Photo, Yoon Chae

Yoon Chae

Associate
Baker & McKenzie LLP

Biography

Yoon Chae is a senior associate in Baker McKenzie’s Dallas office, where he advises on Intellectual Property matters, with a focus on patent litigation. He has experience 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.

Yoon regularly writes and talks about patent law and its interplay with emerging technologies, such as artificial intelligence, blockchain, and autonomous vehicles. He 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 legal and ethical implications of AI and other cutting-edge technologies. He recently received the Firm’s 2018 Excellence in Innovation award and was selected as an Innovation Champion for the Dallas office. He is also a member of the Dallas office’s Recruiting Committee and an active contributor to the Firm’s diversity and inclusion efforts. He first joined the Firm as a summer associate (Dallas) and an international clerk (Hong Kong) in 2011.

Practice Focus

Yoon represents plaintiffs and defendants on all stages of patent litigation, often as lead associate, with substantial experience on claim construction, infringement, invalidity, damages, injunctions, antitrust, and venue, among others, involving a variety of technologies, such as electronic circuits, advanced software and business methods, financial products, projection and display technology, smart cards, consumer products, and communication systems. His practice also includes patent prosecution and other types of intellectual property litigation.

Representative Legal Matters

  • Secured a win for a leading 3D display provider as complainant against its competitor at the ITC, obtaining a 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, which resulted 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, petitioner in front of the PTAB, and appellee at the Federal Circuit, invalidating two of the three patents asserted by the plaintiff based on 35 U.S.C. § 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.
  • Effectively defended a major financial software provider in a patent infringement case at the Middle District of Florida by invalidating both asserted patents with a motion for summary judgment of invalidity based on 35 U.S.C. § 101.
  • Defended a major financial software provider and numerous financial institutions 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.
  • Secured a favorable settlement for a major cellular phone manufacturer that was sued for patent infringement in the District of Nevada after succeeding on a precedent-setting motion to transfer venue.

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
  • 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