Dr. Stephen C. Holmes focuses his practice on intellectual property litigation and international litigation, with an emphasis on patent litigation and technology-related disputes. He is a registered patent attorney licensed to practice before the US Patent and Trademark Office, and has 20 years of experience litigating in the US, the UK and Europe, including significant trial experience and appellate practice.
Dr. Holmes was Assistant General Counsel, Litigation, at Affymetrix, Inc., a biotechnology company in Silicon Valley. Before working at Affymetrix, he practiced intellectual property litigation and international litigation with leading law firms in Silicon Valley and London.
Dr. Holmes has cross-examined trial witnesses, successfully argued motions for summary judgment, presented complex technologies at Markman hearings and technology tutorials, and has extensive case management and deposition experience. He has also argued appeals in patent cases before the Court of Appeals for the Federal Circuit.
In addition, Dr. Holmes has considerable experience with pre-litigation investigations, TRO and preliminary injunction procedures, arbitration and ADR proceedings, and multinational litigation. In the field of patent litigation, he has represented clients across a wide range of technologies including non-invasive prenatal analysis technology, DNA arrays, hard disk drives, jet engines, internet technology, IP telephony, Java software, consumer products and glass manufacturing. His trade secret representations include stock trading systems, internet advertising and electricity trading software. He has also counseled on trademark, copyright and design, and antitrust matters. Additionally, he has experience with USPTO inter-partes reviews and interferences, EPO oppositions, settlements and IP licensing.
On a pro bono basis, Dr. Holmes has represented charitable organizations in IP matters and appeared in medical and social security appeal tribunal cases in the UK through the Free Representation Unit. He has also worked with the Silicon Valley Pro Bono Project in the Santa Clara Superior Court.
Representative US Matters
- Biotechnology company in three patent actions in the Northern District of California relating to non-invasive prenatal analysis technology.
- Global leader in data storage systems in several patent infringement actions in the Eastern District of Texas brought by non-practicing entities, securing favorable resolutions for the client.
- Biotechnology company at trial in the District of Delaware, obtaining a jury verdict of infringement of five patents and a royalty rate of 15 percent, and represented the client in other related lawsuits in the US, the UK and Germany; the disputes subsequently settled for a US$90 million payment to the client.
- Charitable organization in a pro bono trademark dispute that included filing a Petition to cancel a registered trademark at the USPTO. The dispute settled favorably for the client.
- Biotechnology company in the Northern District of California and before the Court of Appeals for the Federal Circuit in an appeal by a competitor from a decision of the Board of Patent Appeals and Interferences relating to DNA arrays and mixing technology.
- Biotechnology company in patent infringement litigation in the Southern District of California over three widely licensed patents relating to the use of “single base extension” methods for SNP genotyping. In the first litigation testing these patents, the plaintiffs agreed to dismiss the case with prejudice after the claim construction hearing. The client was not required to take a license or to pay any fees.
- Leader in data storage systems in a patent infringement action in the Northern District of California relating to electrical circuits and amplifiers, and obtained a dismissal of the complaint.
- IT company in patent litigation in the Eastern District of Michigan relating to IP telephony products alleged to infringe a patent directed to continuously monitoring computer equipment connected to a network. The case settled favorably for the client shortly after successful motions for summary judgment of non-infringement and invalidity.
- Internet company in a trade-secret/breach of contract action in the Northern District of California concerning use of geo-location technology in Internet advertising. The plaintiff’s claims were dismissed on summary judgment.
- Internet systems company in patent litigation in the Western District of New York concerning software patents asserted against the client’s software platform and products. The case settled favorably for the client during trial.
- Individual inventor in successfully obtaining a TRO and in subsequent litigation concerning a trade secret dispute relating to a stock trading system. The matter settled favorably following mediation.
- Biotechnology company in a nine patent infringement case in the Southern District of New York relating to labeling of nucleic acids.
- Toy manufacturer in a patent infringement case in the District of Delaware relating to electronic learning toys.
- Two leading data storage companies in a multidistrict patent action in which they were accused of infringing 26 patents relating to hard disk drive motor technology.
- Global aero engine manufacturer in patent infringement actions in the Eastern District of Virginia and the ITC relating to jet engine technology. The disputes settled favorably for the client.
- Biotechnology company in a patent infringement action in the District of Delaware relating to mass spectrometry analysis technology. The matter settled favorably for the client.
- Internet company in two patent infringement cases in the District of Delaware. The cases were dismissed on summary judgment following claim construction.
Representative UK and European Matters
- European consumer products company in a trademark infringement/malicious falsehood dispute in the High Court (Chancery Division) concerning comparative advertising relating to vacuum cleaners. After a trial, the High Court ruled that the client had established trademark infringement and the case settled shortly thereafter.
- Packaging company in a patent action in the High Court (Patents Court) for a declaratory judgment relating to patents on carton technology.
- US golf club manufacturer in a design right and passing off dispute in the High Court (Patents Court) relating to golf clubs.
- German agricultural machinery manufacturer in separate patent infringement and breach of contract actions in the High Court (Patents Court and Queens Bench Division) relating to agricultural machinery. Both actions settled favorably for the client.
- UK gas company in a patent infringement action in the High Court (Patents Court) relating to pipe swage lining technology.
- UK company in an action for breach of confidence in the High Court (Chancery Division) concerning electricity monitoring and smart metering technology in the electricity industry.
- UK company in patent infringement proceedings in the High Court (Patents Court) and related European Patent Office Opposition proceedings relating to dust monitoring systems.
- Global glass manufacturer in antitrust litigation and arbitration proceedings brought against the client regarding trade secret licensing and float glass process technology, culminating in a favorable settlement for the client.
- UK company in obtaining and executing an Anton Piller order and subsequent litigation relating to trade secret theft concerning high temperature plastics filtering technology, including successfully defending an appeal by the defendant.
- Global alcoholic beverage company in coordinating various passing off and trademark infringement actions around the world concerning a number of wine and spirits brands.
In The Market
- Kaye Scholer Secures Lost Profits and Enhanced Damages Award for AAT Bioquest in Patent Dispute December 1, 2015 • Client Successes
- Firm Management Discusses Palo Alto Office and Firm’s Strategic Plan for Growth in The San Francisco Daily Journal May 14, 2014 • Media Mentions
- Stephen Holmes Discusses Supreme Court Decisions on Fee Awards in Patent Cases in Reuters April 29, 2014 • Media Mentions