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Exhibit 10.18
SETTLEMENT AGREEMENT
This Settlement Agreement (this "Agreement"), is entered into by and
between Becton Xxxxxxxxx and Company, a New Jersey corporation, whose principal
place of business is at 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000
(hereinafter referred to as "BECTON") and Quidel Corporation, a Delaware
corporation, whose principal place of business is at 00000 XxXxxxxx Xxxxx, Xxx
Xxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as "QUIDEL"), effective as of
April 1, 1997 ("Effective Date").
RECITALS
WHEREAS, BECTON and QUIDEL are parties to the action Becton Xxxxxxxxx
and Company v. Quidel Corporation, D.Del. Case No. 97-167 (the "Litigation");
and
WHEREAS, in the Litigation, BECTON has charged QUIDEL with
infringement of U.S. Patent No. 4,703,017 and U.S. Patent No. 5,591,645; and
WHEREAS, QUIDEL denies that it has infringed the patents set forth above; and
WHEREAS, BECTON and QUIDEL desire to settle and terminate the
Litigation and to cause the Litigation to be dismissed as between the parties
on the terms and conditions set forth in this Agreement.
NOW, THEREFORE, in consideration of the foregoing and the mutual
agreements set forth herein, the parties agree as follows:
A. LICENSE AGREEMENT AND DISMISSAL
1. Contemporaneously with the execution of this Agreement, each
party shall execute and deliver to counsel for the other party the License
Agreements attached hereto as Exhibit A.
2. Upon receipt by BECTON of the payment specified in Article 4
of the Xxxxxxxx License Agreement - Human Market included in Exhibit B, BECTON
shall thereafter promptly file a dismissal with prejudice of the Litigation.
B. MUTUAL RELEASES
1. For purposes of this Agreement, the term "claim" shall mean a
claim, right, asserted right or cause of action, whether in law or equity, for
money damages or other relief, including costs and attorneys' fees, and whether
asserted or unasserted or known or unknown, which arose on or before the
Effective Date and which is based on acts or omissions occurring on or before
the Effective Date.
2. Immediately upon the final execution of this Agreement by the
parties and the receipt by BECTON of the sum set forth in Article 4 of the
Xxxxxxxx License Agreement - Human Market, BECTON, on its behalf and on behalf
of anyone claiming by or through it, shall and does fully and forever remise,
release, relinquish, acquit and discharge any claim against QUIDEL that arises
out of the transactions or occurrences that are the subject matter of the
complaint in the Litigation and could have been brought in the Litigation.
3. Immediately upon the final execution of this Agreement by the
parties, QUIDEL, on its own behalf and on behalf of anyone claiming by or
through it, shall and does fully and forever remise, release, relinquish,
acquit and discharge any claim against BECTON that arises out of the
transactions or occurrences that are the subject matter of the Litigation and
could have been brought in the Litigation.
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Exhibit 10.18
4. The releases set forth above cover and extend to present and
former officers, employees, representatives and agents, the insurers of, and
the successors and assigns of the parties released, and to any other person or
entity that may be claimed to be responsible for the acts or liabilities of the
parties released.
C. AGREEMENT NOT TO CHALLENGE INFRINGEMENT
1. QUIDEL agrees that it (a) will not assert non-infringement of
U.S. Patent No. 4,703,017 or U.S. Patent No. 5,591,645 as a defense in any
dispute or litigation between the parties concerning QUIDEL products listed in
Exhibit B or QUIDEL products that are Not Materially Different, as hereinafter
defined, from such listed products, and (b) will not commence any action for a
declaratory judgment that QUIDEL products listed in Exhibit B or QUIDEL
products that are Not Materially Different, as hereinafter defined, from such
listed products, do not infringe U.S. Patent No. 4,703,017 or U.S. Patent No.
5,591,645.
2. For purposes of this Settlement Agreement, a QUIDEL product is
Not Materially Different if, when considered in regard to the elements of the
claims of U.S. Patent No. 4,703,017 or U.S. Patent No. 5,591,645, that product
incorporates only an insubstantial change from a QUIDEL product listed in
Exhibit B.
3. In any dispute or litigation over whether a QUIDEL product is
Not Materially Different, the burden of proof shall rest with BECTON to prove
by a preponderance of the evidence that a QUIDEL product not listed in Exhibit
B is Not Materially Different.
D. ACKNOWLEDGMENT AND AGREEMENT NOT TO CHALLENGE VALIDITY AND
ENFORCEABILITY
1. QUIDEL acknowledges the validity and enforceability of U.S.
Patent No. 4,703,017 and U.S. Patent No. 5,591,645 and agrees that it will not
challenge the validity or enforceability of either or both of these patents in
any future litigation between the parties involving any product. QUIDEL
specifically acknowledges that its agreement not to challenge the validity or
enforceability of either or both of these patents is absolute and in all
respects precludes litigation of the validity or enforceability issue in any
litigation between the parties.
E. GOVERNING LAW
This Agreement shall be governed by the laws of the State of Delaware.
AGREED:
Dated: June 13, 1997 QUIDEL CORPORATION
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BY: /S/ XXXXXX X. XXXXXXX
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Dated: June 13, 1997 BECTON XXXXXXXXX AND COMPANY
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BY: /S/ XXXXX X. XXXXXX
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Exhibit 10.18
EXHIBIT A
[ To Be Added ]
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Exhibit 10.18
EXHIBIT B
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