Yoon Chae

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. He has litigated patents covering a wide range of technologies, such as financial products, medical devices, electronic circuits, projection and display technologies, encryption and authentication protocols, engine control, mobile applications, and telecommunication systems. He also advises on patent prosecution, trade secrets, and other IP and technology issues, with a focus on artificial intelligence.

Patent Litigation

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.

• 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.

• On the Rise, Texas Lawyer, 2019
• 2018 Excellence in Innovation Award, Baker McKenzie
• Selected to the Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers, 2018-2020
• Certificate of Merit for International Corporate Governance, University of Michigan Law School (2011)
• Dean’s Scholarship, University of Michigan Law School (2009-2012)

• The Honorable Barbara M. G. Lynn American Inn of Court – Associate (2018 - present)
• Dallas Asian American Bar Association – Board Member (2019 – present), 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)