EXHIBIT 10.3
TO
ICOS CORPORATION'S
FORM 10-Q
FOR THE QUARTER ENDED
SEPTEMBER 30, 1998
"[ * ]" = omitted, confidential material, which material has been
separately filed with the Securities and Exchange Commission pursuant to a
request for confidential treatment.
EXHIBIT 10.3
PDE5 LICENSE AGREEMENT
THIS PDE5 LICENSE AGREEMENT ("Agreement") is made this 30th day of
September, 1998, by and between ICOS CORPORATION, a Delaware corporation
("ICOS"), in favor and for the benefit of and with LILLY ICOS LLC, a Delaware
limited liability company ("Company"), pursuant to terms and conditions of that
certain Limited Liability Company Agreement, dated September 30, 1998 (the "LLC
Agreement"), by and between ICOS and Xxx Xxxxx and Company, an Indiana
corporation ("Lilly").
RECITALS
WHEREAS, ICOS, Lilly and the Company have entered into the LLC Agreement
with respect to the organization and capitalization of the Company to engage in
the research, development, manufacture, production and sale of PDE5 Products (as
defined in Article 1 below) for [ * ] use in the Field (as defined in
Article 1 below);
WHEREAS, in connection with the formation of the Company and the granting
of an interest in the Company to ICOS in accordance with the LLC Agreement, ICOS
is willing to contribute to the Company a license to use the Background
Technology (as defined in Article 1 below) in the Field upon the terms set forth
herein;
NOW, THEREFORE, in full consideration of the initial capital contribution
to the Company pursuant to the LLC Agreement, ICOS and the Company hereby agree
as follows:
ARTICLE I
DEFINITIONS
1.01 PDE5
The term PDE5 shall mean the [ * ] phosphodiesterase.
1.02 PDE5 AGENT
The term PDE5 Agent shall mean [ * ].
1.03 PDE5 PRODUCT
The term PDE5 Product shall mean [ * ].
* Confidential Treatment Requested
1.04 FIELD
The term Field shall mean [ * ].
1.05 BACKGROUND TECHNOLOGY
The term Background Technology shall mean those patents and patent
applications set forth in Appendix A and owned or controlled by ICOS as of the
date of this Agreement, including any renewal, division, continuation or
continuation in part of any such applications and any patents issuing thereon,
and any reissues, extensions substitutions, confirmations, registrations,
revalidations, revisions, supplementary protection certificates and additions of
or to any such patents (hereafter Patents) and any currently identified PDE5
Agents and any Technical Information.
1.06 FORCE MAJEURE
The term Force Majeure shall mean conditions beyond either Party's control
including, but not limited to, acts of God, governmental restrictions, wars, or
insurrections, strikes, floods, work stoppages and or lack of materials.
1.07 TECHNICAL INFORMATION
The term Technical Information shall mean [ * ].
ARTICLE II
LICENSE OF BACKGROUND TECHNOLOGY
2.01 LICENSE
(a) Subject to the terms of this Agreement, ICOS hereby grants to the
Company, [ * ] license [ * ] to use the Background Technology excluding
Technical Information, solely within the Field to make, have made, use, offer
for sale, sell and import PDE5 Products in the Field or any invention claimed in
the Patents. The foregoing license is [ * ] except for the obligations, if
any, under the Collaboration Agreement by and among Glaxo Group Limited, Glaxo
Inc. and ICOS Corporation dated October 3, 1991, as amended January 24, 1997,
and the [ * ].
(b) Subject to the terms of this Agreement, ICOS hereby grants the Company
an exclusive right and license throughout the world to utilize Technical
Information which relates to PDE5, PDE5 Agents or PDE5 Products. The foregoing
license is fully paid up and royalty free. This license is subject to the right
of ICOS to use Technical Information, as defined, for any purpose other than as
relates to PDE5, PDE5 Agents or PDE5 Products.
* Confidential Treatment Requested
2.02 RIGHT TO SUBLICENSE
ICOS also hereby grants to the Company the right to grant sublicenses
within and limited to the scope of the right and license granted to the Company
in Section 2.01. All sublicensees of the Company shall agree in writing to be
bound by the provisions of this Agreement to the same extent that the Company is
bound. The Company shall notify ICOS of the identity of each sublicensee to
whom a sublicense is granted and provide ICOS a true and correct copy of such
sublicense and any and all modifications, amendments, and revisions.
2.03 LIMITATIONS
No right or license is granted to the Company hereunder except as expressly
specified in Sections 2.01 and 2.02.
2.04 UNDERLYING AGREEMENTS
The foregoing grant and license under this Section 2 is subject to the
terms and conditions of the Underlying Agreements. The Company shall comply and
perform in accordance with the Underlying Agreements.
ARTICLE III
DISCLOSURE AND USE OF
BACKGROUND TECHNOLOGY
3.01 DISCLOSURE BY ICOS
ICOS shall promptly and fully disclose the Background Technology to the
Company and Lilly (on behalf of the Company). ICOS shall provide the Company
with reasonable quantities of currently available materials identified in item
(b) of the definition of Technical Information.
3.02 LIMITATION
Except as expressly authorized by this Agreement or by the written consent
of ICOS, during the term of this Agreement and thereafter, the Company shall
keep confidential and shall not deliver, transmit or provide to any person other
than a sublicensee under a license granted in accordance with Section 2.02, and
shall not use, any Background Technology or authorize, cause or aid anyone else
to do so. Provided that nothing in this Agreement shall prevent the Company from
using or disclosing information
(a) which Company can demonstrate by written records was previously known
to Company;
(b) which is now public knowledge, or becomes public knowledge in the
future, other than through acts or omissions of Company in violation of the
terms of this Agreement; or
(c) which is lawfully obtained by Company from sources independent of
ICOS or Lilly who have a lawful right to disclose such INFORMATION.
Company may disclose any Background Technology to the extent such
disclosure is necessary for Company to comply with applicable laws or
regulations, in litigation to respond to discovery requests in which case
Company will attempt to obtain appropriate protective orders for such
disclosure, or to make, use or sell under the license granted herein by ICOS or
to sublicense others to do so; provided, that Company shall give ICOS reasonable
advance notice of such proposed disclosure, shall use its best efforts to secure
confidential treatment of Background Technology to be disclosed and shall advise
ICOS in writing of the manner in which that was done.
3.03 SURVIVAL
The obligation of confidentiality imposed by the foregoing Section 3.02
shall survive termination of this Agreement for any reason whatsoever.
ARTICLE IV
PATENT, COPYRIGHT AND
TRADE SECRET ENFORCEMENT
4.01 ENFORCEMENT
The Company shall have the right to bring, defend and maintain, and ICOS
shall have the right, but not the obligation, unless as an indispensable party,
to join in, any suit or action involving infringement of any patents or
copyrights, misappropriation of any trade secrets or interference with any other
intellectual property right included in the Background Technology licensed to
the Company in the Field pursuant to this Agreement. Any settlement of such
action and/or suit shall only be entered into by Company with the prior written
consent of ICOS. Any amount recovered in such action or suit, whether by
judgment or settlement, shall [ * ].
The Company and ICOS will cooperate to the extent necessary and provide
reasonable assistance in support of the defense of any suit or action involving
infringement of any patents, trademarks or copyrights, misappropriation or theft
of any trade secrets or interference with any other intellectual property right
included in Background Technology licensed to the Company pursuant to this
Agreement.
* Confidential Treatment Requested
In the event the Company fails or declines to take action to enforce any
such patent, copyright, trade secret or other intellectual property right
[ * ] following receipt of notice and evidence of such infringement,
misappropriation or interference, [ * ].
4.02 NOTICE OF INFRINGEMENTS
Either Party hereto shall provide the other with reasonable notice of the
evidence and existence of third parties, who come to the attention of such
Party, who may be involved in activities which infringe or potentially infringe,
misappropriate or potentially misappropriate or interfere with patents,
copyrights or trade secrets concerning the Background Technology licensed to the
Company in the Field pursuant to this Agreement.
4.03 DEFENSE OF INFRINGEMENT CLAIMS
The Company will undertake the defense of any actions brought by a third
person alleging that the sale of a PDE5 Product or other action of the Company
infringes a patent, trademark, copyright or other intellectual property right of
such third person. [ * ].
ARTICLE V
PATENT APPLICATIONS AND
COPYRIGHT REGISTRATIONS
5.01 APPLICATIONS
Subject to the Underlying Agreements, the Company shall have the right and
obligation, at its expense, to file, prosecute (including interference actions),
maintain, and defend, the patent applications or patents and copyright
registrations or copyrights, if any, covering the Background Technology for PDE5
Products.
If the Company declines to file, prosecute or maintain any patent
application or patent covering the Background Technology, [ * ].
ARTICLE VI
REPRESENTATION; DISCLAIMER
6.01
ICOS hereby expressly warrants and represents that it possesses the legal
rights to license Background Technology (except technology that is not the
subject of Patents) free of any liens or encumbrances except those set forth in
the Underlying Agreements.
* Confidential Treatment Requested
6.02 DISCLAIMER OF WARRANTIES
Except as provided in Section 6.01, ICOS EXPRESSLY DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, PATENTABILITY AND
NONINFRINGEMENT WITH RESPECT TO THE BACKGROUND TECHNOLOGY LICENSED HEREUNDER TO
COMPANY BY ICOS.
ARTICLE VII
TERM AND TERMINATION
7.01 TERM
This Agreement (including the license and rights granted under Sections
2.01 and 2.02) shall come into effect as of the date hereof and shall remain in
full force and effect until termination pursuant to Section 7.02.
7.02 Default
In the event that the Company (the "Defaulting Party") shall default in a
material obligation hereunder and fail to remedy such default within sixty (60)
days after such default shall have been called to its attention by a notice in
writing from ICOS, then ICOS, at its option, may terminate its obligations to,
and the rights of, the Defaulting Party under the license to the Background
Technology granted herein upon ten (10) days' written notice to the Defaulting
Party, which termination shall be effective as of the occurrence of the event
giving rise to the option to terminate.
7.03 CONTINUING OBLIGATIONS
Notwithstanding the termination of a party's obligations to or the rights
of the Defaulting Party under this Agreement in accordance with the provisions
of Section 7.02, the provisions of Section 3.02, this Section 7.03 and 9.10
hereof shall survive such termination and continue in full force and effect for
an indefinite term, except to the extent the confidential technology or
information would not be deemed confidential pursuant to the Development
Agreement.
ARTICLE VIII
NOTICE
8.01 NOTICES
All notices, requests, demands and other communications required or
permitted to be given under this Agreement shall be in writing and shall be
mailed to the Party to whom notice is to be given, by telex or facsimile, and
confirmed by first class mail, registered or
certified, return receipt requested, postage prepaid, and properly addressed as
follows (in which case such notice shall be deemed to have been duly given on
the third (3rd) day following the date of such sending):
"ICOS" ICOS Corporation
00000 - 00xx Xxxxxx X.X.
Bothell, WA 98021
U.S.A.
Attn: Xxxxxx X. Xxxxx, Esq.
Legal Department
With a copy to: Xxxxxxx Coie
0000 Xxxxx Xxxxxx, 00xx Xxxxx
Xxxxxxx, XX 00000-0000
U.S.A.
Attn: Xxxxx X. Xxxxxxxxx, Esq.
"Company" ICOS Corporation, Member
00000 00xx Xxxxxx X.X.
Bothell, WA 98021
Attn: Xxxxxx X. Xxxxx, Esq.
Legal Department
With a copy to: Xxx Xxxxx and Company, Member
Lilly Corporate Center
Indianapolis, IN 46285
Attn: Xxxxxxx X. Xxxx
Senior Vice President and General Counsel
Any Party by giving notice to the others in the manner provided above may change
such Party's address for purposes of this Paragraph 8.01.
ARTICLE IX
MISCELLANEOUS
9.01 ENTIRE AGREEMENT
This Agreement, together with any other written agreements between the
Parties hereto referred to in the LLC Agreement, sets forth the entire agreement
of the Parties with respect to the subject matter hereof and may not be modified
except by a writing signed by authorized representatives of the Parties hereto.
9.02 HEADINGS
Article and Section headings and numbers in this Agreement are included for
convenience of reference only and shall not constitute a part of this Agreement
for any other purpose.
9.03 EXECUTION IN COUNTERPARTS
This Agreement may be executed in any number of counterparts and by
different Parties hereto in separate counterparts, each of which when so
executed and delivered shall be deemed to be an original and all of which
counterparts of this Agreement taken together shall constitute one instrument.
9.04 FORCE MAJEURE
It is agreed that each of the Parties hereto is excused from performing
such acts as are required hereunder as may be prevented by or whose purpose is
frustrated by Force Majeure. The Party so affected shall give notice to the
other Party in writing promptly and thereupon shall be excused from such of its
obligations hereunder as it is unable to perform on account of the Force Majeure
throughout the duration thereof plus a period of thirty (30) days.
9.05 APPLICABLE LAW
This Agreement shall be governed by and construed in accordance with the
laws of the State of Delaware without regard to the choice of law provisions of
the State of Delaware or of any other jurisdiction.
9.06 ASSIGNMENT ON WRITTEN CONSENT
This Agreement may not be assigned in whole or in part by ICOS or the
Company, except with the prior written consent of the other party; provided,
however, that after termination of the LLC Agreement for any reason, this
Agreement may be assigned in whole or in part by the Company.
To the extent the foregoing provision in Section 9.06 is unenforceable in
the event of bankruptcy or insolvency of ICOS, no assignment of this Agreement
by ICOS shall be permitted unless the assignee can demonstrate to the Company
the assignee's ability to perform all ICOS's obligations under this Agreement,
including, without limitation, the financial and technical ability to (a)
enforce, defend and maintain patents, copyrights and trade secrets and provide
notices in accordance with Article IV and (b) prosecute and maintain in force
patent applications, and copyright registration in accordance with Article V.
9.07 SEVERABILITY
In the event any one or more of the provisions contained in this Agreement
shall be invalid, illegal or unenforceable in any respect, the validity,
legality or enforceability of the
remaining provisions contained herein shall not in any way be affected or
impaired thereby. In such event, such invalid provision or provisions shall be
validly reformed to as nearly approximate the intent of the parties as possible
and if unreformable, shall be severed and deleted from this Agreement.
9.08 NO WAIVER
No failure or delay on the part of either Party in exercising any right,
power or remedy hereunder shall operate as a waiver thereof; nor shall any
single or partial exercise of any such right, power or remedy preclude any other
or further exercise thereof or the exercise of any other right, power or remedy
hereunder or the remedies provided by law.
9.09 TRADEMARKS AND TRADENAMES
ICOS, by this Agreement, grants no rights to the Company in any trademarks
or tradenames of ICOS or of any of its respective subsidiaries or affiliated
companies. Any such rights to be granted shall be documented in a separate
written agreement.
9.10 INDEMNITY
The Company hereby (a) releases ICOS from any obligation to defend,
indemnify or save the Company and its agents and employees harmless from and (b)
agrees to defend, indemnify and save ICOS harmless from any and all costs,
expenses (including attorneys' fees), liabilities, damages and claims for any
injury or death to persons or damage to or destruction of property, or other
loss ("Losses"), arising out of or in connection with any product made, used,
offered for sale, sold, or imported by the Company or furnished pursuant to any
provision hereunder except that Company shall have no obligation to indemnify or
defend ICOS for or against Losses to the extent arising out of the negligence or
willful misconduct of ICOS.
9.11 OTHER AGREEMENTS
Any other provision of this Agreement notwithstanding, nothing in this
Agreement shall obligate ICOS to disclose to the Company any information or to
make available to the Company any materials in violation of an obligation of
secrecy or a limitation of use imposed by a third party from whom such
information or materials shall have been received.
9.12 ATTORNEYS' FEES AND COSTS
In the event of any action at law or in equity between the Parties hereto
to enforce any of the provisions hereof, the unsuccessful Party or Parties to
such litigation shall pay to the successful Party or Parties all costs and
expenses, including actual attorneys' fees, incurred therein by such successful
Party or Parties; and if such successful Party or Parties shall recover judgment
in any such action or proceeding, such costs, expenses and attorneys' fees may
be included in and as part of such judgment. The successful Party shall be the
Party
who is entitled to recover its costs of suit, whether or not the suit proceeds
to final judgment. A Party not entitled to recover its costs shall not recover
attorneys' fees.
9.13 REMEDIES
No right, power or remedy herein conferred upon or reserved to any Party is
intended to be exclusive of any other right, power or remedy or remedies, and
each and every right, power and remedy of any Party pursuant to this Agreement
or now or hereafter existing at law or in equity or by statute or otherwise
shall to the extent permitted by law be cumulative and concurrent, and shall be
in addition to every other right, power or remedy pursuant to this Agreement or
now or hereafter existing at law or in equity or by statute or otherwise, and
the exercise or beginning of the exercise by any Party of any one or more of
such rights, powers or remedies shall not preclude the simultaneous or later
exercise by any Party of any or all such other rights, powers or remedies.
9.14 BINDING EFFECT
This Agreement shall be binding upon and inure to the benefit of the
Parties hereto, their successors and allowable assigns.
9.15 SCHEDULE
Schedule A attached hereto and referred to herein is hereby incorporated
herein as though fully set forth.
9.16 NUMBER AND GENDER
Words in the singular shall include the plural, and words in a particular
gender shall include either or both additional genders, when the context in
which such words are used indicates that such is the intent.
9.17 REPRESENTATIONS
Each of the Parties hereto acknowledges and agrees (i) that no
representation or promise not expressly contained in this Agreement has been
made by any other Party hereto or by any of its agents, employees,
representatives or attorneys; (ii) that this Agreement is not being entered into
on the basis of, or in reliance on, any promise or representation, expressed or
implied, covering the subject matter hereof, other than those which are set
forth expressly in this Agreement; and (iii) that each has had the opportunity
to be represented by counsel of its own choice in this matter, including the
negotiations which preceded the execution of this Agreement.
9.18 AGREEMENT TO PERFORM NECESSARY ACTS
Each Party agrees to perform any further acts and execute and deliver any
and all further documents and/or instruments which may be reasonably necessary
to carry out the provisions of this Agreement and to carry out the business
purposes of the Company.
9.19 RIGHTS IN THE EVENT OF BANKRUPTCY
All rights in the Background Technology granted under this Agreement to the
Company by ICOS are, and shall otherwise be deemed to be, for purposes of
Section 365(n) of the U.S. Bankruptcy Code, a license of rights to "intellectual
property" as defined in Section 101 of the U.S. Bankruptcy Code. The Company,
as licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the U.S. Bankruptcy Code. In the
event of the commencement of a bankruptcy proceeding by or against ICOS under
the U.S. Bankruptcy Code, the Company shall be entitled to complete access to
(or a complete duplicate of, as appropriate) any Background Technology.
IN WITNESS WHEREOF, ICOS and the Company have caused this Agreement to be
executed by their duly authorized representatives in the manner legally binding
on them as of the date first above written.
ICOS CORPORATION
By /s/ Xxxxxx X. Xxxxxxxx
--------------------------------------
Xxxxxx X. Xxxxxxxx
Xxxxxxxx of the Board, President and
Chief Executive Officer
LILLY ICOS LLC
By /s/ Xxxxxx Xxxxxx ,
-----------------------------------------
On behalf of Xxx Xxxxx and Company, Member
By /s/ Xxxxxx X. Xxxxxxxx
-----------------------------------------
On behalf of ICOS Corporation, Member
SCHEDULE A
BACKGROUND TECHNOLOGY
[ * ]
* Confidential Treatment Requested
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