Client Successes

Navigant Expands Capabilities with Acquisition

When global professional services giant Navigant Consulting identified Atlanta-based RevenueMed as a strategic acquisition target, Navigant’s general counsel turned to Marshall, Gerstein & Borun LLP for guidance on all IP-related aspects of the transaction. RevenueMed, a provider of coding, revenue cycle management, and business process management services for the healthcare sector, represented an opportunity to further strengthen Navigant’s position as a leading provider of end-to-end revenue cycle business process management services and to expand the company’s platform to include global, offshore capabilities for its clients.

Marshall Gerstein’s IP Transactions team began the engagement with significant technology due diligence, followed by a multidisciplinary effort ranging from extensive agreement review (encompassing open source agreements, employment agreements and all other relevant contracts) through the transfer of RevenueMed’s IP portfolio to Navigant. As part of the transaction, Marshall Gerstein:

Negotiated the IP-related provisions in the asset purchase agreement, as well as a master services agreement with a soon-to-be former affiliate of RevenueMed to develop software applications and other deliverables for Navigant following the acquisition.
Drafted and negotiated a transition services agreement to effect the transition of operations of an affiliated entity not acquired by Navigant out of RevenueMed while ensuring that RevenueMed’s business would continue to run smoothly during its integration into Navigant.
Addressed IP-related employment issues.

This significant acquisition, which closed in February 2015, augments Navigant’s business process management offerings and further positions this Marshall Gerstein client for long-term, sustainable growth.

Successful IP-Intensive Acquisition

Monopar Therapeutics, a biopharmaceutical company focused on developing innovative drug combinations to improve clinical outcomes in cancer patients, turned to Marshall Gerstein to assist with the acquisition of GPX-150, a broad spectrum Phase II Cancer drug candidate from Gem Pharmaceuticals. Marshall Gerstein’s attorneys, who also serve as Monopar’s IP prosecution counsel, structured the intellectual property contribution and assignment components for the IP-intensive acquisition. Our attorneys’ experience in both biopharmaceutical transactions and this specific technology, enabled us to efficiently and effectively identify and integrate key terms to address the full range of intellectual property critical to the deal, which ultimately led to a timely and successful acquisition.

Gene Therapy Requires Multifaceted Licensing Strategy

Treatment with Nanoparticles, Genetic therapy, Fluorescent staining

Salk Institute for Biological Studies and Juan Carlos Izpisúa Belmonte, one of TIME magazine’s “50 Most Influential People in Health Care” sought the counsel of Marshall Gerstein on a licensing strategy for a technology platform for gene therapy. The technology platform allows for genes to activate without creating breaks in the genetic code that may result in unwanted mutations. Salk’s technology platform has proved to treat models of diabetes, muscular dystrophy and acute kidney disease and could be applied to more cell types and organs to treat a wider range of human diseases and age-related conditions. Marshall Gerstein executed a portfolio licensing strategy which offered the best way to ensure development of all the potential applications. Marshall Gerstein collaborated with Salk’s in-house technology transfer team and their general counsel’s office to construct the portfolio licensing strategy.

To learn more about Juan Carlos Izpisúa Belmonte, see MIT Technology Review’s article highlighting his work at Salk Institute for Biological Studies.

Julie M. Watson, Special Counsel