David S. Kerr is a partner and co-founder of Berg Hill Greenleaf Ruscitti’s Intellectual Property Practice Group. His practice focuses on patent and trademark prosecution as well as intellectual property licensing and infringement litigation.
With a Master of Business Administration in addition to his law degree, David helps emerging companies aggressively manage their intellectual property portfolios and future product development efforts. David provides strategic counseling relating to patent and trade secret protection, diligence, transfer, acquisition, and licensing. David has experience protecting and licensing clients’ portfolios in the United States and more than 60 countries world-wide.
David received his dual JD/MBA from the University of Denver. Prior to that he received a graduate degree in Molecular Genetics & Cellular Biology from Washington State University where he conducted research on the role of histone protein modifications on global gene expression. He received his B.S. degree in Microbiology from Brigham Young University where he was the recipient of a research grant to investigate two-component regulatory systems in E. coli. David has received special recognition by the Colorado Bar Association for his commitment to pro bono work.
David spends all of his free time with his wife, Mary, and his six children, Brandon, Sabrina, Ashley, Ava, Ivy, and Morgan. His hobbies include whatever his kids want to do at that moment.
In his patent practice, David uses his research experience in molecular biology, biochemistry, and bioinformatics to help guide his client’s technologies from the R&D stage through to issued patents. His clients include established and emerging companies and research universities focused on diverse fields, including biopharmaceuticals, genetic engineering, RNA interference, CRISPR, plant and animal pathogens, pharmaceuticals, cancer therapeutics, medical devices, vaccines, DNA sequencing, human genetics, cannabis, plant physiology, and renewable energy technologies including wind, solar and clean coal. David also has extensive experience drafting and prosecuting patents for mechanical, electrical and software applications.
David’s practice also includes trademark matters including domestic and international trademark clearance, prosecution and portfolio development, enhancement and management, advertising and marketing counseling, trademark licensing, intellectual property asset acquisitions and diligence, Internet and domain name issues, and infringement matters.
In his litigation practice, David represents technology, manufacturing, and professional services companies in a wide range of intellectual property disputes. He litigates and defends matters ranging from patent, trademark, and trade dress disputes to copyright infringement, trade secret, and unfair competition matters. David offers tailored solutions for each client from pre-litigation counseling to litigation alternatives, including post-grant proceedings like inter partes review and ex parte re-examinations.
EDUCATION & ADMISSIONS
UNIVERSITY OF DENVER COLLEGE OF LAW, 2009
MASTERS OF BUSINESS ADMINISTRATION
UNIVERSITY OF DENVER COLLEGE OF BUSINESS, 2009
MASTERS OF SCIENCE
WASHINGTON STATE UNIVERSITY, 2005
BACHELOR OF SCIENCE
BRIGHAM YOUNG UNIVERSITY, 2003
U.S. District Court, District of Colorado
U.S. District Court, District of Arizona
U.S. District Court, District of Arizona
Kason Industries, Inc., v. Diversified Food Service Supply, LLC, et al., (U.S. Dist. Court Georgia): Lead defense counsel in complex multi-party trademark and trade dress infringement case.
IQASR, LLC v. Went, Corp., (U.S. Dist. Court Colorado): Lead prosecution counsel in patent infringement lawsuit involving automobile shredder residue processing technology.
Knapp Logistics Automation, Inc. v. R/X Automation Solutions, Inc., (U.S. Dist. Court Colorado): Lead defense counsel in complex patent infringement lawsuit involving high-speed pill counting technology. Obtained a jury verdict of non-infringement for the Defendant as well as a finding of invalidity as to Plaintiff’s patent.
Gould Ranch, Inc., et al., v. NW Iowa Livestock Exchange, Inc., (Colorado Dist. Court for Larimer County): Lead counsel in breach of trademark license action. Successfully argued and was awarded monetary sanctions against opposing counsel and Plaintiffs.
Touchstone Home Health, LLC v. Touchstone Health Partners, (Colorado Dist. Court for Larimer County): Successfully argued, in a decision of first impression, that in an infringement action the deposition of trial counsel who also acted as the prosecuting trademark attorney was not warranted.
Media Cell Licensing Corporation, v. Russell Krajec, Sandwave IP, LLC., (Colorado Dist. Court for Larimer County): Retained as expert witness in a breach of patent assignment lawsuit. Prepared expert report as to commercially acceptable standards of intellectual property transactions and standard of care for intellectual property attorneys with respect to prosecution of both US and foreign patents as well as commercially accepted methods of patent valuation.
Black Hills Institute of Geological Research, Inc., v. Fort Peck Paleontology, Inc., et al., (U.S. Dist. Court Montana): Counsel for Plaintiff in first of its kind case involving copyright infringement of fossil preparations. Successfully withstood motion for summary judgment brought by Defendants, resulting in favorable settlement.
Orion Photo Industries, Inc., v. Heartwood Creation, Inc., et al., (U.S. Dist. Court Arizona): Counsel for Plaintiff in trademark infringement and unfair competition action against a direct competitor accused of misappropriating product design and marketing features resulting in half-million dollar settlement and a complete exit by Defendant from the market sector.
Righthaven, LLC, v. Brian Hill, (U.S. Dist. Court Colorado): Counsel for Defendant in copyright infringement action featured in the New York Times and other national news outlets. Achieved dismissal with prejudice after filing motion to dismiss the case for failure to state a claim, lack of personal jurisdiction, improper venue and lack of copyright ownership interest by the Plaintiff.
Representative Patents and Applications
US 2019/0352662 – Systems and methods for enhancing trichome formation and density in cannabis
WO 2019/204671 – Systems, methods and compositions for the generation novel high yielding waxes from microalgae.
US 2019/0309311 – Cell-free expression system having novel inorganic polyphosphate-based energy regeneration.
WO 2019/191785 – Systems, methods and composition of using RNASE III mutants to produce SRNA to controld host pathogen infection.
WO 2019/191488 – Enhancing photo synthetic rates, abiotic stress tolerance and biomass yield by expressing C4 Plant ferredoxins in C3 Plants.
WO 2019/113260 – Genomic targets of histone deacetylase inhibitors (HDACI) and methods of use thereof.
WO 2019/018451 – Compositions and methods for preventing and treating radiation-induced bystander effects caused by radiation or radiotherapy.
WO 2018/217819 – Transbiotic regulation of bacterial gene expression.
WO 2018/176055 – High level IN VIVO biosynthesis and isolation of water-soluble cannabinoids in plant systems.
US 9769466 – Variable coupler drive
US8945247 – Methods and apparatus for the improved treatment of carbonaceous fuel and/or feedstocks.
“Deciphering the Roles of the Histone H2B N-Terminal Domain in Genome-Wide Transcription.” Michael A. Parra, David Kerr, Deirdre Fahy, Derek J. Pouchnik, and John J. Wyrick. Molecular and Cellular Biology, May 2006, p. 3842–3852.
“TRIPS, Pharmaceutical Patent Rights and Access to Essential Drugs.” Presented to Annual Conference of The Association of Private Enterprise Education, 2008.
“Protecting Your Creative Expressions – Emerging Trends in Copyright Law.” Presented to the Annual Quid Novi Innovation Festival, 2010 and 2011.
“Recent Developments in U.S. Intellectual Property Law.” Presented to the Larimer/Weld Association of Legal Support Staff, 2014.
Represented an emerging green-energy technology firm in developing international corporate licensing strategy, including conducting on-going U.S. and foreign due diligence as well as drafting actual license agreements for industrial scale green technology.
Assisted a national biotechnology company in negotiating an exclusive multi-patent license agreement related to multiple antibody-based technologies. Due diligence efforts resulted in significant reduction in eventual licensing fees.
Represented technology firm in applying for, and ultimately securing a joint development agreement with the U.S. National Renewable Energy Laboratory (NREL). Client’s submission was chosen over nearly 100+ potential technologies submitted for consideration.
Represented national Internet-based social networking company in multi-million dollar buy-out of various corporate and intellectual property assets.
Represented national biotechnology firm in an intellectual property due diligence review of licensing agreements for diagnostic cellular staining technology.
Assisted Colorado-based technology firm in licensing negotiations, including drafting actual license agreements with various public utilities related to novel coal pre-treatment technologies.
Represented national digital inbound marketing firm in negotiating and drafting various independent affiliate and intellectual property enforcement agreements.
Represented a technology firm in due diligence efforts related to an application for Environmental Protection Agency (EPA) emissions-based waiver and tax credit recognition.
Represented Fortune 500 firm in preparation of comprehensive patent infringement analysis including, inter alia, relevant legal and factual due diligence, claim construction, invalidation options, freedom-to-operate, risk mitigation and damage modeling.
Represented multiple clients in litigation support activities related to intellectual property rights including, but not limited to: patent due diligence and claim construction, trademark infringement analysis, corporate-wide copyright infringement enforcement strategies, and damage modeling and analysis.
Larimer County Bar Association (Intellectual Property Section)
Colorado Bar Association (Intellectual Property Section)
J. Ruben Clark Law Society (Denver Chapter)
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