Due Diligence: Medical Devices Company acquisition

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.

Michael McGurk

Mike McGurk has more than 30 years of experience in virtually all aspects of patent law. Working with clients ranging from small start-ups to large Fortune 100 companies, he provides counsel in due diligence matters, global portfolio development and adversarial proceedings, including litigation, post-grant reviews, interferences and re-examinations. Mike works primarily with pharmaceutical, chemical, medical device and mechanical technology businesses. For at least the last fifteen (15) years, approximately 50-70% of Mike’s work has been focused in life sciences, including ANDA litigation support and pre-filing due diligence. Mike’s practice is informed by his background as a patent examiner in the chemical arts for the United States Patent and Trademark Office (USPTO), as a litigator for ten years, and as an expert in due diligence matters. He regularly provides strategic litigation counseling support to clients across the nation, and has handled numerous patent matters before the Patent Trial and Appeal Board of the USPTO. His extensive due diligence experience includes pre-litigation, acquisition, in-license, freedom-to-operate product and/or process clearance, design around, validity and patentability matters. Mike works with teams having the appropriate technical and legal abilities.