Mike leads Benesch's Intellectual Property, Technology Deals, Data Security and Privacy, and Blockchain and Smart Contracts practices.
He has nearly three decades of experience representing technology companies from start-up to growth stage, middle market to Fortune 50, as well as major regional and national venture capital and private equity funds and their portfolio companies, and as lead outside counsel on technology transactions, intellectual property, privacy and data security, CIPP/US, GDPR DPO, and Metaverse law.
Mike provides advice and guidance with respect to the protection of trade secrets and other confidential business information, drafts and reviews confidentiality, non-competition, and non-circumvention agreements, and performs due diligence with respect to trade secret and confidentiality issues in the context of technology deals and M&A transactions.
He negotiates, closes and manages risks associated with complex, high-value, intellectual property and technology transactions and matters including:
- Systems implementation deals (including multi-site installed and cloud ERP, CRM, VOIP and ECM implementation transactions), strategic alliances, eCommerce, development, reseller, professional services, service level, telecomm, network services, equipment purchases, support & maintenance, and managed security services;
- Technology M&A (including substantial IT, FinTech, and data-centric deal practice), joint ventures and technology collaborations, and representation of VCs, PE funds, family offices, and their portfolio companies in capital formations, acquisitions, and divestitures including sophisticated due diligence and analysis, rep and warranty insurance issues, and risk allocation and mitigation;
- Metaverse, DeFi, and Web 3.0 law, blockchain platforms, distributed computing and ledgers, smart contracts, digital signatures, electronic contracts, crypto, NFTs, DApps, and DAOs;
- Life sciences technology transactions and M&A including pharmaceutical, biotech, medical devices, and agribusiness, collaboration, and license deals for major health systems, health product distributors and vendors (including EMR, EHR, RCM, and VOIP implementations);
- Inbound and outbound IP, IT and technology procurement, licenses, technology transfers, SaaS, IaaS, PaaS, BPaas, and TaaS deals, and IP acquisitions and divestitures, joint ventures, and open source issues;
- Global business process outsourcing transactions;
- Global data security and privacy compliance under US, Canadian, and EU law (EU GDPR and ePrivacy, CCPA/CPRA and other state law, HIPAA/HITECH, Gramm Leach Blilely, COPPA, FTC Act and Red Flag rule compliance), PCI-DSS, ISO 27001, ITIL, COBIT, and NIST standards, and data classification, breach response, records retention and destruction, and policies/procedures; and
- IoT and Industrial IoT (IIoT), 3D printing, and additive manufacturing.
Representative Experience
- Served as outside counsel in connection with the completion of an agreement for the sale of Summa Health to HatCo. This represents one of the most significant healthcare system transactions in Ohio in recent years and one of the first in which a major health system has been sold to an affiliate of a private equity fund.
- Represented a private equity buyer in its acquisition of a wholesale distributor of pipes, valves, and fittings.
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Completed a $67 million SAP implementation transaction for the entire Canadian business enterprise of an American global manufacturer and marketer of consumer and professional products.
- Represent a nationally known digital architecture firm that has developed a unique cutting-edge technology applicable to creating spaces in the metaverse.
- Represent one of the pre-eminent internationally known technology companies in the field of virtual reality and augmented reality that is developing consumer technologies that will be instrumental to engaging in social networking and business transactions in the metaverse.
- Represent one of the leading blockchain development companies in the United States with blockchain based applications that will be essential to connecting the physical world with the virtual world.
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Represented a major US private equity fund in connection with a multi-million dollar enterprise-wide SaaS subscription services agreement with salesforce.com.
- Handled transactions on behalf of clients with national and international hardware, software, systems and medical device/life sciences companies.
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Represented one of the largest manufacturers in the United States in connection with a $65 million global business process outsourcing transaction involving operations in the United States, Europe, South America, and Asia.
- We serve as lead outside intellectual property and technology transactions counsel including the management and prosecution of the company’s extensive patent portfolio, and the negotiation and documentation of significant IP development, licensing and commercialization agreements. In connection with this, we recently completed a significant transaction with Flow Pharma, a major US pharmaceutical company located in San Francisco, California.
