Michelle K. Holoubek is a director in Sterne Kessler’s Electronics Practice Group. With a background in relativistic physics and computational modeling, Michelle combines her legal expertise and technical acumen to guide clients through the evolving artificial intelligence (AI)/deep-learning landscape. She is well-versed in protecting software-based innovation through holistic complements of patents, trade secrets, and copyrights, as well as securing freedom to operate for startups and Fortune 100 companies alike. Having handled hundreds of computational applications at the USPTO, patent-eligible subject matter (aka “101”) is Michelle’s special area of expertise.

Michelle brings an interdisciplinary approach to our digital healthcare and bioinformatics practice, focusing on the intersection between big data analytics and the life sciences ecosystem. In addition to handling deep learning AI models for biomics/genomics, diagnostics, and drug discovery, she has practiced in the biological sample analysis and detection space since the early 2000s, including microfluidics, fluorescence-based imaging systems, and next-gen sequencing. Michelle is also a strategic IP partner for financial technology (“fintech”) clients, whose use of data analytics and software within a highly regulated environment requires comprehensive IP solutions.

In addition to tailored IP counseling and patent portfolio development, she has been lead counsel in inter partes reviews (IPRs), post-grant reviews (PGRs), and reexams for both patent owners and challengers. She has also provided infringement and invalidity analysis in opinions for a variety of technologies, including biotech, fintech, and mechanical. Michelle was named as one of the inaugural Top 50 Women in PTAB Trials by the PTAB Bar Association.

Michelle is a contributing author of Patent Office Litigation, Second Edition, published in 2017, and the two-volume set Patent Office Litigation, published in 2012 by Thomson Reuters Westlaw. She is also a contributing author of the chapter on “Patentability Challenges at the U.S. Patent and Trademark Office” in the ABA’s Patent Litigation Strategies Handbook, 4th Edition (2015), and routinely speaks and publishes on AI and software patentability and eligibility.

Prior to joining Sterne Kessler, Michelle studied physics with a concentration in astronomy at Louisiana State University. She focused her research on gravitational wave detection, working on both LSU’s resonant bar detector ALLEGRO and the Laser Interferometer Gravitational-Wave Observatory (LIGO). While at LSU, she also assisted in the development of software simulation and analysis programs for laboratory and educational use, and participated in a summer research fellowship for LIGO at the California Institute of Technology. Michelle currently serves on the Executive Committee for LSU’s College of Science, and is a member of the LSU Foundation’s National Board. Michelle has her J.D. from George Mason University School of Law.

  • PTAB Bar Association, “Top 50 Women in PTAB Trials” (2021 & 2019)
  • Profiles in Diversity Journal, “Women Worth Watching® in STEM” (2020)

  • J.D., George Mason University Antonin Scalia Law School
  • B.S., Physics, Louisiana State University

  • District of Columbia
  • Supreme Court of the United States
  • U.S. Court of Appeals for the Federal Circuit
  • United States Patent & Trademark Office
  • Virginia

  • American Bar Association, IP Section
  • American Intellectual Property Law Association

Speaking Engagement

Industry Review 2022: Software and AI

Virtual, December 13, 2022 9:00 AM - 10:15 AM EST

Speaking Engagement

The Keys to Effective AI Patent Portfolio Monetization

Munich, Germany, The Charles Hotel, November 3, 2022 1:45 PM - 2:45 PM EST

Speaking Engagement

Phoenix Issue VI

Virtual, March 18, 2022 3:30 PM - 5:00 PM EST

Speaking Engagement

Navigating AI in IP

Virtual, September 23, 2021 9:50 AM - 10:35 AM EST

Speaking Engagement

Issues of Preparing and Prosecuting AI-Based Applications

Virtual, March 23, 2021 3:30 PM - 4:30 PM EST

Speaking Engagement

Future Forecast: Appreciating the Symbiosis Between IP and Emerging Technologies

Virtual, March 9, 2021 3:00 PM - 3:45 PM EST

Speaking Engagement

Responding to the AI Revolution: How is the Legal Practice Evolving?

Virtual, October 7, 2020 11:45 AM - 12:45 PM EST

Webinar

Intellectual Property for Deep Tech

July 30, 2020 5:00 PM - 7:30 PM EST

Webinar

Section 101: Revised USPTO Guidance on Patent Eligibility

January 23, 2019 2:00 PM - 3:00 PM EST

Speaking Engagement

Software IP 2018

San Francisco, CA, October 30, 2018

Speaking Engagement

Patenting Artificial Intelligence Conference

Munich, DE, May 30, 2018

Speaking Engagement

USPTO Post-Grant Patent Trials 2018: Change & Recalibration

San Francisco, CA, May 15, 2018 12:00 PM - 8:00 PM EST

Speaking Engagement

Round Table on Artificial Intelligence

Munich, DE, European Patent Office, March 23, 2018

Speaking Engagement

IP Software Summit 2017

San Francisco, CA, May 18, 2017

DC Bar Panel Luncheon

July 22, 2014

Related News & Insights

From Michelle K. Holoubek

In the News

August 24, 2023

How Firms Can Help Medical Device In-House With Patent Struggles

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December 21, 2022

Are Winds of Change Finally Blowing on Patent Eligibility?

Law360

Articles

June 27, 2022

Insight on U.S. Subject-Matter Eligibility

Westlaw Today Michelle K. Holoubek, Todd M. Hopfinger

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January 28, 2022

PTAB Clears Nasdaq To Seek Director Review of Axed IP

Law360

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December 9, 2021

Pharma Turns to Trade Secrets and Open Source for Software

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Articles

October 22, 2021

Reviewing Patent Eligibility in Biotechnology: Recent Developments in Patenting Diagnostic Methods

Westlaw Today Gaby L. Longsworth, Ph.D., Michelle K. Holoubek

Client Alert

July 7, 2020

IP Hot Topic: Patent Prosecution Tool Kit

Carla Ji-Eun Kim

Reports

July 7, 2020

2020 Patent Prosecution Tool Kit

Sterne, Kessler, Goldstein & Fox Multiple Authors

Articles

July 7, 2020

Update on Patent Subject Matter Eligibility & Abstract Ideas

Sterne, Kessler, Goldstein & Fox Lestin L. Kenton, Jr., Michelle K. Holoubek

Client Alert

June 17, 2019

IP Hot Topic: The Draft Subject Matter Eligibility Bill: A Work In Progress

Michelle K. Holoubek

Articles

April 30, 2019

Three Takeaways from Congress’s Proposed §101 Framework

Sterne, Kessler, Goldstein & Fox, P.L.L.C. Michelle K. Holoubek

Newsletter

February 14, 2019

Global Patent Prosecution Newsletter - February 2019

Lestin L. Kenton, Jr., Michelle K. Holoubek

Articles

February 14, 2019

Practice Tips: USPTO’s New Guidance on Patent Eligibility

Lestin L. Kenton, Jr., Michelle K. Holoubek

Publication

January 25, 2019

Industry Voices - Healthcare Industries are Underinvesting in AI Patenting

FierceHealthcare Michelle K. Holoubek

Articles

January 8, 2019

5 Things To Know About USPTO’s New Eligibility Guidance

Law360 Lestin L. Kenton, Jr., Michelle K. Holoubek

In the News

December 21, 2018

10 Most-Read IP Law360 Guests of 2018

Law360

In the News

September 25, 2018

USPTO Patent-Eligibility Revamp May Face Court Skepticism

Law360

In the News

August 7, 2018

Apple, Fitbit Get Heart Sensor Patent Slashed At PTAB

Law360

Articles

April 20, 2018

3 Things To Know About USPTO's New Memo On Eligibility

Law360 Lestin L. Kenton, Jr., Michelle K. Holoubek

Reports

June 28, 2017

2017 Patent Prosecution Tool Kit

Multiple Authors

In the News

March 16, 2017

Versata Patent Targeted By Ford Ineligible For CBM Review

Law360

Books and Chapters

February 17, 2017

Patent Office Litigation - Second Edition 2017

Thomson Reuters Westlaw Multiple Authors

In the News

December 8, 2016

The Biggest Patent Cases Of 2016

Law360

Articles

November 21, 2016

Amdocs: An 'I Know It When I See It' Test For Abstract Ideas

Law360 Salvador M. Bezos, Michelle K. Holoubek

Articles

September 25, 2016

Is it Time To Amend 101?

IP Watchdog Jorge A. Goldstein, Ph.D., Michelle K. Holoubek

Articles

September 16, 2016

McRo Syncs Automation Software With Patent Eligibility

Michelle K. Holoubek

In the News

September 14, 2016

Fed. Circ. Lip-Sync Patent Save Clarifies Alice For Software IP

Law360

In the News

September 13, 2016

The AIA At 5: A New World Of Patent Challenges

Law360

In the News

September 12, 2016

The AIA At 5: New Rules Bring New Patent Filing Strategies

Law360

Articles

May 25, 2016

The Time Has Come to Amend 35 U.S.C. § 101

American Intellectual Property Law Association Quarterly Journal Jorge A. Goldstein, Ph.D., Michelle K. Holoubek

Client Alert

May 13, 2016

CAFC Finds Software Patent Eligible

Michelle K. Holoubek, Lestin L. Kenton, Jr.

In the News

May 6, 2016

USPTO Patent Guidelines Give Hope To Life Sciences Cos.

Law360

In the News

May 5, 2016

USPTO Calls For Clearer Alice Rejections, Aiding Applicants

Law360

In the News

April 27, 2016

Eye-Sensor Patent Owner Slams Samsung Over Late AIA Move

Law360

In the News

February 12, 2016

Sterne Kessler Shares the Love for Valentine's Day

Bisnow

In the News

December 24, 2015

Patent Cases To Watch In 2016

Law360

Articles

December 17, 2015

A Means-Plus-Function Looking-Glass into Statutory Subject Matter Post-Alice

Bloomberg BNA: Patent, Trademark & Copyright Journal Michelle K. Holoubek, Donald J. Featherstone

Articles

August 31, 2015

5 Observations on USPTO's Updated 101 Guidelines

Law360 Michelle K. Holoubek

In the News

July 31, 2015

USPTO Patent Guidance Has Attorneys Fearing Wave of Rejections

Law360

Client Alert

July 10, 2015

Federal Circuit Finds CBM Eligibility Reviewable on Appeal

Michelle K. Holoubek

Articles

June 16, 2015

Digital Health: Issues of Patentability

Life Science Intellectual Property Review Marsha Rose Gillentine, Ph.D., Michelle K. Holoubek

Client Alert

January 22, 2015

Can Digital Healthcare Innovation Be Patented?

Michelle K. Holoubek

In the News

December 16, 2014

The Future of CBMs - Michelle Holoubek Shares Insights

IPPro The Internet

Client Alert

December 15, 2014

USPTO Issues New Subject Matter Eligibility Examination Interim Guidelines –Abstract Idea Guidance

Michelle K. Holoubek, Lestin L. Kenton, Jr.

Articles

December 9, 2014

DDR Holdings – A Beacon of Hope for Software Patents?

Law360 Michelle K. Holoubek, Lestin L. Kenton, Jr.

In the News

August 18, 2014

Google, Apple Get Mapping Patent Nixed in AIA Review

Law360

In the News

June 19, 2014

Lawyers Weigh In On High Court's Software Patent Ruling

Law360

Articles

June 1, 2014

Observations on Covered Business Method Patent Review

World Intellectual Property Review Michelle K. Holoubek

In the News

February 13, 2014

Update Report On Covered Business Method Review

Today's General Counsel

In the News

February 7, 2014

Late AIA Review Settlements Dangerous For Patent Owners

Law360

Reports

January 30, 2014

12 Observations on Covered Business Method Review

Michelle K. Holoubek

Books and Chapters

January 1, 2012

Patent Office Litigation

Thomson Reuters Westlaw Multiple Authors