Exhibit 10.33
SETTLEMENT AGREEMENT
1. Parties
HemaSure Inc., 000 Xxxxx Xxxxx, Xxxxxxxxxxx, XX 00000-0000, XXX ("HemaSure") and
HemaSure AB, xxx.xx. 556307-7311, x/x Xxxxxxxx & Xxxxx, Xxx 0000, X-000 00
Xxxxxxxxx, Xxxxxx, hereinafter jointly referred to as ("HemaSure"), and
HemaPharm Inc., c/o HemaSure Inc., a Delaware corporation ("HemaPharm"), on one
side, all such parties hereinafter jointly referred to as ("HemaSure Parties"),
however, HemaPharm is not a party to the Clauses 3.1(i) and 3.5, and Pharmacia &
Upjohn Inc., Corporation Trust Center, 0000 Xxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxx,
XXX and Pharmacia & Upjohn AB, xxx.xx. 556131-9608, X-000 00 Xxxxxxxxx, Xxxxxx,
on the other side, hereinafter jointly referred to as ("Pharmacia").
2. Background
Pharmacia and HemaSure have previously negotiated an acquisition by HemaSure of
Pharmacia's plasma fractionation business. To recover damages from Pharmacia for
alleged breach of contract, misrepresentations and omissions and certain other
causes of action, HemaSure has sued Pharmacia in a law suit currently pending in
the United States District Court for the Southern District of New York.
Pharmacia has denied all of HemaSure's allegations.
The parties have now agreed to settle the above mentioned dispute according to
the terms set forth herein.
3. Terms of Settlement
3.1 Pharmacia AB agrees to pay to HemaSure Inc. (i) USD five hundred
thousand (500,000), in full and final settlement of all HemaSure's
alleged claims against Pharmacia and (ii) Pharmacia AB further agrees
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to pay to HemaSure Inc. on behalf of the HemaSure Parties (as designated by
HemaSure Inc.) USD two million (2,000,000) for the option under clause 3.2.1
below. Payment shall be made by wire transfer to HemaSure Inc.'s bank Fleet Bank
of Massachussets N.A. 00 Xxxxx Xxxxxx, Xxxxxx, XX 00000, Xxxxxx Xxxxxx of
America ABA # 000000000 Beneficiary Account: HemaSure Inc. 000 Xxxxx Xxxxx,
Xxxxxxxxxxx, XX 00000, Xxxxxx Xxxxxx of America, Acct # 937288-2391 concurrent
with the execution and delivery hereof.
3.1.1 HemaSure Inc. and HemaPharm Inc. severally and not jointly,
respectively agree to grant Pharmacia & Upjohn AB an option to acquire
not later than on 15 September 1999 a non-exclusive license to the
intellectual property rights (collectively, the "Rights") relating to
the respective technologies held by HemaSure Inc. and HemaPharm Inc.
respectively as shown in Appendix 1, as attached hereto. Pharmacia &
Upjohn AB shall not later than on 15 September 1998 choose six (6)
technologies of the technologies listed in Appendix 1 and notify the
respective holder of the chosen six technologies. The option to acquire
a non-exclusive licence to the intellectual property rights may only be
exercised in respect of the Rights relating to three (3) of such chosen
six technologies and notice shall be given not later than on 15
September 1999. Pharmacia & Upjohn AB shall inform the respective
holder of each technology included in the six chosen technologies and,
subsequently, the respective holder of the three chosen technologies.
Such information shall be delivered in writing to the licensor in
question at the address stated above not later than on the respective
date. The respective holder of the technology shall not be bound by
this Clause 3.2.1, should Pharmacia waive the option or fail to act as
required herein, and in such event, no HemaSure Party shall have any
obligation or liability to return or repay to Pharmacia any of the
amounts received by HemaSure Inc. hereunder.
3.1.2 Any acquired licence shall be granted on the terms and conditions as
set forth in the Licence Agreement attached hereto as Appendix 2 and
the
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license shall be deemed to come into force upon the mere exercise of the option.
However, irrespective thereof the parties shall upon request execute such
licence agreement within three (3) weeks from Pharmacia exercising its option
according to article 3.2.1. The three technologies chosen as the subject matter
of the licence shall be inserted as Appendix A in separate Licence Agreements,
should the holder of the technology not be the same entity, and shall form an
integral part of such license agreement.
3.2 Provided that the payments, referred to in Clause 3.1, are made in full
to HemaSure Inc. on the date hereof, HemaSure acknowledges and ratifies
that there are no debts of money, goods or services owing from
Pharmacia or any of its subsidiaries, or its present or former
employees, to HemaSure or any of its subsidiaries, nor are there any
other unsettled obligations resulting from the negotiations and the
dispute mentioned under Clause 2. above, except for obligations which
may arise under Clause 3.2 above or otherwise hereunder.
3.3 Likewise Pharmacia acknowledges and ratifies that there are no debts of
money, goods or services owing from HemaSure or any of its
subsidiaries, or any of their present or former employees, to
Pharmacia, nor are there any other unsettled obligations resulting from
the dispute mentioned above, except for the obligations under Clauses
3.2.1 and 3.2.2.
3.4 HemaSure agrees to promptly, upon receipt of full payment under the
Settlement Agreement, withdraw the pending action against Pharmacia
with prejudice. Pharmacia and HemaSure shall bear their own legal fees,
other costs and expenses incurred during this dispute.
4. Assignment
The option granted in this Agreement may only be assigned by Pharmacia & Upjohn
AB to a third party in direct connection with the divestment of Pharmacia &
Upjohn AB's plasma fractionation and refacto business for use in that business.
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5. Confidentiality
Except as may be required by applicable law, the parties agree to keep the terms
of this settlement agreement confidential.
6. Disputes
6.1 This settlement agreement shall be governed by Swedish law.
6.2 All disputes arising out of this agreement shall be finally settled by
arbitration in accordance with the rules of the Arbitration Institute
of the Stockholm Chamber of Commerce. The arbitration proceedings shall
be held in Stockholm and be conducted in the English language.
7. Entire Understanding
This Agreement constitutes the entire understanding of the parties and may not
be amended or supplemented unless such an amendment or supplement is made in
writing and signed by the parties.
8. Effective Date
This Agreement has been made and entered into this Day of September 1997.
This Agreement has been drawn up in five copies of which the parties have taken
one each.
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PHARMACIA & UPJOHN INC. HEMASURE INC.
/s/ X. Xxxxxxxxx /s/ X. Xxxxxxx
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PHARMACIA & UPJOHN AB HEMASURE AB
/s/ X. Xxxxxxxxx, /s/ Xxxx Sievertsson /s/ X. Xxxxxxx
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HEMAPHARM INC.
expect for Clauses 3.1(i) and 3.5.
/s/ X. Xxxxxxx
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Appendix 1
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HemaSure Inc. pending and Issued U.S. Patents
As of March 24, 1997
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Docket S.N. Filing Title U.S. Patent No. Issued/
No. Date Expiration
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HEMALIC1 105,340 10/07/87 Method of Inactivating HTLV-III Virus in USP 4,883,165 05/23/89
Blood 05/23/06
HEMALIC2 328,322 03/24/89 Method of Treating White Blood Cells USP 4,978,688 03/24/89
12/18/90
90-01 08/403,237 03/23/93 Method and Apparatus for Eluting Proteins in USP 5,310,688 05/10/94
Affinity Membrane Process 05/10/11
0901.003 08/148,883 11/08/93 Device and Process for Removing Free USP 5,456,835 10/10/95
Hemoglobulin from Blood 10/10/15
0901.004B 08/190,732 02/02/94 Covalent Attachment of Macromolecules to USP 5,462,867 10/31/95
Polysulfones or Polyethersulfones Modified 10/31/15
to Contain Functionalizable Chain Ends
0901.005 08/209,523 03/10/94 Filtration Device Useable for Removal of USP 5,472,605 12/05/95
Leukocytes and Other Blood Components 12/05/15
0901.006 08/215,201 03/21/94 Removal of Small Exogenous Molecules from USP 5,486,293 01/23/96
Biological Fluids 01/23/16
0901.006A 08/564,994 11/30/95 Porous Support for Removal of Small USP 5,609,763 03/11/97
Exogenous Molecules from Biological Fluids 03/11/17
0901.002B 08/347,564 01/23/95 Device and Method for Removing Leukocytes Allowed -----
and Viral Inactivating Agents from Blood 01/17/97
80903 08/368/780 01/04/95 Method for Inactivating Non-enveloped Allowed -----
Viruses Using a Viracide Potentiating Agent 11/20/96
0901.002C 08/377,741 01/23/95 Device and Method for Removing Leukocytes PENDING
and Viral Inactivating Agents from Blood
0901.002D not yet 03/28/97 Device and Method for Removing Leukocytes PENDING
and Viral Inactivating Agents from Blood
0901.005A 08/449,362 05/24/95 A Filtration Device Useable for Removal of PENDING
Leukocytes and Other Blood Components
(HemaSure 2
Dock List
Cont.)
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Docket S.N. Filing Title U.S. Patent No. Issued/
No. Date Expiration
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0901.005B 08/661,804 06/11/96 A Filtration Device Useable for Removal of PENDING
Leukocytes and Other Blood Components
0901.005C 08/680,674 07/16/96 A Filtration Device Useable for Removal of PENDING
Leukocytes and Other Blood Components
0901.007 08/524,049 09/06/95 An In-Line Liquid Filtration Device Useable PENDING
for Blood, Blood Products, or the Like
0901-012 08/496,478 06/29/95 Inactivation of Pathogens Using PENDING
Hydroxymenthylamines
0901-012 08/4526,658 09/11/95 Inactivation of Pathogens Using PENDING
CIP Hydroxymenthylamines
0901.19A 60/034,758 01/06/97 Method for Removing Tumor Cells from PENDING
Cell-Contaminated Stem Cell Products
0000.000 not yet 03/06/97 In-Line Gravity Driven Liquid Filtration PENDING
Device useable to Filter Blood or Blood
Products
HEMA 08/735,966 10/23/96 Extra-Luminal Crossflow plasmaphoresis PENDING
102US Devices
4821-170 08/083,859 06/28/93 Membrane Affinity Apparatus and PENDING
Purification Methods related Thereto
4821-225 08/465,479 06/28/93 Membrane Affinity Apparatus and PENDING
Purification Methods related Thereto
80822 08/179,437 01/10/94 Inactivation of Viruses Present in Blood PENDING
components Using Chemically-Activated
Compounds
80822A 08/465,831 06/06/95 Inactivation of Viruses Present in Blood PENDING
components Using Chemically-Activated
Compounds
80924B 08/403,237 03/10/95 Inactivation of Pathogens in Blood or Blood PENDING
Products using Formaldehyde
(HemaSure 3
Dock List
Cont.)
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Docket S.N. Filing Title U.S. Patent No. Issued/
No. Date Expiration
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DK 95000823 07/13/95 Purification of protein or peptide solution
(Denmark) containing polyethylene glycol
DK 95000970 09/04/95 Purification of protein or peptide solution
(Denmark) containing polyethylene glycol
PCT/96DK/00314 07/10/96 Purification of protein or peptide solution
containing polyethylene glycol
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Appendix 2
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LICENSE AGREEMENT
This Agreement has been made and entered into this ______ day of ______________,
199__, by and between,
I. [HemaSure Inc/HemaPharm Inc]. ____________________________________
(hereinafter referred to as the "Licensor") and
II. Pharmacia & Upjohn AB, xxx.xx. 556131-9608, X-000 00 Xxxxxxxxx, Xxxxxx,
(hereinafter referred to as "the Licensee").
WHEREAS:
(A) Licensor owns, possesses and controls certain intellectual property rights
relating to the technologies set forth in Appendix A attached hereto.
(B) Licensee desires to obtain the right and licence to utilize the said
intellectual property rights and Licensor desires to grant the Licensee such
right and licence.
NOW, THEREFORE, Licensor and the Licensee agree as follows:
1. Grant
The Licensor hereby grants to the Licensee the royalty free, world-wide,
non-exclusive right and license of perpetual duration to, solely within and
directly related to the Licensee's plasma fractionation and refacto business,
use, make, have made, sell, have sold products under the patents listed in
Appendix A, including all modifications and improvements thereto developed or
created by Licensor within its plasma fractionation business prior to the entry
into force of this Agreement (hereinafter collectively referred to as "the
Rights"). At Licensee's request and expense, the Licensor shall procure that
Licensee receives
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all necessary know-how and reasonable technical assistance to utilize the
licensed Rights.
2. Improvements made by the Licensor
Licensor further agrees to grant Licensee an option to acquire a non-exclusive
license for such future modifications and improvements to the Rights that may be
developed by Licensor within its plasma fractionation business before 15
September 2000. Licensor shall forthwith inform Licensee of such modifications
and improvements to the Rights and of the terms and conditions upon which such
license is offered to Licensee. Licensee shall have three (3) months to respond
to such offer, which response shall be in writing and delivered to the address
stated above. Should Licensee accept such offer, Licensee shall in such response
give Licensor a written confirmation that Licensee accepts the offer on the same
terms and conditions as otherwise are set forth in this license agreement. Such
terms and conditions shall be reasonable market conditions. Licensor shall not
be bound by this Clause 2. or by the terms and conditions offered to Licensee,
should Licensee decline the offer or fail to respond as required herein.
3. Maintenance of patents
The Licensor will during the life of this Agreement use reasonably efforts to
maintain the patents and patent applications set forth in Appendix A attached
hereto in good standing, provided that, in the sole reasonable opinion of the
Licensor, such efforts are commercially justifiable. Licensor shall offer
Licensee the opportunity to acquire such patents/patent applications at no cost
if Licensor has decided that it is not commercially justifiable for it to
maintain these rights as aforesaid.
4. Infringements by third parties
The Licensor and the Licensee shall give each other notice of any acts of
infringement by third parties involving intellectual property rights relating to
the Rights anywhere in the world of which the Licensor or the Licensee has know-
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ledge and they shall consult together in a view to determine the course of
action, if any, to be taken in such circumstances. The Licensee shall assist the
Licensor in any and all proceedings against an infringer.
5. Secrecy
Parties shall hold in confidence and not disclose to third parties and refrain
from using for any purpose other than for which it was disclosed all
confidential information disclosed by the other party under this Agreement,
provided, however, that these obligations shall not apply to information - which
at the time of receipt is in the public domain or in the possession of the
receiving party as it can demonstrate,
- which after receipt becomes part of the public domain through no fault of
the receiving party,
- which after receipt is obtained by the receiving party from third parties
in a legitimate way,
- which is independently developed by the receiving party by personnel of the
receiving party who have not been exposed to the disclosing party's
information.
The secrecy obligations set forth above shall apply during the term of this
Agreement and five (5) years thereafter.
6. Taxes
All taxes of whatever kind levied in the country of the Licensee or where the
Licensee utilizes the licence shall be paid and borne by the Licensee.
7. Sublicense
Licensee may not sublicense the technology licensed under this agreement other
than to subsidiaries of the Licensee for use in a plasma fractionation and
refacto business.
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8. Assignment
The rights and licence granted to the Licensee hereunder may only be assigned by
the Licensee to any third party in direct connection with a divestment of the
Licensee's plasma fractionation and refacto business.
9. Approvals from authorities
Promptly upon execution of this Agreement the parties shall jointly apply for
the approval hereof to any authority, the approval of which is required by any
applicable law. The expenses connected with such an obligation shall be borne by
the Licensee.
10. Governing law and disputes
This Agreement shall be construed in accordance with and be governed by the laws
of Sweden.
All disputes arising out of this agreement shall be finally settled by
arbitration in accordance with the rules of the Arbitration Institute of the
Stockholm Chamber of Commerce.
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This Agreement has been drawn up in two copies of which the parties have taken
one each.
Place: Place:
Date: Date:
[HemaSure Inc./HemaPharm Inc.] Pharmacia & Upjohn AB
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