Amar L. Thakur

Amar Thakur is co-chair of the firm's Intellectual Property Practice Group.

Areas of Practice

Mr. Thakur's practice is devoted to intellectual property litigation and technology transactions matters.  Mr. Thakur's litigation experience includes representation of large technology companies in telecommunications/VOIP, medical devices, software, semiconductors and life sciences industries in patent, trademark and commercial disputes. He has appeared before the federal courts throughout California, Arizona, New York and Texas, and the International Trade Commission.  Mr. Thakur's substantial experience in technology transactional and licensing matters includes acquisition and protection of intellectual property, technology transfer agreements, patent and software licensing transactions, and research and development transactions. 

Mr. Thakur has particular experience with VOIP and related technology. He has worked extensively on IP matters for and adverse to Nortel, Broadcom, and others; has litigated against Microsoft and Research in Motion; and has represented Lenovo, Vero, Quantum, and other high-tech companies in litigation.

Mr. Thakur's representative clients include Amgen, BAE Systems, Beckman Coulter, Broadcom, Conexant Systems, Entropic Communications, Gen-Probe, International Rectifier, Lenovo, Lineage Power, Medtronic, Mformation Technologies, Nextec Corporation, Northrop Grumman, Overland Storage, Quantum Corporation, Samsung, Sony Online Entertainment, State Compensation Insurance Fund, and Vero.

Education

• J.D., Arizona State University, 1995, cum laude
• B.S., Electrical Engineering, University of Washington, 1992

Admissions

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

CURRENTLY ACTIVE CASES

LG Electronics, Inc., et al. v. Lenovo (United States) Inc. - (Southern District of New York) - Lead counsel representing defendant Lenovo in a patent infringement suit filed in 2009 by an MPEG technology licensing consortium of ten patentees.  Lenovo's computer systems stand accused of infringing 22 patents relating to video compression software and hardware systems.

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.

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.

Lineage Power Corp. v. SynQor, Inc. (Eastern District of Texas) and SynQor v. Artesyn Techs. et al. (Eastern District of Texas) - Currently co-counsel with Latham & Watkins representing Lineage Power Corp. (formerly, Tyco Electronics Power Systems) in patent infringement suit and counter-suit involving patents relating to power electronics and printed circuit board fabrication.

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.

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.

CASES RESOLVED IN 2007-2008

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).

Telarix, Inc. v. Vero Systems Inc. - (Eastern District of Virginia) - Lead trial counsel for defendent in a patent infringement matter regarding software for international routing of long distance telephone calls (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 has 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).

InfoVista S.A. and InfoVista Corporation v. EMC Corporation - (Northern District of California) - Lead trial counsel for plaintiffs in a trademark infringement action regarding Invista® software.

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).

Insight v. American Vacation Centers - (Northern District of California) - Lead counsel defense of a trademark suit (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.

TVN Entertainment Corporation v. Stingray Digital Group, Inc., et. al. - (Superior Court for the County of Los Angeles) - Lead trial counsel for defendant Stingray in a breach of license agreement matter.

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).

Kratos Defense and Security Solutions, Inc. and Kratos Government Solutions, Inc. v. Tactical Survey Group, Inc. - (Superior Court for the County of San Diego) - Lead trial counsel for plaintiffs in a breach of contract, trade secret misappropriation and unfair competition matter related to security 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 software license, development and implementation with Fiserv, Inc. (NASDAQ:FISV) for numerous mission critical software products

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 L-1 Identity Solutions, Inc. (NYSE:ID) with regards to IP matters in its acquisition of McClendon Corporation.

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)

Honors

• San Diego Super Lawyer, 2009
• Top Intellectual Property Attorney, San Diego Daily Transcript, 2006

Memberships

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

Articles

• 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 at Sheppard, Mullin, Richter & Hampton LLP, , March 22, 2007

• "E-Discovery Made Simple(r): Practical Steps for Locating, Analyzing, & Producing Electronic Documents," published in the Summer 2008 Corporate Counselor newsletter.

Speeches

• 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.