Qualifications: U.S. Patent Attorney and Attorney at Law
PRACTICE AREAS AND INDUSTRIES SERVED
Kelly McKinney’s practice emphasizes domestic and foreign patent prosecution in the fields of electronics and mechanical engineering, and support during intellectual property litigation and AIA post-grant proceedings.
Ms. McKinney’s experience includes patent preparation, patent prosecution, patent landscaping, and patent appeals. She has drafted and prosecuted patent applications in various fields including, but not limited to, medical devices (blood pressure monitors, microscopy, orthopedic implants), biometrics, sensors, automotive devices, and downhole tools. Her patent experience also includes drafting petitions to initiate inter partes review proceedings and preparing and filing requests for supplemental examination.
Ms. McKinney’s copyright litigation experience includes drafting demand letters, participation in settlement negotiations, drafting pleadings, motion practice, discovery, participation in mediation proceedings, and trial support.
In the area of intellectual property counseling, Ms. McKinney has prepared invalidity, non-infringement, unenforceability, and freedom to operate opinions, provided design around strategies, and counseled clients on copyright litigation, domain name, and trademark matters.
Ms. McKinney’s trademark experience includes management of domestic and international trademark portfolios, and facilitation of settlement negotiations regarding trademark opposition proceedings.
Ms. McKinney has extensive experience in researching and analyzing legal issues, drafting legal memoranda, and cite-checking legal documents.
Ms. McKinney was previously a Patent Attorney at Gilbreth Roebuck, PC, where her practice included patent prosecution and opinions in the chemical and mechanical industries. She also has experience as a licensing intern at The University of Texas at Austin’s Office of Technology and Commercialization.
- J.D., University of Houston Law Center (2009), Casenotes and Comments Editor, Houston Journal of International Law
- B.S., Biomedical Engineering, University of Texas at Austin (2006)
- United States District Court for the Southern District of Texas
- State Bar of Texas
- United States Patent and Trademark Office
- Assisted a global innovation company in developing an extensive patent portfolio covering technologies in the electronic healthcare device industry.
- Participated in inventor disclosure meetings and drafted patent applications with respect to various patent technology matters including oil and gas applications (e.g., pressure limiting controller, fixed cutter drill bits, percussion hammer drill bits, and proportional control of rig flow) and flow cytometry applications.
- Provided legal research and analysis for drafting appeal briefs to the Patent Trial and Appeal Board involving a valve with an outlet duct, which resulted in favorable Decisions on Appeal with the Board reversing the Examiner’s rejections of the pending claims.
- Provided research and opinion work related to various patent technology matters including oil and gas applications (e.g., screen systems for use in a vibratory screen apparatus, drilling casing, PDC drill bits, and automatic drilling system to optimize rate of penetration), and chemical and manufacturing applications (e.g., a pipette with an improved tip and shaft).
- Provided freedom to operate opinion work to a global medical technology company in the form of patent landscape analyses.
- Provided extensive support with preparing and filing a request for supplemental examination to a leading oil and gas client to clarify the prosecution history of the client’s patent and to secure a favorable finding of no substantial new question of patentability.
- Provided extensive due diligence, legal research, and analysis regarding licensing agreements between a research institute and a university involving joint invention issues.
- Provided extensive support with an appeal and associated briefing of an inter partes reexamination proceeding to the United States Court of Appeals for the Federal Circuit.
- Provided extensive litigation and mediation support for a copyright litigation matter involving the piracy of an iconic photograph, which was used as the entire brand identity for a brand of tequila.
- Provided litigation and trial support for an architectural copyright litigation matter involving the piracy of building plans for a luxury custom home.
- Provided litigation and trial support for a patent litigation matter involving the alleged infringement of patents directed to remote-controlled devices.
- Drafted invalidity contentions, which required extensive legal research, analysis, and the preparation of several claim charts with respect to several claims, for a patent litigation matter involving the alleged infringement of a patent directed to an inductively chargeable device.
- Drafted inter partes review petitions as part of a litigation strategy for invalidating the patent of a client’s competitor.
- Baker Botts, LLP Writing Award for an Outstanding Comment on a Topic in International Law (2008)
- University of Houston Law Center Dean’s Scholarship (2006)
- Contributor, IP Law Talk Blog, IBM®, developerWorks® (2012)
- Contributor, Southern District of Texas Litigation Blog (2011)
- “Plotting The Fastest Route To U.S. Patent Rights For New Solar Technologies,” Solar Industry (2011)
- Kelly C. McKinney, The Patent Reform Act of 2007 and International Patent Law Harmonization, 31 Hous. J. Int’l L. 125, (2008)
- Contributor, “The Internet and Social Media: Legal Issues in Everyday Lives,” The Honorable Nancy F. Atlas Intellectual Property American Inn of Court (2015)
- “Supplemental Examination,” CLE presentation, Osha Liang LLP (2014)
- Contributor, “The Dynamics of Jury Selection in Patent Litigation,” The Honorable Nancy F. Atlas Intellectual Property American Inn of Court (2013)
- “Correction of Patents,” 67th Southwest Regional ACS Meeting, Austin, Texas (2011)
PROFESSIONAL ACTIVITIES AND MEMBERSHIPS
- The Honorable Nancy F. Atlas Intellectual Property American Inn of Court, Mentoring Committee
- Houston Intellectual Property Law Association (HIPLA)
- Houston Young Lawyers Association (HYLA)