EXHIBIT 10.5
EXHIBIT C
PATENT LICENSE AGREEMENT
This Patent License Agreement (this "Agreement") is made and entered into
effect this 30th day of September, 2005, by and between Xxxxxx Laboratories, a
corporation organized and existing under the laws of the State of Illinois and
having a principal place of business at 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx,
Xxxxxxxx 00000 ("Abbott") and ImaRx Therapeutics Inc., a corporation organized
and existing under the laws of Delaware and having a principal place of business
at Tucson, Arizona ("Licensee").
WHEREAS, pursuant to that certain Asset Purchase Agreement between Abbott
and Licensee, dated September 30, 2005 (the "Asset Purchase Agreement"), Abbott
has agreed to sell to Licensee, and Licensee has agreed to purchase from Abbott,
the Purchased Assets (as defined in the Asset Purchase Agreement);
WHEREAS, in connection with its purchase of the Purchased Assets from
Abbott, Licensee desires to obtain a license under certain of Xxxxxx'x patents;
and
WHEREAS, Abbott and Licensee have agreed to enter into this Agreement as a
condition to the closing of the transactions contemplated by the Asset Purchase
Agreement.
NOW THEREFORE, in consideration of the promises and the mutual covenants
set forth herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto hereby agree
and covenant as follows.
ARTICLE I. DEFINITIONS
The following terms, when used herein with initial capital letters, shall
have the respective meanings set forth in this Article I. Capitalized terms used
but not defined herein shall have the meanings set forth in the Asset Purchase
Agreement.
1.1 "Affiliate" means, with respect to any Person, any other Person directly or
indirectly controlling or controlled by, or under direct or indirect common
control with, such Person. For purposes of this definition, a Person shall
be deemed to control another Person if it owns or controls more than fifty
percent (50%) of the voting equity of the other Person (or other comparable
ownership if the Person is not a corporation).
1.2 "Asset Purchase Agreement" shall have the meaning provided in the Preamble.
1.3 "Field" means the business of manufacturing, marketing and selling
thrombolytic pharmaceutical therapy products, which shall mean serine
proteases that convert plasminogen to plasmin to break down the fibrinogen
and fibrin to dissolve a thrombus in an artery, vein or in-dwelling
catheter, or any proteases or protease activators which catalyze
proteolytic breakdown of fibrinogen or fibrin for the same purpose.
1.4 "Licensed Patents" means only the following: (i) U.S. Patent No. 5,665,578
issued September 9, 1997, entitled Vector and Method for Achieving High
Level of Expression
in Eukaryotic Cells (the "Gillies Patent") and (ii) U.S. Patent No.
5,741,682 issued April 21, 1998, entitled Expression Induction Method (the
"Lo Patent").
1.5 "Licensed Products" means any products that would, but for the license
granted in Section 2.1, infringe a valid claim of any patent included in
the Licensed Patents.
1.6 "Person" means any individual, corporation, partnership, joint venture,
limited liability company, trust or unincorporated organization or
government or any agency or political subdivision thereof.
1.7 "Plaintiff" shall have the meaning provided in Section 3.2.
1.8 "Territory" means, for any patent included in the Licensed Patents, only
that country in which such patent was issued.
ARTICLE II. LICENSE
2.1 License Grant.
x. Xxxxxx hereby grants to Licensee during the term of this Agreement an
exclusive (even as to Abbott), assignable, transferable, fully
paid-up, royalty-free license, with the right to sublicense in
multiple tiers, to make, have made, distribute, use, offer to sell,
and import Licensed Products and to practice the Gillies Patent solely
in the Field, throughout the Territory.
x. Xxxxxx hereby grants to Licensee during the term of this Agreement an
exclusive (even as to Abbott), assignable, transferable, fully
paid-up, royalty-free license, with the right to sublicense in
multiple tiers, to make, have made, distribute, use, offer to sell,
and import Licensed Products and to practice the Lo Patent solely in
the Field, throughout the Territory.
2.2 Marking Requirements. Licensee shall xxxx or label all Licensed Products
with appropriate patent markings as Abbott reasonably requests from time to
time during the term of this Agreement and shall otherwise comply with all
applicable United States and foreign jurisdiction laws relating to patent
marking.
2.3 Reservation of Rights. Except for the express licenses granted in Section
2.1, Abbott shall retain all right, title and interest in and to the
Licensed Patents. No other rights or licenses, express or implied, are
granted by this Agreement. Notwithstanding the licenses granted in Section
2.1, Abbott and its Affiliates and licensees shall (i) retain the right to
practice the Licensed Patents, outside of the Field, and (ii) have the
right, at their option, to license for use outside the Field any
improvement patents relating to the Licensed Patents ("Improvements")
obtained by Licensee and its Affiliates (the "Option"). Licensee and its
Affiliates shall not license any Improvements outside the Field to any
third party without first offering such license to Abbott. If Abbott and
Licensee or its Affiliates do not enter into a binding agreement with
respect to such license after negotiation in good faith within sixty (60)
days following the date of such notice, Licensee or its Affiliate may
thereafter grant such license to a third party, but on terms no
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more favorable to the third-party licensee than the terms offered to
Abbott. Licensee shall notify Abbott of Improvements within sixty (60) days
of issuance.
2.4 Acknowledgement. Licensee acknowledges the validity of the Licensed
Patents. To the fullest extent possible under applicable law, in the event
Licensee elects to challenge the validity of one or more Licensed Patents,
for example, by initiating re-examination, or declaratory judgment actions,
or any other type of court action, or any other legal or administrative
proceeding, including proceedings or actions in foreign patent offices or
courts, Abbott shall have the right to immediately terminate this Agreement
and all licenses granted herein.
2.5 Regulatory Compliance. Licensee shall be solely responsible, at its own
expense, for the preparation, filing and prosecution of, and for obtaining
and maintaining, all applicable regulatory approvals for the manufacture,
marketing, promotion or sale of Licensed Products in each country in the
Territory, including without limitation, any approval required from the
United States Food and Drug Administration.
ARTICLE III. PATENT PROSECUTION AND LITIGATION
3.1 Prosecution and Maintenance. Abbott shall have the exclusive right, but not
the obligation (except as set forth in this Section 3.1), to prepare, file,
prosecute and maintain all Licensed Patents, including, without limitation,
conducting any interferences, reissues or reexamination or applying for all
patent term extensions, in the Territory. Licensee shall, upon request by
Abbott and at Xxxxxx'x expense, cooperate in connection with the
preparation, filing, prosecution and maintenance of all Licensed Patents.
Prior to allowing any of the Licensed Patents to lapse, Abbott shall give
Licensee notice and the reasonable opportunity to pay any fees and expenses
necessary to maintain such Licensed Patent. Upon Xxxxxx'x receipt of such
fees, Abbott will continue to maintain said Licensed Patent in Xxxxxx'x
name.
3.2 Infringements.
a. Notice. Upon learning of the actual or potential infringement of a
Licensed Patent in the Territory, Abbott or Licensee, as the case may
be, shall promptly provide notice to the other party in writing of
such infringement and shall supply the other party with all evidence
related thereto in its possession.
b. Enforcement. Except as expressly provided herein, (i) in connection
with any violation or infringement of the Licensed Patents by a
perceived violator or infringer conducting business or utilizing
technology outside the Field as defined above, Abbott shall have the
sole, undivided and exclusive right, but not the obligation, to
institute or bring, and control, any suits or actions and (ii) in
connection with any violation or infringement of the Licensed Patents
by a perceived violator or infringer conducting business or utilizing
technology within the Field as defined above, Licensee shall have the
exclusive right, but not the obligation, to institute or bring, and
control, any suits or actions, provided that Licensee shall consult
with Abbott at Xxxxxx'x request with respect to any such suit or
action and shall give due consideration to all suggestions and
comments made by Abbott in connection
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therewith. Each suit or action under this subsection (b) shall be
maintained and conducted solely at the cost and expense of the party
instituting such suit or action (the "Plaintiff"); provided that the
other party shall reasonably cooperate in the prosecution of such suit
or action (at the expense of the Plaintiff), including, without
limitation, by joining as a nominal party thereto for purposes of
standing and/or assigning to Plaintiff any claims and damages arising
under the Licensed Patents against such defendant, and the Plaintiff
shall keep the other party updated with respect to any such action.
Each party shall have the right, but not the obligation, to
participate and be represented in any suit or action involving the
Licensed Patents instituted by the other party, by its own counsel at
its own expense.
c. Settlements. Either party, as Plaintiff, shall be permitted to settle
or consent to an adverse judgment in any suit or action in accordance
with Section 3.2(b) without obtaining consent from the other party,
unless any such settlement or consent judgment would either (i)
obligate the other party to pay money or (ii) limit the scope of,
invalidate or adversely affect the status or value of any Licensed
Patent, in which event the Plaintiff shall obtain the other party's
prior written consent (such consent not to be unreasonably withheld or
delayed).
d. Awards and Damages. The Plaintiff shall be entitled to retain any and
all amounts that may be received, collected or recovered in any suit
or action instituted or brought under this Section 3.2, whether by
judgment, settlement or otherwise.
ARTICLE IV. CONFIDENTIALITY; PUBLICITY
4.1 Confidential Information. All disclosures of confidential information made
pursuant to this Agreement shall be governed by the Confidentiality
Agreement between the parties dated May 6, 2005, as modified by Section
12.3 of the Asset Purchase Agreement.
4.2 No Publicity. Except as expressly permitted under this Agreement or other
written agreement between the parties, neither Licensee nor its Affiliates
shall use the name or trademarks of Abbott, or any of Xxxxxx'x Affiliates,
without Xxxxxx'x prior written consent. No press release related to this
Agreement, or other announcement to the customers or suppliers of Abbott
will be issued without the joint approval of Abbott and Licensee, except
that: (i) Abbott or Licensee may make any public disclosure that such party
in its good faith judgment believes is required by law or by any stock
exchange or interdealer quotation system on which its securities are listed
or quoted (in which case the party making the disclosure will use its
commercially reasonable efforts to consult with the other party prior to
making any such disclosure); and (ii) Abbott may make an announcement
related to this Agreement to its employees.
ARTICLE V. REPRESENTATIONS AND WARRANTIES
5.1 Mutual Representations. Abbott hereby represents and warrants to Licensee,
and Licensee on behalf of itself and its Affiliates, hereby represents and
warrants to Abbott, that: (i) it is a corporation duly organized, validly
existing and in good standing under the laws of the jurisdiction of its
incorporation; (ii) it has full corporate power and authority to execute,
deliver and perform its obligations under this Agreement; (iii) the
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execution and delivery of this Agreement and the performance of all of its
obligations hereunder have been duly authorized by all necessary company
action; (iv) the signing, delivery and performance of this Agreement is not
prohibited or limited by, and will not result in the breach of or a default
under, any provision of its articles of incorporation or by-laws, or of any
material agreement or instrument binding on it, or of any applicable order,
writ, injunction or decree of any court or governmental instrumentality;
and (v) this Agreement has been duly executed and delivered by it and
constitutes its legal, valid and binding obligation.
5.2 Licensee's Representations and Warranties. Licensee hereby represents and
warrants to Abbott that it shall comply with all applicable laws, rules,
regulations, ordinances, permits and licenses when exercising its rights
under this Agreement, including, without limitation, in the manufacture,
marketing, promotion and sale of Licensed Products.
5.3 Xxxxxx'x Representations and Warranties: Abbott hereby represents and
warrants to Licensee that it is the owner of the Licensed Patents and that
it has the authority to grant the licenses provided herein, and that to the
best of its Knowledge the exercise of the rights granted to Licensee
hereunder will not infringe upon the intellectual property rights of any
third party.
5.4 Disclaimer. THE LICENSED PATENTS ARE PROVIDED "AS IS." EXCEPT AS EXPRESSLY
PROVIDED IN THIS ARTICLE V, ABBOTT AND LICENSEE MAKE NO WARRANTIES,
EXPRESS, OR IMPLIED, AND EXPRESSLY DISCLAIM ALL WARRANTIES, INCLUDING,
WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR
A PARTICULAR PURPOSE AND NON-INFRINGEMENT, ANY EXPRESS OR IMPLIED
WARRANTIES RELATED TO EFFICACY, SAFETY OR HEALTH BENEFITS AND ANY IMPLIED
WARRANTIES ARISING OUT OF TRADE USAGE OR PRACTICE, COURSE OF DEALING OR
COURSE OF PERFORMANCE.
5.5 Limitations of Liability. EXCEPT FOR DAMAGES RESULTING FROM BREACH OF ITS
CONFIDENTIALITY OBLIGATIONS, IN NO EVENT SHALL EITHER PARTY BE LIABLE TO
THE OTHER UNDER ANY THEORY OF LIABILITY FOR ANY INDIRECT, SPECIAL,
PUNITIVE, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING,
WITHOUT LIMITATION, LOSS OF USE, INTERRUPTION OF BUSINESS, LOSS OF PROFITS,
OR LOSS OF DATA OR INFORMATION, EVEN IF ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
5.6 Insurance. Licensee shall carry and maintain, during the term of this
Agreement and for five (5) years thereafter, broad form comprehensive
general liability insurance that includes without limitation, coverage for
contractual liability, premises, operations, products liability, personal
injury and death, advertising injury liability and broad form property
damage liability, in amounts reasonable and customary in the pharmaceutical
industry for entities of comparable size and comparable activities, but in
no event less than Five Million Dollars ($5,000,000) per occurrence and Ten
Million Dollars ($10,000,000) in the annual aggregate. These limits of
coverage shall not be construed as a limitation of any liability of
Licensee hereunder. Licensee shall have Abbott named as an additional
insured on such policies. Licensee shall, within thirty (30) days after the
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date of this Agreement, provide to Abbott a Certificate of Insurance
evidencing such insurance coverage and that further provides that such
policies may not be materially changed or canceled without at least sixty
(60) days' prior written notice to Abbott.
ARTICLE VI. TERM AND TERMINATION
6.1 Term. Unless earlier terminated in accordance with the terms herein, the
term of this Agreement shall commence on the Effective Date and shall
remain in effect until the expiration of the last-to-expire valid claim of
any patent included in the Licensed Patents.
6.2 Termination Without Cause. Licensee may terminate this Agreement at any
time and for any reason upon written notice to Abbott. This Agreement may
be terminated by mutual written agreement of the parties hereto.
6.3 Termination for Cause. This Agreement may be terminated prior to its
expiration in accordance with the following provisions:
a. Breach. Either party may terminate this Agreement upon thirty (30)
days prior written notice to the other party in the event the other
party fails to perform any of its obligations hereunder or otherwise
breaches any of its representations or warranties or fails to perform
any of its covenants in this Agreement and if such breach or failure
is not cured during such thirty day period. Without limiting the
generality of the foregoing, violation of the scope of the license
granted in Section 2.1 or breach of the provisions of Sections 2.2, ,
2.5 or Article IV shall be deemed material breaches for which a party
may terminate this Agreement according to this subsection (a).
b. Adverse Effect. If this Agreement shall be determined by a court,
administrative or governmental body or authority of competent
jurisdiction to be in violation of any applicable law, the party
adversely affected by the ruling (which may be either party or both)
may elect to terminate this Agreement upon thirty (30) days notice to
the other party.
6.4 Effect of Termination.
a. Termination of License. Upon termination of this Agreement for any
reason prior to the term set forth in Section 6.1, the license granted
in Section 2.1 shall immediately terminate and Licensee shall
immediately cease all activities under the Licensed Patents, including
without limitation, the manufacture, marketing, promotion or sale of
Licensed Products.
b. Further Assurances. Upon expiration or termination of this Agreement,
Licensee shall execute all documents regarding the Licensed Patents
that Abbott shall reasonably request. Abbott shall bear all expenses
reasonably incurred in preparing and recording any such documents.
c. Survival. The expiration or termination of this Agreement shall not
affect any rights or obligations of the parties that have accrued
prior to such expiration or termination.
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The following provisions shall survive expiration or termination of
this Agreement for any reason: Article III, Section 6.4, Article IV,
Article V and Article VII.
ARTICLE VII. MISCELLANEOUS
7.1 Entire Agreement; Amendment. This Agreement and the Asset Purchase
Agreement constitute the entire agreement between the parties regarding the
subject matter of this Agreement, and supersede all other prior agreements,
understandings and negotiations, both written and oral, among the parties
with respect to the subject matter of this Agreement. This Agreement may
not be amended except by an instrument in writing signed by a duly
authorized officer or representative of each of the parties hereto.
7.2 Successors. The terms and conditions of this Agreement shall be binding
upon, and shall inure to the benefits of, the parties hereto and their
respective permitted successors and assigns.
7.3 Governing Law/Jurisdiction. This Agreement shall be governed by and
construed in accordance with, and the legal relations between the parties
hereto shall be determined in accordance with, the laws of the State of
Delaware, United States, without regard to any laws relating to conflict of
laws. The parties agree that the United Nations Convention of Contracts for
the International Sale of Goods is specifically excluded from application
to this Agreement.
7.4 Injunctive Relief; Specific Performance. The parties hereto acknowledge and
agree that any breach of the terms of this Agreement could give rise to
irreparable harm for which money damages would not be an adequate remedy
and accordingly the parties agree that, in addition to any other remedies,
each party shall be entitled to obtain preliminary or injunctive relief and
to enforce the terms of this Agreement by a decree of specific performance.
7.5 Relationship of Parties. Nothing in this Agreement shall be construed to
create a partnership, agency, joint venture, franchise or employer-employee
relationship between the parties. Neither party shall be responsible for
the compensation, payroll-related taxes, workers' compensation, accident or
health insurance or other benefits of employees of the other party. Neither
party shall have any authority to bind the other party unless expressly
agreed in a separate writing.
7.6 No Third Party Beneficiaries. This Agreement shall not be deemed to confer
any rights or remedies upon any person not a party hereto.
7.7 Notices. All communications, notices and consents provided for herein shall
be in writing and be given in person or by means of telex, facsimile or
other means of wire transmission (with request for assurance of receipt in
a manner typical with respect to communications of that type), by overnight
courier or by mail, and shall become effective: (a) on delivery if given in
person; (b) on the date of transmission if sent by telex, facsimile or
other means of wire transmission; (c) one (1) business day after delivery
to the overnight service; or (d) four (4) business days after being
deposited in the
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United States mails, with proper postage and documentation, for first-class
registered or certified mail, prepaid.
Notices shall be addressed as follows:
If to Licensee, to: ImaRx Therapeutics
0000 Xxxx 00xx Xxxxxx
Xxxxxx, XX 00000
Attn: Xxxx Xxxx
Facsimile Number: 000-000-0000
with copies to: DLA Xxxxx Xxxxxxx Xxxx Xxxx LLP
000 Xxxxx Xxxxxx
Xxxxx 0000
Xxxxxxx, XX 00000
Attn: Xxxxxxx X. Xxxxxx
Xxxx X. Steel
Facsimile Number: 000-000-0000
If to Abbott, to:
Xxxxxx Laboratories
000 Xxxxxx Xxxx Xxxx
Xxxxxxxx XX0X, Department 364
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
Attn: General Counsel
Facsimile Number: (000) 000-0000
with copies to:
Xxxxxxxx & Xxxxx LLP
000 Xxxx Xxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
Attn: R. Xxxxx Xxxx, P.C. & Xxxxxx X. Xxxx
Facsimile Number: (000) 000-0000
provided, however, that if any party shall have designated a different address
by notice to the others, then to the last address so designated.
7.8 Severability. The provisions of this Agreement are severable, and the
unenforceability of any provision of this Agreement shall not affect the
enforceability of the remainder of this Agreement. In the event that any
provision of this Agreement is determined by a court to be unenforceable as
drafted, that provision shall be construed so as to effectuate the purposes
of that provision to the greatest extent possible under applicable law.
7.9 No Waiver. The failure of either party to exercise any right or to demand
the performance by the other party of duties required hereunder shall not
constitute a waiver of any rights or obligations provided for herein.
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7.10 Counterparts. This Agreement may be executed in multiple counterparts, each
of which shall be deemed an original and all of which together shall
constitute one and the same instrument.
7.11 Construction. The language in all parts of this Agreement shall be
construed, in all cases, according to its fair meaning. The parties
acknowledge that each party and its counsel have reviewed and revised this
Agreement and that any rule of construction to the effect that any
ambiguities are to be resolved against the drafting party shall not be
employed in the interpretation of this Agreement. Words in the singular
shall be deemed to include the plural and vice versa and words of one
gender shall be deemed to include the other gender as the context requires.
The terms "hereof," "herein," and "herewith" and words of similar import
shall, unless otherwise stated, be construed to refer to this Agreement as
a whole and not to any particular provision of this Agreement. Article and
Section references are to the Articles and Sections to this Agreement
unless otherwise specified. Unless otherwise stated, all references to any
agreement shall be deemed to include the exhibits, schedules and annexes to
such agreement. The word "including" and words of similar import when used
in this Agreement shall mean "including, without limitation," unless the
context otherwise requires or unless otherwise specified. The word "or"
shall not be exclusive. Unless otherwise specified in a particular case,
the word "days" refers to calendar days. References herein to this
Agreement or any other agreement shall be deemed to refer to this Agreement
or such other agreement as of the date of such agreement and as it may be
amended thereafter, unless otherwise specified.
7.12 Captions. The captions and headings in this Agreement are inserted for
convenience and reference only and in no way define or limit the scope or
content of this Agreement and shall not affect the interpretation of its
provisions.
* * *
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IN WITNESS WHEREOF, each of the parties, acting through its duly authorized
representative, signs this Agreement on the date indicated.
XXXXXX LABORATORIES IMARX THERAPEUTICS, INC.
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxx Xxxxx
--------------------------------- ------------------------------------
Print Name: Xxxx X. Xxxxxx Print Name: Xxxx Xxxxx
Title: Vice President Global Title: President and CEO
Licensing/New Business
Development
Date: 9/30/05 Date: 9-30-05
