Bijal Vakil

Partner, Silicon Valley

Biography

A coach for and adviser to many leading Silicon Valley technology companies, Bijal Vakil “is a sophisticated IP mind with a dazzling record across many forums and a deft touch in arbitration.”
IAM 1000, 2020

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 Daimler, GlobalFoundries, Google, Intuit, LG Electronics, MSI Computer, NETGEAR, Palantir Technologies, Square, Walmart, Zynga, and other leaders in technology. He has worked on nearly 200 patent cases in court (including at the ITC).

Bijal is ranked in IAM Patent 1000 – World's Leading Patent Professionals and IAM 300 Global - World's Leading IP Strategists. He has also been recognized in Chambers USA, which called him 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." IAM Strategy 300 2020 comments, "Bijal Vakil offers so much to innovators in the form of portfolio development, licensing and litigation expertise. The Silicon Valley partner knows the way the patent and business winds are blowing and accordingly adjusts to optimal strategies with agility," and IAM 1000 2020 quotes a client who raves that '[Bijal] is a really good strategic lawyer, [he] builds cases brilliantly and is able to spot and exploit the weaknesses in opponents' positions.'"

Bijal served as the Executive Partner of the Firm's Silicon Valley office from 2010 - 2019 and is the founder of the Firm's Taiwan Practice. He is an active member of the Firm's Global Technology Industry group and is Chair of the Firm's US Diversity Committee.

Bijal helps patent, as well as protect and challenge patents in post-grant proceedings, in such areas as software, computer servers, network routers, microprocessors, semiconductor processes, semiconductor devices, image sensors, circuits, consumer electronics and mobile products and services. Clients benefit from his experience in both litigating complex patent cases in district courts and the International Trade Commission and procuring patents. Clients turn to him for his guidance on establishing, developing, maintaining and leveraging their patent portfolios to maximize value. Bijal brings knowledge and insight to transactional matters, including patent licensing negotiations, technology and crypto agreements.

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 California 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 Central District of California
US District Court for the Northern District of California
US District Court for the Eastern District of California
US District Court for the Southern District of California
US District Court for the District of New Mexico
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
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 favorable settlement.

Global Foundries
Bijal represented a leading semiconductor fab in a complex patent litigation case. His team successfully 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 US

Square Inc.
Bijal represents fintech client Square, Inc. in various matters to leverage, protect and challenge their patents, in licensing negotiations, 7 filed IPRs, District Court litigation and currently providing advice in an ITC action.

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

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

Speaking Engagements

"IP Trends-Addressing a Possible Global Recession," 2019 Annual White & Case Legal Symposium

"Multinational Litigation Strategy and Coordination," Stanford-Berkeley Advanced Patent Law Institute

"Autonomous Car Crashes; Will IP and Cybersecurity Lawyers Replace PI Lawyers in Sorting Out The Legal Issues," American Bar Association Annual Business Law Meeting

"Litigating Standard-Essential Patents," Stanford Law School - Litigating Patents Effectively

"The New German Act On Automated Driving – Liability Consequences for OEMs & Suppliers; Blueprint for the US," CIT Autonomous Driving Summit, Car Week

"The German Act on Fully Automated Driving," CIT Autonomous Driving Summit USA

Fireside Chat with Michelle Lee (former Undersecretary and Director of United States Patent and Trademark Office) at Berkeley-Stanford Advanced Patent Law Institute

"IP Career Management for APA Attorneys: Growing with Business & Technology," NAPABA Western Regional Conference

"Moving Into Positions of Leadership at Large Law Firms," NAPABA Regional Conference

"Pathways to Leadership: A Conversation With Four National Bar Leaders," NAPABA Regional Conference

"Pursuing Careers in the Judiciary," NAPABA Regional Conference

"Pleading Standards," Stanford-Berkeley Advanced Patent Law Institute

"The Portrait Project: A Portrait Of Asian Americans In The Law", NAPABA Conference

Amicus Curiae Brief of Equal Justice Society in Support of Parties Challenging Marriage Exclusion, California Supreme Court

Panel, "An Honest Conversation with Female General Counsels: How They Rose to the Top and Lessons Learned," NAPABA Annual Conference

Panel, "Women and Diverse Lawyers in Business Development," Daily Journal Women in Leadership Law Conference

"Is District Court Litigation Essentially Over?," Berkeley-Stanford Advanced Patent Law Institute

"Fireside Chat with Deputy Director of USPTO, Michelle K. Lee," NAPABA Convention

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

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

"Remedies: Developments in Damages and Injunctive Relief," Berkeley-Stanford Advanced Patent Law Institute

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

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

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

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

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

"Pathways to Leadership for Asian American and Women Attorneys," Asian Pacific American Bar Association of Silicon Valley

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

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

"Reexaming Reexamination: Past, Present, and Future," Stanford Program in Law, Science & Technology, University of Texas School of Law and Berkeley Center for Law & Technology, Advanced Patent Law Institute

"The Changing Landscape of Patents: Perspectives from the Tech, Cleantech, and Financial Industries," National Asian Pacific Bar Association National Conference, Atlanta

"International Corporate and Finance Strategies for Taiwanese Business," Taipei, Taiwan

"Market Solutions," Defense 2.0: New Strategies for Reducing Patent Risk, Boalt and Santa Clara High-Tech Law Institute

"Taking Control of Patent Litigation: Fighting Jurisdiction and Initiating Declaratory Relief Actions," 2011 Symposium on International IP Strategies for Taiwanese Technology Companies, Hsinchu and Taipei, Taiwan

"Legal Process Outsourcing" and "California Inspires! Tales from the Top," National Asian Pacific Bar Association Annual Conference, Los Angeles

"Israel Journey 2010," sponsored by Ernst & Young, Tel Aviv, Israel

"The Diversity Edge: Making Law Firm Diversity a Reality," California Minority Council Program, San Francisco

"Patent Damages Reform and False Marking," 2010 Symposium on International Intellectual Property Strategies for Taiwanese High-Tech Companies, Hsinchu and Taipei, Taiwan

"Antitrust Claims in Patent Litigation," Association of Corporate Counsel, Palo Alto and San Francisco (with Noah A. Brumfield)

"Successful Jury Themes in Intellectual Property Cases," Palo Alto (with Judge Alfred J. Lechner, Jr.)

"International Intellectual Property Trends for 2010," Paris, France

"Representations, Indemnifications and Warranties," Silicon Valley Association of General Counsel Annual All-Hands Meeting, Santa Clara

Panel, "Eliminating Ambiguity and Minimizing Risk with Warranty, Limitations of Liability, and Indemnification Provisions," at the American Licensing Institute's 15th Annual Conference: The Practical and Tactical Art of the Deal in Software Licensing Agreements, San Francisco

"Maintaining Costs with E-Discovery and Maximizing the Benefit," Tokyo, Japan

"Have You Looked at Your Indemnification Clause Lately? What Quanta v. LG Means For Your Business Relationships," Asian Pacific Bar Association of Silicon Valley

"The Thieves of Thought: Protecting Intellectual Property in the Information Age and Beyond," World Future Society, Chicago

"Have You Looked at Your Indemnification Clause Lately? What Quanta v. LG Means or Your Business Relationships," Association of Corporate Counsel, Palo Alto and San Francisco

Panel, "Portfolio Valuation," Berkeley Center for Law & Technology's Symposium: Theory and Practice of Patent Valuation

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)

The Race to Patent Technology - Blockchain and Autonomous Vehicles

Biggest Roadblocks to Getting Driverless Cars on the Road—The High Stakes of Patent Protection in the Era of Self-Driving Cars

In re Micron Tech –Waiver and Improper Venue Challenges Post-TC Heartland

Months after Berkheimer and Aatrix: Business as Usual

Supreme Court's Lexmark Decision Exhausts Patents

Federal Circuit Expanding Interpretation of Step Two of the Test for Patent Eligibility

Federal Circuit Muddies the Water With Its Clarification on Inducement Liability

Awards and Recognition

IAM Patent 1000, 2020

IAM Strategy 300, 2020

Leading Lawyer (Band 4) Chambers USA 2017

Intellectual Property: Patent – California

Bronze, IAM Patent 1000, 2015-2017

Minority Powerbroker, IPLAW 360, 2014

Managing Intellectual Property, IP Stars 2013-2014

Certificate of Special Recognition, Community Service (United States Congresswoman Anna Eshoo), 2012

Certificate of Special Recognition, Field of Law and Community and Social Justice (United States Congressman Mike Honda), 2012

Bar Association of San Francisco, Diversity Award, 2012

PLC Which Lawyer? Intellectual Property (USA: CA: San Francisco and Silicon Valley)

2010 "Best Lawyers Under 40," NAPABA (National Asian Pacific American Bar Association)

2010 Burton Award for Excellence in Legal Writing

"40 Under 40 People to Watch in 2006" by the Silicon Valley/San Jose Business Journal

Minority Bar Association's Unity Award (2009)