Yoon Chae

Biography

Yoon Chae is a senior associate in Baker McKenzie’s Dallas office, where he works on intellectual property and technology matters. Yoon gained valuable insights on artificial intelligence by serving as the Firm’s first Fellow at the World Economic Forum’s Centre for the Fourth Industrial Revolution, and he regularly writes and speaks about IP and regulatory issues relating to AI and autonomous systems. He is also one of the Firm’s innovation ambassadors and a member of the Dallas office’s Recruiting and Diversity & Inclusion Committees.

Practice Focus

Yoon plays critical roles in all stages of IP litigation, often as lead associate, with significant experience working on diverse issues in front of the Federal Circuit, the International Trade Commission, the Court of Federal Claims, the Patent Trial and Appeal Board, American Arbitration Association, and numerous federal district courts. 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

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 Ones to Watch List, The Best Lawyers in America© (2021)
Selected to the Texas Rising Star List for Intellectual Property Litigation, Texas Super Lawyers (2018–2021)
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 - 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. 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

Author, “U.S. AI Regulation Guide: Legislative Overview and Practical Considerations,” The Journal of Robotics, Artificial Intelligence & Law, December 2019
Panelist, “Is Doubling Down on Artificial Intelligence and Big Data Patents a Safe Bet or a Gamble?” in California Lawyers Association’s 44th Annual Meeting of the IP Law Section – “IP Without Borders,” November 2019
Co-author, “AI Bill Emphasizes Transparency and Consumer Control,” Law360, November 2019
Guest lecturer, “AI Regulatory Trends” in University of Arkansas School of Law’s course on “A.I. and the Law,” October 2019
Panelist, “Digital Partnership in International Markets: Key Issues and Trends,” in American Bar Association’s 42nd Annual Forum on Franchising, October 2019