EXHIBIT 10.102
LICENSE AGREEMENT
This License Agreement is made this 14th day of April, 1999 (the
"Effective Date"), by and among IntraTherapeutics Inc. ("Licensee"), a Minnesota
corporation, and American Biomed, Inc. ("ABI"), a Texas corporation.
RECITALS
A. ABI has developed certain technology related to a percutaneous filter
for carotid angioplasty.
B. ABI desires to grant, and Licensee desires to obtain, the exclusive
worldwide, royalty-bearing license to such technology, all on the terms set
forth in this Agreement.
NOW, THEREFORE, the parties hereto agree as follows:
ARTICLE 1
Definitions
As used herein, the following definitions and terms shall have the
designated meanings:
1.1 "Affiliate" of any entity shall mean any other entity that
directly, or indirectly through one or more intermediaries, controls, or is
controlled by, or is under common control with, the first entity. Control shall
mean owning at least 50 percent of the total voting power of the entity.
1.2 "Confidential Information" shall mean all information provided
hereunder to a party (the "receiving party") by a party (the "disclosing party")
or its employees, agents or consultants, excluding any information which:
(a) is or becomes publicly available through no fault of the receiving
party; or
(b) can be reasonably demonstrated to have been known to the receiving
party independently of any disclosure of "Confidential Information" by
the disclosing party or its employees, agents or consultants; or
(c) is disclosed to the receiving party by a third party who, to the
best of the receiving party's knowledge, is lawfully in possession of
the same and has the right to make such disclosure; or
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(d) has been independently developed by the receiving party without
reference to the information disclosed to the receiving party by the
disclosing party or its employees, agents or consultants.
All "Confidential Information" disclosed to the receiving party under this
Agreement shall ultimately be in writing and bear a legend "Proprietary",
"Confidential" or words of similar import. Accordingly, all "Confidential
Information" disclosed in any manner other than writing shall be preceded by an
oral statement indicating that the information is proprietary or confidential
and shall be followed by transmittal of a reasonably detailed written summary of
the information provided to the receiving party with identification as
"Confidential Information" designated as above within thirty (30) days.
1.3 "Expiration" or "Expired" shall mean with respect to a particular
patent, the patent's expiration, abandonment, cancellation, disclaimer, award to
another party other than ABI or an Affiliate of ABI in an interference
proceeding, or declaration of invalidity or unenforceability of all claims
thereof by a court or other authority of competent jurisdiction (including a
re-examination or reissue proceeding) from which no further appeal has or can be
taken. References to an "Unexpired" patent shall mean a patent that has not
Expired.
1.4 "Licensed Products" shall mean any product, the manufacture, use,
importation or sale of which is covered by any Unexpired claim of the Subject
Technology.
1.5 "Net Sales" of Licensed Products for a particular period shall mean
the amounts that Licensee or any Affiliate of Licensee actually invoices third
parties (eliminating transactions between Affiliates) for sales of Licensed
Products during such period, excluding sales, use or excise tax, freight, duty
or insurance included therein, and credits or repayments due to rejection,
defect or return. If Licensee or any Affiliate of Licensee sells at a single
price or rate a packaged combination of products, not all of which if sold
individually would be Licensed Products, then "Net Sales" of Licensed Products
with respect to such sales of packaged products shall equal the total sales
price of the packaged combination multiplied by the ratio of the individual
retail list price of the Licensed Products contained in the packaged combination
to the sum of all individual retail prices of every item in the packaged
combination (if all of such items were sold separately). If all such items are
not sold separately, any item not sold separately shall have a price attributed
to it for purposes of this definition consistent with pricing of similar
products or their functional equivalents. Without limitation of the foregoing,
Net Sales shall include all transfers of Licensed Products that Licensee or any
Affiliate of Licensee records as a sale pursuant to generally accepted
accounting principles consistently applied. Net Sales which are denominated in
currencies other than U.S. Dollars shall be converted into U.S. Dollars in
accordance with generally accepted accounting principles.
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1.6 "Subject Technology" shall mean (i) the issued patents, and patents
arising out of the patent applications, listed on Exhibit A hereto, (ii) all
reissues, continuations, continuations-in-part, extensions, reexaminations, and
foreign counterparts thereof, and (iii) all trade secrets and know-how owned or
controlled by ABI prior to the date of this Agreement which relate to
percutaneous filters for carotid angioplasty, as disclosed in the patents and
the patent applications listed on Exhibit A.
ARTICLE 2
License Rights
2.1 Exclusive License Grant. Subject to the terms and provisions hereof,
ABI hereby grants to Licensee a worldwide, royalty-bearing, and exclusive
license under the Subject Technology to make, have made, use, import, sell and
offer for sale Licensed Products.
2.2 Know-How Transfer; Access to ABI's Consultant.
(a) Promptly after the Effective Date, ABI shall provide to Licensee
copies of all Subject Technology not previously disclosed to Licensee, including
without limitation, all market research, focus group data, memoranda, marketing
materials, or other documents, whether in written or electronic format,
embodying or relating to the Subject Technology.
(b) Upon reasonable notice by Licensee to ABI, during the first six
months after execution of the Agreement, ABI will use reasonable efforts to make
[employees and consultants], available to meet with Licensee, subject to such
individuals' other commitments and schedule, for up to an aggregate 100 hours,
to disclose to Licensee on ABI's behalf those trade secrets and know-how
included within the Subject Technology to allow Licensee to better understand
and practice the inventions disclosed therein to which the licenses under this
Agreement pertain. Licensee shall reimburse such individuals for any reasonable
travel and lodging expenses, if any, incurred by them for the purposes of such
disclosure.
2.3 Right of First Negotiation. If ABI, at any time during the two (2)
year period commencing on the date of execution of this Agreement, decides to
license to any third party any other percutaneous filter technology, it shall so
notify Licensee in writing, and Licensee shall have a right of first negotiation
for a period of three (3) months in which to negotiate the terms of a mutually
agreeable license agreement with ABI. If the parties fail to agree on the terms
of such an agreement during such three (3) month period, ABI shall be entitled
to license such technology to any third party, provided that it does so on terms
not materially more favorable to such licensee than those last offered to
Licensee.
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ARTICLE 3
Royalties and Reports
3.1 License Fee. Within three (3) days of the Effective Date, Licensee
shall pay to ABI a payment of Four Hundred Fifty Thousand Dollars ($450,000).
Within sixty (60) days of the Effective Date, Licensee shall pay to ABI a
payment of Five Hundred Fifty Thousand Dollars ($550,000). Such payments shall
be made by wire transfer in immediately available funds to an account designated
by ABI.
3.2 Royalties on Net Sales by Licensee. Subject to the terms of this
Agreement, Licensee shall pay to ABI a royalty (the "Royalty" or "Royalties")
equal to five percent (5%) of Net Sales of Licensed Products. Licensee's
obligation to pay royalties hereunder shall expire, on a country-by-country
basis, at such time as (i) all of the patents (including patents arising out of
the patent applications listed on Exhibit A) included within the Subject
Technology (an all extensions thereof) have Expired in such country or (ii) ten
(10) years from the first commercial sale of any Licensed Product, whichever is
longer.
3.3 Reports and Payments. Within forty-five (45) days after the end of
each calendar quarter, Licensee shall provide with a written report indicating
(i) the amount of its Net Sales during such quarter, and (ii) the amount of the
Royalties due for such quarter. Simultaneously with making such report, Licensee
shall pay to ABI the amount of royalties then due.
3.4 Records. Licensee shall keep accurate written records sufficient in
detail to enable ABI to verify the information contained in the reports
described in Section 3.3. Such records for a particular calendar quarter shall
be retained by Licensee for a period of not less than four years after the end
of such quarter.
3.5 Audit of Records. Upon reasonable notice and during regular
business hours, Licensee shall from time to time (but no more frequently than
twice annually) make available the records referred to in Section 3.4 for audit
by an independent nationally recognized accounting firm selected by ABI to
verify the accuracy of the reports provided to ABI. Such representatives shall
execute a suitable confidentiality agreement reasonably acceptable to Licensee
prior to conducting such audit. Such representatives may disclose to ABI only
their conclusions regarding the accuracy and completeness of the reports
described in Section 3.3 and the records related thereto, and shall not disclose
Licensee's confidential business information to ABI without the prior written
consent of Licensee. Such audits shall be at ABI's cost and expense; provided
that if any such audit reveals underpayment of Royalties by ten percent (10%) or
more for any year, then Licensee shall reimburse the auditing party for the fees
and expenses of ABI's independent auditors incurred by ABI in connection with
such audit.
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ARTICLE 4
Confidentiality
4.1 Confidentiality. The parties acknowledge that the patent
applications listed in Exhibit A hereto, the inventions claimed therein, and all
trade secrets and know-how included within the Subject Technology constitute
"Confidential Information" of ABI, subject to the exceptions set forth in
Section 1.3. Each party agrees not to disclose or use any of the other party's
Confidential Information except as expressly permitted in connection with the
exercise of its rights hereunder. Each party shall not disclose the other
party's Confidential Information to any employee or consultant unless such
employee or consultant is obligated under a confidentiality agreement to
maintain such other party's Confidential Information in strict confidence, and
not to use such information other than, in accordance with the terms of this
Agreement. Each party agrees to hold the other party's Confidential Information
in strict confidence and treat it with not less than the same degree of care to
avoid disclosure as such party employs with respect to its own information of
like importance.
4.2 Delivery and Return of Confidential Information. Upon termination of
this Agreement or the licenses granted hereunder as provided herein, each party
shall within thirty (30) days of such termination return to the other party all
of the other party's Confidential Information. Notwithstanding the foregoing
each party shall have the right to retain one copy of such party's Confidential
Information in its legal department files for archival purposes only.
ARTICLE 5
Intellectual Property
5.1 Control of Subject Technology.
(a) Licensee shall have the first right, but not the obligation, in
Licensee's discretion and at its sole expense, to prosecute any alleged
infringement, misappropriation or misuse of Subject Technology. If Licensee
decides at any time not to commence or continue prosecution of such a legal
action, it shall so notify ABI in writing, and ABI shall have the right, in its
absolute discretion and sole expense, to commence or continue prosecution of
such action. In any such legal action either party may prosecute or defend under
this Section 5.1(a), the other party shall cooperate with and at the request of
the party prosecuting the suit. The party prosecuting such legal action shall be
entitled to retain all monies recovered.
(b) ABI shall have the sole right to apply for, prosecute, or cause the
issuance, amendment, maintenance, re-examination or reissue of any patents
included within the Subject Technology, any patent applications listed in
Exhibit A hereto, or any other patent applications related to trade secrets or
know-how included within the Subject Technology; provided, however that Licensee
shall have the right to review and approve
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of any filings or other correspondence related to the Licensed Products with the
appropriate patenting authority. If ABI decides, in its sole discretion, to
abandon a patent or patent applications (or particular claims therein) within
the Subject Technology, then it shall so notify Licensee in writing at least
sixty (60) days prior to any filing or bar date, and Licensee may take whatever
action it deems necessary at its expense to maintain such patent or patent
application. Any such patent or patent application shall excluded from the term
Subject Technology for the purposes of determining Licensee's royalty
obligations hereunder.
5.2 Indemnification.
(a) Licensee shall indemnify, defend and hold harmless ABI, its Affiliates
and ABI's and its Affiliates' respective officers, directors, shareholders,
employees and agents (collectively, all such indemnitees are referred to in this
Section 5.2(a) as "ABI Indemnitees") against and in respect of any and all
claims, demands, losses, obligations, liabilities, damages (and including
without limitation compensatory and punitive damages), deficiencies, actions,
settlements, judgments, costs and expenses which the ABI Indemnitees may incur
or suffer or with which it may be faced (including reasonable costs and legal
fees incident thereto or in seeking indemnification therefor) (collectively
referred to as "ABI Damages") arising out of or based upon (i) any Product
Liability Claims resulting from Licensee's development, manufacture, use, or
sale of any Licensed Product, or (ii) any breach of this Agreement by Licensee.
As used herein, the term "Product Liability Claims" shall mean claims for
personal injury or death based on alleged breach of product warranty, strict
liability in tort, or negligent product design or manufacture.
(b) ABI shall indemnify and hold harmless Licensee, its Affiliates and
Licensee's and its Affiliates' respective officers, directors, shareholders,
employees and agents (collectively, all such indemnitees are referred to in this
Section 5.2(b) as "Licensee Indemnitees") against and in respect of any and all
claims, demands, losses, obligations, liabilities, damages (and including
without limitation compensatory and punitive damages), deficiencies, actions,
settlements, judgments, costs and expenses which the Licensee Indemnitees may
incur or suffer or with which it may be faced (including reasonable costs and
legal fees incident thereto or in seeking indemnification therefor)
(collectively referred to as "Licensee Damages") arising out of or based upon
any breach of this Agreement by ABI.
5.3 Infringement by Third Party. Each party shall promptly notify the other
party in writing if such party knows or has reason to believe that the rights of
ABI or Licensee relating to the Subject Technology, are being infringed by a
third party.
5.4 Licensee Regulatory Interaction Rights. Notwithstanding Section 5.1
above, interaction with the regulatory agencies in any country, including,
without limitation the FDA, concerning Licensed Products of Licensee shall be
exclusively conducted by Licensee and Licensee shall be the official company
sponsor. Subject to
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Section 5.2(a) hereof, Licensee shall have complete authority to act as
Licensee, in its sole discretion, deems appropriate with respect to any such
regulatory matter.
5.5 Licensee Marketing Rights. Nothing herein shall prevent or limit
Licensee from setting its own prices for Licensed Products or determining
Licensee's marketing policies and practices in its sole discretion.
5.6 Trademark. Nothing in this Agreement shall be deemed to grant to
Licensee any right to use the trademark "ABI", the ABI corporate logo, or any
other trademark owned by ABI or its Affiliates.
ARTICLE 6
Representations & Warranties
6.1 Organization. Each party represents and warrants to the other party
that such party is a corporation duly organized, validly existing, and in good
standing under the laws of the jurisdiction of its incorporation.
6.2 Authorization of Transaction. Each party represents and warrants to the
other party that it has full power and authority (including full corporate
power and authority) to execute and deliver this Agreement and to perform its
obligations hereunder. All necessary corporate proceedings (including any
necessary approval by the board of directors) have been taken by such party to
duly authorize the execution, delivery, and performance of this Agreement by
such party. This Agreement constitutes the valid and legally binding obligation
of such party, enforceable against such party in accordance with its terms and
conditions.
6.3 No Conflicts. ABI represents and warrants to Licensee that it has not
entered into any inconsistent prior obligations that would impair the rights
being licensed to Licensee hereunder.
6.4 Right to License. ABI represents and warrants to Licensee that it owns
or has the right to license or sublicense all the rights granted to Licensee
herein with respect to the Subject Technology.
6.5 No claims. ABI represents and warrants to Licensee that (i) there are
no third party claims that would challenge or impair the license of the rights
granted to Licensee herein, including, without limitation, any claims based upon
patents, copyrights or trade secret laws in the United States; and (ii) the
manufacture, use, importation or sale of the Licensed Products under the license
granted herein under the Subject Technology will not infringe any patents,
copyrights, trade secrets or any other intellectual property rights of any third
parties.
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ARTICLE 7
Term and Termination
7.1 Term of License. Unless otherwise terminated under provisions of this
Article 7, this Agreement and the license granted under Section 2.1 shall
constitute until such time as (i) all of the patents (including patents arising
out of the patent applications listed on Exhibit A) included within the Subject
Technology (and all extensions thereof) have Expired or (ii) ten (10) years from
the first commercial sale of any Licensed Product, whichever is longer.
7.2 Termination.
(a) If Licensee breaches any of the material terms, conditions or
agreements of this Agreement, then ABI may terminate this Agreement, at its
option and without prejudice to any of its other legal and equitable rights and
remedies, including, but not limited to, seeking monetary damages and/or an
injunction, by giving Licensee sixty (60) days notice in writing, particularly
specifying the breach. Such notice of termination shall not be effective if
Licensee cures the specified breach within such sixty (60) day period. During
such 60-day period, one or more executive officers of each party (meaning for
purposes hereunder any vice president or higher level officer) shall meet or
correspond to discuss such alleged breach and/or attempted cure thereof, and
attempt in good faith to resolve any dispute between the parties with respect
thereto; provided that if any such dispute is not resolved to ABI's
satisfaction, then ABI may terminate this Agreement without prejudice to any of
its other legal and equitable rights and remedies including, but not limited to,
seeking monetary damages and/or an injunction. Licensee may terminate this
Agreement at any time in its discretion upon sixty (60) days' prior written
notice. Termination of this Agreement shall not affect Licensee's obligation to
pay Royalties with respect to Net Sales of Licensed Products made prior to such
termination and shall not result in any refund to Licensee of any consideration
previously paid to ABI. The parties acknowledge that, with respect to any other
breaches by Licensee of the terms, conditions or agreements of this Agreement,
ABI may pursue its full legal and equitable rights and remedies against
Licensee, including, but not limited to, seeking money damages and/or an
injunction.
(b) Either party may, by written notice to the other party (which notice
shall be effective upon receipt), terminate this Agreement in the event that
such other party becomes insolvent, makes an assignment for the benefit of
creditors, goes into liquidation or receivership or otherwise loses legal
control of its business.
(c) The parties acknowledge and agree that all rights and licenses granted
pursuant to this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the Bankruptcy Code, licenses of rights to
"intellectual property" as defined under Section 101(52) of the Bankruptcy Code,
and that Licensee, as a licensee hereunder, shall retain and may fully exercise
all of its rights and elections under the Bankruptcy Code.
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ARTICLE 8
Miscellaneous
8.1 Assignment. Either party may assign or otherwise transfer its rights
and obligations under this Agreement to any successor in interest (by merger,
share exchange, combination or consolidation of any type, operation of law,
purchase or otherwise), provided that such assignee or successor agrees to be
bound by the terms hereof.
8.2 Entire Agreement. This Agreement, together with the Exhibits hereto,
constitutes the entire agreement of the parties with respect to the subject
matter hereof and supersedes all previous proposals or agreements, oral or
written, and all negotiations, conversations or discussions heretofore had
between the parties related to the subject matter of this Agreement.
8.3 Survival. Articles 4 and 8 and Section 5.3 shall survive termination or
expiration of this Agreement for any reason and continue thereafter in full
force and effect.
8.4 Waiver, Discharge, etc. This Agreement may not be released, discharged,
abandoned, changed or modified in any manner, except by an instrument in writing
signed on behalf of each of the parties to this Agreement by their duly
authorized representatives. The failure of either party to enforce at any time
any of the provisions of this Agreement shall in no way be construed to be a
waiver of any such provision, nor in any way to affect the validity of this
Agreement or any part of it or the right of either party after any such failure
to enforce each and every such provision. No waiver of any breach of this
Agreement shall be held to be a waiver of any other or subsequent breach.
8.5 Execution in Counterparts. This Agreement may be executed in one or
more counterparts, all of which shall be considered one and the same agreement,
and shall become a binding agreement when one or more counterparts have been
signed by each party and delivered to the other party.
8.6 Titles and Headings; Construction. The titles and headings to Sections
herein are inserted for the convenience of reference only and are not intended
to be a part of or to affect the meaning or interpretation of this Agreement.
This Agreement shall be construed without regard to any presumption or other
rule requiring construction hereof against the party causing this Agreement to
be drafted.
8.7 Benefit. Nothing in this Agreement, expressed or implied, is intended
to confer on any person other than the parties to this Agreement or their
respective permitted successors or assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement.
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8.8 Notices. All notices or other communications to a party required or
permitted hereunder shall be in writing and shall be delivered personally or by
telecopy (receipt confirmed) to such party (or, in the case of an entity, to an
executive officer of such party) or shall be given by certified mail, postage
prepaid with return receipt requested, addressed as follows:
if to Licensee, to:
IntraTherapeutics, Inc.
000 Xxxxxx Xxxxx
Xx. Xxxx, Xxxxxxxxx 00000
Attention: President and CEO
Facsimile number: 000-000-0000
with copies to:
and if to ABI, to:
ABI, Inc.
00000 Xxxxxxx Xxxx Xx, Xxxxx 000
Xxx Xxxxxxxxx, Xxxxx 00000
Attention: Xxxxxx X. Xxxx, President & CEO
Facsimile number: (000) 000-0000
with copies to:
Licensee or ABI may change their respective above-specified recipient and/or
mailing address by notice to the other party given in the manner herein
prescribed. All notices shall be deemed given on the day when actually delivered
as provided above (if delivered personally or by telecopy) or on the day shown
on the return receipt (if delivered by mail).
8.9 Severability. If any provision of this Agreement is held invalid by a
court of competent jurisdiction, the remaining provisions shall nonetheless be
enforceable according to their terms. Further, if any provision is held to be
overboard as written, such provision shall be deemed amended to narrow its
application to the extent necessary to make the provision enforceable according
to applicable Law and shall be enforced as amended.
8.10 Marking. If requested by ABI, Licensee shall cause all Licensed
Products manufactured or sold under this license in the United States by it with
a notice to the effect that such product is licensed under the applicable U.S.
patents.
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8.11 Governing Law. This Agreement shall be construed in accordance with
Minnesota law, excluding its choice of law provisions.
IN WITNESS WHEREOF, each of the parties has caused this License
Agreement to be executed in the manner appropriate to each, effective as of the
date first above written.
IntraTherapeutics, Inc.
By: [Signature appears here]
-----------------------------
Its: President and CEO
American Biomed, Inc.
By: [Signature appears here]
------------------------------
Its: President and CEO
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Exhibit A
Subject Technology
1. U.S. Patent Number 5,695,519;
2. [Patent applications for percutaneous filters for carotid angioplasty and any
patents arising out of such patent applications];
3. All reissues, continuations, continuations-in-part, extensions,
reexaminations, and foreign counterparts of the foregoing, and
4. All trade secrets and know-how owned or controlled by ABI prior to the date
of this Agreement which relate to percutaneous filters for carotid angioplasty.
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