EXHIBIT 10.6
CHIRON SUBLICENSE AGREEMENT
SUBLICENSE AGREEMENT ("Agreement") dated as of December 17, 1997 (the
"Effective Date"), is entered into by and between Xxxxxx Healthcare Corporation,
a Delaware corporation having a place of business at 0000 Xxxx Xxxx Xxxx,
Xxxxxxxxx, Xxxxxxxx 00000 ("Baxter"), and BIT Acquisition Corporation, a
Delaware corporation having its principal place of business at 000 Xxxxxxxxxxx
Xxxx, Xxxxx 000, Xxxxxx Xxxxx II, Wilmington, Delaware 19808 ("BIT").
RECITALS
X. Xxxxxx has entered into that certain non-exclusive License Agreement
with Cetus Oncology Corporation d/b/a Chiron Therapeutics ("Chiron"), dated
____________, 1995 (the "Chiron License"), annexed as Exhibit A hereto;
X. Xxxxxx and VIMRx Pharmaceuticals Inc. ("VIMRx"), have agreed to enter
into a strategic alliance in the ex vivo cell therapies business and have formed
BIT for that purpose pursuant to that certain Asset Purchase Agreement dated as
of October 10, 1997, by and between Baxter and VIMRx (the "Asset Purchase
Agreement"), and have agreed that Baxter will xxxxx BIT the exclusive (subject
to the limitations set forth herein) sublicense to the Licensed Technology and
contemporaneously enter into the Manufacturing, Supply and Distribution
Agreements (as those capitalized terms are hereinafter defined).
X. Xxxxxx is willing to grant to BIT an exclusive sublicense of all of its
rights under the Chiron License subject to Xxxxxx'x retention of the Baxter
Retained License Rights and otherwise subject to the terms and conditions
contained in the Chiron License and those set forth herein.
AGREEMENT
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NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, Baxter and BIT hereby agree as follows:
1. DEFINITIONS
1.1 Terms Defined in the Chiron License. Capitalized terms not otherwise
defined herein shall have the meanings given them in the Chiron License.
1.2 As used herein, the following terms shall have the specified meanings:
(a) "Affiliate" of a party shall mean any entity (i) which directly or
indirectly through one or more intermediaries Controls, is Controlled by or is
under common Control with, the party or (ii) fifty percent (50%) or more of the
voting capital stock (or in the case of an entity which is not a corporation,
fifty percent (50%) or more of the equity interest) of which is beneficially
owned or held by a party or any of such party's Subsidiaries. The term
"Control" means the possession, directly or indirectly, of the power to direct
or cause the direction of the management and policies of an entity (other than a
natural person), whether through the ownership of voting capital stock, by
contract or otherwise.
(b) "Baxter Retained License Rights" means (i) the non-exclusive worldwide
right and license under the Licensed Patents as such patents relate to the
Licensed Antibodies, without the right to sublicense, to make, have made, use,
import and sell Licensed Products for use with the MaxSep and/or Isolex systems
for the selection of cells with one or more of the CD34, B Cell, or breast
cancer antibodies for the treatment, mitigation, prophylaxis or selection of/for
cancer, including the research market; and (ii) the non-exclusive worldwide
right and license, without the right to sublicense, to make, have made, use,
import and sell Licensed Products under the Chiron License for the treatment,
mitigation, prophylaxis or selection of/for cancer requiring the selection or
use of CD34+ cells, including sales into the research market. All such above
listed rights shall specifically exclude rights pertaining to the genetic
manipulation of such cells.
(c) "Manufacturing, Supply and Distribution Agreements" means, individually
and collectively, the Antibodies Manufacturing & Storage Agreement, the Hardware
Manufacturing Agreement, the Hardware & Disposables Supply Agreement and the
Marketing, Sales & Distribution Agreement, each by and between Baxter and BIT
and each of even date herewith.
(d) "Subsidiary" means, as to any party, any corporation of which more than
50% of the outstanding capital stock having ordinary voting power to elect a
majority of the board of directors of such corporation (irrespective of whether
or not at the time stock of any other class or classes of such corporation shall
have or might have voting power by reason of the happening of any contingency)
is at the time directly or indirectly owned by the party, by one or more of its
subsidiaries, or by the party and one or more of its subsidiaries.
2. THE CHIRON LICENSE
2.1 BIT agrees that this Agreement is subject to the terms and conditions
of the Chiron License, all the terms of which are hereby incorporated by
reference into this Agreement. BIT understands the obligations imposed by the
Chiron License and expressly agrees to be bound by same. The parties agree that
this Agreement shall be interpreted in a manner so as to be consistent with the
Chiron License.
2.2 BIT agrees to pay, perform, discharge or otherwise satisfy, or cause
to be paid, performed, discharged or otherwise satisfied Xxxxxx'x obligations
under the Chiron License arising on or after the date hereof, including but not
limited to Xxxxxx'x obligations to make payments due
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and owing to Chiron pursuant to Article 3 of the Chiron License with respect to
any Licensed Products for which an approval is obtained by BIT or sold by BIT as
well as to fulfill any other payment or reporting obligation under the Chiron
License by transmitting any and all such payments and reports directly to
Chiron. The foregoing notwithstanding, BIT shall have no obligation or liability
under this Agreement:
(a) arising out of or related to or constituting any act, omission,
obligation or liability of Baxter under the Chiron License arising
prior to the date hereof;
(b) arising out of or related to any exercise by Baxter of the Baxter
Retained License Rights;
(c) arising out of or related to any sales of Licensed Products by
Baxter in violation of the exclusivity provisions hereof;
(d) arising out of or related to any breach or alleged breach by
Baxter of the confidentiality provisions of the Chiron License
(except to the extent such breach or alleged breach was caused by
BIT);
(e) arising out of or related to any breach or alleged breach by
Baxter of any obligation under the Chiron License to return any
material in Xxxxxx'x actual possession (and not possessed by BIT
or provided to BIT by Baxter) at the time such obligation arises;
(f) arising out of or related to the refusal of Chiron to accept any
payment or performance by BIT in full compliance with the
provisions of the Chiron License except for the fact that such
payment or performance is tendered by BIT; provided that BIT
promptly tenders such conforming payment or performance to Baxter
so that it is not alleged by Chiron that Baxter is in breach of
the Chiron License;
(g) arising out of or related to any breach by Baxter of its
obligations under this Agreement, the Asset Purchase Agreement, or
any one or more of the Manufacturing, Supply and Distribution
Agreements;
(h) arising out of or related to any failure by Baxter to maintain the
records and provide the reports required under the Chiron License,
except, and to the extent that, BIT shall fail to satisfy its
reciprocal obligation to provide to Baxter records and/or reports
of its sales and other activities hereunder.
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3. LICENSE GRANT BY BAXTER TO BIT
3.1 Subject to the terms and conditions of this Agreement, Baxter hereby
grants to BIT and BIT hereby accepts, the exclusive, with the exception of the
Baxter Retained License Rights, worldwide sublicense to all of Xxxxxx'x rights
and remedies and the benefits of all covenants of Chiron under the Chiron
License. BIT shall have the right to sublicense its rights, provided BIT fully
complies with the requirements for sublicenses set forth in the Chiron License.
3.2 The sublicense granted hereunder and Xxxxxx'x Retained License Rights
are subject in all events, to the terms and provisions of that certain
Confidentiality and Non-Competition Agreement between Baxter and BIT of even
date herewith (the "Non-Compete Agreement").
3.3 Notwithstanding Section 3.1 above, BIT will store the antibodies to be
transferred to BIT at Xxxxxx'x facilities, and Baxter will keep such stored
antibodies at Xxxxxx'x facilities until otherwise notified by BIT, in accordance
with the terms and provisions of the Antibodies Manufacturing and Storage
Agreement of even date herewith.
4. NOTIFICATION OF BIT PAYMENTS AND REPORTS
BIT shall notify Baxter of any payment, royalty payment, FDA marketing
approval and First Commercial Sale in each country where such sale is made and
shall provide Baxter with copies of any payment or report transmitted to Chiron
concurrent with the transmittal of same to Chiron.
5. XXXXXX'X RIGHTS TO AVOID TERMINATION OF THE CHIRON LICENSE; TERMINATION;
NON-MODIFICATION
5.1 BIT shall provide Baxter with written notice within three (3) business
days of the occurrence of any of the following:
(a) Failure to meet its royalty payment obligations under the Chiron
License;
(b) BIT's material breach of any other obligation under the Chiron
License;
(c) Receipt of any notification or other communication relating or
otherwise referring to BIT's alleged breach of its responsibilities
under the Chiron License or threatening termination of the Chiron
License.
5.2. After receipt of notice under Section 5.1 above, or, in the event that
Baxter, in good faith, after consultation with BIT, reasonably believes that the
Chiron License will be terminated absent action by Xxxxxx, Xxxxxx may, at its
option, take such actions it considers to be reasonably necessary in order to
avoid such termination. To the extent Baxter advances payments on BIT's behalf,
such payment shall be considered a loan to BIT. Interest on the amount advanced
shall accrue and be payable from the date advance at a rate of [Confidential
Information Omitted] per month (or the highest rate allowed by law, if lower)
compounded annually, until fully paid (including full payment of such interest).
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5.3. Final Notice to Cure. In the event Baxter exercises its rights
under Section 5.2 above, Baxter shall be entitled to terminate the Agreement,
provided, Baxter serves BIT with thirty (30) days prior notice of its intention
to terminate, and gives BIT the opportunity to cure the breach which
necessitated Xxxxxx'x action under Section 5.2 above, including the payment of
any fees, plus interest, due and owing to Baxter, and/or a reimbursement of
Xxxxxx'x costs and expenses incurred by Baxter in exercising its rights under
Section 5.2 above. If, due to BIT's continued default, Baxter exercises its
rights under Section 5.2 above on more than two (2) occasions within the
previous twelve (12) months, Baxter shall be entitled to terminate the Agreement
without providing BIT with any final notice to cure.
5.4 Early Termination. In addition to the termination provisions of the
Chiron License, a non-breaching party may terminate this Agreement if any of the
following events (each is herein referred to as a "Material Breach") occurs:
(a) Baxter exercises its rights under Section 5.2 hereof on more than
two (2) occasions within a twelve (12) month period and Baxter
elects to terminate this Agreement as provided in Section 5.3
hereof;
(b) a final, non-appealable decision is rendered by an arbitrator or
a court of competent jurisdiction holding that BIT has materially
breached its obligations under Section 4 of the Non-Compete
Agreement after having been given at least 180 days notice of
such breach by Baxter.
5.5 Termination for BIT Bankruptcy: This Agreement and the license granted
hereunder shall automatically terminate, without further action of any kind by
Baxter, upon the bankruptcy, insolvency, assignment for the benefit of creditors
or other act of insolvency by, of or against BIT.
5.6 Assignment Upon Termination of Marketing, Sales & Distribution
Agreement: Except as a result of a breach or an alleged breach by BIT, upon
expiration or earlier termination of the Marketing, Sales & Distribution
Agreement, and the parties have not renewed or extended such agreement or
entered into a new agreement which substantially embodies the obligations
of such agreement, Baxter shall assign all of its rights under this
Agreement and the Chiron License to BIT.
5.7 BIT Termination. This Agreement and the license granted hereunder may
be terminated by BIT with sixty (60) days written notice to Baxter and after
payment in full by BIT of all outstanding royalties or any other payments due
and owing up to the date of termination. Upon any such termination pursuant to
this Section 5.7, all rights granted hereunder to BIT shall revert back to
Baxter without further action of any kind by Baxter or BIT.
5.8 Non-Modification. Except as expressly permitted herein, neither party
shall take any action to amend, extend, terminate or otherwise modify the terms
and conditions of, or the rights and obligations of the parties to, the Chiron
License without the prior written consent of
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the other party. In furtherance of the foregoing, in the event Baxter shall at
any time exercise any of the Baxter Retained License Rights, Baxter shall comply
with all terms and conditions of, and shall pay, perform, discharge or otherwise
satisfy its obligations under, the Chiron License with respect to, and to the
extent of, any exercise of such rights.
6. INDEMNIFICATION
6.1 Indemnification by BIT. BIT shall defend, indemnify and hold Baxter
and its Affiliates harmless from and against any and all claims, suits and
expenses, including reasonable attorney expenses, arising out of or relating to
(i) BIT's breach of this Agreement; (ii) BIT's breach of the Chiron License; and
(iii) for death, personal injury, illness or property damage arising out of the
manufacture, use or sale by BIT of Licensed Products or the use of any
Technology, or out of the manufacture, use, sale or other disposition of any
products under the terms of this Agreement.
6.2 Indemnification by Xxxxxx. Xxxxxx shall defend, indemnify and hold
BIT and its Affiliates harmless from and against any and all claims, suits and
expenses, including reasonable attorney expenses, arising out of or relating to
(i) Xxxxxx'x breach of this Agreement; (ii) Xxxxxx'x breach of the Chiron
License; and (iii) any manufacture, distribution or sale of products by Baxter
under the terms of this Agreement.
7. DISPUTE RESOLUTION
7.1 Provisional Remedies: The procedures specified in this Section 7 shall
be the sole and exclusive procedures for the resolution of disputes between the
parties arising out of or relating to this Agreement; provided, however, that a
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party, without prejudice to these procedures, may seek a preliminary injunction
or other provisional relief if, in its sole judgment, such action is deemed
necessary to avoid irreparable damage or to preserve the status quo. During such
action, the parties will continue to participate in good faith in the procedures
specified in this Section 7.
7.2 Negotiations Between Executives: The parties will attempt in good
faith to resolve promptly any claim or controversy arising out of or relating to
the execution, interpretation or performance of this Agreement (including the
validity, scope and enforceability of the provisions contained in this Section
7), by negotiations under the procedures set forth in Section 6 of the Hardware
Manufacturing Agreement concerning referral of disputes to the Corporate
Committee (as defined therein).
7.3 Arbitration: In the event that any dispute arising out of or relating
to this Agreement or its breach, termination or validity has not been resolved
after good faith negotiation pursuant to the procedures of Section 7.2, such
dispute shall, upon written notice by either party to the other, be finally
settled by arbitration administered by the Center for Public Resources in
accordance with the provisions of its Commercial Arbitration Rules and the
United States Federal Arbitration Act, as modified below:
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A. The arbitration shall be heard by a panel of three (3) independent
and impartial arbitrators all of whom shall be selected from a list of
neutral arbitrators supplied by the Center for Public Resources. From
such list, each of Baxter and BIT shall select one (1) arbitrator, and
the arbitrators so selected shall select a third. The panel shall
designate one (1) among them to serve as chair.
B. The arbitration proceedings shall be conducted in Los Angeles
County or Orange County in the State of California.
C. Any party may seek interim or provisional remedies under the
Federal Rules of Civil Procedure and the United States Federal
Arbitration Act as necessary to protect the rights or property of the
party pending the decision of the arbitrators.
D. The parties shall allow and participate in limited discovery for
the production of documents and taking of depositions, which shall be
conducted in accordance with the Commercial Arbitration Rules of the
Center for Public Resources. All discovery shall be completed within
sixty (60) days following the filing of the answer or other responsive
pleading. Unresolved discovery disputes shall be brought to the
attention of the chair of the arbitration panel and may be disposed of
by the chair.
E. Each party shall have up to fifty (50) hours to present evidence
and argument in a hearing before the panel of arbitrators, provided
that the chair of the panel of arbitrators may establish such longer
times for presentations as the chair deems appropriate.
F. The arbitration award shall be rendered by the arbitrators within
fifteen (15) business days after conclusion of the hearing of the
matter, shall be in writing and shall specify the factual and legal
basis for the award. Judgment thereon may be entered in any court
having jurisdiction thereof.
G. The arbitrators are empowered to order money damages in
compensation for a party's actual damages, specific performance or
other appropriate relief to cure a breach; provided, however, that the
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arbitrators will have no authority to award special, punitive or
exemplary damages, or other money damages that are not measured by the
prevailing party's actual damages.
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7.4 Performance During Dispute: Each party is required to continue to
perform its obligations under this Agreement pending final resolution of any
dispute arising out of or relating to this Agreement, unless to do so would be
commercially impossible or impractical under the circumstances.
8. GENERAL
8.1 Provisions Contrary to Law / Severability. In performing this
Agreement, the parties hereto shall comply with all applicable laws. Nothing in
this Agreement shall be construed so as to require the violation of any law, and
wherever there is any conflict between any provision of this Agreement and any
applicable law, the applicable law shall prevail. In the event any provision of
this Agreement conflicts with any applicable law or is otherwise determined by
an arbitrator or court having valid jurisdiction thereof to be unenforceable,
the affected provision of this Agreement shall be deemed to have been modified
to the extent necessary so as not to conflict with the applicable law or to be
unenforceable or, if such modification is not possible, such provision shall be
deemed to have been deleted here from, without affecting, impairing or
invalidating the remaining provisions of this Agreement.
8.2 Foreign Government Approval or Registration. If this Agreement or any
associated transaction is required by the law of any nation to be either
approved or registered with any governmental or other regulatory agency, BIT
shall assume all legal obligations to do so.
8.3 Export Control. Each party shall observe all applicable United States
and foreign laws with respect to the transfer of Licensed Products and related
technical data to foreign nations, countries or other sovereign states.
8.4 Notices. All notices required under this Agreement shall be in
writing, and all such notices and other written communications (including
product orders and invoices) shall be delivered either by hand, by a nationally
recognized overnight delivery service (with delivery charges prepaid), by first
class, registered or certified United States mail (postage prepaid), or by
facsimile transmission (provided that, in the case of facsimile transmission, a
confirmation copy of the notice shall be delivered by hand, by a nationally
recognized overnight delivery service (with delivery charges prepaid), or by
first class, registered or certified United States mail (postage prepaid) within
two (2) days of facsimile transmission), addressed to each party as follows:
If to Baxter, such notices shall be delivered to: President
Baxter Biotech Group
with a copy to:
General Counsel
Xxxxxx Healthcare Corporation
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If to Baxter, other written communications
shall be delivered to: President
Venture Management
Baxter Biotech Group
with a copy to:
Associate General Counsel
Xxxxxx Healthcare Corporation
If to BIT, such notices shall be delivered to:
President
BIT Acquisition Corp.
with a copy to:
Xxxxxxx Xxxxxx & Green, P.C.
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Attention:
Xxxxxx X. Xxxxxxxxxx, Esq.
If to BIT, other written communications
shall be delivered to: President
BIT Acquisition Corp.
with a copy to:
Vice President
BIT Acquisition Corp.
or such other address as any such party may designate in writing and delivered
to the other party hereto pursuant to this Section 8.4. All such notices or
other written communications shall be deemed to have been received by the
addressee if delivered: by hand or by a nationally recognized overnight delivery
service (with delivery charges prepaid) at the time of delivery; by first class,
registered or certified United States mail (postage prepaid), three (3) business
days after delivery thereof to the United States Postal Service; or by facsimile
transmission, at the time of transmission.
8.5 Force Majeure. With respect to the parties' obligations to each other
pursuant to this Agreement, neither party shall be liable for delay or failure
in the performance of any of its obligations hereunder if such delay or failure
is due to causes beyond its reasonable control. Such causes shall include,
without limitation, acts of God, fires, earthquakes, strikes and labor disputes,
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acts of war, civil unrest or intervention of any governmental authority, but any
such delay or failure shall be remedied by such party as soon as is reasonably
possible.
8.6 Limitation of Liability. IN NO EVENT, WHETHER AS A RESULT OF BREACH OF
CONTRACT, TORT LIABILITY (INCLUDING NEGLIGENCE), OR OTHERWISE, SHALL EITHER
PARTY BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL, PUNITIVE, EXEMPLARY OR
LIQUIDATED DAMAGES.
8.7 Use of Names. Neither party shall use the name of the other in any
promotional materials or advertising related to Licensed Products without the
prior written consent of the other or as permitted by the Manufacturing, Supply
and Distribution Agreements.
8.8 Assignment. BIT shall not assign its rights or obligations under this
Agreement to any party during the term of any of the Manufacturing, Supply and
Distribution Agreements without the prior written consent of Baxter.
Notwithstanding the foregoing, and subject to the terms of the Stockholders
Agreement, BIT may assign its rights under this Agreement in the event of a
sale, merger or other business combination of BIT with or into another business,
provided that BIT obtains the advance written consent of Chiron. Baxter may
assign its rights and obligations hereunder to any party without prior notice to
or consent of BIT. Subject to the foregoing, this Agreement shall inure to the
benefit of and be binding on the parties' permitted successors and assigns.
8.9 Waivers and Modifications. The failure of any party to insist on the
performance of any obligation hereunder shall not be deemed to be a waiver of
such obligation. Waiver of any breach of any provision hereof shall not be
deemed to be a waiver of any other breach of such provision or any other
provision. No waiver, modification, release or amendment of any obligation
under or provision of this Agreement shall be valid or effective unless in
writing and signed by the party to be bound by such waiver, modification,
release or amendment.
8.10 Choice of Law and Jurisdiction. Except to the extent required under
the Chiron License this Agreement shall be governed by and construed in
accordance with the internal laws of the state of Delaware, without application
of conflict of law principles, and, subject to Section 8.9 above, each party
hereby submits to the jurisdiction and venue of any state or federal court in
the State of Delaware. To the extent allowed by the Chiron License and
permissible by law, each of the parties hereby waives, releases and agrees not
to assert, and agrees to cause its Affiliates to waive, release and not assert,
any rights such party or its Affiliates may have under any foreign law or
regulation that would be inconsistent with the terms of this Agreement as
governed by Delaware law.
8.11 Independent Parties. By virtue of this Agreement, neither party
constitutes the other as its agent (except as may otherwise be expressly
provided herein), partner, joint venture, or legal representative and neither
party has express or implied authority to bind the other in any manner
whatsoever.
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8.12 Entire Agreement. This Agreement, the Asset Purchase Agreement, the
Non-Compete Agreement and the Manufacturing Supply and Distribution Agreements,
together with the Chiron License and the Exhibits and Schedules annexed thereto,
constitute the entire agreement between the parties as to the subject matter
hereof and supersede all prior oral negotiations, representations, agreements
and understandings.
8.13 Counterparts. This Agreement may be executed in any number of
counterparts with the same effect as if all parties had signed the same
document. All such counterparts shall be deemed an original, shall be construed
together and shall constitute one and the same instrument.
8.14 Rules of Construction. In this Agreement, unless a clear contrary
intention appears:
(a) the singular number includes the plural number and vice versa;
(b) reference to any party includes such party's permitted successors and
assigns;
(c) reference to any gender includes the other gender;
(d) reference to any Section, Exhibit or Schedule means such section of
this Agreement, Exhibit to this Agreement or Schedule to this
Agreement, as the case may be, and references in any section or
definition to any clause means such clause of such section or
definition;
(e) "herein," "hereunder," "hereof," "hereto," and words of similar import
shall be deemed references to this Agreement as a whole and not to any
particular section or other provision of this Agreement;
(f) "including" (and with the correlative meaning "include") means
including without limiting the generality of any description preceding
such term;
(g) relative to the determination of any period of time, "from" means "from
and including", "to" means "to but excluding" and "through" means
"through and including";
(h) reference to any law (including statutes and ordinances) means such law
as amended, modified, codified or reenacted, in whole or in part, and
in effect from time to time, including rules and regulations
promulgated thereunder;
(i) accounting terms used herein shall have the meanings historically
attributed to them by Baxter prior to the date hereof;
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(j) the headings contained in this Agreement have been inserted for
convenience of reference only, and are not to be used in construing
this Agreement; and
(k) any rule of construction or interpretation which might otherwise
require this Agreement to be construed or interpreted against either
party shall not apply to any construction or interpretation hereof.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of the
date set forth above.
XXXXXX HEALTHCARE CORPORATION
By: ___________________________________
Name:
Title:
BIT ACQUISITION CORPORATION
By: __________________________________
Name:
Title:
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