David MacDonald
Overview
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, 2018, 2020, 2021, 2022, 2023 and 2024 guides to leading U.S. law firms for business. David is the former Chair of the Transactions Involving IP Rights Committee of the ABA.
Experience
Representative Matters
EUSA Pharma, a biopharmaceutical company focused on oncology and rare disease, in its acquisition (pending HSR review) of the global rights to SYLVANT® (siltuximab) for $115 million from Janssen Sciences Ireland UC, a subsidiary of Janssen R&D Ireland. SYLVANT® is approved in more than 40 countries worldwide, including the United States, the European Union, the Republic of Korea and Canada, for the treatment of idiopathic multicentric Castleman’s disease (iMCD), a rare, life threatening and debilitating orphan condition.
Tigen Pharma SA in an option and collaboration agreement with the Ludwig Institute for Cancer Research for exclusive option rights to breakthrough and proprietary technologies for T-cell based cancer immunotherapy developed in the Lausanne Branch of LICR in collaboration with the University of Lausanne and Centre Hospitalier Universitaire Vaudois.
Spectrum Brands in its $2 billion carve-out sale of its global consumer battery business to Energizer.
Teva Pharmaceutical Industries, Ltd. in its exclusive licensing agreement with Otsuka to develop and commercialize Teva’s investigational drug candidate fremanezumab (TEV-48125), an anti-calcitonin gene-related peptide (CGRP) monoclonal antibody for the prevention of migraine, in Japan.
Sun Pharmaceutical Industries Ltd in its acquisition of the anti-cancer agent sonidegib (LDE225), a Hedgehog signaling pathway inhibitor, marketed as Odomzo, from Novartis, for an upfront payment of $175 million and additional milestone payments.
Welsh, Carson, Anderson & Stowe in its carve-out acquisition of QuickBase, Inc. from Intuit, Inc.
Sun Pharmaceutical Industries Ltd. in its licensing agreement with Almirall for the development and commercialization of tildrakizumab (MK-3222) biologic for chronic plaque psoriasis in Europe.
Teva Pharmaceutical Industries Ltd. in its agreement with Takeda Pharmaceutical Company Limited to form a new business venture to offer patients and the healthcare system in Japan the portfolio of Teva’s high-quality generic medicines and Takeda’s long listed products.
Purdue Pharma in its worldwide collaboration agreement with Eisai Inc. to develop and commercialize Eisai’s clinical candidate lemborexant, a dual orexin receptor antagonist entering Phase III clinical development for the treatment of insomnia.
Bristol-Myers Squibb in the restructuring of its Erbitux ® (cetuximab) collaboration in North America with Eli Lilly, transferring rights to the product in North America from Bristol-Myers Squibb to Lilly, including full commercialization and manufacturing operational responsibilities.
Sun Pharmaceutical Industries in its agreement with Sharp & Dohme Corp. for the development, manufacture and commercialization of Merck’s tildrakizumab (MK-3222) biologic worldwide for chronic plaque psoriasis.
Pfizer Inc. in connection with its $635 million acquisition of the marketed vaccines portfolio of Baxter International Inc.
Bristol-Myers Squibb Company in connection with the $4.3 billion sale of its global diabetes business to its collaboration partner AstraZeneca.
Nordex Energy GmbH in licensing patents related to zero voltage ride through technology for wind energy turbines from GE Infrastructure Technology LLC.
DuPont Pioneer in licensing agreements with Monsanto Company for next-generation soybean technologies in the United States and Canada, regulatory data rights and access to disease resistance and corn defoliation patents.
Pfizer Inc. in its agreement to acquire from AstraZeneca the over-the-counter rights worldwide for NEXIUM, a prescription drug for treatment of the symptoms of gastroesophageal reflux disease.
Sun Pharmaceutical Industries in forming a joint venture with Merck & Co., Inc. to bring innovative and differentiated drug formulations to emerging markets in a global development, licensing, supply, sales and marketing collaboration.
Bristol-Myers Squibb Company in its $885 million acquisition of ZymoGenetics, a biopharmaceutical company focused on the development and commercialization of therapeutic proteins for the treatment of human diseases.
Danaher Corporation in its $1.1 billion acquisition of the AB Sciex mass spectrometry business, and Molecular Devices Corporation, an analytical instrumentation company from Life Technologies Corp. and MDS, Inc.
Lucent Technologies as part of Kirkland team in forming the Multimedia Patent Trust for patent infringement suit where Lucent and MPT asserted patents related to various software and hardware applications.
Samsung Electronics Co. Ltd. in financing of Picsel (Research) Limited and Picsel Technologies, while Picsel was in UK administration proceedings, in exchange for rights in patents and other intellectual property.
Prior Experience
Associate, Skadden, Arps, Slate, Meagher & Flom LLP, 1997–1999
More
Thought Leadership
Seminars
David has spoken at various seminars and meetings, including on the following topics:
“Developing and Negotiating the Contract for an Outsourcing Agreement,” for the IAOP Certified Outsourcing Professional Master Class
“Top 10 Mistakes Commonly Made When Drafting and Negotiating Patent License Agreements,” as part of a joint seminar presented by Kirkland & Ellis LLP and Bae, Kim & Lee, LLC
“Update on Quanta: Cases and Contracts,” at the Kirkland & Ellis LLP Licensing Law Seminar
“Downstream from Quanta and TransCore: Contracts, Covenants and Consequences,” at the Kirkland & Ellis LLP Licensing Law Seminar
“Recent Decisions on Patent Exhaustion and How They May Affect Your License and Settlement Agreements,” at the Kirkland & Ellis LLP Annual Technology & Law Seminar
Credentials
Admissions & Qualifications
- 1998New York
Education
- Rutgers School of Law at NewarkJ.D.High Honors1997Order of the Coif
- Harvard UniversityB.A., Classics1991