EXHIBIT 10.13
CONFIDENTIAL SETTLEMENT AGREEMENT
This Confidential Settlement Agreement ("Agreement") is made and
entered into effective this 4th day of April, 1998 by and between X. X. Xxxx,
Inc., a New Jersey corporation having a principal place of business at 000
Xxxxxxx Xxxxxx, Xxxxxx Xxxx, Xxx Xxxxxx, 00000 ("Bard") and Advanced
Cardiovascular Systems, Inc., a California corporation having a principal place
of business at 0000 Xxxxxxxx Xxxxx, Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("ACS") with
respect to the following:
RECITALS
X. Xxxx is the owner by assignment of the entire right, title and
interest in United States Patent No. 33,561 ("the `561 patent'") which was
granted on March 26, 1991 naming Levy as the inventory for an invention entitled
"BALLOON AND MANUFACTURE THEREOF" and United States Patent No. Re 32,983 ("the
`983 patent'") which was granted on July 11, 1989 naming Levy as the inventory
for an invention entitled "BALLOON AND MANUFACTURE THEREOF." Bard is also the
owner by assignment of the entire right, title and interest in United States
Patent No. 5,728,067 ("the `067 patent'") which was granted on March 17, 1998,
naming Xxxxx as the inventor for an invention entitled "RAPIDLY EXCHANGEABLE
CORONARY CATHETER".
X. Xxxx and ACS are parties to a civil action pending in the United
States District Court for the District of Delaware identified as X.X. Xxxx, Inc.
v. Advanced Cardiovascular Systems, Inc., Civil Action Xx. 00-000 (XXX) ("xxx
Levy Action"). Bard and ACS are also parties to a civil action pending in the
United States District Court
1
for the District of Delaware identified as X.X. Xxxx, Inc. v. Advanced
Cardiovascular Systems, Inc., Civil Action Xx. 00-000 (XXX) ("xxx Xxxxx
Action").
C. The Levy Action involves claims by Bard against ACS for infringement
of the `561 and `983 patents and the Xxxxx Action involves claims by Bard
against ACS for infringement of the `067 patent. ACS has denied Bard's claims.
X. Xxxx and ACS are parties to a Settlement Agreement dated January 13,
1992, which settled previous litigation between them ("the Prior Agreement").
X. Xxxx and ACS are also parties to opposition proceedings that involve
European Application No. 89312612.8-205/Patent No. 0380873 ("the ACS Foreign
Opposition") an equivalent patent to the `067 patent.
X. Xxxx is the owner of the entire right, title and interest in U.S.
Patent Nos. 4,917,088, 5,102,390, 5,104,376 and 5,201,754 naming Xxxxxxxxxx as
the inventor for an invention entitled "BALLOON DILATATION PROBE."
G. ACS is owner of certain patents and patent applications naming both
Xxxx X. Xxxx and Xxxxxxx X. Xxxxxxxxx as co-inventors and in particular U.S.
Patent No. 4,748,982 ("the `982 patent) which was granted on June 7, 1988, as
well as U.S. Patent Nos. 5,496,346 and 5,626,600 for an invention entitled
"REINFORCED BALLOON DILATATION CATHETER WITH SLITTED EXCHANGE SLEEVE AND
METHOD". Under the Prior Agreement, ACS granted certain rights to Bard under the
`982 patent. ACS is also the owner of U.S. Patent No. 4,538,622 naming Samson
and Xxxxxxxx as co-inventors which was granted on September 3, 1985 for an
invention entitled "GUIDE WIRE FOR CATHETERS."
2
H. The parties hereto wish to settle and compromise the Levy Action and
Xxxxx Action and potential disputes between them and to grant each other certain
rights to their foregoing respective patents and patent applications.
AGREEMENT
In consideration of the foregoing, and of the covenants and conditions
hereinafter set forth, and in settlement and compromise of certain controversies
that exist and potentially may exist between them, the parties hereby agree as
follows:
1. DEFINTIIONS
Solely for purposes of this Agreement, the following terms
shall have the meanings set forth below:
1.1 "Levy Patent Rights" means and compromises United States reissue
patent nos. RE 32,983 and 33,561, together with all other United States patents
that have issued or may issue from United States patent applications serial nos.
510,812, 914,108 or 287,234, including any and all divisionals, continuations,
continuations-in-part, reissues, reexaminations and extensions thereof, and
Foreign Counterparts of any and all of them.
1.2 "Samson Patent Rights" means and compromises United States patent
no. 4,538,622, together with all other United States patents that have issued or
may issue from United States patent application serial no. 550,917, including
any and all divisionals, continuations, continuations-in-part, reissues,
reexaminations and extensions thereof, and Foreign Counterparts of any and all
of them.
3
1.3 "Xxxxxxxxx-Xxxx Patent Rights" means and comprises United States
patent nos. 4,748,982, 5,496,346 and 5,626,600, together with all other United
States patents that have issued or may issue from United States patent
applications serial nos. 000,653, 199,025, 728,812, 482,093 or 069,297,
including any and all divisionals, continuations, continuations-in-part,
reissues, reexaminations and extensions thereof, and Foreign Counterparts of any
and all of them.
1.4 "Xxxxxxxxxx Patent Rights" means and comprises United States patent
nos. 4,917,088, 5,102,390, 5,104,376 and 5,201,754 together with all other
United States patents that have issued or may issue from United States patent
applications serial nos. 458,906, 475,417, 729,541 or 303,908, including any and
all divisionals, continuations, continuations-in-part, reissues, reexaminations
and extensions thereof, and Foreign Counterparts of any and all of them.
1.5 "Xxxxx Patent Rights" means and comprises United States patent no.
5,728,067, together with all other United States patents that have issued or may
issue from United States patent application serial nos. 303,803, 618,531,
759,107, 999,589, 095,036, 477,617, or 642,334, including any and all
divisionals, continuations, continuations-in-part, reissues, reexaminations and
extensions thereof, and Foreign Counterparts (including EPO Patent No. 0 380,873
B1) of any and all of them.
1.6 "Minor Modifications" means only changes in 1) balloon diameter, 2)
balloon length, 3) balloon size, 4) balloon material, 5) the inner and outer
dimensions of the catheter shaft, 6) or the addition of coatings 7) hubs, 8)
shaft length and material, 9)
4
balloon markers, or 10) minor components required by the FDA as a result of a
product defect or complaint. In no event shall any other change, addition, or
deletion be deemed a Minor Modification and, in particular, any design or
structural change, addition or deletion. By way of example but not limitation,
in no event shall a change in the length of the guidewire lumen to anything less
than the full length of the catheter be deemed a Minor Modification. In no event
shall the inclusion of any means which permit a guidewire to exit the catheter
shaft between the distal end and proximal end of the catheter be deemed a Minor
Modification.
1.7 "Affiliate" means any corporation, firm, partnership, joint venture
or other entity which, now or hereafter, directly or indirectly owns, is owned
by or is under common ownership of a party. "Owned" for purposes of determining
Affiliates shall mean ownership of more than fifty percent (50%) (or such lesser
percentage which is the maximum allowed to be owned by a foreign corporation in
a particular jurisdiction) of the equity or other ownership interest having the
power to vote on or direct the affairs of such corporation, firm, partnership,
joint venture or other entity.
1.8 "Confidential Information" means information that gives the
disclosing party an advantage over its competitors who do not know or use it,
including, but not limited to, techniques, designs, drawings, processes,
inventions, developments, equipment, prototypes, sales and customer information,
and business and financial information, relating to the business, products,
practices, or techniques of the disclosing party. As used herein, "Confidential
Information" shall not include any information or data which (i) is in or
becomes part of the public domain by any means other than the
5
receiving party's breach of its obligations hereunder; (ii) was known to the
receiving party at the time of disclosure by the disclosing party; (iii) is, at
any time, disclosed to the receiving party by any third party having the right
to disclose the same; or (iv) is developed by an employee(s) or agent/consultant
of the receiving party who was not privy to any Confidential Information
disclosed by the disclosing party pursuant to this Agreement.
1.9 "Foreign Counterpart" means all foreign patent applications and
issued foreign patents which claim priority from, or share common priority with
an identified United States patent or patent application or which disclose and
claim the same invention that is the subject matter of such identified United
States patent or patent application.
2. STIPULATED DISMISSAL
Promptly upon the effective date of this Agreement, counsel
for the respective parties in the Levy Action and the Xxxxx Action shall dismiss
with prejudice all aspects of those litigations, including all claims and
defenses, by executing a Stipulation and Order of Dismissal in the form attached
hereto as Exhibits A and B, and shall, not later than ten (10) days thereafter,
present the same to the Court for approval and filing.
3. LICENSE GRANTS
x. Xxxx Patent Rights
Bard grants to ACS and its Affiliates a paid-up,
irrevocable, non-exclusive, worldwide license, without the right to sublicense,
to make, have made, use,
6
sell, offer for sale or import, lease or otherwise dispose of all past, current
and future products, and to practice processes and methods, under the Levy
Patent Rights. ACS acknowledges that the issued patents of the Levy Patent
Rights are valid and enforceable.
x. Xxxxx Patent Rights
Bard grants to ACS and its Affiliates a paid-up,
irrevocable, nonexclusive, worldwide license, without the right to sublicense,
to make, have made, use, sell, offer for sale or import, lease or otherwise
dispose of all past, current and future products, and to practice processes and
methods, under the Xxxxx Patent Rights.
x. Xxxxxxxxx-Xxxx Patent Rights
To the extent not already provided for in the Prior
Agreement or the subject of the covenant not to xxx recited in Section 4 infra,
ACS grants to Bard and its Affiliates an irrevocable, non-exclusive, worldwide
license, without the right to sublicense, to make, have made, use, sell, offer
for sale or import, lease or otherwise dispose of all past, current and future
products, and to practice processes and methods, solely in connection with Rapid
Exchange Perfusion Catheter Systems (as defined in the Prior Agreement), under
the Xxxxxxxxx-Xxxx Patent Rights and the "Xxxx/XxXxxxx Patent Rights" (as
defined in the Prior Agreement). In connection solely with Rapid Exchange
Perfusion Catheter Systems and by way of update only of the Prior Agreement, the
following Xxxx Patents are included in the Xxxx/XxXxxxx Patent Rights as
currently advised: U.S. Patent Nos. 5,040,548, 5,061,273, 5,300,085, 5,350,395
and 5,451,233. This Agreement does not expand or alter the rights granted in the
Prior Agreement in any way under the Xxxx/XxXxxxx Patent Rights. As defined in
Paragraph 2(c) of the Prior Agreement and for purposes of this Agreement, a
"Rapid Exchange Perfusion Catheter
7
System" shall mean a coronary balloon dilatation catheter having a rapid
exchange capability without need for an extension wire such as that set forth,
for example, in U.S. Patent Nos. 5,040,548 and 5,061,273 and designed, intended
and marketed by Bard as a bona fide perfusion catheter having multiple holes in
the wall of the catheter shaft proximal to the balloon and distal to the guide
wire entry point to allow blood flow through the balloon region of the catheter
when the balloon is inflated. Nothing in this Paragraph shall be deemed to be
the grant of a license or of any rights to Bard and its Affiliates to make, have
made, use, sell, offer for sale or import, lease or otherwise dispose of, or to
practice processes and methods in connection with, any products other than a
Rapid Exchange Perfusion Catheter System.
x. Xxxxxxxxxx Patent Rights
Bard grants to ACS and its Affiliates, a paid-up,
irrevocable, non-exclusive, worldwide license, without the right to sublicense,
to make, have made, use, sell, offer for sale or import, lease or otherwise
dispose of all past, current and future products, and to practice processes and
methods, under the Xxxxxxxxxx Patent Rights.
x. Xxxxxx Patent Rights
ACS grants to Bard and its Affiliates a paid-up,
irrevocable, non-exclusive, worldwide license, without the right to sublicense,
to make, have made, use, sell, offer for sale or import, lease or otherwise
dispose of all past, current and future products, and to practice processes and
methods, under the Samson Patent Rights.
8
4. COVENANT NOT TO XXX
x. ACS and its Affiliates covenant not to xxx Xxxx or its
Affiliates for infringement of any patent owned by ACS or its Affiliates, or as
to which ACS or its Affiliates has the right to xxx, by reason of Bard and its
Affiliates making, having made, using, selling, offering for sale or importing
in the United States or elsewhere, Bard's Telescope catheter as set forth in the
Specification attached as Exhibit C hereto and Minor Modifications thereto.
x. Xxxx and its Affiliates covenant not to xxx ACS and its
Affiliates for any and all debts, claims, demands, and liabilities, whether
known or unknown, suspected or unsuspected, which are based in any way on any
and all of ACS's and its Affiliates past and current domestic and foreign
angioplasty catheters including stent delivery catheters. For purposes of this
section, "ACS's and its Affiliates past and current domestic and foreign
angioplasty catheters including stent delivery catheters" shall mean ACS's and
its Affiliates past and current domestic and foreign angioplasty catheters
including stent delivery catheters and shall specifically exclude any future
modifications to such products. Within thirty (30) business days from the
effective date of this Agreement ACS shall deliver to Bard appropriate
catalogues or materials evidencing such current products only. In particular,
and by way of example but not limitation, Bard and its Affiliates covenant not
to xxx ACS and its Affiliates for infringement of any U.S. or foreign patents or
patent applications owned by Bard or its Affiliates, or as to which Bard or its
Affiliates has the right to xxx, by reason of ACS or its Affiliates making,
having made, using, selling, offering for sale, leasing, importing or otherwise
disposing
9
of in the United States or elsewhere any and all of ACS's and its Affiliates
past and current domestic and foreign angioplasty catheters including stent
delivery catheters.
5. OPPOSITION TO XXXXX FOREIGN COUNTERPART
Within twenty (20) business days following the effective date
of this Agreement, ACS and its Affiliates shall take all practical steps to
withdraw from and thereafter terminate its participation in any opposition
proceedings it or an agent or representative of ACS and its Affiliates has
initiated or filed against any Foreign Counterpart of the Xxxxx Patent Rights,
including but not limited to European Application No. 89312612.8-2305/Patent No.
0380873. ACS and its Affiliates also shall not thereafter participate or
cooperate with any other party in any future opposition proceedings that may be
initiated or filed against any Foreign Counterpart of the Xxxxx Patent Rights,
unless required by law to do so. In the event that ACS or its Affiliates are so
required, it is agreed that ACS or its Affiliates will provide Bard with notice
of such requirement immediately, so that Bard may seek an appropriate protective
order. ACS and its Affiliates agree to reasonably cooperate with Bard in
connection with Bard's efforts to obtain any such order or other remedy.
6. PAYMENT TERMS
a. ACS shall pay to BARD the nonrefundable sum of One Hundred
Million Dollars ($100,000,000). Such payment shall be made within one (1)
business day following the effective date of this Agreement in U.S. currency by
wire transfer to the following account:
10
Account Name X.X. Xxxx, Inc.
Bank Name and Address: Chase Manhattan Bank
New York, New York
Account No.: 000-0-000000
ABA Routing No.: 000000000
All licenses granted by Bard to ACS and its
Affiliates hereunder are fully paid-up. At no time, and under no circumstances,
shall any royalty payments be owed by ACS or its Affiliates to Bard or any third
party under this Agreement, either for past or future manufacture, use or sales.
x. Xxxxxxxxx-Xxxx Patent Rights Royalty Payment
No royalty shall be payable by Bard to ACS in
connection with the Xxxxxxxxx-Xxxx Patent Rights license set forth in Paragraph
3(c) of this Agreement and such license shall be governed by the terms and
conditions of the Prior Agreement.
7. PATENT MARKING
ACS and its Affiliates shall xxxx all catheters which are
covered by or whose use is covered by an issued claim of a U.S. patent within
the Levy Patent Rights. Xxxxx Patent Rights or Xxxxxxxxxx Patent Rights with the
number of the applicable U.S. patent(s). Bard and its Affiliates shall xxxx all
products which are covered by or whose use is covered by an issued claim of a
U.S. patent within the Xxxxxxxxx-Xxxx Patent Rights or Samson Patent Rights with
the number of the applicable U.S. patent(s). The marking may appear on the
package, label, instruction for use, or brochure relating to the sale by each
party of its Affiliates of such products.
11
8. REPORTING
It is understood and agreed by the parties hereto that within
thirty (30) business days of a written request by Bard, which request will be
made by Bard no more than once each calendar quarter, ACS will provide Bard with
reasonably requested information concerning all sales of applicable products of
ACS and its Affiliates covered by the Levy Patent Rights, for the life of the
Levy Patent Rights. ACS considers such information to be Confidential
Information and Bard agrees to treat it as such and use it only for determining
its obligation, if any, to DuPont. Any such information that is communicated to
DuPont shall be designated and treated as "Confidential" under the terms of
Bard's agreement with DuPont, and Bard shall use its best efforts to ensure that
such information is held in strict confidence by DuPont. If Bard ever satisfies
its obligation to DuPont (which requires such ACS sales information be provided
to DuPont hereunder) prior to the expiration of the Levy Patent Rights, it shall
so notify ACS promptly and ACS shall have no further obligation to supply sales
data to Bard.
9. PAYMENT OF COSTS AND ATTORNEYS FEES
The parties hereto shall pay their own costs, attorneys' fees
and expenses incurred in connection with the Levy Action and the Xxxxx Action as
identified and defined herein.
10. PUBLICITY
a. Voluntary Release of Information
12
Neither Bard nor ACS shall release any information to
any third party with respect to the existence or terms of this Agreement without
the prior written consent of the other party. This prohibition includes, but is
not limited to, press releases, education and scientific conferences,
promotional materials, governmental filings, and discussions with lenders,
investment bankers, public officials, and the media. The foregoing restrictions
shall not apply to confidential discussions with advisors, including lawyers,
accountants, lenders, and investment bankers.
b. Required Disclosure
If Bard or ACS determines that a release of such
information is required by law or the Rules of the New York Stock Exchange or
any exchange on which the parties' securities are listed ("Stock Exchange
Rules"), it shall promptly notify the other party in writing thirty (30) days
before the time of the proposed release, if practicable. The notice shall
include the exact text of the proposed release and the time and manner of the
release. If requested by the other party hereto, the party seeking to release
information shall furnish to the other an opinion of counsel that the release of
all the information is required by law or the Stock Exchange Rules. At the other
party's request and before the release, the party desiring to release the
information shall consult with the other party on the necessity for the
disclosure and the text of the proposed release. Absent approval in advance from
the other party, in no event shall a release include information regarding the
existence or terms of this Agreement that is not required by law or the Stock
Exchange Rules. The parties have each reviewed and approved the press release
attached as Exhibits D and E and agree that no further
13
Approval hereunder is required from either party for Exhibits D and E and other
disclosures consistent with Exhibits D and E.
c. Disclosure Pursuant to Legal Process
Should any third party seek to obtain any information
by legal process with respect to the existence of this Agreement from any party
hereto, such party to this Agreement shall promptly notify the other party
hereto, and shall take all appropriate measures to avoid and minimize the
release of such information.
d. Disclosure Pursuant To Sale Of Business
Bard and ACS shall be permitted to release any
information to others in confidence with respect to the existence or terms of
this Agreement or the Prior Agreement in connection with (i) a merger,
consolidation or sale of all of the stock of ACS or Bard or (ii) a sale of all
or substantially all of the assets of the Business (as defined in Section 20).
11. PROTECTIVE ORDERS
The parties agree to abide by the terms of the respective
Protective Orders (Re Confidentially) filed in the Levy Action which shall
remain in force and effect, and documents produced in discovery, which were
designated "Confidential" or "Confidential - For Counsel Only," and all
deposition transcripts, shall be destroyed or retained in confidence by counsel
of records for the parties. This Agreement is hereby designated as
"CONFIDENTIAL" pursuant to such Protective Order.
14
12. NO IMPLIED LICENSES
Nothing in this Agreement shall be construed as conferring by
implication, estoppel or otherwise any license or other right under any patent
or intellectual property of the parties, except as expressly granted.
13. SETTLEMENT OF DISPUTES
Any dispute between the parties concerning the construction,
interpretation, and effect of this Agreement or any clause herein contained, or
the rights and liabilities of the parties hereunder, or the coverage of any
patent claims licensed herein, shall be resolved, if necessary, by binding
arbitration in accordance with the commercial arbitration rules of the American
Arbitration Association, and judgment upon the award rendered by the
arbitrator(s) may be entered in any court having jurisdiction thereof. The
locale of the arbitration shall be Chicago, Illinois. ACS and Bard shall
initially share the arbitration costs. However, the party losing the arbitration
shall then pay the total costs of the arbitration, reimbursing the other party
for costs of the arbitration already paid, provided that each party shall pay
its own costs and attorneys' fees. The validity, enforceability and ownership of
the patents licensed herein shall not be at issue in any future dispute between
the parties arising under this Agreement, except as expressly provided with
respect to holding of invalidity, unpatentability or unenforceability by the
U.S. Patent and Trademark Office (or similar foreign patent office, agency or
court) in proceedings initiated and prosecuted by a party other than and not
affiliated, directly or indirectly, with the party licensed under the patent in
question, or in third party litigation.
15
14. ABSENCE OF WAIVER
The failure of any party to enforce at any time any provision
of this Agreement shall in no way be construed as a waiver of such provision,
nor in any way affect the validity of this Agreement or any part thereof, or the
right of any party to later enforce each and every such provision. No waiver of
any breach of this Agreement shall be held to be a waiver of any other or
subsequent breach.
15. ENTIRE AGREEMENT
With the exception of the Prior Agreement, which shall remain
in full force and effect except as specifically amended by this Agreement, and
the Interference Settlement Agreement entered into on the same day as this
Agreement, this Agreement shall constitute the entire agreement between the
parties hereto with respect to the subject matter hereof, and shall supersede
all previous negotiations, commitments and writing, except as specifically
provided in Paragraph 11 hereof which shall remain in force and effect. This
Agreement shall not be modified or altered in any manner except by an instrument
in writing executed by all the parties hereto.
16. SEVERABILITY
If any provision of this Agreement is found to be prohibited
by law and invalid, or for any reasons such provision is held unenforceable, in
whole or in part, that provision shall be considered severable and its
invalidity or enforceability shall not effect the remainder of this Agreement,
which shall continue in full force and effect.
16
17. NOTICE
a. Any notice, report, written statement or payment to a party
permitted or required under this Agreement shall be in writing and shall be sent
by certified mail, return receipt requested, Federal Express, or hand delivered
at the respective addresses set forth below, or to such other addresses as the
respective parties may from time to time designate:
ADVANCED CARDIOVASCULAR SYSTEMS, INC.
0000 Xxxxxxxx Xxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000-0000
Attention: General Counsel
GUIDANT CORPORATION
000 Xxxxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxx 00000-0000
Attention: General Counsel
X.X. XXXX, INC.
000 Xxxxxxx Xxxxxx
Xxxxxx Xxxx, Xxx Xxxxxx 00000
Attention: General Counsel
b. Any such notice, report, statement or payment under
Subparagraph 17(a) above which is sent by prepaid registered or certified mail,
or by Federal Express, shall be deemed to have been duly made upon mailing,
subject to proof of receipt.
18. APPLICABLE LAW
This Agreement shall be deemed to be executed and to be
performed in the State of California and shall be construed in accordance with
the laws of the State of California as to all matters, including, but not
limited to, matters of validity, construction, effect, or performance.
17
19. NO ADMISSION
Neither the entering into this Agreement, nor any provision
hereof, shall be deemed as an admission by any party of any wrongdoing, or of
the validity or invalidity of any position taken or proposed to be taken by or
against the party in the Levy Action or Xxxxx Action or any other litigation.
Nothing in this Agreement shall be construed as an admission of the validity or
enforceability of the Xxxxx Patent Rights.
20. ASSIGNMENT OR TRANSFER
Except as set forth below, neither this Agreement nor any of
the rights or obligations arising under this Agreement may be assigned or
transferred by any party, in whole or in part, without the prior written consent
of the other party, and any attempted assignment or transfer without such
written consent shall be of no force or effect. Notwithstanding the foregoing,
this Agreement, including the rights and obligations arising under this
Agreement can be assigned or transferred by a party in connection with (i) a
merger, consolidation, or sale of all of the stock of that party or (ii) a sale
of all or substantially all of the assets of the Business (as defined below) of
that party, provided, however, that any such assignment or transfer by Bard
shall not relieve Bard of its obligations under Section 22 of this Agreement
without the consent of ACS. Subject to the foregoing, this Agreement shall be
binding upon and inure to the benefit of the permitted successors, assigns, and
transferees of the parties. For purposes of this Section, Business shall mean,
with respect to ACS, those portions of its operations that are related to
developing, manufacturing and selling angioplasty products, and with respect to
Bard,
18
those portions of its operations that are related to developing, manufacturing
and selling coronary angioplasty products.
21. REPRESENTATIONS AND WARRANTIES
Each of the parties hereto represents and warrants to each
other that it has the right to enter into this Agreement and to grant the rights
as provided herein. In particular Bard represents and warrants that it is the
owner by assignment of the entire right, title and interest in and to the Levy
Patent Rights and the Xxxxx Patent Rights, and has all rights to xxx for past
damages. Bard further represents and warrants that it is not in breach of its
agreement with DuPont. Bard agrees that it will remain in compliance with its
DuPont agreement for the life of the last to expire Levy Patent Rights, and will
take all necessary steps to keep that agreement in force.
Each party hereto also represents and warrants that no
assignment, sale or agreement or encumbrance has been, or will be made or
entered into which would conflict with the rights granted to the other party by
this Agreement.
The parties' respective representations and warranties set
forth herein shall survive expirations or termination of this Agreement.
22. HOLD HARMLESS
Bard shall indemnify and hold harmless ACS and its Affiliates
from and against any claims by DuPont, Xx. Xxxxx, Xx. Xxxx or a third party
deriving rights therefrom, against ACS and its Affiliates, with respect to the
Levy Patent Rights and the Xxxxx Patent Rights, and by Xx. Xxxxxxxxxx, or a
third party deriving rights therefrom.
19
against ACS or its Affiliates with respect to the Xxxxxxxxxx Patent Rights. ACS
shall indemnify and hold harmless Bard from any claims by Xx. Xxxx or Xx.
Xxxxxxxxx or a third party deriving rights therefrom, against Bard or its
Affiliates with respect to the Xxxxxxxxx-Xxxx Patent Rights in connection with
Rapid Exchange Perfusion Catheter Systems, and by Xx. Xxxxxx or a third party
deriving rights therefrom, against Bard or its Affiliates with respect to the
Samson Patent Rights.
23. TERM AND TERMINATION
a. This Agreement shall become effective as of April 4, 1998.
b. This Agreement shall continue until the expiration of the
last to expire of the patents or patent applications under which rights are
granted pursuant to this Agreement.
c. Expiration of certain patent licenses or covenants
hereunder shall not affect any obligation by Bard to pay royalties under the
affected license or covenant which may have accrued prior thereto, nor shall
such expiration affect the rights and obligations of the parties with respect to
any of the other licenses or covenants under this Agreement which shall remain
in full force and effect. All other rights and obligations of the parties,
including the obligations of confidentiality, shall survive such expiration.
24. CAPTIONS
Captions are inserted herein only as a matter of convenience
and for reference, and in no way define, limit or describe the scope of this
Agreement or the intent of any provision herein.
20
25. NO STRICT CONSTRUCTION
This Agreement has been prepared with the participation of
both parties, and shall not be strictly construed against either party.
26. COUNTERPARTS
This Agreement may be executed in counterparts, each of which
shall be deemed an original, but all of which shall constitute one and the same
instrument, and it shall not be necessary in making proof of this Agreement to
produce or account for more than one such counterpart.
27. CONSULTATION WITH COUNSEL AND RELIANCE
ACS and Bard each acknowledges that it has or has had the
opportunity to consult with counsel of its choice, and that in executing this
Agreement it has not relied upon any statement, representations or agreements or
any other person than those contained herein.
28. OTHER DOCUMENTS
Each of the parties hereto agrees to execute such additional
documents or instruments as are specifically contemplated above or as otherwise
may be reasonably required to carry out the intents and purposes of this
Agreement, including, specifically, the dismissal referenced in Paragraph 2
above.
21
29. RELATIONSHIP BETWEEN THE PARTIES
It is understood that the parties hereto are independent
contractors and engaged in the conduct of their own respective endeavors.
Neither ACS nor Bard is to be considered the agent or employee of the other for
any purpose, and neither party has the right or authority to enter into any
contract or assume any obligation for the other or give any warranty or make any
representation on behalf of the other party except where and to the extent
specifically authorized in writing to do so.
30. FORCE MAJEURE
In the event any party hereto is prevented or is otherwise
unable to perform any of its obligations under this Agreement due to fire,
flood, earthquake, war, strikes, lockouts, labor troubles, materials shortages,
failure of public utilities, injunctions, governmental actions, or other events
beyond the reasonable control of the party affected, the affect party shall give
notice promptly to the other party in writing and thereupon, the affected
party's nonperformance shall be excused and the time for performance of this
Agreement shall be extended for the period of delay or inability due to such
Force Majeure.
31. SURVIVAL OF PRIOR BARD AGREEMENTS
In the event that ACS mergers or consolidates with a third
party, or sells to a third party all or substantially all of the assets of the
Business, then to the extent that Bard has pre-existing agreement(s) with any
such third parties as of the effective date of this Agreement, relating to Bard
patents which are the subject of this Agreement, any
22
payment or royalty provisions to Bard provided for under those pre-existing
agreements for such Bard patents shall remain in full force and effect only
against such third party, and shall otherwise be unaffected by the provisions of
this Agreement. Bard represents and warrants that as of the effective date of
this Agreement the only third parties which have any rights to such Bard patents
are J&J/Cordis and Xxxxxxxxx.
IN WITNESS WHEREOF, the parties have caused this Agreement to
be executed by their duly authorized officers, effective as of the day and year
first above written.
X.X. XXXX, INC.
By: ______________________________
Attest: ___________________________ Title: ___________________________
ADVANCED CARDIOVASCULAR
SYSTEMS, INC.
By: ______________________________
Attest: ___________________________ Title: ___________________________
(xxxx xxxx stlmt agmt 3rd)
