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.
USPTO Conducting Patent Eligibility Jurisprudence Study
By Amol Parikh on Jul 15, 2021
Posted In Patents
At the request of Senators Thom Tillis (R-NC), Marie Hirono (D-HI), Tom Cotton (R-AR) and Chris Coons (D-DE), the US Patent & Trademark Office (USPTO) is undertaking a study on the current state of patent eligibility jurisprudence in the United States and how the current jurisprudence has impacted investment and innovation, particularly in critical technologies...
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Unsigned, Sealed, Delivered: PTO Eliminates Handwritten Signatures for Certain OED Correspondence and Credit Card Payments
By Amol Parikh on Jul 8, 2021
Posted In Patents
The US Patent & Trademark Office (PTO) eliminated the requirement for original handwritten signatures on certain correspondence with the Office of Enrollment and Discipline (OED) and on certain payments made to the PTO by credit card. The handwritten signature requirements of 37 CFR § 1.4(e) were deleted effective July 2, 2021. 37 CFR § 1.4(e)(1)...
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The Road Less Traveled: IPR Denial Decisions Appealable via Mandamus
By Amol Parikh on Mar 24, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that while it did not have jurisdiction to consider the direct appeal of a Patent Trial & Appeal Board decision denying institution, it could review the decision under its mandamus jurisdiction. Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., Case No. 20-1071 (Fed. Cir. Mar. 12,...
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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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