Overview

Brenda Holmes is the Co-Leader of Kilpatrick Townsend’s Electronics and Software Practice Group. She focuses her practice on patent strategy and analysis for international and domestic companies. Ms. Holmes 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 represents companies in post-grant patent proceedings, including reissue and reexamination proceedings.  She also helps clients monitor their competitors’ patenting and enforcement activities and works with clients to proactively develop strategies based on the client’s needs and priorities.

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 is Florida Bar Board Certified in the area of Intellectual Property (2007). She was recognized as a Georgia "Super Lawyer" for Intellectual Property Law in 2008 and most recently in 2017 and the five years prior by Super Lawyers magazine. She was also listed in The Best Lawyers in America® for Patent Law in 2018 and each of the seven years immediately preceding. Ms. Holmes is AV® rated by Martindale-Hubbell.*

*CV, BV, and AV are registered certification marks of Reed Elsevier Properties Inc., used in accordance with the Martindale-Hubbell certification procedure's standards and policies. 

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Experience

Defended client in patent infringement litigation related to payment processing using credit cards, gift cards and third-party payment services.

Walker Digital LLC v. Cryptic Studios Inc. et al., 1:11-cv-00423 (D. Del. May 13, 2011)

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.

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.

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).

Represented leading global provider of integrated energy management products regarding smart meters and the support of smart grids.

Obtained additional patent claims related to multicast messaging through a reissue proceeding.

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.

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.

Representing owner of a patent directed to configuring a wireless device in an inter partes reexamination which involves an appeal to the Federal Circuit, as well as an opposition at the European Patent Office and litigation involving a related patent.

Represented patent owner in an inter partes reexamination for a patent directed to multimedia messaging. Convinced examiner to withdraw 12 rejections based on various combinations of 5 references.

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.

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Education

University of Florida College of Law, J.D. (1993) high honors, Order of the Coif

Florida Atlantic University, M.S., Computer Engineering (1988)

University of Florida, B.S., Electrical Engineering (1984) with honors

Admissions

Florida (1993)

Georgia (1997)

Court Admissions

U.S. Patent and Trademark Office (1996)

Professional & Community Activities

American Bar Association, Member

Intellectual Property Owners Association, U.S. Post-Grant Patent Office Practice Committee, Member

Japan America Society of Georgia, Member

State Bar of Florida, Member

State Bar of Georgia, Member

Women in Technology, Past President

Florida Law Review, Associate Editor 

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