TERMINATION AGREEMENT
Exhibit 10.30
The confidential portions of this exhibit have been filed separately with the
Securities and Exchange Commission pursuant to a confidential treatment request in
accordance with Rule 24b-2 of the Securities and Exchange Act of 1934, as amended.
REDACTED PORTIONS OF THIS EXHIBIT ARE MARKED BY AN ***.
This Termination Agreement (“Termination Agreement”) is dated as of February 24, 2006, by
and between Noven Pharmaceuticals, Inc., a Delaware corporation (“Noven”), and Endo
Pharmaceuticals, Inc., a Delaware corporation (“Endo”). Noven and Endo are collectively referred to
as “Parties” and individually as “Party.”
RECITALS
WHEREAS, the Parties entered into an agreement dated February 25, 2004 (“License Agreement”)
related to the exclusive distribution of certain fentanyl transdermal patch products (“Licensed
Product”);
WHEREAS, the Parties entered into a supply agreement dated as of February 25, 2004 ( “Supply
Agreement”) and an intercompany quality control agreement dated as of February 25, 2004 ( “Quality
Agreement”) relating to the Licensed Product;
WHEREAS, the Parties further agreed that they would work together with respect to certain
additional products using Noven’s transdermal patch technology (“Additional Products”), as more
particularly described in the License Agreement;
WHEREAS, the Food & Drug Administration (“FDA”) advised Noven on September 27, 2005 that the
FDA would not approve the Licensed Product based on the FDA’s assessment of potential safety
concerns related to the higher drug content in the Licensed Product;
WHEREAS, the Parties mutually desire to terminate the Supply Agreement and Quality Control
Agreement and wish to terminate the License Agreement with respect to the Licensed Product as set
forth below; and
WHEREAS, the Parties desire that the License Agreement survive with respect to the Additional
Products, with certain modifications as described herein; and
WHEREAS, this Agreement memorializes the understandings of the parties with respect to the
subject matter hereof as of December 31, 2005 (the “Effective Date”).
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NOW, THEREFORE, in consideration of the foregoing premises, and of the mutual promises and
covenants contained in the Termination Agreement, and for other good and valuable consideration,
the receipt and sufficiency of which is hereby acknowledged, Noven and Endo agree as follows:
Article 1. Definitions.
Capitalized terms used herein shall have the meaning as provided in the License Agreement,
unless as otherwise set forth below.
Article 2. Termination of Rights and Obligations with Respect to Licensed Product.
2.1 Generally. The Parties mutually agree to, and hereby do, terminate in their entirety the
Supply Agreement and the Quality Agreement, and all of the Parties’ respective rights and
obligations thereunder, if any, shall terminate as of the Effective Date. Except as explicitly
provided in this Termination Agreement, all of the Parties’ respective rights and obligations with
respect to Licensed Product under the License Agreement, if any, shall terminate; provided, that
all of the Parties’ rights and obligations under the License Agreement with respect to any
Additional Product(s) shall continue. By way of clarification of the preceding sentence, on and
after the date hereof Section 13.03 of the License Agreement (including Section 13.03(b) with
respect to the Licensed Products) shall survive and bear upon the termination of the License
Agreement per its terms and Section 10.05 of the Supply Agreement (including Section 10.05(b) with
respect to the Licensed Products) shall survive and bear upon the termination of the Supply
Agreement per its terms.
2.2 Nature of Termination. The Parties agree that the termination of the License Agreement
with respect to the Licensed Product is being provided by mutual agreement of Parties and not due
to a breach of either Party’s obligations.
2.3. Inconsistencies. To the extent that there is any inconsistency between the terms of
this Termination Agreement and the terms of the License Agreement, the Supply Agreement or the
Quality Agreement, this Termination Agreement shall govern.
Article 3. Additional Products.
3.1 Notwithstanding anything to the contrary in this Termination Agreement, this Termination
Agreement shall not in anyway affect either Party’s obligations or rights under the License
Agreement, with respect to the Additional Products. The License Agreement shall continue in full
force and effect as it pertains to Additional Products and both Parties’ obligations and rights
under the License Agreement with respect to the Additional Products.
Article 4. Right of First Negotiation.
4.1 Upon ***, Noven shall provide Endo written notice (the “Reformulation Notice”). Endo
shall have the exclusive option, beginning upon receipt of the Reformulation Notice, of entering
into negotiations regarding a definitive agreement regarding the development of
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commercialization of such product (the “Reformulated Product”). Endo shall exercise such option by
giving Noven notice of its exercise within *** days of receipt of the Reformulation Notice from
Noven. If Endo elects not to exercise such option within the initial *** -day time period, (a)
Endo shall promptly provide Noven with notice acknowledging Endo’s failure to exercise such option,
and (b) Noven shall not have any further obligation to Endo regarding Reformulated Product. If
Endo does exercise such option within the initial *** -day period, the Parties shall promptly begin
negotiating the terms of such transaction, and the terms under which Reformulated Product will be
developed and commercialized. Such negotiations shall be based on the market, economic and other
conditions in effect as of the time of such negotiations and without consideration to the License
Agreement, including the payments previously made thereunder with respect to the Licensed Product.
If, despite each Party’s good faith efforts, the Parties are not able to reach agreement on and do
not execute such a definitive agreement within *** days from the date Endo exercises its option,
Noven shall be free to continue with the development and commercialization of Reformulated Product
without obligation to Endo; provided, that, for a period of *** months after the cessation of such
negotiations, Noven shall not be permitted to enter into a commercialization or similar agreement
relating to Reformulated Product with a third party unless such agreement contains both (i) ***,
and (ii) a ***. At least *** business days prior to entering into a commercialization or similar
agreement relating to Reformulated Product with a Third Party during such *** month period, Noven
shall provide to Endo a certification with supporting documentation to evidence compliance with the
provisions in the previous sentence. Endo shall be entitled as a matter of right to equitable
relief, including injunction and specific performance, in any court of competent jurisdiction in
the event of a breach by Noven of its obligations under this section. Endo’s rights under this
Section 4 shall be non-assignable, other than to an affiliate of Endo.
Article 5. Miscellaneous.
5.1 Miscellaneous. This Termination Agreement contains the entire agreement between the
Parties hereto and there are no other understanding, arrangements or agreements with respect to the
subject matter hereof except as set forth in the Termination Agreement. Terms of this termination
are contractual and not a mere recital. The person executing this Termination Agreement on behalf
of each of the Parties hereby represents and warrants that they are duly authorized to enter into
this Termination Agreement without further consent, authorization or approval. This Termination
Agreement may be executed in any number of counterparts, each of which shall constitute an original
but all of which, taken together, shall constitute one and the same instrument. This Termination
Agreement and any claims, disputes or causes of action relating to or arising out of this
Termination Agreement shall be construed in accordance with and governed by the substantive laws of
the State of New York, without giving effect to the conflict of laws principles thereof.
5.2 Publicity and Confidentiality. The Parties understand and agree that each shall be free
to disclose this Termination Agreement as required by law, governmental regulation or by the
requirements of any securities exchange on which the securities of a Party hereto are listed.
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IN WITNESS WHEREOF, the parties hereto have entered into this Termination Agreement effective
as of the Effective Date.
NOVEN PHARMACEUTICALS, INC.
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ENDO PHARMACEUTICALS INC. | |
By: /s/ Xxxxxx Xxxxxxx
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By: /s/ Xxxxx X. Xxxxxx | |
Name: Xxxxxx Xxxxxxx
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Name: Xxxxx X. Xxxxxx | |
Title: President & Chief Executive Officer
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Title: President & Chief Executive Officer | |
Date: 3/2/06
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Date: 3/2/2006 |
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