Overview
Amol 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 with the International Law Office’s “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.
Amol has represented high-tech companies in complex patent litigations in various United States district courts, the International Trade Commission (ITC) and before the Patent Trial and Appeal Board in a variety of technologies, including Internet technologies, wireless communications, semiconductor chip packaging, medical devices, power tools, high-resolution liquid crystal display projectors, computer and networking systems, mechanical devices and business methods.
In addition to his litigation experience, Amol is a registered patent attorney and manages preparation and prosecution of patent applications in the field of electronic and computer technologies, including digital and analog circuits, telecommunications systems, computer software and hardware, handwriting recognition-based software, wireless power devices, voice recognition and recordation software, semiconductor devices, artificial intelligence, medical devices, business methods and financial products. He conducts inter partes review and ex parte reexamination proceedings before the US Patent and Trademark Office.
Amol also handles intellectual property asset management. He performs due diligence investigations, providing counseling and rendering opinions in connection with the sale or acquisition of businesses or targeted business assets involving various technologies, including digital entertainment solutions, wireless communications, video conferencing, renewable energy sources, and medical devices.
During law school, Amol served as a judicial extern for the Honorable Amy J. St. Eve, District Judge of the Northern District of Illinois, and worked full-time as a technical specialist for a intellectual property law firm in Chicago. He was also a member of the DePaul Law Review. Prior to law school, he held various positions working in the design and development of telecommunication systems with Hughes Network Systems. Amol earned his bachelor’s degree in electrical engineering.
Results
- Trial and appellate counsel for power tool manufacturer in defensive patent infringement action involving six patents relating to powered nail guns, resulting in complete non-infringement of all patents (Fed. Cir. and ITC)
- Trial counsel for wood-pellet grill manufacturer in a patent infringement case against competitor involving cloud connected technology, resulting in final determination of infringement and remedial orders barring importation and sale of infringing products (ITC)
- Trial counsel for plaintiff in multi-patent case against competitor in the power tool industry; case settled favorably on the eve of trial (D. Del.)
- Trial counsel for a plaintiff in a multi-patent case against a computer networking industry competitor, resulting in a favorable jury verdict, a permanent injunction and an order to destroy the defendant’s infringing product inventory (W.D. Wis.)
- Trial counsel for a leader in digital entertainment technology solutions in a patent infringement case against five respondents involving interactive program guide and parental control technology; obtained favorable settlements totaling more than $50 million from several respondents prior to trial (ITC and numerous district courts)
- Trial counsel for a global semiconductor manufacturer sued by a competitor for patent infringement involving semiconductor chip packaging technology (N.D. Cal.)
- Lead counsel for a leading payment processor in the debt relief industry, defeating motion for preliminary injunction following expedited written and oral discovery and full evidentiary hearing. (N.D. Ohio)
- Lead counsel for dental equipment provider in offensive and defensive patent infringement actions; case settled favorably after implementing an aggressive discovery strategy (N.D. Ill.)
- Lead counsel for telecommunications equipment provider sued for patent infringement in a case involving low energy Bluetooth devices. Obtained dismissal prior to filing answer (D. Del.)
- Lead counsel for Complainant in International Arbitration proceeding in a dispute involving trade secret misappropriation and breach of contract; case settled favorably after filing of action
- Lead counsel for Japanese medical equipment company and its customers against claims of patent infringement concerning magnetic resonance imaging (MRI) technology in a multi-district litigation; case settled favorably after the client filed summary judgment motions. (D. Mass.)
- Defending audio communication equipment manufacturer sued for trade secret misappropriation (N.D. Cal.)
- Defended networking company against claims of patent infringement relating to Power-over-Ethernet technology; the case settled after favorable results in a co-pending inter partes review proceeding (E.D. Tex.)
- Defended a leading Japanese electronics manufacturer and video game manufacturer sued for a patent infringement relating to optical disc drive technology; successful motions for summary determination during the ITC hearing led to a favorable settlement of the ITC and district court actions (ITC and Del.)
- Defended a power tool manufacturer sued by a competitor for patent infringement involving lithium-ion batteries; the case settled after final rejection of asserted patents in co-pending inter partes reexamination (E.D. Wis.)
- Defended a multinational financial services company sued by a non-practicing entity for a patent infringement concerning cash rebate credit cards, resulting in a favorable settlement on the eve of the trial (E.D. Tex.)
- Defended a prominent telecommunications equipment provider sued by a non-practicing entity for a patent infringement relating to optical switching technology, resulting in a favorable settlement early in discovery (Del.)
- Defended a major Japanese electronics manufacturer sued by a non-practicing entity for a patent infringement involving liquid crystal display projectors, resulting in a favorable settlement (N.D. Ga.)
- Led IP diligence for a private equity fund in the acquisition of and $25 million investment in a diagnostic firm that offers osmolality systems for dry eye disease, including renegotiation of a third-party supply agreement with a foreign partner, a third-party license and royalty agreements with a public university that contained various payment obligations, and a revised employment agreement with the Chief Scientist to address various IP and royalty patent-related issues.
- Led IP diligence for a private investment firm focused on the health care industry in a $22 million equity commitment to a company specializing in biologics contract development and manufacturing organization from early stage research material generation to process development to contract manufacturing services.
Recognitions
- Awarded the Asian American Bar Association (AABA) – Chicago’s 2020 Law Firm Partner Diversity Leadership Award, which honors substantial and lasting contributions to the legal profession, as well as the broader Chicago Asian-American community.
- Awarded International Law Office’s “2019 Client Choice Award” for Intellectual Property in Illinois. Client Choice recognizes those attorneys who provide “excellent client care”. Recipients are recognized for their ability to add real value to clients’ business above and beyond the other players in the market. Attorneys can only be nominated by corporate counsel.
- Recognized by Law & Politics as a Super Lawyer (2018-2019, 2022-2023) and Rising Star in Intellectual Property for five consecutive years (2011 to 2015)
- Recognized by Leading Lawyers as an Emerging Lawyer (2017)
- IAM Patent 1000 – The World’s Leading Patent Practitioners, 2023 to 2024
Community
- Leadership Council on Legal Diversity (LCLD)
- Asian American Bar Association of Chicago Board of Directors
- South Asian Bar Association of Chicago
- Ravinia Associates’ Board of Directors
- American Cancer Society, previously served a term on the associate board of ambassadors
- Intellectual Property Law Association of Chicago
- Chicago Committee on Minorities in Large Law Firms, Director of the Board
Credentials
Education
DePaul University College of Law, JD, 2004
Purdue University, BS, Electrical Engineering, 2001
Admissions
Illinois
Courts/Agencies
US District Court for the Northern District of Illinois (trial bar)
US Court of Appeals for the Federal Circuit
US District Court for the Eastern District of Texas
US District Court for the Western District of Wisconsin
US District Court for the Eastern District of Wisconsin
US Patent and Trademark Office
Illinois Supreme Court