EXHIBIT 10.51
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PURCHASE AGREEMENT
This Purchase Agreement ("Purchase Agreement") is entered into and
made effective this 30th day of December, 1998, by and between ORPHAN MEDICAL,
INC., a Minnesota corporation, whose principal place of business is 00000
Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000 (hereinafter referred to as
"ORPHAN"), and UTECH, L.L.C. a Utah limited liability company, whose principal
place of business is 0000 Xxxx 0000 Xxxxx, Xx. Xxxxxx, XX 00000 (hereinafter
referred to as "UTECH").
WITNESSETH:
WHEREAS, ORPHAN is party to a License Agreement, dated March 4, 1996
(the "License Agreement"), with Josman Laboratories, Inc., a California
corporation, with offices at that time located at 000 X. Xxxxxxx Xxxxxx, Xxxxx
0X, Xxxxxx, XX 00000 (hereinafter referred to as "JOSMAN").
WHEREAS, UTECH wishes to purchase and acquire from ORPHAN all of
ORPHAN's rights to an interest in the License Agreement; and
WHEREAS, ORPHAN wishes to sell and assign to UTECH all of ORPHAN's
right to and interest in the License Agreement.
NOW THEREFORE, in consideration of the premises, the respective
commitments of the parties set forth below, and other good and valuable
consideration, the receipt and adequacy of which are hereby acknowledged, the
parties agree as follows:
ARTICLE 1
DEFINITIONS
As used herein, the following terms shall have the meanings set
forth below:
1.1 "License Agreement" shall mean the License Agreement between
ORPHAN and JOSMAN, dated the 4th day of March 1996, a copy of which is attached
hereto as Exhibit "A."
1.2 "Purchase Agreement" shall mean this agreement, all exhibits
hereto, and any addenda subsequently added hereto.
1.3 All other capitalized terms used in this Purchase Agreement and
not otherwise defined herein shall have the meanings ascribed to them in License
Agreement.
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ARTICLE 2
ASSIGNMENT
2.1 ORPHAN hereby transfers and assigns to UTECH (a) all of ORPHAN's
rights to and interest in the License Agreement, including, without limitation,
all of ORPHAN's rights and privileges of the License Agreement relating to the
"Technology", as that term is defined in the License Agreement, and (b) all
improvements or enhancements to the Technology that ORPHAN has developed during
the term of the License Agreement and all intellectual property rights and
documentation related thereto. UTECH hereby accepts such assignment and agrees
to perform; in accordance with the provisions of the License Agreement, all of
the undertakings and commitments of ORPHAN under the License Agreement.
2.2 ORPHAN agrees that subsequent to the date of this Agreement it
will not use any Technology or any of the improvements, enhancements,
intellectual property rights or documentation assigned to UTEC pursuant to this
Agreement in connection with the development, manufacture, marketing or sale of
any products that are competitive with the Licensed Products, as that term is
defined in the License Agreement.
2.3 UTECH acknowledges that Kaigai Selyaku Co. Ltd. ("Kaigai"),
Tokyo, Japan, was granted a right of first refusal by JOSMAN to license the
Licensed Products in the Pacific Rim countries and that Kaigai has not waived or
terminated such right of first refusal rights.
ARTICLE 3
CONSIDERATION
3.1 The consideration to be paid by UTECH to ORPHAN for the
assignment of the License Agreement shall be the sum of Seven Hundred and Fifty
Thousand Dollars ($750,000.00).
3.2 All payments to ORPHAN shall be made in U.S. Dollars UTECH and
shall be paid by wire payment to ORPHAN's account immediately upon receipt by
UTECH of evidence (by facsimile transmission) of the execution of this Agreement
by both ORPHAN and UTECH.
3.3 Prior to the execution of this Agreement by ORPHAN, ORPHAN has
delivered to UTECH the following:
(a) Patent file in ORPHAN'S possession.
(b) All Technical Regulatory and Clinical data files.
(c) Other files and information that deal with the Licensed
Product.
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Immediately upon execution of this Agreement by both ORPHAN and
UTECH, ORPHAN shall deliver to Brinks, Hofer, et al, a letter directing that
firm to release to UTECH all patent files relating to the Technology.
ARTICLE 4
WARRANTIES
4.1 ORPHAN represents and warrants to UTECH that (a) it is the sole
owner of all rights bestowed on it by the License Agreement, (b) it has not
sublicensed any of the rights obtained by it under the License Agreement, (c) it
has the power and authority to assign to UTECH all rights granted to it under
the License Agreement, and (d) the execution and performance of this Purchase
Agreement by ORPHAN have been authorized by all required corporate action.
ORPHAN also represents and warrants to UTECH that it is in full compliance with
all of its obligations under the License Agreement relative to the prosecution
and/or maintenance of patents.
4.2 UTECH represents and warrants to ORPHAN that (a) it has the
power and authority to enter into this Purchase Agreement and to assume
responsibility for the performance of the obligations of ORPHAN under the
License Agreement, and (b) the execution and performance of this Purchase
Agreement by UTECH have been authorized by all required corporate action.
4.3 The provisions of this Article 4 shall continue beyond the
termination of this Purchase Agreement.
ARTICLE 5
INDEMNIFICATION
5.1 ORPHAN agrees to indemnify and hold harmless UTECH and it
Affiliates, successors and assigns, from and against any and all losses,
expenses, claims, actions, lawsuits and judgments thereon (including attorneys'
fees through appellate levels), which may arise out of any negligent action or
omission of ORPHAN, its agents or employees or the use, production, development,
patent prosecution, sale, lease or advertisement by ORPHAN, or its Affiliates,
or sublicensees, of any patent rights, product or process license under the
License Agreement prior to the closing date.
5.2 UTECH agrees to indemnify and hold harmless ORPHAN and its Affiliates,
successors and assigns, from and against any and all losses, expenses, claims,
actions, lawsuits and judgments thereon (including attorneys fees through
appellate levels), which may arise out of any acts or omissions of UTECH, its
agents or employees or the use, productions, development, patent prosection,
sale, lease or advertisement by UTECH, or its Affiliates or sublicensees, of any
patent rights, or licenses under the License Agreement from and after the
closing date.
EXHIBIT 10.51
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ARTICLE 6
OBLIGATIONS
UTECH shall not assume any obligations of ORPHAN that are incurred
during the term of the License Agreement up until the time of closing,
including, without limitation, all obligations relating to patent prosecution
fees or other costs which were incurred by ORPHAN prior to the date of this
Agreement. UTECH shall be solely responsible for the payment or satisfaction of
all obligations that arise or become due pursuant to the License Agreement from
and after the closing date.
ARTICLE 7
CLOSING
The closing of the transactions contemplated by this Purchase
Agreement shall take place immediately upon execution of this Agreement by UTECH
and ORPHAN.
ARTICLE 8
NOTICES, ETC.
Any notice, payment, report or other correspondence (hereinafter
collectively referred to as "Correspondence") required or permitted to be given
hereunder shall be mailed by Certified Mail, delivered by hand to the party to
whom such Correspondence is required or permitted to be given hereunder. If
mailed, any such notices shall be deemed to have been given when mailed as
evidenced by the postmark at a point of mailing. If delivered by hand, any such
Correspondence shall be deemed to have been given when received by the party
whom such Correspondence is given, as evidenced by writing and date receipt of
the receiving party.
All Correspondence to ORPHAN shall be addressed as follows:
President
ORPHAN MEDICAL, INC.
00000 Xxxxxxxxx Xxxxx, Xxxxx 000
Xxxxxxxxxx, XX 00000
EXHIBIT 10.51
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All Correspondence to UTECH shall be addressed as follows:
President
UTECH, L.L.C.
0000 Xxxx 0000 Xxxxx
Xx. Xxxxxx, XX 00000
Either party may change the address to which Correspondence is to be
addressed by notification as provided hereunder.
ARTICLE 9
GOVERNING LAW
This Purchase Agreement shall be governed by and interpreted in
accordance with the laws of the State of Delaware.
ARTICLE 10
CAPTIONS AND PARAGRAPHS
Caption and paragraph headings in this Purchase Agreement are solely
for convenience or reference and do not affect its interpretation.
ARTICLE 11
SEVERABILITY
Should any part or provision of this Purchase Agreement be held
unenforceable or in conflict with the applicable laws or the regulation of any
jurisdiction, the invalid, unenforceable part of the provisions shall be
replaced with the provisions which accomplishes, to the extent possible, the
original business purposes said part or provision invalid and enforceable
manner, and the remainder of this Purchase Agreement shall remain binding upon
the parties.
ARTICLE 12
AMENDMENTS
No amendment or modification under the terms of this Purchase
Agreement shall be binding on either party unless reduced in writing and signed
by an authorized officer of the party to be bound.
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ARTICLE 13
WAIVERS
No delay on any part of any party in exercising any right hereunder
will operate as a waiver of, or impair, any such right. No single or partial
exercise of any such right will preclude any other or further exercises thereof,
or the exercise of any right. No waiver of any such right will be deemed a
waiver of any other right hereunder.
ARTICLE 14
CONFIDENTIALITY
ORPHAN agrees to hold all information obtained under the License
Agreement prior and subsequent to its closing to be strictly confidential, and
ORPHAN will not disclose any of such confidential information to a third party
without the written permission of UTECH.
ARTICLE 15
COMPLETE AGREEMENT
This Purchase Agreement constitutes the entire agreement between
ORPHAN and UTECH respecting the subject matter therefore, and supersedes and
terminates all prior agreement respecting the subject matter hereof, whether
written or oral.
IN WITNESS WHEREOF, the parties hereto have caused this Purchase
Agreement to be executed by the respective duly authorized officers as of the
date set forth in the first paragraph.
ORPHAN MEDICAL, INC.
By: /s/ Xxxx Xxxxxx Bullion
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Xxxx Xxxxxx Bullion
Title: Chief Executive Officer
UTECH, L.L.C.
By: /s/ Xxxxx Xxxxxx
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Xxxxx Xxxxxx
Title: General Manager
