Brenda Holmes focuses her practice on patent strategy and analysis for international and domestic companies. She assists clients in identifying and patenting key innovations, developing domestic and international patent strategies, and building and managing their portfolios. Ms. Holmes advises clients on potential patent infringement issues and prepares invalidity and non-infringement opinions. Ms. Holmes also represents companies in licensing negotiations, patent reissue and reexamination proceedings, and analyzes patents in litigation. Ms. Holmes has counseled clients in a wide variety of industries, including software, telecommunications, computer systems, wireless systems, signal processing, electronic commerce, and vehicle components. Prior to joining the firm, Ms. Holmes was an engineer with IBM, working in the areas of system development and memory controller chip design. Ms. Holmes was recognized as a 2008 Georgia "Super Lawyer" in Intellectual Property Law by SuperLawyers magazine and was listed in The Best Lawyers in America® for Intellectual Property Law for 2011 and 2012. She is AV® rated by Martindale-Hubbell. Professional & Community Activities American Bar Association, Member American Intellectual Property Lawyers Association, Member Japan America Society of Georgia, Member State Bar of Florida, Member State Bar of Georgia, Member Women in Technology, Vice President, Board of Directors Florida Law Review, Associate Editor Industries Technology & Software; Telecommunications Experience Patent prosecution and counseling for CardioMEMS Inc., Represents CardioMEMS, a medical device company that has developed and is commercializing a proprietary wireless sensing and communication technology for the human body. The technology platform is designed to improve the management of severe chronic cardiovascular diseases such as heart failure and aneurysms. Intellectual asset acquisitions and transactions for The Weather Channel, Represented The Weather Channel in intellectual asset acquisitions and transactions. The innovations allow it to provide targeted content to users, as well as to offer more targeted advertising opportunities to their sponsors. The firm worked closely with the company to seek patent protection for their innovations regarding the creation and delivery of content. Grandparent adoption, Represents caregivers seeking to adopt children. One of the firm's signature pro bono programs is the Grandparent Adoption Program. Dozens of lawyers have been trained to represent grandparents and other relative caregivers who step up to raise young children in their extended family when the children's parents are unable or unwilling to do so. Working in partnership with local legal aid programs, lawyers accept referrals of eligible families, and prepare and file the required documents to effect the adoption. Hundreds of children's lives have been stabilized as a result of the firm's involvement. Ronald A. Katz Technology Licensing LLP v. Cox Communications; In re Katz Interactive Call Processing Patent Litigation; Ronald A. Katz Technology Licensing LLP v. EarthLink Inc., Lead counsel on behalf of Cox Communications and EarthLink in a suit filed by Ronald A. Katz Licensing Technology in the U.S. District Court for the Eastern District of Texas. The suit claims patent infringement stemming from our clients' use of automated telephone processing systems. The action was consolidated for pre-trial proceedings with other suits brought by Katz against various other defendants in the Central District of California, with Judge Klausner presiding over discovery and other pre-trial matters.
Ronald A. Katz Tech. Licensing, LLP v. Cox Commc'ns, No. 07-2299 (E.D. Tex. filed April 6, 2007); In re Katz Interactive Call Processing Patent Litig., No. 07-01816 (E.D. Tex. filed July 7, 2008) and Ronald A. Katz Tech. Licensing, LLP v. EarthLink, Inc., No. 07-2235, No. 07-2299 (E.D. Tex. filed April 9, 2007); In re Katz Interactive Call Processing Patent Litig., No. 07-01816 (E.D. Tex. filed July 7, 2008). Patent portfolio for technology company that optimizes Internet routing, Represents a company that develops technology for optimizing routing and content delivery across the Internet to implement a strategy for managing and growing its patent portfolio. Worked closely with the key technical and business personnel of the company to develop strategy. Obtained a favorable decision which allowed claims key to protecting the company's technology from the Board of Patent Appeals and Interferences (BPAI). During the hearing, the team successfully overcame the rejections made by the Examiner, as well as additional grounds raised for the first time by the Board. Patent counseling for one of the world's leading providers of lighting fixtures, Represents one of the world's leading providers of lighting fixtures and related products and services by reviewing and assessing the strength of patents owned by target companies that our client considers investing in or purchasing. Our client's primary motivation is ensuring its ability to market products it considers vital to pursuit of its business plans. Because we understand both the products and the plans, instead of an exhaustive review of all patents owned by a target company, we are able quickly to identify the key patents that can potentially impact our client's core business and devote the majority of our time on a diligence project analyzing those patents. This more cost-effective, streamlined approach, provides our client with the information it needs to make business decisions. Patent prosecution and licensing matters for Emageon Inc., Represented Emageon Inc., a publicly traded provider of healthcare-related, dynamic user interface technologies and software for managing medical images for healthcare entities, in connection with patent and licensing matters. The firm analyzed a number of third party patents to provide this client with clearance and patentability opinions. The analysis focused on determining whether there were any patents that would limit Emageon's proposed products or that would impact Emageon's ability to obtain patent protection. Several years later, a third party contacted Emageon and suggested that Emageon needed to license for one of the third party's patents. Based on the analysis of the patents in connection with the clearance and patentability opinions, the firm was able to identify patents that would invalidate or substantially limit the scope of this third party's patent, and were able to successfully negotiate without the need for a license. The client's application related to this technology has since been allowed in the United States. *Experience gained by attorney prior to joining Kilpatrick Townsend 28 June 2010, Supreme Court Rejects Bright-Line Test For Patentable Subject Matter, Legal Alerts 11 January 2010, Federal Circuit Issues Important Patent Term Adjustment Ruling, Legal Alerts 03 September 2009, Intellectual Property Innovations Class: Protecting Your Company's IP and Technology, Podcasts 01 July 2009, After, In re Bilski: More Clues Needed
Source: Georgia IP Law Section Newsletter, Articles 01 January 2009, Patent Opinions After, In re Seagate: What You Should Know
Source: Intellectual Property Desk Reference, Other Publications 01 January 2009, International Patent Protection
Source: Intellectual Property Desk Reference, Other Publications 01 January 2009, Patent Portfolio Creation and Management
Source: Intellectual Property Desk Reference, Other Publications 16 October 2007, Protection of Business Methods in China
Source: IP Law 360, Articles 18 September 2007, Intellectual Property Innovations Class: New Patent Rules: The Changing Landscape, Podcasts 01 January 2006, International Patent Protection
Source: Intellectual Property Desk Reference, Other Publications 01 January 2006, Intellectual Asset Management
Source: Intellectual Property Desk Reference, Other Publications 01 January 2006, Patent Opinions: What You Should Know to Increase Effectiveness and Reduce Expense
Source: Intellectual Property Desk Reference, Other Publications 01 January 2006, Intellectual Property Protection for Computer-Related Innovations
Source: Intellectual Property Desk Reference, Other Publications 01 May 2001, The Defense of Inequitable Conduct
Source: IP Litigator, Articles 01 March 2000, Reining in the Wild Wild Web
Source: Intellectual Property Report, Articles News 06 September 2011, Kilpatrick Townsend Earns Record-Breaking Recognition in Annual Best Lawyers in America 2012, News Releases 12 August 2010, Kilpatrick Stockton Earns Record-Breaking Recognition in Annual Best Lawyers in America 2011, News Releases 13 January 2009, Kilpatrick Stockton's Jamie Greene Elected WIT President; Holmes Re-Elected WIT Secretary, News Releases Events 03 September 2009, IP Innovations Class: Protecting Your Company's IP and Technology, Events 01 August 2009, Protecting Your Company's IP and Technology, Events 06 September 2007, IP Innovations Class: New Patent Rules: The Changing Landscape, Events |