Photo, Yoon Chae

Yoon Chae

Associate
Baker & McKenzie LLP

Biography

Yoon Chae is a senior associate in Baker McKenzie’s Dallas office, where he works on intellectual property and technology matters, with a focus on patent litigation. He served as the firm’s first Fellow at the World Economic Forum’s Centre for the Fourth Industrial Revolution, where he researched diverse policy issues arising from artificial intelligence. He regularly writes and speaks about IP and regulatory issues relating to AI and autonomous systems. He serves as an Innovation Champion and as a member of the Dallas office’s Recruiting Committee, and is also 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.

Practice Focus

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.

Representative Legal Matters

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.

Professional Honors

  • 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)

Professional Associations and Memberships

  • 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)

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
  • Panelist, “Digital Partnership in International Markets: Key Issues and Trends,” in American Bar Association’s 42nd Annual Forum on Franchising, October 2019

  • Guest lecturer, “AI in the Practice of Law,” in University of Arkansas School of Law’s course on “A.I. and the Law”, September 2019

  • Panelist, “Networking,” in SMU Dedman School of Law’s Diversity Orientation, August 2019

  • Co-author, “Recent Trends in California’s AI Regulation Efforts,” Law360, July 2019

  • Panelist, “Identifying Bias in Artificial Intelligence,” in event co-sponsored by Baker McKenzie, Latinas in Tech, APABA, and California Minority Counsel Program, June 2019