Photo of Yoon Chae

Yoon Chae

Partner
Baker & McKenzie LLP

Biography

Yoon Chae is a partner in the Firm’s Intellectual Property & Technology Practice, where he advises clients on diverse intellectual property and technology matters. He serves as an innovation ambassador of the Firm, a member of Texas Offices’ Recruiting Committee and Diversity & Inclusion Committee, and the Dallas representative of Baker Asian Lawyer Network (BALN). Yoon has extensive experience in all stages of IP litigation and has worked on cases in front of the Federal Circuit, the International Trade Commission, the Court of Federal Claims, and numerous federal district courts. He has also played critical roles on proceedings in front of the Patent Trial and Appeal Board and the American Arbitration Association.

Yoon regularly writes about IP and regulatory issues relating to AI and autonomous systems, including the highly cited “Artificial Intelligence Collides with Patent Law” that he co-authored while serving as the Firm’s first fellow at the World Economic Forum’s Centre for the Fourth Industrial Revolution. He has also spoken about such topics at the USPTO, Stanford Law School, SMU School of Law, University of Arkansas School of Law, American Bar Association, California Lawyers Association, and other organizations. He was a recipient of the Firm’s Excellence in Innovation Award (2018) and Texas Lawyer’s On the Rise Award (2019). And he has been recognized by Texas Super Lawyers as a Rising Start in IP litigation (2018-2022), the Best Lawyers in America for patent litigation (2022-2023), and the Best Lawyers in America as an attorney on their Ones to Watch list for IP litigation and patent litigation (2021-2022).

Practice Focus

Yoon’s practice focuses on litigating complex patent infringement disputes. He has represented numerous multinational clients, both as plaintiffs and defendants, covering a wide range of electrical and computer technologies. Specifically, he has extensive experience working on patent cases relating to financial software, medical devices, projection and display technologies, encryption and authentication protocols, and automotive technologies. He also advises on patent prosecution, trade secrets, and other IP and technology matters, particularly those that emerge from the use of AI and autonomous systems.

Representative Legal Matters

Patent Litigation

  • 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.

  • Successfully 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

  • Conducted a benchmarking survey for a global consulting company on licensing and service contract trends 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.

Professional Honors

  • Selected to The Best Lawyers in America© (2022-2023)
  • Selected to the Ones to Watch List, The Best Lawyers in America© (2021-2022)
  • Selected to the Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers (2018-2022)
  • On the Rise Award, Texas Lawyer (2019)
  • Excellence in Innovation Award, Baker McKenzie (2018)
  • 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 (2018–2020)
  • Dallas Asian American Bar Association – Board Member (2019–2020), PR Committee Co-Chair (2018–2020)
  • American Bar Association – Artificial Intelligence and Robotics Committee (2018–present)
  • Leadership Council on Legal Diversity – Law School Mentor (2014–2020)

Admissions

  • U.S. District Court, Western District of Texas~United States (2020)
  • 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)

Education

  • 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)

Languages

  • English
  • Korean
  • Contributor, “Recent Developments in Artificial Intelligence Cases,” American Bar Association – Business Law Section, June 2021

  • Speaker, “Tsai Talk: Regulating an Evolving AI Landscape,” SMU School of Law – Tsai Center for Law, Science and Innovation, March 2021

  • Guest lecturer, “AI Regulatory Trends” in University of Arkansas School of Law’s course on “Law and Technology,” December 2020

  • Guest lecturer with Brent Stewart, “AI & Innovation in Legal Practice” in University of Arkansas School of Law’s course on “Law and Technology,” October 2020

  • Co-presenter, “Innovation and the Law,” for University of Texas School of Law – IP Law organization, September 2020

  • Co-author, Governing Facial Recognition Technology, in TMT Looking Ahead, 15 March 2020