March 1, 2013
On February 22, 2013, in Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, C.A. No. 5589-VCP (Del. Ch. 2013), Vice Chancellor Parsons of the Delaware Court of Chancery ruled that a provision in a license agreement prohibiting an assignment by operation of law did not apply to a reverse triangular merger. This ruling eliminates the uncertainty Vice Chancellor Parsons created in his April 2011 motion to dismiss decision in which he indicated that there may be circumstances where a reverse triangular merger could be considered an assignment by operation of law for purposes of an anti-assignment clause.
On June 22, 2010, the plaintiffs filed a complaint alleging that the acquisition by Roche Diagnostics GmbH, C.A. ("Roche") of BioVeris Corporation ("BioVeris") through a reverse triangular merger violated the anti-assignment clause found in a 2003 agreement between the plaintiffs and the predecessor entity to BioVeris, among others. The anti-assignment clause that the plaintiffs alleged was breached stated as follows:
Neither this Agreement nor any of the rights, interests or obligations under [it] 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 Court, in its earlier Memorandum Opinion dated April 8, 2011, denying a motion to dismiss, ruled that there may be circumstances where a provision prohibiting assignment of an agreement by operation of law could be triggered by a reverse triangular merger.
In support of its summary judgment motion, Roche argued that, because the target entity in a reverse triangular merger remains intact and continues to own its own assets, BioVeris did not assign anything at the time it was acquired through a reverse triangular merger. Roche further argued that a reverse triangular merger structure is analogous to a sale of the stock of a target corporation, and Delaware courts had repeatedly held that such a stock sale would not violate an anti-assignment provision that did not expressly prohibit a change in control.
The plaintiffs countered that Delaware case law regarding forward triangular mergers compels the conclusion that a provision covering assignment "by operation of law" extends to all mergers, regardless of their form. The plaintiffs further argued that the Court should embrace an unreported California federal court decision, SQL Solutions Inc. v. Oracle Corporation, 1991 WL 626458 (N.D. Cal. Dec. 19, 1991), that held that an anti-assignment provision in a software license agreement that did not contain a change of ownership or control provision was triggered by a reverse triangular merger.
The Court concluded that Delaware law, and specifically Section 259 of the Delaware General Corporation Law (the "DGCL"), supported Roche’s position that a reverse triangular merger generally is not an assignment by operation of law or otherwise. Section 259 provides that:
When any merger or consolidation shall have become effective under this chapter, for all purposes of the laws of this State the separate existence of all the constituent corporations, or of all such constituent corporations except the one into which the other or others of such constituent corporations have been merged, as the case may be, shall cease and the constituent corporations shall become a new corporation, or be merged into 1 of such corporations . . . the rights, privileges, powers and franchises of each of said corporations, and all property, real, personal and mixed, and all debts due to any of said constituent corporations on whatever account . . . shall be vested in the corporation surviving or resulting from such merger or consolidation; and all property, rights, privileges, powers and franchises, and all and every other interest shall be thereafter as effectually the property of the surviving or resulting corporation as they were of the several and respective constituent corporations. (emphasis added)
The Court pointed to cases holding that Section 259 results in only the transfer of the non-surviving corporation’s rights and obligations to the surviving corporation by operation of law. On the other hand, the language "except the one into which the other or others of such constituent corporations have been merged" in Section 259 implies that the surviving corporation would not have effected any assignment.
As to the plaintiffs’ arguments, the Court distinguished Tenneco and Star Cellular as cases involving forward triangular mergers where the target company was not the surviving entity, whereas in this case BioVeris was the surviving entity in a reverse triangular merger. Further, the Court declined to follow SQL Solutions because doing so would conflict with Delaware’s well-settled law that stock acquisitions, by themselves, do not result in an assignment by operation of law.
The Court also observed that its interpretation of the anti-assignment clause is consistent with the reasonable expectations of the parties, noting that the vast majority of commentary discussing reverse triangular mergers indicates that a reverse triangular merger does not constitute an assignment by operation of law.
This ruling is noteworthy because it confirms the view that, until the first Meso Scale Diagnostics ruling, practitioners had long taken for granted: a reverse triangular merger does not result in an assignment by operation of law of the acquired corporation’s contracts or other assets. The decision should provide comfort to would-be acquirors that they can structure transactions to which the DGCL is applicable in a manner that ensures that consents to assignment do not need to be obtained where there is no change of ownership or control language in the relevant anti-assignment clause. However, the decision also serves as a reminder that, outside of the confines of the DGCL, there remains uncertainty as to the risks associated with anti-assignment clauses–it may be prudent to require that consents be obtained from applicable third parties where a license or other agreement containing such a clause is important to the target’s business.
 At this earlier motion to dismiss stage the Vice Chancellor was required to assume the truthfulness of the plaintiff’s allegation and afford the plaintiff the benefit of all reasonable inferences. The Court declared that it could grant Roche’s motion to dismiss only if Roche’s interpretation of the anti-assignment clause was the only reasonable construction as a matter of law. Although noting that stock acquisitions do not, in and of themselves, constitute an assignment, the Court noted that the plaintiffs had alleged that the transaction in question involved more than just a change of ownership because the plaintiffs had alleged that, within months of the merger, all of BioVeris’s 200 employees were laid off, its Maryland facility was closed and its existing customers were notified that its product lines were being discontinued. These additional circumstances, in the Court’s view, created a plausible argument "that ‘by operation of law’ was intended to cover mergers that effectively operated like an assignment, even if it might not apply to mergers merely involving changes of control."
 SeeTenneco Automotive Inc. v. El Paso Corporation, 2002 WL 453930 (Del. Ch. 2002) and Star Cellular Telephone Company, Inc. v. Baton Rouge CGSA, Inc., 19 Del. J. Corp. L. 875 (Del. Ch. 1993) ruling that forward mergers do trigger anti-assignment provisions prohibiting assignments by operation of law.
 Since Vice Chancellor Parson’s motion to dismiss ruling in April 2011, a New Jersey federal court decision, DBA Distribution Services, Inc. v. All Source Freight Solutions, Inc., 2012 WL 845929 (D.N.J. Mar. 13, 2012), cited SQL Solutions in support of its holding that, under New Jersey law, a reverse triangular merger does constitute an assignment by operation of law. The issue was one of first impression in New Jersey. No other court appears to have cited with approval the SQL Solutions holding that the acquisition of a licensee under a license agreement through a reverse triangular merger results in an assignment of the license agreement.
With the increasing trend of globalization in the business world, Israeli companies and investors are commonly entering into agreements with U.S.-based entities. One of the most frequently found clauses in U.S. commercial agreements is an anti-assignment provision that prevents either or both of the parties from assigning the agreement to a third party prior to receiving the consent of the non-assigning party. Many transactions will also require the due diligence review of a large number of U.S. commercial agreements that the target has entered into. The following post will provide an overview and general guidance on the proper analysis of anti-assignment clauses.
Silent Provision and Change of Control Provision
In the event that an agreement does not contain an anti-assignment provision, a contract is generally assignable without the consent of the non-assigning party. See Peterson v. District of Columbia Lottery and Charitable Games Control Board, 673 A.2d 664 (D.C. 1996) (“The right to assign is presumed, based upon principles of unhampered transferability of property rights and of business convenience.”) Exceptions include where the assignment affects the duties of the other party to the contract, where the contract is considered to be a personal contract and when the assignment violates public policy (i.e. tort liability).
On the other hand, many contracts contain provisions that not only prevent the assignment of the contract, but also state that a change of control of the target is deemed an assignment or the contract contains a separate clause requiring consent in the event of a change of control. This type of provision will often be triggered in transactions in which a buyer is acquiring the target company. A careful review of change of control clauses is thus especially imperative and often very fact specific to the deal at hand.
One of the commonly used anti-assignment provisions reads as follows: “No party may assign any of its rights under this Agreement, by operation of law or otherwise, to a third party without the prior written consent of the non-assigning party.” In the situation where the target has entered into agreements that contain this clause, whether or not an assignment is considered to have taken place in the event of the acquisition of the target will largely depend on the specific deal structure of the transaction.
The commonly used deal structures are an asset acquisition, a stock acquisition and a merger.
- Asset Acquisition: In an asset acquisition the buyer only acquires those assets and liabilities of a target that are specifically listed in the Asset Purchase Agreement. Any agreement that has an anti-assignment clause will be triggered in the event of an asset acquisition. Indeed, one of the disadvantages of structuring a corporate acquisition as an asset acquisition is that contracts that will be transferred must be assigned
- Stock Acquisition: In a stock acquisition, a buyer acquires a target’s stock directly from the selling shareholders. After the closing of the Stock Purchase Agreement, the target will continue as it existed prior to the acquisition with respect to its ownership of asset and liabilities. Thus, in essence, the anti-assignment clause was never triggered in the first place. See Baxter Pharm. v. ESI Lederle, 1999 WL 160148 (Del. Ch. 1999).
- Mergers: Mergers differ from both asset acquisitions and stock acquisitions in that a merger is considered a creature of law, and the specific type of merger that is used will have a direct impact on whether the anti-assignment clause is triggered
- A direct merger occurs when the target merges with and into the buyer, and the buyer continues as the surviving entity. In a similar fashion to an asset acquisition, this type of merger will trigger the anti-assignment clause
- A forward triangular merger occurs when the target merges with and into the buyer’s merger subsidiary, with the merger subsidiary surviving the merger. This type of merger will trigger the anti-assignment clause. See Tenneco Automotive Inc. v. El Paso Corporation, 2002 WL 45930 (Del. Ch. 2002) and Star Cellular Telephone Company, Inc. v. Baton Rouge CGSA, Inc., 19 Del. J. Corp. L. 875 (Del. Ch. 1993).
- A reverse triangular merger occurs when the buyer’s subsidiary merges with and into the target, with the target surviving as a wholly owned subsidiary of the buyer. In effect, the target continues to exist after the closing. The Delaware Chancery Court in Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, 2013 WL 655021 (Del. Ch. Feb. 22, 2013) held that the acquisition of a target in a reverse triangular merger did not violate an existing agreement of the target that prohibited assignments by operation of law. The court noted that generally, 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. Thus there is a significant difference between a reverse triangular merger and both a direct merger and forward triangular merger, as in those cases the target was not the surviving company of the merger. Note, however, that the matter is not uniformly resolved. In SQL Solutions, Inc. v. Oracle Corp. (N.D. Cal. 1991), a United States District Court in the Northern District of California applied California law and federal IP principles to hold that a reverse triangular merger constitutes an assignment by operation of law.
Damages and Termination: Some courts have held that a contractual provision prohibiting assignment operates only to limit the parties’ right to assign the contract (for which the remedy would be damages for breach of a covenant not to assign) but the provision does not limit the power to actually assign the contract (which would invalidate the assignment), unless the contract explicitly states that a non-conforming assignment shall be “void” or “invalid.” See, e.g., Bel-Ray Co v. Chemrite (Pty.) Ltd., 181 F. 3d 435 (3d Cir. 1999). It is also imperative to review the termination section of an agreement, as certain agreements contain a provision by which the non-assigning party has the right to terminate the agreement in the event of an assignment.
As described above, any review of U.S. commercial agreements is highly dependent on the structure of the deal and at times, the specific jurisdiction governing the agreement. With offices across the United States, and specifically in Delaware, New York, and California, all states with highly sophisticated and oft-invoked commercial laws, Greenberg Traurig is uniquely situated in a position to offer high value legal services to Israeli clients.