International Business

Experience

Inbound U.S. Intellectual Property and Trademarks Registration and Transactional Advice

We have provided a number of Indian companies with inbound U.S. intellectual property and trademarks registration and transactional advice.

Acquisition

Acquisition of factory assets and operations in the Peoples Republic of China by our client for an undisclosed amount. The client engages in the design, manufacture, marketing and services of semi-conductor processing equipment used in the fabrication of integrated circuits.

Closely Held Company PRC Joint Venture

Among several PRC joint  ventures, we represented a private lubricant oils company in a complex lubricant oils equity joint venture negotiated in the Peoples Republic of China. Decades of experience shortened the transaction timeline and reduced costs.

China PRC Representative Office and WFOE (Wholly Foreign Owned Enterprise) Creation

We have represented a number of companies, including a large consumer products manufacturer, in matters related to the China PRC Representative Office and the creation of WFOEs (Wholly Foreign Owned Enterprises). We have cost-effectively and repeatedly teamed with local counsel in these matters.

U.K. Holding Company Reorganization

Representation of a holding company headquartered in the United Kingdom in the restructuring of its United States operations. Advice included (i) U.S. International tax advice on the minimization of the organization's worldwide effective tax rate, including transfer pricing analysis; (ii) analysis of the U.S. - U.K. tax treaty with respect to intercompany payments; (iii) advice regarding expatriate U.S. tax liability and (iv) re-incorporation of the U.S. subsidiary ("F reorganization") to minimize state and local taxes.

International Joint Venture Formation

Represented the client in establishing a joint venture with a Canadian firm by means of a license of intellectual property combined with an equity option agreement.

Supply Chain Research and Development, Confidentiality and Non-Dislosure Agreements in Asia

We represent a public medical-related company with respect to supply chain research and development, confidentiality and non-disclosure agreements in Taiwan, China, Singapore and Asia generally. Our extensive experience coupled with local counsel whom we know well creates a quick and efficient result.

Acquisition

We represented the Purchaser in the acquisition of 100 percent of the shares of PP Medizintechnik GmbH, a German corporation, from Paragon Secondary Partners L.P. and Gerhard Glufke. The purchase price was €55 million ($74 million). Working with the assistance of German local counsel as necessary, we prepared and negotiated the Share Purchase Agreement and all related closing documents, and reviewed all due diligence in this transaction.

Purchase of Assets

We represented the purchaser of substantially all of the assets of Oerlikon Optics U.S.A., the U.S. operating arm of OC Oerlikon Management AG, a Swiss corporation. The purchase price was $6,200,000, with certain adjustments. A critical component of the transaction was the negotiation of a technology license agreement with the Swiss parent. Technology issues were negotiated with the Swiss entity and added a level of heightened complexity to the transaction.

Inbound (FDI) Merger and Acquisition Purchases of U.S. Company, Creating Cross Border Equity Joint Ventures

We have represented a number of French and British technology companies with respect to inbound (FDI) merger and acquisition purchases of U.S. company, creating cross border equity joint ventures.  Our years of experience and large number of these clients speeds the process and transactions.

Purchase of Membership Interests

Purchase of 100 percent of the membership interests of SphereOptics, LLC, a New Hampshire limited liability company. SphereOptics, in turn owned 100 percent of the ownership interests of SphereOptics SARL, a French company, and 10 percent of the ownership interests of SphereOptics GmbH, a German company. The initial purchase price plus an earn-out payment totaled $6 million. Closing date was January 19, 2010. The French and German interests required heightened due diligence and negotiation of specific representations and warranties, which we achieved with the assistance of local counsel. The French component involved last-minute tax planning to minimize the effects on French executives.

Establishing Foreign Subsidiaries Around the World

We have represented scores of foreign subsidiaries, sometimes for the same client, from international labor and employment issues to tax and corporate issues.  We leverage our long history of assisting clients to expand internationally through foreign direct investment.

Sale of Start-Up Tech Company

Among numerous sales of small to large start ups, we handled the sale to a French Public Company of a private company involved in software consulting and integration for B-2-B applications and interfaces with SAP and Oracle ERP systems: e-Purchasing, e-Sourcing, e-Procurement and e-Invoicing.  Closed this transaction in record time: one and a half weeks. This favorable result was made possible by Dinsmore’s deep bench of Mergers and Acquisitions, Intellectual Property, Tax, International and Employee Benefits lawyers.

Halma Acquisitions

Growing a business is challenging, even with the opportunities offered by today’s global marketplace. Expanding your product and service offerings to your customers requires a strategic vision and focused plan, as well as the resources to pull it all together.

Halma, p.l.c., is an international group of technology companies with its headquarters outside of London, England. Halma has worked with Dinsmore for nearly 25 years. In that time, Dinsmore has represented Halma through a multitude of acquisitions, both domestically and abroad, as Halma has grown to become a global leader in health and safety technology.

When the opportunity recently arose to acquire two companies to boost Halma’s Health and Analysis sector, the company again turned to Dinsmore for counsel. The acquisitions of California-based Sensorex, Inc. and Pennsylvania-based Accutome, Inc., offered myriad challenges. As the deals progressed, it appeared Halma would be able to announce the closings of both transactions to the Stock Exchange on the same day.

Our team worked to structure the asset purchase of Sensorex for $37.5 million and the stock purchase of Accutome for an initial payment of $20 million, handling everything from negotiating and drafting the documents to managing the legal due diligence for both transactions. We assisted Halma with the intellectual property, benefits and employment components of each deal and assisted with all details of closing.

On the Accutome deal, we were faced with the unique task of sequentially structuring the deal to comply with tax law related to the acquisition of Accutome’s Dutch subsidiary. Because of the tax implications of acquiring a subsidiary through one Halma affiliate, while acquiring the parent company through another affiliate, we were asked to ensure that the transaction involving the subsidiary was closed before the U.S. transaction was completed. This required that we coordinate compliance with Dutch requirements in real time, in order to complete the transaction prior to opening of the European markets.

Accutome is primarily known for designing diagnostic equipment used to identify eye conditions and for innovative surgical instruments. Sensorex, a manufacturer of electrochemical water sensors, will enable Halma to enhance its water analysis and water quality programs. Assisted by Dinsmore’s counsel, Halma continues to grow and expand its product offerings to clients and position itself as an industry leader.

Foreign Corrupt Practices Act, Anti-Bribery and Anti-Money Laundering Compliance

We routinely assist public companies, their subsidiaries and private companies in creating effective compliance programs. We recently concluded, on an efficient basis, providing contract provisions, re-drafting international sales and distribution contracts, creating and suggesting training power points and software modules, drafting third-party and employee periodic compliance questionnaires and certificates, advising on internal audit functions and related procedures and revamping client compliance policies. We were proud to add significant value to the client’s compliance and prevention efforts.

Stock Purchase

Represented the publicly-held purchaser of a Canadian venture-funded software company.

Construction and Services

Our firm represented several large private companies with respect to Construction and Construction Services Agreement for a Mexican plant construction. We teamed with top local counsel to achieve sound US terms valid under Mexican law.

China Representative Office and Entity and Operational / Compliance Issues

Represented several large private companies with respect to sales, Representative Office and subsidiary issues in the Peoples Republic of China. Identifying key legal issues then teaming with great local counsel led to quick resolution.

Export Control/OFAC

Our firm represented US subsidiaries and European parent companies with respect to OFAC, Office of Foreign Assets Control, Export Control, Commerce Department, Regulations on ability to sell products through European parents with end users in Iran and Syria and other embargoed countries. Practical analysis and solutions permitted sales of same goods.

Counseled Our Client Through Complex Satellite Communications Transactions Involving Multiple Organizations

Client: SkyVision Global Networks Ltd.

We represented SkyVision Global Networks Ltd., a Bermuda limited company in a series of complex, cross-border transactions concerning the sourcing and distribution of satellite communications capacity. The transactions involved upwards of a dozen different counterparties and our client played multiple roles across the interrelated contractual relationships including buyer, seller and reseller of various goods and services. In addition to sophisticated contract drafting and negotiation with respect to each agreement, our charge required a great deal of coordination, strategy and attention to detail given that the rights and obligations of our client under one agreement created implications and dependencies across other contracts and counterparties. Ultimately, we were successful in partnering with our client as it embarked on a significant step forward in the scope and scale of its operations.

Outsource of Rationalization of Legacy Computer ERP Systems

We represented a NYSE-traded office supply company in the outsourcing of rationalization of Legacy computer ERP systems.  Because of significant past outsourcing experience, we simplified and streamlined a very complex transaction.

Organization of Multiple Software and Technology Start Ups, Venture Capital and Private Equity

Scores of software and technology start ups organized addressing tax, venture capital and private equity investments, buy-sell issues, phantom equity, stock options, executive compensation, corporate counseling and customer and employment contracts.  Our clients have benefitted from the leverage of our experienced technology, intellectual property and employee benefits resources.

Licensed Manufacturer and Distribution

Represented several large private manufacturers and public companies with respect to licensing Indian, Chinese and other foreign companies to manufacture and sell products to the client and to end users in a Territory. Repetitive experience in this area leads to speed and efficiency.

American Automobile Industry Supplier v. German Automobile Industry Supplier

I served as lead litigation counsel, successfully assisted our client, a European manufacturer and supplier of tooling for the automobile industry, in avoiding suit in the United States. This particular German manufacturer has always tried to keep its operations and management within Germany. It has also sought to avoid the hassle and expense of legal proceedings in foreign venues. In 2007, however, this manufacturer was sued in the United States District Court for the Northern District of Ohio. Some of its tooling was being used there by an American automobile industry supplier. The American company alleged that the tooling was defective, claiming damages in excess of $5 million. With the benefit of the briefing which I authored, the German manufacturer obtained a victory in February 2008 on its initial motion to dismiss. The Court found that the German manufacturer's practices and forms prevent jurisdiction in Ohio. It found "no indication that [the German manufacturer] sought to exploit Ohio markets." The plaintiff failed to establish that [the German manufacturer] purposely availed itself of the benefits and protections of Ohio’s laws.” The Uniform Commercial Code (UCC) and the United Nations Convention on Contracts for the International Sale of Goods (CISG) provided additional support for the Court's decision. The Court thus dismissed all claims for lack of personal jurisdiction.

International Arbitration

We represented a scrap steel company in International arbitration before the American Arbitration Association concerning alleged breach of several sale contracts by an Indian company.

Dinsmore attorneys prepared the case for its final hearing but were able to negotiate a favorable settlement before the client incurred the fees associated with a final hearing, and one that resulted in payment to the client quickly without protracted litigation in India. Because we were cognizant of legal costs and processes throughout the case, the result was a quick recovery for the client, but reached in a cost-effective manner.

Cross-Border Acquisition by Merger and Stock Purchase

Represented a U.S. public company in its acquisition of a Canadian/Swiss sporting goods importer/reseller in parallel Canadian stock purchase and SEC-registered U.S. stock merger transactions.

Asset Purchase

Represented a closely-held dry ice blasting equipment manufacturer in its purchase of its primary competitor from Canadian parent.

Acquisition of Two Affiliated Swiss Companies

Represented Halma International Limited, the leading safety, health, and sensor technology group, in the acquisition of 100 percent shares of the Swiss corporation Medicel AG, together with its subsidiary Robutec GmbH. Dinsmore attorneys prepared and negotiated the Share Purchase Agreement and related closing documents. These related acquisitions required dual-track due diligence and negotiation of all transactional documents.  Related to the Medicel acquisition was negotiation of tax-planning documentation for a U.K.-based investor.  The purchase, valued at $100 million, further extended the client’s presence in the ophthalmic surgical instrument market.