CONFIDENTIAL
Exhibit 10.20.2
CONFIDENTIAL TREATMENT
GTC Biotherapeutics, Inc. has requested that
the marked portions of this document be accorded
confidential treatment pursuant to Rule 24b-2
promulgated under the Securities Exchange Act
CONTRIBUTION AND LICENSE AGREEMENT
BETWEEN
GTC BIOTHERAPEUTICS, INC.
AND
TAURUS hSA LLC
CONTRIBUTION AND LICENSE AGREEMENT
THIS CONTRIBUTION AND LICENSE AGREEMENT (this "AGREEMENT") is dated as of
December 20, 2002 and effective as of January 1, 2003 (the "EFFECTIVE DATE"),
between GTC Biotherapeutics, Inc., a Massachusetts corporation having a place of
business at 000 Xxxxxxxx Xxxxxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000, X.X.X.
("GTC"), and Taurus hSA LLC, a Delaware limited liability company having a place
of business at 000 Xxxxxxxx Xxxxxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000,
X.X.X. ("TAURUS"). GTC and Taurus each shall be referred to individually as a
"PARTY" and collectively as the "PARTIES").
RECITALS
WHEREAS, GTC has substantial programs and interest in the development of
transgenic animals for the production of proteins, peptides and polypeptides in
the milk of such animals for use as Biopharmaceuticals (as defined below).
WHEREAS, Taurus has been formed by GTC and Fresenius Kabi Holding, Inc.
("FRESENIUS HOLDING") pursuant to the LLC Agreement (as defined below) to pursue
activities in the Field (as defined below).
WHEREAS, GTC wishes to assign to Taurus certain patent rights and other
intellectual property and to license to Taurus certain other patent rights and
other intellectual property in order to grant Taurus the exclusive right, as
between GTC and Taurus, to act within the Field, all subject to the terms and
conditions of this Agreement.
WHEREAS, Taurus wishes to accept such assignments and licenses for such
purpose.
NOW, THEREFORE the Parties hereby agree as follows:
I. DEFINITIONS
1.1 "ACT" shall mean Advanced Cell Technology, Inc.
1.2 "ACT AGREEMENT" shall mean the June 8, 1999 Exclusive Development
and License Agreement between ACT and GTC.
1.3 "AFFILIATE" shall mean any partnership, limited liability company,
corporation, trust or other entity or association, directly or indirectly,
through one or more intermediaries, controlling, controlled by, or under common
control with, a Party. The term "control" means the right to exercise, directly
or indirectly, more than fifty percent (50%) of the voting rights attributable
to the controlled corporation, limited liability company, partnership, trust or
other entity or association, or the power, directly or indirectly, to direct or
cause the direction of the management or policies of such controlled entity.
"GTC AFFILIATE" shall mean such an Affiliate of GTC. "TAURUS AFFILIATE" shall
mean such an Affiliate of Taurus.
1.4 "ASSIGNED CATTLE" shall mean all Transgenic rhSA Cattle born or IN
UTERO as of the Effective Date and owned by GTC with the right to assign as
contemplated by this Agreement
under any Third Party agreements to which GTC may be a party and according to
all applicable laws, rules, procedures and regulations, including, without
limitation, the rules and procedures of the Association for Assessment of
Laboratory Animal Care (AALAC), the United States National Institutes of Health
and the Institutional Animal Care and Use Committees (IACUC).
1.5 "ASSIGNED GTC IMPROVEMENTS" shall mean Improvements that are related
solely to the Field and that are conceived, created, devised, reduced to
practice or acquired during the Term by or on behalf of GTC or any GTC Affiliate
(except for Taurus) in the course of providing services to Taurus pursuant to a
Service Arrangement with an obligation to assign such Improvement to Taurus,
along with all Improvement Patents and Know How relating to such Improvements,
all only to the extent to which GTC has the right to assign such Improvement,
Improvement Patents or Know How to Taurus.
1.6 "ASSIGNED RIGHTS AND ASSETS" shall mean the GTC rhSA Patent Rights,
GTC rhSA Know How, Assigned Cattle, rhSA Material, Assigned GTC Improvements,
and GTC's interest in the Joint rhSA Improvements.
1.7 "BIOPHARMACEUTICAL" shall mean any medicinal drug, therapeutic,
vaccine or any medically useful composition whose origin, synthesis, or
manufacture involves the use of microorganisms, recombinant animals (including,
without limitation, chimeric or transgenic animals), nuclear transfer, or cell
culture techniques.
1.8 "BUSINESS DAY" shall mean any day on which the banks are open for
commercial banking business in the Commonwealth of Massachusetts.
1.9 "CATTLE PATENT RIGHTS" shall mean all Patent Rights licensed (with
the right to sublicense) to GTC and its Pharming Agreement Affiliates pursuant
to the Pharming Agreement, including, without limitation, the Patent Rights set
forth on EXHIBIT A attached hereto.
1.10 "CATTLE PRODUCT" shall mean any product, composition or substance
the manufacture, use, or sale of which would, absent the license granted to
Taurus under Section 2.2(b) hereto, infringe one or more valid claims of the
Cattle Patent Rights.
1.11 "CATTLE PRODUCT NET SALES" shall mean the gross amounts received on
the sale of a Cattle Product to a Third Party or a Taurus Pharming Agreement
Affiliate by or on behalf of Taurus or a Taurus Cattle Sublicensee, less the
following reasonable amounts: (a) customary trade, quantity or cash discounts or
rebates allowed and actually taken; (b) amounts rebated, refunded or credited
for rejected or returned Cattle Products or because of retroactive price
reductions, rebates or chargebacks; (c) government mandated rebates and discount
programs; (d) sales, use, turnover, excise taxes, or other governmental charges
levied on or measured by sales, but not franchise or income taxes; and (e)
customs duties, transportation, freight, shipping and handling charges, and
insurance costs on shipments to customers. Transfer of a Cattle Product by
Taurus to a Taurus Cattle Sublicensee for resale shall not be considered a sale.
Neither funding for research nor milestone payments shall be considered a Net
Sale.
In the case of a Combination Product, Cattle Product Net Sales shall mean
the gross amount received by Taurus or a Cattle Rights Sublicensee on sales of
the Combination Product less the deductions set forth above, multiplied by a
proration factor that is determined as follows:
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(i) if all components of the Combination Product were sold separately during the
same or immediately preceding calendar quarter, the proration factor shall be
determined by the formula [A / (A+B)], where A is the aggregate gross sales
price of all Cattle Product components during such period when sold separately
from the other active components, and B is the aggregate gross sales price of
the other active components during such period when sold separately from the
Cattle Product components; or (ii) if all components of the Combination Product
were not sold separately during the same or immediately preceding calendar
quarter, the proration factor shall be determined by the formula [C / (C+D)],
where C is the aggregate fully absorbed cost of the Cattle Product components
during the prior calendar quarter and D is the aggregate fully absorbed cost of
the other active components during the prior calendar quarter, with such costs
being determined in accordance with generally accepted accounting principles. As
used herein, "COMBINATION PRODUCT" means a product that contains a Cattle
Product as one component and at least one other active component.
1.12 "CATTLE RIGHTS SUBLICENSEE" shall mean a Person to whom Taurus has
granted a further sublicense to the sublicense granted hereunder to Taurus under
the Cattle Patent Rights in accordance with Section 2.4 hereto.
1.13 "CONFIDENTIAL INFORMATION" shall have the meaning provided in
Section 8.1 below.
1.14 "FIELD" shall mean the development, manufacture, use, marketing,
sale and overall commercialization of rhSA or any Biopharmaceutical derived from
or utilizing rhSA (but excluding fusion proteins) for therapeutic and
non-therapeutic uses.
1.15 "GTC LICENSE AGREEMENTS" shall mean the Pharming Agreement and the
Pharming Biogen Agreement.
1.16 "GTC PLATFORM KNOW HOW" shall mean any Know How owned by GTC as of
the Effective Date that is necessary for the practice of the GTC Platform Patent
Rights in the Field but that also has applications for other purposes (i.e.,
they do not relate solely to the Field), including, but not limited to, GTC's
proprietary rhSA purification technology.
1.17 "GTC PLATFORM PATENT RIGHTS" shall mean any Patent Rights owned by
GTC as of the Effective Date that are necessary for the Field but also have
applications for other purposes (i.e., they do not relate solely to the Field),
including, without limitation, the Patent Rights set forth on EXHIBIT B attached
hereto.
1.18 "GTC PLATFORM RIGHTS" shall mean the GTC Platform Patent Rights and
GTC Platform Know How.
1.19 "GTC rhSA KNOW HOW" shall mean any Know How owned by GTC as of the
Effective Date that is necessary to practice the GTC rhSA Patent Rights.
1.20 "GTC rhSA PATENT RIGHTS" shall mean any Patent Rights owned by GTC
as of the Effective Date that relate solely to the Field, including, without
limitation, the Patent Rights set forth on EXHIBIT C attached hereto.
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1.21 "IMPROVEMENT PATENT" shall mean any Patent Rights relating to or
claiming any Improvement(s).
1.22 "IMPROVEMENTS PRODUCT" shall mean any product, device, service or
system incorporating or utilizing any Improvement.
1.23 "IMPROVEMENTS" shall mean any improvement, enhancement or
modification of a product or process described in any Patent Right assigned or
licensed hereunder as of the Effective Date.
1.24 "JOINT PLATFORM IMPROVEMENTS" shall mean any Improvements that are
conceived, created, devised, reduced to practice or acquired during the Term
jointly by or on behalf of GTC and/or any GTC Affiliate, on the one hand, and
Taurus and/or any Taurus Affiliate, on the other hand that are necessary for the
Field but also have applications for other purposes (i.e., they do not relate
solely to the Field), along with all Improvement Patents and Know How relating
to such Improvements, all only to the extent to which each Party has the right
to license such Improvement, Improvement Patents or Know How to the other Party.
1.25 "JOINT rhSA IMPROVEMENTS" shall mean any Improvements that are
conceived, created, devised, reduced to practice or acquired during the Term
jointly by or on behalf of GTC and/or any GTC Affiliate, on the one hand, and
Taurus and/or any Taurus Affiliate, on the other hand that relate solely to the
Field, along with all Improvement Patents and Know How relating to such
Improvements, all only to the extent to which GTC has the right to assign such
Improvement, Improvement Patents or Know How to Taurus.
1.26 "KNOW HOW" shall mean inventions (whether or not patentable), trade
secrets, process and product technology, technical information, data, trade
secrets, design specifications, know-how and other intellectual property rights.
1.27 "LICENSED GTC IMPROVEMENTS" shall mean all Improvements that are
conceived, created, devised, reduced to practice or acquired during the Term
solely or jointly by or on behalf of GTC or any GTC Affiliate (except for
Taurus), but apart from jointly with Taurus or a Taurus Affiliate, other than
Assigned GTC Improvements, along with all Improvement Patents and Know How
relating to such Improvements, all only to the extent to which GTC has the right
to license such Improvement, Improvement Patents or Know How to Taurus.
1.28 "LICENSED PRODUCTS" shall mean any product, the manufacture, use, or
sale of which would, absent the licenses granted hereunder infringe one or more
valid claims of the Patent Rights licensed to Taurus hereunder.
1.29 "LLC AGREEMENT" shall mean the Limited Liability Company Agreement
of Taurus LLC entered into between GTC and Fresenius Holding and effective on
the Effective Date.
1.30 "PATENT RIGHTS" shall mean any patents, patent applications,
provisional applications and any utility patents resulting therefrom,
certificates of invention, or applications for certificates of invention,
together with all extensions, registrations, confirmations, reissues, divisions,
continuations or continuations-in-part, to the extent the claims in such
continuations-
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in-part are directed to subject matter specifically described in the original
application or patent, re-examinations or renewals thereof, and any
corresponding foreign filings claiming priority from any of the foregoing and
all patents issuing from any of the foregoing.
1.31 "PHARMING" shall mean Pharming Group N.V. and Pharming Intellectual
Property B.V.
1.32 "PHARMING AGREMENT" shall mean the June 24, 2002 License Agreement
between GTC and Pharming, which has been separately provided to Taurus in
redacted form to protect certain confidential information.
1.33 "PHARMING AGREEMENT AFFILIATE" shall mean an individual, trust,
business trust, joint venture, partnership, subsidiary, corporation, association
or any other entity which (directly or indirectly) is controlled by, controls or
is under common control with a party. For the purposes of this definition, the
term "control" (including, with correlative meanings, the terms "controlled by"
and "under common control with") as used with respect to any such party, shall
mean the possession (directly or indirectly) of fifty percent (50%) or more of
the outstanding voting securities of a corporation or comparable equity interest
in any other type of entity, or, where the laws of the jurisdiction in which
such entity operates prohibit ownership by such a party of fifty percent (50%),
such ownership shall be at the maximum level of ownership allowed by such
jurisdiction.
1.34 "PHARMING BIOGEN AGREEMENT" shall mean the June 24, 2002 Amended and
Restated License Agreement between GTC and Pharming which has been separately
provided to Taurus in redacted form to protect certain confidential information.
1.35 "PHASE III CLINICAL TRIAL" shall mean a human clinical trial in any
country the results of which could be used as pivotal source of data needed to
establish the efficacy of a pharmaceutical product thereby serving as a basis
for the approval of a marketing application submitted to the United States Food
and Drug Administration or the appropriate regulatory authority of any other
country.
1.36 "PROMOTER KNOW HOW" shall mean the Know How licensed (with the right
to sublicense) to GTC by Pharming pursuant to the Pharming Biogen Agreement.
1.37 "PROMOTER PATENT RIGHTS" shall mean the Patent Rights licensed (with
the right to sublicense) to GTC by Pharming pursuant to the Pharming Biogen
Agreement, including, without limitation, the Patent Rights set forth on
EXHIBIT D attached hereto.
1.38 "PROMOTER PRODUCT" shall mean any product, the manufacture, use, or
sale of which utilizes any Promoter Know How or would, absent the license
granted to Taurus under Section 2.2(c) hereto, infringe a valid claim of any
Promoter Patent Right.
1.39 "PROMOTER REVENUE" shall mean the gross receipts of Taurus from the
sale of Promoter Products to any person or entity which is not Taurus, provided
that gross receipts shall not include amounts repaid or credited for rejection
or return of Promoter Products, custom duties and charges, sales or other excise
taxes or other governmental charges levied on or measured by sales.
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1.40 "PROMOTER RIGHTS" shall mean the Promoter Patent Rights and the
Promoter Know How.
1.41 "rhSA" shall mean recombinant human albumin (sometimes commonly
referred to as "human serum albumin") derived from the milk of transgenic
cattle.
1.42 "rhSA MATERIAL" shall mean all rhSA, either in the milk of
Transgenic rhSA Cattle or that has been purified from such milk, that is owned
by GTC as of the Effective Date.
1.43 "rhSA RIGHTS" shall mean the Assigned Rights and Assets (assigned
pursuant to Section 2.1 hereto) and the rights licensed to Taurus pursuant to
Section 2.2 hereto.
1.44 "SERVICE ARRANGEMENT" shall have the same meaning as in the LLC
Agreement.
1.45 "SIGMA" shall mean Sigma-Xxxxxxx Fine Chemicals, a division of
Sigma-Xxxxxxx, Inc.
1.46 "TAURUS hSA-RELATED REVENUE" shall mean all sales revenues, royalty
income, upfront, milestone, or license payments and other consideration obtained
by Taurus from Third Parties (which, for the purposes of this definition, shall
include Fresenius AG), to the extent that such revenues, income, payments and
other consideration are related to the production, development, use,
commercialization and/or sales of Cattle Products.
1.47 "TAURUS IMPROVEMENTS" shall mean all Improvements that are
conceived, created, devised, reduced to practice or acquired during the Term by
or on behalf of Taurus or any Taurus Affiliate (except for GTC), but apart from
jointly with GTC or a GTC Affiliate and not including Assigned GTC Improvements
or Licensed GTC Improvements, along with all Improvement Patents and Know How
relating to such Improvements, all only to the extent to which Taurus has the
right to license such Improvement, Improvement Patents or Know How to GTC.
1.48 "TAURUS PATENT RIGHTS" shall mean any Patent Rights assigned to
Taurus hereunder and any Improvement Patents included as part of the Taurus
Improvements or Joint rhSA Improvements.
1.49 "THIRD PARTY" shall mean any entity other than GTC or Taurus or
their respective Affiliates.
1.50 "THIRD PARTY rhSA MATERIAL" shall mean all rhSA, either in the milk
of Transgenic rhSA Cattle or that has been purified from such milk, that is
owned by a Third Party, but controlled by GTC, with the ability to deliver such
material to Taurus as of the Effective Date.
1.51 "TRANSGENIC rhSA CATTLE" shall mean, collectively, all cattle into
which genetic material comprising a milk specific promoter and coding sequences
for the heterologous human protein human albumin have been transferred, such
that the host acquires the genetic traits of the transferred genes in its
chromosomal composition and/or expresses the heterologous transgene protein rhSA
in its milk.
1.52 "TRANSOVA" shall mean Pro-Edge, LP (d/b/a Trans Ova Genetics).
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1.53 "TRANSOVA AGREEMENT" shall mean the February 25, 1997 Collaboration
Agreement between GTC and TransOva, which has been separately provided to
Taurus.
II. ASSIGNMENTS, LICENSE GRANTS AND RELATED PROVISIONS
2.1 ASSIGNMENT AND DELIVERY
(a) GENERAL. Subject to the terms and conditions of this
Agreement, effective as of the Effective Date GTC hereby assigns, transfers,
conveys and delivers and, in the case of Assigned GTC Improvements and Joint
rhSA Improvements, shall assign, transfer, convey and deliver to Taurus within
thirty (30) days of disclosing said Assigned GTC Improvements and Joint rhSA
Improvements, and Taurus hereby takes from GTC, GTC's entire right, title and
interest in and to the Assigned Rights and Assets, all to be held and enjoyed by
Taurus, its successors and assigns as fully and entirely as the same would have
been held and enjoyed by GTC if the assignment and sale hereunder had not been
made. With respect to any Patent Rights included within the Assigned Rights and
Assets, the assignment pursuant to this Section 2.1(a) shall include the right
to xxx for any past infringement of such Assigned Rights and Assets.
(b) INSTRUMENTS OF TRANSFER. On and as of the Effective Date, GTC
shall deliver to Taurus good and sufficient instruments of transfer (including,
without limitation the Assignment and Assumption Agreement attached hereto at
EXHIBIT E (the "ASSIGNMENT AND ASSUMPTION AGREEMENT) and the assignments of
Patent Rights in the forms attached at EXHIBIT F ("ASSIGNMENT OF PATENTS"), each
duly executed by GTC, which will effectively vest in Taurus good title to all
the Assigned Rights and Assets free and clear of all liens, restrictions and
encumbrances. Taurus shall file any such delivered instrument of transfer, as
applicable, with the United States Patent and Trademark Office or the
appropriate counterpart office or offices in other countries worldwide. GTC
shall take all other actions reasonably requested by Taurus to evidence or
perfect Taurus's rights in the Assigned Rights and Assets.
(c) DELIVERY OF KNOW HOW AND MATERIALS. GTC shall deliver to
Taurus any tangible GTC rhSA Know How and the rhSA Material, within five (5)
Business Days after the Effective Date and shall deliver any Third Party
Materials to Taurus as soon as reasonably practicable after the Effective Date,
subject to any restrictions, including required consents, under any agreements
with Third Parties relating to such Third Party Materials.
(d) ASSUMPTION OF RESPONSIBILITY FOR CATTLE. Taurus shall assume
responsibility for the storage and maintenance of the Assigned Cattle, which are
currently being maintained by TransOva at TransOva's facility in [****(*)], or
any other Transgenic rhSA Cattle assigned by GTC to Taurus after the Effective
Date pursuant to a Service Arrangement or otherwise. Taurus may: (i) contract
directly with TransOva for such storage and maintenance; (ii) pay GTC such that
GTC can pay to have TransOva continue to provide such storage and maintenance
pursuant to GTC and TransOva's relationship; or (iii) contract with a Third
Party
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for such storage and maintenance. In the case of clause (iii), Taurus shall be
fully responsible for any necessary transfer of the Assigned Cattle.
2.2 LICENSES TO TAURUS
(a) GTC PLATFORM RIGHTS, LICENSED GTC IMPROVEMENTS AND JOINT
PLATFORM IMPROVEMENTS. Subject to the terms and conditions of this Agreement,
GTC hereby grants to Taurus an exclusive worldwide, royalty-free license, with
the right to grant sublicenses (subject to Section 2.4 below), under the GTC
Platform Rights, Licensed GTC Improvements and GTC's rights in the Joint
Platform Improvements to make, have made, use, sell, offer for sale, import and
export Licensed Products in the Field, subject only to the rights granted to
Pharming, TransOva and [****(*)], as described on EXHIBIT G hereto.
(b) CATTLE RIGHTS.
(i) Subject to the terms and conditions of this Agreement,
GTC hereby grants to Taurus a non-exclusive, worldwide license, with the right
to grant sublicenses (subject to Sections 2.2(b)(ii), 2.2(b)(iii) and 2.4
below), under the Cattle Patent Rights to make, have made, use, sell, offer for
sale, import and export Cattle Products in the Field.
(ii) As long as Taurus meets the definition of a Pharming
Agreement Affiliate of GTC, Taurus shall have the right to grant sublicenses
under the license to the Cattle Patent Rights granted under Section 2.2(b)(i):
(1) to clients and/or business partners, as necessary
to produce, use, sell, offer for sale, import and/or export transgenic or
chimeric cattle for the production, expression or development of Cattle Products
for such clients and/or business partners. Such Cattle Rights Sublicensees
shall: (A) have the right to use and breed such chimeric and transgenic animals
for the purposes of making, using, selling, offering for sale, importing or
exporting Cattle Products; (B) be subject to the limitations of Taurus
hereunder; and (C) have no right to grant further sublicenses.
(2) for research purposes or experimental purposes
only, but in no case shall a Cattle Rights Sublicensee for such purposes have
the right to (i) commercialize or manufacture commercial quantities of any
transgenic or chimeric animal or products thereof, or (ii) grant further
sublicenses to the technology.
(iii) If, after the Effective Date, Taurus no longer fits the
definition of a Pharming Agreement Affiliate of GTC, then Taurus shall no longer
have the right to grant sublicenses under the Cattle Patent Rights, and any
sublicenses previously granted by Taurus to a Cattle Rights Sublicensee, along
with any rights and obligations of Taurus thereunder, shall automatically be
assigned from Taurus to GTC, provided that GTC's obligations to any such Cattle
Rights Sublicensee shall be no greater than its obligations to Taurus under this
Agreement.
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(c) PROMOTER RIGHTS. Subject to the terms and conditions of this
Agreement, GTC hereby grants Taurus a non-exclusive, worldwide license, without
the right to grant sublicenses, under the Promoter Rights to make, have made,
use and sell Promoter Products in the Field.
2.3 LICENSE TO GTC. Subject to the terms and conditions of this
Agreement, Taurus hereby grants to GTC an exclusive, worldwide, perpetual,
fully-paid, royalty-free license with the right to grant sublicenses (subject to
Section 2.4 below) under any Taurus Improvement, Assigned GTC Improvement, Joint
Platform Improvement or Joint rhSA Improvement, to the extent any such
Improvement has uses outside the Field, for all such uses outside of the Field.
Taurus shall also provide GTC with access to any Know How included as part of
any such Improvement.
2.4 SUBLICENSES
(a) Each Party shall provide the other Party with a notification
of any subsequent sublicense agreement entered into pursuant to this Agreement
within fifteen (15) days of the execution thereof, which such notification shall
be treated as Confidential Information of the providing Party. Such notification
shall include a copy of such subsequent sublicense agreement but may redact out
pertinent financial information, or figures, or confidential business plans
thereof.
(a) Any sublicensee granted a sublicense hereunder shall be
subject to the limitations hereunder of the Party granting such sublicense.
(b) Each Party shall take all reasonable steps to enforce a breach
by a sublicensee of a sublicense to the rights granted hereunder.
(c) Any sublicense agreement entered into by Taurus shall provide
that upon the termination of this Agreement:
(i) any sublicense to the GTC Platform Rights shall
terminate or convert into a license directly between such sublicensee and GTC at
the sole option and discretion of GTC, provided that the sublicensee is in
compliance with the sublicense and that GTC's obligations to such sublicensee
shall be no greater than its obligations to Taurus under this Agreement.
(ii) any sublicense to the Cattle Patent Rights shall
terminate or convert into a license directly between such Cattle Rights
Sublicensee and Pharming on substantially the same terms as the Pharming
Agreement, at the option of the Cattle Rights Sublicensee.
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2.5 RIGHTS UNDER THE ACT AGREEMENT. GTC shall use commercially
reasonable efforts to grant a sublicense to Taurus of GTC's rights under the ACT
Agreement that relate to the Field, including using commercially reasonable
efforts to obtain Third Party consents that are necessary to effectuate such a
grant.
2.6 NO OTHER RIGHTS. Except as expressly set forth in this Article II,
no other rights, express or implied, are granted hereunder to either Party under
any Patent Rights or Know How of the other Party. Except as otherwise expressly
provided in this Article II, under no circumstances shall either Party, as a
result of this Agreement, obtain any ownership interest in or other right to the
Patent Rights or Know How of the other Party, including intellectual property
owned, controlled or developed by or licensed to the other Party prior to or any
time during the Term. For the avoidance of doubt, Taurus shall have no
independent right to produce any Transgenic rhSA Cattle or any other transgenic
or chimeric animals using nuclear transfer technologies provided or licensed
hereunder.
2.7 NO COMPROMISE OF GTC'S RIGHTS OUTSIDE OF THE FIELD. For the
avoidance of doubt, in no event shall this Agreement or the operation of Taurus
or its dissolution restrict in any way GTC's practice or use of the GTC Platform
Rights, Licensed GTC Improvements, Joint Platform Improvements or any other
activities of GTC outside the Field.
III. PAYMENTS, RECORDS, REPORTS
3.1 AMOUNTS OWED
(a) WITH RESPECT TO CATTLE RIGHTS
(i) Until Taurus's payment of the [****(*)] payment
described in paragraph (ii) below, Taurus shall make royalty payments to GTC
equal to [****(*)] of all Taurus hSA-Related Revenue.
(ii) Prior to or upon the commencement of a Phase III
Clinical Trial for a Cattle Product, Taurus shall make a one-time milestone
payment to GTC equal to [****(*)]. The timing of such payment, if made before
the actual commencement of a Phase III Clinical Trial as provided above, shall
be at Taurus's sole and exclusive discretion.
(iii) Following Taurus's payment of the [****(*)] payment
described in paragraph (ii) above, Taurus shall make royalty payments to GTC
equal to [****(*)] of Cattle Product Net Sales.
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(iv) For the avoidance of doubt, in no event shall Taurus
owe royalties pursuant to paragraphs (i) and (iii) above with respect to the
same Cattle Product, and upon payment by Taurus of the Phase III Clinical Trial
milestone pursuant to paragraph (ii) above, the [****(*)] of Taurus hSA-Related
Revenue payable herein shall no longer apply, but Taurus shall owe royalty
payments to GTC equal to [****(*)] of the Cattle Product Net Sales pursuant to
paragraph (iii) above.
(v) In the event that Pharming notifies GTC that Pharming
owes royalty payments to one or more Third Parties as a direct result of Taurus
or a Cattle Rights Sublicensee practicing under the Cattle Patent Rights granted
herein, GTC shall so notify Taurus. Thereafter, Taurus shall either: (i) agree
to make such royalty payments to such Third Party; or (ii) cease practicing
under the Cattle Patent Rights to the extent such rights directly result in such
Third Party royalty obligations.
(b) WITH RESPECT TO PROMOTER RIGHTS. Taurus shall pay to GTC a
royalty on the Promoter Revenue based on the selling price per gram of Promoter
Products according to the Promoter Products royalty schedule separately provided
to Taurus (the "PRICE").
(c) PASS ON OF PAYMENTS. Subject to Section 3.8 below, GTC shall
pass on to Pharming or Biogen, as appropriate, the payments made by Taurus to
GTC pursuant to this Section 3.1.
3.2 REPORTING AND PAYMENT. Taurus shall deliver to GTC, within twenty
(20) days after the end of each calendar quarter, a signed written report
certifying: (a) gross sales, Cattle Product Net Sales and the number of units of
Cattle Products sold during such calendar quarter by Taurus and any Cattle
Rights Sublicensees, on a country-by-country basis; and (b) separately for each
type of Promoter Product and for each country, the sales volume and the Price of
such Promoter Product and the amount of any permitted credit or deduction to
arrive at Promoter Revenue. Each such report shall also set forth an explanation
of the calculation of the royalties, if any, payable hereunder based on Cattle
Products and Promoter Products. Simultaneously with the delivery of each such
report to GTC, Taurus shall tender payment to GTC in United States Dollars of
all royalties shown to be due therein based on exchange rates then in effect,
without any reduction in any way, including, without limitation, reduction for
any liabilities incurred by Taurus upon remittance to GTC of the payments due
hereunder. The basis for determining the exchange rates in effect for the
purposes of this Section 3.1(c) shall be the "buy" rate for Dollars in such
currency as published in the WALL STREET JOURNAL on the Business Day immediately
preceding the date such payment is due.
3.3 BLOCKED PAYMENTS. If by law, regulation, or fiscal policy of a
particular country, conversion into United States dollars or transfer of funds
of a convertible currency to the United States of any payments due from Taurus
hereunder is restricted or forbidden ("BLOCKED PAYMENTS"), Taurus shall give GTC
prompt notice in writing and shall pay the Blocked
----------
(*) Confidential Treatment has been requested for the marked portion.
11
Payments through such means or methods as are lawful in such country as GTC may
reasonably designate. Failing the designation by GTC of such lawful means or
methods within thirty (30) days after such notice is given to GTC, Taurus shall
deposit such Blocked Payments in local currency to the credit of GTC in a
recognized banking institution selected by Taurus and identified in a written
notice to GTC, and such deposit shall fulfill all obligations of Taurus with
respect to such Blocked Payments. So long as Taurus satisfies the provisions of
this Section 3.1(d), Taurus shall not be considered to have violated any of its
payment obligations hereunder with respect to any Blocked Payments.
3.4 BOOKS AND RECORDS. Taurus shall keep, and shall require all Cattle
Rights Sublicensees to keep, full, true and accurate books of accounts and other
records containing all information and data which may be necessary to ascertain
and verify the royalties payable to GTC hereunder for a period of three (3)
years from the calendar quarter to which such books and records apply. For a
period of three (3) years from the calendar quarter to which such books and
records apply, GTC, Pharming and Fresenius Holding shall each have the right
from time to time (not to exceed once during each calendar year) during normal
business hours to have an independent agent, accountant or other representative
audit in confidence, such books, records and supporting data. The cost of such
audit shall be borne by GTC, Pharming or Fresenius Holding, as the case may be,
unless it is established by the audit that there has been an error which has
caused Pharming to receive less than it is due hereunder by five percent (5%) of
more for the period under audit, in which case the cost of such audit shall be
borne by Taurus.
3.5 PAYMENTS TO GTC BASED ON SERVICES UNDER ACT RIGHTS. If, pursuant to
a Service Arrangement, GTC performs services for Taurus which result in GTC
exercising its rights under the ACT Agreement, as contemplated by Schedule D of
the LLC Agreement, then Taurus shall pay to GTC any amounts that GTC will owe to
ACT as a result of the performance of such services or the transfer or sale to
NewCo of any products or materials that result from such services. Taurus shall
make such payments in sufficient time to allow GTC a reasonable time to meet any
deadlines under the ACT Agreement for the corresponding payments that it will
owe to ACT. Subject to Section 3.8 below, GTC shall pass on to ACT any payments
made by Taurus to GTC under this Section 3.5.
3.6 GTC'S ABILITY TO CURE. If Taurus fails to fulfill any of its
obligations under Sections 3.1 or 3.2, including, without limitation, its
financial obligations thereunder, and such failure results in GTC being at risk
of breaching its obligations to Pharming under a GTC License Agreement, GTC may
take any necessary and reasonable action to avoid such breach. Taurus shall
indemnify and hold GTC harmless for any expenses to GTC resulting from any such
action of GTC to avoid such breach, including, without limitation, any payments
that GTC makes to Pharming as a result of Taurus's failure.
3.7 NO OTHER PAYMENTS. Subject to Section 3.8 below, no other payments
are to be made by Taurus to GTC unless explicitly provided for under
Sections 3.1(a), 3.1(b), or 3.5 of this Agreement.
3.8 ADJUSTMENT TO PAYMENTS. Within sixty (60) days of the end of each
calendar year, GTC will determine the amounts that it has paid and owes Pharming
under the Pharming Agreement, Biogen under the Pharming Biogen Agreement, and
ACT under the ACT Agreement
12
based on the activities of Taurus or the activities of GTC on behalf of Taurus
during such calendar year ("THIRD PARTY AMOUNTS"), and shall provide Taurus with
a written calculation of such Third Party Amounts, including details of any
credits or rebates under such agreements attributable to such activities. To the
extent that Taurus has paid to GTC more than such Third Party Amounts based on
such activities, GTC shall include with its written calculation payment to
Taurus of the amount of such overpayment. To the extent that Taurus has paid to
GTC less than such Third Party Amounts based on such activities, Taurus shall
pay to GTC the amount of such underpayment within ten (10) days of Taurus's
receipt of the written calculation.
3.9 AUDIT RIGHT. Within one hundred and twenty (120) days of the end of
each calendar year, Taurus shall have the right, at its expense, to inspect, or
have its representative, reasonably acceptable to GTC inspect, GTC's books and
records during normal business hours and with reasonable notice, to the extent
that they relate to payments passed onto Pharming, Biogen or ACT pursuant to
Sections 3.1(c) or 3.5 hereto for activities during such calendar year or the
adjustment to payments pursuant to Section 3.8 above for activities during such
calendar year for the sole purpose of verifying any payments passed on or
adjustments made. Taurus shall treat all information subject to review under
this Section 3.9 in accordance with the confidentiality provisions of
Article VIII of this Agreement and shall cause any representative engaged to
perform such audit to enter into a reasonably acceptable confidentiality
agreement with GTC obligating such representative to maintain all reviewed
information in confidence pursuant to such confidentiality agreement.
3.10 CONSULTATION. GTC shall seek Taurus's advice, which GTC may accept
or reject at its sole discretion, with respect to the negotiation of any
amendment, modification or extensions to the GTC License Agreements or the ACT
Agreement, but only to the extent such amendment, modification or extension
relates to rights or obligations that relate to the Field.
3.11 EXCLUSIVE SUPPLY BY SIGMA. Until Phase I clinical trials, Taurus
shall purchase exclusively from Sigma all bulk human albumin which Sigma is
capable of manufacturing required by Taurus for research and development use for
Licensed Products. Taurus shall commit to purchase from Sigma all products to
suit pre-clinical and clinical requirements up to and including Phase I clinical
trials pursuant to a future supply agreement to be negotiated between Taurus and
Sigma.
IV. INTELLECTUAL PROPERTY OWNERSHIP
4.1 ASSIGNED RIGHTS AND ASSETS. Following the Effective Date, Taurus
shall own all right, title and interest in the Assigned Rights and Assets,
including the right to xxx for any past infringement of any Patent Rights
included in the Assigned Rights and Assets. GTC shall take all necessary
actions, including, without limitation, executing Assumption and Assignment
Agreement and the Patent Assignments, to vest title to all Assigned Rights and
Assets (including all intellectual property rights therein) with Taurus.
4.2 GTC PLATFORM RIGHTS. GTC owns and shall continue to own all right,
title and interest in the GTC Platform Rights, subject only to the license
granted to Taurus pursuant to Section 2.2(a) above.
13
4.3 IMPROVEMENTS
(a) OBLIGATION TO DISCLOSE. Each Party hereto agrees to promptly
disclose to the other Party the existence of all Improvements of which such
Party becomes aware together with a description and demonstration of the nature
and manner of applying and utilizing the Improvement.
(b) LICENSED GTC IMPROVEMENTS. GTC shall own all right, title and
interest in the Licensed GTC Improvements.
(c) TAURUS IMPROVEMENTS AND JOINT rhSA IMPROVEMENTS. Taurus shall
own all right, title and interest in the Taurus Improvements and Joint rhSA
Improvements. GTC shall take all necessary actions, including, without
limitation, executing documents of assignment, to vest title to all Taurus
Improvements and Joint rhSA Improvements (including all intellectual property
rights therein) with Taurus.
(d) JOINT PLATFORM IMPROVEMENTS. The Parties shall each own a
joint, undivided interest in all Joint Platform Improvements. Each Party shall
take all necessary actions, including, without limitation, executing documents
of assignment, to vest title to all Joint Platform Improvements jointly with
Taurus and GTC.
V. PATENTS AND ENFORCEMENT
5.1 PATENT FILINGS
(a) TAURUS PATENT RIGHTS. Taurus shall have the exclusive right to
prepare, file, prosecute, and maintain the Taurus Patent Rights, at its sole
cost and expense, using patent counsel approved in advance in writing by GTC,
such approval not to be unreasonably withheld. If required by law, Taurus may
name GTC on any application for such Patent Rights; PROVIDED, HOWEVER, that with
respect to any Improvement Patents included as part of the Taurus Improvements,
Assigned GTC Improvements or Joint rhSA Improvements to which GTC has been
granted a license pursuant to Section 2.3 above, in the event that Taurus
desires to abandon any patent or patent application within such Patent Rights
relating to subject matter outside of the Field in any country or to decline
responsibility for the maintenance or prosecution of any such patent or patent
application in any country, Taurus shall provide GTC with sufficient prior
written notice of such intended abandonment or declination of responsibility so
that GTC shall have the opportunity to assume responsibility for such patent or
patent application without the loss of any rights therein, and GTC shall have
the right, at its cost and expense, to prepare, file, prosecute, and maintain
the relevant patents and patent applications in the relevant country or
countries in the name of Taurus to the extent legally necessary.
(b) GTC PLATFORM PATENT RIGHTS AND JOINT PLATFORM IMPROVEMENTS.
GTC shall have the primary right, but not the obligation, to prepare, file,
prosecute, and maintain the GTC Platform Patent Rights and any Improvement
Patents included as part of the Joint Plaltform Improvements at its sole cost
and expense. In the event that GTC desires to abandon any patent or patent
application within the GTC Platform Patent Rights or Joint Platform Improvements
relating to the Field in any country or to decline responsibility for the
maintenance or prosecution of any such patent or patent application in any
country, GTC shall provide Taurus
14
with sufficient prior written notice of such intended abandonment or declination
of responsibility so that Taurus shall have the opportunity to assume
responsibility for such patent or patent application without the loss of any
rights therein, and Taurus shall have the right, at its cost and expense, to
prepare, file, prosecute, and maintain the relevant patents and patent
applications in the relevant country or countries in the name of GTC to the
extent legally necessary.
(c) CATTLE PATENT RIGHTS AND PROMOTER PATENT RIGHTS. As between
Taurus and GTC, GTC shall have the right to prepare, file, prosecute and
maintain the Cattle Patent Rights and the Promoter Patent Rights.
5.2 ENFORCEMENT
(a) NOTICES OF ALLEGED OR THREATENED INFRINGEMENT. Each Party
shall promptly notify the other in writing (i) of any alleged or threatened
infringement of any of the Patent Rights licensed under this Agreement, (ii) if
either Party, or any of their respective Affiliates, shall be named as a
defendant in a legal proceeding by a Third Party for infringement of a patent
because of any such Party's, its Affiliate's or sublicensee's practice of the
any of the Patent Rights or Know How licensed hereunder or (iii) of any attempts
by Third Parties to invalidate any of the Patent Rights licensed hereunder,
through a declaratory judgment action or otherwise. In the case of (i), (ii) or
(iii), the notifying Party shall also provide the other Party with all available
evidence of any such infringement, proceeding or attempts to invalidate.
(b) TAURUS PATENT RIGHTS. Taurus, at its own expense and cost and
through patent attorneys designated by Taurus in its sole discretion, shall, at
its election, have the exclusive right (except as provided below) by itself to
institute, prosecute and control any action, suit or proceeding to restrain the
infringement of any of the rights under the Taurus Patent Rights or to defend
against any declaratory judgment action brought by a Third Party which alleges
invalidity, unenforceability, or non-infringement of the Taurus Patent Rights.
Taurus shall be obligated to act in a commercially reasonable manner in
instituting, prosecuting or abandoning any such action, suit or proceeding. If
required by law, Taurus may name GTC as a party to any such suit or proceeding,
subject to indemnifying GTC against any order for costs or other damages that
may be made against GTC in such proceedings. If Taurus elects to bring or
prosecute any such suit or proceeding pursuant hereto, then it shall be entitled
to retain any financial recovery obtained by it in connection therewith. With
respect to any Improvement Patents included as part of the Taurus Improvements,
Assigned GTC Improvements or Joint rhSA Improvements to which GTC has been
granted a license pursuant to Section 2.3 above, if, based upon its good faith
evaluation of the merits of a particular action, Taurus declines to bring or
prosecute any such action or proceeding to restrain the infringement or
enforceability of such Patent Rights outside of the Field, or decides to abandon
any such action or proceeding once instituted, it shall promptly notify GTC in
writing of such decision, and GTC shall thereupon have the right to institute or
assume such action or proceeding on its own behalf and for its own benefit, it
being understood that GTC shall have no obligation to do so. If required by law,
GTC may name Taurus as a party to any such suit or proceeding, subject to
indemnifying Taurus against any order for costs or other damages that may be
made against Taurus in such proceedings. If GTC elects to bring or prosecute any
such suit or proceeding pursuant hereto, then it shall be entitled to retain any
financial recovery obtained by it in connection therewith.
15
(c) GTC PLATFORM PATENT RIGHTS AND JOINT PLATFORM IMPROVEMENTS.
GTC, at its own expense and cost and through patent attorneys designated by GTC
in its sole discretion, shall, at its election, have the initial right by itself
to institute, prosecute and control any action, suit or proceeding to restrain
the infringement of any of the rights under the GTC Platform Patent Rights or
Joint Platform Improvements or to defend against any declaratory judgment action
brought by a Third Party which alleges invalidity, unenforceability, or
non-infringement of the GTC Platform Patent Rights or Improvement Patents
included as part of the Joint Platform Improvements. GTC shall be obligated to
act in a commercially reasonable manner in instituting, prosecuting, defending
or abandoning any such action, suit or proceeding. If required by law, GTC may
name Taurus as a party to any such suit or proceeding subject to indemnifying
Taurus against any order for costs or other damages that may be made against
Taurus in such proceedings. If GTC elects to bring and prosecute any such suit
or proceeding, then it shall be entitled to retain any financial recovery
obtained by it in connection therewith. If, based upon its good faith evaluation
of the merits of a particular action, GTC declines to bring or prosecute any
such action or proceeding to restrain the infringement or enforceability of the
GTC Platform Patent Rights or Improvement Patents included as part of the Joint
Platform Improvements in the Field, or decides to abandon any such action or
proceeding once instituted, it shall promptly notify Taurus in writing of such
decision, and Taurus shall thereupon have the right to institute or assume such
action or proceeding on its own behalf and for its own benefit, it being
understood that Taurus shall have no obligation to do so. If required by law,
Taurus may name GTC as a party to any such suit or proceeding, subject to
indemnifying GTC against any order for costs or other damages that may be made
against GTC in such proceedings. If Taurus elects to bring or prosecute any such
suit or proceeding pursuant hereto, then it shall be entitled to retain any
financial recovery obtained by it in connection therewith.
(d) CATTLE PATENT RIGHTS AND PROMOTER PATENT RIGHTS. As between
Taurus and GTC, GTC shall have the right to prosecute any Third Party
infringement of the Cattle Patent Rights or the Promoter Patent Rights and to
defend the Cattle Patent Rights or the Promoter Patent Rights in any declaratory
judgment action brought by a Third Party which alleges invalidity,
unenforceability, or non-infringement of the Cattle Patent Rights or Promoter
Patent Rights.
(e) OTHER PARTY'S RIGHT TO COUNSEL. In any prosecution of
infringement under this Section 5.2, the Party not bringing or prosecuting such
action or proceeding shall be entitled to be represented at such action or
proceeding by its own counsel, at its own expense. Taurus's counsel must be
reasonably acceptable to GTC and Fresenius Holding.
5.3 COOPERATION. In any case where a Party is preparing, filing,
prosecuting or maintaining any Patent Rights pursuant to Section 5.1 or is
enforcing any Patent Rights under Section 5.2 (the "ACTIVE PARTY"), the other
Party shall cooperate and take all actions reasonably requested by the Active
Party to assist the Active Party in the preparation, filing, prosecution,
maintenance or enforcement of such Patent Rights, including without limitation
making available to the Active Party (or to the Active Party's authorized
attorneys, agents or representatives) the other Party's or its Affiliates'
employees, agents or consultants, and the signing, or causing its or its
Affiliates' employees, agents or consultants to sign, all documents relating to
said preparation, filing, prosecution, maintenance or enforcement.
16
VI. REPRESENTATIONS, WARRANTIES AND COVENANTS; LIMITATIONS OF LIABILITY
6.1 GTC
(a) GTC represents, warrants and covenants that it has the full
right, power and authority to enter into and perform this Agreement. This
Agreement has been duly authorized, executed and delivered by GTC and
constitutes its valid and binding obligations, enforceable against it in
accordance with its terms except as such enforceability may be limited by
bankruptcy, insolvency, reorganization, moratorium and other similar laws and
equitable principles relating to or limiting creditors' rights generally.
(b) GTC hereby represents and warrants to Taurus that the
execution, delivery and performance of this Agreement by it does not (i)
conflict with or result in a breach of any provision of the charter or by-laws
of GTC, (ii) require any consent by any person under, or result in the breach
of, any agreement or other instrument or obligation to which GTC is a party or
by which it is bound, other than such consents as have been obtained by GTC,
(iii) violate any law, order, writ, judgment, injunction, decree, statute, rule
or regulation applicable to GTC or (iv) result in the creation or imposition of
any lien on any of the intellectual property licensed by GTC hereunder.
(c) GTC hereby represents and warrants to Taurus as follows: (i)
the rhSA Rights constitute all of the tangible and intellectual property rights
whatsoever that are owned or controlled by GTC or any of its Affiliates that
relate to the Field except for the rights licensed to GTC under the ACT
Agreement; (ii) to the knowledge of GTC as of the Effective Date, no Third Party
is engaging in conduct which would constitute infringement of any issued patents
under the rhSA Rights in the Field; (iii) no Third Party has notified GTC of any
claim of infringement by GTC, its Affiliates or any of their respective
employees or consultants of any patents or other intellectual property rights of
others in connection with the practicing of the rhSA Rights; (iv) except as
disclosed on EXHIBIT H hereto, no interference or opposition proceeding is
pending or threatened relating to the patents under the rhSA Rights; and (v)
except as contemplated by this Agreement or disclosed on EXHIBIT G hereto, GTC
has not granted any person or entity any right to use or practice under the rhSA
Rights. GTC hereby further represents and warrants to Taurus that to the
knowledge of GTC: (1) EXHIBIT A is a complete listing of all Cattle Patent
Rights, (2) Exhibit B is a complete listing of all GTC Platform Patent Rights,
(3) EXHIBIT C is a complete listing of all GTC rhSA Patent Rights, and (4)
EXHIBIT D is a complete listing of all Promoter Patent Rights, all as of the
Effective Date.
(d) GTC hereby gives further assurances that if any Cattle Patent
Rights are later discovered that were in existence as of the Effective Date, but
were not included on EXHIBIT A, then GTC shall grant Taurus a license to such
later-discovered Cattle Patent Rights under the terms of Section 2.2(b) and
other applicable terms of this Agreement, the same terms that would have applied
had the later-discovered Cattle Patent Rights been identified in EXHIBIT A,
subject to any restrictions in effect as of the Effective Date, including
required consents, under any agreements with Third Parties relating to such
later-discovered Cattle Patent Rights.
17
(e) GTC hereby gives further assurances that if any GTC Platform
Patent Rights are later discovered that were in existence as of the Effective
Date, but were not included on EXHIBIT B, then GTC shall grant Taurus a license
to such later-discovered GTC Platform Patent Rights under the terms of
Section 2.2(a) and other applicable terms of this Agreement, the same terms that
would have applied had the later-discovered GTC Platform Patent Rights been
identified in EXHIBIT B, subject to any restrictions in effect as of the
Effective Date, including required consents, under any agreements with Third
Parties relating to such later-discovered GTC Platform Patent Rights.
(f) GTC hereby gives further assurances that if any GTC rhSA
Patent Rights are later discovered that were in existence as of the Effective
Date, but were not included on EXHIBIT C, then GTC shall assign such
later-discovered GTC rhSA Patent Rights under the terms of Section 2.1 and other
applicable terms of this Agreement, the same terms that would have applied had
the later-discovered GTC rhSA Patent Rights been identified in EXHIBIT C,
subject to any restrictions in effect as of the Effective Date, including
required consents, under any agreements with Third Parties relating to such
later-discovered GTC rhSA Patent Rights.
(g) GTC hereby gives further assurances that if any Promoter
Patent Rights are later discovered that were in existence as of the Effective
Date, but were not included on Exhibit D, then GTC shall grant a license to
Taurus to such later-discovered Promoter Patent Rights under the terms of
Section 2.2(c) and other applicable terms of this Agreement, the same terms that
would have applied had the later-discovered Promoter Patent Rights been
identified in EXHIBIT D, subject to any restrictions in effect as of the
Effective Date, including required consents, under any agreements with Third
Parties relating to such later-discovered Promoter Patent Rights.
(h) GTC hereby represents and warrants to Taurus that to its
knowledge as of the Effective Date after due investigation there are no Patent
Rights that are licensed to GTC by Third Parties and that are related solely to
the Field. GTC hereby gives further assurances that if any Patent Rights are
later discovered that were licensed to GTC by Third Parties as of the Effective
Date and that are related solely to the Field, then GTC shall seek to assign to
Taurus any agreement pursuant to which such a license is granted, but only if
such agreement relates solely to such license and subject to any restrictions,
including required Third Party consents, under such agreement relating to such
later-discovered Patent Rights and further subject to the terms and conditions
of this Agreement. If GTC is unable to assign such agreement to Taurus, GTC
shall seek to exclusively sublicense to Taurus its rights under such Patent
Rights on reasonable and appropriate terms and conditions, including a "true up"
provision similar to Section 3.8 above such that no royalty or other payments
due from Taurus to GTC shall be less than or in excess of any payments due from
GTC to a Third Party licensor, and subject to any restrictions, including
required Third Party consents, under such agreement relating to such
later-discovered Patent Rights and further subject to the terms and conditions
of this Agreement. If GTC is unable to so sublicense such Patent Rights to
Taurus, GTC shall seek to perform services for Taurus under such Patent Rights
pursuant to a Service Arrangement on reasonable and appropriate terms and
conditions including terms similar to those in Section 3.5 above relating to
services provided under the ACT Agreement and a "true up" provision similar to
Section 3.8 above, subject to any restrictions, including required Third Party
consents, relating to such later-discovered Patent Rights.
18
(i) GTC hereby represents and warrants to Taurus that to its
knowledge as of the Effective Date there are no Patent Rights that are licensed
to GTC by Third Parties and that are necessary for the Field but also have
applications for other purposes, other than the Cattle Patent Rights and the
Promoter Patent Rights (the "OTHER LICENSED PATENT RIGHTS"). GTC hereby gives
further assurances that if any Other Licensed Patent Rights are later discovered
that were in existence as of the Effective Date, then GTC shall use commercially
reasonable efforts to grant an exclusive sublicense in the Field to Taurus under
GTC's rights to such Other Licensed Patent Rights under terms and conditions
that are consistent with any agreement pursuant to which such Other Licensed
Patent Rights are granted to GTC, and including a "true up" provision similar to
Section 3.8 above such that no royalty or other payments due from Taurus to GTC
shall be less than or in excess of any payments due from GTC to a Third Party
licensor, and subject to any restrictions in effect as of the Effective Date,
including required Third Party consents, under any such agreements, and further
subject to the terms and conditions of this Agreeement.
(j) GTC hereby represents and warrants to Taurus that it owns all
the Assigned Rights and Assets existing as of the Effective Date, free and clear
of any lien, claim or other encumbrance and of any license, restriction or
limitation of any nature whatsoever.
(k) GTC hereby represents and warrants that it has accepted no
commitments or restrictions that will materially affect the value of the
licenses and rights granted by it in this Agreement.
(l) GTC hereby represents and warrants to Taurus that all of GTC's
employees, all of its Affiliates' employees and all others acting on its or its
Affiliates' behalf in performing their respective obligations under this
Agreement shall be obligated under a binding written agreement or established
corporate policy to assign to GTC, or as GTC shall direct, all inventions made
or conceived by such employee or other person.
(m) THE RHSA MATERIAL AND ASSIGNED CATTLE ARE UNDERSTOOD TO BE
EXPERIMENTAL IN NATURE AND MAY HAVE HAZARDOUS PROPERTIES. EXCEPT AS EXPRESSLY
SET FORTH HEREIN, GTC DOES NOT MAKE ANY REPRESENTATIONS OR EXTEND ANY WARRANTIES
OF ANY KIND (INCLUDING, WITHOUT LIMITATION, ANY REPRESENTATION OR WARRANTY THAT
ANY IMPROVEMENTS PRODUCTS MADE BY OR ON BEHALF OF GTC, rhSA MATERIALS, ASSIGNED
CATTLE OR LICENSED PRODUCTS DO NOT INFRINGE ANY PATENT, COPYRIGHT, TRADE SECRET,
OR OTHER LEGAL OR PROPRIETARY RIGHTS OF ANY THIRD PARTY, OR ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR INTENDED USE), AND DOES
NOT ASSUME ANY RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OR CONFER ANY RIGHT
BY IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN THE ASSIGNMENTS, LICENSES,
WARRANTIES AND RIGHTS HEREIN EXPRESSLY GRANTED.
6.2 TAURUS. Taurus represents, warrants and covenants that:
(a) Taurus has the full right, power and authority to enter into
and perform this Agreement. This Agreement has been duly authorized, executed
and delivered by Taurus
19
and constitutes its valid and binding obligations, enforceable against it in
accordance with its terms except as such enforceability may be limited by
bankruptcy, insolvency, reorganization, moratorium and other similar laws and
equitable principles relating to or limiting creditors' rights generally.
(b) Taurus hereby represents and warrants to GTC that the
execution, delivery and performance of this Agreement by it does not (i)
conflict with or result in a breach of any provision of the operating agreement
of Taurus, (ii) require any consent by any person under, or result in the breach
of, any agreement or other instrument or obligation to which Taurus is a party
or by which it is bound, other than such consents as have been obtained by
Taurus, (iii) violate any law, order, writ, judgment, injunction, decree,
statute, rule or regulation applicable to Taurus or (iv) result in the creation
or imposition of any lien on any of the intellectual property licensed by Taurus
hereunder.
(c) Taurus hereby represents and warrants to GTC that all of
Taurus's employees, if any, all of its Affiliates' employees and all others
acting on its or its Affiliates' behalf in performing their respective
obligations under this Agreement shall be obligated under a binding written
agreement or established corporate policy to assign to Taurus, or as Taurus
shall direct, all inventions made or conceived by such employee or other person.
(d) In marketing the Licensed Products, Taurus will enter into a
confidentiality agreement with each person or entity to whom or to which Taurus
discloses Confidential Information relating to such Licensed Products, with such
confidentiality agreement to be in a form reasonably satisfactory to both
Parties hereto.
(e) EXCEPT AS EXPRESSLY SET FORTH HEREIN, TAURUS DOES NOT MAKE ANY
REPRESENTATIONS OR EXTEND ANY WARRANTIES OF ANY KIND (INCLUDING, WITHOUT
LIMITATION, ANY REPRESENTATION OR WARRANTY THAT ANY IMPROVEMENTS PRODUCTS MADE
BY OR ON BEHALF OF TAURUS DO NOT INFRINGE ANY PATENT, COPYRIGHT, TRADE SECRET,
OR OTHER LEGAL OR PROPRIETARY RIGHTS OF ANY THIRD PARTY, OR ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR INTENDED USE), AND DOES
NOT ASSUME ANY RESPONSIBILITIES OR OBLIGATIONS WHATSOEVER, OR CONFER ANY RIGHT
BY IMPLICATION, ESTOPPEL OR OTHERWISE, OTHER THAN THE ASSIGNMENTS, LICENSES,
WARRANTIES AND RIGHTS HEREIN EXPRESSLY GRANTED.
6.3 LIMITATION OF LIABILITY. EXCEPT FOR THE PARTIES' INDEMNIFICATION
OBLIGATIONS UNDER ARTICLE VII HERETO, NEITHER PARTY SHALL BE LIABLE TO THE OTHER
PARTY FOR ANY LOST PROFITS OR OTHER INDIRECT, INCIDENTAL, CONSEQUENTIAL OR
SPECIAL DAMAGES, INCLUDING WITHOUT LIMITATION EXEMPLARY OR PUNITIVE DAMAGES,
ARISING OUT OF SUCH PARTY'S PERFORMANCE OR NON-PERFORMANCE OF ITS OBLIGATIONS
UNDER THIS AGREEMENT, WHETHER ANY SUCH DAMAGES ARE BASED ON A CLAIM OF
NEGLIGENCE, STRICT LIABILITY, BREACH OF WARRANTY OR OTHERWISE, AND WHETHER OR
NOT SUCH PARTY HAS NOTICE OF SUCH DAMAGES.
20
VII. INDEMNIFICATION AND INSURANCE
7.1 BY TAURUS. Taurus hereby agrees at all times to defend, indemnify
and hold GTC and its Affiliates, and their respective assignees, successors, and
the officers, agents, employees and licensees of each of them (each a "GTC
INDEMNITEE"), harmless from and against any and all claims, damages,
liabilities, losses, costs and expenses (including, without limitation,
attorneys' fees) arising out of or in connection with any Third Party claim
based on:
(a) Any breach of any representation, warranty, covenant,
condition or agreement made or to be performed by Taurus under the terms of this
Agreement;
(b) any the exercise or practice by Taurus, its Affiliates, and
their respective sublicensees of the licenses granted hereunder to Taurus by GTC
including, without limitation, (A) any claim based on an alleged breach of any
warranty, implied or otherwise, of merchantability or fitness for a particular
purpose or intended use, (B) any claim alleging or based on product liability or
false advertising, and/or (C) any claim arising on account of any injury or
death of persons or damage to property; or
(c) any obligation or liability, including an obligation to
indemnify, that GTC has under a GTC License Agreement as a result of Taurus's,
its Affiliates' or any of their respective sublicensees' activities under the
rights granted under this Agreement or other activities in the Field;
The foregoing indemnification obligations shall not apply to any
liability, demands, damage, expense or losses to the extent directly
attributable to (i) the gross negligence, intentional misconduct or illegal
actions of a GTC Indemnitee, (ii) the breach of the representations and
warranties hereunder by GTC, or (iii) the settlement of a claim, suit, action,
or demand by a GTC Indemnitee without the prior written approval of Taurus.
7.2 BY GTC.
(a) GTC hereby agrees at all times to defend, indemnify and hold
harmless Taurus and its Affiliates, and their respective successors, and the
officers, agents, employees and licensees of each of them (each a "TAURUS
INDEMNITEE"), from and against any and all claims, damages, liabilities, losses,
costs or expenses (including, without limitation, reasonable attorneys' fees)
arising out of or in connection with any Third Party claim based on any breach
of any representation, warranty, covenant, condition or agreement made or to be
performed by GTC under the terms of this Agreement. The foregoing
indemnification shall not apply to any liability, demands, damage, expense or
losses to the extent directly attributable to (i) the gross negligence,
intentional misconduct or illegal actions of a Taurus Indemnitee, (ii) the
breach of the representations and warranties hereunder by Taurus, or (iii) the
settlement of a claim, suit, action, or demand by a Taurus Indemnitee without
the prior written approval of GTC.
(b) GTC shall not be obligated to defend, indemnify, or hold
harmless a Taurus Indemnitee from or against any claims, damages, liabilities,
losses, costs, and expenses incurred or suffered by such Taurus Indemnitee as
the result of any claim, proceeding, judgment, or adjudication in which it is
claimed or determined that the making, developing, marketing, using,
distributing, importing or selling or other disposal by or on behalf of Taurus
or any Taurus
21
Affiliate or sublicensee or any successor or assignee of Taurus or any Taurus
Affiliate of any Licensed Products or any Improvements Product infringes any
patent, copyright, trade secret, or other legal or proprietary right of any
Third Party, except if Licensor had knowledge of such infringement in
contravention of Licensor's representation contained in Section 6.1(c) above, or
that any Licensed Products or Improvements Products created by or on behalf of
Taurus or any Taurus Affiliate or any successor or assignee of Taurus or any
Taurus Affiliate are defective, inadequate, dangerous, or otherwise unsuitable
for a particular purpose or intended use (each, a "THIRD PARTY CLAIM"). In the
event of a Third Party Claim, GTC agrees to reveal to Taurus such information as
it may possess which it deems to be necessary to show the date or dates of
discovery of any Licensed Product or Patent Right, provided that GTC shall not
be obligated to incur any expense in connection therewith.
7.3 INDEMNIFICATION PROCEDURE. In the event that a GTC Indemnitee or a
Taurus Indemnitee (each an "INDEMNITEE") intends to claim indemnification
hereunder, such Indemnitee shall promptly notify the indemnifying Party of any
liability in respect of which the Indemnitee intends to claim such
indemnification, and the indemnifying Party shall assume and have exclusive
control over the defense thereof with counsel selected by the indemnifying Party
that is reasonably satisfactory to the Indemnitee; PROVIDED, HOWEVER, that such
Indemnitee shall have the right to fully participate in any such action or
proceeding and to retain its own counsel, with the reasonable fees and expenses
to be paid by the indemnifying Party, if representation of such Indemnitee by
the counsel retained by the indemnifying Party would be inappropriate under
applicable standards of professional conduct due to actual or potential
differing interests between such Indemnitee and any other party represented by
such counsel in such proceedings. Neither the indemnifying Party nor the
Indemnitee shall enter into any settlement agreement with any Third Party
without the consent of the other Party, which consent shall not be unreasonably
withheld or delayed. The failure to deliver notice to the indemnifying Party
within a reasonable time after the commencement of such action, to the extent
prejudicial to the indemnifying Party's ability to defend such action, shall
relieve the indemnifying Party of its indemnification obligations hereunder, but
the failure to so deliver notice to the indemnifying Party will not relieve it
of any liability that it may have to any Indemnitee otherwise than as aforesaid.
The Indemnitee shall, at the expense of the indemnifying Party, cooperate with
the indemnifying Party and its legal representatives in the investigation and
defense of any liability covered by this Agreement.
7.4 INSURANCE. Commencing not later than the date of the first
commercial sale of a Licensed Product, Taurus shall maintain product liability
insurance with respect to development, manufacture and sales of Licensed
Products by or on behalf of Taurus, its Affiliates or sublicensees in amounts
not less than [****(*)] per incident and [****(*)] annual aggregate. Taurus
shall maintain such insurance for so long as it or any of its Affiliates or
sublicensees continues to manufacture or sell any Licensed Products, and
thereafter for at least five (5) years. Taurus shall
----------
(*) Confidential Treatment has been requested for the marked portion.
22
provide GTC and Fresenius Holding with written evidence of such insurance upon
request by GTC or Fresenius Holding.
VIII. CONFIDENTIALITY
8.1 CONFIDENTIAL INFORMATION DEFINED. It is contemplated that a Party
may disclose to another Party information concerning its business, customers,
suppliers, inventions, confidential know-how, and trade secrets including,
without limitation, information contained in the patent applications listed on
the Exhibits hereto (collectively, the "CONFIDENTIAL INFORMATION") to further
the performance of this Agreement. All information which a Party identifies
orally or in writing as Confidential Information that is disclosed to the other
Party shall remain the sole property of the disclosing Party, except as
otherwise specifically provided in this Agreement. The receiving Party shall
have no rights to the Confidential Information of the disclosing Party, except
as provided in this Agreement.
8.2 CONFIDENTIALITY AGREEMENT. Each Party agrees that it will hold the
Confidential Information of the other Party in strict confidence. Each Party
further agrees that it will not make any disclosure of the Confidential
Information (including methods or concepts utilized in or utilizing the
Confidential Information) to anyone, except to employees of a Party or its
Affiliates or sublicensees to whom disclosure is necessary to the performance of
this Agreement and with whom a non-disclosure agreement has been entered into,
or as otherwise provided for herein. Each Party must appropriately notify each
employee of such Party, its Affiliates and sublicensees to whom any disclosure
of Confidential Information is made, that the disclosure is made in confidence,
and each Party shall contractually require its Affiliates, sublicensees, and
their respective employees, for the express benefit of the other Party as an
intended third party beneficiary, to keep such Confidential Information in
confidence in accordance with the terms of this Agreement.
8.3 RETURN OF INFORMATION. After any expiration or termination of this
Agreement, upon request of the disclosing Party, the other Party must return to
the disclosing Party within ten (10) days from such request all copies of any
written or tangible Confidential Information received from the disclosing Party.
If no such request is made by the disclosing Party within thirty (30) days after
the expiration or termination of this Agreement, the other Party shall destroy
all copies of any written or tangible Confidential Information received from the
disclosing Party.
8.4 SURVIVAL OF OBLIGATIONS. The obligation of each Party and its
Affiliates and sublicensees, and their respective employees under this Article
shall survive and continue for ten (10) years after the disclosure of
Confidential Information. However, these obligations do not extend to any
information relating to Confidential Information of either Party which (a) is
already known to the receiving Party or any of its Affiliates at the time of
disclosure without any obligation of confidentiality, or is independently
developed by the receiving Party or any of its Affiliates; (b) is or becomes
publicly known through no wrongful act of the receiving Party; (c) is disclosed
to the receiving Party by a Third Party without any obligation of
confidentiality and not in violation of any obligation of non-disclosure owed to
the disclosing Party; (d) is approved for release by written authorization of
the disclosing Party; or (e) is disclosed as required by law, or where required
in connection with a claim or defense in judicial or administrative proceedings
23
involving the receiving Party or the disclosing Party or any of their respective
Affiliates; provided that the receiving Party notifies the disclosing Party
prior to disclosure, cooperates with the disclosing Party to the extent
practicable to minimize disclosure, and uses its best efforts to obtain
confidential treatment by the Third Party receiving the Confidential Information
(including, where available, seeking protective orders limiting dissemination,
publication and use).
IX. TERM AND TERMINATION
9.1 TERM. This Agreement shall be effective on the Effective Date and
shall be perpetual, subject only to earlier termination pursuant to Section 9.2
hereof (the "TERM").
9.2 TERMINATION.
(a) TERMINATION OF RIGHTS UNDER GTC LICENSE AGREEMENTS. The rights
granted by GTC to Taurus hereunder to the Cattle Patent Rights or the Promoter
Rights shall terminate upon the expiration or termination of GTC's right to
grant a sublicense to such rights under the applicable GTC License Agreement,
subject to Section 9.3(b) below, by reason of termination of the applicable GTC
License Agreement or otherwise.
(b) FOR BREACH OR INSOLVENCY
(i) If Taurus shall materially breach or default on any
obligation under this Agreement, GTC shall have the right to notify Taurus in
writing of such material breach or default and that GTC intends to terminate
this Agreement unless such material breach or default is corrected by Taurus
within sixty (60) days from the receipt of such written notice
(ii) If Taurus shall be dissolved (other than in connection
with a sale of Taurus to a Third Party, whether by merger, consolidation or sale
of all or substantially all of Taurus's assets), or take or acquiesce to the
taking of any action seeking relief under, or advantage of, any applicable
debtor relief, liquidation, receivership, conservatorship, bankruptcy,
moratorium, rearrangement, insolvency, reorganization, or similar law affecting
the rights or remedies of creditors generally, as in effect from time to time,
then this agreement shall thereupon automatically terminate. For the avoidance
of doubt, "acquiescence" shall include, without limitation, the failure to file,
within thirty (30) days after its entry, a petition, answer or motion to vacate
or discharge any order, judgment or decree providing for any of the above.
9.3 EFFECT OF EXPIRATION OR TERMINATION
(a) RETURN OF CONFIDENTIAL INFORMATION. Upon any expiration or
termination of this Agreement, the Parties shall be obligated to return or
destroy the other Party's Confidential Information pursuant to Section 8.3
above.
(b) RIGHTS UNDER GTC LICENSE AGREEMENTS.
(i) CATTLE PATENT RIGHTS. Upon the termination of Taurus's
rights under its sublicense to the Cattle Patent Rights pursuant to
Section 9.2(a) above or upon the expiration, on a country-by-country basis, of
the last to expire valid claim of the Cattle Patent
24
Rights, Taurus's obligation hereunder to make milestone and royalty payments
(other than those already due) to GTC with respect to Cattle Products shall
terminate. If Taurus's rights under its sublicense to the Cattle Patent Rights
terminates because of the termination of the Pharming Agreement, Taurus shall
have the option to convert its license to the Cattle Patent Rights to a license
directly between Taurus and Pharming on substantially the same terms as the
Pharming Agreement.
(ii) PROMOTER RIGHTS. Upon the termination of Taurus's
rights under its sublicense to the Promoter Rights pursuant to Section 9.2(a)
above or upon the expiration, on a country-by-country basis, of the last to
expire valid claim of the Promoter Patent Rights, Taurus's obligation hereunder
to make royalty payments (other than those already due) to GTC with respect to
Promoter Products shall also terminate; PROVIDED, HOWEVER, that Taurus shall be
obligated to reimburse GTC for any royalties that GTC is obligated to pay to
Pharming pursuant to the Pharming Biogen Agreement for any sale of a Promoter
Product after the date of expiration, on a country-by-country basis, of the
last-to-expire valid claim of the Promoter Patent Rights. The Pharming Biogen
Agreement states, in relevant part, that GTC's obligation to pay royalties to
Pharming on sales of Promoter Products shall expire, on a country-by-country
basis, [****(*)]
(c) TERMINATION UNDER SECTION 9.2(b)(i). If GTC terminates this
Agreement pursuant to Section 9.2(b)(i), then the licenses and rights granted by
GTC and the obligations of Taurus pursuant to Section 2.2 hereunder, subject to
Section 9.3(e) below, shall thereupon automatically terminate, and all right,
title and interest in and to any Joint Platform Improvements and Joint rhSA
Improvements shall automatically be assigned from Taurus to GTC, subject to any
Third Party rights. Taurus shall deliver any instruments of transfer reasonably
requested by GTC to evidence such assignment. For the avoidance of doubt, in the
event of such termination, the rights assigned to Taurus pursuant to Section 2.1
and Article IV shall not be affected and the rights and licenses granted to GTC
under Section 2.3 shall not terminate and shall continue in perpetuity,
thereafter subject to expiration or termination only according to their terms.
(d) TERMINATION UNDER SECTION 9.2(b)(ii). If GTC terminates this
Agreement pursuant to Section 9.2(b)(iii), the rights and licenses granted to
GTC under Section 2.3 shall not terminate and shall continue in perpetuity,
thereafter subject to expiration or termination only according to their terms,
and such termination shall have the consequences on the rhSA Rights as specified
in Sections 8.2(d) and 8.3 of the LLC Agreement.
(e) SURVIVAL. All covenants and agreements of the Parties
contained in this Agreement which by the nature or context of such covenants and
agreements are reasonably construed to be performed after the termination or
expiration hereof shall survive such termination or expiration. Without limiting
or altering the foregoing, upon the expiration or termination of this Agreement,
the provisions of Articles I, IV, VI, VII, VIII and X and
----------
(*) Confidential Treatment has been requested for the marked portion.
25
Sections 2.1, 2.3, 2.4(c), 2.4(d), 3.4, 3.8, 3.9, 3.11 and 9.3 shall survive,
except as otherwise specifically provided in this Section 9.3.
X. MISCELLANEOUS
10.1 COVENANT IN FIELD OF LICENSE. Taurus acknowledges and agrees that
the rights granted to it under this Agreement are limited to the assignments and
licenses granted in Article II hereof. Taurus acknowledges that the grant of
those rights are conditioned on its agreement to refrain from using the rights
licensed pursuant to Section 2.2 above outside the Field and that any such
activity by Taurus shall be a material breach of this Agreement.
10.2 RELATIONSHIP OF THE PARTIES. This Agreement does not constitute a
partnership agreement nor does it create a joint venture or agency relationship
between or among the Parties. No Party shall hold itself out contrary to the
terms of this Section 10.2. Neither Party shall be liable for the
representations, acts, or omissions of the other Party unless expressly provided
otherwise under the terms of this Agreement.
10.3 NOTICES. Unless otherwise set forth in this Agreement, all notices,
demands or other communications hereunder shall be in writing (including
telecopy) and shall be deemed to have been duly given if delivered during normal
business hours by hand, Federal Express, United Parcel Service or other
reputable overnight commercial delivery service, by telecopy, confirmation of
receipt received (so long as confirmation copies of such telecopies are
thereafter also sent by mail), or by mail, certified or registered, with return
receipt requested, addressed as follows:
If to GTC: GTC Biotherapeutics, Inc.
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000
Fax: (000) 000-0000
Attention: Chief Executive Officer
with a copy to: Xxxxxx & Dodge LLP
000 Xxxxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000-0000
Fax: (000) 000-0000
Attention: Xxxxxxxxx X. Xxxxxxxx, Esq.
If to Taurus: Taurus, LLC
000 Xxxxxxxx Xxxxxxxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000
Fax: (000) 000-0000
Attention: General Manager
with a copy to: Fresenius Aktiengesellschaft
Xxxx-Xxxxxx Xxxxxxx
00000 Xxx Xxxxxxx
Xxxxxxx
26
Fax: 000-00-0000-000-0000
Attention: Law Department
or at such other address or to such other addressees as may have been furnished
by such Party in writing to the other Party in accordance with this
Section 10.3. Any such notice, demand or other communication shall be deemed to
have been given on the date actually delivered or on the third (3rd) day after
deposit in the mail, postage prepaid.
10.4 WAIVER AND AMENDMENT. No waiver, amendment or modification of this
Agreement shall be effective unless in writing and signed by the Party against
whom the waiver, amendment or modification is sought to be enforced. No failure
or delay by either Party in exercising any right, power, or remedy under this
Agreement shall operate as a waiver of such or any other right, power, or
remedy. No waiver of any term, condition, or default of this Agreement shall be
construed as a waiver of any other term, condition, or default.
10.5 ASSIGNMENT. This Agreement shall be binding upon and inure to the
benefit of GTC, Taurus and their successors and permitted assigns. Except as
expressly set forth herein, this Agreement and the rights and obligations
hereunder, including without limitation any right, title or interest in or to
the Improvements, shall not be assignable or transferable by either Party,
except by either Party to an Affiliate or to a successor in connection with the
merger, consolidation, or sale of all or substantially all of its assets or that
portion of its business to which this Agreement relates; PROVIDED, HOWEVER, that
such assignee agrees to be bound by the provisions of this Agreement. Any other
attempt to assign or transfer this Agreement shall be null and void and of no
force or effect.
10.6 HEADINGS. The Article and Section headings of this Agreement are
intended as a convenience only, and shall not effect the interpretation of this
Agreement's provisions.
10.7 SINGULAR AND PLURAL TERMS. Where the context of this Agreement
requires, singular terms shall be considered plural, and plural terms shall be
considered singular.
10.8 SEVERABILITY. If any provision of this Agreement is determined to be
invalid, illegal or unenforceable, the remaining provisions of this Agreement
shall remain in full force and effect and the Parties hereby acknowledge and
agree that they would have executed the remaining portion hereof without
including the portion so declared invalid, void or unenforceable. In the event
of any such determination, the Parties agree to negotiate in good faith to
modify this Agreement to fulfill as closely as possible the original intent and
purpose hereof. To the extent permitted by law, the Parties hereby, to the same
extent, waive any provision of law that renders any provision hereof prohibited
or unenforceable in any respect.
10.9 ENTIRE AGREEMENT. The terms and provisions contained herein along
with the LLC Agreement constitute the entire agreement between the Parties with
respect to the subject matter hereof, and shall supersede any and all previous
oral or written understandings, arrangements or agreements between the Parties
with respect to the subject matter hereof. No agreements or undertakings
varying, modifying, amending, extending, discharging or terminating the same
shall be binding upon any Party unless in writing signed by a duly authorized
officer or representative thereof.
27
10.10 APPLICABLE LAW. This Agreement shall be construed and the legal
relations among the Parties hereto determined in accordance with the laws of the
State of Delaware, excluding that body of law related to choice of laws, and the
laws of the United States of America applicable therein. The rights embodied by
and the validity of any patent or property rights shall be interpreted in
accordance with the law of the jurisdiction in which such patent was filed and
issued.
10.11 FORCE MAJEURE. If the performance of this Agreement or any
obligation hereunder is prevented, restricted or interfered with by reason of
fire or other casualty or accident, strikes or labor disputes, terrorist acts,
inability to procure raw materials, power or supplies, or other violence, any
law, order, proclamation, regulation, ordinance, demand or requirement of any
government agency, or any other act or condition whatsoever beyond the control
of a Party hereto, the Party so affected, upon giving prompt notice to the other
Party, shall be excused from such performance to the extent of such prevention,
restriction or interference; provided, however, that the Party so affected shall
use its best efforts to avoid or remove such causes of non-performance and shall
continue performance hereunder with the utmost dispatch whenever such causes are
removed.
10.12 FURTHER ASSURANCES. Each Party agrees to do such further acts and
things and to execute and deliver such additional agreements and instruments as
the other Party may reasonably require to consummate, evidence or confirm the
License or any other agreement contained herein in the manner contemplated
hereby.
10.13 COUNTERPARTS. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but all of which together shall constitute
one and the same instrument.
10.14 TIME OF THE ESSENCE. Time is of the essence in this Agreement as to
all dates and time periods set forth herein.
10.15 INCORPORATION OF EXHIBITS AND SCHEDULES. All exhibits and schedules
attached hereto and referred to herein are incorporated in this Agreement as
though fully set forth herein.
10.16 ARBITRATION. Any dispute arising in connection with this Agreement,
including any question regarding its existence, validity or termination, is to
be referred to and finally resolved by arbitration under the Rules of the
Arbitration Court of the International Chamber of Commerce, Paris (France),
which rules are deemed to be incorporated by reference into this clause, and
except for (a) proceedings commenced to enforce an arbitration award, and (b)
proceedings commenced for specific performance of Article VIII, each Party
hereby irrevocably waives its right to commence any proceedings in any court
with respect to any matter arising under this Agreement. The tribunal shall
consist of a sole arbitrator appointed jointly by the Parties. In the case of
the Parties failing to choose a sole arbitrator, the tribunal shall consist of
three arbitrators, two of whom shall be appointed by the respective Parties and
the third arbitrator shall be appointed jointly by the first two, all three of
whom shall be lawyers. The place of arbitration shall be the location of the
defendant in any proceeding or such other location as the Parties shall jointly
agree. The language of the arbitration shall be English. No arbitrator shall be
an Affiliate, employee, officer or director of either Party or of their
respective Affiliates, nor
28
shall any arbitrator have any interest that would be affected in any material
respect by the outcome of the dispute. The decision of the sole arbitrator or of
a majority of the arbitrators, where applicable, shall be final and binding on
the Parties and their respective successors and assigns. The decision shall not
be subject to appeal or judicial review except in circumstances of fraud. The
tribunal shall determine the proportions in which the Parties shall pay the
costs of the tribunal and whether either Party shall pay all or a portion of the
other Party's attorneys' fees and other legal expenses in connection with the
arbitration.
10.17 INJUNCTIVE RELIEF. The Parties hereby acknowledge that a breach of
their respective obligations under Article VIII of this Agreement may cause
irreparable harm and that the remedy or remedies at law for any such breach may
be inadequate. The Parties hereby agree that, in the event of any such breach,
in addition to all other available remedies hereunder, the non-breaching Party
or Parties shall have the right to obtain equitable relief to enforce this
Agreement.
THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK.
29
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to
be executed by their duly authorized officers as of the day and year first above
written.
GTC BIOTHERAPEUTICS, INC.
By: /s/ Xxxxxxxx X. Xxx
---------------------------------
Name: Xxxxxxxx X. Xxx
Title: Chairman, President & CEO
TAURUS HSA LLC
By: /s/ Xxxxxx X. Xxxxxxxx
---------------------------------
Name: Xxxxxx X. Xxxxxxxx
Title: Vice President
30
EXHIBIT A
CATTLE PATENT RIGHTS
[****(*)]
----------
(*) Confidential Treatment has been requested for the marked portion.
31
EXHIBIT B
GTC PLATFORM PATENT RIGHTS
[****(*)]
----------
(*) Confidential Treatment has been requested for the marked portion.
32
EXHIBIT C
GTC rhSA PATENT RIGHTS
[****(*)]
----------
(*) Confidential Treatment has been requested for the marked portion.
33
EXHIBIT D
PROMOTER PATENT RIGHTS
[****(*)]
----------
(*) Confidential Treatment has been requested for the marked portion.
34
EXHIBIT E
ASSIGNMENT AND ASSUMPTION AGREEMENT
35
ASSIGNMENT AND ASSUMPTION AGREEMENT
This ASSIGNMENT AND ASSUMPTION AGREEMENT (this "AGREEMENT") is dated as of
December 20, 2002 and effective January 1, 2003 (the "EFFECTIVE DATE") between
GTC Biotherapeutics, Inc., a Massachusetts corporation having a place of
business at 000 Xxxxxxxx Xxxxxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000, X.X.X.
("GTC"), and Taurus hSA LLC, a Delaware limited liability company having a place
of business at 000 Xxxxxxxx Xxxxxxxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000-0000,
X.X.X. ("TAURUS"). GTC and Taurus each shall be referred to individually as a
"PARTY" and collectively as the "PARTIES"). Terms not defined herein shall have
the same meaning ascribed to them in the Contribution and License Agreement,
dated as of the date hereof and effective as of the Effective Date, by and
between GTC and Taurus (the "CONTRIBUTION AND LICENSE AGREEMENT").
WHEREAS, GTC desires to assign, transfer, convey and deliver to Taurus all
of its right title and interest in the Assigned Rights and Assets, as set forth
in the Contribution and License Agreement; and
WHEREAS, Taurus desires to accept such assignment, transfer, conveyance and
delivery and has agreed to assume all of the liabilities and obligations of GTC
with respect to the Assigned Rights and Assets.
NOW, THEREFORE, for and in consideration of the mutual covenants contained
herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, GTC and Taurus hereby agree as
follows:
1. Subject to the terms and conditions of this Agreement, GTC does hereby
assign, transfer, convey and deliver to Taurus all of the right, title and
interest of GTC in, to and under the Assigned Rights and Assets, and Taurus does
hereby accept all the right, title and interest of GTC in, to and under all of
the Assigned Rights and Assets.
2. Taurus does hereby assume and agree to observe and perform all of the
duties, obligations, terms, provisions and covenants, and to pay and discharge,
when due, all of the liabilities and commitments of GTC to be observed,
performed, paid or discharged from and after the Effective Date under and in
connection with all of the Assigned Rights and Assets.
3. To the extent that any of the Assigned Rights and Assets shall be
non-assignable, this instrument shall not constitute any assignment thereof, and
to the extent that any of the Assigned Rights and Assets shall require a consent
not obtained prior to the date hereof, this instrument shall not constitute an
assignment of the same until such consent has been obtained if an assignment or
attempted assignment without such consent of said other party would constitute a
breach of any contract relating to such Assigned Right and Asset or in any way
adversely affect the rights, powers, privileges, or liabilities of GTC or Taurus
thereunder.
4. GTC shall execute, acknowledge (as appropriate) and deliver, or cause
the execution, acknowledgement and delivery of, such further documents and
instruments as may reasonably be requested by Taurus to implement the purposes
of this Agreement, including the Assignment of Patents.
36
5. Nothing contained herein shall require Taurus to pay or discharge any
debts or obligations expressly assumed hereby so long as Taurus shall in good
faith contest or cause to be contested the amount or validity thereof.
6. GTC and Taurus hereby acknowledge and agree that neither the
representations and warranties nor the rights and remedies of GTC or Taurus
under the Contribution and License Agreement shall be deemed to be enlarged,
modified or altered in any way by this Agreement.
7. This Agreement will be construed in accordance with and governed by the
internal laws of the Commonwealth of Massachusetts.
8. This Agreement may be executed in one or more counterparts, each of
which will be deemed to be an original, but all of which together will
constitute one and the same instrument.
9. This Assignment and Assumption Agreement shall be binding upon and inure
to the benefit of the parties hereto and their respective successors, heirs,
personal representatives and permitted assigns. No party hereto may assign
either this Assignment and Assumption Agreement or any of its rights, interests
or obligations hereunder without the prior written approval of each other party
hereto, which approval shall not be unreasonably withheld. No such assignment
shall relieve the assigning party of its obligations hereunder if such assignee
does not perform such obligations. Notwithstanding the foregoing, a party shall
have the right to assign this Agreement to the surviving entity in a merger or
consolidation in which the party participates or to a successor of all or
substantially all of the party's stock, assets or business to which the Assigned
Rights and Assets relate.
[THE REMAINDER OF THIS PAGE IS INTENTIONALLY LEFT BLANK]
37
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
GTC BIOPHARMACEUTICS, INC. TAURUS HSA, LLC
By: /s/ Xxxxxxxx X. Xxx By: /s/ Xxxxxx Xxxxxxxx
------------------------------------ -------------------------------
Name: Xxxxxxxx X.xxx Name: Xxxxxx Xxxxxxxx
Title: Chairman & Chief Executive Officer Title: Authorized Representative
38
EXHIBIT F
ASSIGNMENTS OF PATENTS
39
CORPORATE ASSIGNMENT AND AGREEMENT
In consideration of One Dollar ($1.00) and other good and valuable
consideration, of which receipt is hereby acknowledged, GTC Biotherapeutics Inc.
a corporation of the Commonwealth of Massachusetts, having an office at 000
Xxxxxxxx Xxxxxxxxx, Xxxxx 000 Xxxxxxxxxx, Xxxxxxxxxxxxx 00000, and its
successors, assigns and legal representatives (hereinafter referred to as the
"ASSIGNOR"), owner of the entire right, title, and interest throughout the world
in and to the "INTELLECTUAL PROPERTY", identified as the patent application
related to [****(*)] filed on [****(*)] described in an application for Letters
Patent of the United States, Serial No. [****(*)] and its international
equivalents hereby sells and assigns to Taurus hSA LLC (hereinafter referred to
as the "ASSIGNEE"), a Delaware limited liability company, Assignor's entire
right, title and interest, in the said Intellectual Property, provided for
above, to be held and enjoyed by Assignee, its successors and assigns, as fully
and entirely as the same would have been held and enjoyed by the Assignor had
this assignment and sale not been made. This right extends and encompasses all
the rights and privileges in said application and under any and all Letters
Patent that may be granted in the United States for said inventions including,
without limitation, any continuation, continuation-in-part, division, renewal,
substitute, extension, or reissue thereof or any legal equivalent thereof in the
United States; as well as the entire right, title and interest in and to said
inventions for all countries foreign to the United States, including all rights
of priority arising from the application aforesaid, new filings and all the
rights and privileges under any and all forms of protection, including Letters
Patent, that may be granted in said countries foreign to the United States for
said Intellectual Property. The assigned rights, moreover, include the right to
bring suit and recover damages for past infringement.
Assignor also authorizes Assignee to make application for such protection in its
own name and maintain such protection in any and all countries foreign to the
United States, and to invoke and claim for any application for patent or other
form of protection for said inventions, without further authorization from
Assignor, any and all benefits, including the right of priority provided by any
and all treaties, conventions, or agreements.
Assignor hereby consents that a copy of this assignment shall be deemed a full
legal and formal equivalent of any document which may be required in any country
in proof of the right of Assignee to apply for patent or other form of
protection for said inventions and to claim the aforesaid benefit of the right
of priority.
Assignor agrees that, when requested, it shall, without charge to Assignee, but
at its expense, sign or have signed all papers, and do all acts which may be
necessary, desirable or convenient in connection with said applications,
patents, or other forms of protection. Assignor further covenants that Assignee
will, upon its request, be provided promptly with all pertinent facts and
documents relating to said Intellectual Property and said inventions as may be
known and accessible to Assignor and will testify as to the same in any
interference or litigation related
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(*) Confidential Treatment has been requested for the marked portion.
40
thereto and will promptly execute and deliver to Assignee or its legal
representative any and all papers, instruments or affidavits required to apply
for, obtain, maintain, issue and enforce said Intellectual Property, said
inventions and said equivalents in the United States or in any foreign country,
which may be necessary or desirable to carry out the purposes thereof.
In testimony whereof, GTC Biotherapeutics Inc. has caused this assignment to be
signed by its duly authorized officers and its seal to be attached this 20th day
of December, 2002.
Date: December 20, 2002 /s/ Xxxxxxxx X. Xxx
---------------------------
GTC Biotherapeutics Inc.
By: Xxxxxxxx X. Xxx
Title: Chairman & Chief Executive Officer
(Corporate Seal)
State of Massachusetts
County of Suffolk
Before me personally appeared said Xxxxxxxx X. Xxx and acknowledged the
foregoing instrument to be his free act and deed this 20th day of December,
2002.
/s/ Xxxx X. Xxxxxxxx
-----------------------------------
Seal , Notary Public
My Commission Expires:
(stamp)
Xxxx X. Xxxxxxxx, Notary Public
My commission expires May 8, 2009
41
CORPORATE ASSIGNMENT AND AGREEMENT
In consideration of One Dollar ($1.00) and other good and valuable
consideration, of which receipt is hereby acknowledged, GTC Biotherapeutics Inc.
a corporation of the Commonwealth of Massachusetts, having an office at 000
Xxxxxxxx Xxxxxxxxx, Xxxxx 000 Xxxxxxxxxx, Xxxxxxxxxxxxx 00000, and its
successors, assigns and legal representatives (hereinafter referred to as the
"ASSIGNOR"), owner of the entire right, title, and interest throughout the world
in and to the "INTELLECTUAL PROPERTY", identified as the patent application
related to [****(*)] filed on [****(*)] described in an application for Letters
Patent of the United States, Serial No. [****(*)] and its international
equivalents hereby sells and assigns to Taurus hSA LLC (hereinafter referred to
as the "ASSIGNEE"), a Delaware limited liability company, Assignor's entire
right, title and interest, in the said Intellectual Property, provided for
above, to be held and enjoyed by Assignee, its successors and assigns, as fully
and entirely as the same would have been held and enjoyed by the Assignor had
this assignment and sale not been made. This right extends and encompasses all
the rights and privileges in said application and under any and all Letters
Patent that may be granted in the United States for said inventions including,
without limitation, any continuation, continuation-in-part, division, renewal,
substitute, extension, or reissue thereof or any legal equivalent thereof in the
United States; as well as the entire right, title and interest in and to said
inventions for all countries foreign to the United States, including all rights
of priority arising from the application aforesaid, new filings and all the
rights and privileges under any and all forms of protection, including Letters
Patent, that may be granted in said countries foreign to the United States for
said Intellectual Property. The assigned rights, moreover, include the right to
bring suit and recover damages for past infringement.
Assignor also authorizes Assignee to make application for such protection in its
own name and maintain such protection in any and all countries foreign to the
United States, and to invoke and claim for any application for patent or other
form of protection for said inventions, without further authorization from
Assignor, any and all benefits, including the right of priority provided by any
and all treaties, conventions, or agreements.
Assignor hereby consents that a copy of this assignment shall be deemed a full
legal and formal equivalent of any document which may be required in any country
in proof of the right of Assignee to apply for patent or other form of
protection for said inventions and to claim the aforesaid benefit of the right
of priority.
Assignor agrees that, when requested, it shall, without charge to Assignee, but
at its expense, sign or have signed all papers, and do all acts which may be
necessary, desirable or convenient in connection with said applications,
patents, or other forms of protection. Assignor further covenants that Assignee
will, upon its request, be provided promptly with all pertinent facts and
documents relating to said Intellectual Property and said inventions as may be
known and accessible to Assignor and will testify as to the same in any
interference or litigation related
----------
(*) Confidential Treatment has been requested for the marked portion.
42
thereto and will promptly execute and deliver to Assignee or its legal
representative any and all papers, instruments or affidavits required to apply
for, obtain, maintain, issue and enforce said Intellectual Property, said
inventions and said equivalents in the United States or in any foreign country,
which may be necessary or desirable to carry out the purposes thereof.
In testimony whereof, GTC Biotherapeutics Inc. has caused this assignment to be
signed by its duly authorized officers and its seal to be attached this 20th day
of December, 2002.
Date: December 20, 2002 /s/ Xxxxxxxx X. Xxx
--------------------
GTC Biotherapeutics Inc.
By: Xxxxxxxx X. Xxx
Title: Chairman & Chief Executive Officer
(Corporate Seal)
State of Massachusetts
County of Suffolk
Before me personally appeared said Xxxxxxxx X. Xxx and acknowledged the
foregoing instrument to be his free act and deed this 20th day of December,
2002.
/s/ Xxxx X. Xxxxxxxx
-----------------------------------
Seal , Notary Public
My Commission Expires:
(stamp)
Xxxx X. Xxxxxxxx, Notary Public
My commission expires May 8, 2009
43
EXHIBIT G
RIGHTS GRANTED TO PHARMING, TRANSOVA AND TO USE OR PRACTICE UNDER THE rhSA
RIGHTS IN THE FIELD
PHARMING
Under the Pharming Agreement, GTC has granted to Pharming and its Pharming
Agreement Affiliates a non-exclusive, worldwide, non-terminable license with a
limited right to grant sublicenses under the Pharming rhSA Patent Rights (as
defined below) for, INTER ALIA, the production, use and/or sale of transgenic or
chimeric cattle (including their respective embryos, gametes and/or progeny) for
the production of Biopharmaceuticals in the milk (including any fraction
thereof) secreted from such transgenic or chimeric cattle, including, without
limitation, the production of human albumin (sometimes commonly referred to as
"human serum albumin") ("hSA").
For the purposes of this Exhibit "PHARMING rhSA PATENT RIGHTS" means: (a)
USSN [****(*)] entitled [****(*)] including, without limitation, [****(*)], and
any foreign counterpart applications, together with any and all patents that
have issued or in the case of applications heretofore filed, in the future issue
therefrom or whose priority date is based thereon; and (b) all related
divisionals, continuations, national stage applications or patents filed under
the Patent Cooperation Treaty of 1978, reissues or renewals, of the foregoing.
The rights granted to Pharming to the Pharming rhSA Patent Rights under the
Pharming Agreement are limited such that, so long as GTC has any right, license,
or interest in the hSA Technology (as defined below), Pharming: (i) cannot
practice or grant any Pharming Agreement Affiliate of Pharming or other Third
Party the right to practice the Pharming rhSA Patent Rights necessary or useful
for (a) the development, manufacture, production, use, sale, offer for sale, or
importation of hSA in or through any transgenic or chimeric animal itself or (b)
the production of hSA using cell culture techniques or microorganisms
(collectively (a) and (b) are the "hSA TECHNOLOGY"); (ii) shall not license,
sublicense, assign, or alienate to any Third Party or Pharming Agreement
Affiliate of Pharming (specifically other than GTC and its Pharming Agreement
Affiliates) any hSA Technology that would allow, enable, assist, or otherwise
immunize from suit any Pharming Agreement Affiliate of Pharming or Third Party
in the production of hSA; and (iii) shall not assist any Third Party or Pharming
Agreement Affiliate of Pharming (specifically other than GTC and its Pharming
Agreement Affiliates) in the
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44
development, production or use of any transgenic or chimeric cattle capable of
producing recombinant hSA utilizing the hSA Technology.
Under the Pharming Agreement, for so long as GTC has any right, license, or
interest in such hSA Technology, the specific limitations of Pharming described
in the above paragraph shall not apply to the grant of a license to Fresenius AG
or any Pharming Agreement Affiliate, division, subdivision or representative of
Fresenius AG (collectively, "FRESENIUS") with regard to the production of hSA,
provided, however, that Pharming and its' Pharming Agreement Affiliates shall
not grant Fresenius any license under the hSA Technology to develop,
manufacture, produce, use, sell, offer for sale, or import hSA, except in
connection with an executed and in force agreement between Fresenius and GTC.
For the purposes of this paragraph, GTC is not considered a Pharming Agreement
Affiliate, division, subdivision or representative of Fresenius AG.
TRANSOVA
Under the TransOva Agreement, GTC has granted to TransOva a non-exclusive,
royalty-free license to use the Microtechnology (as that term is defined in the
TransOva Agreement) and GTC Project Technology (as that term is defined in the
TransOva Agreement) for the production of transgenic founder cows capable of
expressing commercial quality human albumin milk.
[****(*)]
GTC is obligated to grant a worldwide, royalty-bearing, non-exclusive
license, with the right to grant sublicenses, to [****(*)] for all uses under
the United States patent application entitled [****(*)] which was filed on
[****(*)] as a provisional application with no serial number assigned as of yet,
and all continuations and divisional applications thereof, and all foreign
equivalents of the preceding.
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45
EXHIBIT H
INTERFERENCE
An interference [****(*)] has been declared by the United States Patent and
Trademark Office with regard to GTC patent application, co-owned by [****(*)],
serial number [****(*)] entitled [****(*)], which is included in the GTC
Platform Patent Rights, and three issued United States Patents assigned and/or
owned by Pharming. These Pharming patents are [****(*)] respectively and are
included in the Cattle Patent Rights. These Pharming Patents were each invented
by [****(*)]. Currently the Parties have filed a joint motion with the Board of
Patent Appeals and Interferences to make the court declare that there is no
intereference in fact.
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(*) Confidential Treatment has been requested for the marked portion.
46
