EXHIBIT 10.49
[Confidential treatment is being sought for certain portions of this Exhibit, as
indicated by a "[*]" symbol and footnoted as "omitted pursuant to Rule 24b-2 and
filed separately with the Commission." Such omitted portions have been filed
with the Securities and Exchange Commission.]
ASSIGNMENT AND ASSET TRANSFER AGREEMENT
This Assignment and Asset Transfer Agreement (the "Agreement") dated as
of August 3, 2001 (the "Effective Date"), is entered into by and between Nycomed
Imaging AS, a Norwegian corporation having its principal offices at Xxxxxxxxx
0-0, Xxxx ("Nycomed") and Sonus Pharmaceuticals, Inc., a Delaware corporation
with its principal offices at 00000 00xx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000
("Sonus").
RECITALS
WHEREAS, Sonus and Nycomed are parties to that certain license
agreement dated August 31, 1999 (the "Nycomed License Agreement") and the
parties wish to supercede that license agreement effective as of the Effective
Date of this Agreement; and
WHEREAS, Sonus is a party to that certain license agreement with Chugai
Pharmaceutical Company Ltd. and Molecular Biosystems, Inc., dated December 22,
2000 (the "Chugai License Agreement") and Sonus wishes to assign that license
agreement to Nycomed together with all its rights, benefits, duties and
obligations under the Chugai License Agreement, as referred to herein; and
WHEREAS, Sonus owns and controls United States and foreign patents and
patent applications concerning ultrasound contrast agents, methods of making
and/or using same, and processes relating to ultrasound imaging; and
WHEREAS, Sonus desires to assign such patents and patent applications
to Nycomed, and Sonus desires to transfer to Nycomed certain formulation data,
clinical data and regulatory data pertaining to Sonus Ultrasound Contrast
Products (as defined below); and
WHEREAS, Nycomed desires to obtain from Sonus an assignment of such
patents and patent applications,
NOW THEREFORE, in consideration of the premises and the faithful
performance of the mutual covenants hereinafter set forth, the parties hereto
hereby agree as follows:
1. DEFINITIONS
As used in this Agreement, the following defined terms shall have the
respective meanings set forth below:
1.1 "Sonus Patents" shall mean: (i) all pending (as of the
Effective Date of this Agreement) U.S. and foreign patents and
patent applications listed in Appendix 1.1 of this Agreement;
(ii) all U.S. and foreign patents that have issued or will
issue from
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
CONFIDENTIAL AND PROPRIETARY
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EXHIBIT 10.49
any application identified in sub-section (i) of this
paragraph, and (iii) all U.S. and foreign applications that
claim priority in any way from any application or patent
identified in sub-sections (i) or (ii) of this paragraph.
1.2 "Affiliate" means any entity which controls, is controlled by,
or is under common control with another entity. An entity is
deemed to be in control of another entity (controlled entity)
if such company directly or indirectly owns 50% or more in
nominal value of the issued equity share capital of such other
company, or 50% or more of the shares entitled to vote upon
the election of: (i) the directors; (ii) persons performing
functions similar to those performed by directors; or (iii)
persons otherwise having the right to elect or appoint (a)
directors having the majority vote of the Board of Directors,
or (b) other persons having the majority vote of the highest
and most authoritative directive body of such other company.
1.3 "Chugai License Agreement" shall mean the License Agreement
dated December 22, 2000 attached hereto as Appendix 1.3, which
was entered into by and between Sonus Pharmaceuticals, Inc.,
Chugai Pharmaceutical Co., Ltd., a Japanese corporation with
principal offices at 0-0 Xxxxxxxx 0-Xxxxx, Xxxx-xx, Xxxxx
000-0000, Xxxxx ("Chugai"), and Molecular Biosystems, Inc., a
Delaware corporation with principal offices at 00000 Xxxxxx
Xxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000, XXX ("MBI").
1.4 [*]
1.5 "Japanese Patent Applications" shall mean Sonus' Japanese
patent application Nos. 05-506054, 06-517084, and 2000-150619.
1.6 [*]
1.7 "Nycomed License Agreement" shall mean the License Agreement
which was entered into by and between Sonus and Nycomed dated
August 31, 1999.
1.8 "Sonus Ultrasound Contrast Products" means all Sonus
ultrasound contrast agents including, but not limited to,
EchoGen and SonoGen, as defined in the Nycomed License
Agreement.
1.9 "Third Party" shall mean all persons and entities other than
Nycomed, Sonus, and their respective Affiliates.
1.10 "DuPont Litigation" shall mean that certain case pending in
the United States District Court for the Western District of
Washington captioned Sonus Pharmaceuticals, Inc. and Nycomed
Imaging AS v. X.X. XxXxxx DeNemours & Co. et al., Civ. Action
No. 00-1271R (consolidated with DuPont Pharmaceuticals et al
v. Sonus Pharmaceuticals et al. Civ. Action No. 01-52R).
1.11 [*]
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
2. ASSIGNMENT OF SONUS PATENTS AND TRANSFER OF SONUS ASSETS TO NYCOMED
2.1 In consideration of the one-time payment to Sonus defined in
this Agreement and the representations and warranties made
herein, Sonus hereby irrevocably assigns to Nycomed all of its
right, title, ownership, and interest in and to the Sonus
Patents, including the right to xxx and collect damages for
any past infringement. Sonus further assigns to Nycomed all
formulation data, clinical data and/or regulatory data for
Sonus Ultrasound Contrast Products and agrees, upon request,
to transfer and deliver to Nycomed all such formulation data,
clinical data and/or regulatory data. Sonus further agrees to
grant Nycomed, upon request, access to all filings by Sonus
with the FDA or other regulatory agencies with respect to
Sonus Ultrasound Contrast Products. Sonus represents that the
assignment of such Sonus Patents and data constitute
substantially all of the assets of the ultrasound contrast
imaging business unit of Sonus.
2.2 Except as may be set forth in this Agreement, upon the
Effective Date of this Agreement, and at all times thereafter,
Nycomed shall determine in its sole and absolute discretion
which of the Sonus Patents to prosecute or maintain, how such
prosecution shall be conducted, and whether to cease
prosecution and/or maintenance of any of the Sonus Patents,
and all expenses for such prosecution and/or maintenance after
the Effective Date shall be the sole responsibility of
Nycomed.
2.3 Nycomed shall be responsible for preparing and recording in
various patent offices as Nycomed shall determine, documents
necessary to effectuate the assignment of the Sonus Patents to
Nycomed, at Nycomed's cost. Sonus agrees to execute such
documents as shall be needed by Nycomed for this purpose, and
to provide such other assistance as Nycomed shall require for
this purpose, at Sonus' own cost. Sonus agrees to execute such
powers of attorney and/or other documents as Nycomed shall
request for the purpose of providing Nycomed with power to
prosecute and maintain each of the Sonus Patents, and hereby
grants to Nycomed an irrevocable power of attorney for the
Sonus Patents.
2.4 To ensure the timely prosecution and maintenance of the Sonus
Patents during a transition of responsibility to Nycomed,
Sonus shall direct that the respective attorneys or agents
responsible for maintaining or prosecuting the Sonus Patents
to continue to do so until directed otherwise by Nycomed, all
such prosecution and maintenance to be at Nycomed's expense.
Sonus further agrees that Sonus will promptly notify (in
writing, with a concurrent copy to Nycomed) each such agent or
attorney responsible for prosecuting or maintaining any patent
or application that is part of the Sonus Patents that each
such patent or application has been assigned to Nycomed.
Nycomed shall reimburse Sonus for any out of pocket costs that
Sonus so incurs in providing such direction.
2.5 After the Effective Date of this Agreement, promptly after
receiving a written request from Nycomed, Sonus shall notify
(in writing, with a concurrent copy to Nycomed) each agent or
attorney responsible for the prosecution and maintenance of
each Sonus
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EXHIBIT 10.49
Patent that all further correspondence with the official
patent office shall be promptly forwarded to the specific
Nycomed representative or representatives identified in
Nycomed's written request, and all further instructions for
corresponding with the official patent office will come from
that person or persons. Until such time as Nycomed provides
Sonus with the written request identified in this paragraph
for each patent or application in the Sonus Patents, Sonus
agrees that: (i) Sonus will forward to Nycomed (specifically:
Xxxx Xxxxxxx, Vice President, Intellectual Property, Nycomed
Amersham plc, Xxxxx Xxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxxxxxx, XX0
0XX, U.K., or such other person as Nycomed so designates) all
correspondence received from any patent office, agent or
attorney regarding any such application or patent promptly
after its receipt by Sonus; and (ii) in accordance with
paragraph 2.2 of this Agreement, Sonus will not provide any
patent office, attorney, agent or agency with instructions for
prosecuting or maintaining any Sonus Patent without first
obtaining the written approval of Nycomed. Nycomed shall
reimburse Sonus for any out of pocket costs that Sonus so
incurs in providing such notifications, forwarding such
correspondence, and/or seeking such written approval.
2.6 At any time on or after the Effective Date of this Agreement,
upon request by Nycomed, Sonus shall reasonably cooperate and
assist Nycomed, in the preparation, prosecution, and
maintenance of the Sonus Patents, including the signature of
documents to advance the prosecution or maintenance of any of
the Sonus Patents. Nycomed shall reimburse Sonus for any out
of pocket costs that Sonus so incurs at Nycomed's request.
2.7 As soon as practical following the Effective Date of this
Agreement, Sonus shall use its commercially reasonable best
efforts to transfer to or provide Nycomed with copies of all
past correspondence between Sonus and official patent offices
relating to the Sonus Patents, including, but not limited to,
the complete file history for each patent and application in
the Sonus Patents. Nycomed shall reimburse Sonus for any out
of pocket costs relating to providing such transfer or copies.
2.8 Nycomed shall have the right at any time to cease its efforts
in the preparation, prosecution, or maintenance of the Sonus
Patents in any country, provided that Nycomed gives reasonable
prior written notice to Sonus of any such intention by Nycomed
to terminate. In such event, Sonus shall have the option, but
not the obligation, to have Nycomed assign to Sonus, at no
cost to Sonus, such Sonus Patent(s) in order for Sonus to
continue the prosecution and/or maintenance of such Patent(s)
and to enforce any such Sonus Patent(s), including the right
to xxx for infringement and retain any recovery therefrom for
Sonus' development, sale, manufacture and commercialization of
[*]. Upon any such assignment, Sonus shall be responsible for
all costs and expenses related to the continued prosecution,
maintenance or enforcement of such assigned Sonus Patent(s) by
Sonus. Upon any such assignment granted to Sonus under this
Section, Sonus hereby agrees to grant to Nycomed, at no cost
to Nycomed, an exclusive, worldwide, irrevocable license
thereunder for all uses other than [*].
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
2.9 The patents and patent applications listed on Appendix 1.1 to
this Agreement are intended to include all U.S. and foreign
patents and patent applications owned or controlled by Sonus
that describe, claim, are directed to, or concern [*]
(including formulations of, and methods of making and/or
using, ultrasound contrast agents). The parties agree that any
such patent or patent application which has been omitted from
Appendix 1.1 shall be promptly added to Appendix 1.1 by
amendment, and that any patent or patent application which has
been incorrectly included on Appendix 1.1 shall be promptly
deleted from Appendix 1.1 by amendment.
3. ASSIGNMENT OF THE CHUGAI LICENSE AGREEMENT TO NYCOMED
3.1 In further consideration of the one-time payment to Sonus
defined in this Agreement and the warranties and
representations herein, Sonus hereby assigns to Nycomed all of
its right, title, ownership and interest to the Chugai License
Agreement, together with all rights, benefits, duties and
obligations thereunder, subject to the provisions of paragraph
3.2 of this Agreement.
3.2 Nycomed agrees to use its commercially reasonable best efforts
to obtain allowance of claims in Japanese Patent Application
05-506054, pursuant to the terms of the Chugai License
Agreement, by December 22, 2002. In the event that Nycomed
discontinues prosecution of Japanese Patent Application
05-506054 in Japan prior to the earlier of: (i) allowance of
claims thereunder by the Japanese Patent Office; (ii) final
decision from the Japanese Patent authorities that no claims
will be allowable; or (iii) December 22, 2002, then Nycomed
agrees to assume the obligation of Sonus under the Chugai
License Agreement to pay one million dollars ($1,000,000.00)
to Chugai pursuant to the terms of the Chugai License
Agreement. However, in the event that Nycomed continues to use
commercially reasonable best efforts to prosecute Japanese
Patent Application 05-506054 through the date of December 22,
2002, but does not obtain an allowance of a claim in that
application in accordance with the provisions of paragraph 3.2
of the Chugai License Agreement, Sonus shall be obligated to
pay the one million dollars ($1,000,000.00) to Chugai pursuant
to the terms of the Chugai License Agreement. Nycomed further
agrees that it shall keep Sonus reasonably informed of the
status of the prosecution and maintenance of the foregoing
application, for so long as Sonus has any contingent
obligations to repay any amount to Chugai pursuant to the
terms of the Chugai License Agreement.
3.3 Sonus shall be entitled to receive all accrued but unpaid
royalties through the Effective Date of this Agreement
pursuant to the Chugai License Agreement.
3.4 Upon request by Nycomed, Sonus shall reasonably cooperate and
assist Nycomed, in the preparation, prosecution, and
maintenance of the Japanese Patent Applications, including the
signature of documents to advance the prosecution of,
maintenance, or evidence the ownership of, the Japanese Patent
Applications. Nycomed shall reimburse Sonus for any out of
pocket costs that Sonus so incurs at Nycomed's request.
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
4. PAYMENT
4.1 In consideration of the assignment of the Sonus Patents and
the Chugai License Agreement, the transfer of Sonus assets
defined herein, and the warranties and representations made
herein, Nycomed shall pay Sonus a non-refundable payment of
six million five hundred thousand dollars ($6,500,000.00),
within five (5) days from the Effective Date of this Agreement
and in the manner set forth in paragraph 4.2 of this
Agreement.
4.2 Any and all payments made to Sonus under the terms and
conditions of this Agreement shall be made in United States
currency, and in the form of wire transfer to:
Bank: [*]
ABA: [*]
WFB Account: [*]
For further credit to: [*]
Name of: [*]
Attn: [*]
Phone: [*]
International wires:
Swift #: [*]
5. TERMINATION OF THE NYCOMED LICENSE AGREEMENT
5.1 The parties agree that the Nycomed License Agreement shall be
terminated concurrently upon the Effective Date of this
Agreement.
5.2 Sonus shall be entitled to receive all accrued but unpaid
royalties through the Effective Date of this Agreement
pursuant to the terms of Nycomed License Agreement, and
payable within sixty (60) days of the Effective Date.
5.3 Payment of any fees due Sonus, or its consultants in
connection with the Nycomed License Agreement, including, but
not limited to, legal fees shall be paid by Nycomed within
thirty (30) days of receipt of a properly documented invoice
or within thirty (30) days of the Effective Date for amounts
previously invoiced.
6. LIMITED LICENSE GRANT-BACK TO SONUS
6.1 As of the Effective Date of this Agreement, and concurrently
with the assignment and transfer of the Sonus Patents to
Nycomed, Nycomed grants to Sonus and its Affiliates a
worldwide, exclusive (even as to Nycomed), irrevocable,
fully-paid limited license (the "Limited License"), under the
Sonus Patents, to make, have made, use, sell, offer to sell,
export and import [*] only. Sonus shall have the right to copy
any of the formulation data, clinical data, and regulatory
data described in paragraph 2.1 and to
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
use any such data in connection with [*] only. The costs of
any copies of such data shall be at Sonus' expense.
6.2 As of the Effective Date of this Agreement, Nycomed grants
Sonus the right to sublicense any rights of the Limited
License granted in paragraph 6.1. If Sonus desires to enter
into any sublicense agreement with any Third Party pursuant to
this Section 6, Sonus agrees to provide prior written notice
to Nycomed at least ten (10) days before granting any such
sublicense. Sonus agrees that any sublicense granted by Sonus
pursuant to the terms and conditions of this Section 6 shall
include and be subject to the terms and conditions of this
Agreement.
6.3
(a) As of the Effective Date of this Agreement, solely with regard
to the specific patents and applications listed on Appendix
6.3 to this Agreement, [*] shall have the right to enforce
such patents (or a future patent issuing directly or
indirectly from any such application) against any [*] sold,
used or marketed as a [*], of a Third Party, [*] or any of its
Affiliates by initiating a lawsuit against such a party. [*]
agrees to join or be joined in any lawsuit against a Third
Party as a party plaintiff or otherwise as shall be necessary
to enable [*] to exercise this right, which shall be at [*]
expense. Even if not joined as a party plaintiff in such a
lawsuit against a Third Party, [*] agrees to provide
reasonable cooperation and to execute all documents necessary
to assist in the enforcement of said patents against any Third
Party, provided [*] reimburses [*] for the reasonable expense
of such cooperation. [*] agrees to notify [*], in writing, at
least ten (10) days before initiating any such lawsuit
(including, but not limited to, a patent infringement suit in
any U.S. district court) and to provide [*] with information
about the subject matter of the planned lawsuit, including the
patent to be asserted and the product or process that [*]
deems to be infringing. [*] shall not have the right to
initiate or threaten to initiate any lawsuit under any of the
patents listed in Appendix 6.3 (or future patents issuing from
any of the applications listed in Appendix 6.3) for any act of
infringement other than the manufacture, use, sale, offer for
sale, exportation or importation of a [*] sold, used or
marketed as a [*].
(b) As of the Effective Date of this Agreement, with regard to the
specific patents and applications listed on Appendix 6.3 to
this Agreement, [*] shall have the right to enforce such
patents (or a future patent issuing from any such application)
against any [*] sold, used or marketed as an [*], of a Third
Party, [*] or any of its Affiliates by initiating a lawsuit
against such a party. If requested by [*], [*] agrees to join
or be joined in any such lawsuit against a Third Party as a
party plaintiff or otherwise as shall be necessary to enable
[*] to exercise this right, which shall be at [*] expense.
Even if not joined as a party plaintiff in such a lawsuit
against a Third Party, [*] agrees to provide reasonable
cooperation and to execute all documents necessary to assist
the enforcement of said patents against any Third Party,
provided [*] reimburses [*] for the reasonable expense of such
cooperation. [*] shall not have the right to initiate or
threaten to initiate any lawsuit under any of the patents
listed in Appendix 6.3 (or future patents issuing from any of
the applications listed in
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EXHIBIT 10.49
Appendix 6.3) for any act of infringement other than the
manufacture, use, sale, offer for sale, exportation or
importation of an [*] sold, used or marketed as an [*].
6.4
(a) As of the Effective Date of this Agreement, with regard to all
of the Sonus Patents other than those listed in Appendix 6.3
to this Agreement, [*] shall have the right to enforce any
such patent (or a future patent issuing from any such
application) at its sole discretion, without consulting [*],
against any product or process of any Third Party, [*] or its
Affiliates, except that, solely with regard [*] or its
Affiliates (or permitted licensees under any of the Sonus
Patents listed in Appendix 6.3), [*] shall not have the right
to enforce any such patents against any [*] sold, used or
marketed as an [*]. If requested by [*],[*] agrees to join or
be joined in any such lawsuit against a Third Party as a party
plaintiff or otherwise as shall be necessary to enable [*] to
exercise this right, which shall be at [*] expense. Even if
not joined as a party plaintiff in such a lawsuit against a
Third Party, [*] agrees to provide reasonable cooperation and
to execute all documents necessary to assist the enforcement
of said patents against any Third Party, provided [*]
reimburses [*] for the reasonable expense of such cooperation.
Except as provided in paragraph 6.3 and this paragraph of this
Agreement, as of the Effective Date of this Agreement, [*]
shall have the sole right to xxx any Third Party for past
infringement of any of the Sonus Patents and to obtain damages
for such past infringement, including the right to obtain
damages for such past infringement that occurred before the
Effective Date of this Agreement.
(b) As of the Effective Date of this Agreement and thereafter,
Sonus shall not have any right to enforce any of the Sonus
Patents (including future patents issuing from applications
listed in the Sonus Patents) other than those patents
identified in Appendix 6.3 of this Agreement, pursuant to the
provisions of paragraph 6.4(a).
7. RETENTION OF OWNERSHIP OF INTELLECTUAL PROPERTY
7.1 Sonus and Nycomed hereby acknowledge and agree that other than
patents that may constitute Sonus Patents as defined herein,
the Chugai License Agreement, and the Limited License set
forth in Section 6, this Agreement does not convey or transfer
from one party to this Agreement to the other party, any
right, license, patent or patent application, or other right
held or owned by Sonus or Nycomed or that may be filed,
granted to, or acquired by Sonus or Nycomed after the
Effective Date of this Agreement. Moreover, this Agreement
does not obligate either Sonus or Nycomed to convey any
additional license or rights in the future.
8. CONFIDENTIALITY
8.1 Each party agrees that the terms of this Agreement and any
information provided by either party to the other hereunder,
including without limitation, the Chugai License Agreement,
shall remain confidential and shall not be disclosed to any
person or entity, except to a party's professional advisor,
without advance written permission of the other party,
provided that, either party in negotiation or business with a
Third
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EXHIBIT 10.49
Party concerning the sublicensing of patent rights pursuant to
this Agreement may disclose to such Third Party, under a
written confidentiality agreement, such terms of this
Agreement as are reasonably necessary in order to engage in
such negotiations or business, and further provided that
either party may make any filing of this Agreement, subject to
confidential treatment, required by law in any country. Each
party further agrees that it will not issue any press release
or publicity in regard to this Agreement without the advance
written permission of the other party. Advance written
permission will not be required when a party is ordered to
disclose information concerning the Agreement by a competent
tribunal, or to such disclosures as are required by law. Each
party agrees that to the extent that information is subject to
claims of attorney-client privilege, attorney work-product, or
any other similar privilege or immunity is disclosed to the
other pursuant to performance of this Agreement, such
disclosure is intended to further the parties common legal
interests and/or joint defense shall remain subject to such
privilege or immunity to the maximum extent permitted by law.
9. ENTIRE AGREEMENT; NO ORAL MODIFICATIONS; WAIVER
9.1 This Agreement contains the entire understanding and agreement
between Nycomed and Sonus with respect to the subject matter
hereof, and supersedes all prior oral or written
understandings and agreements relating thereto, including
without limitation, the Nycomed License Agreement. No change,
modification, extension or waiver of this Agreement, or any of
the provisions herein, shall be valid unless made in writing
and signed by duly authorized representatives of the parties.
Neither party shall be bound by any conditions, definitions,
warranties, understandings, or representations concerning the
subject matter hereof except as are (i) provided in this
Agreement, or (ii) duly set forth on or after the Effective
Date of this Agreement in a written instrument subscribed by
an authorized representative of the party to be bound thereby.
9.2 Each party has relied solely on its own evaluation of the
subject matter in deciding to enter into this Agreement, and
has not been induced to enter into this Agreement by any
statements, promises, or representations of the other party,
nor has it relied on any such statements, promises, or
representations.
9.3 No waiver by either party, whether express or implied, of any
provision of this Agreement, or of any breach or default
thereof, shall constitute a continuing waiver of such
provision or of any other provision of this Agreement. Either
party's acceptance of payments by the other under this
Agreement shall not be deemed a waiver of any violation of or
default under any of the provisions of this Agreement.
10. ASSIGNMENT
10.1 This Agreement may not be assigned or transferred by either
party without written consent of the other party, except that
either party may assign this Agreement to any of its
Affiliates, or to any successor by merger or sale of
substantially all of its business unit to which this Agreement
relates without the consent of the other party.
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EXHIBIT 10.49
Any attempted delegation or assignment not in accordance with
this Article shall be of no force or effect. This Agreement
shall inure to the benefit of and be binding upon the parties
hereto and their successors and permitted assigns.
11. TERM
11.1 This Agreement is effective as of the Effective Date. Unless
earlier terminated as provided in Section 12 herein, this
Agreement shall continue in effect until the expiration of the
last patent to expire among the Sonus Patents. As used in this
paragraph, "expiration" of a patent shall include irrevocable
lapse for failure to pay maintenance fees or the like, final
revocation by a national patent office and the exhaustion or
expiration of all appeals of such revocation, or a final
adjudication by a court of competent jurisdiction that all
claims of the patent are invalid or unenforceable and the
exhaustion or expiration of all appeals from said
adjudication.
12. DEFAULT AND TERMINATION
12.1 If either party breaches any of the material terms or
conditions of this Agreement, the party claiming such breach
may serve the alleged breaching party with a notice of breach
specifying the acts or omissions creating such alleged breach.
If the alleged breaching party fails to remedy said breach
within thirty (30) days of receipt of said notice, the other
party may terminate this Agreement by serving a notice of
termination, which notice shall be effective thirty (30) days
after dispatch. Notwithstanding the provisions of this
paragraph, the parties further agree that the assignment of
the Sonus Patents to Nycomed pursuant to this Agreement is
absolutely irrevocable, unless Nycomed failed to make the
one-time payment to Sonus that is described in paragraph 4.1
of this Agreement. The parties further agree that the payment
to Sonus described in paragraph 4.1 shall become irrevocable
and non-refundable upon the assignment to Nycomed of the Sonus
Patents.
12.2 In the event that either party files a petition in bankruptcy,
is adjudicated a bankrupt or files a petition or otherwise
seeks relief under or pursuant to any bankruptcy, insolvency
or reorganization statute or proceeding, or if a petition in
bankruptcy is filed against it or it becomes insolvent or
makes an assignment for the benefit of its creditors or a
custodian, receiver or trustee is appointed for it or a
substantial portion of its business or assets, the other party
shall have the right to terminate this Agreement forthwith
upon written notice, which notice shall be effective upon
dispatch.
12.3 No debtor-in-possession, assignee for the benefit of
creditors, custodian, receiver, trustee in bankruptcy, sheriff
or any other officer of the court or official charged with
taking over custody of a party's assets or business shall have
any right to continue this Agreement if this Agreement
terminates.
12.4 In the event that, notwithstanding the provisions of Section
10 hereof, pursuant to the U.S. Bankruptcy Code or any
amendment or successor thereto (the "Code"), a trustee in
bankruptcy of a party to this Agreement, or a party to this
Agreement as debtor-in-
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EXHIBIT 10.49
possession, is permitted to assume this Agreement and does so
and, thereafter, desires to assign this Agreement to a Third
Party, which assignment satisfies the requirements of the
Code, the trustee or debtor-in-possession, as the case may be,
shall notify the other party to this Agreement (the
"nonbankrupt party") of same in writing. Said notice shall set
forth the name and address of the proposed assignee, the
proposed consideration for the assignment and all other
relevant details thereof. The giving of such notice shall be
deemed to constitute the grant to the nonbankrupt party of an
option to have this Agreement assigned to it or to its
designee for such consideration, or its equivalent in money,
and upon such terms as are specified in the notice. The
aforesaid option may be exercised only by written notice by
the nonbankrupt party to the trustee or debtor-in-possession,
as the case may be, within fifteen (15) days of receipt of the
notice of the proposed transaction. If the nonbankrupt party
fails to accept the terms within the said exercise period, the
party giving notice may complete the assignment referred to in
its notice, but only if such assignment is to the entity named
in said notice and for the consideration and upon the terms
specified therein.
12.5 Nothing contained herein shall be deemed to preclude or impair
any rights that the non-bankrupt party may have as a creditor
in any bankruptcy proceeding.
13. RELATIONSHIP OF THE PARTIES
13.1 Nothing herein contained shall be construed to constitute the
parties hereto as partners or as joint venturers, or either as
agent of the other. Neither party shall take any action that
purports to bind the other.
14. SEVERABILITY
14.1 If any provision or any portion of any provision of this
Agreement shall be held to be void or unenforceable (or a
formal indication to that effect is communicated by any
competent authority), the parties shall in good faith
negotiate valid substitute provisions which reflect, as
closely as reasonably practicable, their commercial intentions
as set out herein. Subject thereto, the remaining provisions
of this Agreement and the remaining portion of any provision
held void or unenforceable in part shall continue in full
force and effect.
15. CONSTRUCTION
15.1 This Agreement shall be construed without regard to any
presumption or other rule requiring construction against the
party causing this Agreement to be drafted. If any words or
phrases in this Agreement shall have been stricken out or
otherwise eliminated, whether or not any other words or
phrases have been added, this Agreement shall be construed as
if those words or phrases were never included in this
Agreement, and no implication or inference shall be drawn from
the fact that the words or phrases were so stricken out or
otherwise eliminated.
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
16. HEADINGS
16.1 The captions and paragraph headings appearing in this
Agreement are inserted for convenience and reference only and
in no way define, limit or describe the scope or intent of
this Agreement or any of the provisions thereof.
17. PATENT MARKING
17.1 Sonus (and any sublicensee of Sonus under the Limited License)
shall place, or shall cause the manufacturer to place,
appropriate markings on an exposed surface of each [*] made or
sold hereunder or on the packaging for such [*], in accordance
with 35 U.S.C. Section 287 in the U.S. The content, form,
size, location and language used in such markings shall be in
accordance with the laws and practices of the country where
such markings are required.
18. REPRESENTATIONS AND WARRANTIES OF SONUS
Sonus hereby represents and warrants that:
18.1 Sonus has the full right, power, and corporate authority to
enter into this Agreement and to make the promises and grant
the assignments and transfers set forth herein.
18.2 Sonus is the sole owner of all right, title, and interest in
and to the Sonus Patents, has not mortgaged or hypothecated
the Sonus Patents, is not party to any current license to the
Sonus Patents other than the license agreements that are
attached or referred to in this Agreement and to the best of
its knowledge and belief has not taken any action to impair
the validity or enforceability of the Sonus Patents. Sonus
further represents and warrants that it has no license
agreements or other agreements or obligations with or to Third
Parties or any other binding commitments, obligations, liens,
mortgages, or encumbrances of any kind or nature, other than
the license agreements that are attached or referred to in
this Agreement, that may diminish, limit, or impair (i) the
rights granted by Sonus to Nycomed in this Agreement or (ii)
the ability of Sonus to perform its covenants and obligations
under this Agreement.
18.3 Sonus will not divest itself of any rights now or hereafter
possessed when the effect of doing so may diminish limit, or
impair (i) the rights granted by Sonus to Nycomed in this
Agreement or (ii) the ability of Sonus to perform its
covenants and obligations under this Agreement.
18.4 Other than claims asserted against Sonus in the DuPont
Litigation, Sonus is not aware of any actual or threatened
litigation or claim by any party against Sonus or any of its
Affiliates relating to any Sonus Ultrasound Contrast Product.
In the event that Sonus breaches this paragraph 18.4, Sonus
agrees to indemnify Nycomed with respect to the full value of
any damages ultimately realized in the litigation or
settlement (not to be made without Sonus' reasonable consent)
of any such actual or potential claim relating to any Sonus
Ultrasound Contrast Product.
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
18.5 Other than the DuPont Litigation, as defined herein, United
States patent interferences No. 103,880 (Xxxxxxxxx et al. v.
Quay x. Xxxxxxxxx et al), No. 103,881 (Yan et al. v. Quay x.
Xxxxxxxxx et al.), and No. 104,428 (Quay x. Xxxxxx et al.),
and oppositions against Sonus patents or applications
including oppositions by Schering A.G. and by Alliance
Pharmaceuticals against Sonus' Australian patent 679,428, and
oppositions by DuPont Imaging, Accusphere Inc. and Xxxxxx
against Sonus' European patent 605,477, Sonus is not aware of
any other present litigations, interferences, reexaminations,
reissue or opposition proceedings involving any of the Sonus
Patents.
18.6 Sonus is free to assign the Chugai License Agreement to
Nycomed in connection with this transfer of substantially all
of the assets relating to Sonus Ultrasound Contrast Agent
business unit without causing a breach of the Chugai License
Agreement. Sonus further represents and warrants that the
Chugai License Agreement is in full force and effect, that it
is not in breach of the Chugai Agreement, and that to the best
of its knowledge no event of breach has occurred or been
alleged by the parties thereto.
18.7 To the best of its knowledge, information and belief after due
and diligent inquiry, the patents and patent applications
listed on Appendix 1.1 to this Agreement are all U.S. and
foreign patents and patent applications owned or controlled by
Sonus that describe, claims, are directed to, or concern [*]
(including formulations of, and methods of making and/or
using, ultrasound contrast agents).
19. REPRESENTATIONS AND WARRANTIES OF NYCOMED
Nycomed hereby represents and warrants that:
19.1 Nycomed has the full right, power, and corporate authority to
enter into this Agreement and to make the promises set forth
herein.
19.2 Nycomed is not a party to any other agreement the terms of
which (i) conflict with the covenants and obligations of
Nycomed under this Agreement or the rights granted by Nycomed
to Sonus under this Agreement or (ii) diminish, limit or
impair the rights granted by Nycomed to Sonus in this
Agreement or the ability of Nycomed to perform its covenants
and obligations under this Agreement.
20. TECHNICAL ASSISTANCE
20.1 Sonus agrees to provide at the request of Nycomed technical
assistance of Sonus employees relating to the formulation
data, clinical data and regulatory data ( to the extent such
expertise exists at the time of the request) pertaining to
Sonus Ultrasound Contrast Products. Such technical assistance
shall not exceed one hundred (100) hours without the consent
of Sonus, and shall be reimbursed at the rate of three hundred
dollars ($300) per hour. For the sake of clarity, Technical
Assistance shall not include any time spent transferring the
aforementioned data to Nycomed as part of this Agreement.
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
21. CHOICE OF LAW; CHOICE OF FORUM
21.1 This Agreement shall be construed and interpreted in
accordance with the laws of the State of Delaware without
reference to its choice of law principles. As provided in
Section 22 of this Agreement, any dispute between the parties
related to or arising out of this Agreement, the parties'
relationship created hereby, and/or the negotiations for and
entry into this Agreement including any dispute concerning its
conclusion, binding effect, amendment, coverage, or
termination, shall be submitted to and resolved by
arbitration. If, however, any such dispute is not subject to
arbitration under Section 22 of this Agreement, the state and
federal courts located in New York County, New York shall have
exclusive jurisdiction of such dispute. Said courts shall also
have exclusive jurisdiction of any action to compel
arbitration under this Agreement, incident to arbitration
under this Agreement, or to enter or set aside an arbitration
award. The parties expressly submit to the personal
jurisdiction of such courts for any action described in this
Section 21, agree that such courts provide a convenient forum
for any such action, and waive any objections or challenges to
venue.
22. ARBITRATION
22.1 Subject to the mediation requirements of paragraph 22.2 below,
all disputes between the parties related to or arising out of
this Agreement, the parties' relationship created hereby,
and/or the negotiations for and entry into this Agreement,
including any dispute concerning its conclusion, binding
effect, amendment, coverage, or termination, shall be
resolved, to the exclusion of the ordinary courts, by a
three-person arbitral tribunal composed of one arbitrator
appointed by each party and a third arbitrator, who shall be a
retired judge of a U.S. federal or state trial or appeal court
of record, selected by the arbitrators appointed by the
parties. Arbitration shall proceed in accordance with the CPR
Rules for Non-Administered Arbitration of Patent and Trade
Secret Disputes in effect on the day of the Closing of this
Agreement. The decision of the arbitral tribunal shall be
final, and the parties waive all challenge of the award. The
venue of any such proceeding shall be New York County, New
York. All proceedings shall be conducted in the English
language.
22.2 If either party desires to commence arbitration pursuant to
paragraph 22.1 above, prior to doing so it shall so notify the
other party in writing and simultaneously request an internal
mediation proceeding between the parties ("Mediation
Request"). The Mediation Request shall not constitute a notice
of arbitration, nor serve to commence arbitration proceedings
under paragraph 22.1 above. Within 7 business days of service
of the Mediation Request, each party shall (i) designate a
senior member of its management, at the level of at least
executive vice president or division chief executive, and with
authority to settle the dispute (subject to approval of a
settlement by the party's board if necessary), to participate
in the mediation as its management representative, and (ii)
submit to the other party a confidential summary of its
position, in letter form not to exceed 5 pages in length,
which shall be provided to that other party's management
representative. Within 14 business days thereafter, the
management representatives shall meet with each other in
person to attempt in
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
good faith to resolve the dispute. If a party desires to have
counsel also attend such meeting, it shall notify the other
party at least 5 business days in advance. The meeting shall
be held in London, England, if the Mediation Request is served
by Sonus, and in Seattle, Washington, if the Mediation Request
is served by Nycomed. If the parties are unable to resolve the
dispute within 7 business days following the meeting, either
party may commence arbitration under paragraph 22.1 above. A
party that refuses or fails to participate in the mediation
process shall not initiate arbitration proceedings until such
time as it so participates, but the other party shall be free
to initiate arbitration proceedings (and the non-participating
party shall respond to the commencement of arbitration in
accordance with the arbitration rules specified in paragraph
22.1).
23. NOTICES
23.1 All reports, approvals, requests, demands and notices required
or permitted by this Agreement to be given to a party
(hereafter, "Notices") shall be in writing. Notices shall be
hand delivered, sent by certified or registered mail, return
receipt requested, or sent via a reputable private express
service which requires the addressee to acknowledge receipt
thereof. Notices may also be transmitted by fax, provided that
a confirmation copy is also sent by one of the above methods.
Except as otherwise provided in this Agreements, Notices shall
be effective upon dispatch.
23.2 Notices shall be sent to the party concerned as follows (or at
such other address as a party may specify by notice to the
other):
As to Nycomed:
Nycomed Amersham Imaging
Xxxxxxxx Xxxxx
Xxxxxx Xxxxxxxx
Xxxxxxxxxxxxxxx XX0 0XX
XXXXXXX
Telefax: x00 0000 000000
Attn: Group Legal Advisor and Corporate Secretary
with a copy to-
Xxxxxxx X. XxXxxxx, Esq.
Xxxxxx & Xxxxxx
0 Xxxxxxxx
Xxx Xxxx, XX 00000-0000
Telefax: (000) 000-0000
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
As to Sonus:
Sonus Pharmaceuticals, Inc.
00000 00xx Xxxxxx, X.X., Xxxxx 000
Xxxxxxx, Xxxxxxxxxx 00000
Telefax: (000) 000-0000
Attention: President
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EXHIBIT 10.49
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed by its duly authorized representative as of the day and year first
above written.
NYCOMED IMAGING AS SONUS PHARMACEUTICALS, INC.
By: /s/ Xxxx Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxxxx
------------------ ----------------------
Xxxx Xxxxxxxx Xxxxxxx X. Xxxxxxx
Director President and CEO
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
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EXHIBIT 10.49
[Each of the exhibits to, and schedules delivered in connection with, this
exhibit have been omitted pursuant to Item 601 of Regulation S-K. Sonus agrees
to furnish supplementally to the Commission a copy of any such exhibit or
schedule upon request.]
* Omitted pursuant to Rule 24b-2 and filed separately with the Commission
CONFIDENTIAL AND PROPRIETARY
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