Delaware Chancery Court Holds That Reverse Triangular Merger Does Not Trigger Consent Requirement Under Non-Assignment Provision in Target Contract

Overview

In Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbHⁱ, the Delaware Court of Chancery held that a reverse triangular merger does not involve the assignment by operation of law or otherwise of assets of the target corporation. Accordingly, the Court determined that a non-assignment provision covering intellectual property rights of the target was not breached by the defendant’s failure to obtain consent in connection with the merger.

From the perspective of M&A practitioners, this decision affirms the effectiveness of the reverse triangular merger structure in avoiding the restrictions of non-assignment provisions in target contracts. From the perspective of drafters of licenses and other commercial contracts, the decision underscores the limitations of non-assignment clauses, and the importance of alternative restrictions such as change of control provisions for those seeking to restrict the rights of the parties with whom they contract when subject to an acquisition.

Triangular Mergers

A reverse triangular merger involves the acquisition of a target through the merger of a wholly-owned subsidiary of the acquirer into the target, with the target as the surviving entity. A forward triangular merger, by contrast, involves the merger of the target into the wholly-owned subsidiary, with the wholly-owned subsidiary as the surviving entity. The result of both structures is that the target becomes a wholly-owned subsidiary of the acquirer.

The Law Before Meso Scale

Prior case law in Delaware and other jurisdictions had established that a forward triangular merger involves an assignment by operation of law of the target corporation’s assets to the surviving corporation. Less well-settled was the question of whether a reverse triangular merger also involves an assignment. The prevailing view among commentators and practitioners before Meso Scale was that it did not, and this feature was viewed as a significant advantage of the acquisition structure: a reverse triangular merger was generally thought not to trigger third-party consent requirements under non-assignment provisions in target contracts. However, in April 2011 the Chancery Court had denied a motion to dismiss brought by the defendants in Meso Scaleⁱⁱ, ruling that the plaintiffs and defendants had both asserted reasonable, though competing, constructions of the non-assignment provision at issue—and thereby creating additional uncertainty about Delaware law.

In another notable case, SQL Solutions v. Oracleⁱⁱⁱ, a U.S. district court in the Northern District of California in 1991 held that a non-assignment provision in a license agreement did, in fact, apply to a reverse triangular merger where a third-party licensor would have been adversely impacted by the transaction—although that decision has not generally been followed and various commentators have questioned its analysis and validity.

Background

The non-assignment provision at issue in Meso Scale read, in relevant part, as follows:

  Neither this Agreement nor any of the rights, interests or obligations under this Agreement shall be assigned, in whole or in part, by operation of law or otherwise by any of the parties without the prior written consent of the other parties...

The provision was included in a “global consent” instrument entered into as part of a 2003 transaction among defendant Roche Holding Ltd. (Roche), plaintiffs Meso Scale Diagnostics, LLC (MSD) and Meso Scale Technologies, LLC (MST), IGEN International, Inc. (IGEN) and several other parties. Although there was some dispute over the scope of the non-assignment clause, the Court determined that it could reasonably apply to certain intellectual property (IP) rights held by IGEN, including under agreements with MST and MSD. IGEN would later spin-off those IP rights to BioVeris Corporation (BioVeris), which was acquired by Roche in 2007 through a reverse triangular merger. Plaintiffs MSD and MST, who had previously been in a series of disputes with Roche over the IP, alleged that the merger constituted an assignment of BioVeris’ IP rights without their consent in breach of the non-assignment provision.

Decision

The Court held that there was no breach of the non-assignment provision because the reverse triangular merger did not involve an assignment of the IP rights. The Court further stated that “[g]enerally, mergers do not result in an assignment by operation of law of assets that began as property of the surviving entity and continued to be such after the merger.”

In reaching its decision, the Court focused on the language of Section 259(a) of the Delaware General Corporation Law which states that, upon the effectiveness of a merger, the separate corporate existence of all constituent corporations, except the one into which the other(s) have merged (i.e., the surviving corporation), shall cease. Without delving too deeply into the metaphysics of a merger, the Court determined that the statutory language does not imply a transfer by the surviving corporation of its own rights and obligations in a merger. The Court distinguished a reverse triangular merger from a forward triangular merger, where the target corporation is not the surviving entity and may, therefore, be thought to transfer its rights and obligations to the surviving corporation by operation of law.

The Court considered but did not find persuasive the SQL Solutions decision because it was based on the proposition that a mere change in the legal form of ownership of a corporation (such as through a stock purchase) can result in an assignment by operation of law, which ran contrary to Delaware jurisprudence. The Court also rejected plaintiff’s argument that, regardless of form, the transaction effectively involved an assignment of BioVeris’ IP rights to Roche, holding such a theory to be contrary to Delaware’s longstanding doctrine of independent legal significance.

Takeaways

• Importance of Deal Structure. This decision confirms the importance of deal structure in M&A transactions vis-à-vis the application of non-assignment provisions in the target’s contracts. The exercise of obtaining third-party consents pursuant to such non-assignment provisions can be costly and time-consuming and can add uncertainty to a transaction. Meso Scale gives comfort to practitioners that they can avoid obtaining these consents when utilizing a reverse triangular merger under Delaware law.
• Importance of Change of Control Provisions. In highlighting the limitations of non-assignment provisions, Meso Scale reinforces the importance to contract drafters of restrictions such as change of control provisions that do not depend on acquisition structure—where the contracting party wishes to control what happens to the contract in connection with an acquisition of the other party. Such control is often desirable, for example, to a licensor that wishes to prevent its license from falling into the hands of a competitor.
• Application to Reverse Mergers Generally. Although this case involved a reverse triangular merger, the Court’s reasoning would appear to extend to any reverse merger where the target corporation is the surviving entity.
• Implications for Other Jurisdictions. This decision is significant to M&A practice because of the popularity of Delaware as a jurisdiction for incorporation and because of the persuasiveness of Chancery Court decisions on matters of corporate law in other jurisdictions. Nevertheless, the precedential value of Meso Scale may be open to question in any jurisdiction other than Delaware, due to the Court’s reliance on Delaware law.

Contacts

If you have any questions or would like more information on the issues discussed in this LawFlash, please contact any of the following Morgan Lewis lawyers:

ⁱMeso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, 2013 WL 655021 (Del. Ch. Feb. 22, 2013)

ⁱⁱMeso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, 2011 WL 1348438 (Del. Ch. Apr. 8, 2011)

ⁱⁱⁱSQL Solutions, Inc. v. Oracle Corp., 1991 WL 626458 (N.D. Cal. Dec. 18, 1991)