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... see more >
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 15 years of experience as a practicing IP attorney and over 12 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, Federal Circuit Court of Appeals, the Sixth Circuit Court of Appeals, 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, where he teaches students participating in Wayne Law’s Patent Procurement Clinic, a USPTO-certified patent clinical program approved for student practice. 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 Graduate Program in Intellectual Property Law 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 a faculty member of the Patent Resources Group (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 large firm in Boston, Massachusetts. His practice focused on representing emerging technology companies and venture capital funds.
David is 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.
Speaker, Panel on Intellectual Property Issues for Start-Up Companies, Small Business Legal Academy, part of Detroit Entrepreneur Week 2016, Detroit, MI (May 7, 2016)
"Drafting and Prosecution Patent Applications in Light of Alice," presentation to GE Global Research (India) (April 21, 2016)
"Trademark Licensing Update," Intellectual Property Owners, Licensing Committee (Webinar, April 2, 2016)
"Inventorship and Patent Assignment Issues," American Corporate Counsel Association, (Webinar Feb. 18, 2016)
Moderator, “The Changing Face of Trademark Protection: Recent Trends and Future Impacts,” INTA Leadership Meeting Panel, Panama City, Panama (November 19, 2015)
"US Patent Practice and Procedure,” a 5-day intensive course, Bangalore, India (July, 2015)
Moderator, “Celebrating 40 Years: The Judge's Perspective on IP Litigation,” ICLE Intellectual Property Law Summer Institute, Mackinac Island, MI (July 18, 2014)
“Patents and Molecular Diagnostics Technology: Where Are We, And Where Are We Heading?” G2 Intelligence MDx Conference, Baltimore, MD (June 13, 2014)
Moderator, Fourth Annual INTA Trademark Scholarship Symposium, Dallas, TX (May 13, 2013)
"Protecting Computer-Implemented Methods," Oakland University Office of Research Administration, Innovation and Commercialization Seminar Series, Rochester, MI (Mar. 22, 2013)
“A User`s Guide To Intellectual Property,” 43rd American Chemical Society Central Regional Meeting, Dearborn, MI (June 6, 2012)
“Rethinking Willful Patent Infringement,” Washtenaw County Bar Association, Intellectual Property Section, Ann Arbor, MI (May 16, 2012)
Moderator, Third Annual INTA Trademark Scholarship Symposium, Washington DC, (May 14, 2012)
“Current Issues in Copyright Litigation,” presented at Federal Bar Association, Eastern District of Michigan Chapter IP update for federal judicial clerks, at U.S. District Court for the Eastern District of Michigan (Oct. 19, 2011)
Moderator, Second Annual INTA Trademark Scholarship Symposium, San Francisco, CA (May 16, 2011)
Audience/Cast “Talkback” following Riverwalk Theatre`s production of "The Farnsworth Invention," part of Cooley Law School`s “Stages of the Law” Series, Lansing, MI (Oct. 29, 2010)
“Evaluating Willful Patent Infringement After In re Seagate Technology, LLC,” presented at Michigan Intellectual Property Law Association meeting, Auburn Hills, MI (Oct. 5, 2010)
Panelist, “Patent Eligibility, Bilski, and the Future of Business Method Patents," Cooley Law School Student Intellectual Property Law Association program, Auburn Hills, MI (July 14, 2010)
“Avoiding Intellectual Property Pitfalls When Representing Business Clients,” State Bar of Michigan Young Lawyers Section Summit, Traverse City, MI (June 5, 2010)
Moderator, “Trademark Dilution Group,” INTA Trademark Scholarship Symposium, Boston, MA (May 24, 2010)
"Patent Protection for Computer Implemented Methods," Oakland University School of Business Administration, Center for Integrated Business Research and Education - Research Seminar Series, Rochester, MI (Jan. 29, 2010)
Moderator, Fourth Annual INTA Learned Professor Trademark Symposium, “An Interdisciplinary Perspective On Likelihood of Confusion,” New York, NY (Jan. 3, 2008)
Panelist, INTA Adjunct Professor Special Interest Group Program, INTA Leadership Meeting, Orlando, FL (November 8, 2007)
“Managing the Risk of Bankruptcy in Intellectual Property Licenses,” Michigan Intellectual Property Law Association, Troy, MI (January 9, 2007)
"Trolls to Innovators: New Perspectives on Patent Law Reform,” presented at Symposium: Technology, Entrepreneurship & the Law, Meadow Brook Hall, Oakland University, Rochester, MI (March 23, 2006)
“Arbitration of Intellectual Property And Licensing Disputes: Artful Drafting And Savvy Advocacy – A Winning Combination,” Presentation, American Arbitration Association Continuing Legal Educational Program, Southfield, MI (November 7, 2005)
“Searching and Reporting on Patentability,” Practical Patent Prosecution Training for New Lawyers, American Intellectual Property Law Association, Arlington, VA (August 13, 2003) (publication and presentation)
Practice Areas & Industries
J.D., University of Michigan Law School, cum laude
Graduate studies, University of Michigan School of Public Health
B.A., Economics, University of Michigan
State Bar of Michigan, Intellectual Property Law Section, Chair
American Arbitration Association
American Bar Association
Federal Circuit Bar Association
Intellectual Property Owner’s (IPO) Association, IP Licensing Committe
International Trademark Association (INTA), Emerging Issues Committee
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
International Trademark Association, Volunteer Service Award for Advancement of Association (2010)
Southfield, Mich. –Brooks Kushman attorneys David C. Berry and Hope Shovein have been elected to serve one-year terms as Chair and Chair-Elect, respectively, of the State Bar of Michigan Intellectual Property Law Section. The election took place on Saturday, July 23, 2016 at the section’s annual meeting at the Grand Hotel on...
Southfield, Mich. - Brooks Kushman attorneys David C. Berry and Michael N. MacCallum recently were appointed adjunct professors at Wayne State University Law School, and will supervise Wayne’s successful Patent Procurement Clinic. As a leader in intellectual property (IP) law, Wayne Law’s Patent Procurement Clinic is part of the U.S. Patent...
Southfield, Mich. –Brooks Kushman attorneys Jennifer K. Ziegler, Hope V. Shovein, Laura E. Schwartz, David C. Berry and Anna K. Heinl have been chosen to serve two-year terms on International Trademark Association (INTA) committees. Their committees are: Jennifer Ziegler – UNREAL Campaign Committee (Educational campaign educating teens on the dangers of counterfeits.) Hope...
SOUTHFIELD, Mich. — Brooks Kushman Of Counsel David C. Berry has joined the Patent Resources Group Patent Bar Review program faculty. He joins attorneys from across the country to help practitioners prepare for the U.S. Patent and Trademark Office (USPTO) Registration Exam for Attorneys and Agents. The Patent Bar Review course, conducted since 1969, is a comprehensive...
Southfield, Mich. – Brooks Kushman Shareholder Frank Angileri and Of Counsel David Berry have both joined the U.S. Patent and Trademark Office’s (USPTO) Pro Bono Steering Committee. The committee leads the USPTO’s nationwide effort to establish pro bono programs for financially under-resourced inventors and small businesses. Angileri will serve as a member of the steering committee...
SOUTHFIELD, Mich. – Brooks Kushman is pleased to announce David Berry is the latest addition to the team. Berry brings 15 years of experience as a practicing intellectual property (IP) attorney and over 10 years of experience as a Professor of Law to the firm. Berry`s practice will focus on patent litigation and IP...
The Defend Trade Secrets Act of 2016 (“DTSA”), was signed into law by President Obama on May 11, 2016. The new statute creates broad private federal cause of action for trade secret misappropriation and has been hailed as “the most sweeping change to the nation’s intellectual property laws in a...
Federal Circuit Judges Voice Concern Over PTAB Practice of Denying AIA Petitions Based on Redundancy
In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses “redundancy” to control its docket without substantive review of the grounds presented in a petition,...
The U.S. Court of Appeals for the Federal Circuit recently ruled that a plaintiff not named as a joint inventor on several patents and pending patent applications has standing to maintain an action to correct inventorship under 35 U.S.C. § 256, despite the fact that he previously assigned all rights...
Fifty years ago, the U.S. Supreme Court ruled that a patent license agreement that requires the licensee to pay royalties after the expiration of the licensed patent is unlawful per se, because such payments effectively extend the patent monopoly beyond the statutory term and prevent the invention from becoming part...
Commil USA, LLC v. Cisco Systems, Inc.: Defendant May Be Liable For Indirect Infringement Despite Good Faith Belief That Patent Is Invalid
In a case at odds with long-standing assumptions about the legal status of invalid patents, the U.S. Supreme Court ruled on May 26, 2015 that a defendant’s good faith belief that a patent is invalid is not a defense to active inducement of infringement under 35 U.S.C. § 271(b). The...
The Hague Agreement Concerning the International Registration of Industrial Designs, more commonly known as the “Hague Agreement,” is a treaty that establishes an international filing system for industrial design applications. Although the United States signed the treaty in 1999, implementation of the system in the U.S. has taken over 15...
Supreme Court Orders Federal Circuit To Defer To District Court Factual Findings During Patent Claim Construction: Will Markman Strategies Change?
On January 20, 2015, the U.S. Supreme Court handed down its first patent decision of the current term, rejecting the U.S. Court of Appeals for the Federal Circuit’s long-standing practice of reviewing district court patent claim construction rulings, including subsidiary findings, without deference. See Cybor Corp. v. FAS Techs., Inc.,...
The U.S. Court of Appeals for the Federal Circuit historically has afforded litigants substantial leeway in applying economic theory to establish damages in patent infringement cases, as long as the theories are based on reliable economic evidence and establish direct causation of loss. In recent years, the Federal Circuit has issued...
Southfield, Mich. – Brooks Kushman Of Counsel David C. Berry was featured in Crain’s Detroit Business’ August 21, 2016 article “Pro bono IP work a growing service.” In the article, Berry discusses the increase in intellectual property pro bono services available to low-income inventors and innovators in Michigan. "There's always been pro...
SOUTHFIELD, Mich. – Brooks Kushman Of Counsel David C. Berry was featured in the Michigan Bar Journal’s February article, “New Pro Bono Opportunities for Michigan Intellectual Property Attorneys.”The article discusses a variety of opportunities for Michigan intellectual property attorneys to offer pro bono legal services. There are a number of...
DETROIT, Mich. - David C. Berry, Of Counsel at Brooks Kushman, PC in Southfield Michigan, is scheduled to be the moderator and a presenter on a panel discussing patent and intellectual property during the 2016 Small Business Legal Academy (SBLA16) for Detroit’s entrepreneurs and start-up businesses. Brooks Kushman is also...