Lawyer Overview

Amar L. Thakur is a partner with Foley & Lardner LLP. His practice is devoted to IP litigation and technology transactions matters.

Mr. Thakur's litigation experience includes representation of large technology companies in telecommunications / VOIP, medical devices, software and semiconductors in patent, trademark and commercial disputes. He has appeared before the federal courts throughout California, Arizona, New York, Texas, Virginia and the International Trade Commission.

With substantial experience in technology transactional and licensing matters, including acquisition and protection of intellectual property, Mr. Thakur's practice focuses on the development and enforcement of patent portfolios, as well as creating partnerships between IP clients and large private equity firms and other investors who can help to grow promising IP portfolios. He is considered a pioneer in the development of new alternative fee strategies for patent litigation.

Mr. Thakur has particular experience with wireless and software related technology. He has litigated IP matters against Microsoft and Research in Motion and has represented Mformation Technologies, Samsung, Quantum, and other high-tech companies in litigation.

Representative clients of Mr. Thakur's have included BAE Systems, Broadcom, Conexant Systems, Entropic Communications, Gen-Probe, International Rectifier, Kratos Defense, Medtronic, Mformation Technologies, Nextec Corporation, Overland Storage, Quantum Corporation, Samsung, Sony Ericsson, Sony Online Entertainment, State Compensation Insurance Fund, and XIFIN.

Mr. Thakur was selected for inclusion in the 2009 San Diego Super Lawyers list and was included in the list of 2006 Top Intellectual Property Attorneys in the San Diego Daily Transcript.

Prior to joining Foley, Mr. Thakur was co-chair of Sheppard, Mullin, Richter & Hampton LLP's Intellectual Property Practice Group.

Mr. Thakur earned his law degree, cum laude, from Arizona State University (J.D., 1995) and an undergraduate degree in electrical engineering from the University of Washington (B.S., 1992).

Mr. Thakur is admitted to practice in Arizona, California, and before the U.S. Patent and Trademark Office. He is a member of the San Diego Intellectual Property Association and serves on the board of directors of the Arthritis Foundation.

Publications and Presentations:

Mr. Thakur frequently speaks publicly about legal issues related to intellectual property and technology transactions. He participates on panels on a regular basis for American Corporate Counsel Association events and is a guest lecturer at the Graduate School of Management at the University of California, Irvine. In addition, he has been featured in numerous articles regarding the development of law firm IP practices. His written publications include:

• Co-Author, "Just One Good Idea Companies Should Go Back To The Basics When Licensing Intellectual Property Assets," Los Angeles and San Francisco Daily Journal, April 5, 2007
• Co Author, "E-Discovery Made Simple(r): Practical Steps for Locating, Analyzing, & Producing Electronic Documents," Corporate Counselor newsletter, Summer 2008

Representative Cases

• Mformation Technologies, Inc. v. Research In Motion (Northern District of California) - Lead trial counsel for plaintiff in a multi patent infringement matter regarding wireless device management software.
• Telespree Communications v. Mformation Technologies Inc. (Northern District of California) - Lead counsel for defendant in a trade secrets action regarding software platforms for activating, managing and updating mobile devices over the air.
• Nextec Applications, Inc. v. Brookwood Companies, Inc. (Southern District of New York) - Lead trial counsel for plaintiff in a patent infringement matter regarding encapsulation technology.
• Sandisk IL, f/k/a mSystems, Ltd. v. Samsung Electronics Co. Ltd. (American Arbitration Association (New York)) - Intellectual property counsel for Samsung in an arbitration for breach of a patent license and supply agreement.
• Quantum Corporation v. Riverbed Technology, Inc. (Northern District of California) - Lead trial counsel for plaintiff and cross-defendant in multiple patent infringement lawsuits regarding data storage products utilizing de-duplication technology (settled favorably).
• Canon U.S.A., Inc., Eastman Kodak Company, Panasonic Corporation of North America, et. al. adv. Screentone Systems Corporation, et al. (Central District of California) - Lead trial counsel for Peerless Systems in lawsuit in which Panasonic had tendered its defense of patent infringement case to Peerless (settled).
• InfoVista S.A. and InfoVista Corporation v. Microsoft Corporation (Northern District of California) - Lead trial counsel for plaintiffs in a trademark infringement action regarding Windows Vista software (settled favorably).
• Bridgepoint Education, Inc. v. Professional Career Development Institute, LLC (Southern District of California) - Lead trial counsel for plaintiff in a trademark infringement action regarding ASHFORD UNIVERSITY mark (settled favorably).
• State Compensation Insurance Fund v. Real Consulting and Software Development, LLC, et al. (Superior Court for the County of San Francisco) - Co-lead trial counsel for plaintiff in a breach of contract, good faith and fair dealing and fraudulent inducement matter relating to software development and implementation.
• Kratos Defense and Security Solutions, Inc. and Kratos Government Solutions, Inc. v. Celeris Systems, Inc., et al. (Superior Court for the County of Orange) - Lead trial counsel for plaintiffs in a trade secret, duty of loyalty, and unfair competition matter regarding government contracts related to GPS and telecommunications software (settled).

Recent Representative Transactions

Business and Technology Transactions:

• Represented Broadcom Corporation (NASDAQ: BRCM) in various software license agreements, master services agreements and joint development agreements
• Represented client in multi-million dollar long-term application software license, service level agreement and implementation with Fair Isaac Corp. (NYSE:FIC) for mission critical application software product
• Represented International Rectifier Corp. (NYSE: IRF) in resolution of license dispute with Toshiba relating to MOSFET transistors

  Intellectual Property Mergers and Acquisitions Representation:

• Represented Entropic Communications, Inc. (NASDAQ:ENTR) with regards to IP matters in its acquisition of RF Magic
• Represented Expedia, Inc. (NASDAQ:EXPE) with regards to IP matters in its acquisition of Smarter Living, Inc.
• Represented Jamdat Mobile (NASDAQ: JMDT) with regards to its license of Tetris and with regards to IP matters in its sale to Electronic Arts Inc. (NASDAQ:ERTS)

Areas of Practice

• Intellectual Property
• IP Llitigation
• Information Technology & Outsourcing

Representative Clients

• Amgen
• BAE Systems
• Beckman Coulter
• Broadcom
• Conexant Systems
• Entropic Communications
• Gen-Probe
• International Rectifier
• Lineage Power
• Medtronic
• Mformation Technologies
• Nextec Corporation
• Northrop Grumman
• Overland Storage
• Quantum Corporation
• Samsung
• Sony Online Entertainment
• State Compensation Insurance Fund

Bar Admissions

• Arizona
• California
• U.S. Patent and Trademark Office

Professional Associations and Memberships

• San Diego Intellectual Property Association (Member)
• Arthritis Foundation (Board of Directors)

Honors and Awards

• Top Intellectual Property Attorney, San Diego Daily Transcript

Education

• Arizona State University, College of Law, Tempe, Arizona, 1995
  J.D.
  Honors: cum laude
• University of Washington, 1992
  B.S.
  Major: Electrical Engineering

Published Works

• Sheppard Makes a Run at Tech: Amar Thakur Races to Put IP Practice on San Diego's Map, The Recorder, May 30, 2007
• Just One Good Idea, April 5, 2007
• Meet Our New Leaders in Intellectual Property, April 4, 2007
• Sheppard Mullin's 'High-Energy' Attorney Aims to Elevate Firm's IP Status, April 2, 2007
• Amar Thakur Utilized His Legal Skills and Experience to Help Build the Intellectual Property Practice, March 22, 2007
• "E-Discovery Made Simple(r): Practical Steps for Locating, Analyzing, & Producing Electronic Documents", Corporate Counselor Newsletter, 2008

Address

11250 El Camino Real
Suite 200
San Diego, CA 92130

Phones

(858) 847-6700

Faxes

(858) 792-6773

Emails

Contact Us

Websites

http://www.foley.com