Michelle Jacobson Eber

Senior Associate



P: +1.713.229.1223 F: +1.713.229.7923
Michelle Jacobson Eber Photo

Michelle represents high-tech, telecommunication, and software companies to protect their intellectual property and defend against claims of infringement. She also represents companies in software licensing and other aspects of technology transactions.

Michelle's litigation experience has involved a variety of technologies, including telecommunications systems, data and video compression systems, and a variety of computer hardware and software technologies. She has experience at all stages of the lawsuit from the initial pleadings to trial.

Michelle is also licensed to practice before the United States Patent and Trademark Office. Michelle has conducted a number of proceedings before the Patent Trial and Appeal Board, including inter partes reviews. She has experience preparing various types of Patent Office submissions, including patent applications and responses to Office Actions, in particular for oilfield services technologies.

In addition, Michelle has experience assisting companies in intellectual property transactions and licensing negotiations. She has experience in patent portfolio evaluation and has advised clients in negotiations regarding potential license and other technology transfer arrangements. Michelle has also provided formal opinions concerning potential infringement, validity and enforceability of client and third-party intellectual property, including studying potential issues raised by new product launches. She has also prepared agreements relating to the transfer of intellectual property in the context of various mergers, acquisitions, and employment agreements.

Related Experience

  • TeleSign Corp. v. Twilio, Inc. (N.D. Cal.) – Invalidated all four asserted patents under § 101, received judgment in favor of Twilio under Rule 12(c). Competitor suit involving two-factor authentication technology.
  • Realtime Adaptive Streaming LLC v. ARRIS Solutions, Inc. (D. Colo.) – Lead associate defending ARRIS in a two-patent case relating to video compression. After a favorable claim construction ruling and institutions of IPRs on both asserted patents, the district court granted a stay. The IPRs are pending.
  • Intellectual Ventures II v. AT&T (W.D. Tex.) – Lead associate defending AT&T in a sixteen-patent case relating to DSL technology.
  • Realtime Data LLC v. Teradata Operations, Inc. (C.D. Cal.) –Transferred case from the Eastern District of Texas and received a stay in the Central District of California when the PTAB instituted several IPR petitions on the asserted patents, which relate to data compression.
  • ContentGuard Holdings, Inc. v. Amazon.com, Inc. (E.D. Tex.) – Defended Huawei in a multi-defendant case involving nine patents generally directed to digital rights management technology used on smartphones and tablets. Baker Botts also represented Samsung in the case, and, together with Google, received a non-infringement verdict that covered all of the Android Defendants. The non-infringement verdict obviated the need for a trial against Huawei.
  • Custom Media Technologies, LLC v. AT&T (D. Del) – Received dismissal of plaintiff's claims prior to a Markman hearing and only a few months after taking the case over from previous counsel.
  • Dragon IP v. Apple, Inc., et al. (D. Del) – Received favorable claim construction ruling and judgment of non-infringement on all claims, which was affirmed by the Federal Circuit on appeal.
  • Carrier Corp. v. Goodman Global et al. (D. Del.) – Overturned adverse jury verdict in post-trial motions in competitor case involving software controls for HVAC technology.
  • Realtime Data LLC v. CME Group, Inc., et al. (S.D.N.Y.) – Defended the CME Group case involving five patents directed to the use of data compression and encoding techniques in the financial services market. Received summary judgment of non-infringement in CME's favor, which was affirmed by the Federal Circuit on appeal.