Experience

Armstrong Teasdale

• United States
• Law Practice
• 700 & Above Employee

• Partner

  • Sep 2020 - Present

  I have successfully litigated patent, trademark, copyright, trade secret and other intellectual property and commercial cases before the International Trade Commission (ITC), Patent Trial and Appeal Board (PTAB) and U.S. District Courts, as well as numerous mediation and arbitration panels. My background as an engineer at a top engineering firm lends to my ability to quickly distill complex technical information, and drives the successful representation of clients in complex, multimillion-dollar disputes. Licensed to practice before the U.S. Patent and Trademark Office, I counsel clients through all phases of IP planning, from procurement and monetization to enforcement and defense. I work with business clients in evaluating IP scope, quality and total addressable market (TAM) for IP acquisitions and negotiate and prepare commercial agreements including licenses, confidentiality and nondisclosure agreements, development and distribution agreements, releases, product sale, software and service agreements. Read more: https://www.armstrongteasdale.com/david-magee/



Donovan Hatem LLP

• United States
• Law Practice
• 1 - 100 Employee

• Partner

  • 2019 - Sep 2020

  Major Projects - Regularly advise designers, contractors and joint ventures during their pursuit of major P3 and design-build projects. Experienced in handling all issues that can arise at the stages of a project from procurement to claim resolution and well-versed in negotiating commercial contracts and project agreements (GC/CM contracts, design-build agreements, and teaming agreements). Advise clients on public and private works projects including power generation facilities (gas turbine, wind, solar, fuel cell), energy exploration projects (GOM, Permian), industrial and manufacturing facilities, water treatment facilities, pipelines, airports, shipping ports, school facilities, roads, bridges, tunneling, vertical construction, environmental remediation and other heavy construction projects. Lead major litigation matters in the state and federal courts, and regularly participate in alternative dispute resolution proceedings. Strategic Challenges - Guide clients through strategic matters involving accidents, major losses, government investigations (DOJ, USCG, OSHA, MMS) and False Claims Act actions. Counsel clients on information control, data breaches, cloud migration, cybersecurity, privacy regulations and compliance including ITAR, EAR, and GDPR. Work with clients in negotiating and drafting commercial agreements including confidentiality and non-disclosure agreements, development and distribution agreements, settlements, releases, product sale, software and service agreements. Intellectual Property - Assist clients on matters involving the development, acquisition and disposition of products and technologies as well as the capture, protection, enforcement and monetization of underlying intellectual property. Licensed to practice before the United States Patent and Trademark Office (USPTO) and experienced in all phases of intellectual property planning, procurement and enforcement (or defending against infringement).



Pepper Hamilton LLP

• United States
• Law Practice
• 300 - 400 Employee

• Counsel

  • 2012 - 2018

  Counsel business clients ranging from startups to large publicly-traded companies on matters involving the development, capture, acquisition and disposition of products and technologies as well as the protection, enforcement and monetization of intellectual property. Selected experience (additional representative matters available): • Performed diligence of material contracts, patents and intellectual property, antitrust and regulatory issues for mergers and asset purchase agreements. Negotiated representations and warranties and prepared agreements and schedules. • Managed large technology and patent portfolios (1000’s of assets). Performed valuation and total addressable market analyses to identify assets for investment, license and/or sale. Developed and implemented licensing programs for underperforming assets to realize ROI. Regularly negotiated and closed IP sales in excess of $3M. • Experienced in large patent infringement, trade-secret, antitrust and commercial dispute and enforcement practice before the International Trade Commission (ITC), Patent Trial and Appeal Board (PTAB) and U.S. District Courts. Prepared filings and argued at hearings and trials. Worked with Customs to enforce import trade restrictions resulting from Exclusion Orders. • Negotiated and prepared commercial agreements including confidentiality and non-disclosure agreements, non-compete agreements, licenses, assignments, development and distribution agreements, settlements, releases, software and service agreements, among others. • Counseled clients and prepared policies on ITAR, EAR, and GDPR information control and compliance and data breach response. • Pro Bono: Managed firm’s pro bono participation in the Middlesex County District Attorney’s Domestic Violence Attorney Program providing victims of domestic violence with free representation at protection order hearings. Serve on the human-rights board of residential school for developmentally delayed children and young adults.



Bingham McCutchen LLP

• United States
• Law Practice
• 400 - 500 Employee

• Associate & Counsel

  • 2004 - 2012

  Consistently rated as a high performing associate, being selected three times a Massachusetts’ Rising Star. Maintained a broad-based commercial practice representing numerous technology, energy and industrial companies including Anadarko Petroleum, Bank of America, Bechtel, John Deere, General Electric, General Motors, Google, Oracle, and Tempur-Pedic. Selected experience (additional representative matters available): • Represented 35% joint-venture owners of Macondo well as a technical lead attorney in investigations and the defense of claims stemming from the accident aboard the Deepwater Horizon drilling platform and the resulting hydrocarbon release into the Gulf of Mexico. • Represented joint venture and its subcontractors in various False Claims Act investigations and litigation arising from the design and construction of Boston’s Central Artery/Tunnel Project (“Big Dig”). • Represented American Capital Asset Strategies, a publicly-traded private-equity firm in the evaluation of acquisitions of companies in the medical device, energy and technology industries. Performed diligence analyses of target companies including material agreements, structure and securities, intellectual property, assets, regulatory issues and litigation. Prepared resultant schedules, purchase agreements and licenses. • Represented Google in a series of patent related actions related to differential compression algorithms used to update mobile operating systems and applications, wifi locator technologies and voice recognition algorithms. • Counselled leading manufacturer of memory foam mattress and bedding products in implementing and defending minimum advertised pricing (MAP) and Colgate policies for retailers. Defended policies against challenge from the New York Attorney General’s Antitrust Bureau resulting in policies being upheld in their entirety after hearing before the trial court.



CDM Smith

• United States
• Civil Engineering
• 700 & Above Employee

• Engineer

  • 1995 - 1998

  Engineer on the design and piloting teams at an ENR Top 25 global engineering, construction and operations firm. Worked on the design and operations for for large transportation, industrial, energy and municipal infrastructure projects throughout the world. Piloted operational processes, prepared plans and specifications for competitive bidding, created and maintained critical path project management schedules, budgets and resource management programs. Negotiated contracts and consulting agreements. Authored articles and reports on designs, construction timelines, milestones and process training.