Profile
David Magee is an experienced commercial attorney with a particular emphasis in representing technology and life science clients in intellectual property matters, including patent litigation, licensing, and counseling. With over two decades of experience, he has represented clients from emerging start-ups to multibillion-dollar corporations. David has litigated cases involving patents, trademarks, copyrights, trade secrets, and other commercial disputes before the International Trade Commission (ITC), Patent Trial and Appeal Board (PTAB), and U.S. District Courts. Drawing from his background as an engineer, David navigates complex technical information in disputes for his clients.
In addition to intellectual property litigation, David also manages and secures clients brand and innovation portfolios and counsels clients throughout all phases of IP planning, from procurement and monetization to enforcement and defense. Moreover, David works with business clients in evaluating IP scope, quality, and total addressable market (TAM) for IP acquisitions. He negotiates and prepares various commercial agreements, including licenses, confidentiality and non-disclosure agreements, development and distribution agreements, releases, product sale, software, and service agreements.
Apart from his work in intellectual property and technology law, David has deep experience guiding clients through matters involving accidents, major losses, False Claims Act issues, and other government investigations. These investigations span across various agencies, such as the Department of Justice (DOJ), U.S. Coast Guard, Occupational Safety and Health Administration (OSHA), and Minerals Management Service (MMS). David has represented clients from various industries such as energy, manufacturing, and construction in these legal matters.
Concentrations
- Patent infringement litigation
- Post-issuance patent proceedings, including inter partes review, post-grant review and ex parte reexaminations
- Intellectual property counseling, licensing, due diligence and opinions
- International Trade Commission Section 337 litigation
- Technology transactions
- Trade secret litigation
Capabilities
Experience
- Secured dismissal in U.S. District Court for the Southern District of New York of claims against a wireless video streaming technology company. The client faced antitrust, unfair competition, and counterclaims over trade secrets from a Chinese competitor.°
- Represented multinational technology company specializing in internet-related services and products (online advertising technologies, search engine, cloud computing, mobile software, and hardware) in several matters ranging from alleged infringement of patent covering software methods used in generating differential update packages for mobile device operating systems to patent claims related to the non-cellular signal use in determining a cell phone’s location.°
- Represented plaintiff health sciences corporation in a patent infringement action relating to its automated tissue processing systems used in the diagnosis of a variety of diseases. The four-week jury trial resulted in a verdict finding infringement on all asserted claims, which was upheld on appeal before the Federal Circuit.°
- Represented leading commercial real estate industry platform and cloud service provider in transactions and disputes including the protection of trade secrets and cybersecurity breaches.°
- Represented semiconductor industry client in in International Trade Commission (ITC) Section 337 investigation directed at the importation of mobile processors incorporating client’s patented integrated circuit features. Three-week trial resulted in settlement.°
- Represented manufacturer of LED light arrays used in photography and video studios in Section 337 investigation directed at the importation of camera- and tripod-mounted LED arrays sourced from a variety of respondents. Trial resulted in the rare issuance of a general exclusion order (GEO). Worked with U.S. Customs officials to enforce GEO and seize infringing articles at ports of entry.°
- Represented designer and manufacturer of digital microphone and noise-reduction products used in voice-driven applications including in ITC Section 337 investigation directed at the importation of devices incorporating directional microphone arrays and associated software. Resolved matter on the eve of trial with settlement.°
- Represented the largest U.S. publicly traded private equity firm and other investors in evaluating and securing intellectual property portfolios for acquisitions and investments in companies operating in the energy and technology industries.°
- Evaluated large technology and patent portfolios consisting of thousands of assets, for valuation and total addressable market (TAM) potential to identify assets for investment, license and/or sale. Identified market participants and developed licensing programs to maximize client ROI. Negotiated resulting agreements and licenses.°
- Represented numerous clients in actions before the Patent Trial and Appeal Board (PTAB) in challenging and defending patent claims through post-grant proceedings including inter partes review (IPR) and reexamination proceedings. Obtained denial of institution at preliminary response stage.°
- Served as the technical lead attorney representing the Macondo well leasehold joint venture partners in defense of claims and numerous government investigations stemming from the accident onboard the Deepwater Horizon and resulting hydrocarbon release into the Gulf of Mexico.°
- Represented the joint venture management consultant in defense of claims and government investigations arising from the design and construction of Boston’s $24.3 billion Central Artery/Tunnel Project (the “Big Dig”).°
- Represented key subcontractor in defense of claims and government investigations related to the ceiling collapse of the D Street portal of Interstate 90 connector tunnel in Boston.°
- Represented the design joint venture in defense of claims from the $4 billion redevelopment of LaGuardia Airport Central Terminal B in New York City, the largest public-private partnership (P3) undertaken in the United States.°
- Represented industrial manufacturer in defense of claims and government investigations related to an explosion of cylinders containing borane-tetrahydrofuran at a chemical manufacturing facility.°
- Represented mega project materials subcontractor in defense of False Claims Act investigations by the Department of Justice, resulting in the government closing its investigation without action.°
- Represented gas-turbine power generation owner and operator in claims against general contractor for breach of contract for failure to meet gas supply obligations, plant efficiency and output requirements.°
°The above representations were handled by Mr. Magee prior to his joining Greenberg Traurig, LLP.
Recognition & Leadership
- Selected, Massachusetts Lawyers Weekly, “Go-To IP Lawyer,” 2023
- Member, American Bar Association
- Chair, Young Lawyers Division Antitrust Committee, 2008-2009
- Member, Massachusetts Bar Association
- Member, Boston Bar Association
- Member, Boston Patent Law Association
- Member, American Society of Civil Engineers
- Volunteer, Father Bill’s & MainSpring, Volunteer, 2016-Present
- Pro Bono Attorney, Middlesex County District Attorney, 2014-Present
- Member, Cardinal Cushing Centers, Inc., Human Rights Committee, 2017-2019
Credentials
- J.D., Northeastern University School of Law, 2001
- B.S., Engineering, Northeastern University College of Engineering, 1997
- Massachusetts
- Texas
- U.S. Patent and Trademark Office