Eric Hall
Of Counsel
Norton Rose Fulbright US LLP
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Biography
Dr. Eric Hall's experience in telecommunications technology spans over 30 years. Since joining the Houston office in 1999, his practice has focused on patent law and communication technology issues, including patent litigation, prosecution, licensing, and transactions.
He has authored or co-authored dozens of engineering and mathematics publications as well as a book on probability theory published by Oxford University Press. Additionally, Dr. Hall was an assistant professor in Southern Methodist University's Electrical Engineering Department and a faculty fellow at the Johnson Space Center.
Dr. Hall has represented clients in the wireless, media, software, and industrial technology industries. Recent clients include several telecommunications companies, a manufacturer of LCD displays, a national insurance company, a regional bank, and a leading provider of fiber-based communication services.
Professional experience
Collapse allJD, High Honors, The University of Texas Law School, 1999
Ph.D, Electrical Engineering, The University of Texas, 1989
MS, Electrical Engineering, The University of Texas, 1986
BS, cum laude, Electrical Engineering, Rice University, 1985
While attending The University of Texas School of Law, Eric was a member of the Chancellors and the Order of the Coif.
He was admitted to practice law in Texas in 1999. He is also registered to practice before the United States Patent & Trademark Office and admitted to practice before the Federal Circuit and the United States District Court for the Southern, Eastern and Western Districts of Texas.
- Texas State Bar
- US Patent and Trademark Attorney
- Represented a major mobile device chip provider in defending a seven-patent investigation brought at the International Trade Commission. The Complainant alleged that the seven patents covered various aspects of graphical processing units (GPUs) contained within accused smartphones. After accelerated discovery and a multi-day evidentiary hearing, the ALJ determined that no violation of section 337 had been established. Over Complainant's objections, the full International Trade Commission declined to review the ALJ's initial determination of no violation. Complainant appealed to the Federal Circuit, but subsequently dismissed the appeal as well as a parallel district court action.
- Our client, a leading provider of fiber-based communications, was sued for patent infringement in the Eastern District of Virginia; the end of discovery was set less than 3 months after the initial pre-trial conference and less than 5 months after the case was filed; we worked with the client to produce over one million pages of documents at minimal cost to the client and within the Court's schedule and aggressively asserted non-infringement positions in interrogatory responses; after convincing the plaintiff that there was no infringement, the case was dismissed as the expert report deadline approached.
- Defended a large manufacturer of LCD displays in a patent litigation suit filed in the Eastern District of Texas; we led the joint defense group during both claim construction and summary judgment and obtained a summary judgment of non-infringement; the case later settled while on appeal.
- Telecommunications company in a patent infringement action filed in the Eastern District of Texas; client asserted that the defendants' switches and routers infringed its patent; after a jury trial against the only non-settling defendant, a substantial verdict was awarded in favor of our client and the parties settled.
- Wireless technology company in a patent infringement action filed in the Eastern District of Texas; client asserted that the defendant's digital wireless infrastructure equipment infringed its patents; obtained a favorable Markman ruling and the case favorably settled on eve of trial.
- Wireless technology company in a long-standing patent infringement dispute; defendant sought a declaratory judgment that its digital wireless phones and infrastructure equipment did not infringe our client's patents and that same were invalid and unenforceable; following the court's Markman ruling and denial of various summary judgment motions, defendant agreed to pay our client a lump sum, a four year annual fee, and a running royalty.
- Telecommunications company accused of infringing four patents concerning streaming Internet technology and satellite delivery technology; following the filing of a motion for summary judgment of invalidity, the matter was favorably settled.
- Leading television manufacturer in a patent infringement action brought against the television industry in the Eastern District of Texas; case was favorably settled on the eve of trial pursuant to the terms of a confidential license agreement.
- Patent prosecution in the areas of ground penetrating sensors, advanced imaging and visualization software, time-of-flight mass spectrometers and RFID technology.
- Large media company in one of the first Internet domain name disputes ever filed with the National Arbitration Forum; Forum awarded the disputed domain name to our client.
- Notable practitioner: Texas, Managing Intellectual Property, 2013 - 2016, 2018 - 2021, 2023 - 2024
- Texas Super Lawyer, Thomson Reuters, 2010 - 2015, 2017, 2019 - 2020
- Legal 500 US, recommended lawyer, Intellectual property - Patent litigation - full coverage, The Legal 500, 2016
- Legal 500 US, The Legal 500, 2011, 2013
- The Best Lawyers in America, Best Lawyers, 2014 – 2021
- The Best Lawyers in America, Litigation – Intellectual Property, Best Lawyers, 2021 - 2025
- The Best Lawyers in America, Litigation – Patent, Best Lawyers, 2014 - 2025
- Chambers USA, Texas: Intellectual Property, Chambers and Partners, 2010 – 2011, 2013 – 2023
- Texas Rising Star, Intellectual Property Litigation, Thomson Reuters, 2007, 2009, 2016
- IAM Patent 1000, Litigation, Law Business Research, Ltd., 2020 – 2022
- Outstanding Electrical Engineering Faculty Award, Southern Methodist University
- Summer Faculty Fellow, NASA Johnson Space Center
- Microelectronics and Computer Technology Award for Research Excellence, The University of Texas at Austin
- Microelectronics and Computer Development Fellowship, The University of Texas at Austin
- National Merit Scholarship, Rice University
Dr. Hall is the author or co-author of more than 30 publications, including articles in The Proceedings of the American Mathematical Society, IEEE Transactions on Information Theory, IEEE Transactions on Circuits and Systems, IEEE Transactions on Acoustics, Speech and Signal Processing, Statistics and Probability Letters, and Mathematical Problems in Engineering. He has presented papers at numerous technical conferences in the United States and Canada.
Noted publications include:
- Contributor, Annual Review of Intellectual Property Law Developments, ABA Section of Intellectual Property Law, 2006 - 2008
- Advisor, Report of the Task Force on the Future of the Legal Profession, New York State Bar Association
- "Strategies for the America Invents Act," Fulbright & Jaworski L.L.P. - Intellectual Property & Technology Web Seminar, February 23, 2012
- Panelist, "Fulbright Forum: The Rise of Multi-Defendant Patent Litigation: A Defendant's Perspective," Fulbright & Jaworski L.L.P. - Intellectual Property & Technology Web Seminar, February 1, 2011
- "Patent Return Program: Developing a Process to Generate a Return on a Patent Portfolio Investment," Fulbright & Jaworski L.L.P. Client Seminar, Sunnyvale, California, March 2011
- "A Note on the Convergence of Quantizers," Mathematical Problems in Engineering
- "Some Aspects of Fusion in Estimation Theory," Selected Papers on Sensor and Data Fusion, SPIE Milestone Series
- Counterexamples in Probability and Real Analysis, Oxford University Press, New York, 1993
- "A Result on Multidimensional Quantization Theory," Proceedings of the American Mathematical Society
- "On Optimal Estimation with Respect to a Large Family of Cost Functions," IEEE Transactions on Information Theory
- "Some Aspects of Fusion in Estimation Theory" IEEE Transactions on Information Theory
- "The Rise of Multi-Defendant Patent Litigation: A Defendant's Perspective," Fulbright Forum Web Seminar
- "On the Modeling of Quantization Effects via Points of Accuracy," Proceedings of the 33rd IEEE Conference on Decision and Control, Orlando
- "An Analysis of the Convergence Problems in Kalman Filtering that Arise from Numerical Effects," Proceedings of the 33rd Midwest Symposium on Circuits and Systems, Calgary, Alberta
- "Some Comments on Importance Sampling," Proceedings of the 22nd Annual Conference on Information Sciences and Systems, Princeton, New Jersey
- State Bar of Texas
- Houston Bar Association
- Katy Bar Association
- Houston Intellectual Property Lawyers Association (HIPLA)
- American Intellectual Property Lawyers Association (AIPLA)
- Senior Member, Institute of Electrical and Electronic Engineers (IEEE)
- Sustaining Life Fellow, Texas Bar Foundation
- Benefactor, Friends of Fondren Library, Rice University
News
Global IP group recognized by 2023 Managing Intellectual Property
October 05, 2023