Bijal Vakil

Partner, Silicon Valley

Biography

“Bijal Vakil of White & Case LLP is a litigator who is ‘well versed in both legal and business matters’ and is lauded for his strategic guidance and skill in negotiation. He handles contentious hi-tech patent matters including infringement claims made by nonpracticing entities.”
Chambers California Intellectual Property: Patent 2017

Overview

Bijal has a successful track record litigating complex patent cases in district courts, the International Trade Commission and before the Federal Circuit. Clients also benefit from his experience advising on patent portfolios and assisting with technology licensing agreements.

His practice covers a wide range of technologies, including computer software, semiconductors, e-commerce, social media, payments, autonomous vehicles, consumer electronics, and telecommunications. The knowledge and insight that he brings to the most complex patent disputes has made him a valued asset for technology companies ranging from Fortune 100 companies to Silicon Valley start-ups. Current clients include GlobalFoundries, Google, Intuit, LG Electronics, MSI Computer, NETGEAR, Palantir Technologies, Square, Walmart, Zynga, and other leaders in technology.

Bijal is the Executive Partner of the Firm's Silicon Valley office, and the founder of the Firm's Taiwan Country Practice. He is an active member of the Firm's Global Technology Industry group and is Chair of the Firm's US Diversity Committee.

Widely recognized by legal professionals as an authority in his field, Bijal has held leadership positions in several bar associations and non-profit organizations. He currently serves as a mediator in the United States District Court, Northern District of California's Alternative Dispute Resolution Program, and was previously selected by the judges of the United States District Court, Northern District of California as co-chair of the Lawyer's Representative Committee. Bijal also frequently teaches a Patent/Intellectual Property course at the University of Davis (UCD) Law School.

Bijal is often sought out by the media and industry conferences to speak on various hot issues affecting the industry. He is regularly asked to speak about the future intersection of hardware and software in the self-driving car space. Most recently, Bijal presented, "Autonomous Car Crashes" at the American Bar Association Business Law Section Meeting and "The German Act on Fully Automated Driving" at the Autonomous Driving Summit USA. In addition, Bijal is a frequent speaker at the Advanced Patent Law Institute, Berkeley-Stanford Patent Law Institute, Association of Corporate Counsel, and the National Asian Pacific American Bar Association.

A committed member of the Asian Pacific American legal community, Bijal has served on the Executive Committee of the National Asian Pacific Bar Association, on Committees for the National South Asian Bar Association, and as President of the Asian Pacific Bar Association of Silicon Valley, and as President of the Asian Law Alliance.

Bars and Courts
California State Bar
US District Court for the Northern, Central, Eastern and Southern Districts of California
US District Court for the Eastern District of Texas
US Court of Appeals for the Ninth Circuit
US Court of Appeals for the Federal Circuit
US Supreme Court
Registered Foreign Lawyer, England & Wales
Education
JD
University of California, Davis School of Law
BA
University of California, Los Angeles
Languages
English

Experience

Autonomy, Inc.
Bijal successfully prevailed on a co-inventor claim resulting in favourable settlement.

Global Foundries
Bijal represented a leading semiconductor fab in a complex patent litigation case. His team filed dozens of inter partes reviews and prevailed with a stay pending resolution at the USPTO.

Google, Inc.
Obtained termination of four of five asserted patents before hearing and finding of no violation as to fifth patent in 337 Investigation involving mobile device technology on behalf of Google as Intervenor.

Hewlett-Packard Company
Bijal led the successful defense of Hewlett-Packard in a patent infringement action involving web publishing software. He prevailed at claim construction and on motions for summary judgment to limit customers' claims of indirect infringement.

LG
Bijal defends LG in various patent infringement cases throughout the U.S.

Square Inc.
Bijal and team are the lead counsel for Square in their patent litigation matters in the U.S.

Walmart Global eCommerce
Bijal defends Walmart's global eCommerce division in various patent litigation matters throughout the U.S.

Zynga Inc.
Bijal represents Zynga in multiple intellectual property matters.

Speaking Engagements

Panel, "Litigating Standard-Essential Patents", September 2018: Stanford Law School - Litigating Patents Effectively

"Autonomous Car Crashes – Who or What Dunnit", September 13, 2018: ABA Business Law Section Meeting 2018

"The German Act on Fully Automated Driving", May 16, 2018: Autonomous Driving Summit USA

"Fireside Chat with Michelle Lee (former Undersecretary and Director of United States Patent and Trademark Office)", December 14, 2017: Berkeley-Stanford Advanced Patent Law Institute

"Growing with Business and Technology", July 22, 2017: NAPABA Western Regional Conference

"Pleading Standards", December 8, 2016: Annual Berkeley-Stanford Patent Law Institute

"A Portrait of Asian Americans in the Law", November 4, 2016: NAPABA Convention, Plenary session speaking engagement with California Supreme Court Justice Goodwin Liu, Director of the United States Patent and Trademark Office Michelle Lee, Congressmen Ted Lieu, and CEO Minority Corporate Counsel Association, Jean Lee

"The Rise of the APA Managing Partners: Wisdom and Stories from the Field", November 7, 2014: NAPABA Convention 2014

"Fireside Chat with Deputy Director of USPTO, Michelle K. Lee", November 8, 2014: NAPABA Convention 2014

"Is District Court Litigation Essentially Over?, December 11, 2014: Stanford Program in Law, Science and Technology and Berkeley Center for Law & Technology, 2014 Advanced Patent Law Institute

"Remedies: Developments in Damages and Injunctive Relief", December 12, 2013: Stanford Program in Law, Science and Technology and Berkeley Center for Law & Technology, 2013 Advanced Patent Law Institute

"To Plead or Not to Plead", December 7, 2012: Stanford Program in Law, Science & Technology, University of Texas School of Law and Berkeley Center for Law & Technology, 2012 Advanced Patent Law Institute

"Eastward Expansion: E Discovery and Emerging Privacy Laws in the Pacific Region", November 16, 2012: National Asian Pacific American Bar Association, Washington DC

"International IP Strategy", November 5, 2012: The Life of a Start-Up: From Initial Financing to IPO/Exit, International Bar Association

"Making Partner at Big Law Firms for Diverse Attorneys", October 26, 2012: Barristers Club 2012 Annual Meeting

"How to Effectively Prosecute AIA Post-Grant Proceedings, The New Framework for Resolving Patent Disputes Within the PTO", October 3, 2012: Practicing Law Institute, San Francisco

"Pathways to Leadership for Asian American and Women Attorneys", September 14, 2012: Asian Pacific American Bar Association Silicon Valley

"FRANDly Licensing", April 2012: Association of Corporate Counsel, Palo Alto and San Francisco

"Reexaming Reexamination: Past, Present, and Future", December 8, 2011: Advanced Patent Law Institute, The Stanford Program in Law, Science & Technology, Berkeley Center for Law & Technology at UC Berkeley, The University of Texas School of Law, Palo Alto

"The Changing Face of Patent Trolls", 13 June 2012 and Taipei, Taiwan, 15 June 2012: 2012 Symposium on International Legal Strategies for Taiwan Technology Companies: A Focus on Intellectual Property and Antitrust Issues, Hsinchu, Taiwan, (co-author, with Kao-Yu Hsu)

"FRANDly Licensing", April 2012: Association of Corporate Counsel, Palo Alto and San Francisco

"Reexaming Reexamination: Past, Present, and Future", December 8, 2011: Advanced Patent Law Institute, The Stanford Program in Law, Science & Technology, Berkeley Center for Law & Technology at UC Berkeley, The University of Texas School of Law, Palo Alto

Publications

The German Act on Automated Driving – Approach and Liability Consequences for domestic/foreign Car Manufacturers and Suppliers, CTI Mag Issue 10, Pages 60-62, 2018, (co-author with Christian M. Theissen)

The self-driving car – a new legal frontier?, Business Law Magazine Issue 4, Pages 12-14, 2015, (co-author with Markus Hauptmann)

Awards and Recognition

Leading Lawyer (Band 4) Chambers USA 2017
Intellectual Property: Patent - California

Bronze, IAM Patent 1000, 2015-2018

Minority Powerbroker, IPLAW 360, 2014

IP Star, Managing Intellectual Property, 2013-2014

Top 40 Under 40 Lawyer, National Asian Pacific Bar Association, 2010

40 Under 40, Silicon Valley Business Journal, 2006