Kevin Maler
PEOPLE

Kevin Maler

Partner
maler.kevin@dorsey.com

Overview

A PARTNER IN THE CORPORATE GROUP, KEVIN HELPS CLIENTS, BOTH LARGE AND SMALL, DEVELOP, ACQUIRE, COMMERCIALIZE, LICENSE AND SELL THEIR TECHNOLOGY ASSETS. HE ALSO HELPS CLIENTS FINANCE THEIR BUSINESS STRATEGIES THROUGH THE PRIVATE CAPITAL MARKETS, ESPECIALLY THROUGH VENTURE CAPITAL FINANCING.

Kevin works closely with clients to understand their business objectives and to structure transactions that meet those goals. Kevin regularly advises clients in structuring, drafting and negotiating complex commercial agreements, including intellectual property licenses, distribution agreements, supply agreements, outsourcing agreements, collaboration agreements and joint ventures. Kevin has advised emerging companies on all aspects of their commercialization strategy, from developing template agreements and preparing negotiation playbooks to negotiating mission-critical agreements with key customers and vendors. He has also advised large technology clients in complex strategic transactions that combine equity investments with highly customized license and services agreements. Working with regulatory specialists, he leads transactions in the FinTech and Digital Health space and advises clients in the food and food packaging industry.

Kevin helps tech-focused clients finance the development of their businesses through the private capital markets. And he helps clients acquire and sell their technology assets: He has advised both buyers and sellers in a variety of divestitures, asset purchases, stock purchases and mergers, especially transactions that involve the transfer of intellectual property.

Prior to attending law school, Kevin worked for more than a decade as a business reporter and editor for newspapers in the Twin Cities and in Washington, D.C., receiving numerous state and national awards for his work. He served as the editor of the Minneapolis-St. Paul Business Journal, was a reporter and editor for the St. Paul Pioneer Press and contributed stories on business-related topics to The New York Times.

Kevin is a member of the firm’s Technology Commerce group, is co-chair of the firm’s Technology Industry Group and serves on the firm’s Recruiting Committee.

Education & Admissions

University of Minnesota Law School (J.D., 2006), magna cum laude; Order of the Coif; Dean's List; Director, Maynard Persig Moot Court

Syracuse University (M.A., English and Creative Writing, 1992)

University of Pennsylvania (B.A., English and Economics, 1985)

Admissions

  • Minnesota

Experience

Representative Transactions

License, Development and Collaboration Agreements/Joint Ventures

  • Represented a manufacturer of diagnostic equipment used in the automobile repair industry in the negotiation of a cooperation agreement with brand-name producer of petroleum products to market combined offerings to automotive repair shops.
  • Represented a ground transportation company in the negotiation of a collaboration agreement with a software development firm and major shipping customer for development and marketing of technology solutions to improve truckload efficiency.
  • Represented a provider of payments and fraud-detection solutions in contractual joint venture with key vendor that provides solutions for identification and verification of mobile devices, including drafting and negotiating a master services agreement, statements of work and subsequent amendments.
  • Represented a data-driven provider of solutions relating to employment, jobs and jobs openings in cross-license and distribution agreement with well-known publisher of financial indices for development of indices for financial markets.
  • Represented a Canadian manufacturer of consumable films for the delivery of pharmaceutical products in negotiation of license, development and supply agreement with supplier of cannabis products.
  • Represented a developer of organic cleaning solutions in negotiation of agreements to permit manufacture of proprietary liquid solutions in the People’s Republic of China while protecting trade secrets.

Distribution Agreements and Supply Agreements

  • Represented a manufacturer of urinalysis equipment and consumables in the negotiation of a supply and distribution agreement to market and sell solutions that combine client products with products supplied by counterparty.
  • Represented a manufacturer of e-scooters in negotiation of critical supply agreements with various operators of scooter-sharing businesses.
  • Represented a manufacturer of pouches for delivery of food and drink products in negotiation of supply agreements with household-name food companies.
  • Represented a manufacturer of thin-film packaging materials in negotiation of supply and distribution agreements with food manufacturers.
  • Represented a manufacturer of inflatable packaging products in negotiation of supply agreements with major online retailer.
  • Represented a manufacturer of packaged cakes and snacks in multiple distribution agreements with distributors as part of project to market products in Asia and the Middle East.
  • Represented a manufacturer of lenses for vision correction in the negotiation of a supply agreement with leading processor and distributor of finished eyeglass lenses.
  • Represented a manufacturer of consumer health products in the negotiation of a distribution agreement with a distributor located in the People’s Republic of China.
  • Represented a manufacturer of endoscopy scopes in negotiation of private label supply agreement with company that manufactures related products and accessories.
  • Represented a manufacturer of light vehicles for consumers in the renegotiation of exclusive distribution agreement and subsequently in termination of and wind-down of distribution relationship.
  • Represented a manufacturer of medical equipment used to treat skin diseases in termination and wind-down of exclusive distribution arrangement.

Critical Vendor Agreements – Outsourcing, ERP, Data Hosting

  • Represent a private-equity backed snack-food manufacturer in the negotiation of software license agreements and support agreement with major ERP vendor and its authorized reseller.
  • Represent a distributor of specialty pharmaceutical products owned by health care systems in migration of data from colocation servers to cloud environment, including a master agreement, service level agreement, professional services addendum and initial statement of work.
  • Represented a major dental insurance company on all aspects of a multi-year transfer of back office operations from prior vendor to new vendor, including initial draft and negotiation of administrative services agreement and multiple statements of work; in connection with outsourcing arrangement, oversaw legal aspects of the construction and tax-favored financing of a new technology and call center.
  • Represented a retail holding company that operates brand-name specialty stores in the negotiation of a master subscription agreement for cloud-based solution that manages all aspects of supply chain, inventory management and point of sales.
  • Represented a Fortune 500 company in the negotiation of a telecom outsourcing services agreement for all wireless services delivered by a vendor to a remote destination resort and conference center, including related statements of work, service level agreements and leases for use of antennae; advised on termination and wind-down of agreements.
  • Represented a private-equity backed manufacturer and retailer of specialty cosmetic products in project to migrate all systems and data to multinational cloud services vendor, including negotiation of agreements with third party consulting firm and advice on purchase of software licenses.
  • Represented a manufacturer of light aircraft in negotiation of logistics and outsourcing agreement for supply and management of spare parts.
  • Represented a financial advisory firm whose clients are family offices in license and implementation of a cloud-based solution to track and manage investment portfolios.
  • Represented an operator of a health insurance platform owned by major insurers in the drafting and negotiation of services agreement with operator of a call center where licensed insurance producers advise members on the selection of employee health benefits and other related products and services.
  • Represented a Fortune 500 company in the negotiation of services agreement with major vendor of payroll processing services, including subsequent amendments to master agreement.
  • Represented a software developer that licenses on-prem and cloud-based e-commerce solutions for small- and mid-sized manufacturers and suppliers on commercialization strategy; developed template software license agreement, cloud services agreement, professional services agreement and partner/reseller agreement.
  • Represented an early-stage maker of cancer drug in negotiation of master services agreement with contract research and manufacturing organizations.

Platforms, Software and Software-as-a-Service

  • Represented an operator of a health insurance platform owned by major insurers in the drafting and negotiation of master services agreements for insurance carriers and TPAs; developed all of client’s template services agreements.
  • Represented a developer of online learning platform in the negotiation of license and services agreement with multiple customers.
  • Represented the manufacturer of personal mobility devices with a turnkey platform for sharing of e-scooters and other personal mobility devices in multiple negotiations with operators; developed all of client’s template services agreements.
  • Represented the healthcare payments business of Fortune 100 company in the renegotiation of a master services agreement and negotiation of a statement of work for delivery of payment products to healthcare providers using credit card rails.
  • Represented a startup company that offers a web-based retail solution for the online sale of cars by automotive dealers in multiple negotiations with OEMs, dealers, financial firms and data source vendors as part of commercial launch; developed template master services agreement and related agreements.
  • Represented a startup company that offers a technology solution to test advanced batteries used by automobile OEMs in the development of template agreements for the lease of equipment and the provision of testing services; advise on negotiation strategy with key customers.

Marketing, Services and Consulting Agreements

  • Represented a major public relations firm in development of template services agreement and in the negotiation of many agreements with customers, including pharmaceutical manufacturers and national restaurant chains.
  • Represented a manufacturer of packaged cakes and snacks in renegotiation of agency agreement with advertising agencies.
  • Represented the subsidiary of major bank holding company in development of template agreements for marketing services provided to correspondent banks that are customers of bank holding company, including analysis of applicable laws.
  • Represented various clients in the negotiation of referral agreements, including referrals involving insurance products, derivative securities and technology; developed template agreements.
  • Represented various clients in the negotiation of consulting agreements for a wide variety of services, including software development, website development, software implementation and IT services; developed template agreements.

Venture Capital

Company-side transactions

  • Represented an emerging company in the group health insurance industry with a Software as a Service (SaaS) business models in the issuances of Series A and Series B preferred stock to venture investors and, later, in the sale of a controlling stake of the company to group of insurance companies.
  • Represented an emerging company in the health and wellness space with a SaaS business model in the issuance of Series D preferred stock to venture investors, including the negotiation of amended and restated governing documents.
  • Represented a software developer with a SaaS solution for mid-sized manufacturers in the issuance of Series Seed preferred stock to venture investors.
  • Represented a technology company in a recapitalization that included conversion of preferred stock into common stock, a reverse split of existing shares and the issuance of shares of a new series of preferred stock.

Investor-side Transactions

  • Represented the investment arm of insurer in early-stage investment in upscale dental products manufacturer.
  • Represented a strategic investor that offers payments and fraud-detection solutions in the purchase of preferred shares from key vendor as part of larger strategic transaction that included an exclusive license to the vendor’s technology and services.

Acquisitions and Carve-out Transactions

  • Represented a provider of payments and fraud-detection solutions in the carve-out divestiture of a business line, including assignment of patents and the drafting and negotiation of a grant back license agreement, a transition services agreement and ongoing commercial agreements.
  • Represented a privately held enterprise software company in a carve-out divestiture of a legacy software business, including cross-licenses to software code.
  • Represented a consulting and training company in the carve-out divestiture of its consumer products division, including the negotiation and drafting of a complex trademark license agreement between the buyer and seller.
  • Represented a private equity-backed operator of benefits platform in acquisitions of early-stage companies with promising technology solutions for conducting transactions through mobile devices.
  • Represented a manufacturer of packaging products in the disposition of Mexican manufacturing facility and business to management-led owner, including the drafting and negotiation of a product distribution and support services agreement.
  • Represented a private equity investor in the acquisition of a controlling stake in a group of companies that make and process online consumer loans, including the negotiation and drafting of a software license agreement and related ancillary agreements.
  • Represented a medical device manufacturer in the acquisition of consumer-facing business that sells products for people with diabetes.
  • Represented an emerging company in the purchase of technology assets from another emerging company, including the negotiation of covenant not to sue from licensor of a patent used by the target company in an unrelated business line.
  • Represented a U.K.-based book distributor in a cross-border sale and purchase of assets, including the negotiation and drafting of cross-border trademark license, distribution and supply agreements and a software license agreement.
  • Represented a U.K. company in the sale of assets of a web-based business in the video conversion space and a related source code license to the buyer.

Industries & Practices

  • Banking & Financial Institutions
  • Blockchain & Digital Assets
  • Digital Health
  • Emerging Companies
  • Financial Services Regulatory
  • FinTech
  • Food, Beverage & Agribusiness
  • Healthcare
  • Intellectual Property
  • Mergers & Acquisitions
  • Technology
  • Technology Commerce

Professional & Civic

Community Involvement

Accolades

  • Listed as a "Rising Star" by Minnesota Super Lawyers, 2015
  • Recommended by Legal 500 in Mergers & Acquisitions, 2015, 2019
  • Mendes Hershman Student Writing Contest, sponsored by the American Bar Association Section of Business Law – Third Place
Kevin Maler