John Flaim

John Flaim

Partner
Baker & McKenzie LLP

Biography

John is a member of the Firm's Global Intellectual Property Group, where he focuses on intellectual property litigation, counseling, licensing, and portfolio management. He has extensive experience handling patent infringement litigation in federal district courts and proceedings before the US International Trade Commission.

John is continuously ranked in the Intellectual Property realm by Chambers USA, Managing IP, World IP Review, World Trademark Review, IAM 1000 and Best Lawyers. In a Chambers 2023 interview, one client highlighted John "knows exactly which disputes are better settled outside of the courtroom and has a keen sense for when aggression is the best play." Furthermore, John's exceptional capabilities have earned him a nomination as a Thomson Reuter Stand Out Lawyer in 2024. Clients commended him as an "excellent lawyer" with a "deep expertise in intellectual property and successful leadership of significant IP litigation."

Practice Focus

John 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. He 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 Honors

  • Recommended in Patent, IAM Patent 1000, 2024
  • Selected as a “Patent Star,” Managing IP, 2023-2024
  • Ranked in Intellectual Property, Chambers USA, 2021- 2024
  • Ranked in Litigation, IAM Patent 1000, 2021-2023
  • Shortlisted as “Litigator of the Year in Texas,” Managing IP, 2023
  • Recognized in Best Lawyers for Litigation - IP, Best Lawyers, 2022-2023
  • Recognized in Trademark and Patent, WIPR Leaders, 2022
  • Recognized as a WIPR Leader, WIPR Leaders, 2022

Professional Associations and Memberships

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

Admissions

  • U.S. Court of Federal Claims~United States (2021)
  • 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., with honors) (1992)
  • Manhattan College (B.E. Electrical Engineering, magna cum laude) (1989)

Languages

  • English
  • Italian