LICENSE AGREEMENT
Exhibit 10.51
***Text Omitted and Filed Separately
Confidential Treatment Requested
Under 17 C.F.R. §§ 200.80(b)(4) and
240.24b-2(b)(1)
Confidential Treatment Requested
Under 17 C.F.R. §§ 200.80(b)(4) and
240.24b-2(b)(1)
LICENSE AGREEMENT dated December 30, 2005 by and between IDM Pharma, Inc., a Delaware
corporation (“IDM”), and Pharmexa, Inc., a Delaware corporation (hereinafter
“Pharmexa”) (each, a “Party” and, collectively, the “Parties”).
WITNESSETH:
WHEREAS, IDM and Pharmexa have entered into an Asset Purchase Agreement dated November 23,
2005 (the “Asset Purchase Agreement”);
WHEREAS, it is a condition precedent to the consummation of the transactions contemplated by
the Asset Purchase Agreement that the Parties enter into this Agreement;
WHEREAS, as a result of the transactions contemplated by the Asset Purchase Agreement,
Pharmexa is the owner of the entire right and title to EIS® and the Existing Library and related
Licensed Patents and Licensed Know-How (as such terms are defined below, and subject to certain
exclusions as defined herein); and
WHEREAS, IDM desires to obtain a license to EIS and the related Licensed Patents and Licensed
Know-How and the right to access and use the Existing Library, and Pharmexa is willing to grant
such license and right to IDM, subject to the terms and conditions hereinafter set forth;
NOW THEREFORE, in consideration of the mutual covenants and agreements contained herein, and
intending to be bound, and it being understood that the above recitals shall have the same value as
the stipulations that follow, the Parties hereby agree as follows:
ARTICLE 1. CERTAIN DEFINITIONS.
As used in this Agreement, each term listed below has the meaning which is given after it:
1.1 “Affiliate” means, with respect to each Party, any person, corporation or other
business entity that controls, is controlled by or is under common control with such Party, but for
only so long as such control exists. For the purpose of this definition, “control” means the
ability, directly or indirectly, to vote or direct the vote of fifty percent (50%) or more of the
outstanding voting stock of an entity (or other form of ownership interest with respect to an
entity that is not a corporation), or to otherwise direct or cause the direction of the management
and policies of an entity.
1.2 “Antigen” means any substance, including, without limitation, proteins, toxins,
viruses or bacteria, or portions of any thereof, that is capable of stimulating the production of
an immune response.
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1.3 “AutoVac™” means Pharmexa’s therapeutic vaccine technology for inducing a
controlled therapeutic immune response against self-Antigens that cause or are associated with
disease by introducing a modified Antigen consisting of a foreign Epitope inserted into such a
self-Antigen.
1.4 “Cancer Field” means the prevention or treatment of any disease caused or
characterized by an uncontrolled or abnormal cell division or growth within any part of the body,
irrespective of cause or origin.
1.5 “Confidential Information” of a Party means any confidential or proprietary
information (including any technology, know-how, Patent application, test result, research study,
business plan, budget, forecast or projection) relating directly or indirectly to the business of
such Party or any Affiliate, predecessor or successor of such Party (whether prepared by such Party
or by any other person and whether or not in written form) that is or has been made available to
the other Party or any of its Affiliates or representatives, including but not limited to
information related to EIS and the Existing Library.
1.6 “Effective Date” means the date of this Agreement first written above.
1.7 “EIS®” or “Epitope Identification System” means proprietary
methods of using sequence information derived from an Antigen to identify and/or characterize
Antigen-specific Epitopes, to design vaccines, to identify Epitope analogues, to identify optimal
Epitope variants, and to design Epitope minigene constructs, which methods are claimed or disclosed
in the Existing Patents as of the Effective Date.
1.8 “Epitope” means a molecular region of an Antigen, which is involved in recognition
by a particular immunoglobulin, or in the context of T cells, by a T cell receptor and/or Major
Histocompatibility Complex (MHC) receptor.
1.9 “Existing Library” means the database comprising the library of Epitopes existing
as of the Effective Date, which Epitopes are claimed or disclosed in the Existing Patents as of the
Effective Date.
1.10 “Existing Patents” means all Patents acquired by Pharmexa pursuant to the Asset
Purchase Agreement pertaining to EIS, as listed on Schedule A, and any abandoned parent
applications of any Patents listed therein.
1.11 [. . . *** . . .]” means the [. . . *** . . .] of the Effective Date.
1.12 “IDM Reserved Rights” has the meaning set forth in Section 2.1(a).
1.13 “Infringement Notice” has the meaning set forth in Section 4.3(a).
1.14 “Indemnitee” means a Person entitled to indemnification pursuant to Article 7.
1.15 “Indemnitor” means a Party required to indemnify a Person pursuant to
Article 7.
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1.16 “Invention” has the meaning set forth in Section 4.4.
1.17 “Licensed Know-How” mean all methods, procedures, trade secrets, formulas,
techniques, assays, protocols, procedures, processes, systems, specifications, xxxx, xxxxxxxx
information, algorithms, computer models, results of clinical trials and technical data owned or
controlled by Pharmexa as of the Effective Date or during the term of this Agreement, including any
Inventions, which are not included in the Licensed Patents, but which are necessary or useful for
the commercial exploitation of the Licensed Patents and which are not generally publicly known,
including, without limitation, any such methods, procedures, trade secrets, formulas, techniques,
assays, protocols, procedures, processes, systems, specifications, xxxx, xxxxxxxx information,
algorithms, computer models, results of clinical trials and technical data assigned to Pharmexa by
IDM under the Asset Purchase Agreement that are necessary or useful for the commercial exploitation
of the Licensed Patents.
1.18 “Licensed Patents” mean (i) all Existing Patents, and (ii) all Patents owned or
controlled by Pharmexa that claim or disclose any Invention conceived or reduced to practice by any
employee or contractor of Pharmexa.
1.19 “Patents” means all U.S. patents and patent applications, including, without
limitation, certificates of invention and applications for certifications of invention, registered
designs and registered design applications, industrial designs and industrial design applications
and registrations, reissues, reexaminations, extensions, substitutions, confirmations,
registrations, revalidations, renewals, term restorations, additions, provisionals, continuations,
continuations-in-part, divisions, continued prosecution applications, and requests for continued
examination thereof, and any foreign equivalents of any of the foregoing.
1.20 “Person” means any individual, corporation, partnership, limited liability
company, private or public institution, group, tribunal, government authority or other entity.
1.21 “Pharmexa Field” means the prevention or treatment of any and all indications,
including, but not limited to, infectious diseases, inflammatory diseases, autoimmunity, neurologic
disorders and metabolic disorders, but excluding the Cancer Field.
1.22 “Product” means any product that incorporates or uses all or any part of an
Epitope identified using the Licensed Patents or the Licensed Know-How or present in the Existing
Library.
1.23 “Specific Product” means any Product formulated as (i) an AutoVacä
recombinant protein or DNA vaccine (as opposed to peptide Epitopes) or (ii) a peptide product
against one of the following targets (or combinations thereof): [. . . *** . . .]
1.24 “Third Party” means any Person other than IDM, Pharmexa, or their respective
Affiliates.
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ARTICLE 2. LICENSE GRANTS.
2.1 Grant of Licenses.
(a) Pharmexa hereby grants to IDM (i) an exclusive (including as to Pharmexa), perpetual,
royalty-free, fully paid up, worldwide license, with the right to grant sublicenses, under the
Licensed Patents and the Licensed Know-How to use all specific Epitopes in the Existing Library
which are contained in Products as to which IDM has granted exclusive rights to Third Parties prior
to the Effective Date to the extent of the field(s) in which such rights were granted or to which
IDM grants exclusive rights to Third Parties at any time on or after the Effective Date and prior
to the [. . . *** . . .] to research, develop, make, have made, use, import, export, sell, offer
for sale, promote, market, distribute, commercialize, and have sold, distributed and commercialized
Products (other than Specific Products) in the fields within the Cancer Field in which such rights
were granted, (ii) a non-exclusive, perpetual, royalty-free, fully paid up, worldwide license, with
the right to grant sublicenses, under the Licensed Patents and the Licensed Know-How to use all
specific Epitopes in the Existing Library which are contained in Products as to which IDM has
granted non-exclusive rights to Third Parties prior to the Effective Date to the extent of the
field in which such rights were granted or to which IDM grants non-exclusive rights to Third
Parties at any time on or after the Effective Date and prior to the [. . . *** . . .] to research,
develop, make, have made, use, import, export, sell, offer for sale, promote, market, distribute,
commercialize, and have sold, distributed and commercialized Products (other than Specific
Products) in the fields within the Cancer Field in which such rights were granted and (iii) an
exclusive (including as to Pharmexa), perpetual, royalty-free, fully paid up, worldwide license,
with the right to grant sublicenses, under the Licensed Patents and the Licensed Know-How to use
each of the specific Epitopes in the Existing Library listed on Schedule B-1, individually
and in combination, to research, develop, make, have made, use, import, export, sell, offer for
sale, promote, market, distribute, commercialize, and have sold, distributed and commercialized
Products, excluding Specific Products, in the Cancer Field (collectively, the “IDM Reserved
Rights”). Schedule B-2 sets forth for each Epitope in the Existing Library for which
IDM has granted rights to a Third Party: (i) the identity of the Third Party; (ii) the specific
Epitope for which rights were granted; (iii) whether the rights granted to the Third Party are
exclusive or non-exclusive and (iv) the field in which the Third Party may utilize the Epitope.
With regard to each new final agreement with Third Parties for Epitopes in the Existing Library
which IDM enters into after the Effective Date, IDM will provide Pharmexa with prompt written
notice of the specific Epitopes subject to the IDM Reserved Rights setting forth the type of
information required in Schedule B-2. IDM will exercise the foregoing right to grant
rights to Third Parties on or after the Effective Date and prior to the [. . . *** . . .] only in
the ordinary course of IDM’s business consistent with IDM’s past custom and practice and, in any
event, only as a grant of rights to access and use specific Epitopes in the Existing Library. IDM
will require that any Third Party to which IDM grants rights in any specific Epitopes in the
Existing Library on or after the Effective Date and before the [. . . *** . . .] acknowledge in
writing that Pharmexa is the owner of such Epitopes and that such Third Party will not bring any
legal action against Pharmexa arising solely from Pharmexa’s ownership of such Epitopes.
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(b) Pharmexa hereby grants to IDM a non-exclusive, perpetual, royalty-free, fully paid up,
worldwide license, with no right to grant sublicenses, under the Licensed Patents and the Licensed
Know-How to identify Epitopes using EIS and, subject to the IDM Reserved Rights, to use Epitopes in
the Existing Library for research in the Cancer Field, excluding Specific Products.
(c) Pharmexa hereby grants to IDM a perpetual, royalty-free, fully paid up, worldwide license,
with the right to grant sublicenses (which sublicenses shall permit the further grant of
sublicenses), under the Licensed Patents and the Licensed Know-How to use all Epitopes identified
by or for IDM using EIS or contained in the Existing Library to research, develop, make, have made,
use, import, export, sell, offer for sale, promote, market, distribute, commercialize, and have
sold, distributed and commercialized Products, excluding Specific Products, in the Cancer Field,
which license shall be exclusive (including as to Pharmexa) from the Effective Date until the [. .
. *** . . .] and shall be non-exclusive from and after the [. . . *** . . .], in each case subject
to the IDM Reserved Rights. For the purpose of clarification, (i) the foregoing grant shall not
prevent Pharmexa from conducting any activity with respect to Specific Products at any time and
(ii) commencing on the [. . . *** . . .], all restrictions on Pharmexa with respect to the Cancer
Field under this Section 2.1(c) shall terminate.
2.2. Rights Retained by Pharmexa. Notwithstanding anything to the contrary herein,
Pharmexa retains all rights under the Licensed Patents and Licensed Know-How not explicitly granted
to IDM under Section 2.1, and all rights under Licensed Patents and Licensed Know-How with respect
to any Epitopes in the Existing Library and any Products using such Epitopes granted to
Innogenetics NV dated July 9, 2001, as amended. Prior to the [. . . *** . . .], Pharmexa shall not
grant any Third Party any right, title or interest in the Existing Library, any of the Epitopes
contained in the Existing Library or any of the Licensed Patents, that would conflict with the
rights granted to IDM under Section 2.1.
2.3 Reasonable Access. Pharmexa will provide IDM with reasonable access to
appropriate personnel of Pharmexa via telephone, facsimile or electronic mail during Pharmexa’s
regular business hours in order to discuss questions relating to the use of EIS, not to exceed a
total of [. . . *** . . .] per month.
2.4 Duplicate Copies. IDM shall be entitled to retain a duplicate copy of any written
materials describing or containing Licensed Know-How in existence as of the Effective Date and a
duplicate copy of the database in existence as of the Effective Date containing the Existing
Library and may update such database to include information regarding Epitopes identified using EIS
pursuant to the licenses granted under Section 2.1, in each case for purposes of practicing the
licenses granted under Section 2.1.
ARTICLE 3. CONSIDERATION FOR LICENSE.
3.1 Consideration. Pharmexa acknowledges and agrees that the sole consideration
for the grant of the licenses pursuant to Section 2.1 is the consummation by IDM of the
transactions contemplated by the Asset Purchase Agreement. No other license fees, milestones,
royalties or
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other consideration shall be paid or given to Pharmexa by IDM for the rights granted under this
Agreement.
ARTICLE 4. PATENTS.
4.1 No Assignment. The grant of the licenses pursuant to Section 2.1 shall
not constitute an assignment of the Licensed Patents or the Licensed Know-How, nor a grant to IDM
of any ownership right or title therein or any other right, other than use of EIS and the Existing
Library and practice of the Licensed Patents and Licensed Know-How in accordance with the terms of
this Agreement. Nothing contained in this Agreement shall be construed as conferring upon IDM by
implication, estoppel or otherwise any license or other rights under any Patent or unpatented
technology belonging to Pharmexa, except rights expressly granted hereunder to IDM.
4.2 Patent Filing, Prosecution and Maintenance.
(a) Pharmexa shall be responsible for the preparation, filing, prosecution, defense and
maintenance of the Licensed Patents. Pharmexa shall provide to IDM copies of all documents
relating to such filing, prosecution, defense and maintenance in sufficient time to permit IDM to
review such documents and comment thereon prior to filing. Pharmexa will incorporate all reasonable
written suggestions provided by IDM to Pharmexa with respect to the content and strategies for
filing, prosecution, defense and maintenance of the Licensed Patents.
(b) IDM will reimburse Pharmexa for [. . . *** . . .] of all reasonable and customary
documented out-of-pocket costs, other than late filing fees, incurred and paid by Pharmexa in
connection with the prosecution and maintenance of the Licensed Patents. Such costs shall be paid
by IDM on a [. . . *** . . .] after it receives a written request for payment from Pharmexa
accompanied by reasonable documentary evidence confirming the expense incurred and paid by Pharmexa
during the [. . . *** . . .]. Notwithstanding the foregoing, IDM shall not be under any obligation
to reimburse Pharmexa for costs incurred and paid by Pharmexa related to any Patents that pertain
to Epitopes identified by Pharmexa after the Effective Date or that claim or disclose Inventions
conceived or reduced to practice by employees or contractors of Pharmexa. IDM may terminate its
rights under this Agreement with respect to any specific Licensed Patent by giving written notice
thereof to Pharmexa, in which case, such Patent shall cease to be a Licensed Patent and IDM will
not be responsible under this Section 4.2 for any costs associated with such Patent incurred
following the date of notice of such termination by IDM to Pharmexa.
(c) Pharmexa shall not allow a Patent included in the Licensed Patents to lapse without
providing prior written notice to IDM. In the event that Pharmexa decides to abandon or
discontinue the prosecution or maintenance of any of the Licensed Patents, IDM shall have the right
to undertake such prosecution or maintenance in its own name at its expense through counsel of its
own choosing. If IDM exercise such right, (i) Pharmexa shall provide such cooperation as IDM may
request, at IDM’s expense, including but not limited to delivering to IDM all records pertaining to
such Patent executing any and all documents as may be needed to assign such Licensed Patent to IDM,
without additional consideration being payable by IDM
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for such assignment other than actual costs associated with such transfer, and (ii) upon
assignment, such Patent shall cease to be a Licensed Patent.
4.3 Infringement Actions.
(a) In the event that a Party becomes aware of actual or threatened material infringement by a
Third Party of any of the Licensed Patents anywhere in the world, such Party shall (i) promptly
notify the other Party in writing of the occurrence such infringement and (ii) provide the other
Party with the full details of any such infringement to the best of its knowledge (the
“Infringement Notice”).
(b) If any actual or threatened infringement by a Third Party of any of the Licensed Patents
anywhere in the world involves the research, manufacture, sale, distribution or commercialization
of products solely within the scope of the IDM Reserved Rights in Section 2.1(a)(i), IDM shall have
the exclusive right to commence a lawsuit to enjoin the infringing activity or take such other
action against the Third Party as it determines is appropriate, at IDM’s expense. Pharmexa will
cooperate in such action and will have the right to participate in such action at its own expense
through counsel of its own choosing. In such case, the entire amount, if any, recovered in such an
action against a Third Party , whether by judgment, award, decree or settlement, shall be applied
as follows: (i) first, to reimburse IDM for its legal fees and other litigation expenses incurred
in connection with the prosecution of such action; (ii) second, to reimburse Pharmexa for its legal
fees and other litigation expenses incurred in connection with the prosecution of such action; and
(iii) the balance shall go to IDM.
(c) With regard to any actual or threatened infringement by a Third Party of any of the
Licensed Patents anywhere in the world, other than as described in Section 4.3(b), Pharmexa
shall have the first right to commence a lawsuit to enjoin the infringing activity or take such
other action against the Third Party as it determines is appropriate, at Pharmexa’s expense,
through counsel of its own choosing reasonably acceptable to IDM. If Pharmexa elects not to
undertake any such action or fails to do so within [. . . *** . . .] after receipt or delivery, as
applicable, of an Infringement Notice from IDM, then IDM will have the right to commence a lawsuit
or take other action against the Third Party at its expense and through counsel of its own choosing
reasonably acceptable to Pharmexa. Regardless of which Party initiates legal action against the
infringing Third Party, the non-initiating Party will cooperate in such action and will have the
right to participate through counsel of its own choosing at such non-initiating Party’s expense.
The Party initiating the legal action will control all elements of the prosecution of the legal
action, including all decisions to enter into settlements, judgments or other arrangements;
provided, however, that no settlement that affects the rights of the non-initiating Party may be
entered into without that Party’s consent. The amount, if any, recovered in any such action
against a Third Party , whether by judgment, award, decree or settlement, shall be applied as
follows: (i) first, to reimburse the Party conducting the prosecution of the infringement action
for its legal fees and other litigation expenses incurred in connection with the prosecution of
such action; (ii) second, to reimburse the other Party for its legal fees and other litigation
expenses incurred in connection with the prosecution of such action; and (iii) the balance shall go
to the Party that initiated the action.
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4.4 Inventions. Each Party shall promptly notify the other Party in writing of
any and all discoveries, inventions or improvements relating to EIS conceived or reduced to
practice by any employee or contractor of such Party during the term of this Agreement
(“Inventions”). Inventorship of Inventions shall be determined in accordance with the
rules of inventorship under United States patent laws. All right, title and interest to any
Inventions will be solely owned by the inventing Party, and the inventing Party shall have the
first right to file, prosecute and maintain Patents on such Inventions at its expense through
counsel of its own choosing, provided, however, that with respect to Inventions by
IDM and any Patents obtained thereon, IDM shall grant to Pharmexa a non-exclusive, perpetual,
royalty-free, fully paid up, worldwide license, with the right to grant sublicenses, to use such
Inventions to identify Epitopes. If the inventing Party does not take steps to prepare and file a
patent application within [. . . *** . . .] after disclosing such Invention to the other Party, or
if it files an application but subsequently elects to abandon such application, the other Party
shall have the option to undertake such filing and/or prosecution and the inventing Party shall
provide such cooperation as the other Party may request, at the other Party’s expense, including
but not limited to delivering to the other Party all records reasonably necessary for the filing
and prosecution of the patent application claiming or disclosing such Invention and executing any
and all documents as may be needed to assign such Invention and patent application to the other
Party, without additional consideration being payable for such assignment. For the purpose of
clarification, Epitopes identified by either Party after the Effective Date shall not be considered
to be Inventions.
4.5 Infringement of Third Party Rights. If the sale of any Product by a Party is
determined or alleged to infringe, or if a Party receives notice of or is sued for infringement of,
a Patent owned or licensed by a Third Party, the Parties shall meet to discuss what action should
be taken if such infringement claim is based on the use of EIS or any Epitope contained in the
Existing Library in the development, manufacture, sale or use of the Product. Each Party shall
have the first right in its sole discretion to control at its own expense the defense of all
charges of infringement by any Third Party arising as a result of its development, manufacture,
use, sale or commercialization of its Products. The other Party shall have the right to be
represented by counsel of its own selection, at its own expense, in any such action that may impact
its rights to EIS or any Epitope contained in the Existing Library, and shall cooperate fully in
the defense of such suit, including furnishing to the other Party all relevant evidence and
assistance in its control. The Party controlling the defense of any such infringement action may
not settle the action or otherwise consent to an adverse judgment in such action if such settlement
or judgment would diminish the rights or interest of the other Party without the prior written
consent of the other Party, which consent shall not be unreasonably withheld or delayed.
ARTICLE 5. CONFIDENTIALITY.
5.1 Confidentiality. The Parties acknowledge that in connection with the
licenses and rights granted under this Agreement, the Parties may exchange Confidential
Information. At all times during the term of this Agreement and for a period of [. . . *** . . .]
thereafter, each Party shall keep the other Party’s Confidential Information secret and
confidential and not use the other Party’s Confidential Information for any purpose other than the
exercise of the rights granted under this Agreement. Notwithstanding the foregoing, each Party may
disclose Confidential Information to its employees, agents, consultants and sublicensees in
connection
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with its exercise of its rights under this Agreement, provided that the recipient Party must
obtain the prior written agreement of all such employees, agents, consultants and sublicensees to
whom it may disclose the other Party’s Confidential Information not to use or disclose such
Confidential Information for any purpose other than those purposes permitted by this Agreement.
Each Party agrees that it will take the same measures to protect the confidentiality of the other
Party’s Confidential Information which it takes with respect to its own confidential and
proprietary information, but not less than reasonable care. Each Party will promptly notify the
other upon discovery of any unauthorized use or disclosure of Confidential Information.
5.2 Exceptions. The obligations of a Party receiving Confidential Information from
the other Party shall not apply to any information to the extent it can be established by the
receiving Party by competent written proof that such information (a) was in the public domain as of
the Effective Date; (b) becomes part of the public domain subsequent to the Effective Date by
publication or otherwise, except by breach of Section 5.1 by the receiving Party or its employees,
agents, consultants or sublicensees; (c) is received by the receiving Party from a Third Party that
has the legal right to disclose such information without restriction; or (d) was independently
developed by employees of the receiving Party that did not have access to or knowledge of the
information disclosed by the disclosing Party. In addition, each Party may disclose Confidential
Information belonging to the other Party to the extent such disclosure is reasonably necessary in
the following circumstances: (i) filing or prosecuting Patents as permitted by this Agreement;
(ii) regulatory filings for Products such Party has a license or right to develop hereunder; or
(iii) disclosure to Affiliates or to Third Parties in connection with due diligence or similar
investigations by such Third Parties, and disclosure to potential Third Party investors in
confidential financing documents; provided, in each case, that any such Affiliate or Third Party is
subject to obligations of confidentiality and non-use comparable in scope to those set forth in
this Article 5.
5.3 Disclosure Required by Law. In the event a Party is required to disclose
Confidential Information of the other Party pursuant to a valid and effective subpoena or order
issued by a court of competent jurisdiction or other legal process or by law, rule or regulation,
the receiving Party will (i) immediately notify the disclosing Party that it is subject to such
legally required disclosure, (ii) consult with the disclosing Party on the advisability of taking
legally available steps to resist or narrow such compelled disclosure, (iii) reasonably assist the
disclosing Party, at the disclosing Party’s request and expense, in such disclosing Party’s efforts
to obtain an appropriate protective order or other reliable assurance that confidential treatment
will be accorded to the Confidential Information, to the extent such assistance is commercially
reasonable, and (iv) limit disclosure to only the Confidential Information the receiving Party’s
legal counsel advises must be disclosed in order to comply with the legal requirement.
5.4 Return of Confidential Information. Upon the termination of this Agreement, each
Party will return or destroy all tangible copies of any Confidential Information provided to it by
the other Party, provided, that each Party may retain one (1) copy of the Confidential Information
for use solely for the purpose of determining and monitoring their respective rights and
obligations under this Agreement.
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5.5 Injunctive Relief. Each Party acknowledges and agrees that the other Party’s
Confidential Information constitutes unique and valuable trade secrets and that the unauthorized
disclosure or use of the Confidential Information would result in irreparable harm to the other
Party for which monetary damages would be inadequate. Accordingly, the Parties agree that in the
event of any breach or threatened breach of Section 5.1, the non-breaching Party will be entitled
to obtain injunctive or other equitable relief in addition to all other remedies available to it,
and the breaching Party will not claim as a defense thereto that the non-breaching Party has an
adequate remedy at law. In any such action for injunctive or equitable relief the non-breaching
Party shall not be required to post a bond or other security.
5.6 Disclosure of Agreement. Except as required by law or regulation, including,
without limitation, requirements of the Securities and Exchange Commission or any exchange or
market upon which the securities of a Party are then traded or listed, neither Party shall release
to any Third Party or publish in any way any non-public information relating to this Agreement
without the prior written consent of the other Party, which consent shall not be unreasonably
withheld. In the event a disclosure is required pursuant to this Section 5.6, the disclosing Party
will give reasonable advance notice to the other Party of such disclosure, will consult with the
other Party as to the provisions of the Agreement to be redacted in any filings, and will use
reasonable efforts to secure confidential information of such information.
5.7 Scientific Publications. During the term of this Agreement, each Party shall be
entitled to make scientific publications and presentations concerning its work involving EIS and
the use of Epitopes in the Existing Library or any Inventions. To the extent any such publication
or presentation includes information regarding EIS, Epitopes in the Existing Library or Inventions
of the other Party that is not in the public domain, the Party desiring to make such publication or
presentation (including without limitation any electronic publication or dissemination) will
provide the other Party with the opportunity to review a copy of the proposed publication or
presentation, including any proposed manuscripts or abstracts, at least thirty (30) days prior to
its intended submission to any scientific publisher and shall not submit any such manuscript or
abstract without the written authorization of the reviewing Party, such authorization not to be
unreasonably withheld or delayed. All such materials submitted to a Party for review and approval
shall be considered to be Confidential Information.
ARTICLE 6. REPRESENTATIONS AND WARRANTIES.
6.1 General Representations. Each Party hereby represents and warrants to the other
as follows:
(a) Authority. It is an entity duly organized, validly existing and in good standing
under the laws of the jurisdiction of its incorporation, is qualified to do business and is in good
standing as a foreign corporation in each jurisdiction in which the conduct of its business or the
ownership of its properties requires such qualification, except where the failure to do so would
not have a material adverse effect on the financial condition, business, prospects or operations of
such Party, and has all requisite power and authority to execute, deliver and perform this
Agreement.
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(b) Due
Execution. The execution, delivery and performance by it of this Agreement
has been duly authorized by all necessary corporate action and do not and will not (i) require any
consent or approval of its stockholders, (ii) violate any provision of any law, rule, regulation,
order, writ, judgment, injunction, decree, determination or award presently in effect having
applicability to it or any provision of its charter or by-laws, or (iii) result in a breach of or
constitute a default under any agreement, mortgage, lease, license, permit, Patent or other
instrument or obligation to which it is a party.
(c) No Third Party Approval. No authorization, consent, approval, license, exemption
of, or filing or registration with, any court or governmental authority or regulatory body is
required for the due execution, delivery or performance by it of this Agreement.
(d) Binding Agreement. This Agreement is a legal, valid and binding obligation of
such Party, enforceable against it in accordance with its terms. Such Party is not under any
obligation to any person, corporation or other entity, contractual or otherwise, that is
conflicting, or inconsistent in any respect, with the terms of this Agreement or that would impede
the diligent and complete fulfillment of its obligations hereunder.
6.2 Disclaimers. Nothing in this Agreement shall be construed as:
(a) Conferring rights to either Party to use in advertising, publicity or otherwise the name
of the other Party, except as provided in the Asset Purchase Agreement or as otherwise required by
law; or
(b) ANY REPRESENTATION OR WARRANTY BY EITHER PARTY, EXPRESS OR IMPLIED, OTHER THAN THOSE
SPECIFICALLY SET FORTH HEREIN, INCLUDING BUT NOT LIMITED TO REPRESENTATIONS OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 7. INDEMNIFICATION.
7.1 Indemnification.
(a) Pharmexa shall indemnify, defend and hold IDM, its Affiliates and their respective
officers, directors, stockholders, employees and agents (each, an “IDM Indemnitee”)
harmless from and against any and all liability, loss, damage, cost or expense, including, without
limitation, reasonable attorneys’ fees (collectively, “Losses”) incurred by such IDM
Indemnitee as a result of any Third Party claim, action, suit, claim or proceeding attributable to
or arising from (i) any breach by Pharmexa of any of its representations, warranties or covenants
set forth in this Agreement; (ii) Pharmexa’s or its Affiliates’ or sublicensees’ development,
manufacture, use, sale, promotion, marketing, distribution, or commercialization of Products; or
(iii) gross negligence or willful misconduct on the part of Pharmexa in performing under this
Agreement, except to the extent that such Losses are attributable to the breach by IDM of any of
its representations, warranties or covenants set forth in this Agreement or the willful misconduct
or gross negligence of an IDM Indemnitee.
11
(b) IDM shall indemnify, defend and hold Pharmexa, its Affiliates and their respective
officers, directors, stockholders, employees and agents (each, a “Pharmexa Indemnitee”)
harmless from and against any and all Losses incurred by such Pharmexa Indemnitee as a result of
any Third Party claim, action, suit, claim or proceeding attributable to or arising from (i) any
breach by IDM of any of its representations, warranties or covenants set forth in this Agreement;
(ii) IDM’s or its Affiliates’ or sublicensees’ development, manufacture, use, sale, promotion,
marketing, distribution, or commercialization of Products pursuant to any licensed granted to IDM
under Section 2.1; (iii) gross negligence or willful misconduct on the part of IDM in
performing under this Agreement, except to the extent that such Losses are attributable to the
breach by Pharmexa of any of its representations, warranties or covenants set forth in this
Agreement or the willful misconduct or gross negligence of a Pharmexa Indemnitee.
7.3 Certain Procedures Regarding Indemnification. All claims for indemnification
under this Agreement shall be made as follows:
(a) In the event a claim is made against an Indemnitee for which the Indemnitee would be
entitled to indemnification hereunder (a “Claim”), the Indemnitee shall notify the
Indemnitor of such Claim, specifying the nature and the amount of the Claim (the “Claim
Notice”). The Claim Notice must be delivered within [. . . *** . . .] after the Indemnitee
becomes aware of the Claim, provided that the failure of the Indemnitee to comply with such
requirement shall not relieve the Indemnitor of its obligations hereunder unless the Indemnitor is
materially prejudiced in the defense of the Claim due to such failure on the part of the
Indemnitee. The Indemnitor shall have the right to undertake and control the defense of any Claim
at its expense through counsel of its own choosing (subject to the Indemnitee’s consent to such
counsel, which consent may not be unreasonably withheld or delayed). If the Indemnitor undertakes
the defense of a Claim: (i) the Indemnitor shall not permit to exist any lien, encumbrance or
other adverse charge upon any asset of the Indemnitee; (ii) the Indemnitor may not settle such
action without first obtaining the written consent of the Indemnitee, which consent will not be
unreasonably withheld or delayed, except for settlements solely covering monetary matters for which
the Indemnitor acknowledges responsibility for payment; and (iii) the Indemnitor shall permit the
Indemnitee (at the Indemnitee’s sole cost and expense) to participate in such settlement or defense
through counsel chosen by the Indemnitee.
(b) The Indemnitee agrees to preserve and provide access to all evidence in its possession or
control that may be useful in defending against a Claim and to provide reasonable cooperation in
the defense thereof or in the prosecution of any action against a Third Party in connection
therewith at the Indemnitor’s expense. The Indemnitor’s defense of any Claim or demand shall not
constitute an admission or concession of liability therefor or otherwise operate in derogation of
any rights the Indemnitor may have against the Indemnitee or any third party. So long as the
Indemnitor is reasonably contesting any such Claim in good faith, the Indemnitee shall not pay or
settle any such Claim.
(c) If the Indemnitor elects not to undertake the defense of the Claim, the Indemnitee shall
have the right to assume the defense of the Claim through counsel of its own choosing and contest,
settle or compromise the Claim in the exercise of its exclusive discretion at the expense of the
Indemnitor. All reasonable expenses incurred by the Indemnitee pursuant to
| * | Confidential
Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
12
this Section 7.3(c) shall be reimbursed by the Indemnitor within [. . . *** . . .] of receipt
of competent written evidence of such expenses.
7.4 Limitation on Liability. Notwithstanding anything to the contrary set forth
herein, in no event shall either Party hereto have any liability for consequential, incidental,
special or punitive damages incurred by an Indemnitee; provided that amounts paid by an Indemnitee
to a Third Party pursuant to an arbitration or court award, including the foregoing types of
damages that are paid by the Indemnitee, shall be considered direct damages of the Indemnitee for
which it will be entitled to indemnification from the Indemnitor pursuant to this Article
7; provided further that this Section 7.4 shall not restrict or limit a Party’s liability for
breach of Section 5.1.
7.5 Resolution of Disputed Indemnification Claim.
If the Indemnitor gives the Indemnitee written notice contesting all or any portion of a Claim (a
“Contested Claim”), then such Contested Claim shall be resolved by either (i) a written
settlement agreement or memorandum executed by the Indemnitee and the Indemnitor or (ii) in the
absence of such a written settlement agreement within [. . . *** . . .] following receipt by the
Indemnitee of the Contested Claim from the Indemnitor, by binding arbitration between the
Indemnitee and the Indemnitor in accordance with the terms and provisions of Article 9.
ARTICLE 8. TERM AND TERMINATION.
8.1 Term. This Agreement shall become effective on the Effective Date and shall
remain in full force and effect in perpetuity unless terminated pursuant to Section 8.2.
8.2 Termination. IDM may terminate this Agreement [. . . *** . . .] written notice
to Pharmexa.
8.3 Effect of Termination. Upon the termination of this Agreement pursuant to
Section 8.2, all rights to Licensed Patents and Licensed Know-How granted to IDM shall
revert to Pharmexa. Any sublicenses granted hereunder by IDM shall remain in full force and
effect, but shall be assigned to Pharmexa. The termination of this Agreement shall not relieve the
Parties of any obligation accruing prior to such termination.
8.4 Remedy Not Exclusive. Termination of this Agreement for breach of any of its
provisions shall be without prejudice to any other rights or remedies the non-breaching Party may
have hereunder, whether or not such rights or remedies arise from such breach.
ARTICLE 9. DISPUTE RESOLUTION.
9.1 Arbitration.
(a) In the event any dispute, claim, question or difference between the Parties (a
“Dispute”) arises with respect to this Agreement or its performance, enforcement, breach,
termination or validity, other than Patent issues or the interpretation, application, termination
or validity thereof, the Parties shall use all commercially reasonable efforts to settle the
Dispute.
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
13
To this end, they shall consult and negotiate with each other, in good faith and understanding of
their mutual interests, to reach a just and equitable solution satisfactory to all Parties. If the
Parties do not reach a solution to the Dispute within a period of [. . . *** . . .] following the
first written notice of the Dispute by any Party to the other, then upon written notice by any
Party to the other, the Dispute may be submitted to arbitration in accordance with the rules of the
American Arbitration Association then in effect based upon the following:
(i) the arbitration tribunal shall consist of [. . . *** . . .] appointed by mutual agreement
of the Parties;
(ii) the arbitration award shall be given in writing and shall be final and binding on the
Parties, and shall deal with the question of costs of arbitration and all related matters;
(iii) judgment upon any award may be entered in any court having jurisdiction or application
may be made to the court for a judicial recognition of the award or an order of enforcement, as the
case may be;
(iv) the arbitrator shall decide any dispute in accordance with the law governing this
Agreement, including equity, and may order specific performance, injunctions and other equitable
remedies; and
(v) the arbitration will be held in San Diego, California.
(b) Notwithstanding the commencement of arbitration under this Section 9.1, at any time either
Party may proceed directly to a court of competent jurisdiction for any available injunctive or
other equitable remedy to avoid irreparable harm, maintain the status quo or preserve the subject
matter of an arbitration. The Parties agree that irreparable damage may occur and that the Parties
may not have any adequate remedy at law in the event that any of the provisions of this Agreement
were not performed in accordance with their specific terms or were otherwise breached. It is
accordingly agreed that the Parties shall be entitled to an injunction or injunctions to prevent
breaches of this Agreement and to enforce specifically the terms and provisions of this Agreement
in any federal or state court located in the State of New York, this being in addition to any other
remedy to which they are entitled at law or in equity.
(c) If any legal action, arbitration or other proceeding is brought for the enforcement of
this Agreement, or because of any alleged dispute, breach, default or misrepresentation in
connection with any of the provisions of this Agreement, the successful or prevailing Party shall
be entitled to recover reasonable attorneys’ fees and other costs incurred therein, in addition to
any other relief to which it or they may be entitled. The court or arbitrator shall consider, in
determining the prevailing Party, (x) which Party obtains relief which most nearly reflects the
remedy or relief which the Parties sought, and (y) any settlement offers made prior to commencement
of the trial in the proceeding. For any legal proceeding instituted hereunder, the parties consent
to the exclusive venue of the state and federal courts located in San Diego, California.
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
14
ARTICLE 10. MISCELLANEOUS.
10.1 Survival. The following Sections of this Agreement shall survive the termination
of this Agreement: 5.1-5.6, 6.2, 7.1-7.5, 8.3-8.4, 9.1, 10.1, 10.4, 10.7 and 10.11.
10.2 Force Majeure. If either Party is prevented from performing any obligation
hereunder by reason of fire, explosion, strike, labor dispute, casualty, accident, lack or failure
of transportation facilities, epidemic, flood, earthquake, war, civil commotion, acts of terrorism,
acts of God, any law, order or decree of any government or subdivision thereof or any other cause
beyond the control of such Party, then such Party shall be excused from performance hereunder to
the extent and for the duration of such prevention, provided it first notifies the other Party in
writing of such prevention and resumes performance as soon as the condition is relieved.
10.3 Entire Agreement. This Agreement, together with the Asset Purchase Agreement and
the other Transaction Agreements (as such term is defined in the Asset Purchase Agreement),
constitute the entire agreement between the Parties concerning the subject matter hereof and may
not be modified or amended except in writing signed by both Parties. All agreements or arrangements
between the Parties executed prior to the date hereof, whether written or oral, relating to the
subject matter hereof are hereby cancelled and superseded.
10.4 Assignment. This Agreement shall be binding upon and inure to the benefit of
Parties hereto and their respective successors and permitted assigns. Neither Party may assign its
rights and obligations in and under this Agreement without the prior written approval of the other
Party, such approval not to be unreasonably withheld; provided however, that (i) a
Party may assign this Agreement to any of its Affiliates and (ii) a Party may assign this Agreement
to any person or entity that acquires such Party or the business of the Party to which this
Agreement pertains, whether by purchase of all or substantially all of its assets, purchase of
equity, merger or otherwise. Any such assignee must agree in writing to the assumption of the
assignor’s obligations under this Agreement.
10.5 Waivers. No waiver of any breach or default hereunder by either Party or any
failure to enforce any rights hereunder shall be deemed to constitute a waiver of any subsequent
breach or default with respect to the same or any other provision hereof. No waiver shall be
effective unless made in writing with specific reference to the relevant provision(s) of this
Agreement and signed by a duly authorized representative of the Party granting the waiver.
10.6 Severance. If any provision of this Agreement is found to be invalid, illegal or
unenforceable, the balance of this Agreement shall remain in effect. In the event the invalid,
illegal or unenforceable provision is material in the context of this Agreement, the Parties shall
in good faith agree to a mutually satisfactory replacement which accomplishes, to the extent
possible, the original business purpose and intent of the invalid, illegal or unenforceable
provision in a valid and enforceable manner.
10.7 Notices. All notices, consents, waivers or other communications which are
required or permitted hereunder shall be in writing and shall be sufficient if delivered personally
(including by means of an internationally recognized courier service for which a written receipt
15
is given) or by registered or certified mail, return receipt requested, postage prepaid, or by
facsimile transmission providing a receipt, as follows (or to such other address as shall be set
forth in a notice given in the same manner):
| If to IDM: | If to Pharmexa: | |
IDM Pharma, Inc. 0 Xxxxxx, Xxxxx 000 Xxxxxx, XX 00000-0000 XXX Attn: Xxxx-Loup Romet-Lemonne, M.D. With a copy to: Xxxxxx Godward LLP 0000 Xxxxxxxx Xxxx Xxx Xxxxx, XX 00000-0000 XXX Attn: Xxxxxxx X. Xxxxxx, Esq. |
Pharmexa, Inc. 0000 Xxxxx Xxxxx Xxxxx Xxx Xxxxx, XX 00000 XXX Attn: Chief Executive Officer With copies to: Pharmexa A/S Xxxxx Xxxx 0 XX-0000 Xxxxxxxx Xxxxxxx Attn: Chief Financial Officer and Nordlicht & Hand 000 Xxxxx Xxxxxx Xxx Xxxx, XX 00000 XXX Attn: Xxxxx X. Hand, Esq. |
10.8 Costs. Except as otherwise set forth herein, Pharmexa and IDM shall each be
responsible for and bear all of its own costs and expenses (including without limitation attorneys’
fees and costs, accountants’ fees and costs, other professionals’ fees and costs) incurred in
connection with the negotiation, preparation, execution, delivery and performance of this
Agreement.
10.9 Article and Section Headings and Gender. The Article and Section headings herein
have been inserted for convenience of reference only and shall in no way modify or restrict any of
the terms or provisions hereof. All references in this Agreement to Articles, Sections and
Schedules refer to Articles, Sections and Schedules to this Agreement. The use of masculine or any
other pronoun herein when referring to any party is for convenience only and shall be deemed to
refer to the particular party intended regardless of the actual gender of such party.
16
10.10 Counterparts. This Agreement may be executed in two or more counterparts each
of which shall be deemed an original and which together shall constitute one and the same
instrument.
10.11 Governing Law. This Agreement shall be governed by and construed in accordance
with the laws of the State of California without giving effect to the principles of conflicts of
law.
10.12 Mutual Drafting. This Agreement constitutes the joint product of the Parties
hereto. Each provision has been subject to the mutual consultation and agreement of such Parties
and shall not be construed for or against either of them based on authorship.
10.13 Schedules. The Schedules to this Agreement shall be construed with and as an
integral part of this Agreement to the same extent as if the same had been set forth verbatim
herein.
- Continued on Page 19 -
17
EXECUTION PAGE
EIS LICENSE AGREEMENT
EIS LICENSE AGREEMENT
IN WITNESS WHEREOF, the Parties have executed this Agreement as of the date first written
above.
| IDM PHARMA, INC. | PHARMEXA, INC. | |||||||
By:
|
/s/ Xxxxxx De Vaere | By: | /s/ Xxxx Xxxxx | |||||
Name:
|
Rober De Vaere | Name: | Xxxx Xxxxx | |||||
Title:
|
Chief Financial Officer | Title: | CEO | |||||
18
SCHEDULE A
LICENSED PATENTS
[. . .***. . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
SCHEDULE B-1
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
SCHEDULE B-2
EXISTING EPITOPE GRANTS
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
[. . . *** . . .]
| * | Confidential Treatment Requested under 17 C.F.R. §§ 200.80(b)(4) and 240.24b-2(b)(1) |
