Binal J. Patel
Binal has a range of experience in intellectual property matters including procurement, litigation, and counseling. He represents clients in various industries including financial services, insurance, automotive and heavy equipment technologies.
Binal is an adjunct professor at the Northwestern University Pritzker School of Law, teaching “Intellectual Property Litigation: Pre-trial Skills.” He is also a member of the firm’s management committee.
Due to his varied achievements, Binal has been recognized by multiple publications. He is recognized in Best Lawyers‘ “Best Lawyers in America” (2018) and Illinois Super Lawyers (2012-2018), which represents the top 5 percent of attorneys in the state. He is also a member of the Leading Lawyer Network, which selects members based on peer nominations and approval by the network’s advisory board.
Patent Procurement Experience:
Binal actively manages the patent procurement programs for a number of large and medium sized corporations in the U.S. and internationally. Having litigated patents in court, Binal approaches patent procurement with an eye towards litigation and with an effort to obtain maximum desirable claim coverage results. Binal counsels his clients to establish and maintain effective patent prosecution procedures. Binal has prepared and successfully prosecuted numerous patent applications in the fields of computer software, Internet-related technologies, computer hardware, telecommunications, and medical devices. In the software space, Binal has experience in electronic commerce applications, mobile-device applications, security and fraud-detection systems, authentication technologies, compliance and enterprise governance technologies, Web tools and business-to-business solutions, insurance solutions, banking services and asset management products. He also has experience in preparing patentability, validity, and infringement opinions relating to inventions in these fields.
Patent Post-Issuance Review Experience:
Binal devotes a growing portion of his practice to handling inter partes review (IPR) proceedings before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board. Since the America Invents Act was enacted in 2012, he has represented multiple large corporations in challenging or defending patents through IPR proceedings.
Binal has significant experience managing complex litigation matters involving the enforcement and defense of intellectual property rights. Binal handles litigation with a pragmatic and pro-active approach and tailors his litigation strategies to suit the business goals of his clients. Binal’s approach to litigation has achieved substantial success for clients in defending against patent infringement suits involving tens of millions in alleged liability. Binal also has proven successful in enforcing clients’ intellectual property rights. Some of Binal’s recent litigation achievements include the following matters and examples:
- Microchip Technology Inc. v. Delphi Automotive PLC et al.
- YETI Coolers, LLC v. Sam’s East, Inc. et al.
- YETI Coolers, LLC v. RTIC Coolers, LLC
- ESCO Corp. et al. v. Cashman Equipment Company et al.
- Caterpillar Inc. v. ESCO Corp.
- Keysmart, LLC v. Vante, Inc. et al.
- Allstate Insurance Company v. Nationwide Mutual Insurance Company et al.
- Checkfree Corp. et al. v. Metavante Corp. et al.
- Homewerks Worldwide, LLC v. Broan-Nutone LLC
- Advanced Cartridges Technologies, LLC v. Lexmark International, Inc.
- Stambler v. Fiserv, Inc. et al.
- Ionit Technologies, Inc. v. Vision Controls Corporation
- Phoenix Licensing, LLC et al v. Allstate Corporation et al.
- NIKE Inc. v. I J Huang et al.
- Lexmark International, Inc. v. Abraham et al.
- Lexmark International, Inc. v. Laserland, Inc.
- Steven B. Michlin v. Lexmark International Inc. et al.
- Lexmark International Inc. v. Static Control Components, Inc.
- Automotive Technologies International v. BMW North America Inc. (Delphi)
- Benedict, et al v. General Motors Corp. et al.
- Databurst LLC v. Checkfree Corp.
- Methode Electronics, Inc. v. Delphi Automotive Systems, LLC
- Delphi Automotive Systems, LLC v. Methode Electronics, Inc.
- Abbott Laboratories et al v. Orchid Chemicals & Pharmaceuticals LTD. (Sandoz)
- Static Control Components, Inc.v. Lexmark International, Inc.
- Globecomm Systems v. Gilat Satellite, et al.
- Hughes Electronics v. Gilat Satellite, et al.
- Reinforced Earth v. VSL Corporation, et al.
- Boston Scientific v. Circon Corporation
- Unistrut Corporation v.Portable Pipe
- Shure Bro Inc. v. Pro DJ Inc., et al.
Additional Litigation Examples:
- Binal and a team of B&W lawyers successfully enforced a client’s patent, trademark, and trade dress rights against a competitor imitating the client’s products resulting in a highly favorable settlement on the eve of trial.
- Binal and a team of B&W lawyers successfully defended a client in an international arbitration involving a series of patents.
- Binal argued at the Court of Appeals for the Federal Circuit where he successfully obtained final dismissal of a class action patent infringement lawsuit.
- On multiple occasions, Binal and a team of B&W lawyers have obtained preliminary injunctions to protect against patent and copyright infringement.
- Binal successfully argued and achieved dismissals of patent infringement suits by way of summary proceedings such as summary judgment motions and Markman proceedings.
Binal frequently presents on various intellectual property topics. Below is a sample listing of Binal’s recent speeches and presentations.
Speeches and Presentations:
- “Patents: They’re Not Just for Litigation Anymore,” ACC Chicago Chapter Lunch Program
- “Using Recent Trends in Post-Issuance Proceedings to Your Corporate Advantage,” Door County IP Academy
- “Using Recent Developments in Post-Issuance Patent Attacks to Your Corporate Advantage,” ACC Chicago Chapter Lunch Program
- “Best Corporate Practices in Patent Litigation Defense and Offense – Ending Defensive Litigation Quickly and Cheaply and Maximizing Patent Value,” ACC Chicago Chapter Lunch Program
- “The Intellectual Property Rights Regime in India & U.S.: The Evolving Landscape,” Threading the Needle in U.S.-India Deals: Safe Passage Through Formidable Legal Risk Conference
- “Patent Litigation Before the ITC,” Global IP Convention
- “The Truth about False Marking,” B&W Corporate IP Seminar
- “Patentable Subject Matter After Bilski,” B&W and BNA Webinar
- “Careers in IP Law,” Northwestern University IP Society
- “In the Wake of Bilski,” B&W Corporate IP Seminar
- “Process of Patent Prosecution and Interference,” Northwestern University IP Law Week
- “Implications of Seagate,” B&W Corporate IP Seminar
- “IP Litigation in the 21st Century,” Northwestern Journal of Technology & Intellectual Property Symposium
- “Changes in Patent Rules and Effect on Patent Law,” North American South Asian Bar Association Conference
- “Insurance, Intellectual Property and Patents,” NAVA Compliance & Regulatory Affairs Conference
- “Patent Plaintiffs – Hot or Not?” North American South Asian Bar Association Conference
- “Patent Case Law Updates,” National Bar Association
- “Do Opinions of Counsel Still Make Sense in Light of the Seagate Decision,” B&W Corporate IP Seminar
- “Patent Prosecution Strategies – From a Litigation Perspective,” B&W Corporate IP Seminar
- “Patent Enforcement and Defense Without Litigation,” B&W Corporate IP Seminar
- Honorary Board member of the Asian-American Bar Association of Chicago
- Co-founder and board member of the Indian-American Bar Association of Chicago
- Co-founder and former member of the executive committee of the North American South Asian Bar Association
- Member of the Software & Business Method Patents Committee of the Intellectual Property Owners Association
- Fellow of the American Bar Foundation
- Invited speaker to the Minority Corporate Counsel Association
Prior to becoming an attorney, Binal progressed through engineering positions at Andersen Consulting, Baxter Healthcare Corporation, and PSG Engineering Associates, Inc. Binal earned his Bachelor of Science degree in Electrical Engineering at the University of Illinois at Urbana-Champaign where he graduated, with highest honors, as a James Scholar, and as a member of the Senior 100. He earned his Juris Doctor degree from Northwestern University where he was a member of the Journal of International Law and Business.
Binal is a registered patent attorney and is admitted to practice before the Supreme Court of the State of Illinois, the Court of Appeals for the Federal Circuit and numerous federal district courts throughout the country.
He practices in the Chicago office of Banner & Witcoff, Ltd.
Ten South Wacker Drive
Chicago, IL 60606-7407
B.S.E.E. 1993, University of Illinois
J.D. 1996, Northwestern University
Supreme Court of Illinois
U.S. Circuit Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Illinois