A Japanese-based client in a multi-million dollar deal sought to acquire a U.S. based company that makes medical devices (“the Technology”). The due diligence of the target company and the Technology included a thorough review of the entire IP portfolio and related files. We met with and had numerous calls with the target’s IP counsel to review the IP and coverage for the related Technology that was being acquired. We also undertook a very careful review of all known third party IP. We worked closely with the target’s counsel to review each piece of third-party IP that the target or the client identified to successfully confirm the absence of any potential infringement issues.
One major issue, and potential deal breaker, that we addressed during the due diligence process involved a third-party technology used with the Technology. The third party had the right to cancel the contract with the target if the target was sold or otherwise acquired. We were able to work with the target’s counsel and with the client to arrive at a mutually beneficial approach to assure that the deal moved forward.
In addition to the above IP due diligence, we reviewed a significant number of contracts, including service providers, consultants, employees, NDA’s, other license agreements.
