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EXHIBIT 10.6
EXHIBIT C
ASSIGNMENT AGREEMENT
THIS ASSIGNMENT AGREEMENT ("Agreement") is entered into as of February
24, 1995, by and among XXXXXXX PHARMACEUTICAL, INC. a Delaware corporation
("Company"), XXXXXXX CORPORATION, a Delaware corporation ("Xxxxxxx") and
INTERWEST PARTNERS V, L.P. and INTERWEST INVESTORS V (collectively, "InterWest")
as follows:
1. BACKGROUND
1.1 The Company is issuing five million (5,000,000) shares of its
Series A Preferred Stock (the "Shares") to Xxxxxxx pursuant to that certain
Series A Stock Preferred Stock Purchase Agreement of even date herewith (the
"Purchase Agreement"), to which this Agreement is attached as Exhibit C.
1.2 As consideration for the Shares, Xxxxxxx has agreed to execute and
deliver this Agreement by which it will transfer intellectual property rights,
contractual rights, related to the anti-CD20 monoclonal antibody known as the
anti-B1 antibody. These rights shall include methods for using such an antibody
in therapeutic applications and diagnostic applications which are necessary for
the enjoyment of the therapeutic applications, as more fully described below,
which rights provide the basis for a development program (the "Program") that
has previously been conducted by Xxxxxxx and which will hereafter be conducted
by the Company.
1.3 Certain of the intellectual property rights will be assigned from
Xxxxxxx to Company and other intellectual property rights will be sublicensed to
Company, it being the intent of the parties that Company shall enjoy the benefit
of all technology reasonably necessary to continue the Program.
2. TRANSFER OF RIGHTS
2.1 ASSIGNMENT. Xxxxxxx assigns, transfers and sets over unto the
Company all of Xxxxxxx'x rights, title and interest in the following listed
properties. The Company hereby assumes and covenants to perform all obligations
of Xxxxxxx in connection with such property and guarantees to hold Xxxxxxx
harmless from any claim or demand made thereunder. The Company shall have no
liability to Xxxxxxx or any other party as a result of the foregoing obligation
with respect to any breach or obligation attributable to any events occurring
prior to the date of this Agreement.
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A. Commercialization Agreement by and between Xxxxxxx Corporation and
the University of Michigan, dated November 1, 1994 (the "Michigan Agreement"), a
copy of which is acknowledge as having been previously given to the parties
hereto.
B. Orphan Drug Application [*] for the designation of (131)Iodine-
radiolabeled B1 monoclonal antibody as an orphan drug; and
C. Investigation New Drug Applications [*] conducted at the University
of Michigan, [*] conducted at Xxxx-Xxxxxx Cancer Institute and St. Bartholomews
Hospital, [*] conducted at Stanford University and Xxxx-Xxxxxx Cancer Institute;
[*] conducted at the University of Washington; and
X. Xxxxxxx'x interest in United States Patent Application Serial No.
08/121,532 to Xxxxxxxx et al. and any continuation, divisional, reexamination,
reissue or renewal applications and all U.S. patents issuing therefrom or
extension terms thereof; and
E. Research Agreement with the University of Washington for the
employment of a data manager.
F. Roundtable Research Agreement dated September 1, 1994 with the
University of Michigan for the employment of a dosimetrist.
G. Subject to any consents necessary from the individual contractor,
the individual consulting agreements with [*] and [*].
2.2 SUBLICENSES. Xxxxxxx sublicenses to the Company the following
listed technologies and rights on the same terms and conditions for which
Xxxxxxx obtained a license:
A. Therapeutic rights of B1 and diagnostic rights of B1 which
are reasonably necessary for the enjoyment and development of the therapeutic
rights of B1, which rights have provided the basis for the Program that has
previously been conducted by Xxxxxxx and which will hereafter be conducted by
the Company. Xxxxxxx grants such therapeutic rights exclusively to Company and
Xxxxxxx grants such diagnostic rights non- exclusively to Company.
1. The rights that have been derived from agreements
between Xxxxxxx Corporation and Xxxx-Xxxxxx Cancer Institute (DFCI), which
include the following Agreements, a copy of which is acknowledged as having been
previously given to the parties hereto:
* Certain confidential information contained in this document, marked by
brackets, has been omitted and filed with the Securities and Exchange
Commission pursuant to Rule 406 of the Securities Act of 1933, as amended.
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a. An Agreement dated July 23, 1981;
and
b. A Modification Agreement dated
March 1, 1983; and
c. An Agreement dated April 28, 1983;
and
d. A Modification Agreement No. 2,
dated April 1, 1987; and
e. An Agreement dated April 1, 1994.
2. Xxxxxxx'x license rights under United States
Patent Application Serial No. 07/799,087 to Schlossman et al. and any
continuation, continuation-in-part, divisional, reexamination, reissue or
renewal applications and all U.S. patents issuing therefrom or extension terms
thereof and any corresponding foreign patent applications filed or patents
issued therefrom.
3. All other discoveries, inventions and know-how
owned or controlled by Xxxxxxx that is reasonably necessary to enable the
Company to use the B1 hybridoma cell line for the purposes of developing an in
vivo therapeutic application.
B. License Agreement by and between Xxxxxxx Corporation and
the National Technical Information Service (NTIS), a primary operating unit of
the United States Department of Commerce (whose operations as they pertain to
such agreement have been subsequently transferred to the Office of Technology
transfer within the Department of Health and Human Services), with an effective
date of March 1, 1989, pertaining to U.S. Patent No. 4,831,175 (the "NTIS
Agreement"), non-exclusively for therapeutic and diagnostic applications, with
rights to sublicense only for use with B-1, a copy of which is acknowledged as
having been previously given to the parties hereto; and
C. License Agreement by and between Xxxx X. Gansow and Xxxxxx
X. Xxxxxxxxx (collectively called "Licensor") and Xxxxxxx Corporation, dated May
1, 1988 pertaining to corresponding foreign rights to U.S. Patent No. 4,831,175,
non-exclusively for therapeutic and diagnostic applications, with rights to
sublicense only for use with B-1, a copy of which is acknowledged as having been
previously given to the parties hereto.
3. WARRANTIES, REPRESENTATIONS AND DISCLAIMERS
3.1 XXXXXXX MAKES NO WARRANTY OR REPRESENTATION THAT THE B1 MATERIALS
OR METHODS USED IN MAKING OR USING SUCH MATERIALS ARE FREE FROM LIABILITY FOR
PATENT INFRINGEMENT.
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3.2 XXXXXXX MAKES NO WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR OF FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO ANY MATERIALS SUPPLIED HEREUNDER AND HEREBY
DISCLAIMS THE SAME.
3.3 XXXXXXX HAS NO KNOWLEDGE OF ANY THIRD PARTY RIGHTS IN THE PROPERTY
THAT IS BEING ASSIGNED AND SUBLICENSED HEREUNDER, INCLUDING PATENT INFRINGEMENT
AND TRADE SECRET CLAIMS OF OTHERS, WHICH HAVE NOT HERETOFORE BEEN DISCLOSED.
3.4 XXXXXXX REPRESENTS THAT IT HAS GOOD TITLE TO THE RIGHTS GRANTED
HEREIN SUBJECT ONLY TO THE RESERVATIONS CONTAINED IN THE AGREEMENTS UNDER WHICH
XXXXXXX OBTAINED TITLE.
4. ROYALTIES. Without limiting any other royalties which may be payable by the
Company as a result of any assignment or sublicense hereunder, the Company
agrees to pay to Xxxxxxx any amounts which Xxxxxxx becomes obligated to pay to
DFCI (including the amount by which Xxxxxxx'x advanced royalty balance with DFCI
is reduced) as a result of sales by the Company pursuant to the sublicense set
forth in this Agreement. With respect to the first $4,500,000 payable to
Xxxxxxx pursuant to the foregoing sentence, Xxxxxxx shall have the election, in
lieu of receiving cash to purchase additional shares of the Company's equity
securities at the then current fair market value of such securities.
5. INJUNCTIVE RELIEF. Each party agrees that in the event of any breach of this
Agreement the other party will suffer irreparable injury such that no remedy at
law will adequately compensate the injured party. Accordingly, in addition to
any remedy or relief available at law or in equity, the parties agree that each
shall be entitled to specific performance under this Agreement, as well as such
further interim and final injunctive relief (without the necessity of posting a
bond) as may be granted by a court.
6. ABANDONMENT. In the event that the Company determines to discontinue its
present plans to commercialize the anti-B1 antibody technology acquired pursuant
to this Agreement, the Company shall give prompt written notice to Xxxxxxx and
Xxxxxxx shall have a right of first offer to reacquire the Property Rights at
fair market value and upon such other terms and conditions as may be agreed upon
by the parties.
7. MISCELLANEOUS
7.1 GOVERNING LAW. This Agreement shall be governed in all respects by
the laws of the State of Delaware as such laws are applied to agreements between
Delaware residents entered into and performed entirely in Delaware.
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7.2 SUCCESSORS AND ASSIGNS. Except as otherwise expressly provided
herein, the provisions hereof shall inure to the benefit of, and be binding
upon, the successors, assigns, heirs, executors and administrators of the
parties hereto.
7.3 ENTIRE AGREEMENT. This Agreement constitutes the full and entire
understanding and agreement between the parties with regard to the subjects
hereof and no party shall be liable or bound to any other in any manner by an
representations, warranties, covenants and agreements except as specifically set
forth herein and therein.
7.4 SEPARABILITY. In case any provision of the Agreement shall be
invalid, illegal or unenforceable, the validity, legality and enforceability of
the remaining provisions shall not in any way be affected or impaired thereby.
7.5 AMENDMENT. This Agreement may be amended or modified only upon the
written consent of each of the parties hereto.
7.6 NOTICES. All notices required or permitted hereunder shall be in
writing and shall be deemed effectively given: (i) upon personal delivery to the
party to be notified; (ii) when sent by confirmed telex or facsimile if sent
during normal business hours of the recipient, if not, then on the next business
day; (iii) five (5) days after having been sent by registered or certified mail,
return receipt requested, postage prepaid; or (iv) one (1) day after deposit
with a nationally recognized overnight courier, specifying next day delivery,
with written verification of receipt. All communications shall be sent to the
parties at their respective addresses as set forth on the signature page hereof.
7.7 ATTORNEYS' FEES. In the event that any dispute among the parties to
this Agreement should result in litigation, the prevailing party in such dispute
shall be entitled to recover from the losing party all fees, costs and expenses
of enforcing any right of such prevailing party under or with respect to this
Agreement, including without limitation, such reasonable fees and expenses of
attorneys and accountants, which shall include, without limitation, all fees,
costs and expenses of appeals.
7.8 FURTHER ASSURANCES. The parties agree (i) to furnish upon request
to each other such further information, (ii) to execute and deliver to each
other such other documents, and (iii) to do such other acts and things as may be
required to carry out the purposes of this Agreement, including any further acts
which may be required in order for the Company to enjoy the full and exclusive
benefit of any Food and Drug Administration filings made by Xxxxxxx in
connection with the Property Rights.
7.9 TITLES AND SUBTITLES. The titles of the sections and subsections of
the Agreement are for convenience of reference only and are not to be considered
in construing this Agreement.
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7.10 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be an original, but all of which together
shall constitute one instrument.
IN WITNESS WHEREOF, the parties have executed the Agreement as of the
date set forth in the first paragraph hereof.
XXXXXXX PHARMACEUTICAL, INC. XXXXXXX CORPORATION
0000 Xxxx Xxxx Xxxx Xxxxxxx Technology Center
Xxxxxxxx 0, Xxxxx 000 Xxxxxxxx 0, Xxxxx 000
Xxxxx Park, CA 94025 Xxxxx Xxxx, XX 00000
By: /s/ Xxxxxx Xxxxxxx By: /s/ Xxxxxx X. Xxxxxxx, Xx.
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Chief Executive Officer Xxxxxx X. Xxxxxxx, Xx.
President
INTERWEST PARTNERS V, L.P. INTERWEST PARTNERS V
0000 Xxxx Xxxx Xxxx 0000 Xxxx Xxxx Xxxx
Xxxxxxxx 0, Xxxxx 000 Building 3, Suite 255
Menlo Park, CA 94025 Xxxxx Xxxx, XX 00000
By: InterWest Management
Partners V, L.P.,
its general partner
By: /s/ Xxxxxx Momsen By: /s/ Xxxxxx Momsen
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General Partner General Partner
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