Due diligence on an IP portfolio to assist with acquisition

EQT is a leading alternative investments firm with approximately EUR 37 billion in raised capital across 24 funds. EQT funds have portfolio companies in Europe, Asia and the US with total sales of more than EUR 19 billion and approximately 110,000 employees. EQT works with portfolio companies to achieve sustainable growth, operational excellence and market leadership.

Dehns Partner Matt Hall was contacted by Oslo law firm Thommessen on behalf of EQT when EQT were looking to acquire Norway based company AutoStore AS, who have developed a unique automated warehouse storage and retrieval system with more than 130 installations in 22 countries.

 

Issue

EQT required Dehns to carry out due diligence on AutoStore’s portfolio and address any issues surrounding the strength of the IP portfolio and Freedom to Operate over third party IP rights, as well as advising on a dispute involving UK online grocery retailer, Ocado.  This was particularly challenging because of the sheer volume of work required for assessment of AutoStore’s 27 patent families, as well as numerous patent families owned by Ocado and other third parties that required review on connection with FTO.  It was crucial that Dehns made sure EQT fully understood the IP portfolio and any problems in relation to AutoStore’s IP position.

 

Solution

Working alongside the Dehns engineering team and with Dehns partner Adam Taylor, Matt was able to mobilise multiple attorneys and trainees in order to arrange for Dehns to absorb a vast amount of work in a short space of time, so that EQT had all of the answers they needed to go ahead with the acquisition process within their required timeframe.

Dehns worked closely with EQT and Thommessen throughout the whole process so that they had a full appreciation of the strengths and weaknesses of AutoStore’s IP position, as well as potential future issues. The advice from Dehns was used to enhance EQT’s assessment of the value of AutoStore based on the strength of their IP portfolio, which is vital for transactions of this nature.

 

Result

EQT were successful in acquiring AutoStore with a deal that fully satisfied both parties. 

AutoStore were impressed with the work carried out by Dehns in connection with the EQT transaction and they have continue to consult Matt in relation to on-going IP matters to augment the work done by AutoStore’s Norwegian patent attorneys.