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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
AGREEMENT by and between XXXXXXX INSTRUMENTS, INC., a Delaware
corporation having a place of business at 0000 Xxxxxx Xxxxxxxxx, Xxxxxxxxx,
Xxxxxxxxxx 00000-0000 ("Xxxxxxx"), first party, BIOSEPRA INC., a Delaware
corporation, having a place of business at 000 Xxxxx Xxxxx, Xxxxxxxxxxx,
Xxxxxxxxxxxxx 00000 ("BioSepra"), second party, and SEPRACOR INC., a Delaware
corporation having a place of business at 000 Xxxxx Xxxxx, Xxxxxxxxxxx,
Xxxxxxxxxxxxx 00000 ("Sepracor"), third party.
RECITALS
--------
X. Xxxxxxx and BioSepra are parties to an agreement dated March 14, 1995
and amendments thereto dated December 31, 1995, March 26, 1996, May 14,
1996, March 31, 1997 and December 15, 1997 for the manufacture by
BioSepra and the purchase by Xxxxxxx of certain liquid chromatographic
systems for use in the purification and production of
biopharmaceuticals and chromatographic media and columns for use on
such systems (jointly the "Supply Agreement").
II. BioSepra desires to amend the Supply Agreement, (a) to relieve itself
of the duty to manufacture liquid chromatographic systems for Xxxxxxx,
(b) to transfer to Xxxxxxx the right to manufacture such liquid
chromatographic systems, and (c) to sell to Xxxxxxx BioSepra's
inventory of parts for such liquid chromatographic systems.
III. Sepracor owns approximately sixty-four percent (64%) of the outstanding
shares of BioSepra and recognizes that amendment of the Supply
Agreement as desired by BioSepra is in the best interest of BioSepra
and Sepracor.
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IV. Xxxxxxx and Sepracor are parties to an agreement dated March 14, 1995
under which Xxxxxxx acquired 312,500 shares of Sepracor's Series B
Redeemable Exchangeable Preferred Stock (the "Stock Purchase
Agreement").
X. Xxxxxxx desires to terminate the Stock Purchase Agreement and to have
the Series B Preferred Shares redeemed by Sepracor for the original
purchase price plus accrued dividends.
NOW THEREFORE in consideration of the foregoing premises, the mutual
covenants and understandings contained herein and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties, intending to be legally bound, agree as follows:
ARTICLE 1.0 AMENDMENTS TO THE SUPPLY AGREEMENT
----------------------------------------------
1.1 Delete Paragraphs 3.3, 3.4 and 3.5 in their entirety and substitute
therefor the following:
3.3 MANUFACTURE OF BIOSYS II AND PROSYS SYSTEMS - BioSepra
hereby grants to Xxxxxxx and Xxxxxxx accepts a
non-exclusive, world-wide right and license under (a)
all patents owned by BioSepra, (b) the BioSepra
Technology, and (c) all know-how and technology owned
by BioSepra relating to or useful in the manufacture
and quality control of the ProSys System (the "ProSys
Technology") to manufacture, have manufactured, use
and sell the BioSys II and ProSys Systems.
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
3.4 LICENSE UNDER SYSTEM SOFTWARE - BioSepra hereby
grants to Xxxxxxx and Xxxxxxx accepts a
non-exclusive, world-wide right and license under the
System Software and the ProSys Software (jointly the
"Software") and any patents and copyrights covering
such Software to copy, modify, enhance and make
derivative works and translations of the Software and
to make, have made, use and sell such Software and
the modified, enhanced or derivative renditions and
translations thereof.
3.5 ROYALTIES TO BIOSEPRA - The licenses of Sections 3.3
and 3.4 hereof are subject to the Royalties of
Section 7.4(b) and (c) for the BioSys II and System
Software and a royalty of *** for each ProSys System
sold with ProSys Software. Such royalties shall be
paid in accordance with Paragraph 7.7 of the Supply
Agreement.
3.6 TECHNOLOGY TRANSFER - BioSepra shall, not later than
_____ business days after the signing of this
Agreement transfer to Xxxxxxx in writing the BioSys
Technology, the ProSys Technology, the source code
and object code for the Software and other materials
necessary or helpful in effecting changes to the
Software source code and object code.
1.2 Paragraph 4.1, delete the last two lines.
1.3 Paragraph 4.2, delete the first sentence and substitute therefor the
following:
"Xxxxxxx shall until ******** provide service for the ProSys
Systems and ProSys Software."
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1.4 Paragraph 4.2, delete the third sentence in its entirety, which refers
to BioSepra's obligation to provide training.
1.5 Paragraphs 5.1, 5.2, and 5.3, delete in their entirety.
1.6 Paragraph 8.2(a), line 3 after "Technology" insert "and the ProSys
Technology".
1.7 Add the following as Paragraph 8.5:
"8.5 MANUFACTURE OF PROSYS SYSTEMS - Notwithstanding
anything in this Agreement to the contrary, it is
expressly understood and agreed that Xxxxxxx is not
obligated to manufacture BioSys II Systems or ProSys
Systems nor to accept purchase orders from BioSepra
or from any third party for the delivery of a
BioSys II or ProSys System."
1.8 In all other respects the Supply Agreement, as amended, shall remain
unchanged and in full force and effect.
ARTICLE 2.0 PURCHASE OF CHROMATOGRAPHIC SYSTEM INVENTORY
Xxxxxxx shall, within two (2) business days of the signing of this Agreement,
purchase BioSepra's inventory of ProSys and BioSys II Systems, parts and
components for the ProSys and BioSys II Systems. BioSepra agrees to and shall
sell and deliver such inventory to Xxxxxxx, ex-BioSepra stockroom in
Marlborough, Massachusetts, and shall package and ship such inventory at
Xxxxxxx'x written request. The purchase price shall be BioSepra's cost and will
not exceed Two Hundred Fifty Thousand Dollars ($250,000).
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Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
ARTICLE 3.0 PURCHASE OF SERIES B SHARES
---------------------------------------
Xxxxxxx agrees to and shall, concurrently with the signing of this Agreement,
sell and deliver to Sepracor and Sepracor agrees to and shall, purchase and take
from Xxxxxxx 312,500 shares of Series B Redeemable Exchangeable Preferred Stock
of Sepracor Inc. Xxxxxxx shall deliver the certificate evidencing its ownership
of such shares to Sepracor, upon the signing of this Agreement. Sepracor shall,
concurrently with the delivery of such shares, pay to Xxxxxxx, by wire transfer
of immediately available funds, the sum of Six Million Eight Hundred Fifty
Thousand Dollars ($6,850,000) by no later than March 27, 1998, and (b) in the
event *********************** as that term is defined ************************
at any time ******************** after the signing of this Agreement,
************* which ************************************ on the effective date
****************.
ARTICLE 4.0 MISCELLANEOUS
-------------------------
4.1 GOVERNING LAW - This Agreement shall be governed by and interpreted in
accordance with the laws of the State of Delaware.
4.2 ENTIRE AGREEMENT AND MODIFICATION - This Agreement constitutes the
entire agreement between the parties with respect to the subject matter
and supersedes all prior agreements between the parties, whether oral
or written, relating to the same subject matter. No modification,
amendments or supplements to, or approvals or consents under this
Agreement shall take effect for any purpose unless set forth in writing
and signed by an officer of the bound party.
4.3 COUNTERPARTS - This Agreement may be executed in three (3)
counterparts, each of which shall be deemed an original but all of such
counterparts together shall constitute but one and the same instrument.
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4.4 SPARE PARTS - BioSepra is relieved of its obligation to supply spare
parts to Xxxxxxx under the original agreement and subsequent
amendments.
IN WITNESS WHEREOF, the parties have signed this Agreement by their
duly authorized representatives effective this 26 day of March 1998.
Sepracor Inc. Xxxxxxx Instruments, Inc.
by /s/ Xxxxxxx X. Xxxxxxxxx by /s/ Xxxx X. Xxxxxxx
-------------------------- -------------------------
title President & CEO title President & C.O.O.
-------------------------- -------------------------
BioSepra Inc.
by /s/ Xxxx-Xxxxx Xxxxx
-------------------------
title President & CEO
-------------------------
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