Photo, Yoon Chae

Yoon Chae

Associate
Baker & McKenzie LLP

Biography

Yoon Chae is a senior associate in Baker McKenzie’s Intellectual Property, Technology, and Communications Practice Group, where he works on various IP litigation and patent prosecution matters. He focuses on patent litigation and has experience at the Federal Circuit, International Trade Commission, Court of Federal Claims, Patent Trial and Appeal Board, and various federal district courts. Yoon also served as the Firm’s first Fellow at the World Economic Forum’s Centre for the Fourth Industrial Revolution in San Francisco in 2017-2018, where he researched ways to maximize societal benefits of artificial intelligence and other emerging technologies. He was recently selected by the Firm’s global Innovation Committee—and is currently serving as—the Innovation Champion for the Dallas office to help drive and coordinate with other Innovation Ambassadors to promote the Firm’s innovation initiatives. He is also a member of the Dallas office’s Recruiting Committee and is an active contributor to the Firm’s diversity and inclusion efforts. Yoon was selected to the 2018 Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers, and is a recent recipient of the Firm’s 2018 Excellence in Innovation award.

Practice Focus

Yoon represents both plaintiffs and defendants on all stages of patent litigation, including pre-filing investigation, fact development, discovery and motion practice, working with experts, infringement and invalidity analyses, claim construction and summary judgment briefing, and participating in depositions and trials. His practice also includes preparing and prosecuting patents in the US and various other countries. He also regularly writes and presents on legal issues arising from artificial intelligence and blockchain technologies.

Representative Legal Matters

  • Representing numerous financial institutions that were sued in the Eastern District of Texas, for which a stay was successfully obtained pending CBM review prior to any institution decision by the PTAB.
  • Secured a win for leading 3D display provider as complainant against its competitor at the US International Trade Commission, which resulted in a final determination finding (1) that all asserted claims of three patents-in-suit are valid and infringed by all five of the accused products and (2) that the domestic industry requirement has been satisfied, resulting in issuance of a limited exclusion order and cease-and-desist orders with a 100% bond against respondents.
  • Secured a win for major US welding equipment manufacturer as plaintiff against its competitor in a multi-patent infringement case at the Eastern District of Texas, which resulted in settlement payment and consent judgment with a three-year injunction against defendants’ accused products.
  • Represented major Japanese phone manufacturer as defendant in the Northern District of Texas, petitioner in front of the PTAB, and appellee at the Federal Circuit. Two of the three asserted patents were successfully invalidated at the PTAB based on 35 U.S.C. § 103, and this decision was affirmed by the Federal Circuit.
  • Defended major blow-molding plastic table manufacturer in a multi-patent infringement proceeding and hearing on the merits at the American Arbitration Association’s International Centre for Dispute Resolution.
  • Defended major US financial software provider in a patent infringement case at the Middle District of Florida, which concluded after invalidating both asserted patents with a motion for summary judgment of invalidity based on 35 U.S.C. § 101.
  • Defended major US financial software provider in a patent infringement case at the Eastern District of Texas, which concluded after invalidation of both asserted patents at the PTAB based on 35 U.S.C. § 101.
  • Defended major Korean cellular phone manufacturer in a patent infringement case at the District of Nevada, which resulted in favorable settlement after the court granted a precedent-setting motion to transfer venue.
  • Defended major US welding equipment manufacturer in a patent infringement case at the Eastern District of Texas, which resulted in favorable settlement after presenting strong invalidity positions based on based on 35 U.S.C. §§ 102 and 103.

Professional Honors

  • 2018 Excellence in Innovation Award, Baker McKenzie
  • Selected to the 2018 Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers
  • 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
  • American Bar Association - Artificial Intelligence and Robotics Committee
  • Dallas Asian American Bar Association - Diversity Committee
  • PTAB Bar Association - Mentorship Program
  • Leadership Council on Legal Diversity - Law School Mentor

Admissions

  • 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