EXHIBIT 10.8
COMPANY PATENT LICENSE AGREEMENT
This Patent License Agreement (this "Agreement") is effective as of
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the Closing (as defined herein), between Xxxxxx-Xxxxxxx, Inc., a Delaware
corporation (the "Company"), and Armkel, LLC, a Delaware limited liability
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company ("Buyer").
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WHEREAS, the Company and Buyer have executed and delivered an Asset
Purchase Agreement, dated as of May 7, 2001 (including the exhibits, schedules
and annexes thereto, the "Asset Purchase Agreement"), providing for, among other
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things, the sale, conveyance, transfer, assignment and delivery to Buyer of all
of the Company's and its Affiliates' rights, title and interest in and to the
Purchased Assets (as defined in the Asset Purchase Agreement) and the assumption
by Buyer of all of the Assumed Liabilities (as defined in the Asset Purchase
Agreement; such sales, transfers, assignments, purchases, acceptances and
assumptions collectively, the "Assets Purchase"), effective in each case
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immediately prior to the ABC Merger (as hereinafter defined);
WHEREAS, the Company, CPI Development Corporation, a Delaware
corporation ("ABC"), MedPointe Inc., a Delaware corporation ("Parent"), MCC
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Merger Sub Corporation, a Delaware corporation and a wholly owned subsidiary of
Parent ("Company Merger Sub"), and MCC Acquisition Sub Corporation, a Delaware
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corporation and a wholly owned subsidiary of Parent ("ABC Merger Sub"), have
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executed and delivered an Agreement and Plan of Merger, dated as of May 7, 2001
(including the exhibits, schedules and annexes thereto, the "Merger Agreement"),
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providing for, among other things, the merger of ABC Merger Sub with and into
ABC (the "ABC Merger") and the merger of Company Merger Sub with and into the
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Company; and
WHEREAS, in connection with the consummation of the Assets Purchase,
Buyer desires to grant to the Company a license to use certain Patents (as
hereinafter defined).
NOW, THEREFORE, in consideration of the premises, and the
representations, warranties, covenants and agreements contained in this
Agreement, the Parties agree as follows:
ARTICLE I
Definitions
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SECTION 1.1. Definitions. For the purpose of this Agreement, the
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following capitalized terms are defined in this Article I and shall have the
meaning specified herein:
"ABC" has the meaning ascribed to such term in the Recitals.
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"ABC Merger Sub" has the meaning ascribed to such term in the
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Recitals.
"Action" means any claim, suit, arbitration, action or proceeding.
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"Asset Purchase Agreement" has the meaning ascribed to such term in
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the Recitals.
"Assets Purchase" has the meaning ascribed to such term in the
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Recitals.
"Licensed Patents" means those patents and patent applications listed
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on Exhibit A.
"Business" has the meaning ascribed to such term in the Asset Purchase
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Agreement.
"Buyer" has the meaning ascribed to such term in the Preamble.
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"Closing" means the meaning ascribed to such term in the Asset
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Purchase Agreement.
"Company" has the meaning ascribed to such term in the Preamble.
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"Company Merger" has the meaning ascribed to such term in the
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Recitals.
"Company Merger Sub" has the meaning ascribed to such term in the
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Recitals.
"Confidential Information" has the meaning ascribed to such term in
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Section 4.1.
"Licensed Field" has the meaning ascribed to such term in Section
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2.1(a).
"Licensed Property" means the Licensed Patents and the Related
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Know-How.
"Parent" has the meaning ascribed to such term in the Recitals.
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"Patents" means patents, utility models, design patents, design
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registrations, certificates of invention and other governmental grants for the
protection of inventions or industrial designs anywhere in the world and all
applications, reissues, renewals, re-examinations, continuations,
continuations-in-part, divisionals, substitutions and extensions of any of the
foregoing, including: (i) all claims and inventions described therein and (ii)
all foreign or international patents, patent applications, rights and priorities
relating to the foregoing.
"Person" means any individual, firm, partnership, association, group
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(as such term is used in Rule 13d-5 under the Securities and Exchange Act of
1934, as amended, as such Rule is in effect on the date of this Agreement),
corporation or other entity.
"Related Know-How" shall mean the proprietary and confidential
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know-how of the Buyer existing as of the Closing that relates to any inventions
that are the subject matter of any claims of the Licensed Patents. Related
Know-How shall not include any improvements, enhancements, derivatives,
modifications or other developments made by or for Buyer after the Closing.
Related Know-How shall be considered Confidential Information of Buyer for
purposes of Section 4.1 hereof.
"Subsidiary" means, with respect to any party, any entity, whether
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incorporated or unincorporated, of which at least a majority of the securities
or ownership interests having by their terms ordinary voting power to elect a
majority of the board of directors or other persons performing similar functions
is directly or indirectly owned or controlled by such party or by one or more of
its respective Subsidiaries or by such party and any one or more of its
respective Subsidiaries.
"Third Party" means a Person other than the Company and its
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Subsidiaries or Buyer and its Subsidiaries.
SECTION 1.2. Interpretation. The words "hereof," "herein," and
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"hereunder" and words of similar import, when used in this Agreement, shall
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refer to this Agreement as a whole and not to any particular provision of this
Agreement. Terms defined in the singular shall have correlative meanings when
used in the plural, and vice versa. The table of contents and headings herein
are for convenience of reference only, do not constitute part of this Agreement
and shall not be deemed to limit or otherwise affect any of the provisions
hereof. Where a reference in this Agreement is made to a Section or Exhibit,
such reference shall be to a Section of or Exhibit to this Agreement unless
otherwise indicated. Whenever
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the words "include," "includes" or "including" are used in this Agreement, they
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shall be deemed to be followed by the words "without limitation."
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ARTICLE II
LICENSES AND RIGHTS
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SECTION 2.1. License Grants to Company.
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(a) Patents. Buyer hereby grants and agrees to cause its appropriate
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Subsidiaries to grant to the Company and its Subsidiaries, an irrevocable,
worldwide, fully-paid, royalty-free, exclusive (even as against Buyer and its
Subsidiaries within the Licensed Field), non-transferable (except as set forth
in Section 8.13), sublicensable right and license to make, have made, use,
lease, license, import, distribute, offer for sale and sell products and
services under the Licensed Patents solely in connection with the sale,
manufacture and use of products in the field of professional health care and
laboratory diagnostic applications, including without limitation applications in
hospitals, health care centers and laboratories, but excluding any and all
consumer and personal care products, including antiperspirants and deodorants,
condoms, at-home pregnancy and ovulation test kits, depilatories, tooth
whitening and similar oral hygiene products, skin care products,
non-prescription medication and various pet products formulated, developed,
manufactured, sold and/or distributed in connection with the Business (the
"Licensed Field").
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(b) Know-How. Buyer hereby grants to Company an irrevocable (subject
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to Section 5.1), worldwide, fully-paid, royalty-free, non-exclusive,
non-transferable (except as set forth in Section 8.13), sublicensable right and
license to use the Related Know-How to make, have made, use, lease, license,
import, distribute, offer for sale and sell products and services solely within
the Licensed Field. During the 180 day period following the Closing, Buyer
agrees to provide any Related Know-How, including copies of tangible materials
prepared prior to the Closing that embody or include Related Know-How, to the
Company at the reasonable request of the Company.
SECTION 2.2. Sublicense Rights. The Company may sublicense the
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Licensed Property or any portion thereof at its sole discretion, whether as
independent sublicenses and/or as sublicenses to end-users implied by sales of
products or services in the Licensed Field; provided that no Related Know-How
may be sublicensed by the Company to any third party unless such third party
agrees in writing to be bound by confidentiality obligations no less restrictive
than those set forth in Article IV hereof.
SECTION 2.3. Duration. All licenses granted herein with respect to
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each item of Licensed Property shall expire upon the expiration or invalidation
of such item provided that the term remains in effect with respect to all other
items of Licensed Property.
ARTICLE III
ADDITIONAL OBLIGATIONS AND AGREEMENTS
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SECTION 3.1. Assignment of Patents. Buyer shall not assign or grant
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any rights under any of the Licensed Patents unless such assignment or grant is
made subject to the licenses granted by Buyer in this Agreement.
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SECTION 3.2. Infringement Suits.
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(a) Each party agrees to notify the other party immediately after it
becomes aware of any actual or threatened infringement of the Licensed Patents
by a Third Party. Buyer shall have the initial right, at its cost and expense,
to bring an Action to enjoin infringement in the Licensed Field and recover
damages therefor. Any damages recovered in such action will be applied first
against any out of pocket expenses incurred by Buyer in prosecuting such Action
and then to Company to the extent the damages relate to any infringement of the
Licensed Patents in the Licensed Field. Buyer shall be entitled to retain the
remaining balance of any such damages. If Buyer does not bring any such Action
or if the parties do not decide to proceed jointly within sixty (60) days after
written notice of infringement is given by Company, Company, at its cost and
expense, shall have the right to bring an Action to enjoin such infringement in
the Licensed Field and recover damages therefor; provided that, subject to
Buyer's prior written consent, which consent shall not be unreasonably withheld,
Company may commence such an Action within such time period as may be necessary
to avoid a substantial loss of rights or remedies with respect to any such
infringement; provided further, that, if Company so commences an Action with
Buyer's prior written consent, Buyer, at its sole discretion, thereafter may
elect to assume control of such Action within seventy (70) days of the written
notice of infringement, with counsel of its choosing and at its cost and
expense, upon ten days' written notice to Company. Any damages recovered in such
action will be applied first against any out of pocket expenses incurred by
Company in prosecuting such action, second against any damages suffered by
Company to the extent they relate to any infringement of the Licensed Patents in
the Licensed Field. Company will pay any remaining balance of damages, if any,
to Buyer. In any action brought pursuant to this Section 3.2 hereof, the party
initiating the Action (the "Initiating Party") shall select and control counsel
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for the prosecution of such Action. The other party hereto (the "Non-Initiating
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Party") shall (x) have the right, at its own expense, to be represented therein
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by its own counsel in an advisory or consultative capacity, (y) have the right
to receive, from time to time, upon reasonable request, full and complete
information from the Initiating Party concerning the status of such Action, and
(z) cooperate with the Initiating Party and provide such assistance as is
reasonably requested by the Initiating Party, including the preparation and
signing of documents, subject to the Initiating Party reimbursing the
Non-Initiating Party for any reasonable out of pocket costs and expenses,
including attorneys' fees. No party shall have the right to settle any
infringement Action described in Section 3.2 hereof in any way that affects the
other party's rights to the Licensed Property without the prior written consent
of the other party, which consent shall not be unreasonably withheld. No party
shall have any obligation to bring or prosecute any Actions or take any other
steps against Third Parties for infringement, except as set forth herein. Buyer
is under no obligation to Company to defend any Action brought by a third party
which challenges or concerns the validity of any of any Licensed Property or
which claims that any Licensed Property infringes any patent, copyright or other
intellectual property right of any third party or constitutes a misappropriated
trade secret of any third party.
(b) Each party shall cooperate with the other party as necessary to
protect, maintain and preserve the validity of the Licensed Patents; provided
that Buyer is under no obligation to Company to file or continue the prosecution
of any patent application, secure any patent or maintain any patent in force or
otherwise obtain, maintain or protect any Patent. Notwithstanding the foregoing,
if Buyer elects to discontinue the prosecution or maintenance of any Licensed
Patent, Buyer shall promptly notify Company of such election and, at the written
request of Company, supply Company with copies of all relevant written
communications with the pertinent official patent office, and cooperate
reasonably with Company to, at Buyer's sole option, (i) transfer ownership and
control of such Licensed Patent or application to Company, including providing
all papers necessary or desirable to effectuate same (in which case, such Patent
or patent application shall be assigned to the Company, subject to an
irrevocable, worldwide, fully-paid, royalty-free, non-exclusive, transferable,
sublicensable right and license in favor of the Buyer to make, have made, use,
lease, license, import, distribute, offer for sale and sell any and all products
and services of any kind or nature other than products or services within the
Licensed Field, and
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this Agreement, shall no longer apply with respect to such Patent, but shall
apply with respect to Related Know How), or (ii) authorize the Company to
prosecute or maintain such Licensed Patent in Buyer's name and at the Company's
expense. In such event, Company may, but does not have the obligation to, file
or continue prosecution of such application or maintain such Licensed Patent
without any liability to Buyer for any acts or omissions related thereto.
ARTICLE IV
CONFIDENTIALITY
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SECTION 4.1. Confidential Information. The parties hereto expressly
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acknowledge and agree that all nonpublic, proprietary and/or confidential
information, whether written or oral, furnished or disclosed by either party or
any Subsidiary thereof (the "Disclosing Party") to another party or any
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Subsidiary thereof (each, a "Receiving Party") pursuant to this Agreement
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("Confidential Information") shall be maintained by each party and/or their
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respective Subsidiaries in confidence, using the same degree of care to preserve
the confidentiality of such Confidential Information that the party would use
with respect to its own information of a similar nature, and in no event less
than a reasonable degree of care. The parties agree that, with respect to any
nonpublic, proprietary and/or confidential information included in the
Business-Related Intellectual Property (as defined in the Asset Purchase
Agreement) acquired by Buyer from the Company pursuant to the Asset Purchase
Agreement as part of the Purchased Assets, Buyer shall be deemed to be the
Disclosing Party for purposes of this Section 4.1. Except as authorized in
writing by the other party, neither party (and/or any Subsidiary) shall at any
time disclose or permit to be disclosed any such Confidential Information to any
other person, firm, corporation or entity except: (i) as may reasonably be
required in connection with the use of the Licensed Property pursuant to this
Agreement to the parties' authorized employees, agents or representatives who
are informed of the confidential nature of the Confidential Information and are
bound to maintain its confidentiality, and (ii) in the course of due diligence
in connection with the sale of all or an applicable portion of either party's
business, provided the disclosure is pursuant to a nondisclosure agreement
having terms reasonably comparable to Sections 4.1 and 4.2.
SECTION 4.2. Exceptions. Confidential Information shall not include
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information that, as of the Closing or thereafter, (i) is or becomes generally
available to the public other than as a result of disclosure made after the
execution of the Asset Purchase Agreement by the Receiving Party or (ii) was or
becomes legitimately available to the Receiving Party on a nonconfidential basis
from a source that is not bound by any confidentiality obligation with respect
to the Receiving Party, or (iii) is required to be disclosed to enforce such
party's rights hereunder or pursuant to applicable law, regulation (including
the requirements of the U.S. Securities and Exchange Commission and the listing
rules of any applicable securities exchange), court order or discovery process,
provided that the Receiving Party shall give the Disclosing Party prompt notice
thereof and, at the request of the Disclosing Party shall reasonably cooperate
in the Disclosing Party's efforts to obtain a protective order or other similar
order.
ARTICLE V
TERMINATION
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SECTION 5.1. Voluntary Termination. By written notice, the Company may
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voluntarily terminate all or a specified portion of the licenses and rights
granted to it hereunder. Such notice shall specify the effective date of such
termination.
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ARTICLE VI
DISPUTE RESOLUTION
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SECTION 6.1. Negotiation. The parties shall make a good faith attempt
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first to resolve any dispute or claim arising out of or related to this
Agreement through negotiation. Within 30 days after notice of a dispute or claim
is given by either party to the other party, the parties' first tier negotiating
teams (as determined by each party's General Counsel or his or her delegate)
shall meet and make a good faith attempt to resolve such dispute or claim and
shall continue to negotiate in good faith in an effort to resolve the dispute or
claim or renegotiate the applicable section or provision without the necessity
of any formal Actions. If the first tier negotiating teams are unable to agree
within 30 days of their first meeting, then the parties' second tier negotiating
teams (as determined by each party's General Counsel or his or her delegate)
shall meet within 30 days after the end of the first 30 day negotiating period
to attempt to resolve the matter. During the course of negotiations under this
Section 6.1, all reasonable requests made by one party to the other for
information, including requests for copies of relevant documents, will be
honored, subject to the applicable terms of any confidentiality agreements or
obligations by which a party is bound. The specific format for such negotiations
will be left to the discretion of the designated negotiating teams but may
include the preparation of agreed upon statements of fact or written statements
of position furnished to the other party. All negotiations between the parties
pursuant to this Section 6.1 shall be treated as compromise and settlement
negotiations. Nothing said or disclosed, nor any document produced, in the
course of such negotiations that is not otherwise independently discoverable
shall be offered or received as evidence or used for impeachment or for any
other purpose in any current or future Action. In the event that such
negotiations fail to reach an amicable solution within 30 days after the first
meeting of the second tier negotiating teams (or a mutually agreed upon
extension of time), then the provisions of Section 8.7 shall apply.
SECTION 6.2. Proceedings. Nothing in Section 6.1, however, shall
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prohibit either party from seeking provisional or preliminary injunctive relief
if such party that it would be substantially harmed during the time period set
forth in Section 6.1.
ARTICLE VII
LIMITATION OF LIABILITY
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SECTION 7.1. Limitation of Liability. SUBJECT TO AND WITHOUT LIMITING
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SECTION 7.2, IN NO EVENT SHALL EITHER PARTY OR ITS SUBSIDIARIES BE LIABLE TO THE
OTHER PARTY OR ITS SUBSIDIARIES FOR ANY INDIRECT, INCIDENTAL OR PUNITIVE DAMAGES
(SUCH AS, WITHOUT LIMITATION, LOSSES OF PROSPECTIVE PROFITS AND SAVINGS),
HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE) ARISING IN
ANY WAY OUR OF THIS AGREEMENT, WHETHER OR NOT SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES. NOTWITHSTANDING THE FOREGOING, NOTHING HEREIN
LIMITS OR OTHERWISE AFFECTS THE LIABILITY OF EITHER PARTY FOR ANY INFRINGEMENT
OF THE LICENSED PATENTS BY THE OTHER PARTY OR ITS SUBSIDIARIES ARISING BY REASON
OF ANY PRACTICE OR EXERCISE OF RIGHTS UNDER ANY OF THE LICENSED PATENTS BY THE
OTHER PARTY THAT IS NOT PERMITTED UNDER THIS AGREEMENT.
SECTION 7.2. Third Party Indemnification. Notwithstanding the
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foregoing, each party shall indemnify, defend and hold harmless the other party,
its officers, directors, Affiliates, representatives, agents and its successors,
and permitted assigns (collectively, the "Indemnified Parties") from, against
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and in respect of any damages or losses, and any charges, actions, claims,
suits,
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proceedings, deficiencies, interest, penalties and reasonable costs and
expenses, including without limitation reasonable attorneys' fees (except with
respect to any litigation between any Party required to make an indemnity
payment hereunder (an "Indemnifying Party") and any Indemnified Party, to the
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extent the Indemnifying Party is the prevailing Party therein) but excluding
damages or losses comprised by indemnification payments hereunder and further
excluding any indirect, special, incidental or consequential or punitive damages
or losses (such as, without limitation, losses of prospective profits and
savings) (collectively, "Losses"), asserted against and imposed on or sustained,
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incurred or suffered by such Indemnified Parties, in any such case solely to the
extent arising out of or relating to actions, claims, suits or proceedings of a
Third Party asserted against and imposed on or sustained, incurred or suffered
by an Indemnified Party, in any such case to the extent arising out of or
relating to the Indemnifying Party's failure to comply in any material respect
with the express terms of this Agreement.
SECTION 7.3. Third Party Claims Procedures. Any claim which may form a
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basis for indemnification hereunder (an "Indemnity Claim") by any an Indemnified
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Party shall be asserted and resolved as set forth in this Section 7.3. The
Indemnified Party shall promptly, but in no event more than 15 Business Days
following such Indemnified Party's receipt of, notice of, or actual knowledge of
such claim, give written notice to the Indemnifying Party which notice shall
state in reasonable detail the nature and basis of the Indemnity Claim and the
amount or the estimated amount thereof to the extent then feasible (which
estimate shall not be conclusive of the final amount of any claim) and which
notice, if applicable, shall also have attached to it copies of all relevant
documents received by the Indemnified Party substantiating such Indemnity Claim
(the "Claim Notice"). Failure of the Indemnified Party to give a Claim Notice as
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contemplated hereby shall not relieve the Indemnifying Party from liability for
indemnification hereunder, except if and to the extent that the Indemnifying
Party is actually prejudiced thereby. Thereafter, the Indemnified Party shall
deliver to the Indemnifying Party, on an ongoing basis promptly after the
Indemnified Party's receipt thereof, copies of all notices and documents
received by the Indemnified Party relating to the Indemnity Claim, as the case
may be. The Indemnifying Party may advise the Indemnified Party within 10
Business Days from its receipt of the Claim Notice that it will defend the
Indemnified Party against such Third Party claim. Except as hereinafter
provided, in the event that the Indemnifying Party so notifies the Indemnified
Party that it will defend the Indemnified Party against such Third Party claim,
the Indemnifying Party shall have the right to defend the Indemnified Party by
appropriate proceedings and shall have the sole power to direct and control such
defense. All costs and expenses incurred by the Indemnifying Party in defending
the Third Party claim shall be paid by the Indemnifying Party. If an Indemnified
Party desires to participate in any such defense it may do so at its sole cost
and expense; provided, that the Indemnified Party and its counsel shall comply
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with all reasonable instructions from the Indemnifying Party. The Indemnifying
Party shall not consent to the entry of any judgment or enter into any
settlement in respect of a Third Party claim without the consent of the
Indemnified Party, to the extent such judgment or settlement imposes a
non-monetary obligation on the Indemnified Party or is not accompanied by a
complete and unconditional release of the Indemnified Party in respect of such
Third Party claim; provided, that the consent of the Indemnified Party shall not
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be unreasonably withheld, conditioned or delayed. If the Indemnifying Party
elects not to defend the Indemnified Party against such Third Party claim,
whether by not giving the Indemnified Party timely notice as provided above or
otherwise, then the Indemnified Party may conduct the defense and the reasonable
costs and expenses pertaining to such defense shall be the liability of the
Indemnifying Party hereunder. In any case, whether or not the Indemnifying Party
elects to control the defense of a Third Party claim, the Indemnified Party
shall not consent to the entry of any judgment or enter into any settlement in
respect of a Third Party claim without the consent of the Indemnifying Party,
and without such consent the Indemnifying Party shall not be obligated to
indemnify the Indemnified Party hereunder in respect of the related Indemnity
Claim; provided, that the consent of the Indemnifying Party shall not be
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unreasonably withheld, conditioned or delayed. To the extent the Indemnifying
Party shall direct, control or participate in the defense or settlement of any
Third Party claim, the Indemnified Party will, as reasonably required, give the
Indemnifying Party and its counsel access to, during normal business hours,
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the relevant business records and other documents, and permit them to consult
with the employees and counsel of the Indemnified Party. Regardless of which
Person assumes control of the defense of any claim, each Party shall cooperate
and provide the other Party reasonable assistance in the defense thereof.
ARTICLE VIII
MISCELLANEOUS PROVISIONS
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SECTION 8.1. Disclaimer. Neither Buyer nor any of its Subsidiaries
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makes any warranty or representation as to the validity of any Patent licensed
by it to the Company or any warranty or representation that any use of any
Patent with respect to any product or service will be free from infringement of
any rights of any Third Party.
SECTION 8.2. No Implied Licenses. Nothing contained in this Agreement
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shall be construed as conferring any rights by implication, estoppel or
otherwise, under any intellectual property right, other than the rights
expressly granted in this Agreement with respect to the Patents licensed
hereunder.
SECTION 8.3. Bankruptcy. The Parties intend that these licenses are
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"intellectual property" under 11 U.S.C.(S) 101 and that in the event of a
licensor's bankruptcy, the licensee party shall have all rights available under
11 U.S.C. (S) 365(n) to the fullest extent permitted by law.
SECTION 8.4. Survival. This Article VIII and the agreements of Buyer
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and the Company contained in Articles IV, VI and VII shall survive the
termination of this Agreement. All other representations, warranties, covenants
and agreements in this Agreement shall not survive the termination of this
Agreement.
SECTION 8.5. Modification or Amendment. Subject to the provisions of
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the applicable law, at any time prior to the ABC Merger Effective Time (as
defined in the Merger Agreement), the parties hereto may modify or amend this
Agreement, by written agreement executed and delivered by duly authorized
officers of Buyer and the Company.
SECTION 8.6. Counterparts. This Agreement may be executed in any
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number of counterparts, each such counterpart being deemed to be an original
instrument, and all such counterparts shall together constitute the same
agreement.
SECTION 8.7. GOVERNING LAW AND VENUE; WAIVER OF JURY TRIAL. (a) THIS
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AGREEMENT SHALL BE DEEMED TO BE MADE IN AND IN ALL RESPECTS SHALL BE
INTERPRETED, CONSTRUED AND GOVERNED BY AND IN ACCORDANCE WITH THE LAW OF THE
STATE OF NEW YORK. The parties hereby irrevocably submit to the jurisdiction of
the courts of the State of New York and the Federal courts of the United States
of America located in the County of New York, New York solely in respect of the
interpretation and enforcement of the provisions of this Agreement and of the
documents referred to in this Agreement, and in respect of the transactions
contemplated hereby, and hereby waive, and agree not to assert, as a defense in
any Action for the interpretation or enforcement hereof or of any such document,
that it is not subject thereto or that such Action may not be brought or is not
maintainable in said courts or that the venue thereof may not be appropriate or
that this Agreement or any such document may not be enforced in or by such
courts, and the parties hereto irrevocably agree that all claims with respect to
such Action shall be heard and determined in such a New York State or Federal
court. The parties hereby consent to and grant any such court jurisdiction over
the person of such parties and over the subject matter of such dispute, and
agree that mailing of process or other papers in connection with any such Action
in the manner provided in
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Section 8.8 or in such other manner as may be permitted by law shall be valid
and sufficient service thereof.
(b) EACH PARTY ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY WHICH MAY
ARISE UNDER THIS AGREEMENT IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT
ISSUES, AND THEREFORE EACH SUCH PARTY HEREBY IRREVOCABLY AND UNCONDITIONALLY
WAIVES ANY RIGHT SUCH PARTY MAY HAVE TO A TRIAL BY JURY IN RESPECT OF ANY
LITIGATION DIRECTLY OR INDIRECTLY ARISING OUT OF OR RELATING TO THIS AGREEMENT,
OR THE TRANSACTIONS CONTEMPLATED BY THIS AGREEMENT. EACH PARTY CERTIFIES AND
ACKNOWLEDGES THAT (i) NO REPRESENTATIVE, AGENT OR ATTORNEY OF ANY OTHER PARTY
HAS REPRESENTED, EXPRESSLY OR OTHERWISE, THAT SUCH OTHER PARTY WOULD NOT, IN THE
EVENT OF LITIGATION, SEEK TO ENFORCE THE FOREGOING WAIVER, (ii) EACH PARTY
UNDERSTANDS AND HAS CONSIDERED THE IMPLICATIONS OF THIS WAIVER, (iii) EACH PARTY
MAKES THIS WAIVER VOLUNTARILY, AND (iv) EACH PARTY HAS BEEN INDUCED TO ENTER
INTO THIS AGREEMENT BY, AMONG OTHER THINGS, THE MUTUAL WAIVERS AND
CERTIFICATIONS IN THIS SECTION 8.7.
SECTION 8.8. Notices. Any notice, request, instruction or other
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document to be given hereunder by any party to the others shall be in writing
and shall be deemed to have been delivered (i) on the date of service, if served
personally, (ii) upon confirmation of receipt, if transmitted by facsimile,
electronic or digital transmission method, (iii) on the first business day after
sent, if sent for next day delivery by recognized overnight delivery service and
(iv) on the third day after it is sent, if sent by first class mail. In each
case, notice shall have been sent to the Parties at the following addresses:
if to Buyer
Armkel, LLC
c/o Kelso & Company
000 Xxxx Xxxxxx, 00/xx/ Xxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxx X. Xxxxxxx, XX, Esq.
Telecopy: (000) 000-0000
(with copies to:
Xxxxxx Xxxxx, Esq.
Xxxxxx, Xxxx & Xxxxxxxx LLP
0 Xxxx Xxxxx
Xxxxxx, Xxxxxxxxxx 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
Xxxxxx X. Xxxxxxx
Xxxxxxx X. Xxxxxx
Xxxxxx, Xxxx & Xxxxxxxx LLP
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone: 000-000-0000
Facsimile: 000-000-0000
9
and
Xxx Xxxxx
Xxxxxx X. Xxxxxx
Skadden, Arps, Slate, Xxxxxxx & Xxxx LLP
Xxxx Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone: 000-000-0000
Facsimile: 917-777-2770)
if to the Company
MedPointe Inc.
00 XXX Xxxxxxx
0/xx/ Xxxxx Xxxx
Xxxxx Xxxxx, XX 00000
Attention: Xxxxxxx X. Wild
fax: (000) 000-0000
(with a copy to:
Xxxxxxx X. Xxxxxx, Esq.
Xxxxxxx Xxxxxxx & Xxxxxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Telephone: 000-000-0000
Facsimile: 212-455-2502)
or to such other persons or addresses as may be designated in writing
by the Party to receive such notice as provided above.
SECTION 8.9. Entire Agreement. This Agreement (including any exhibits
-----------------
hereto) constitutes the entire agreement, and supersedes all other prior
agreements, understandings, representations and warranties both written and
oral, among the parties, with respect to the subject matter hereof.
SECTION 8.10. No Third Party Beneficiaries. This Agreement is not
-----------------------------
intended to confer upon any Person other than the parties hereto any rights or
remedies hereunder.
SECTION 8.11. Obligations of Buyer and of the Company. Whenever this
----------------------------------------
Agreement requires a Subsidiary of Buyer to take any action, such requirement
shall be deemed to include an undertaking on the part of Buyer to cause such
Subsidiary to take such action. Whenever this Agreement requires a Subsidiary of
the Company to take any action, such requirement shall be deemed to include an
undertaking on the part of the Company to cause such Subsidiary to take such
action and, after the Company Merger Effective Time (as defined in the Merger
Agreement), on the part of the Surviving Company (as defined in the Merger
Agreement) to cause such Subsidiary to take such action.
SECTION 8.12. Severability. It is the intention of the parties that
-------------
the provisions of this Agreement shall be deemed severable and the invalidity or
unenforceability of any provision shall not affect the validity or
enforceability or the other provisions hereof. It is the intention of the
parties that if
10
any provision of this Agreement, or the application thereof to any Person or any
circumstance, is invalid or unenforceable, (a) a suitable and equitable
provision shall be substituted therefor in order to carry out, so far as may be
valid and enforceable, the intent and purpose of such invalid or unenforceable
provision and (b) the remainder of this Agreement and the application of such
provision to other Persons or circumstances shall not be affected by such
invalidity or unenforceability, nor shall such invalidity or unenforceability
affect the validity or enforceability of such provision, or the application
thereof, in any other jurisdiction.
SECTION 8.13. Assignment. This Agreement shall not be assignable by
-----------
operation of law or otherwise; provided, however, that Buyer or the Company, as
the case may be, may designate, by written notice to the other party hereto,
another wholly-owned direct or indirect subsidiary to be a Constituent
Corporation in lieu of Buyer or the Company, as the case may be, in which event
all references herein to Buyer or the Company, as the case may be, shall be
deemed references to such other subsidiary, except that all representations and
warranties made herein with respect to Buyer or the Company, as the case may be,
as of the date of this Agreement shall be deemed representations and warranties
made with respect to such other subsidiary as of the date of such designation.
Notwithstanding the foregoing, if Buyer sells, assigns, transfers or conveys any
of the intellectual property rights within the Licensed Property, the purchaser
or assignee of such rights, shall take such rights subject to this Agreement and
such purchaser or assignee must assume the Buyer's rights and obligations under
this Agreement to the extent they apply to such intellectual property. Any
purported assignment, transfer or sale made in contravention of this Section
8.13 shall be null and void.
11
IN WITNESS WHEREOF, this Agreement has been duly executed and
delivered by the duly authorized officers of the parties hereto as of the date
of this Agreement.
XXXXXX-XXXXXXX, INC.
By:
--------------------------------
Name:
Title:
ARMKEL, LLC
By:
--------------------------------
Name:
Title:
12
EXHIBIT A
Xxxxxx Division
Patents
------------------------------------------------------ ----------------------------------------------------
Title Registration Number
----- -------------------
------------------------------------------------------ ----------------------------------------------------
Analyte Assaying Device 6,046,057
------------------------------------------------------ ----------------------------------------------------
Test Device and Method for Colored Particle 5,989,921
Immunoassay
------------------------------------------------------ ----------------------------------------------------
Manufacturing Method for Making Laminated 5,846,835
Immunodiagnostic Test Device
------------------------------------------------------ ----------------------------------------------------
Improved Diagnostic Detection Device 2 5,739,041
------------------------------------------------------ ----------------------------------------------------
Test Device and Method for Colored Particle 5,714,389
Immunoassay
------------------------------------------------------ ----------------------------------------------------
Assay Using Absorbent Material 5,573,919
------------------------------------------------------ ----------------------------------------------------
Improved Diagnostic Detection Device 2 D390,667
------------------------------------------------------ ----------------------------------------------------
Immunoassay Test Cartridge D369,969
------------------------------------------------------ ----------------------------------------------------
Immunoassay Test Cartridge D341,663
------------------------------------------------------ ----------------------------------------------------
Immunoassay Test Cartridge 2 D361,842
------------------------------------------------------ ----------------------------------------------------
Immunoassay Test Cartridge 3 D369,868
------------------------------------------------------ ----------------------------------------------------
Biological Dipstick D296,926
------------------------------------------------------ ----------------------------------------------------
Patent Applications
------------------------------------------------------ ----------------------------------------------------
Name Application Number
---- ------------------
------------------------------------------------------ ----------------------------------------------------
Analyte Assaying Device 09/224,950
------------------------------------------------------ ----------------------------------------------------
Method for Making Laminated Substrate and Apparatus 09/205,894
for Marking Substrate with Reagent
------------------------------------------------------ ----------------------------------------------------
Improved Diagnostic Detection Device 08/432,894
------------------------------------------------------ ----------------------------------------------------
13
Hygeia Sciences, Inc.
Patents
-----------------------------------------------------------------------------------------------------------
Title Registration Number
----- -------------------
------------------------------------------------------ ----------------------------------------------------
Sol Capture Immunoassay Kit and Procedure 6,083,760
------------------------------------------------------ ----------------------------------------------------
Total Gonadotropal Peptide 5,366,863
------------------------------------------------------ ----------------------------------------------------
Simultaneous Dual Analyte Assay 5,242,804
------------------------------------------------------ ----------------------------------------------------
Sol Capture Immunoassay Kit and Procedure 5,202,267
------------------------------------------------------ ----------------------------------------------------
Porous Strip for Assay Device 5,141,850
------------------------------------------------------ ----------------------------------------------------
Immunoassay Including Lyophilized Reactant 5,102,788
------------------------------------------------------ ----------------------------------------------------
Test Kit and Diagnostic Procedures 5,100,621
------------------------------------------------------ ----------------------------------------------------
Assay Device for Swab Borne Analytes 5,084,245
------------------------------------------------------ ----------------------------------------------------
Disposable, Pre-Packaged Device 4,999,163
------------------------------------------------------ ----------------------------------------------------
Swab Expressor Immunoassay Device 4,963,325
------------------------------------------------------ ----------------------------------------------------
Positive Step Immunoassay 4,952,517
------------------------------------------------------ ----------------------------------------------------
Improved Enzyme and Immunologic Reagents 4,931,385
------------------------------------------------------ ----------------------------------------------------
Mulitple Antibody Detection of Antigen 4,868,108
------------------------------------------------------ ----------------------------------------------------
Metal Sol Capture Procedure and Kit 4,859,612
------------------------------------------------------ ----------------------------------------------------
Extraction of Test Substances 4,851,337
------------------------------------------------------ ----------------------------------------------------
Chromogenic Solution for Immunoassay 4,824,784
------------------------------------------------------ ----------------------------------------------------
Enzyme Immunoassay w/2-part Solution 4,525,452
------------------------------------------------------ ----------------------------------------------------
Enzyme Immunoassay w/2-part Solution 4,503,143
------------------------------------------------------ ----------------------------------------------------
14
