Ketan Vakil is a partner in Snell & Wilmer's Orange County office and co-chair of the firm's intellectual property group. He counsels clients on matters related to intellectual property protection, litigation, counseling, and licensing including the procurement and litigation of patents, trademarks, copyrights and trade secrets. He has significant experience in preparing and prosecuting patents and trademarks, evaluating prior art for patentability, infringement and validity, preparing infringement and validity opinions, and counseling clients on intellectual property strategies, development, licensing and infringement. He is also lead counsel on several Inter Partes Review (IPR) Proceedings before the Patent Trial and Appeal Board.
Ketan's electrical engineering and software design experience includes computer architecture, memories and software, semiconductor devices, processes and machinery, network systems, storage and security, image and signal processing, video compression technology, electrical circuits, telecommunications devices, phones, chargers, wireless devices and accessories, vehicle electronics and accessories, autonomous vehicles, and aircraft systems.
Ketan's medical device experience includes gastric implants, glucose monitoring systems, heart valves, blood pressure monitoring devices, pediatric devices, surgical instruments, systems and methods for modulation of nerves, pulmonary systems, and catheters.
Ketan's apparel and footwear experience includes sandals, skateboard shoes, running and athletic shoes and sportswear, dress shoes, high-heeled shoes, shorts, jackets, backpacks, skateboards, snowboards and outdoor sports equipment. Ketan also has experience in the areas of construction, equipment and tools, phone cases, mechanical devices, toothbrushes, chemical compositions, and formulations, bottles, and connectors.
Ketan served as the managing partner of Snell & Wilmer's Orange County office from 2017 through 2022.
Representative Transactional Experience
Responsible for building the patent portfolio of a Fortune 500 medical device company. Within a four-year period of time, Ketan and his team drafted and prosecuted over 200 patents related to electronically and mechanically controlled implantable medical devices. We also prepared non-infringement, invalidity and freedom-to-operate opinions for this medical device company. The patents and business unit were sold for over $75 million to a private equity group.
Serves as the lead IP partner for drafting and obtaining cutting edge patents for hybrid automobile technology for a top automotive company. Continues to manage their patent portfolio of over 200 patents and has drafted and obtained key patents that are infringed and licensed by a competing automotive company
Prepared and prosecuted over 100 patents for leading wireless company related to peer-to-peer networks, telecommunications devices, image and signal processing, software methods and processes, communications protocols and electrical circuits
Prepared and obtained over 25 patents related to critical care monitoring devices for a large medical device company
Drafted and obtained leading and key patents and trademarks for a leading consumer dental products company. Also helped draft and negotiate agreements with large retail suppliers and distributors
Lead outside patent counsel for a UK-based international company with 10 wholly-owned US subsidiaries. Responsibilities include driving innovation and the patent process for all 10 subsidiaries. The patent portfolio includes over 100 patents related to electronic and medical devices
Prepared and obtained 12 patents in the field of LED televisions for a small start-up optics company. After obtaining these broad patents related to LED televisions, the patent portfolio was sold to an optics company for $12 million
Analyzed competitors’ patents and prepared freedom-to-operate opinion for powered prosthetics devices
Analyzed competitors’ patents and prepared freedom-to-operate, non-infringement and invalidity opinions for electronic chip testing devices
Analyzed patent landscape and prepared freedom-to-operate opinion for guidance devices for the visually and hearing impaired
Analyzed patent landscape and prepared freedom-to-operate opinion for cases for tablet devices
Representative Litigation Experience
Represented medical connector company in design patent infringement action involving connectors for medical devices
Represented medical device prosthetics company in patent infringement action involving prosthetics device for lower limbs
Represented oral care dental company in patent infringement actions involving dental kits, electronic toothbrushes and mouthwashes
Represented consumer products company in patent infringement actions involving car chargers, phone and tablet cases, screen protectors and display packaging
Represented electronic storage company in patent infringement action involving remote storage of electronic data
Represented dynamic random access memory (DRAM) company in patent infringement action involving 21 patents related to DRAM devices against a major competitor
University of Florida Levin College of Law (J.D., 1996)
Franklin Pierce Law Center (Master of Intellectual Property Law, 1995)
University of Florida (M.E., Electrical Engineering, 1992)
Vanderbilt University (B.E., Electrical Engineering, magna cum laude, 1990)
"Patent Litigation: The New Normal, Panelist, Be On Your Offensive Game: Managing Intellectual Property Litigation Costs With a Team Approach," Association of Corporate Counsel SoCal, Long Beach, CA (June 2011)
"Faster Pace at U.S. Patent Office Seen as Boost for IP," Author, Orange County Business Journal (January 23, 2011)
"Recent California Decision Reinforces Need for Drafting High Quality Patents," Author, Los Angeles Intellectual Property Law Association (March 2005)
"Outsourcing Technology Overseas? Ten Tips to Help Safeguard Your Intellectual Property," Author, Orange County Business Journal (August 9, 2004)
"Safeguarding IP Overseas," Author, California Lawyer Magazine (June 2004)
IAM Patent 1000 (2022)
Southern California Super Lawyers®, Rising Stars Edition, Intellectual Property (2006-2007)
Stout Uxa Buyan & Mullins LLP, Associate
Sheppard Mullin Richter & Hampton LLP, Associate
Townsend and Townsend and Crew LLP, Associate
United States Patent and Trademark Office
Supreme Court of California
United States Court of Appeals, Federal Circuit
United States District Court, Central District of California
United States District Court, Northern District of California