Yoon Chae is an Intellectual Property and Technology lawyer in Baker McKenzie’s Dallas office. He regularly writes and talks about IP law and ethical issues relating to artificial intelligence and autonomous systems. He served as the Firm’s first Fellow at the World Economic Forum’s Centre for the Fourth Industrial Revolution in 2017-2018, where he researched legal and ethical implications of AI and co-authored the widely distributed white paper, “Artificial Intelligence Collides with Patent Law.” He serves as an Innovation Ambassador and as a member of the Dallas office’s Recruiting Committee, and is an active contributor to the Firm’s diversity and inclusion efforts. Having been raised in India, Singapore, and South Korea, he brings a global perspective to his practice.
Yoon’s practice focuses on representing plaintiffs and defendants in all stages of patent litigation, often as lead associate, with significant experience working on diverse IP and litigation issues. The patents litigated by Yoon cover a wide range of technologies, such as software, mobile applications, financial products, medical devices, electronic circuits, projection and display technologies, encryption and authentication protocols, engine control, and telecommunication systems. He also advises on patent prosecution, trade secret, and other IP and technology-related issues.
Representative Legal Matters
Yoon has litigated in various forums, including the Federal Circuit, International Trade Commission, Court of Federal Claims, Patent Trial and Appeal Board, American Arbitration Association’s International Centre for Dispute Resolution, and numerous federal district courts, and the representative cases that he has worked on include:
Secured a complete win for a leading 3D display provider as complainant against its competitor at the ITC, obtaining final determination finding (1) all asserted claims valid and infringed and (2) the presence of a domestic industry, which resulted in a limited exclusion order and cease-and-desist orders with a 100% bond against respondents..
Secured a win for a major welding equipment manufacturer as plaintiff against its competitor in a multi-patent infringement case at the Eastern District of Texas, resulting in a consent judgment with a three-year injunction against the accused products and a substantial settlement payment.
Successfully represented a major phone manufacturer as defendant in the Northern District of Texas, as petitioner in front of the PTAB, and as appellee at the Federal Circuit, resulting in invalidation of two of the three patents asserted by the plaintiff under 35 U.S.C. § 103.
Secured defended a major financial software provider in multiple patent infringement cases, including ones at the Middle District of Florida and the Eastern District of Texas, all resulting in invalidations of patents asserted by the plaintiffs under 35 U.S.C. § 101 or § 103.
Secured a rare stay pending CBM review for numerous financial institution defendants from 28 consolidated cases at the Eastern District of Texas, even before issuance of any institution decision by the PTAB.
Succeeded on a precedent-setting motion to transfer venue for a major cellular phone manufacturer in the District of Nevada, resulting in a favorable settlement.
IP Advisory & Patent Prosecution
Conducting a benchmarking survey for a global consulting firm on licensing and service contract issues in the field of artificial intelligence.
Advised a leading multinational telecommunications company on a comprehensive set of patent enforcement and licensing issues in over 20 jurisdictions.
Prosecuted patents on various technologies in diverse jurisdictions, including the United States, Europe, Japan, South Korea, and China.
- 2018 Excellence in Innovation Award, Baker McKenzie
- Selected to the Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers, 2018-2019
- Certificate of Merit for International Corporate Governance, University of Michigan Law School (2011)
- Dean’s Scholarship, University of Michigan Law School (2009-2012)
Professional Associations and Memberships
- The Honorable Barbara M. G. Lynn American Inn of Court – Associate (2018 - present)
- Dallas Asian American Bar Association – PR Committee Co-Chair (2018 - present)
- American Bar Association – Artificial Intelligence and Robotics Committee (2018 - present)
- Leadership Council on Legal Diversity – Law School Mentor (2014 - present)
- U.S. Court of Federal Claims~United States (2017)
- U.S. Patent & Trademark Office~United States (2015)
- U.S. Court of Appeals, Federal Circuit~United States (2014)
- U.S. District Court, Northern District of Texas~United States (2014)
- U.S. District Court, Eastern District of Texas~United States (2013)
- Texas~United States (2013)
- University of Texas at Austin (Certificate Business Foundations Program) (2015)
- Stanford University (Professional Certificate Energy Innovation and Emerging Technologies) (2014)
- University of Michigan Law School (J.D.) (2012)
- University of Texas at Austin (B.S. Electrical Engineering) (2009)
Contributing author, "Subject-matter eligibility in the United States, Europe, Japan, China and Korea," in WIPO Technology Trends 2019 – Artificial Intelligence report (pp. 96, 112, 141), World Intellectual Property Organization, January 2019
Author, "Passing the AI Test," Intellectual Property Magazine, February 2019
Panelist, "Patenting AI: Views Across the Corporate Spectrum," in USPTO’s conference on "Artificial Intelligence: Intellectual Property Policy Considerations," January 2019
Moderator, "Intellectual Property Breakfast Roundtable: Blockchain Technology," State Bar of Texas - IP Section, October 2018