EXHIBIT 10.11
ASSIGNMENT, ASSUMPTION AND LICENSE AGREEMENT
ASSIGNMENT, ASSUMPTION AND LICENSE AGREEMENT dated as of October 7,
1999 (the "Agreement") by and between IMARX, LLC, an Arizona limited liability
company ("Purchaser") and IMARX PHARMACEUTICAL CORP., an Arizona corporation
("Seller"). Capitalized terms used but not otherwise defined herein have the
meanings assigned to them in the Technology Agreements (as defined below).
RECITALS
A. Seller is engaged in the research and development of pharmaceutical
products. Among other assets, Seller owns certain patents and patent
applications in the field of ultrasound diagnostic imaging. Seller has
previously assigned and/or licensed certain of its patents and patent
applications to DuPont Pharmaceuticals Company ("DuPont") pursuant to the
Assignment and License Agreement dated October 23, 1995 and the License and
Marketing Agreement dated October 23, 1995, and amendments thereto (hereinafter
collectively referred to as the "Technology Agreements").
X. XxXxxx has made an offer to acquire the stock of Seller, provided
that Seller divests itself of certain assets and liabilities. The parties
anticipate that Seller will be merged into a subsidiary of DuPont (the "Merger")
pursuant to an Agreement and Plan of Merger (the "Acquisition Agreement").
C. Purchaser will assume all liabilities of Seller other than those
liabilities specifically retained by Seller and accepted by DuPont in the
Acquisition Agreement (the "Assumed Liabilities"). Purchaser wishes to acquire
certain assets of Seller (including the "Physical Assets and Receivables" and
the "Category III Assets") identified on Exhibit A. Seller wishes to license the
Category III Assets back from Purchaser for use within the field of contrast
enhancement of diagnostic ultrasound imaging, but specifically excluding
targeted and tissue specific diagnostic ultrasound products. This field of use
is referred to herein as "CEDUI."
D. Purchaser wishes to license from Seller certain assets to be
acquired by DuPont in connection with the Acquisition Agreement (the "Category
II Assets") identified on Exhibit B for use outside of CEDUI.
E. Seller wishes to secure from Purchaser a right of first negotiation
with respect to new products developed by Purchaser in the fields of thrombus
imaging and sonothrombolysis.
F. The parties wish to agree on certain procedures and responsibilities
for addressing certain claims of infringement that may arise from Seller's
practice of its technology.
G. The execution and delivery of this Agreement by Purchaser is a
condition to the obligations of Seller to consummate the transactions
contemplated by the Acquisition Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the foregoing premises and of the
agreements and covenants set forth in the Acquisition Agreement, Purchaser and
Seller agree as follows:
1. Assignment of Assets.
a. Seller hereby grants, conveys, sells, transfers and assigns to
Purchaser, free and clear of all debts, obligations, liens and
encumbrances (other than the Assumed Liabilities, as that term
is defined below) all of the assets described on Exhibit A
hereto; provided, however, that the Category III Assets shall
not include any Assets to be acquired by DuPont in the Merger.
b. Seller hereby assigns to Purchaser its rights under the
Assigned Patents, as that term is defined in the Technology
Agreements, which rights are fully set forth and described in
Section 3 of the Assignment and License Agreement dated
October 23, 1995. Purchaser's license rights granted therein
will survive any termination, cancellation, or modification of
the Assignment and License Agreement by Seller.
2. Assignment of Name. Effective as of the date of Closing pursuant to the
Acquisition Agreement, Seller hereby assigns the name "ImaRx
Pharmaceuticals" along with any variations thereof to Purchaser along
with the goodwill associated with the Category III Assets. Seller will
execute any additional documents necessary to transfer the name to
Purchaser.
3. Assumption of Liabilities. Seller hereby assigns to Purchaser, and
Purchaser hereby assumes and agrees to pay, perform and discharge, and
to indemnify Seller against and hold it harmless from all of the
liabilities and obligations of Seller accrued or arising before the
Closing (as that term is described in the Acquisition Agreement),
including without limitation those Liabilities set forth on Exhibit D
hereto (the "Assumed Liabilities"); provided, however, that the Assumed
Liabilities shall not include any liabilities or obligations to be
assumed by DuPont in the Merger as provided in the Acquisition
Agreement.
4. License by Seller. Seller hereby grants to Purchaser an exclusive,
transferable license to the Category II Assets, with right to
sublicense, to make, have made, import, use, and sell product derived
from the Category II Assets, worldwide, for every field of use outside
of CEDUI. Seller also grants to Purchaser the right to file and
prosecute divisional applications for patent claims relating solely to
fields of use outside of CEDUI arising from patent applications
included within Category II Assets, provided that Purchaser will be
solely responsible for all costs and expenses incurred in connection
with such filing and prosecution and further provided that Purchaser
will have no right to practice, transfer, license, or otherwise exploit
any patents issuing from such applications within CEDUI. Seller
expressly retains all rights to the Category II Assets within CEDUI,
including, without limitation, all rights relating to the product
Definity(R), all related products (including, without limitation,
MRX-421A1 and MRX-132), all back-up products, next-generation products,
and improvements thereto.
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5. License by Purchaser. Upon assignment of the Category III Assets,
Purchaser grants to Seller an exclusive, transferable license to the
Category III Assets, with right to sublicense, to make, have made,
import, use, and sell products derived from the Category III Assets,
worldwide, within CEDUI. Purchaser expressly retains all rights to the
Category III Assets outside CEDUI.
6. Seller's Right of First Negotiation to Purchaser's Products. If
Purchaser develops products or technology in the area of thrombus
imaging or sonothrombolysis, (collectively, "New Product"), Purchaser
will offer to Seller an exclusive license to the New Product for
development and commercialization before offering the New Product to
any third party for license. In connection therewith, Purchaser will
provide Seller with all relevant information requested by Seller and
reasonably available to Purchaser concerning the New Product. Seller
will then have ninety (90) days within which to make an offer for the
New Product. If Seller makes such an offer, the parties will negotiate
promptly and in good faith to arrive at an agreement. If the parties
fail to reach such an agreement within a reasonable period, Purchaser
may assign, license, or otherwise transfer rights in the New Product to
a third party, but only on terms that are, on balance, not less
favorable to Purchaser than the last written offer of Seller, as
reasonably determined by Purchaser, or may pursue commercial
development of the New Product on its own, at Purchaser's election.
7. Representations and Warranties.
a. By Seller. Seller represents and warrants as follows:
(i) Seller is the sole owner of the Category II Assets
and Category III Assets and, subject to any limited
rights that the U.S. government might have, has the
legal authority to assign the Category III Assets and
to license the Category II Assets to Purchaser and
otherwise to enter into and perform all of its
obligations set forth herein;
(ii) all corporate and other formalities necessary to
authorize execution, delivery and performance of this
Agreement (and all other documents executed and
delivered in connection herewith) on behalf of Seller
have been taken; and
Seller makes no other warranties, express or implied, except as
expressly set forth in this Agreement. In particular, and without limitation,
Seller makes no implied or express warranties of noninfringement or validity or
any other representation or warranty whatsoever regarding Patents or Product.
b. By Purchaser. Purchaser represents and warrants as follows:
(i) Purchaser has the legal authority to accept the
assignment of Category III Assets and the license to
Category II Assets granted hereunder and otherwise to
perform all of its obligations set forth herein;
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(ii) all LLC and other formalities necessary to authorize
execution, delivery and performance of this Agreement
(and all other documents executed and delivered in
connection herewith) on behalf of Purchaser have been
taken.
Purchaser makes no other warranties, express or implied, except as expressly set
forth in this Agreement. In particular, and without limitation, Purchaser makes
no implied or express warranties of noninfringement or validity or any other
representation or warranty whatsoever regarding Patents or Product.
8. Intellectual Property Protection.
a. Claim of Infringement. If Purchaser discovers that a third
party claims that practice of the Category II Assets infringes
a patent or other intellectual property right of such third
party, then Purchaser will promptly so notify Seller and
Seller shall have sole authority to defend against or settle
any such claim of infringement, provided that no settlement
will impair Purchaser's license granted by Section 4 above. If
Seller discovers that a third party claims that practice of
the Category III Assets infringes a patent or other
intellectual property right of such third party, then Seller
will promptly so notify Purchaser and Purchaser shall have
sole authority to defend against or settle any such claim of
infringement, provided that no settlement will impair Seller's
license granted by Section 5 above.
b. Infringement of Patents. If either party becomes aware that a
third party is or may be infringing the Patents, it shall
promptly so notify the other party. If the infringement
related to Category II Assets, Seller shall have authority to
pursue a claim for infringement. If Seller fails to resolve
such infringement or institute an infringement action against
the third party within one hundred twenty (120) days after
Seller becomes aware of the infringement, Seller will assign
its rights to pursue the infringement to Purchaser. If there
is infringement related to Category III Assets, Purchaser
shall have authority to pursue a claim for infringement. If
Purchaser fails to resolve such infringement or institute an
infringement action against the third party within one hundred
twenty (120) days after Purchaser becomes aware of the
infringement, then Purchaser shall assign its rights to pursue
the infringement to Seller.
9. Claim of Infringement of Sonus Patents. Notwithstanding anything to the
contrary contained in Section 8 above, the provisions of this Section 9
will apply to and govern any claim asserted (whether by litigation or
otherwise) by Sonus Pharmaceuticals, Inc. and/or its licensees or
assignees (collectively, "Sonus") within five years of the date of this
Agreement that Seller's manufacture or sale of the product known as
Definity(R) infringes a patent or other intellectual property right of
Sonus (a "Sonus infringement claim"). If Seller receives a Sonus
infringement claim, it will promptly so notify Purchaser, and the
parties will proceed as follows:
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a. Seller will keep Purchaser informed of developments relevant
to the Sonus claim and will consider Purchaser's
recommendations for proceeding, although Seller will have the
final authority;
b. Seller will use all commercially reasonable efforts to defeat
or resolve a Sonus claim, including but not limited to cross
licensing its diagnostic technology to Sonus;
c. Purchaser will use all commercially reasonable efforts in
cooperation with Seller and in support of Seller's efforts,
including the commitment of all reasonable amounts of Xx. Xxxx
Xxxxx'x time, subject to reimbursement by Seller of
Purchaser's out of pocket costs (which will not include the
value of Xx. Xxxxx'x time);
d. At Seller's election, if these commercially reasonable efforts
fail to resolve the Sonus claim and Seller believes it is at
substantial risk of losing the ability to manufacture or sell
Definity(R) in a commercially significant geographic market,
Purchaser will grant to Seller a transferable covenant not to
xxx Sonus for infringement of Purchaser's Category III assets
to the extent necessary to allow Sonus to manufacture and sell
its therapeutic products, provided that Seller receives a
reciprocal covenant from Sonus, which Seller will then
transfer to Purchaser;
e. The covenant referenced in Paragraph 9.d above will be drawn
as narrowly as possible to allow Sonus to manufacture and sell
Sonus's therapeutic products, and will not be construed as a
license to allow Sonus to manufacture or sell products
developed by Purchaser or to grant Sonus and rights in any
safety or efficacy data developed by Purchaser relating to
those products; and
f. If Seller directs Purchaser to provide a covenant pursuant to
Paragraph 9.d, Seller will pay Purchaser the sum of $1.5
million in partial compensation for Purchaser's delivery of
the covenant.
10. Indemnification.
a. Seller shall indemnify, defend, and hold Purchaser harmless
from any and all claims, demands, lawsuits, and associated
costs and expenses, including reasonable attorneys' fees and
cost of settlement, arising out of Seller's manufacture,
promotion, marketing, and sale of products derived from or
based on Category III Assets; provided, however, that Seller
shall not be obligated to indemnify, defend, and hold
Purchaser harmless where the claim, demand, lawsuit, and
associated costs and expenses, including reasonable attorneys'
fees and cost of settlement arises out of the breach of this
Agreement by Purchaser and further provided that Purchaser
promptly notifies Seller upon becoming aware of any such
claims. Seller shall have the right to conduct the defense of
any such claim but if Seller fails after reasonable notice
from Purchaser to conduct such defense, Purchaser shall have
the right to do so and Seller will reimburse
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Purchaser for all reasonable costs and expenses of defending
the action, including attorneys' fees and costs of settlement.
b. Purchaser shall indemnify, defend, and hold Seller harmless
from any and all claims, demands, lawsuits, and associated
costs and expenses, including reasonable attorneys' fees and
cost of settlement, arising out of Purchaser's manufacture,
promotion, marketing, and sale of products derived from or
based on Category II Assets; provided however, that Purchaser
shall not be obligated to indemnify, defend, and hold Seller
harmless where the claim, demand, lawsuit, and associated
costs and expenses, including reasonable attorneys' fees and
cost of settlement arises out of the breach of this Agreement
by Seller and further provided that Seller promptly notifies
Purchaser upon becoming aware of any such claims. Purchaser
shall have the right to conduct the defense of any such claim
but if Purchaser fails after reasonable notice from Seller to
conduct such defense, Seller shall have the right to do so and
Purchaser will reimburse Seller for all reasonable costs and
expenses of defending the action, including attorneys' fees
and costs of settlement.
11. Rights to Improvements in Product or Manufacturing. All assignments and
licenses hereunder include such rights to improvements as Seller has
received or is entitled to receive from DuPont pursuant to Section 5 of
the Assignment and License Agreement dated October 23, 1995, through
the date of the Closing of the Acquisition Agreement, to the extent
that such improvements apply outside the field of CEDUI.
12. Maintenance and Prosecution of Patents
a. Seller may elect not to prosecute or maintain a patent within
the Category II Assets if it reasonably concludes that such
patent has no significant value to Seller within the field of
CEDUI. In that event, it will so notify Purchaser. Purchaser
will, within ninety (90) days of receipt of such notice,
notify Seller whether it wishes to acquire the patent from
Seller. During this ninety (90) day period, Seller will take
any action necessary to continue to prosecute or maintain the
patent. Purchaser will reimburse Seller for its out-of-pocket
costs incurred in such actions. Upon notice by Purchaser that
it wishes to acquire the patent from Seller, Seller will
assign the patent to Purchaser, transfer any files or other
documents relating to the patent to Purchaser, and Purchaser
will thereafter be solely responsible for prosecution or
maintenance of the Patent, including all costs associated
therewith. Seller agrees to execute any additional documents
necessary to perfect Purchaser's rights to the patent.
Purchaser agrees that,
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the day and year first above written.
IMARX PHARMACEUTICAL CORP., IMARX LLC,
an Arizona corporation an Arizona limited liability company
By: /s/ Xxxx Xxxxx By: /s/ Xxxx Xxxxx
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Xx. Xxxx Xxxxx Xx. Xxxx Xxxxx
Its: President Its: Manager
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