a venue challenge, the US Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus because the challenger did not demonstrate it had no adequate alternative means to obtain desired relief since meaningful review could occur after final judgment was entered. In re. Google, Case No. 20-144 (Fed. Cir....
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Structural Limitations Are Not Met by Imaginary Demarcation Lines
By Amol Parikh on Sep 9, 2020
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court’s claim construction of the term “end plate” that required a flat external surface, and its construction of the term “protrusion extending outwardly from the end plate” that required a demarcation between the protrusion and end plate. The Federal Circuit therefore prohibited an...
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Standard Essentiality Is a Question for the Fact Finder
By Amol Parikh on Aug 20, 2020
Posted In Patents
Affirming a jury verdict of infringement, the US Court of Appeals for the Federal Circuit concluded that the question of whether patent claims are essential to all implementations of an industry standard should be resolved by the trier of fact. Godo Kaisha IP Bridge 1 v. TCL Comm. Tech. Holdings Ltd., Case No. 19-2215 (Fed....
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Senator Tillis Urges USPTO to Adopt Patent Reform Proposals
By Amol Parikh on Aug 18, 2020
Posted In Patents
On August 10, 2020, Senator Thom Tillis of North Carolina urged the Director of the United States Patent and Trademark Office (USPTO), Andrei Iancu, to adopt two patent reform proposals suggested by Lisa Larrimore Ouellete and Heidi Williams. Senator Tillis is the Chairman of the Senate Judiciary Committee’s Subcommittee on Intellectual Property. Stanford University professors...
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