David MacDonald focuses on intellectual property, pharmaceutical and technology transactions, including joint ventures, consortiums and strategic alliances. He regularly advises pharmaceutical and biotechnology clients on transactional matters, including licensing, marketing and co-promotion, supply and distribution, and other collaboration arrangements. He advises global technology companies on patent strategies, patent and software licensing (including settlement of patent litigation), and monetization (assertion, securitizations, trusts and investment funds). David also advises clients on the intellectual property issues that arise in mergers, acquisitions, divestitures, recapitalizations and bankruptcies. Since 2010, David has been included in Intellectual Asset Management magazine’s list of the world’s top 250 patent and technology licensing lawyers for his “cutting-edge expertise on how patent law issues complicate licensing deals” and his “impressive profile in IT outsourcing.” David has also been included in the IAM Patent 1000 since 2012, which describes him as “one of the pharmaceutical industry’s go-to deal brokers” and says he “manifests a rare faculty for facilitating complex collaborations and transactions between life sciences entities.” David was also highlighted in The Legal 500 United States 2012, 2015, 2017 and 2018 guides to leading U.S. law firms for business. David is the former Chair of the Transactions Involving IP Rights Committee of the ABA.
North America - United States • Intellectual property
Kirkland & Ellis LLP
Fielding a team that is experienced in patent licensing, patent portfolio management, and patent infringement litigation, Kirkland & Ellis LLP counts both patent licensors and licensees in its diverse roster of life sciences and tech clients. Key contacts in the team include tech M&A specialist Seth Traxler, who is based in Chicago, and John Lynn, who divides his time between San Francisco and Austin and advises on the tech, data protection, and AI elements of corporate and financing transactions. New York’s David MacDonald frequently works on technology transactions, licensing agreements on behalf of pharmaceutical and biotechnology companies, and settlement agreements in patent litigation. In his dispute resolution-oriented practice, Chicago-based Russell Levine emphasizes patent infringement matters and disputes relating to technology transfer and patent licensing agreements. Los Angeles’ Ellisen Turner is a key name for complex patent licenses and technology transactions, and in New York, Shellie Freedman is adept at handling IP joint ventures and strategic alliances in addition to licensing matters.
Legal 500 Editorial commentary
Testimonials
Collated independently by Legal 500 research team.
- ‘Kirkland has a deep bench of experienced patent litigation and transactional attorneys that provide a full range of services for companies seeking to mitigate risk from third-party patents. Kirkland is one of few firms that have attorneys with the level of transactional expertise we need to assist our patent transactions team.’
‘David MacDonald is an exceptional transactional attorney who provides us with excellent counsel on some of our most challenging transactional matters.'
'Robert Appleby is a very talented and experienced patent litigation attorney who represents us in some of our most high-risk patent assertion and litigation matters.'
'Alan Rabinowitz is a very talented patent litigator who counsels us on some of our most high-risk assertion and litigation matters.’
Key clients
- AutoStore
- Open Invention Network
Work highlights
- Advising Open Invention Network, a joint venture of nine companies and 3800+ licensing participants from 100+ countries, on its patent non-aggression activities and its support of the freedom of action with respect to the Linux operating system.
- Represented AutoStore in the complete settlement of all claims in their global litigation with Ocado Group, which included mutually beneficial global cross-license of each other’s pre-2020 patents.
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