A former senior partner at a large law firm with substantial litigation and dispute resolution experience in resolving patent licensing disputes, Mr. McGuire also has extensive experience as a mediator and arbitrator of intellectual property claims, including patent infringement, patent licensing, ownership of IP, scope and construction of non-compete and field-of-use clauses, copyright, and trademark matters.
Mr. McGuire is a frequent lecturer on Intellectual Property and, as such, has acted as a panel presenter for Boston Bar Association’s Intellectual Property Section. Additionally, he has presented and trained Moscow Commercial Court judges on mediation and transnational IP patent licensing disputes.
- Licensed drug arbitration. Arbitrated licensing dispute involving FDA approved drug and patent license agreement. Resolution required construction of scope of patent claims and terms of license agreement.
- Medical device patent infringement arbitration. Panel chair of member panel arbitration involving patent claims construction, alleged infringement, and construction and application of patent licensing agreement.
- Heart rate monitor patent. Mediated dispute between inventor and major manufacturer of health club and sports equipment concerning patents on devices for monitoring heart rate during exercise.
- Healthcare device patent. Mediated dispute between inventor of FDA-approved medical device and investors in closely-held corporation where ownership of IP was key to employment and shareholder claims.
- MRI patent. Mediated dispute involving functional MRI patents between doctor/inventor and development company licensed to use some, but not all, of MRI patents and patent applications. Issues included scope of use, royalty agreements, rights to use future patents, and consulting for product development and improvements.
- Arthroscopic surgery medical devices and methods. As settlement counsel for doctor/inventor, negotiated patent licenses and royalty agreements involving arthroscopic ACL surgery with major U.S. medical device manufacturers.
- Sportswear patent. Mediated business dispute involving break-up of closely held corporation where key asset was patent for sportswear product with disputed claims of ownership.
- Web software. Mediated dispute between software developer/owner and major international software manufacturer.
- Robotic software. Mediated IP and shareholder dispute involving software for robotics in start-up company.
- VC funding of software development. Mediated dot.com company dispute with international venture capital funding. Issues included funding obligations and milestones; ownership of customer accounts, customer lists, accounts receivable, and other intangible assets.
- Trademark, copyright, and trade secrets
- Music copyright infringement. Mediated dispute between international rock band and performing artist/songwriter concerning alleged copyright infringement of songs.
- International trade name licensing. Mediated international trade name licensing dispute involving scope of use, broker/finder fees, and accounting claims.
- International IP. Mediated trade secret/development dispute involving early adapters of digital photography technologies and web-hosting environments.
- Copyrights/trademark/trade dress. Mediated apparel industry dispute involving product branding, validity of copyrights, and related IP matters.