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.
The “KlickFix” Sequentially-Deployable Lip Seal System increases productivity while assuring on-line capability in manufacturing, thanks to the Marshall, Gerstein & Borun LLP IP team who helped make this useful system become a worldwide reality.
Almost all centrifugal and rotary pumps require a sealing system to provide sealing integrity of the drive shafts carrying the impellers and protect against pumped fluid leakage. The “KlickFix” cartridge system is a new environmentally conscious alternative to mechanical seals and compression packing. Marshall Gerstein patent attorneys were successful in preparing, filing, and prosecuting U.S. & foreign patent applications on behalf of Ashbridge & Roseburgh Inc., a Canadian entity. These applications resulted in a number of patents covering the Sequentially-Deployable Lip Seal System embodied in the “KlickFix” seal system, and described as “The Future of Seal Technology.”
The “KlickFix” cartridge sealing system, manufactured, and distributed by James Walker & Company Ltd, aids in achieving environmental plant management standards by eliminating leakage, reducing power consumption and minimizing flush water requirements. The sequentially-deployable lip sealing system also significantly reduces downtime of shaft-driven manufacturing equipment. When a lip seal wears down, instead of dismantling the machinery to replace a seal, one of several pre-loaded back-up seals is deployed. The machinery can remain on-line, thereby avoiding significant disruptions.
The patent protection our Firm coordinated for “KlickFix,” in the U.S., Australia, Europe, Canada, Brazil, Mexico, China, and Japan, was instrumental in our IP Transaction team’s successful negotiation of a global patent license agreement with James Walker & Company Ltd., a U.K.-based multi-national company with a worldwide reputation for providing fluid sealing solutions.
Eliminating Spillover via an Inter Partes Victory
The Firm secured a complete victory for SSW Holding Company, Inc., in an inter partes review proceeding challenging the validity of an SSW patent, making its client one of just a handful to emerge from the newly established inter partes review process with every challenged patent claim fully intact.
Inter partes review (IPR) is a streamlined process for challenging patents created through the Leahy-Smith America Invents Act of 2011 and, to date, has proven favorable to those challenging patents. Of the 78 decisions issued in IPR proceedings through June of 2014, the Patent Trial and Appeal Board cancelled or invalidated nearly 80 percent of the patent claims before it. In only 14 percent of such cases did the board find in favor of the patent owner with respect to all of the patent claims under consideration, as it did in Schott Gemtron Corp. v. SSW Holding Company, Inc. The Patent Trial and Appeal Board’s decision rejected arguments that SSW’s patent—which covers spill-containing refrigerator shelving technology used by major appliance manufacturers—was “obvious” and therefore invalid. Oral argument in the case took place on June 23, 2014.
Northwestern University licensed a patent portfolio of technologies from the laboratory of Chad A. Mirkin to launch AuraSense LLC., a biotechnology company founded to pursue the unique therapeutic potential of engineered nanoparticles.
Founded in 1851, Northwestern University is one of the premier U.S. institutions of research and higher learning. In 2010’s fiscal year, Northwestern was awarded research grant funding of $557.3 million.
Marshall, Gerstein & Borun LLP has been handling Northwestern’s patent portfolio of inventions from Chad Mirkin’s laboratory since 2005. Professor Chad Mirkin is recognized as a world leader in the research and application of nanotechnology. Currently, Dr. Mirkin is the most-cited chemist in the world, and he is the most-cited nanomedicine researcher in the world. Among other awards, Professor Mirkin is the first in the Midwest and the 10th in the world to be elected to all three branches of the National Academies, in 2009 he won the prestigious Lemelson-MIT Prize which recognizes outstanding inventors, and is named to the U.S. President’s Council of Advisors on Science and Technology. Professor Mirkin is the Director of the International Institute for Nanotechnology.
For more than a year, we led the Northwestern University team in negotiating this portfolio license agreement to launch Professor Mirkin’s third start-up company, AuraSense LLC. The company has gone on to license additional inventions from Northwestern and develop the technology. AuraSense plans to develop this nanoparticle technology for transfection of genetic material into cells to regulate protein expression, therapeutics to mimic HDL or “good” cholesterol, and to study and quantify intracellular agents and corresponding phenomena, including genetic and small molecule activity in live cells.
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.
Zebra Technologies Accelerates Strategic Growth with Deal to Acquire Matrox Imaging
When Zebra Technologies Corporation, a world leader in designing, manufacturing, and selling innovative software, hardware, and digital solutions, decided to accelerate its strategic growth in machine vision by acquiring the imaging division of Matrox, it turned to Marshall Gerstein to handle the complex IP issues involved in the carve-out acquisition. Executing an interdisciplinary approach, Marshall Gerstein assembled a small team with deep subject matter experience within our IP transactions, electrical engineering patent prosecution, and trademark practice groups to ensure a smooth and successful deal that protected Zebra’s interests, particularly with respect to use of IP assets with applicability across multiple businesses.
Zebra notes that “the acquisition of Matrox Imaging expands the portfolio of machine vision products, software and services Zebra can offer customers to help them thrive in the on-demand economy that is constrained by both labor shortages and limited supply of upstream goods and materials,” according to the company’s press release.
Read Zebra’s press release on this intended acquisition made in part with the counsel of Marshall Gerstein.
Supply & License Agreement for First-Ever Point of Care Vet Cancer Screen
Marshall Gerstein represented Volition Rx Limited in an exclusive global supply and licensing agreement with Heska Corporation to sell Volition’s Nu.Q® Vet Cancer Test. The transaction clears the way for the first cancer screening available at clinics and other points of care, opening a market for cancer screening and monitoring for dogs and cats estimated to be worth more than $11 billion. The $28 million transaction--$10 million upfront and up to $18 million based upon achieving near/mid-term milestones—advances Volition’s strategy to ensure the broadest possible accessibility to the Nu.Q® Test worldwide. Volition continues to make significant progress in ongoing negotiations with the multi-national veterinary companies to provide central lab global coverage for the Nu.Q® Test. The firm is also negotiating these strategic partnerships.