James B. MacDonald

James (“J.”) is Co-Chair of the Technology, Telecommunications and Life Sciences Group. He concentrates his practice on the development, commercialization and transfer of intellectual property and technology. He counsels businesses ranging from emerging tech-driven start-ups to Fortune 50 market leaders on technology and IP licensing, outsourcing, M&A-related IP and tech transactions, and privacy and data security. He also advises on the formation, operation and governance of joint venture, strategic alliance and other collaborative development and integration projects, and the identification, protection and commercialization of intellectual property assets. James is experienced in negotiating transactions ranging from ordinary course to high profile technology initiatives.

A frequent lecturer on intellectual property and technology issues relating to his transactional practice, he has lectured and written on the formation and development of early-stage ventures, entity choice, licensing agreements, e-commerce strategies and material legislation and jurisprudence, among other technology-related legal issues.

Representative Matters

• Represented one of the nation’s largest utilities in the development and deployment of the world’s longest inherently fault current limiting high temperature superconducting (IFCL‐HTS) cable system (part of DHS’s Resilient Energy Grid Project)

• Represented the world’s largest tire and wheel retailer in the negotiation and implementation of next-generation secure online and point-of-sale payment processing systems

• Represented the world’s largest cable and broadcast provider in the acquisition of its nationwide dark fiber network and subsequent development and deployment of next-generation residential and commercial messaging and content delivery platforms

• Represented one of the nation’s largest insurance and health care benefits companies in a series of joint ventures to develop and deploy a suite of cloud-based care management tools for accountable care organization (ACO) customers and health care providers

• Represented an emerging growth medical device company in the license of a large patent portfolio and related technology from the University of Pennsylvania, and sponsored research arrangements with the university

• Represented DuPont in the licensing and sale of the intellectual property assets of its Glass Laminating Solutions/Vinyls (GLS/Vinyls) business, part of DuPont Packaging & Industrial Polymers, to Kuraray Co., Ltd (deal value: $543 million plus the value of inventories)

• Represented a multistate utility in the design, integration and deployment of an advanced meter infrastructure for energy management and distribution, including the outsourcing of engineering and design services and the procurement of equipment (deal value $350+ million)

• Represented the largest philanthropic organization devoted to improving health and health care in the United States in structuring capital investments in private equity and hedge funds

• Represented a leading global financial institution in various outsourcing engagements to enable deployment of a mobile contactless pay network for its accountholders and other end users

• Represented a leading global financial institution in its acquisition of credit card assets valued at more than $240 million, and in multiple branding agreements, origination agreements and other agreements relating to its U.S. debit and credit card portfolios

• Represented a leading operator of stadium and public assembly facilities in the procurement and deployment of distributed antenna systems (DAS) to enable wireless voice and data services within its U.S.-managed facilities

• Represented a provider of premium food ingredients and flavor bases in a long-term exclusive license and supply of proprietary frozen dessert flavorings to a national chain of frozen ice establishments

• Represented a joint venture between a leading European provider of nuclear technology and a major U.S. utility in the development and construction of a standardized fleet of nuclear power reactors and an IT platform to monitor, operate and maintain these facilities

• Represented multiple public utility companies in structuring and negotiating in connection with the development and integration of next-generation energy delivery and monitoring networks (Smart Grid)

• Represented a leading provider of insurance software applications in the development and execution of licensing strategies

• Represented a consortium of cable system operators comprising the majority of the North American cable market in the development of next-generation microprocessors for the provision of digital content to consumer devices

• Represented a NASDAQ-listed network communication equipment provider in expanding its market-share and service portfolio through the acquisition of strategic technology companies by merger and asset and stock purchase

• Represented a leading global provider of packaging and aluminum products in the divestiture of its scientific glass products division

• Represented an NYSE-listed petroleum company in the acquisition and divestiture of petroleum terminal and pipeline assets

• Represented an NYSE-listed chemical company in the strategic acquisition of a polymer division

• Represented a specialty screening assay service and database provider in its sale to an NYSE-listed biotechnology company

• Represented a leading regional hospital system in negotiations with EPIC, IDX and Allscripts for the development and migration of its information technology systems for electronic medical records and health care management

Affiliations

• Licensing Executives Society
• Licensing Executives Society International, current member and former U.S. Delegate (2008-2012)
• American Bar Association
• Pennsylvania Bar Association

Education

• Villanova University School of Law, J.D.
• Vanderbilt University, B.A.

Bar Admissions

• Pennsylvania
• New Jersey
• Nevada