Can you tell us about challenges that you faced founding White & Case’s Taiwan practice – and how you overcame these?
Founding our Taiwan practice involved numerous challenges. At the time, not many US firms were practising in the country and it was essential to address language and cultural differences. We also took the time to understand how Taiwanese companies are major global players that could benefit from White & Case’s global platform and integrated approach to the technology industry (both for disputes and corporate/transactional).
You are known for your litigation skills before district courts, the International Trade Commission and the Federal Circuit – what are some of the biggest changes that you have seen in US patent litigation over the course of your career?
Significant changes have included new venues (eg, the rise of the Eastern District of Texas and now the Western District of Texas, as well as the PTAB), shifting law about patentable subject matter and the increasing complexity of technology cases, which can now involve suppliers, distributors and customers. I have had to adapt to these changes by understanding and shifting client priorities and new litigation strategies. We also need to be mindful of the global area for disputes so as to ensure that our patrons are always one step ahead of their competitors on the global stage.
You have represented clients ranging from small start-ups to multinational corporations. How have client demands changed over the years and how have you adapted to this?
Clients appreciate it when their IP team understand and assist them with their company business goals as well. We are devoting more of our time and resources to understanding our service users and acting as their trusted business advisor, compared to a legal team for a one-off matter.
How do you envisage the auto-driving space evolving over the next five years – and what can companies in that space do to prepare themselves?
I think that there will be many more disputes because of the high competition and value in this space. Injunctions on features that consumers want in the self-driving sphere are interesting and an evolving issue, which will affect not just IP cases (involving both patents and trade secrets), but also issues of regulation, employment and other fields. Companies will need to consider their plans and potential exposure across all of these matters.
What one change would you like to see to the technology licensing landscape – and how like do you think it is to happen?
I believe that greater clarity on FRAND licensing issues would help both patentees and licensees, giving them more insight and increased levels of predictability for SEP portfolios. For example, more guidance on how a potential FRAND licensee can express willingness to take a licence would help all parties involved. That will likely happen as more courts in both the United States and Europe tackle these issues.
In the United States, tech companies must prepare themselves for the onslaught of patent cases from patents that have been sold in recent bankruptcies. These companies have also benefited from a solid stock market, which has made a number of players much more aggressive.
Bijal Vakil has a successful track record litigating complex patent cases in district courts, at the International Trade Commission and before the Federal Circuit. Clients benefit from his experience advising on patent portfolios and assisting with technology licensing agreements. Mr Vakil’s practice covers a wide range of technologies, including computer software, semiconductors, e-commerce, social media, payments, autonomous vehicles, consumer electronics and telecommunications. His knowledge and insight on complex patent disputes has made him a valued asset for clients.
Click here to see his IAM 300 2020 profile.