John Flaim is Chambers rated and leads the Global Intellectual Property Practice Group of Baker McKenzie. His practice encompasses intellectual property litigation, counseling, licensing and prosecution matters. He has significant experience in patent litigation infringement actions in federal district courts and before the US International Trade Commission.
Mr. Flaim's practice focuses on intellectual property litigation. He has significant experience representing multinational clients, as both plaintiffs and defendants, in patent litigations in District Courts throughout the United States and before the International Trade Commission in Washington, DC. Many of the patents litigated by Mr. Flaim 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, Mr. Flaim counsels clients regarding the infringement, validity and enforceability of patents, including the preparation of formal opinions concerning those issues. Mr. Flaim 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 are valid and infringed by all five of the accused products and that the domestic industry requirement has been satisfied, and providing for issuance of a limited exclusion and cease-and-desist orders with a 100% bond against respondents.
- Represented a major US location services company in a patent infringement litigation pending in the Eastern District of Virginia, resulting in invalidation of all asserted patent claims.
- Represented a major US bank in an arbitration proceeding involving claims of fraud and theft of trade secrets pending in Minneapolis, Minnesota, 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.
- Represented a major US financial software provider in a patent infringement case in the Middle District of Florida, resulting in invalidation of the asserted claims through summary judgment.
- Represented a major US welding equipment manufacturer in a patent infringement case in the Eastern District of Texas, resulting in a favorable settlement after presenting strong invalidity positions.
- Represented a major Japanese phone manufacturer in a multi-patent infringement case in the Northern District of Texas, resulting in invalidation of two of the three asserted patents at the USPTO.
- Represented a major US based provider of banking and payments technology in defense of multiple patent infringement litigation throughout the US, including the Eastern District of Texas.
- Recognized as a "Leader in Their Field" for Intellectual Property, Chambers USA, 2010-2016
- Recognized as an "IP Star," Managing Intellectual Property, 2013-2016
- Recognized for Patents and Trademarks, World Intellectual Property Review, 2015-2016
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
- 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)
- St. John's University (J.D. Honors) (1992)
- Manhattan College (B.S. Electrical Engineering magna cum laude) (1989)
Baker & McKenzie LLP is a Limited Liability Partnership organized under the laws of the State of Illinois (USA) and is a member of Baker & McKenzie International, a Verein organized under the laws of Switzerland.