Photo, John G. Flaim

John G. Flaim

Partner
Baker & McKenzie LLP

Biography

John Flaim is a member of the Firm’s Global Intellectual Property Group. His practice encompasses intellectual property litigation, counseling, licensing and portfolio matters. He has significant experience in patent litigation infringement actions in federal district courts and before the US International Trade Commission.

John recently ended an eight year term as Chair of the Firm’s Global Intellectual Property Practice Group. He is ranked by Chambers USA 2018 and described as "very intelligent and knows the subject matter and understands it. He's good at being able to deal with opposing counsel." John was also selected as an “IP Star” by Managing IP in 2018, as well as a “Leader” in patents and trademarks by World IP Review.

Practice Focus

John's practice focuses on intellectual property litigation. He has significant experience representing multinational clients, as both plaintiffs and defendants, in patent litigations throughout US District Courts and before the US International Trade Commission. Many of the patents litigated by John cover electrical and computer related technologies, such as software, voice messaging, semiconductor processing and circuitry, smart cards, wireless and wireline telecommunication systems, and digital image editing. In the course of his practice, John counsels clients regarding the infringement, validity and enforceability of patents, including the preparation of formal opinions concerning those issues. John is also experienced in licensing, acquisition, development, and co-development transactions and agreements involving various technologies. In addition, he also advises clients on copyright, patent and trademark matters, including the protection of intellectual property assets and infringement assessments.

Representative Legal Matters

  • Secured a win for a leading 3D display provider as complainant at the US International Trade Commission, resulting in a final determination that all asserted claims of three patents-in-suit were valid and infringed by all five of the accused products, and providing for issuance of exclusion and cease-and-desist orders with a 100% bond against respondents.

  • Defended a major US location services company in a patent infringement litigation pending in the Eastern District of Virginia, resulting in invalidation of all five asserted patent claims.

  • Represented a major US bank in an arbitration proceeding involving theft of trade secrets, finding that the bank's trade secrets had been misappropriated and awarding damages.

  • Represented a multinational game developer in a copyright infringement and trade secret misappropriation litigation in the Northern District of California, resulting in a favorable settlement after a preliminary injunction hearing finding a likelihood of success on the merits.

  • Secured an injunction for a major US welding equipment manufacturer against a main competitor in a patent infringement case in the Eastern District of Texas.

  • Represented a major US bank and a major US provider of banking and payments technology in defense of multiple patent infringement litigation throughout the US.

Professional Associations and Memberships

  • Intellectual Property Owners Association
  • International Trade Commission Trial Lawyers Association
  • International Trademark Association (INTA)
  • Dallas/Fort Worth Intellectual Property Law Association
  • State Bar of Texas

Admissions

  • U.S. District Court, Western District of Texas~United States (1996)
  • U.S. District Court, Northern District of Texas~United States (1996)
  • U.S. Court of Appeals, Federal Circuit~United States (1995)
  • U.S. District Court, Eastern District of Texas~United States (1995)
  • U.S. District Court, Northern District of California~United States (1994)
  • Texas~United States (1993)
  • New York~United States (1993)
  • U.S. Patent & Trademark Office~United States (1993)

Education

  • St. John's University (J.D. Honors) (1992)
  • Manhattan College (B.S. Electrical Engineering magna cum laude) (1989)

Languages

  • English
  • Italian