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 is a member of our Technology Industry Practice and the Global Intellectual Property Group. He successfully represents technology companies in all aspects of their life cycle. He also has an impressive track record litigating complex patent cases in district courts, the International Trade Commission, and before the Federal Circuit.  The knowledge and insight he brings to the most complex technology and intellectual property matters globally make him a valued asset for companies ranging from those on the Fortune 100 list to Silicon Valley startups.

Bijal's practice covers a wide range of technologies, including computer software, semiconductors, drones, e-commerce, social media, payments, autonomous vehicles, consumer electronics, telecommunications, video games, medical devices and innovative uses of blockchain technology in cryptocurrency. His technology practice includes serving as lead counsel in hundreds of contentious patent matters, leading US and cross-border deals, strategizing on complex technology transactions and forming technology alliances in trailblazing industries.

Recognition

  • Bijal is ranked in IAM Patent 1000 – World’s Leading Patent Professionals and IAM 300 Global - World’s Leading IP Strategists.
  • Chambers USA calls 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 says, "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."
  • IAM 1000 2020 quotes a client: "[Bijal] is a really good strategic lawyer, [he] builds cases brilliantly and is able to spot and exploit the weaknesses in opponents' positions."
  • Two-time winner of the Burton Awards/Law 360 Distinguished Writing Awards.

Firm Commitment

Bijal served as Executive Partner of White & Case's Silicon Valley office from 2010 to 2019.  He founded the Firm's Taiwan Country Practice.  He currently serves on the Firm's Global Technology Industry group’s leadership team and as Chair of the Firm’s award-winning US Diversity Committee (leading its five affinity networks).

Community Leadership

The legal community recognizes Bijal’s unique skill set.  He was selected to serve in various court committees in the United States District Court, Northern District of California, including (1) Co-Chair of the Lawyer’s Representative Committee; (2) Chair of two Magistrate Judge Selection Committees; (3) Member of Magistrate Judge Reappointment Committee; and (4) Mediator, Court’s Alternative Dispute Resolution Program.

Bijal strongly believes in keeping the door open for others.  To that end, he served on the Executive Committee of the National Asian Pacific Bar Association (along with various other positions), Committees for the National South Asian Bar Association, the NAPABA Law Foundation Board, as President of the Asian Pacific Bar Association of Silicon Valley (along with various other roles) and as President of the Asian Law Alliance (along with various other roles).

Speaking and Teaching

Bijal is a frequent speaker at a number of various venues including the Advanced Patent Law Institute, Berkeley-Stanford Patent Law Institute, Association of Corporate Counsel, local law schools and the National Asian Pacific American Bar Association.

The media seeks out Bijal’s advice frequently (Wall Street Journal, Law 360, the American Lawyer, and the Financial Times) to discuss trending issues in technology.

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

Exemplary Cases

Flamm v. Globalfoundries
Successfully stayed the Northern District Court of California action pending resolution at the USPTO and obtained favourable rulings of unpatentability of all three patents resulting in a favourable settlement.

Carl Zeiss v. Topcon Healthcare
Obtained rare preliminary injunction for misappropriation of trade secrets.

Zond  v. Globalfoundries
Successfully stayed matter pending resolution at the USPTO and obtained favourable rulings of unpatentability of all seven patents resulting in a settlement.

Google v. Ecofactor
Successfully initiated a declaratory relief action. 

Marvell Technology v. Monterey Research
Filed declaratory relief action resulting in settlement.

Wonderland v. Evenflo
Tried multi-patent case for monetary damages and injunctive relief.

Personal Web Technologies v. Slack / Personal Web Technologies v. Square
Received judgment of non-infringement upheld by the Federal Circuit.

AnywhereCommerce  v. Square
Successfully obtained a stay of the district court litigation prior to institution of concurrently filed IPRs.

American GNC v. LG Electronics Inc.
Successfully stayed matter pending resolution of IPRs at the USPTO and obtained favourable settlement prior to trial.  

Team Worldwide Corp. v. Walmart
Multi-defendant patent litigation matter involving airbed technology which resulted in settlement/arbitration. 

Google  v. Creative Labs
Successfully filed a declaratory judgment action resulting in a favourable settlement.

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)