David S. Kerr is a registered patent attorney who works in the procurement and enforcement of a variety of intellectual property rights in the United States and throughout the world. David’s practice involves preparing and prosecuting both domestic and international patent applications in traditional markets such as Europe and Asia. Being fluent in Spanish, a portion of David’s practice is focused on securing intellectual property rights in emerging markets in both Central and South America.
David has experience in a variety of technologies including: biotechnology, genetics, immunology, chemical and microbial remediation, renewable wind energy, solar power, oil and gas emissions capture, clean-coal, telecommunications, medical devices, mechanical, software, electrical circuitry, and business methods, among others.
In addition, David specializes in intellectual property litigation, including both enforcement and defense of traditional intellectual property rights such as patent, trademark and copyrights, as well as unfair competition, misappropriation and trade secret matters. David’s practice includes Internet and digital law issues, in particular First Amendment, copyright, and online defamation matters. David also negotiates and drafts both domestic and international technology licenses and other intellectual property agreements.
With a Masters of Business Administration in addition to his law degree, David particularly enjoys helping emerging companies aggressively manage their intellectual property portfolios and future product development efforts. He understands intellectual property from a business perspective and knows that for an emerging company, strategic high-value patents can be crucial to success. David routinely works with clients not only on their intellectual property needs, but also helps develop business, financial and marketing plans to help maximize his clients’ chances of building a sustainable and profitable business.
David received his dual JD/MBA from the University of Denver in 2009. Prior to that he received an M.S. in Molecular Genetics & Cellular Biology from Washington State University where he conducted research on the role of histone protein modifications on global gene expression. In 2003, he received his B.S. degree in Microbiology from Brigham Young University where he was the recipient of a student research grant to investigate two-component regulatory systems in E. coli. David has also 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 five children, Brandon, Sabrina, Ashley, Ava, and Ivy. His hobbies include whatever his kids want to do at that moment.
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.
Knapp Logistics Automation, Inc. v. R/X Automation Solutions, Inc., (U.S. Dist. Court Colorado): Associate counsel in complex patent infringement lawsuit involving pill counting technology.
Koninklijke Philips Electronics against Caribe Corporation, (U.S. Dist. Court New Jersey): Lead counsel in multi-billion dollar trademark infringement and unfair competition action following successful T.T.A.B. opposition for the mark Simplicity®.
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.
US 7638070 – Methods and Apparatus for Solid Carbonaceous Materials Synthesis Gas Generation
US 14/097019 – System for Algae-Based Treatment of Water
US RE42192 – Volatile Organic Compound Sensor
US 8710694 – RPM Controlled Wind Power Generation System
US 8945247 – Methods and Apparatus for the Improved Treatment of Carbonaceous Fuel and/or Feedstocks
US 8267004 – Adaptable Hydraulic Control System
PCT WO 2014/130067 – Variable Coupler Drive
PCT WO 2014/164892 – Ambient Air Refrigeration System