EXHIBIT 10.20
SETTLEMENT AGREEMENT
This Settlement Agreement ("Agreement") is entered into as of
January 14, 2005 by and between Xxxxx Laboratories, Inc. ("Xxxxx"), a Texas
corporation having its principal place of business in Chester, New Jersey; and
Carolina Pharmaceuticals, Inc. ("Carolina"), a Delaware corporation having its
principal place of business in Cary, North Carolina; and Cornerstone Biopharma,
Inc. ("Cornerstone"), a Nevada corporation having its principal place of
business in Cary, North Carolina (collectively the "Parties").
RECITALS
WHEREAS, Xxxxx is the plaintiff in Civil Action No. 04-CV-3535 (SAS)
in the United States District Court for the Southern District of New York (the
"Litigation"), in which Xxxxx asserts claims under Section 43(a) of the Xxxxxx
Act, under N.Y. Gen. Bus. Law Sections 349 & 350, and under common law against
Carolina and Cornerstone; and
WHEREAS, Carolina and Cornerstone filed counterclaims in the
Litigation, asserting claims under Section 2 of the Xxxxxxx Act, under Section
43(a) of the Xxxxxx Act, under N.Y. Gen. Bus. Law Section 349, under N.C. Gen.
Stat. Section 75.1.1, and under common law against Xxxxx; and
WHEREAS, the Parties wish to settle all claims and counterclaims
asserted in the Litigation and wish to resolve all disputes between or among
them, without any admission of fault or liability by any of the Parties, on the
terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the premises and the mutual
representations, warranties, covenants and agreements contained herein and for
other good and valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, and intending to be legally bound hereby, the Parties agree
as follows:
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TERMS AND CONDITIONS
1. ASSIGNMENT OF HUMIBID MARKS AND HUMIBID DM FORMULATION TO XXXXX.
On or before February 15, 2005 (the "Effective Date"), Cornerstone will deliver
to Xxxxx an Assignment, duly executed by Cornerstone, in the form attached as
Exhibit A hereto, assigning to Xxxxx, as of the Effective Date, all of
Cornerstone's rights, title and interest in, to and under all HUMIBID
trademarks, including all registrations and applications for any HUMIBID marks,
and including the goodwill of the business associated with and symbolized by the
HUMIBID marks. Such assignment shall also include all of Cornerstone's right,
title and interest in the new prescription formulation for Humibid DM capsules
developed in conjunction with PharmaFab, Inc. (the "Humibid DM Rx Product").
Cornerstone and Carolina will not sell any products under any HUMIBID xxxx after
the Effective Date.
2. ASSIGNMENT OF SUBLICENSE AGREEMENT AND ALLERX MARKS AND PATENTS
TO CORNERSTONE. On or before the Effective Date, Xxxxx will deliver to
Cornerstone: (a) an Assignment, duly executed by Xxxxx, in the form attached as
Exhibit B hereto, assigning to Cornerstone, as of the Effective Date, all of
Xxxxx' rights and obligations, as amended by Xxxxx and JMED, under that certain
agreement dated April 25, 1999 between Xxxxx and J-Med Pharmaceuticals, Inc.
(the "J-Med Agreement"), which includes exclusive rights under U.S. Patent #'s
5,846,976 and 6,270,796, until April 28, 2009, a copy of which is attached to
Exhibit B hereto; (b) a writing executed by J-Med Pharmaceuticals, Inc. in the
form attached as Exhibit C hereto (the "J-Med Consent"), providing its consent
to Xxxxx' assignment to Cornerstone of Xxxxx' rights and obligations under the
J-Med Agreement; and (c) an Assignment, duly executed by Xxxxx, in the form
attached as Exhibit D hereto, assigning to Cornerstone, as of the Effective
Date, all of Xxxxx' rights, title and interest in, to and under all ALLERX
trademarks,
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patents, including all registrations and applications for any ALLERX marks, and
including the goodwill of the business associated with and symbolized by the
ALLERX marks. Xxxxx will not sell any products under any ALLERX xxxx after the
Effective Date.
3. DISMISSAL OF ALL CLAIMS AND COUNTERCLAIMS. Within three (3)
business days after the Parties have fulfilled their respective obligations
under paragraphs 1 and 2 of this Agreement, the Parties will file a Stipulation
in the Litigation in the form attached as Exhibit E hereto, dismissing all
claims and counterclaims in the Litigation with prejudice, each party to bear
its own costs.
4. ROYALTY PAYMENTS TO CORNERSTONE. If Xxxxx sells any
pharmaceutical products under any HUMIBID xxxx during the period beginning on
the Effective Date and ending on the three (3) year anniversary of the Effective
Date (the "Royalty Period"), then Xxxxx shall pay an annual royalty on any sales
made during the Royalty Period in accordance with the following terms and
conditions:
(a) Xxxxx shall pay to Cornerstone royalties during the Royalty
Period equal to: (i) one percent (1%) of Xxxxx' Net Sales of pharmaceutical
products under any HUMIBID marks during any fiscal year in the Royalty Period on
the first $10 million of Xxxxx' Net Sales during said fiscal year, plus (ii) two
percent (2%) of Xxxxx' Net Sales of pharmaceutical products under any HUMIBID
marks in excess of $10 million during said fiscal year year. For these purposes,
a fiscal year shall be the annual anniversary of the Effective Date. For the
three (3) fiscal years during the Royalty Period, Xxxxx shall pay to Cornerstone
a minimum royalty payment equal to $50,000 for each fiscal year during the
Royalty Period. If for any fiscal year during the Royalty Period, the royalties
payable to Cornerstone are less than $50,000, Xxxxx
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shall, within 30 days after the end of such fiscal year, make-up the difference
with a supplemental payment to Cornerstone.
(b) For purposes of this paragraph 3, the term "net sales" is
defined to mean net sales determined in accordance with generally accepted
accounting principles, consistently applied.
(c) Xxxxx shall submit to Cornerstone within forty-five (45) days
after the end of each calendar quarter during the Royalty Period a statement
setting forth (i) Xxxxx' net sales of pharmaceutical products under any HUMIBID
marks during that quarter, and (ii) the amount of the royalties payable to
Cornerstone for that quarter pursuant to paragraph 4 of this Agreement. Within
sixty (60) days after the end of each calendar quarter during the Royalty
Period, Xxxxx shall make payment to Cornerstone of the full amount of royalties
payable for that quarter or portion thereof as appropriate. All such payments
shall be made by Xxxxx in U.S. dollars to the credit of a bank account
designated in writing by Cornerstone.
(d) Any payments due to Cornerstone hereunder that are received
after the due date shall bear interest at the rate of twelve percent (12%) per
year from the due date.
(e) Xxxxx shall have the right to offset royalties payable to
Cornerstone and Carolina against amounts otherwise owed by Cornerstone or
Carolina to Xxxxx arising under this Agreement (i.e., inventory purchases or
returns liability).
(f) Xxxxx agrees to keep true and accurate records and books of
account containing all data necessary for the determination of royalties payable
under this Paragraph 4, which records and books of account shall be opened for
review upon at least thirty (30) days written notice during reasonable business
hours, but in no event more than twice in any twelve (12) month period, for
inspection by an independent certified public accountant selected by
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Xxxxxxxxxxx and acceptable to Xxxxx (which acceptance shall not be unreasonably
withheld) for the sole purpose of verifying the accuracy of Xxxxx' statements
hereunder. Cornerstone shall be solely responsible for the costs of the
independent accountant. If any such inspection indicates the royalty payments
due to Cornerstone have been underpaid or overpaid for any period, the
applicable Party shall promptly pay to the other the amount of such underpayment
or overpayment. Before any independent accountant conducts any inspection of
Xxxxx' records and books of account, Xxxxx may require the accountant to enter
into a written agreement with Xxxxx under which the accountant agrees not to
disclose to any third party any information in Xxxxx' records and books of
account made available for the accountant's inspection and not to disclose to
Cornerstone or Carolina the name, address, or sales volume of any customers of
Xxxxx.
(g) Notwithstanding the foregoing, no royalties shall be payable on
any sales made by Xxxxx of the Humibid DM Rx Product.
5. SALES PRIOR TO THE EFFECTIVE DATE. Cornerstone agrees not to sell
or launch the Humibid DM Rx Product but shall cause Pharmafab, Inc. to
manufacture sufficient launch quantities as Xxxxx may require for the sale by
Xxxxx. From January 5, 2005 through the Effective Date, Cornerstone will make
sales of its over-the-counter versions of Humibid (Humibid e and Humibid CS)
only to existing customers and such sales shall be limited to re-orders not
solicited by Cornerstone. The parties agree that Wal-Mart is not an existing
customer of Cornerstone for this purpose. From January 5, 2005 through the
Effective Date, Xxxxx will make sales of its AlleRx product line only to
existing customers and such sales shall be limited to re-orders not solicited by
Xxxxx.
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6. RETURNS OF PRODUCT SOLD PRIOR TO THE EFFECTIVE DATE. Cornerstone
and Carolina shall be responsible for all returns of products sold by Xxxxx
under any AlleRx xxxx xxxxx to the Effective Date, provided that Xxxxx
reimburses Cornerstone or Carolina for the first $1 million of documented AlleRx
product returns that were sold by Xxxxx prior to the Effective Date, to the
extent such products are returned within 18 months of the Effective Date. Xxxxx
shall be responsible for all returns of products sold by Cornerstone and
Carolina under any Humibid xxxx xxxxx to the Effective Date, provided that
Cornerstone or Carolina reimburses Xxxxx for the first $1 million of documented
Humibid product returns that were sold by Cornerstone or Carolina prior to the
Effective Date, to the extent such products are returned within 18 months of the
Effective Date. After the Effective Date, each party, on a monthly basis, will
provide product return documentation in reasonable detail (lot number, quantity,
and dollar credit amount) to the other party, until the $1 million return limit
has been exceeded. Each party will have 30 days to inspect the documentation and
make payment to the other party.
7. FINISHED GOODS INVENTORIES. Upon the Effective Date, Cornerstone
shall transfer to Xxxxx all its right, title and interest in any finished goods
inventories of Humibid e, Humibid CS, Humibid LA, and Humibid DM, excepting the
Humibid DM Rx Product, at no cost to Xxxxx. Upon the Effective Date, Cornerstone
shall transfer to Xxxxx all its right, title and interest in any finished goods
inventories of the Humibid DM Rx Product and Xxxxx shall transfer to Cornerstone
all its right, title and interest in any finished goods inventories of AlleRx
Dose Pack, AlleRx D and AlleRx Suspension syrup. Such transfers will be made at
actual cost basis in such inventory with the intent of having no cash exchange
hands at the Effective Date. However, if one party's cost basis in transferred
inventory exceeds the others, then the party transferring the lower cost value
of inventory will pay such deficiency to the other by wire
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transfer on the Effective Date. By way of example, if Xxxxx delivers to
Cornerstone $250,000 of AlleRx inventory, at cost basis, and Cornerstone
delivers to Xxxxx $400,000 of the Humibid DM Rx Product inventory, at cost
basis, then Xxxxx will make wire transfer payment to Cornerstone in the amount
of $150,000 on the Effective Date. The cost basis of each parties inventory will
be subject to a maximum of $500,000. Five days prior to the Effective Date, the
parties will provide each other with a detailed listing of the finished goods
inventories referenced herein.
8. MANUFACTURING AND PRODUCT SUPPLY. Prior to the Effective Date,
Xxxxx and Cardinal Health PTS, LLC ("Cardinal Health") shall have entered into
an agreement whereby Cardinal Health will continue to manufacture the current
formulations of AlleRx Dose pack and AlleRx D for Cornerstone for a period of 12
months after the Effective Date. Cardinal Health or Xxxxx will xxxx and
Cornerstone shall pay $2.70 and $6.10 for each container, dose pack or bottle,
of the current formulations of AlleRx Dose pack and AlleRx D, respectively and
$0.25 for AlleRx samples, plus the cost of shipping. Cornerstone will be
required to make purchase orders of such product at the current production lot
sizes in place at the Effective Date. Cornerstone will provide Cardinal and
Xxxxx with a four (4) month committed purchase forecast. With respect to the
ALLERx Suspension product currently manufactured by Hitech, Xxxxx will use
commercially reasonable efforts to transfer any open purchase orders or supply
agreement to Cornerstone.
Prior to the Effective Date, Xxxxx, Cornerstone and Pharmafab will meet
and Pharmafab and Xxxxx will agree that PharmaFab will manufacture and package,
under Xxxxx labeling and tooling, the Humibid DM Rx Product for Xxxxx.
Cornerstone will be responsible for the purchase of the initial launch
quantities subject to the maximum dollar cost basis of $500,000 set
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forth in paragraph 7 above. It is understood that no inventory currently exists
for the Humibid DM Rx Product.
As soon as commercially reasonable after the Effective Date, (a)
Cornerstone will, at its cost, provide tooling and labeling to Cardinal Health
in order to identify Cornerstone as the distributor of the AlleRx products and
(b) Xxxxx will, at its cost, provide tooling and labeling to PharmaFab, Inc. in
order to identify Xxxxx as the distributor of the Humibid products.
9. REPRESENTATIONS AND WARRANTIES OF XXXXX. Xxxxx hereby represents and
warrants to Cornerstone and Carolina as follows:
(a) Xxxxx and the person executing this Agreement on its behalf are
legally authorized to execute this Agreement, and the terms of this Agreement
are binding upon, and, enforceable against, Xxxxx.
(b) The J-Med Agreement is in full force and effect, and the
executed Assignment in the form attached as Exhibit B hereto, together with the
executed J-Med Consent in the form attached as Exhibit C hereto, will convey to
Cornerstone all rights and obligations of Xxxxx under the J-Med Agreement, as
amended, in accordance with its terms.
(c) Xxxxx is the lawful sole owner of all rights, title and interest
in the ALLERX marks identified in the Assignment attached as Exhibit D hereto
and is unaware of any other person or entity who is currently claiming ownership
of any ALLERX xxxx for any product or service. The executed Assignment in the
form attached as Exhibit D hereto will convey to Cornerstone all rights, title
and interest in all ALLERX marks identified in said Assignment.
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(d) As of the Effective Date there is no action pending or
threatened against Xxxxx, other than the Litigation, relating to Xxxxx' rights
or obligations under the J-Med Agreement, or to any ALLERX products, or to any
ALLERX marks identified in the Assignment attached as Exhibit D hereto.
(e) During the period between December 1, 2004 and the Effective
Date, Xxxxx' promotional and sales activities with respect to products sold
under any ALLERX marks were consistent with and at the same level as such
activities during October-November 2004.
(f) During the two year period ending December 31, 2004: (i) Xxxxx
has sold less than 650,000 units of AlleRx Dose Pack; (ii) less than 40,000
units of AlleRx D; and (iii) less than 20,000 units of AlleRx Suspension.
(g) Xxxxx shall submit to Cornerstone any orders it receives for
AlleRx Dose Pack, AlleRx D and AlleRx Suspension on or after the Effective Date.
10. REPRESENTATIVES AND WARRANTIES OF CORNERSTONE AND CAROLINA.
Cornerstone and Carolina hereby represent and warrant to Xxxxx as follows:
(a) Cornerstone and Carolina and the persons executing this
Agreement on their behalf are legally authorized to execute this Agreement, and
the terms of this Agreement are binding upon, and enforceable against,
Cornerstone and Carolina.
(b) Cornerstone is the lawful sole owner of all rights, title and
interest in the HUMIBID marks identified in the Assignment attached as Exhibit A
hereto and the formulation for the Humid DM Rx Product and is unaware of any
other person or entity who is currently claiming ownership of any HUMIBID xxxx
or such formulation for any product or service. The executed Assignment in the
form attached as Exhibit A hereto will convey to Xxxxx all rights, title and
interest in all HUMIBID marks identified in said Assignment.
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(c) As of the Effective Date there is no action pending or
threatened against Cornerstone or Carolina, other than the Litigation, relating
to any HUMIBID products or to any HUMIBID marks identified in the Assignment
attached as Exhibit A hereto.
(d) During the period between December 1, 2004 and the Effective
Date, Cornerstone's and Carolina's promotional and sales activities with respect
to products sold under any HUMIBID marks were consistent with and at the same
level as such activities during October-November 2004.
(e) Prior to January 5, 2005, Cornerstone and Carolina have sold
less than 850,000 units of Humibid e and Humibid CS, collectively and less than
625,000 equivalent 100-count bottles of Humibid LA and Humibid DM, collectively.
(f) Cornerstone and Carolina shall submit to Xxxxx any orders either
of them receives for any Humibid product on or after the Effective Date.
11. GUAIFENESIN. Cornerstone and Carolina hereby covenant and agree
that, during the Royalty Period, Cornerstone and Carolina will not engage in the
development, marketing or sale of any product comprised in whole or in part of
guaifenesin; provided, however, that Cornerstone may continue to market,
distribute and sell DECONSAL in its present formulation as a prescription
product during the Royalty Period (and thereafter); and provided further that
either Cornerstone or Carolina may during the Royalty Period acquire a company
that manufactures, markets, distributes and/or sells a product comprised in
whole or in part of guaifenesin so long as said guaifenesin product does not
represent or is not anticipated to represent more than 25% of the annual revenue
of such company. The Parties also hereby agree that, in the event the three year
Royalty Period is deemed too restrictive by any court in any court proceeding,
the court may reduce said three-year period of time to such shorter period as
the
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court deems reasonable under the circumstances, but the Parties agree not to
advocate for reductions in said time period.
12. CONFIDENTIALITY OF THIS AGREEMENT. The terms of this Agreement
are confidential and shall not be disclosed to any third party by any party or
by any person or entity controlled by a party, without the written consent of
all adverse parties; provided, however, that disclosure may be made without such
consent as required by judicial process, court order or mandatory request from a
governmental entity. In the event a party receives judicial process, a court
order, or such a mandatory request requiring disclosure, the party will give
notice to all other parties in sufficient time, if possible, to enable the other
parties to object to such disclosure and/or to request that such disclosure be
made subject to conditions designed to maintain the confidentiality of the
Agreement to the maximum extent possible. Absent such timely objection or
request, the party from whom such information is sought is entitled to provide
such information to the extent called for by the judicial process, court order,
or mandatory request. However, the parties may discuss the transfer of the
trademarks in a press release on March 1, 2005 in the form attached as Exhibit F
hereto ("the press release").
13. CONFIDENTIALITY OF EVIDENCE AND INFORMATION. Each party agrees
not to disclose evidence or information that is not a matter of public record
and that was discovered from an opposing party during the Litigation and was not
otherwise known to the party outside of the Litigation; provided, however, that
in the event a party receives judicial process, a court order, or a mandatory
request from a governmental entity to disclose such evidence or information, the
party will give notice to all other parties in sufficient time, if possible, to
enable the other parties to object to the disclosure of such evidence or
information and/or to request that
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any such disclosure be made subject to conditions designed to maintain the
confidentiality of such evidence and information. Absent such timely objection
or request, the party from whom such evidence or information is sought is
entitled to provide said evidence or information to the extent called for by the
judicial process, court order, or mandatory request.
14. NON-DISPARAGEMENT. No party, or any person authorized to speak
for a party, will make any public derogatory or negative comments about any
other party, or any officer, director, or manager of any other party concerning
their conduct in such capacities, or about the Litigation or the settlement of
the Litigation; provided, however, that nothing contained herein shall be
construed to prevent any party from making any allegations in any future
litigation as such party deems appropriate.
15. RELEASE BY XXXXX. Subject to fulfillment by Cornerstone and
Carolina of their obligations under paragraphs 1 and 3 hereof, Xxxxx hereby
releases and discharges Cornerstone and Carolina and their respective
subsidiaries and successors, from all actions, causes of action, suits, debts,
sums of money, accounts, reckonings, bonds, bills, specialties, covenants,
contracts, controversies, agreements, promises, variances, trespasses, damages,
judgments, claims and demands whatsoever in law or equity, which Xxxxx and its
successors or assigns can, shall or may have against Cornerstone or Carolina,
for or by reason of any act, omission, matter, cause, or thing whatsoever, from
the beginning of time to the Effective Date, whether known or unknown and
whether the same may hereafter be discovered, accrue or mature, including
without limiting the generality of the foregoing, any and all claims and demands
Xxxxx has asserted against, or could have asserted against, Cornerstone or
Carolina in the Litigation.
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16. RELEASE BY CORNERSTONE AND CAROLINA. Subject to fulfillment by
Xxxxx of its obligations under paragraphs 2 and 3 hereof, Cornerstone and
Carolina hereby release and discharge Xxxxx and its subsidiaries and successors,
from all actions, causes of action, suits, debts, sums of money, accounts,
reckonings, bonds, bills, specialties, covenants, contracts, controversies,
agreements, promises, variances, trespasses, damages, judgments, claims and
demands whatsoever in law or equity, which Cornerstone and/or Carolina and their
respective successors and assigns can, shall, or may have against Xxxxx for or
by reason of any act, omission, matter, cause or thing whatsoever, from the
beginning of time to the Effective Date, whether known or unknown and whether
the same may hereafter be discovered, accrue or mature, including without
limiting the generality of the foregoing, any and all claims and demands
Carolina and Cornerstone have asserted against, or could have asserted against,
Xxxxx in the Litigation.
17. NO ADMISSION OF LIABILITY. Neither the terms of this Agreement
nor its execution, nor any of the negotiations relating thereto shall be
construed as an admission of wrongdoing or liability on the part of any party,
or offered or received into evidence in any action or proceeding in any court,
administrative agency or other tribunal, as any such purported admission.
18. COMPLIANCE WITH PROTECTIVE ORDER. Pursuant to the provisions of
paragraph 15 of the Stipulation And Protective Order entered in the Litigation
on September 29, 2004, each party hereby requests of the other parties that all
documents (and all copies thereof) produced by said party to the other parties
be destroyed and that counsel for the other parties provide to counsel for the
producing party a written certification confirming their destruction;
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provided, however, that the law firms of record in the Litigation for each party
may retain copies of any pleading, paper, document or anything that was filed
with the Court.
19. ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the Parties and supersedes all prior proposals,
representations, discussions and writings, and any oral representation
inconsistent with any term of this Agreement is of no force or effect. This
Agreement may be amended only with the written consent of all Parties.
20. GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the laws of the state of New York, not including its choice
of law provisions.
21. ENFORCEMENT JURISDICTION. Any action to enforce this Agreement,
or otherwise arising out of this Agreement, shall be brought in a federal or
state court located in New York, New York, and each party agrees not to
challenge personal jurisdiction in any such action brought in any such court.
22. NO THIRD PARTY RIGHTS. This Agreement confers no rights upon any
third party.
23. SUCCESSORS AND ASSIGNS. The terms of this Agreement shall be
binding upon, and inure to the benefit of, the Parties hereto and their
respective successors and assigns.
24. CONSTRUCTION OF AGREEMENT. The language of this Agreement is a
product of the mutual effort of the Parties and their attorneys and should not
be construed for or against any of the Parties on the basis of the extent to
which that party participated in drafting it.
25. COUNTERPARTS. This Agreement may be executed in counterparts,
each of which shall be deemed an original.
26. NO EXISTING ASSIGNMENTS OF RIGHTS. The Parties expressly
represent and warrant that they have not assigned or transferred, or purported
to assign or transfer, to any
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person, firm, corporation, partnership, association, or other entity whatsoever
any or all of the claims, counterclaims, rights, duties, or obligations embodied
or released in this Agreement.
27. SEVERABILITY. In the event that any provision hereof is deemed
to be illegal or unenforceable, such a determination will not affect the
validity or enforceability of the remaining provisions hereof, all of which will
remain in full force.
28. WAIVER. No waiver of any of the provisions of this Agreement
will be deemed or constitute a waiver of any other provision, whether or not
similar, nor will any waiver constitute a continuing waiver. No waiver will be
binding unless executed in writing by the party making the waiver.
29. PARAGRAPH HEADINGS. Paragraph headings herein are used solely
for convenience and are not intended to be given any weight in the construction
of this Agreement.
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IN WITNESS WHEREOF, the parties have executed this Agreement on the
dates shown opposite their signatures below.
Xxxxx Laboratories, Inc.
DATE: January 14, 2005 /s/ Xxxxxxx X. Xxxxxxxxx
__________________________________
By: Xxxxxxx X. Xxxxxxxxx
Its President and Chief Executive Officer
Cornerstone Biopharma, Inc.
DATE: January 14, 2005 /s/ Xxxxx Xxxxxxx
__________________________________
By: Xxxxx Xxxxxxx
Its Chief Executive Officer
Carolina Pharmaceuticals, Inc.
DATE: January 14, 2005 /s/ Xxxxx Xxxxxxx
__________________________________
By: Xxxxx Xxxxxxx
Its: Chief Executive Officer
EXHIBIT A
ASSIGNMENT OF TRADEMARKS
THIS ASSIGNMENT OF TRADEMARKS ("Assignment") is made this 14th day
of January, 2005, by Cornerstone Biopharma, Inc. ("Assignor") to Xxxxx
Laboratories, Inc. ("Assignee").
WHEREAS, Assignor is the owner of all rights, title, and interest in
various HUMIBID trademarks used in connection with various pharmaceutical
expectorant products, including without limitation the xxxx HUMIBID, the xxxx
HUMIBID L.A., the xxxx HUMIBID DM, the xxxx HUMIBID e and the xxxx HUMIBID cs,
and including Federal Registration No. 1,361,351 for the xxxx HUMIBID and all
other registrations and applications for any HUMIBID xxxx (collectively, "the
HUMIBID Marks"); and
WHEREAS, Assignor and/or its predecessors in interest have
continuously used one or more of the HUMIBID marks in interstate commerce in the
United States for many years; and
WHEREAS, Assignor and Assignee have entered into a Settlement
Agreement with an Effective Date of February 15, 2005 (the "Settlement
Agreement") pursuant to which Assignor has agreed to assign to Assignee all of
Assignor's rights, title and interest in, to and under the HUMIBID Marks; and
WHEREAS, in accordance therewith, Assignor desires to transfer and
assign to Assignee, and Assignee desires to accept the transfer and assignment
of, all of Assignor's rights, title and interest in, to and under the HUMIBID
Marks and the goodwill of the business associated therewith and symbolized
thereby, effective as of February 15, 2005.
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NOW THEREFORE, for and in consideration of the mutual covenants
contained herein and in the Settlement Agreement and other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Assignor hereby covenants and agrees as follows:
1. ASSIGNMENT AND TRANSFER. Assignor hereby transfers and assigns to
Assignee, its successors and assigns, and Assignee hereby accepts, for the use
and benefit of the Assignee, its successors and assigns, effective as of
February 15, 2005, as fully and entirely as the same would have been held and
enjoyed by said Assignor had this Assignment not been made, all of Assignor's
right, title and interest in, to and under the HUMIBID Marks, together with the
goodwill of the business associated therewith and symbolized thereby, including
Federal Registration No. 1,361,351 and all other registrations for any HUMIBID
xxxx and including without limitation all rights of recovery and of legal action
for past infringements and of opposition and/or cancellation proceedings for
protection of the HUMIBID Marks. Assignor hereby also declares that, effective
as of February 15, 2005, Assignor expressly abandons all of its rights, title
and interest in, to and under each of the HUMIBID Marks.
2. FURTHER ACTIONS. Assignor covenants and agrees to execute such
further documents and take such additional actions as may reasonably be
requested by Assignee to vest in Assignee all of Assignor's rights in the
HUMIBID Marks and otherwise to effectuate the intent of this Assignment.
3. GOVERNING LAW AND JURISDICTION. This Assignment shall be governed
by, and construed in accordance with, the laws of the State of New York
(regardless of any choice of law principles that would lead to a contrary
result). Assignor and Assignee unconditionally and irrevocably consent to the
exclusive jurisdiction of the courts
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located in New York, New York and waive any objections with respect thereto, for
the purpose of any action, suit or proceeding arising out of or relating to this
Assignment or the transactions contemplated hereby.
IN WITNESS WHEREOF, Cornerstone Biopharma, Inc. has caused this
Assignment of Trademark to be executed by its duly authorized officer and its
corporate seal to be hereunto affixed as of the date and year first above
written.
CORNERSTONE BIOPHARMA, INC.
[Corporate Seal] By:_______________________________
[name]
Its_______________________________
[title]
STATE OF NORTH CAROLINA ss:
On this 14th day of January, 2005, personally appeared before me
[name], to me personally known, who being by me duly sworn, deposes and says
that he is [title] of Cornerstone Biopharma, Inc., the company described in and
which executed the above instrument, and that the execution and delivery of this
Assignment of Trademarks were authorized by said company.
__________________________________
Notary Public
My commission expires:
The foregoing ASSIGNMENT OF TRADEMARKS by Cornerstone Biopharma,
Inc. is hereby accepted by Xxxxx Laboratories, Inc. as of the 15th day of
February, 2005.
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XXXXX LABORATORIES, INC.
[Corporate Seal] By:______________________________
[name]
Its________________________________
[title]
EXHIBIT B
ASSIGNMENT OF SUBLICENSE AGREEMENT
This ASSIGNMENT OF SUBLICENSE AGREEMENT ("Assignment") is made this
14th day of January, 2005, by Xxxxx Laboratories, Inc ("Assignor") to
Cornerstone Biopharma, Inc. ("Assignee").
WHEREAS, Assignor is a party to the Sublicense Agreement dated April
25, 1999 with J-Med Pharmaceuticals, Inc. ("J-Med"), as amended by that certain
letter dated August 10, 2001, copies of which are attached hereto (the
"Sublicense Agreement"); and
WHEREAS, Assignor and Assignee have entered into a Settlement
Agreement with an Effective Date of February 15, 2005 (the "Settlement
Agreement") pursuant to which Assignor has agreed to assign to Assignee all of
Assignor's rights and obligations under the Sublicense Agreement; and
WHEREAS, in accordance therewith, Assignor desires to transfer and
assign to Assignee, and Assignee desires to accept the transfer and assignment
of, all of Assignor's rights and obligations under the Sublicense Agreement; and
WHEREAS, J-Med has provided its prior written consent to the
Assignment to Assignee of all of Assignor's rights and obligations under the
Sublicense Agreement in accordance with paragraph 13.03 of the Sublicense
Agreement;
NOW THEREFORE, for and in consideration of the mutual covenants
contained herein and in the Settlement Agreement and other good and valuable
consideration, the receipt and sufficiency of which is hereby acknowledged,
Assignor hereby covenants and agrees as follows:
-2-
1. ASSIGNMENT OF RIGHTS AND OBLIGATIONS. Assignor hereby transfers
and assigns to Assignee, its successors and assigns, and Assignee hereby
accepts, for the use and benefit of the Assignee, its successors and assigns,
effective as of February 15, 2004, as fully and entirely as the same would have
been held and enjoyed by said Assignor had this Assignment not been made, all of
Assignor's rights and obligations under the Sublicense Agreement.
2. FURTHER ACTIONS. Assignor covenants and agrees to execute such
further documents and take such additional actions as may reasonably be
requested by Assignee to vest in Assignee all of Assignor's rights and
obligations under the Sublicense Agreement and otherwise to effectuate the
intent of this Assignment.
3. GOVERNING LAW AND JURISDICTION. This Assignment shall be governed
by, and construed in accordance with, the laws of the State of New York
(regardless of any choice of law principles that would lead to a contrary
result). Assignor and Assignee unconditionally and irrevocably consent to the
exclusive jurisdiction of the courts located in New York, New York and waive any
objections with respect thereto, for the purpose of any action, suit or
proceeding arising out of or relating to this Assignment.
IN WITNESS WHEREOF, Xxxxx Laboratories, Inc. has caused this
Assignment of Sublicense Agreement to be executed by its duly authorized officer
and its corporate seal to be hereunto affixed as of the date and year first
above written.
XXXXX LABORATORIES, INC.
[Corporate Seal] By:______________________________
[name]
Its_______________________________
[title]
-0-
XXXXX XX XXX XXXXXX ss:
On this 14th day of January ____, 2005, personally appeared before
me [name], to me personally known, who being by me duly sworn, deposes and says
that he is [title] of Xxxxx Laboratories, Inc., the company described in and
which executed the above instrument, and that the execution and delivery of this
Assignment of Sublicense Agreement were authorized by said company.
______________________________
Notary Public
My commission expires:
The foregoing ASSIGNMENT OF SUBLICENSE AGREEMENT by Xxxxx
Laboratories, Inc. is hereby accepted by Cornerstone Biopharma, Inc. as of the
14th day of January, 2005.
CORNERSTONE BIOPHARMA, INC.
[Corporate Seal] By:______________________________
[name]
Its______________________________
[title]
EXHIBIT C
CONSENT TO ASSIGNMENT OF SUBLICENSE AGREEMENT
This CONSENT TO ASSIGNMENT OF SUBLICENSE AGREEMENT is provided this
31st day of December, 2004, by J-Med Pharmaceuticals, Inc. ("J-Med) to Xxxxx
Laboratories, Inc. ("Xxxxx").
WHEREAS, J-Med and Xxxxx are the only parties to that certain
Sublicense Agreement between them dated April 20, 1999, as amended (the
"Sublicense Agreement"); and
WHEREAS, Xxxxx is about to enter into a Settlement Agreement with
Cornerstone Biopharma, Inc. ("Cornerstone") that will settle litigation between
them and will also, inter alia, obligate Xxxxx to assign to Cornerstone all of
Xxxxx' rights and obligations under the Sublicense Agreement; and
WHEREAS, under paragraph 13.03 of the Sublicense Agreement, Xxxxx
may not assign its rights and obligations under the Sublicense Agreement to
Cornerstone without J-Med's prior written consent; and
WHEREAS, J-Med is prepared to provide its written consent to such
assignment by Xxxxx to Cornerstone, and Xxxxx desires to obtain J-Med's written
consent;
NOW THEREFORE, for and in consideration of one dollar and other good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, J-Med does hereby consent to the assignment by Xxxxx to
Cornerstone of all of Xxxxx' rights and obligations under the Sublicense
Agreement, subject to (i) Cornerstone's written acceptance of such assignment,
(ii) Cornerstone's written assumption of Xxxxx obligations under the Sublicense
Agreement, and (iii) an indemnification of J-Med by Cornerstone of any liability
and
-2-
costs incurred by J-Med associated with the commercialization of products under
the Sublicense Agreement by Cornerstone.
Notwithstanding the foregoing, Cornerstone shall not be entitled to
the right of first negotiation set forth in Section 12 of the Sublicense
Agreement and such right shall terminate on the date of this Consent.
-3-
IN WITNESS WHEREOF, J-Med Pharmaceuticals, Inc. has caused this Consent to
Assignment of Sublicense Agreement to be executed by its duly authorized officer
and its corporate seal to be hereunto affixed as of the date and year first
above written.
J-MED PHARMACEUTICALS, INC.
[Corporate Seal] By:______________________________
[name]
Its______________________________
[title]
DISTRICT OF COLUMBIA ss:
On this day of December ____, 2004, personally appeared before
me [name], to me personally known, who being by me duly sworn, deposes and says
that he is [title] of J-Med Pharmaceuticals, Inc., the company described in and
which executed the above instrument, and that the execution and delivery of this
Consent to Assignment of Sublicense Agreement were authorized by said company.
__________________________________
Notary Public
My commission expires:
The foregoing CONSENT TO ASSIGNMENT OF SUBLICENSE AGREEMENT by J-Med
Pharmceuticals, Inc. is hereby accepted by Xxxxx Laboratories, Inc. as of the
____ day of December, 2004.
-4-
XXXXX LABORATORIES, INC.
[Corporate Seal] By:______________________________
[name]
Its______________________________
[title]
EXHIBIT D
ASSIGNMENT OF TRADEMARKS
THIS ASSIGNMENT OF TRADEMARKS ("Assignment") is made this 14th day
of January, 2004, by Xxxxx Laboratories, Inc. ("Assignor") to Cornerstone
Biopharma, Inc. ("Assignee").
WHEREAS, Assignor is the owner of all rights, title, and interest in
various ALLERX trademarks used in connection with various pharmaceutical
respiratory products, including without limitation the xxxx ALLERX, the xxxx
ALLERX D, the xxxx ALLERX DOSE PACK and the xxxx ALLERX SUSPENSION, and
including all registrations and applications for any ALLERX xxxx (collectively,
"the ALLERX Marks"); and
WHEREAS, Assignor and/or its predecessors in interest have
continuously used one or more of the ALLERX marks in interstate commerce in the
United States for many years; and
WHEREAS, Assignor and Assignee have entered into a Settlement
Agreement with an Effective Date of February 15, 2005 (the "Settlement
Agreement") pursuant to which Assignor has agreed to assign to Assignee all of
Assignor's rights, title and interest in, to and under the ALLERX Marks; and
WHEREAS, in accordance therewith, Assignor desires to transfer and
assign to Assignee, and Assignee desires to accept the transfer and assignment
of, all of Assignor's rights, title and interest in, to and under the ALLERX
Marks and the goodwill of the business associated therewith and symbolized
thereby, effective as of February 15, 2005.
NOW THEREFORE, for and in consideration of the mutual covenants
contained herein and in the Settlement Agreement and other good and valuable
consideration, the receipt
-2-
and sufficiency of which is hereby acknowledged, Assignor hereby covenants and
agrees as follows:
1. ASSIGNMENT AND TRANSFER. Assignor hereby transfers and assigns to
Assignee, its successors and assigns, and Assignee hereby accepts, for the use
and benefit of the Assignee, its successors and assigns, effective as of
February 15, 2005, as fully and entirely as the same would have been held and
enjoyed by said Assignor had this Assignment not been made, all of Assignor's
right, title and interest in, to and under the ALLERX Marks, together with the
goodwill of the business associated therewith and symbolized thereby, including
all registrations and applications for any ALLERX xxxx and including without
limitation all rights of recovery and of legal action for past infringements and
of opposition and/or cancellation proceedings for protection of the ALLERX
Marks. Assignor hereby also declares that, effective as of February 15, 2005,
Assignor expressly abandons all of its rights, title and interest in, to and
under each of the ALLERX Marks.
2. FURTHER ACTIONS. Assignor covenants and agrees to execute such
further documents and take such additional actions as may reasonably be
requested by Assignee to vest in Assignee all of Assignor's rights in the ALLERX
Marks and otherwise to effectuate the intent of this Assignment.
3. GOVERNING LAW AND JURISDICTION. This Assignment shall be governed
by, and construed in accordance with, the laws of the State of New York
(regardless of any choice of law principles that would lead to a contrary
result). Assignor and Assignee unconditionally and irrevocably consent to the
exclusive jurisdiction of the courts located in New York, New York and waive any
objections with respect thereto, for the purpose of any action,
-3-
suit or proceeding arising out of or relating to this Assignment or the
transactions contemplated hereby.
IN WITNESS WHEREOF, Xxxxx Laboratories, Inc. has caused this
Assignment of Trademark to be executed by its duly authorized officer and its
corporate seal to be hereunto affixed as of the date and year first above
written.
XXXXX LABORATORIES, INC.
[Corporate Seal] By: _____________________________
[name]
Its _____________________________
[title]
STATE OF NEW JERSEY ss:
On this 14th day of January, 2005, personally appeared before me
[name], to me personally known, who being by me duly sworn, deposes and says
that he is [title] of Xxxxx Laboratories, Inc., the company described in and
which executed the above instrument, and that the execution and delivery of this
Assignment of Trademarks were authorized by said company.
_________________________________
Notary Public
My commission expires:
-4-
The foregoing ASSIGNMENT OF TRADEMARKS by Xxxxx Laboratories, Inc.
is hereby accepted by Cornerstone Biopharma, Inc. as of the 15th day of
February, 2005.
CORNERSTONE BIOPHARMA, INC.
[Corporate Seal] By: _____________________________
[name]
Its _____________________________
[title]
EXHIBIT E
UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------X
XXXXX LABORATORIES, INC., :
Plaintiff, :
v. : NO. 04-CV-3535 (SAS)
CAROLINA PHARMACEUTICALS, INC., :
and CORNERSTONE BIOPHARMA, INC.,
:
Defendants.
---------------------------------------------X
CAROLINA PHARMACEUTICALS, INC., :
and CORNERSTONE BIOPHARMA, INC.,
:
Counterclaim-Plaintiffs,
:
v.
:
XXXXX LABORATORIES, INC.,
:
Counterclaim-Defendant.
---------------------------------------------X
STIPULATION AND ORDER FOR DISMISSAL
IT IS HEREBY STIPULATED AND AGREED by and among the undersigned
counsel for the parties that all claims and counterclaims in this action be
dismissed with prejudice, each party to bear its own costs.
DATED: February _____, 2004
-2-
XXXXXXXXX & XXXXXXX
____________________________________
S. Xxxxxxx Xxxxxxxxxx (SL-9126)
Xxxxxxx X. Xxxxxxxx (BL-5284)
Xxxxx X.X. Xxxxxxx (JJ-3638)
Hope X. Xxxxxxxx (HH-9701)
0000 Xxxxxxxxxxxx Xxx., X.X.
Xxxxxxxxxx, X.X. 00000-0000
Tel: (000) 000-0000
Fax: (000) 000-0000
--and--
Xxxxxxx X. Xxxxxxxxx (MN-3331)
Xxxxxxx X. Xxxxxxx (MW-8844)
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, XX 00000-0000
Tel: (000) 000-0000
Fax: (000) 000-0000
Counsel for Plaintiff and
Counterclaim-Defendant Xxxxx
Laboratories, Inc.
XXXXXXX XXXXXXXX & XXXX LLP
____________________________________
Xxxxxxx X. Xxxxxxxxxx (CR-5058)
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
Tel: (000) 000-0000
Fax: (000) 000-0000
--and--
THORSNES XXXXXXXXXX XxXXXXX
Xxxxxxx X. Xxxxxxxxxx, Xx.
Xxxxx X. Xxxxxxxxxx
0000 Xxxxx Xxx., 00xx Xxxxx
Xxx Xxxxx, XX 00000
Tel: (000) 000-0000
Fax: (000) 000-0000
So Ordered: ____________________________ Counsel for Defendants and
United States District Judge Counterclaim-Plaintiffs Carolina
Pharmaceuticals Inc. and Cornerstone
Biopharma, Inc.
