Exhibit 99.2(d)
LICENSE AGREEMENT
(License to Alliance)
THIS LICENSE AGREEMENT (this "Agreement") dated as of November 4th,
1999 (the "Effective Date"), is entered into between INHALE THERAPEUTIC SYSTEMS,
INC., a Delaware corporation ("Inhale"), having a place of business at 000
Xxxxxxxxxx Xxxx, Xxx Xxxxxx, Xxxxxxxxxx 00000, and ALLIANCE PHARMACEUTICAL
CORP., a New York corporation ("Alliance"), having a place of business at 0000
Xxxxxxx Xxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000.
R E C I T A L S :
WHEREAS, Alliance and Inhale have entered an Asset Purchase
Agreement dated as of the Effective Date (as amended or restated from time to
time, the "Asset Purchase Agreement"), pursuant to which Alliance assigned
and sold to Inhale certain patent rights and know-how relating to
PulmoSpheres-Registered Trademark- Technology (as defined in the Asset
Purchase Agreement).
WHEREAS, pursuant to the Asset Purchase Agreement, Inhale has agreed
to grant to Alliance a license under the assigned patent rights and know-how,
together with other intellectual property rights, relating to the
PulmoSpheres-Registered Trademark- Technology for all applications outside of
the Inhale Field (as defined below), and for certain products within the
Inhale Field as to which Alliance exercises its rights under the Product
Development Rights Agreement of even date herewith, as amended from time to
time (the "Product Development Rights Agreement").
WHEREAS, pursuant to the Asset Purchase Agreement, Alliance has agreed
to grant to Inhale rights under certain intellectual property rights for use in
the Inhale Field, as set forth in the License Agreement (License to Inhale)
between the parties of even date herewith, as amended from time to time (the
"License to Inhale").
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants set forth below, the parties agree as follows:
ARTICLE 1
DEFINITIONS
For purposes of this Agreement, the terms defined in this Article 1
shall have the respective meanings set forth below:
1.1 "AFFILIATE" shall mean, with respect to any Person, any other
Person which directly or indirectly controls, is controlled by, or is under
common control with, such Person. A Person shall be regarded as in control of
another Person if it owns, or directly or indirectly controls, at least fifty
percent (50%) of the voting stock or other ownership interest of the other
Person, or if it directly or indirectly possesses the power to direct or cause
the direction of the management and policies of the other Person by any means
whatsoever.
* INDICATES CONFIDENTIAL INFORMATION WHICH HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION.
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1.2 "ALLIANCE PRODUCT" shall mean any product for use outside the
Inhale Field which if made, used or sold absent the license granted hereby would
infringe one or more Valid Claims of the Assigned Patent Rights, or which in
material part uses, incorporates or is based on the Assigned Know-How.
1.3 "ASSIGNED KNOW-HOW" shall mean all information and data within the
Purchased Assets (as defined in the Asset Purchase Agreement) other than the
Assigned Patent Rights which is necessary or useful for Alliance to develop,
manufacture, commercialize or use products outside the Inhale Field.
1.4 "ASSIGNED PATENT RIGHTS" shall mean (a) those certain patent
applications listed on Schedule A and all foreign counterpart patent
applications and patents claiming priority of such patent applications and
patents; (b) all patents that in the future issue from the foregoing patent
applications, including utility, model and design patents and certificates of
invention; (c) all divisionals, continuations, continuations-in-part, reissues,
renewals, extensions or additions to any of the foregoing patent applications
and patents; and (d) all patent applications filed, and patents that may issue
therefrom (including all divisionals, continuations, continuations-in-part,
reissues, renewals, extensions or additions to any of such applications or
patents), in any country that claim an Assignable Improvement, as defined in
Section 1.3(a) of the License to Inhale. Such patent applications and patents
shall include only those in which, in the case of (a) through (c), Inhale has
acquired an ownership or licensable interest during the term of this Agreement,
and in the case of (d), Inhale has acquired an ownership interest pursuant to
Section 3.3 of the License to Inhale.
1.5 "COMPETITOR OF INHALE" shall mean *
1.6 "CONFIDENTIAL INFORMATION" shall mean, with respect to a party, all
information of any kind whatsoever, and all tangible and intangible embodiments
thereof of any kind
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whatsoever, which is disclosed by such party to the other party and is marked,
identified as or otherwise acknowledged to be confidential at the time of
disclosure to the other party. Notwithstanding the foregoing, Confidential
Information of a party shall not include information which the other party can
establish by written documentation (a) to have been publicly known prior to
disclosure of such information by the disclosing party to the other party, (b)
to have become publicly known, without fault on the part of the other party,
subsequent to disclosure of such information by the disclosing party to the
other party, (c) to have been received by the other party at any time from a
source, other than the disclosing party, rightfully having possession of and the
right to disclose such information, (d) to have been otherwise known by the
other party prior to disclosure of such information by the disclosing party to
the other party, or (e) to have been independently developed by persons on
behalf of the other party without access to or use of such information disclosed
by the disclosing party to the other party. For purposes of this Agreement, the
Purchased Assets (as defined in the Asset Purchase Agreement) shall constitute
Confidential Information of Inhale subject to the provisions of clauses (a) and
(b) of the immediately preceding sentence.
1.7 "DESIGNATED PRODUCT" shall have the meaning set forth in the
Product Development Rights Agreement.
1.8 "DESIGNATED PRODUCT KNOW-HOW" shall mean all information and data,
including but not limited to the toxicological, pharmacological, clinical and
chemical data, specifications, regulatory submissions, medical uses, adverse
reactions, formulations and quality control methods, which is not generally
known, and which is necessary or useful for Alliance to develop, manufacture,
commercialize or use Designated Products, in which Inhale now has or hereafter
acquires an ownership or licensable interest.
1.9 "DESIGNATED PRODUCT PATENT RIGHTS" shall mean (a) all patents and
patent applications in any country that claim the Designated Products or the use
thereof, or any process reasonably necessary or useful in the development or
manufacture of the Designated Products; (b) all patents that in the future issue
from such patent applications, including utility, model and design patents and
certificates of invention; and (c) all divisionals, continuations,
continuations-in-part, reissues, renewals, extensions or additions to any such
patent applications and patents; in each case in which Inhale now has or
hereafter acquires an ownership or licensable interest. The Designated Product
Patent Rights may include without limitation the Assigned Patent Rights.
1.10 "INHALE FIELD" shall mean uses of perforated microstructures
within the respiratory tract, including without limitation the nasal passage;
provided, however, the Inhale Field shall not include the use of perforated
microstructures in connection with the direct intratracheal or direct pulmonary
administration (e.g., via bronchoscope or endotracheal tube) of fluorochemicals
or other liquids. For clarity, the Inhale Field includes the administration of
perforated microstructures containing compounds by means of metered dose
inhaler, dry powder inhaler, nasal spray, or by nebulization of perforated
microstructures formulated with fluorochemicals as suspending agents, provided
that the quantities of fluorochemicals so included in such formulation for
nebulization do not exceed that which is commercially reasonably necessary to
provide effective delivery of the active agent. It is presently anticipated that
the quantities of
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fluorochemicals to be used for nebulization of an active agent by or on behalf
of Purchaser will not exceed 5 ml per dose.
1.11 "LICENSE TO INHALE" shall have the meaning set forth in the
Recitals.
1.12 "LICENSED KNOW-HOW" shall mean, collectively, the Assigned
Know-How and the Designated Product Know-How
1.13 "LICENSED PATENT RIGHTS" shall mean, collectively, the Assigned
Patent Rights and the Designated Product Patent Rights.
1.14 "MAJOR PHARMACEUTICAL COMPANY" means *
1.15 "PERSON" shall mean an individual, corporation, partnership,
limited liability company, trust, business trust, association, joint stock
company, joint venture, pool, syndicate, sole proprietorship, unincorporated
organization, governmental authority or any other form of entity not
specifically listed herein.
1.16 "PRODUCT" shall mean either an Alliance Product or a Designated
Product, and "Products" shall mean, collectively, all Alliance Products and
Designated Products.
1.17 "PRODUCT DESIGNATION PERIOD" shall have the meaning set forth in
the Product Development Rights Agreement.
1.18 "PRODUCT DEVELOPMENT RIGHTS AGREEMENT" shall have the meaning set
forth in the Recitals.
1.19 "PULMONARY DRUG DELIVERY COMPANY" shall mean *
1.20 "THIRD PARTY" shall mean any Person other than Inhale, Alliance
and their respective Affiliates.
1.21 "VALID CLAIMS" shall mean a claim in a pending patent application,
or an unexpired, issued claim contained within a patent which issued therefrom
and has not been found to be unpatentable, invalid or unenforceable by a court
or other authority in the subject country from which decision an appeal is taken
or can be taken.
ARTICLE 2
REPRESENTATIONS AND WARRANTIES
Each party hereby represents and warrants to the other party as
follows:
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2.1 CORPORATE EXISTENCE. Such party is a corporation duly organized,
validly existing and in good standing under the laws of the state in which it is
incorporated.
2.2 AUTHORIZATION AND ENFORCEMENT OF OBLIGATIONS. Such party (a) has
the corporate power and authority and the legal right to enter into this
Agreement and to perform its obligations hereunder, and (b) has taken all
necessary corporate action on its part to authorize the execution and delivery
of this Agreement and the performance of its obligations hereunder. This
Agreement has been duly executed and delivered on behalf of such party, and
constitutes a legal, valid, binding obligation, enforceable against such party
in accordance with its terms.
2.3 NO CONFLICT. The execution and delivery of this Agreement and the
performance of such party's obligations hereunder (a) do not conflict with or
violate any requirement of applicable laws or regulations, and (b) do not
conflict with, or constitute a default under, any contractual obligation of it.
ARTICLE 3
LICENSE GRANTS/LICENSE FEES
3.1 OUTSIDE THE INHALE FIELD. Inhale hereby grants to Alliance an
irrevocable, exclusive, worldwide, royalty-free license (including the exclusive
right to grant sublicenses) under the Assigned Patent Rights and Assigned
Know-How for use outside the Inhale Field, including without limitation the
right to make, use, offer for sale, sell and import Alliance Products for use
outside the Inhale Field.
3.2 RESEARCH USES. Inhale hereby grants to Alliance a non-exclusive,
worldwide, royalty-free license (without the right to grant sublicenses, other
than to its Affiliates) under the Assigned Patent Rights and Assigned Know-How
to perform research and development activities to identify products with respect
to which Alliance may desire to exercise a Call Right therefor under the Product
Development Rights Agreement. Such license shall be effective until the first to
occur of (i) any date on which an Improvement made by Alliance would not be
automatically assigned to Inhale under Section 3.3 of the License to Inhale, or
(ii) expiration or termination of the Product Designation Period.
3.3 DESIGNATED PRODUCTS. Inhale hereby grants to Alliance an
irrevocable, exclusive, worldwide (subject to Section 3.9 of the Product
Development Rights Agreement), royalty-free license (including the exclusive
right to grant sublicenses to Third Parties that are not Competitors of Inhale,
subject to Section 3.7 of the Product Development Rights Agreement) under the
Designated Product Patent Rights and Designated Product Know-How to use, offer
for sale, sell and import Designated Products for all purposes. If Alliance
obtains the right to manufacture or have manufactured a powder formulation of
the active substance included in a Designated Product pursuant to Section 3.5 of
the Product Development Rights Agreement, then the foregoing license shall be
expanded to include the right to manufacture or have manufactured a powder
formulation of such active substance of such Designated Product.
3.4 TRADEMARKS. Subject to this Section 3.4, Inhale grants to Alliance
a worldwide, nonexclusive, royalty-free license to use the trademarks
PulmoSpheres-Registered Trademark- and Homodispersion-TM-
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(the "Marks") solely in connection with the commercialization of Designated
Products. Alliance shall not use the Marks in connection with any other goods or
services without Inhale's prior written consent. Alliance shall use the Marks
only in a manner consistent with commercially reasonable written guidelines to
be established by Inhale and shall indicate on any materials on which the Marks
appear that Inhale is the owner of the Marks. Alliance shall comply with all
applicable laws and regulations pertaining to the proper use and designation of
trademarks in each country in which Alliance uses the Marks, and shall provide
all materials on which it intends to use the Marks to Inhale for prior review
and approval of the manner in which the Marks are used.
3.5 ALLIANCE COVENANT. Except in the case of Designated Products,
Alliance shall not use or sell knowingly products or compounds for use in the
Inhale Field that are made using or that incorporate PulmoSpheres-Registered
Trademark- Technology.
3.6 LICENSE FEE. As provided in section 1.15 of the Asset Purchase
Agreement, in partial consideration of the license, Alliance shall issue to
Inhale on the Effective Date shares of Alliance's common stock in a number equal
to the quotient of $5,000,000 divided by the average closing price of Alliance's
common stock for the fifteen (15) trading days preceding the Effective Date. The
shares of Alliance's common stock are being issued pursuant to Common Stock
Purchase Agreement dated the Effective Date between Alliance and Inhale.
ARTICLE 4
CONFIDENTIALITY
4.1 CONFIDENTIAL INFORMATION. For a period of seven (7) years following
the Effective Date, each party shall maintain in confidence all Confidential
Information disclosed by the other party, and shall not use, disclose or grant
the use of the Confidential Information except on a need-to-know basis to its
Affiliates' and actual or potential sublicensees, directors, officers,
employees, agents, consultants, clinical investigators, contractors,
distributors or permitted assignees, to the extent such disclosure is reasonably
necessary in connection with such party's activities in connection with its
performance under and exercise of rights expressly provided in this Agreement.
To the extent that disclosure is authorized by this Agreement, prior to
disclosure, a party hereto shall obtain agreement of any such Person to hold in
confidence and not make use of the Confidential Information of the other party
for any purpose other than those permitted by this Agreement.
4.2 TERMS OF THIS AGREEMENT. Except as otherwise provided in this
Article 4, neither party shall disclose any terms or conditions of this
Agreement to any Third Party without the prior consent of the other party.
Notwithstanding the foregoing, prior to execution of this Agreement, the parties
shall have agreed upon the substance of information that can be used to describe
the terms of this transaction, and each party may disclose such information, as
modified by mutual agreement from time to time, without the other party's
consent.
4.3 PERMITTED DISCLOSURES. The confidentiality obligations contained in
this Article 4 shall not apply to the extent that the receiving party (the
"Recipient") is required (a) to disclose information by law, order or regulation
of a governmental agency or a court of competent
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jurisdiction, or (b) to disclose information to any governmental agency for
purposes of obtaining approval to test or market a product, provided in either
case that the Recipient shall provide written notice thereof to the other party
and sufficient opportunity to object to any such disclosure or to request
confidential treatment thereof, and shall use reasonable efforts to secure
confidential treatment of, or a protective order for, the information so
required to be disclosed.
ARTICLE 5
LICENSED PATENT RIGHTS
5.1 PROSECUTION AND MAINTENANCE.
5.1.1 Subject to the provisions of this Section 5.1, Inhale shall
be responsible for and shall control, at its sole cost, the preparation, filing,
prosecution (including oppositions) and maintenance of the Licensed Patent
Rights. Inhale shall consider in good faith the interests of Alliance in so
doing. Inhale (a) shall supply Alliance with a copy of each patent application
within the Licensed Patent Rights as filed, together with notice of its filing
date and serial number; (b) shall consult with Alliance regarding the
prosecution and maintenance of the Licensed Patent Rights, and shall implement
all reasonable requests of Alliance regarding claims with application outside
the Inhale Field or claims to the Designated Products or their use; and (c)
shall inform Alliance promptly of the allowance and issuance of each patent
within the Licensed Patent Rights, together with the date and patent number
thereof, and shall provide Alliance with a copy of such patent as issued.
5.1.2 Inhale shall *
the Inhale Field. Inhale (a) shall *
relating to such applications; (b) shall *
(c) shall *
and (d) shall *
5.1.3 If requested by Alliance *
the Inhale Field. With respect to each such patent application and
patent issuing therefrom *
. For any patent application or patent *
Alliance (a) shall *
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* and (b) shall *
prior
to any proposed action. Notwithstanding the foregoing, if *
5.1.4 If Inhale elects to *
Alliance shall *
5.1.5 Each party shall cooperate with the other, execute all lawful
papers and instruments and make all rightful oaths and declarations as may be
necessary in the preparation, filing, prosecution and maintenance of the
Licensed Patent Rights.
5.2 ENFORCEMENT OF PATENT RIGHTS. Each party shall notify the other
party of any infringement known to such party of any Licensed Patent Rights and
shall provide the other party with the available evidence, if any, of such
infringement.
5.2.1 Subject to the provisions of Sections 5.2.2 and 5.2.3 below,
Inhale shall have the right, at its sole cost and in its sole discretion, to
determine the appropriate course of action to enforce the Licensed Patent Rights
or otherwise xxxxx the infringement thereof, to take (or refrain from taking)
appropriate action to enforce the Licensed Patent Rights, to control any
litigation or other enforcement action and to enter into, or permit, the
settlement of any such litigation or other enforcement action with respect to
the Licensed Patent Rights, and shall consider, in good faith, the interests of
Alliance in so doing.
5.2.2 Except as provided in the last sentence of this Section
5.2.2, *
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*
All monies recovered upon final judgment or settlement of any such suit to
enforce the Licensed Patent Rights as permitted under this Section 5.2.2 shall
first be allocated to reimburse each party's expenses incurred in conducting
such action and then allocated between the parties in proportion to their
respective damages incurred by reason of such infringement, as determined in
such suit, or as agreed upon in such settlement.
5.2.3 If Alliance learns that a Third Party is infringing the
Designated Product Patent Rights by making and selling a product competitive
with a Designated Product, *
All monies recovered upon final judgment or settlement of any such suit to
enforce the Designated Product Patent Rights as permitted under this Section
5.2.3 shall first be allocated to reimburse each party's expenses incurred in
conducting such action and then allocated between the parties in proportion to
their respective damages incurred by reason of such infringement, as determined
in such suit, or as agreed upon in such settlement.
5.2.4 Notwithstanding the foregoing, the non-controlling party
shall reasonably cooperate with the controlling party, at the expense of the
controlling party, in the planning and prosecution of any action to enforce the
Licensed Patent Rights as set forth above. Each party shall keep the other party
and its counsel reasonably informed as to the status of any such action.
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ARTICLE 6
INDEMNIFICATION
6.1 INDEMNIFICATION. Alliance shall defend, indemnify and hold Inhale
harmless from all losses, liabilities, damages and expenses (including
attorneys' fees and costs) incurred as a result of any claim, demand, action or
proceeding by any Third Party to the extent arising from the research,
development, manufacture and sale of Products by Alliance, its Affiliates and
sublicensees or the use of Products or the Marks (without regard to culpable
conduct), except to the extent arising from the gross negligence or willful
misconduct of Inhale, its Affiliates or (sub)licensees (other than Alliance).
6.2 PROCEDURE. Inhale promptly shall notify Alliance of any claim,
demand, action or proceeding for which Inhale intends to claim such
indemnification. Alliance shall have the right to participate in, and, to the
extent Alliance so desires, jointly with any other indemnitor similarly noticed,
to assume the defense thereof with a separate counsel selected by Alliance for
all indemnitees similarly situated. At any time, if representation of Inhale by
the counsel retained by Alliance would be inappropriate due to actual or
potential conflicts of interests between Inhale and any other party represented
by such counsel therein, Inhale shall have the right to retain separate counsel,
for all Indemnitees similarly situated, at Alliance's sole expense. The
indemnity agreement in this Article 6 shall not apply to amounts paid in
settlement of any claim, demand, action or proceeding if such settlement is
effected without the consent of Alliance, which consent shall not be
unreasonably withheld or delayed. The failure to deliver notice to Alliance
within a reasonable time after the commencement of any such action or
proceeding, if prejudicial to its ability to defend such action or proceeding,
shall relieve Alliance of any liability to Inhale under this Article 6, but the
omission to deliver such notice to Alliance shall not relieve it of any
liability that it may have to Inhale other than under this Article 6. Inhale,
its employees and agents, shall reasonably cooperate with Alliance and its legal
representatives in the investigation and defense of any claim, demand, action or
proceeding covered by this indemnification.
6.3 INSURANCE. Alliance shall maintain liability insurance (including
product liability insurance) with respect to the research, development,
manufacture and sale of Products by Alliance, its Affiliates and (sub)licensees
(other than Inhale) in such amount as Alliance customarily maintains with
respect to the research, development, manufacture and sales of its similar
products. Alliance shall maintain such insurance for so long as it or such
Affiliates or (sub)licensees continues to research, develop, manufacture or sell
Products, and thereafter for so long as Alliance customarily maintains such
insurance covering the research, development, manufacture or sale of its similar
products.
ARTICLE 7
ARBITRATION
Any dispute, controversy or claim initiated by either Inhale or
Alliance arising out of, resulting from or relating to this Agreement, or the
performance by either party of its obligations under this Agreement (other than
bona fide third party actions or Proceedings filed or instituted
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in an action or Proceeding by a Third Party against Inhale or Alliance), shall
be finally resolved by binding arbitration. Whenever Inhale or Alliance shall
decide to institute arbitration proceedings, it shall give written notice to
that effect to the other. Either party may, notwithstanding this Agreement, seek
from any judicial authority pre-award interim, provisional or conservatory
relief that may be necessary to protect the rights of that party pending the
arbitrator's determination of the merits of the controversy. Discovery in any
arbitration proceeding under this Article 7 shall be permitted as set forth in
the Federal Rules of Civil Procedure with respect to the performance by the
parties of their obligations under this Agreement and such other matters as the
arbitrator may determine (it being the intent of the parties that full discovery
occur with respect to the salient facts). The parties shall apply the Rules of
Federal Evidence to the hearing. Any such arbitration shall be conducted under
the Comprehensive Rules for Commercial, Real Estate and Construction Cases of
the Judicial Arbitration & Mediation Services by a single arbitrator chosen by
mutual consent of Inhale and Alliance. Should Inhale and Alliance fail to agree
on the selection of an arbitrator, Inhale and Alliance shall each appoint one
arbitrator and the two arbitrators shall agree upon a neutral third arbitrator
to serve as the sole arbitrator. Any such arbitration shall be held in San
Xxxxxx if initiated by Alliance, and in San Diego if initiated by Inhale. The
arbitrator shall render his or her decision within thirty (30) days of the
completion of the arbitration. The arbitrator shall have the authority to
allocate between the parties the costs of arbitration in such equitable manner
as he or she determines. Judgment upon the award so rendered may be entered in
any court having jurisdiction or application may be made to such court for
judicial acceptance of any award and an order of enforcement, as the case may
be. In no event shall a demand for arbitration be made after the date when
institution of a legal or equitable proceeding based upon such claim, dispute or
other matter in question would be barred by the applicable statute of
limitations or the provisions of this Agreement. The parties hereby waive their
right to a jury trial in connection with any matter submitted for resolution by
arbitration hereunder, except as provided in the last sentence hereof.
Notwithstanding the foregoing, disputes regarding the validity, scope or
enforceability of patents shall be submitted to a court of competent
jurisdiction in the country where such patent has issued.
ARTICLE 8
MISCELLANEOUS
8.1 NOTICES. Any consent, notice or report required or permitted to be
given or made under this Agreement by one of the parties to the other shall be
in writing and delivered to such other party at its address indicated below, or
to such other address as the addressee shall have last furnished in writing to
the addressor, and shall be effective upon receipt by the addressee.
If to Inhale: Inhale Therapeutic Systems
000 Xxxxxxxxxx Xxxx
Xxx Xxxxxx, Xxxxxxxxxx 00000
Attention: Legal Department
With copies to: Xxxxxx Godward LLP
Five Palo Alto Square
0000 Xx Xxxxxx Xxxx
00
Xxxx Xxxx, Xxxxxxxxxx 00000
Attention: Xxxxxx X. Xxxxx, Esq.
If to Alliance: Alliance Pharmaceutical Corp.
0000 Xxxxxxx Xxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
Attention: President
With copies to: Xxxxx X. Xxxxxxx
Vice-President and General Counsel
Alliance Pharmaceutical Corp.
0000 Xxxxxxx Xxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
8.2 SEVERABILITY. In the event that any provision of this Agreement, or
the application of any such provision to any person or set of circumstances,
shall be determined to be invalid, unlawful, void or unenforceable to any
extent, the remainder of this Agreement, and the application of such provision
to Persons or circumstance other than those as to which it is determined to be
invalid, unlawful, void or unenforceable, shall not be impaired or otherwise
affected and shall continue to be valid and enforceable to the fullest extent
permitted by law.
8.3 WAIVER. No failure or delay on the part of any party to exercise
any right under this Agreement, operate as a waiver of such right; and no single
or partial exercise of any such right shall preclude any other or further
exercise thereof or of any other right. No party shall be deemed to have waived
any claim arising out of this Agreement, or any right under this Agreement,
unless the waiver of such right is expressly set forth in a written instrument
duly executed and delivered on behalf of such party; and any such waiver shall
not be applicable or have any effect except in the specific instance in which it
is given.
8.4 ASSIGNMENT. Except as otherwise expressly provided under this
Agreement neither this Agreement nor any right or obligation hereunder may be
assigned or otherwise transferred (whether voluntarily, by operation of law or
otherwise), without the prior express written consent of the other party;
provided, however, that either party may, without such consent, assign this
Agreement and its rights and obligations hereunder in connection with the
transfer or sale of all or substantially all of its business to which this
Agreement relates, or in the event of its merger, consolidation, change in
control or similar transaction, except that in no event shall Alliance assign
its rights or delegate its obligations under this Agreement to a Competitor of
Inhale, and in no event shall Inhale assign its rights under this Agreement to
an entity that has fewer than two hundred (200) employees without Alliance's
prior written consent, not to be unreasonably withheld. Any permitted assignee
shall assume all obligations of its assignor under this Agreement. Any purported
assignment or transfer in violation of this Section 8.4 shall be void.
8.5 APPLICABLE LAW. This Agreement shall be governed by and construed
in accordance with the laws of the State of California, without regard to the
conflicts of law principles thereof.
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8.6 INDEPENDENT CONTRACTORS. Each party hereby acknowledges that the
parties shall be independent contractors and that the relationship between the
parties shall not constitute a partnership, joint venture or agency. Neither
party shall have the authority to make any statements, representations or
commitments of any kind, or to take any action, which shall be binding on the
other party, without the prior consent of the other party to do so.
8.7 ENTIRE AGREEMENT. This Agreement, together with the Asset Purchase
Agreement, License to Inhale and the Product Development Rights Agreement,
contains the entire understanding of the parties with respect to the subject
matter hereof. All express or implied representations, agreements and
understandings, either oral or written, heretofore made are expressly superseded
by this Agreement. This Agreement may be amended, or any term hereof modified,
only by a written instrument duly executed by both parties.
8.8 INDEPENDENT CONTRACTORS. Each party hereby acknowledges that the
parties shall be independent contractors and that the relationship between the
parties shall not constitute a partnership, joint venture or agency. Neither
party shall have the authority to make any statements, representations or
commitments of any kind, or to take any action, which shall be binding on the
other party, without the prior consent of the other party to do so.
8.9 NO FURTHER RIGHTS. Except as otherwise expressly provided in this
Agreement, under no circumstances shall a party, as a result of this Agreement,
obtain any ownership interest, license or other right in any invention,
discovery, composition or other technology, or in any patent right or other
intellectual property right, of the other party. No rights other than those
expressly provided in this Agreement are granted to either party hereunder, and
no additional rights shall be deemed granted, by implication, estoppel or
otherwise.
8.10 LIMITATION OF LIABILITY. EXCEPT AS OTHERWISE SET FORTH IN ARTICLE
6 ABOVE, NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL OR INDIRECT DAMAGES ARISING OUT OF THE PERFORMANCE OF
THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
8.11 COUNTERPARTS. This Agreement may be executed in counterparts, each
of which shall for all purposes be deemed an original.
8.12 LICENSE ON EARLY TERMINATION OR BANKRUPTCY. All rights or licenses
granted under or pursuant to this Agreement by Inhale to Alliance hereunder are,
and shall otherwise be deemed to be, for purposes of Section 365(n) of the U.S.
Bankruptcy Code, licenses of rights to "intellectual property" as defined under
Section 101 of the U.S. Bankruptcy Code. Inhale agrees that Alliance, as a
licensee of such rights under this Agreement, shall retain and may fully
exercise all of its rights and elections under the U.S. Bankruptcy Code with
respect to the licenses granted to Alliance under such intellectual property.
Inhale further agrees that, in the event of the commencement of a bankruptcy
proceeding by or against Inhale under the U.S. Bankruptcy Code, Alliance shall
be entitled to a complete duplicate of (or complete access to, as appropriate)
any such intellectual property and all embodiments of such intellectual
property, and same, if not already in its possession, shall be promptly
delivered to Alliance (i) upon any such commencement of a bankruptcy proceeding
upon Alliance's written request therefor, unless
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Inhale elects to continue to perform all of its obligations under this Agreement
or (ii) if not delivered under (i) above, following the rejection of this
Agreement by or on behalf of Inhale upon written request therefore by Alliance.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
INHALE THERAPEUTIC SYSTEMS, INC.
By: /s/
---------------------------------------------
Name: Xxxxxx X. Makes
------------------------------------------
Title: Vice President & Chief Financial Officer
-----------------------------------------
ALLIANCE PHARMACEUTICAL CORP.
By: /s/
---------------------------------------------
Name: Xxxxxxxx X. Xxxx
------------------------------------------
Title: President and Chief Operating Officer
-----------------------------------------
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SCHEDULE A
ASSIGNED PATENT RIGHTS
Engineered Particulates and Method of Use (USSN 09/219,736; PCT 98/20602)
Stabilized Preparations for Use in Nebulizers (USSN 09/218,213; PCT US 98/20603)
Stabilized Preparations for Use in Metered Dose Inhalers (USSN 09/218,212;
PCT US 98/20615)
Stabilized Bioactive Preparations and Methods of Use (USSN 09/218,209; PCT US
98/20613)
Particulate Delivery Systems and Methods of Use (PCT US 99/06855)
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SCHEDULE B
COMPETITORS OF INHALE
*
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