David Magee is a Partner in the Professional Practices, Business Litigation, Intellectual Property and Corporate Law Groups at Donovan Hatem. He represents a wide range of professional design, industrial, manufacturing, energy and construction clients operating across many sectors, assisting them in navigating the legal landscape before, during, and after their projects. David’s background as an engineer at an ENR Top 25 Design Firm prior to his legal career enables him to quickly distill complex technical information to focus and evaluate the legal issues and risk to his clients’ businesses.
David regularly advises designers, contractors and joint ventures during their pursuit of major P3 and design-build infrastructure projects. He is an experienced advocate, skilled at handling all of the issues that can arise at the stages of a project from procurement to claim resolution and is well versed in negotiating all types of contracts and the methods of project delivery, including GC/CM contracts, design-build agreements, and teaming agreements. David provides preventive legal counsel to help clients achieve their business goals with an eye toward minimizing legal risk and expense.
David’s legal experience includes 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, cargo ports, school facilities, mass transit, roads, bridges, tunneling, vertical construction, environmental remediation and other heavy construction projects. David has handled litigation in the state and federal courts, and has participated in numerous mediations and arbitration hearings involving complex contract disputes. David is experienced in guiding clients through strategic matters involving accidents, major losses, government investigations (DOJ, USCG, OSHA, MMS) and False Claims Act actions and claims in the energy, manufacturing and construction industries.
David further leverages his engineering background to 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. As a registered patent attorney, David is licensed to practice before the United States Patent and Trademark Office (USPTO) and has been involved in all phases of intellectual property planning, procurement and enforcement (or defending against infringement). David has practiced before the International Trade Commission (ITC), Patent Trial and Appeal Board (PTAB), U.S. District Courts and a variety of mediation and arbitration hearing panels.
David assists his clients in securing their innovations and regularly counsels clients on information control, cloud migration, cybersecurity, privacy regulations and compliance including ITAR, EAR, and GDPR. He regularly works with business 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.
Before joining Donovan Hatem LLP, David was an attorney in the Boston office of an AM Law 50 international law firm.
- Served as the technical lead attorney representing the Macondo well lease-hold 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 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 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 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 DOJ, 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.
- Developed and implemented innovation capture processes and steering committees to identify innovations for investment of client resources in seeking patent protection.
- 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.
- Represented multinational technology company specializing in Internet-related services and products (online advertising technologies, search engine, cloud computing, software and hardware) against claims of infringement of patent covering software methods used in generating differential update packages for mobile device operating systems and associated applications.
- Represented plaintiff genetics testing corporation in a patent infringement action relating to its automated systems used in the diagnosis of a variety of diseases; four-week jury trial with a verdict finding infringement on all asserted claims; upheld on appeal to the Federal Circuit.
- Represented leading real estate industry cloud service provider in transactions and disputes including the protection of trade secrets and cyber security breaches.
- Evaluated large technology and patent portfolios consisting of 1000’s of assets, for valuation and total addressable market potential to identify assets for investment, license and/or sale. Identify market participants and develop licensing programs to maximize client ROI. Negotiate resulting agreements and licenses.
- Represented semiconductor industry client in Section 337 investigation directed at the importation of mobile processors incorporating client’s patented integrated circuit features. Three week trial resulted in substantial settlement to client.
- Represented designer and manufacturer of digital microphone and noise-reduction products used in voice driven applications including in Section 337 investigation directed at the importation of devices incorporating directional microphone arrays and associated software. Resolved matter on the eve of trial with favorable settlement to client.
- 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 issuance of a General Exclusion Order. Worked with U.S. Customs officials to enforce GEO and exclude infringing articles at ports of entry.
- 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. Notable success in obtaining denial of institution at preliminary response stage.
- Registered to practice before the United States Patent and Trademark Offic
- U.S. District Court, District of Massachusetts
- U.S. Court of Appeals, First Circuit
- U.S. Court of Appeals, Federal Circuit
- Northeastern University School of Law, Juris Doctor (2001)
- Northeastern University, Bachelor of Science in Civil Engineering (1997)
Business and Professional Associations
- American Bar Association
- American Society of Civil Engineers
- Massachusetts Bar Association
- Boston Bar Association
- Boston Patent Law Association
- American Intellectual Property Law Association
Awards and Honors
- Chair, American Bar Association’s Young Lawyers Division Antitrust Committee (2008-2009)
- Selected for inclusion in the 2008 edition of “Who’s Who in American Law”
- Selected for inclusion in the 2007 edition of “Who’s Who of Emerging Leaders” (worldwide)
- Super Lawyers, Massachusetts Rising Star (2005-2006, 2010-2011)
- Joseph C. Lawler Award for Outstanding Engineering Student, Northeastern University
- Boston Society of Civil Engineers/Society of American Military Engineers Scholarship recipient
Publications and Speaking Engagements
- Author, American Bar Association’s Antitrust Committee Annual Review of Antitrust Law Developments, Robinson-Patman Act chapter (2008-2010)
- Contributor, American Bar Association’s Intellectual Property Committee monthly E-Bulletin (2008-2009)