James B. MacDonald II

Business and Finance, Intellectual Property, Communications, Consumer Financial Services, Copyrights, Life Sciences/Technology, Mergers and Acquisitions/Private Equity, Patents, Trademarks

James B. MacDonald II is a partner in the Business and Finance and Intellectual Property Departments and a member of the Communications, Consumer Financial Services, Mergers and Acquisitions/Private Equity, Life Sciences/Technology, Patents, and Trademark and Copyright Groups. His practice is concentrated in the areas of development; commercialization, outsourcing, and transfer of technology; and mergers and acquisitions.

Mr. MacDonald negotiates on behalf of and advises businesses in connection with structuring and executing acquisitions and divestitures, formation of joint ventures, strategic alliances, and other collaborative ventures. He also counsels on the preparation and performance of complex outsourcing and commercial agreements, including licensing, product development, distribution and supply arrangements, shareholder agreements, employment agreements, and consulting agreements. In addition, he advises businesses on identification, protection, and commercialization of intellectual property assets.

Representative Matters

• 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 an the procurement of equipment valued at more than $350 million
• Represented a leading global financial institution in various outsourcing engagements to enable deployment of a mobile contractless 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 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, integration and development of next-generation energy delivery and monitoring networks (smartgrid)
• Represented a leading provider of insurance software applications in the development and execution of licensing strategies
• Represented a leading multiple system operator (cable, telephony, high-speed data) in the development of next-generation residential and commercial messaging platforms
• 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 leading cable and high-speed data network provider in the development and deployment of next-generation and advertising and content delivery platform
• 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 the largest philanthropy 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 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

Professional Activities

American Bar Association

Pennsylvania Bar Association

Licensing Executives Society (LES)

Licensing Executives Society International (LESI)

Publications and Speaking Engagements

"Technology Webinar Series: Cloud Computing," Ballard Spahr webinar, September 27, 2011 

"Technology Lunch and Learn Series: Cloud Computing," Ballard Spahr CLE seminar, September 27, 2011

"Court Defends Rights of Individual Inventors; Underscores Importance of Precise Drafting," Ballard Spahr Alert, June 8, 2011

"Open Source Issues," Seventh Annual SpringPosium IP CLE Conference, Atlanta Bar Association IP Section and Georgia State University College of Law, April 30, 2011

"Licenses Do Not Automatically Transfer in the Merger or Sale of a Business," IP Frontline, Mondaq, Reuters, Bloomberg, Yahoo, Google, October 2009

"Trends in Consulting and Outsourcing Arrangements," National Council of Entrepreneurial Tech Transfer, August 2009

"Licensing from the University: Understanding the Company's Perspective," Association of University Technology Managers (AUTM), October 2005

"LLCs: Advising Small Business Start-ups and Larger Companies," Lorman Professional Education, September 2004

"Copyright, Trademark and Government Regulation Issues in E-Commerce," Delaware Valley Corporate Counsel Association, October 2003

"Technology Licensing—Commercial Documents Series," Pennsylvania Bar Institute, August 2003

"Key Issues for Strategic Alliances and Collaborations," Pennsylvania Continuing Legal Education, June 2003

Also writes and lectures on technology-related legal issues, formation and development of early-stage ventures, entity choice, licensing agreements, and e-commerce strategies

Board Memberships

Licensing Executives Society International, U.S. Delegate

Philadelphia Ship Preservation Guild

Villanova University School of Law (J.D. 1997)
Editor, Student Works, Villanova Sports & Entertainment Law Journal, 1996-1997; published case note author

Vanderbilt University (B.A. 1994)

Nevada

New Jersey

Pennsylvania