[*] indicates that a confidential portion of the text of this agreement has been
omitted and filed separately with the Securities and Exchange Commission.
SETTLEMENT AGREEMENT
This Settlement Agreement ("Agreement"), effective as of the 28th day of
July, 1992, is made and entered into by and among Centocor, Inc., a Pennsylvania
corporation having offices at 000 Xxxxx Xxxxxx Xxxxxxx, Xxxxxxx, Xxxxxxxxxxxx
00000 ("Centocor"); Pfizer Inc, a Delaware corporation having offices at 000
Xxxx 00xx Xxxxxx, Xxx Xxxx, Xxx Xxxx 00000 ("Pfizer"); The Regents of the
University of California, a California corporation having offices at 000
Xxxxxxxx Xxxxx, 00xx Xxxxx, Xxxxxxx, Xxxxxxxxxx 00000 ("University"); Velos
Group, a Maryland partnership having a business address of 0000 Xxxxxxxxxx Xxxx,
Xxxxxxxx, Xxxxxxxx 00000 ("Velos"); and Xoma Corporation, a Delaware corporation
having offices at 0000 Xxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 ("Xoma").
RECITALS
WHEREAS, Centocor has developed a product for treating bacterial infections
comprised of the HA-1A monoclonal antibody ("HA-1A Product") which (i) is the
subject of a product license application pending before the United States Food
and Drug Administration ("FDA"), and (ii) has been approved for sale by
governmental authorities in certain European countries; and
1
WHEREAS, Xoma has developed a product for treating bacterial infections
comprised of the E5 monoclonal antibody ("E5 Product") which is the subject of
product license applications pending before (i) the FDA and (ii) the Committee
for Proprietary Medicinal Products ("CPMP") and other governmental authorities;
and
WHEREAS, Centocor is the owner by assignment of (i) U.S. Patent Application
Serial No. 542,111 filed October 14, 1983, and all divisionals, continuations,
continuations-in-part, reissues, reexaminations and extensions thereof; and (ii)
any patent applications or patents that have issued or may issue under the law
of any jurisdiction other than the United States that are counterparts of or
that, in whole or in part, claim or are entitled to claim priority directly or
indirectly from U.S. Patent Application Serial No. 542,111 and all divisionals,
continuations, continuations-in-part, reissues, reexaminations, and extensions
thereof (collectively, "Centocor Patent Rights"); and
WHEREAS, Centocor is the owner by assignment of (i) U.S. Patent Application
Serial No. 304,884 filed February 1, 1989, (ii) U.S. Letters Patent No.
5,057,598 entitled "Monoclonal Antibodies Reactive with Endotoxin Core" and
(iii) U.S. Patent Application Serial No. 492,374 filed May 6, 1983 and all
divisionals, continuations, continuations-in-part, reissues, reexaminations and
extensions thereof (collectively, "U.S. Velos Patent Rights"); and
2
WHEREAS, Velos is the owner by assignment of patent applications and
patents that have issued or may issue under the law of any jurisdiction other
than the United States that are counterparts of or that, in whole or in part,
claim or are entitled to claim priority directly or indirectly from U.S. Patent
Applications Serial Nos. 492,374 and 304,884 and U.S. Letters Patent No.
5,057,598, and all divisionals, continuations, continuations-in-part, reissues,
reexaminations and extensions thereof (collectively, "Non-U.S. Velos Patent
Rights"), and Centocor is the exclusive licensee of Non-U.S. Velos Patent
Rights; and
WHEREAS, University is the owner by assignment of (i) U.S. Patent
Application Serial No. 855,878 filed April 24, 1986 and U.S. Letters Patent No.
4,918,163 entitled "Monoclonal Antibodies Specific for Lipid A Determinants on
Gram Negative Bacteria" issuing thereon and U.S. Patent Application Serial No.
781,242 filed September 27, 1985 and U.S. Letters Patent No. 4,777,136 issuing
thereon and all divisionals, continuations, continuations-in-part, reissues,
reexaminations and extensions thereof; and (ii) any patent applications or
patents that have issued or may issue under the law of any jurisdiction other
than the United States that are counterparts of or that, in whole or in part,
claim or are entitled to claim priority directly or indirectly from U.S. Patent
Applications Serial Nos. 781,242 and 855,878 and U.S. Letters Patent Nos.
4,918,163 and 4,777,136, and all divisionals, continuations,
continuations-in-part, reissues,
3
reexaminations and extensions thereof (collectively, "University Patent
Rights"), and XOMA is the exclusive licensee of University Patent Rights; and
WHEREAS, certain of the parties hereto are involved in litigation and other
proceedings concerning, inter alia, (a) claims of infringement by HA-1A Product
of U.S. Letters Patent No. 4,918,163 in Civil Action No. C-90-1129-RHS pending
in the United States District Court for the Northern District of California
captioned Xoma Corporation v. Centocor, Inc. (the "California Action") in which
Centocor has filed a notice of appeal to the United States Court of Appeals for
the Federal Circuit, No. 92-1267 (the "Appeal") and in Investigation No.
337-TA-323, pending under suspension in the United States International Trade
Commission captioned In the Matter of Certain Monoclonal Antibodies for
Therapeutically Treating Humans Having Gram Negative Bacterial Infections, (the
"ITC Proceeding"); and (b) claims of infringement by E5 Product of U.S. Letters
Patent No. 5,057,598 in Civil Action No. C 92-95 (LON) pending in the United
States District Court for the District of Delaware captioned Centocor, Inc. v.
Xoma Corporation and Pfizer Inc (the "Delaware Action"); and
WHEREAS, the parties do not intend by this Agreement to affect in any way
the rights and obligations, if any, of University, the Board of Trustees of the
Xxxxxx Xxxxxxxx Junior University ("Stanford") and Centocor under a license from
Stanford to Centocor of the right to make, use and/or sell HA-1A
4
Product ("Stanford/Centocor License"); and
WHEREAS, in order to avoid the expense and inconvenience of continued
litigation and other proceedings, the parties hereto wish to compromise and
resolve their differences with respect to the above and other matters.
NOW THEREFORE, in consideration of the promises and mutual covenants,
agreements and releases herein contained, the receipt and sufficiency of which
are hereby acknowledged, the parties agree as follows:
1. Centocor and Velos Releases. Centocor and Velos, on behalf of themselves
and their affiliates, parents and subsidiaries and each of their respective
directors, officers, employees, partners, representatives, agents,
subcontractors, sublicensees, attorneys, heirs, executors, administrators,
successors and assigns and all others claiming under or through them (sometimes
hereinafter referred to as "Centocor/Velos Releasors" and sometimes hereinafter
referred to as "Centocor/Velos Releasees") hereby release and discharge (i) Xoma
and Pfizer and their affiliates, parents and subsidiaries and each of their
respective directors, officers, employees, partners, representatives, agents,
subcontractors, sublicensees, attorneys, heirs, executors, administrators,
successors and assigns (sometimes hereinafter referred to as "Xoma/Pfizer
Releasees" and sometimes hereinafter referred to as "Xoma/Pfizer Releasors") of
and from all manner of actions, causes of action,
5
suits, debts, dues, sums of money, accounts, reckonings, bonds, bills,
specialties, covenants, contracts, controversies, agreements, promises,
variances, trespasses, damages, judgments, extents, executions, claims and
demands whatsoever, in law, in admiralty or in equity, whether known or unknown,
which Centocor/Velos Releasors or any of them ever had, now have or may have
for, upon or by reason of any matter, cause or thing whatsoever from the
beginning of the world to the effective date of this Agreement against
Xoma/Pfizer Releasees, or any of them, and (ii) University and its affiliates,
parents and subsidiaries and each of their respective directors, officers,
employees, partners, representatives, agents, subcontractors, sublicensees,
attorneys, heirs, executors, administrators, successors and assigns (sometimes
hereinafter referred to as "University Releasees" and sometimes hereinafter
referred to as "University Releasors") of and from all manner of actions, causes
of action, suits, debts, dues, sums of money, accounts, reckonings, bonds,
bills, specialties, covenants, contracts, controversies, agreements, promises,
variances, trespasses, damages, judgments, extents, executions, claims and
demands whatsoever, in law, in admiralty or in equity, whether known or unknown,
which Centocor/Velos Releasors or any of them ever had, now have or may have
for, upon or by reason of any matter, cause or thing whatsoever related to the
infringement of Centocor Patent Rights, U.S. Velos Patent Rights and/or Non-U.S.
Velos Patent Rights from the beginning of the world to the effective date of
this
6
Agreement against University Releasees, or any of them.
Centocor and Velos Covenants Not To Xxx. Centocor/Velos Releasors covenant that
they will not hereafter cause or assist in the assertion, instigation,
maintenance or pursuit of any claim for infringement, contributory infringement
or inducement of infringement of any patent now or hereafter owned, licensed,
acquired or otherwise controlled by Centocor/Velos Releasors against Xoma/Pfizer
Releasees and/or University Releasees, or any of them, or their distributors or
customers or any health care professionals, for the making, using or selling of
the E5 Product. In addition, Centocor and Velos on behalf of themselves and
their respective parents and subsidiaries and each of their respective
directors, officers, employees, agents, attorneys and distributors (sometimes
hereinafter referred to as "Centocor/Velos Developers"), covenant that they will
not hereafter cause or assist in the assertion, instigation, maintenance or
pursuit of any claim for infringement, contributory infringement or inducement
of infringement of Centocor Patent Rights, U.S. Velos Patent Rights and/or
Non-U.S. Velos Patent Rights against [*] [*] and each of their respective
directors, officers, employees, agents, attorneys and distributors (sometimes
hereinafter referred to as [*]), or any of them, or their customers or any
health care professionals, for the making, using or selling of [*]
7
[*]. Also, Centocor/Velos Releasors covenant that they will not hereafter cause
or assist in the assertion, instigation, maintenance or pursuit of any claim
against Xoma/Pfizer Releasees or University Releasees, or any of them, related
to the assertion of University Patent Rights in the California Action and the
existence of the Stanford/Centocor License.
3. Xoma, Pfizer and University Releases. (i) Xoma/Pfizer Releasors hereby
release and discharge Centocor/Velos Releasees of and from all manner of
actions, causes of action, suits, debts, dues, sums of money, accounts,
reckonings, bonds, bills, specialties, covenants, contracts, controversies,
agreements, promises, variances, trespasses, damages, judgments, extents,
executions, claims and demands whatsoever, in law, in admiralty or in equity,
whether known or unknown, which Xoma/Pfizer Releasors or any of them ever had,
now have or may have for, upon or by reason of any matter, cause or thing
whatsoever from the beginning of the world to the effective date of this
Agreement against Centocor/Velos Releases or any of them, and (ii) University
Releasors hereby release and discharge Centocor/Velos Releasees of and from all
manner of actions, causes of action, suits, debts, dues, sums of money,
accounts, reckonings, bonds, bills, specialties, covenants, contracts,
controversies, agreements, promises, variances, trespasses, damages, judgments,
extents, executions,
8
claims and demands whatsoever, in law, in admiralty or in equity, whether known
or unknown, which University Releasors or any of them ever had, now have or may
have for, upon or by reason of any matter, cause or thing whatsoever related to
the infringement of University Patent Rights from the beginning of the world to
the effective date of this Agreement, against Centocor/Velos Releasees or any of
them.
4. Xoma, Pfizer and University Covenants Not To Xxx. Xoma/Pfizer Releasors
and University Releasors covenant that they will not hereafter cause or assist
in the assertion, instigation, maintenance or pursuit of any claim for
infringement, contributory infringement or inducement of infringement of any
patent now owned, licensed or otherwise controlled by Xoma/Pfizer Releasors
and/or University Releasors (or, in the case of Xoma/Pfizer Releasors only,
hereafter owned, licensed, acquired or otherwise controlled) against
Centocor/Velos Releasees, or any of them, or their distributors or customers or
any health care professionals, for the making, using or selling of the HA-1A
Product, except that in the case of University Releasors, this covenant not to
xxx is limited to patent rights administered by The Office of Technology
Transfer, Manager, Licensing, Biotechnology of the University ("XXX"). In
addition, [*] covenant that they will not hereafter cause or assist in the
assertion, instigation, maintenance or pursuit of any claim for infringement,
contributory infringement or inducement of
9
infringement of University Patent Rights against [*]
[*], or any of them, or their customers or any health care professionals, for
the making, using or selling of any [*].
5. The California Action. Promptly upon execution of this Agreement, Xoma
and Centocor shall (a) execute and file a stipulation in the form annexed hereto
as Exhibit A providing for the dismissal of the Appeal and (b) execute and file
a final judgment on consent in the California Action in the form annexed hereto
as Exhibit B.
6. The Delaware Action. Promptly upon execution of this Agreement, Xoma,
Pfizer and Centocor shall execute and file a final judgment on consent in the
Delaware Action in the form annexed hereto as Exhibit C.
7. The ITC Proceeding. Promptly upon execution of this Agreement, Xoma and
Centocor shall execute and file a stipulation in the form annexed hereto as
Exhibit D providing for withdrawal of the complaint in, and termination of, the
ITC Proceeding.
8. Further Consideration. From the date of FDA
10
approval of the product license application for the HA-1A Product [*] ("Centocor
HA-1A Product Royalty Term"), Centocor shall pay to Xoma royalties of [*] of all
Net Sales of HA-1A Product in the United States. [*] [*]
The term "Net Sales" shall mean the [*] [*] sold by Centocor during the
Centocor HA-1A Product Royalty Term or the Centocor [*] Royalty Term, as the
case may be, to any [*] less the sum of deductions actually applicable to such
sales for: (a) discounts and allowances; (b) credits for rejected, damaged and
returned goods; (c) transportation charges; and (d) tariffs, import/export
duties, excise taxes, value added taxes, sales and use taxes and other similar
governmental charges
11
paid in connection with any such sales (collectively, "Deductions"). Net Sales
of HA-1A Product or any Non-HA-1A Product shall not include sales of HA-1A
Product or any Non-HA-1A Product by Centocor to [*], but shall include the [*],
less Deductions, for HA-1A Product [*] during the Centocor HA-1A Product Royalty
Term or the Centocor Non-HA-1A Product Royalty Term, as the case may be, to [*].
Within 90 days following the end of each calendar quarter during the
Centocor HA-1A Product Royalty Term and/or Centocor Non-HA-1A Product Royalty
Term in which Net Sales of HA-1A Product or any Non-HA-1A Product are made,
Centocor shall provide to Xoma a written report setting forth the total Net
Sales of HA-1A Product and/or any Non-HA-1A Product made during that quarter and
the aggregate fee due and payable to Xoma for such quarter, and with such report
Centocor shall remit to Xoma the amount of royalty payment shown thereby to be
due. If no Net Sales of HA-1A Product or any Non-HA-1A Product are made during
any such quarterly reporting period, a statement to that effect shall be made.
Centocor shall keep complete and accurate books and records for the latest
three (3) years during the Centocor HA-1A Product Royalty Term and/or the
Centocor Non-HA-1A Product Royalty Term showing the Net Sales of HA-1A Product
and any Non-
12
HA-1A Product. Such records shall be in sufficient detail to enable the
royalties payable hereunder by Centocor to be determined. Centocor shall permit
the books and records referred to in this paragraph to be examined by Xxxxxx
Xxxxxxxx & Co., but not more than twice in any calendar year. Any such
examinations shall be at the expense of Xoma and conducted during reasonable
business hours of Centocor and upon reasonable notice to Centocor. The purpose
of any such examination shall be solely for verifying the amount of Net Sales of
HA-1A Product and/or any Non-HA-1A Product and the royalties payable as provided
for in this Agreement, and Xxxxxx Xxxxxxxx & Co. shall keep such information in
strict confidence, except as legally required in the judgment of counsel to
Xxxxxx Xxxxxxxx & Co., and disclose to Xoma only Net Sales of HA-1A Product and
any Non-HA-1A Product and royalties due and payable thereon.
In the event any royalties payable under this Article 8 are not received by
Xoma when due, Centocor shall pay to Xoma interest charges on the total
royalties due but unpaid at the rate of [*] per annum or the highest rate
permitted by law (whichever is lower). In the event that any examination of
Centocor's records by Xxxxxx Xxxxxxxx & Co. under this Article 8 discloses that
the amount of the royalties paid for any quarterly reporting period was more
than [*] less than the amount finally determined to be due, Centocor shall pay
Xoma the reasonable cost of such examination.
[*]
13
[*]
9. Other Proceedings. No party to this Agreement shall commence or
voluntarily participate in any suit or proceeding (including, without
limitation, any patent opposition or reexamination proceeding), or otherwise
assert any claim challenging or denying the validity of any claim contained in
any University Patent Rights, Centocor Patent Rights, U.S. Velos
14
Patent Rights and/or Non-U.S. Velos Patent Rights; except that nothing in this
Agreement shall prevent Pfizer from challenging or denying the validity of any
claims contained in any Centocor Patent Rights, U.S. Velos Patent Rights and/or
Non-U.S. Velos Patent Rights (sometimes hereinafter referred to as
"Centocor/Velos Patent Rights") in response to any claims against Pfizer for
infringement, contributory infringement or inducement of infringement of
Centocor/Velos Patent Rights. Immediately after the effective date of this
Agreement, Xoma and Pfizer shall cease to participate in any proceeding with
respect to any and all oppositions filed against European Patent No. 0 151 128;
provided that such conduct shall not constitute evidence that Pfizer
acknowledges the validity of said European Patent in any proceeding charging
Pfizer with infringement of said European Patent. No party to this Agreement
shall voluntarily make any statement which is slanderous, libelous or otherwise
defamatory of any other party hereto or its employees.
10. Representations and Warranties.
(a) Centocor and Velos represent and warrant that the making, having made,
using and selling of E5 Product does not infringe any patents or patent
applications owned by or licensed to Centocor or Velos as of the date hereof
except for Centocor Patent Rights, U.S. Velos Patent Rights and Non-U.S. Velos
Patent Rights.
(b) Xoma, Pfizer and University represent and warrant
15
that the making, having made, using and selling of HA-1A Product does not
infringe any patents or patent applications owned by or licensed to Xoma, Pfizer
or University (in University's case, administered by the XXX) as of the date
hereof except for University Patent Rights.
(c) Each party to this Agreement represents and warrants that (i) it has
full right and authority to enter into this Agreement and to perform its
obligations hereunder without consent or approval of any third person; and (ii)
that it is not subject to any restriction which would impair its rights and
obligations under this Agreement. Each party further represents and warrants
that it has taken all action required to authorize it to enter into this
Agreement and to render it binding upon it.
(d) Centocor and Velos shall indemnify and hold harmless Xoma, Pfizer and
University from any loss, cost, expense or expenditure (including reasonable
attorneys' fees) suffered or incurred by Xoma, Pfizer or University in
connection with any breach by Centocor or Velos of the release(s) set forth in
Article 1 hereof or the covenants not to xxx set forth in Article 2 hereof.
(e) Xoma, Pfizer and University (and in the University's case, only for the
direct release herein by the University) shall indemnify and hold harmless
Centocor and Velos from any loss, cost, expense or expenditure (including
reasonable attorneys' fees) suffered or incurred by Centocor or Velos in
connection with any breach by Xoma, Pfizer or University of the
16
release(s) set forth in Article 3 hereof or the covenants not to xxx set forth
in Article 4 hereof.
11. Counterparts. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which shall
be deemed to be and constitute one and the same instrument; and in making proof
of this Agreement it shall not be necessary to produce or account for more than
one such fully executed Agreement.
12. No Prior Assignment. The parties (in the case of University, the XXX)
hereto, and each of them, hereby represent and warrant that none of them has
assigned or transferred, in whole or in part, any claim, right, demand or cause
of action which it may now have or may have had or claim to have, of whatever
kind or nature, against any other party hereto, or any of the directors,
officers, employees, partners, affiliates, parents, subsidiaries,
representatives, agents or attorneys of such party, either in their
representative or in their individual capacities, to any other person,
corporation or other entity in any manner, including but not limited to
assignment or transfer by subrogation or by operation of law. In the event that
any party shall have assigned or transferred, or purported to assign or to
transfer, any claim or other matter herein released, such party shall indemnify,
defend and hold harmless each other party from and against any loss, cost, claim
or expense (including but
17
not limited to all costs related to the defense of any action, including
reasonable attorneys' fees) based upon, arising out of or occurring as a result
of any such claim, assignment or transfer.
13. Assignment. This Agreement shall not be assignable by any party without
the prior written consent of each of the other parties which consents shall not
be unreasonably withheld. Xoma covenants that it will not sell or otherwise
transfer its business relating to the E5 Product and/or University Patent Rights
(or the right to xxx thereunder) without requiring the transferee(s) to assume
in writing all of the obligations of Xoma under this Agreement. Centocor
covenants that it will not sell or otherwise transfer its business relating to
the HA-1A Product and/or Centocor Patent Rights, U.S. Velos Patent Rights and/or
Non-U.S. Velos Patent Rights (or the right to xxx thereunder) without requiring
the transferee(s) to assume in writing all of the obligations of Centocor under
this Agreement.
Xoma and/or University shall record, and request the United States Patent
and Trademark Office and each foreign patent office in which University Patent
Rights are pending or have issued, to file with each patent or patent
application included in University Patent Rights, a statement that each such
patent or patent application is subject to an agreement which transfers rights
thereunder to Centocor and Velos and which provides that
18
such patents or patent applications may not be further assigned or licensed
hereunder unless any such assignee or licensee agrees to accept Xoma's
obligations hereunder. Centocor and Velos shall record, and request the United
States Patent and Trademark Office and each foreign patent office in which
Centocor Patent Rights, U.S. Velos Patent Rights and/or Non-U.S. Velos Patent
Rights are pending or have issued, to file with each patent or patent
application included in Centocor Patent Rights, U.S. Velos Patent Rights and/or
Non-U.S. Velos Patent Rights a statement that each such patent or patent
application is subject to an agreement which transfers rights thereunder to
Xoma, Pfizer and University and which provides that such patents or patent
applications may not be further assigned or licensed hereunder unless any such
assignee or licensee agrees to accept Centocor's obligations hereunder (and in
the case of Non-U.S. Velos Patent Rights any such assignee or licensee agrees to
accept Velos' obligations hereunder).
14. Stanford/Velos/Centocor Licenses. Anything herein to the contrary
notwithstanding, nothing in this Agreement is intended, nor shall be deemed, to
affect or modify in any way the rights and obligations, if any, of University,
Stanford, Velos and Centocor under the Stanford/Centocor License or the
Velos/Centocor License dated June 25, 1987 as amended.
15. Execution of Agreement. This Agreement may be amended, modified or
otherwise changed only in a writing signed by all parties hereto. Each party
further represents and warrants that, except as set forth in this Agreement, it
has not
19
relied upon or been induced by any representation, statement or disclosure of
any other party but has relied upon its own knowledge and judgment and upon the
advice and representation of counsel of its own selection in entering into this
Agreement, that it has read and fully understands the terms of this Agreement
and is fully advised as to the legal effect thereof.
16. Confidentiality. The parties agree that all terms of this Agreement
shall be kept confidential and shall not be disclosed to anyone other than the
parties' directors, officers, employees, partners, accountants, insurers and
attorneys, except as legally required in the judgment of counsel to the parties,
provided that Centocor and Xoma will issue the press release attached hereto as
Exhibit E at 8:00 A.M. Eastern Standard Time on the first business day following
the effective date of this Agreement. Xoma, University and Pfizer shall maintain
information received from Centocor pursuant to this Agreement in strict
confidence and shall use the same only for the purpose of confirming the
royalties due hereunder.
17. Remedies For Breach. The parties acknowledge that their remedy at law
for breach of this Agreement may not be adequate and, therefore, each of the
parties agrees that any party shall be entitled to the equitable remedy of
specific performance in the event of a breach or threatened breach by any other
party, without any bond or other security being required.
20
18. Severability. If any one or more of the provisions of this Agreement
shall, for any reason, be held invalid, illegal or unenforceable in any respect,
such invalidity, illegality or unenforceability shall not affect any other
provision hereof, but this Agreement shall be construed as if such invalid,
illegal or unenforceable provisions had never been contained herein.
19. Further Assurances. Each of the parties hereto shall take or cause to
be taken all such further actions to execute, deliver and file or cause to be
executed, delivered and filed such further documents and instruments, and to use
reasonable best efforts to obtain such consents, as may be necessary or as may
be reasonably requested in order to fully effectuate the purposes, terms and
conditions of this Agreement.
20. Notices. All reports, notices and other communications hereunder shall
be in writing and shall be sent by registered mail or overnight courier to the
address of the party as set forth below:
For Centocor: Centocor, Inc.
000 Xxxxx Xxxxxx Xxxxxxx
Xxxxxxx, Xxxxxxxxxxxx 00000
Attention: General Counsel
For Pfizer: Pfizer Inc
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: General Counsel
For University: The Regents of the
University of California
21
000 Xxxxxxxx Xxxxx, 00xx Xxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
For Velos: Velos Group
0000 Xxxxxxxxxx Xxxx
Xxxxxxxx, Xxxxxxxx 00000
Attention: General Counsel
For Xoma: Xoma Corporation
0000 Xxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attention: General Counsel
21. Parties To Bear Own Costs and Attorneys' Fees. Each of the parties
hereto shall bear its own costs, expenses and attorneys' fees, whether taxable
or otherwise, incurred in, or arising out of or connected with the Delaware
Action, the California Action, the Appeal and the ITC Proceeding.
22. Governing Law. This Agreement shall be governed by and construed in
accordance with the internal laws of the State of New York without regard to
conflicts of law provisions; provided that each of the parties hereby
acknowledges and agrees that all claims under Section 1542 of the California
Civil Code and any other provision of law now or hereafter enacted, adjudicated
or sought to be adjudicated relating to the release or waiver of unknown or
unspecified claims are hereby specifically and expressly released and waived.
Each of the parties understands that Section 1542 of the California Civil Code
provides that "[a] general release does not extend to claims which the creditor
does not know or suspect to exist in his favor
22
at the time of executing the release, which if known by him must have materially
affected his settlement with the debtor." For purposes of this Agreement, each
of the parties acknowledges and agrees that he, she or it may be considered to
be both a "creditor" and a "debtor" for all purposes and with respect to all
claims, he, she or it may not know or suspect to exist within the meaning of
Section 1542 of the California Civil Code and any other provision of law now or
hereafter enacted, adjudicated or sought to be adjudicated relating to the
release or waiver of unknown or unspecified claims.
23. Binding Effect. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective successors, transferees and
assigns.
24. No Implied Rights. Nothing contained in this Agreement shall be
construed to grant by implication, estoppel or otherwise any license or freedom
from suit under any patent or patent application other than University Patent
Rights, Centocor Patent Rights, U.S. Velos Patent Rights and Non-U.S. Velos
Patent Rights or any patent which would be infringed by the manufacture, use or
sale of HA-1A Product or E5 Product.
25. Entire Agreement. With the exception of the license agreement between
Xoma and University related to
23
University Patent Rights, this Agreement, together with the exhibits hereto,
constitutes, on and as of the effective date hereof, the entire agreement of the
parties with respect to the subject matter hereof, and all prior or
contemporaneous understandings or agreements, whether written or oral, between
or among the parties with respect to such subject matter are hereby superseded
in their entireties.
24
IN WITNESS WHEREOF, and intending to be bound thereby, the parties have
caused this Agreement to be executed by their duly authorized representatives on
the dates set forth below.
Dated: 7/23/92 CENTOCOR, INC.
By: /s/ Xxxxxx X.X. Xxxxxxxxx
Xxxxxx X.X. Xxxxxxxxx, Ph.D.
Chairman of the Board and
Attest: /s/(unknown) Chief Executive Officer
Dated: 7/24/92 PFIZER INC
By: /s/Xxxxx X. Xxxxxxxxxx
Assistant Secretary
Attest: /s/(unknown)
Dated: 7/30/92 THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
By: /s/ Xxxx X. Xxxxxxxx
Xxxx X. Xxxxxxxx
Attest: /s/(unknown) Deputy General Counsel
Dated: 7/23/92 VELOS GROUP
By: /s/Xxxxxx X. House
Attest: /s/(unknown)
Dated: 7/23/92 XOMA CORPORATION
By: /s/ Xxxx X. Xxxxxxxx
Xxxx X. Xxxxxxxx
President and
Attest: /s/(unknown) Chief Executive Officer
25
EXHIBIT A
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
XOMA CORPORATION,
Plaintiff - Appellee, No. 92-1267
v.
CENTOCOR, INC., Defendant - Appellant.
XOMA'S AND CENTOCOR'S JOINT MOTION FOR DISMISSAL
Plaintiff-Appellee Xoma Corporation ("Xoma") and Defendant-Appellant
Centocor, Inc. ("Centocor") hereby jointly move for dismissal of the
above-identified appeal in accordance with Fed. R. App. Pro. 42(b), without
costs. A proposed ORDER is attached.
Dated: New York, New York
July , 1992
Respectfully submitted,
(blank)
Xxxxxx Xxxxx
XXXX, SCHOLER, FIERMAN,
XXXX & HANDLER
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attorneys for Plaintiff-Appellee,
Xoma Corporation
(blank line)
Xxxxxx X. Xxxxxxx
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attorneys for Defendant-Appellant,
Centocor, Inc.
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
XOMA CORPORATION,
Plaintiff-Appellee,
v. No. 92-1267
CENTOCOR, INC.,
Defedant-Appellant.
ORDER OF DISMISSAL
The Court, pursuant to Fed. R. App. Pro. 42(b), having been advised by
counsel for the parties that the parties consent to entry of the following Order
of Dismissal:
IT IS ORDERED, ADJUDGED AND DECREED:
(1) This appeal is hereby dismissed; and (2) No costs or attorneys'
fees are assessed or awarded.
Dated: (blank), 1992 (blank line)
0
XXXXXXX X
XX XXX XXXXXX XXXXXX DISTRICT COURT FOR THE
NORTHERN DISTRICT OF CALIFORNIA
XOMA CORPORATION,
Plaintiff, C-90-1129 RHS
vs.
CENTOCOR, INC.,
Defendant.
FINAL JUDGMENT ON CONSENT
WHEREAS, plaintiff, Xoma Corporation ("Xoma"), a corporation organized and
existing under the laws of the State of Delaware with its primary place of
business in Berkeley, California, has filed suit against defendant, Centocor,
Inc. ("Centocor"), a corporation organized and existing under the laws of the
Commonwealth of Pennsylvania having its principal place of business in Malvern,
Pennsylvania, in Civil Action No. C-90-1129-RHS;
WHEREAS, Centocor counterclaimed against Xoma in said Civil Action;
WHEREAS, said Civil Action was tried to a jury and the jury returned a
verdict on or about October 26, 1991 that United States Patent No. 4,918,163 is
valid and is infringed both literally and under the doctrine of equivalents by
Centocor's manufacturing and distributing the monoclonal antibody known as
HA-1A (trade name CENTOXIN) for the treatment of gram negative infections in
humans;
WHEREAS, the jury also found that Centocor did not have an implied license
to make, use or sell HA-1A under United States Patent No. 4,918,163; and
WHEREAS, Xoma and Centocor have consented to the entry of this judgment;
There being no just reason for delay, and upon an express direction for the
entry of judgment, it is hereby ORDERED, ADJUDGED and DECREED as follows:
1. United States Patent No. 4,918,163 is valid.
2. United States Patent No. 4,918,163 has been infringed by CENTOCOR.
3. Centocor does not have an implied license to United States Patent No.
4,918,163.
4. Centocor shall pay to Xoma damages in the amount of $100,000.
5. All other claims and all counterclaims are dismissed with prejudices.
6. The Amended Order entered on January 14, 1992 is hereby superseded and
is of no further force or effect.
2
SO ORDERED
Date: (blank) (blank line)
United States District Judge
Entry of the foregoing Order and Decree hereby is consented to:
XOMA CORPORATION
Date: (blank) By (blank line)
Name:
Title:
CENTOCOR, INC.
Date: (blank) By (blank line)
Name:
Title:
XXXX, SCHOLER, FIERMAN,
XXXX & HANDLER
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
Attorneys for Plaintiff
Xoma Corporation
Date: (blank) By (blank line)
Xxxxxx Xxxxx, Esq.
3
FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER
0000 X Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attorneys for Defendant
Centocor, Inc.
Dated: (blank) By (blank line)
Xxxxxx X. Xxxxxxx, Esq.
4
EXHIBIT C
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
CENTOCOR, INC.,
Plaintiff,
v. Civil Action No. 92-95
XOMA CORPORATION,
and PFIZER INC.,
Defendants.
FINAL JUDGMENT ON CONSENT
WHEREAS, plaintiff, Centocor, Inc. ("Centocor"), a corporation organized
and existing under the laws of the Commonwealth of Pennsylvania having its
principal place of business in Malvern, Pennsylvania, has filed suit against
defendants, Xoma Corporation ("Xoma"), a corporation organized and existing
under the laws of the State of Delaware with its primary place of business in
Berkeley, California, and Pfizer Inc. ("Pfizer"), a corporation organized and
existing under the laws of the State of Delaware with its primary place of
business in New York, New York, in Civil Action No. 92-95; and
WHEREAS, Xoma Pfizer counterclaimed against Centocor in said Civil Action;
and
WHEREAS, Xoma, Centocor and Pfizer have consented to the entry of this
judgment;
There being no just reason for delay, and upon an express direction for the
entry of judgment, it is hereby ORDERED, ADJUDGED and DECREED as follows:
(1) This action including all claims and all counterclaims is hereby
dismissed with prejudice; and
(2) No costs or attorneys' fees are assessed or awarded.
SO ORDERED
Date: (blank) (blank line)
United States District Judge
Entry of the foregoing Order and Decree hereby is consented to:
XOMA CORPORATION
Date: (blank) By (blank line)
Name:
Title:
CENTOCOR, INC.
Date: (blank) By (blank line)
Name:
Title:
2
PFIZER INC.
Date: (blank) By (blank line)
Name:
Title:
XXXX, SCHOLER, FIERMAN,
XXXX & HANDLER
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
Attorneys for Defendants
Xoma Corporation and
Pfizer Inc.
Date: (blank) By (blank line)
Xxxxxx Xxxxx, Esq.
POTTER, XXXXXXXX & CARROON
Delaware Trust Building
X.X. Xxx 000 Xxxxxxxxxx,
Xxxxxxxx 00000 Attorneys
for Plaintiff Centocor,
Inc.
Dated: (blank) By (blank line)
Xxxxxx X. Xxxxxx, Esq.
3
EXHIBIT D
UNITED STATES INTERNATIONAL TRADE COMMISSION
Washington, D.C. 20436
Before Xxxxx X. Xxxxx
Administrative Law Judge
IN THE MATTER OF
Inv. No. 337-TA-323
CERTAIN MONOCLONAL ANTIBODIES
USED FOR THERAPEUTICALLY
TREATING HUMANS HAVING GRAM NEGATIVE
BACTERIAL INFECTIONS
XOMA'S AND CENTOCOR'S JOINT MOTION FOR DISMISSAL
Petitioner Xoma Corporation ("Xoma") and Respondents Centocor, Inc.,
Centocor Partners II, L.P. and Centocor B.V. ("Centocor") jointly move for
dismissal of this proceeding without costs. A proposed ORDER is attached.
Dated: New York, New York
July , 1992
Respectfully submitted,
(blank line)
Xxxxxx Xxxxx
XXXX, SCHOLER, FIERMAN,
XXXX & HANDLER
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attorneys for Complainant
(blank line)
Xxx X. Xxxxxxxxxx
ADDUCI, MASTRIANI, XXXXX
AND XXXXXX
0000 Xxxxxxxxxxx Xxxxxx
Xxxxxxxxxx, X.X.
Attorneys for Respondents
XXXXXX XXXXXX XXXXXXXXXXXXX XXXXX XXXXXXXXXX
Xxxxxxxxxx, X.X. 00000
Before Xxxxx X. Xxxxx
Administrative Law Judge
IN THE MATTER OF
Inv. No. 337-TA-323
CERTAIN MONOCLONAL ANTIBODIES
USED FOR THERAPEUTICALLY
TREATING HUMANS HAVING GRAM NEGATIVE
BACTERIAL INFECTIONS
ORDER OF DISMISSAL
Having been advised by counsel for the parties that the parties consent to
entry of the following Order of Dismissal:
IT IS ORDERED, ADJUDGED AND DECREED:
(1) This proceeding is hereby dismissed; and
(2) No costs or attorneys' fees are assessed or awarded.
Dated: (blank), 1992 (blank line)
2
Exhibit E
Centocor and XOMA Announce Settlement of All Outstanding Litigation and Disputes
Centocor, Inc. of Malvern, PA (NASDAQ: CNTO) and XOMA Corporation of
Berkeley, CA (NASDAQ: XOMA) announced today an agreement to settle all
outstanding litigation and disputes regarding each company's products, patents
and patent applications related to anti-endotoxin monoclonal antibodies.
The agreement covers the XOMA v. Centocor litigation in the U.S. District
Court for the Northern District of California and pending appeals, a proceeding
initiated at the U.S. International Trade Commission, and the Centocor v. XOMA
lawsuit filed in the U.S. District Court for the District of Delaware.
Centocor has agreed to pay royalties to XOMA for U.S. sales, if any, of its
monoclonal antibody HA-1A, and the companies have agreed to forego all future
litigation and adminstrative proceedings regarding each other's patents and
patent applications related to anti-endotoxin monoclonal antibodies.
Centocor, Inc. is a biopharmaceutical company specializing in monoclonal
antibody technology.
XOMA Corporation is a leading company in the development of therapeutic
products using monoclonal antibody and recombinant DNA technologies.
News Release XOMA (logo)
For Release: July 29, 1992
For Information Contact: Xxxxx X. XxXxxxxx
(000) 000-0000
XOMA AND CENTOCOR ANNOUNCE SETTLEMENT
OF ALL OUTSTANDING LITIGATION AND DISPUTES
(Berkeley, CA, and Malvern, PA, July 29, 1992.) XOMA Corporation (NASDAQ:
XOMA) and Centocor, Inc. (NASDAQ: CNTO) announced today an agreement to settle
all outstanding litigation and disputes worldwide regarding each company's
products, patents and patent applications related to anti-endotoxin monoclonal
antibodies.
The agreement covers the XOMA v. Centocor litigation in the U.S. District
Court for the Northern District of California and pending appeals, a proceeding
initiated at the U.S. International Trade Commission, and the Centocor v. XOMA
lawsuit filed in the U.S. District Court for the District of Delaware.
Centocor has agreed to pay royalties for U.S. sales, if any, of its
monoclonal antibody HA-1A, and the companies have agreed to forego all future
litigation and administrative proceedings regarding each other's patents and
patent applications related to anti-endotoxin monoclonal antibodies.
XOMA Corporation is a leading company in the development of therapeutic
products using monoclonal antibody and recombinant DNA technologies.
