David C. Berry

Patent Litigation & Licensing

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david-berry

David’s practice focuses on patent litigation and intellectual property law in the business sector.  He has represented clients in all phases of IP litigation, including patent jury and bench trials and appeals, pre-trial proceedings, and successfully arguing before the U.S. Court of Appeals for the Federal Circuit. He has experience in a wide range of technologies and industries, such as separation science, semiconductor fabrication technology, embedded devices, biomechanics, financial services, e-commerce, and consumer products.

With 18 years of experience as a practicing IP attorney and over 15 years of experience as a Professor of Law, David has made his mark in the IP law world. He has had first-chair responsibility in patent jury and bench trials and appeals. He is admitted to practice before the United States Supreme Court, the Federal Circuit, the U.S. Court of Appeals for the First Circuit, and U.S. District Courts in Michigan and Massachusetts. David is also a registered patent attorney, and is authorized to practice before the U.S. Patent Office.

David is an Adjunct Professor at Wayne State University Law School, and is the Director of Wayne Law’s Patent Procurement Clinic, a USPTO-certified patent clinical program approved for student practice. The clinic provides patent legal services to low-income inventors in the Metro Detroit area, offering services such as patentability searches, drafting patent applications, and prosecuting patent applications.

He is Distinguished Professor Emeritus at Western Michigan University (WMU) - Cooley Law School, where he co-founded the WMU Graduate Program in Intellectual Property Law and teaches Patent Law, Patent Litigation, and Licensing of Intellectual Property. He was a tenured Professor of Law and Director of WMU’s Intellectual Property Law program from 2002 to 2014. Over the years, he assisted in developing the school’s curriculum in intellectual property law, as well as special programs in intellectual property law for graduate students and practitioners.

David is the Academic Director of Patent Resources Group, Inc. (PRG), a leading provider of legal education programs specializing in patent and intellectual property law. He is the principal lecturer for PRG’s Patent Bar Review course, which prepares practitioners from across the country to sit for the U.S. Patent and Trademark Office Registration Exam for Attorneys and Agents and offers a comprehensive review of the law and procedures governing prosecution practice before the U.S. Patent and Trademark Office, including post-grant review proceedings.

Prior to joining Brooks Kushman, David was a partner at a large firm in Boston, Massachusetts. His practice focused on representing emerging technology companies and venture capital funds.

David is a past chair of the State Bar of Michigan, Intellectual Property Law Section. He is a Founding Master of the Michigan Intellectual Property American Inn of Court, part of the Linn Inn Alliance. He chairs the Steering Committee of the Michigan Patent Pro Bono Project, a regional pro bono resource created pursuant to the Leahy-Smith America Invents Act. He also received INTA’s Volunteer Service Award in 2010.

Organizations and Affiliations

Federal Circuit Bar Association

Intellectual Property Owner’s (IPO) Association, IP Licensing Committee

International Trademark Association (INTA)

Licensing Executives Society

Michigan Intellectual Property Inn of Court, Founding Master

Michigan Intellectual Property Law Association

Federal Circuit Bar Association

Intellectual Property Owner’s (IPO) Association, IP Licensing Committee

International Trademark Association (INTA)

Licensing Executives Society

Michigan Intellectual Property Inn of Court, Founding Master

Michigan Intellectual Property Law Association

Oakland County Bar Foundation, Fellow

Patent Resources Group, Patent Bar Review program, faculty

Pro Bono Advisory Council, Board of Directors

Wayne State University Law School Patent Procurement Clinic, Adjunct Professor

Western Michigan University – Cooley Law School, Auburn Hills Campus, Distinguished Professor Emeritus

Recognitions

International Trademark Association, Volunteer Service Award for Advancement of Association (2010)

Media Coverage

Featured, “Pro bono IP work a growing service,” Crain’s Detroit Business, August 2016

Featured, “New Pro Bono Opportunities for Michigan Intellectual Property Attorneys,” Michigan Bar Journal, February 2016

Publications

Co-Author, “Fixing Patent Eligibility by Limiting Scope to Disclosed Embodiments,” Patentlyo, June 2018

Peer Review Panel, Journal of Intellectual Law and Practice, Oxford University Press, 2014 – Present

Co-Author, “New Pro Bono Opportunities for Michigan Intellectual Property Attorneys,” Michigan Bar Journal, February 2016

Author, “U.S. Supreme Court Patent Case Review – October 2013 Term,” IPLS Proceedings, December 2014

Co-Author, “The Federal Circuit’s VirnetX Ruling Continues Focus on Requirements for Providing Patent Damages,” Law360 Intellectual Property, October 2014

Editor, State Bar of Michigan, Intellectual Property Law Section Proceedings, 2011-2014

Author, “Gunn v. Minton: Supreme Court Pokes Another Hole in Exclusive Federal Jurisdiction Over Patent Rights,” SSRN No, 2332879 and IPLS Proceedings, March 2013

Presentations

Speaker, “Intellectual Property Issues for Startups,” Detroit Start-Up Week, June 2018

Speaker, “Autolex Automotive Legal Forum,” Managing IP, Benchmark Litigation, November 2017

Speaker, “Small Business Legal Academy,” Detroit Start-Up Week, May 2017

Moderator, “ICLE Spring Seminar,” Institute of Continuing Legal Educations, March 2017

Moderator, “42nd Annual Intellectual Property Law Institute,” Institute of Continuing Legal Education, July 2016

Speaker, Panel on Intellectual Property Issues for Start-Up Companies, Small Business Legal Academy, part of Detroit Entrepreneur Week 2016, Detroit, MI, May 2016

Speaker, “Drafting and Prosecution Patent Applications in Light of Alice,” GE Global Research (India) April 2016

Speaker, “Trademark Licensing Update,” Intellectual Property Owners, Licensing Committee, Webinar April 2016

Speaker, “Inventorship and Patent Assignment Issues,” American Corporate Counsel Association, Webinar February 2016

Adjunct Professor, Wayne State University Law School Patent Procurement Clinic, January 2016

Moderator, “The Changing Face of Trademark Protection: Recent Trends and Future Impacts,” INTA Leadership Meeting Panel, November 2015

Lecturer, “US Patent Practice and Procedure,” a 5-day intensive course in Bangalore, India, July 2015

Moderator, “Celebrating 40 Years: The Judge’s Perspective on IP Litigation,” ICLE Intellectual Property Law Summer Institute, July 2014

Speaker, “Patents and Molecular Diagnostics Technology: Where Are We, And Where Are We Heading?” G2 Intelligence MDx Conference, June 2014

Moderator, Fourth Annual INTA Trademark Scholarship Symposium, May 2013

Speaker, “Protecting Computer-Implemented Methods,” Oakland University Office of Research Administration, Innovation and Commercialization Seminar Series, March 2013

Speaker, “A User’s Guide to Intellectual Property,” 43rd American Chemical Society Central Regional Meeting, June 2012

Speaker, “Rethinking Willful Patent Infringement,” Washtenaw County Bar Association, Intellectual Property Section, May 2012

Moderator, Third Annual INTA Trademark Scholarship Symposium, May 2012

Presenter, “Current Issues in Copyright Litigation,” Federal Bar Association, Eastern District of Michigan Chapter IP update for federal judicial clerks, October 2011

Moderator, Second Annual INTA Trademark Scholarship Symposium, May 2011

Audience/Cast “Talkback” following Riverwalk Theatre’s production of “The Farnsworth Invention,” part of Cooley Law School’s “Stages of the Law” Series, October 2010

Presenter, “Evaluating Willful Patent Infringement After in re Seagate Technology, LLC,” Michigan Intellectual Property Law Association meeting, October 2010

Panelist, “Patent Eligibility, Bilski, and the Future of Business Method Patents,” Cooley Law School Student Intellectual Property Law Association program, July 2010

Speaker, “Avoiding Intellectual Property Pitfalls When Representing Business Clients,” State Bar of Michigan Young Lawyers Section Summit, June 2010

Moderator, “Trademark Dilution Group,” INTA Trademark Scholarship Symposium, May 2010

Speaker, “Patent Protection for Computer Implemented Methods,” Oakland University School of Business Administration, Center for Integrated Business Research and Education – Research Seminar Series, January 2010

Education

J.D., University of Michigan Law School, cum laude

Graduate studies, University of Michigan School of Public Health

B.A., Economics, University of Michigan