## Facts

- IGEN International, Inc. granted Roche a limited exclusive license to use certain electrochemiluminescent (ECL) technology (1992 License).
- IGEN later formed a joint venture with Meso Scale Technologies, LLC, creating Meso Scale Diagnostics, LLC (MSD) to develop ECL-related technology, and granted MSD exclusive rights to broadly defined ECL intellectual property.
- After litigation over Roche’s compliance with the 1992 License, IGEN terminated that license and entered a complex set of agreements in which Roche obtained a new nonexclusive license and acquired IGEN; IGEN’s ECL intellectual property and licensor rights were transferred to BioVeris Corp.
- Roche, IGEN, BioVeris, and Meso executed a Global Consent and Agreement that included an anti-assignment clause barring any assignment of rights, interests, or obligations under the Global Consent “by operation of law or otherwise” without prior written consent of the other parties.
- In 2007, Roche acquired BioVeris through a reverse triangular merger: Roche’s merger subsidiary merged into BioVeris, with BioVeris surviving as the continuing corporation and becoming a Roche subsidiary.
- Meso claimed the merger effectively assigned the Global Consent and associated rights to Roche without Meso’s consent, triggering breach and related “springing rights” theories.

## Issues

1. Whether a reverse triangular merger in which the target survives constitutes an “assignment, in whole or in part, by operation of law or otherwise” that breaches an anti-assignment clause requiring counterparty consent.
2. Whether the merger or post-merger control/integration could be treated as a de facto transfer sufficient to trigger Meso’s asserted contingent rights in ECL intellectual property.

## Decision

- The Court of Chancery granted defendants’ motion for summary judgment on the anti-assignment claim and dismissed that claim.
- The court held that the 2007 reverse triangular merger, by itself, did not effect an assignment of BioVeris’s contractual rights or obligations under the Global Consent.
- The court rejected treating the change in stock ownership and control as a functional substitute for assignment where the contracting entity (BioVeris) remained the same legal party after the merger.
- The court declined to treat the merger as triggering Meso’s asserted contingent (“springing”) rights premised on a transfer or termination of third-party rights that did not occur through the merger structure.

## Legal Principles

- Under Delaware law, a reverse triangular merger in which the target is the surviving corporation does not, without more, constitute an assignment of the target’s contracts.
- Anti-assignment language barring assignment “by operation of law or otherwise” generally addresses transfers of contractual rights or obligations from the contracting party to a different entity; a change in the contracting party’s stock ownership or control is not, by itself, such a transfer.
- Absent express contractual language restricting changes of control or treating a merger/stock acquisition as an assignment, courts will not recharacterize a commonly used acquisition structure as an assignment solely because control changes hands.
- Arguments that post-merger integration or shareholder control makes the transaction equivalent to an assignment do not establish an assignment where the contracting entity remains the same and continues to hold the contract.

## Conclusion

The court held that BioVeris’s acquisition through a reverse triangular merger did not violate the Global Consent’s anti-assignment clause because BioVeris remained the contracting party and no contractual rights or obligations were transferred to a different entity; consequently, Meso’s assignment-based theories failed on summary judgment.


Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, 62 A.3d 62 (Del. Ch. 2013)