Lily Lim

Partner

Lily Lim practices intellectual property law, specializing in trial litigation in federal district court and before the U.S. International Trade Commission, representing U.S. and international clients whose technologies include integrated circuits, wireless devices, software, and medical devices.

Ms. Lim has represented both plaintiffs and defendants in patent, trade secret, copyright, and antitrust matters. She has prevailed at trial, appeal, and at claim construction (Markman) hearings.

In addition to her litigation practice, Ms. Lim counsels clients regarding offensive and defensive strategies for maximizing return on investment in intellectual property portfolios. She has also negotiated settlement deals, patent licenses, and international manufacturing and marketing agreements.

Highlights

• First-chaired multiple jury trials, prevailing in over 80% of those cases.
• Successfully dismissed a patent suit involving medical device technology brought against Acclarent in the Eastern District of Texas (“EDTX”).
• Successfully resolved a Federal Circuit appeal for Acclarent.
• Representing SAP in an EDTX patent action concerning supply chain management software.
• Representing Marvell in NDCA and EDTX patent actions concerning wireless technologies.
• Obtained a preliminary injunction of copyright infringement of software allowing Sun Microsystems to negotiate a favorable $2 billion settlement.
• Provided pre-litigation counseling to multiple internet portal and biotechnology clients regarding negotiating and renegotiating licenses and implementing design-arounds to avoid patent infringement suits.
• Additional representative clients include Toshiba, Sybase, and Winbond.
• Served as a law clerk to the Honorable S. Jay Plager of the U.S. Court of Appeals for the Federal Circuit.
• Served as general counsel to an internet-based graphic design firm.
• Worked as a spacecraft navigation engineer at NASA’s Jet Propulsion Laboratory, where she worked on the Magellan Project, which successfully mapped the surface of Venus.
• Served as an assistant district attorney for the City and County of San Francisco as part of a pro bono program she establish with the D.A.'s office.
• Served as the president of the Yale Society for Law and Technology and as senior editor of the Yale Journal of International Law.

Professional Activities

• American Bar Association
• American Intellectual Property Law Association
• Federal Circuit Bar Association
• Licensing Executives Society

Select Publications

• Coauthor. "Injunctions in District Courts and the ITC," Law 360, Feb. 10, 2010.
• Coauthor. “Managing Lawsuits for Favorable Results,” Digitimes, Oct. 2009.
• "Injunctions Enjoined; Remedies Restructured," Santa Clara Computer & High Technology Law Journal, Anniversary ed., April 2009.
• Coauthor. "Winning Patent Strategies," Managing Intellectual Propery: China IP Focus 2007, March 2007.
• "Trends in Compulsory Licensing in Greater China," IP Law 360, Aug. 16, 2006.