EXHIBIT 10.2
NONEXCLUSIVE SUBLICENSE AGREEMENT
THIS AGREEMENT, entered into this 27th day of June, 2002 by and between
First Horizon Pharmaceutical Corporation, a corporation of the State of Delaware
having its principal address at 0000 Xxxxxx Xxxx, Xxxxxxxxxx, Xxxxxxx 00000
(hereinafter referred to as "FHRX") and Xxxx Fine Chemicals Inc. (d/b/a JFC
Technologies), a corporation of the State of New Jersey having its principal
address at 000 Xxxx Xxxx Xxxxxx, X.X. Xxx 000, Xxxxx Xxxxx, Xxx Xxxxxx 00000
(hereinafter referred to as "JFC");
WITNESSETH THAT:
WHEREAS, JFC is a manufacturer of bulk active ingredients useful in the
preparation of pharmaceutical formulations;
WHEREAS, JFC is a manufacturer of dextromethorphan tannate and
dexchlorpheniramine tannate (hereinafter collectively referred to as "Licensed
Products");
WHEREAS, JFC has developed, over a considerable period of time and at
considerable monetary expense, a body of technical information (hereinafter
being defined and referred to as "JFC's Technical Information") relating to the
manufacture and use of Licensed Products;
WHEREAS, JFC has developed, over a considerable period of time and at
considerable monetary expense, United States patent applications covering the
manufacturer, use and sale of Licensed Products, and JFC anticipates filing
further United States patent applications (hereinafter being defined and
referred to as "JFC's Patent Rights") covering the manufacturer, use and sale of
Licensed Products (hereinafter being defined and referred to as "JFC's Patent
Rights");
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WHEREAS, FHRX is a specialty pharmaceutical company which markets,
distributes and sells pharmaceutical formulations;
WHEREAS, Unisource Corporation, a corporation of the State of Colorado
having a principal address at 0000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxx 00000
(hereinafter referred to as "UNISOURCE") manufactures, markets, sells and
distributes pharmaceutical formulations;
WHEREAS, pursuant to a certain "Exclusive License Agreement" of even date,
JFC granted FHRX an exclusive license and right under JFC's Technical
Information and Patent Rights to make, have made, use, distribute, market,
promote, advertise and sell Licensed Products and to make, have made, use,
distribute, market, promote, advertise and sell pharmaceutical formulations
containing Licensed Products (such pharmaceutical formulations hereinafter being
defined and referred to as "Finished Dosage Products");
WHEREAS, pursuant to Paragraph 2.02 of said Exclusive License Agreement,
the parties provided that FHRX would grant a sublicense to JFC under JFC's
Patent Rights and JFC's Technical Information to manufacture Licensed Products;
WHEREAS, JFC has entered into certain prior supply agreements with
UNISOURCE (hereinafter referred to as "Existing JFC-UNISOURCE Agreements")
whereby UNISOURCE purchases bulk active ingredients useful in the preparation of
pharmaceutical formulations from JFC;
WHEREAS, FHRX has entered into certain prior supply agreements with
UNISOURCE (hereinafter referred to as "Existing FHRX-UNISOURCE Agreements")
whereby FHRX purchases pharmaceutical formulations from UNISOURCE;
WHEREAS, FHRX and UNISOURCE have entered into a new supply agreement
(hereinafter referred to as "New FHRX-UNISOURCE Agreement") whereby UNISOURCE
will supply FHRX with Finished Dosage Products;
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WHEREAS, on even date with entry into this Agreement and the License
Agreement, JFC will enter into a new agreement or agreements with Unisource
("New JFC-Unisource Agreement");
WHEREAS, in order to effectuate the commercialization of Finished Dosage
Products, FHRX wishes to have JFC manufacture Licensed Products and ship such
Licensed Products exclusively to FHRX's designated supplier(s) (currently
UNISOURCE) and JFC is willing to manufacture Licensed Products and ship such
Licensed Products exclusively to FHRX's designated supplier(s);
NOW, THEREFORE, in consideration of the foregoing premises, promises and
the mutual covenants hereinafter recited and other good and valuable
consideration, the parties hereto agree as follows:
ARTICLE I - DEFINITIONS
The above recitals are hereby incorporated into this Agreement. For the
purposes of this Agreement, the following terms shall have the indicated
meanings:
1.01 "Effective Date" shall mean the date recited in the opening paragraph
of this Agreement.
1.02 "JFC's Technical Information" shall mean all technical information and
know-how relating to the manufacture and use of Licensed Products, including
improvements and developments relating thereto and operating techniques useful
therein, acquired by JFC prior to the tenth (10th) anniversary of the Effective
Date of this Agreement.
1.03 "JFC's Patent Rights" shall mean United States patent applications and
patents (including, but not limited to, those listed on Schedule B hereto) to
the extent, and only to the extent that they, or the claims thereof, cover the
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manufacture, use and/or sale of Licensed Products, compositions containing
Licensed Products or formulations containing Licensed Products which are based
on inventions conceived prior to the tenth (10th) anniversary of the Effective
Date of this Agreement by JFC's employees or by others as to whose inventions
JFC shall have the right prior to the tenth (10th) anniversary of the Effective
Date of this Agreement to make the agreements, promises and covenants
hereinafter recited without accounting to others, subject, however, to the
conditions under which JFC now or hereafter acquires the right from said others
to make the aforesaid agreements, promises and covenants.
1.04 "Finished Dosage Products" shall mean pharmaceutical formulations that
contain Licensed Products and are in a form for sale to a final consumer by
prescription, including, without limitation, liquid suspensions, liquid
solutions, syrups, granules, powder, tablets, capsules, caplets, softgels and
the like.
ARTICLE II - GRANT OF SUBLICENSE
2.01 FHRX agrees to grant and hereby grants to JFC a nonexclusive,
royalty-free, nontransferable sublicense and right (without any right to grant a
further sublicense thereunder to any third party) under JFC's Technical
Information and JFC's Patent Rights to manufacture Licensed Products and to ship
such Licensed Products to Unisource, or to FHRX's designee if there is a breach
by Unisource of the New FHRX-Unisource Agreement.
ARTICLE III - TERM AND TERMINATION
3.01 This Agreement shall continue in full force and effect throughout the
life of the Exclusive License Agreement. Termination or expiration of such
Exclusive License Agreement shall automatically result in the termination or
expiration of this Agreement as of the termination or expiration date of the
Exclusive License Agreement.
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ARTICLE IV - ADDRESSES OF THE PARTIES
4.01 The addresses of the parties hereto are as follows, but either party
may change its address for the purpose of this Agreement by notice in writing to
the other party:
JFC: JFC Technologies
Attn: Xxxxx X. Xxxxxxx, President
000 Xxxx Xxxx Xxxxxx
X.X. Xxx 000
Xxxxx Xxxxx, XX 00000
FHRX: First Horizon Pharmaceutical Corporation
Attn: Xxxxx Xxxxxx
0000 Xxxxxx Xxxx
Xxxxxxxxxx, XX 00000
In the event that notices, statements and payments received under this
Agreement are sent by registered or certified first-class, airmail or express
mail to the party entitled thereto at its above address, they shall be deemed to
have been given five days after of the date so mailed. Notices, statements and
payments sent by one party to the other party by overnight courier shall be
deemed to have been given when received by the addressee.
ARTICLE V - ASSIGNMENT - PARTIES BOUND
5.01 This Agreement shall be binding upon and inure to the benefit of the
parties hereto and the successors to substantially the entire assets and
business of the respective parties hereto. This Agreement shall not be
assignable in whole or in part by either party without the prior written consent
(which shall not be unreasonably withheld) of the other party at least thirty
(30) days in advance of the proposed date of assignment. Any and all assignments
of this Agreement or of any interests therein not made in accordance with the
provisions of this Paragraph shall be void.
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ARTICLE VI - GOVERNING LAW
6.01 The validity and interpretation of this Agreement and the legal
relations of the parties to it shall be governed by the laws of the State of New
Jersey (regardless of its or any other jurisdiction's choice of law rules).
6.02 None of the provisions in this Agreement shall be construed so as to
require the commission of any act contrary to law, and whenever there is any
conflict between any provision of this Agreement and any material statute, law
or ordinance, the latter shall prevail; but in such event, the provision of this
Agreement affected shall be curtailed and limited only to the extent necessary
to bring it within the legal requirements.
ARTICLE VII - FORCE MAJEURE
7.01 Neither party shall be responsible to the other for failure to perform
any of the obligations (other than the obligation to pay money) imposed by this
Agreement, provided such failure shall be occasioned by, without limitation,
acts of God, fire, flood, explosion, lightning, windstorm, earthquake,
subsidence of soil, failure or destruction, in whole or in part, or machinery or
equipment, failure of supply of materials, discontinuity in the supply of power,
governmental interference, civil commotion, riot, war, strikes, labor
disturbances, transportation difficulties, labor shortage or any cause beyond
the reasonable control of the party in question. However, the affected party
shall promptly notify the other party of the occurrence of such event and, if
known, the expected duration.
ARTICLE VIII - DISPUTE RESOLUTION
8.01 Any controversy or claim arising out of or relating to this Agreement,
or the breach thereof, shall be settled by arbitration according to the rules,
then obtaining, of the American Arbitration Association. The American
Arbitration Association is hereby authorized to make arrangements for any such
arbitration to be held under such rules in Atlanta, Georgia, unless the parties
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agree upon some other location for the arbitration. This agreement to arbitrate
shall be enforceable and judgment upon any award rendered by the arbitrator(s)
may be entered in any courts of any state having competent jurisdiction.
ARTICLE IX - MISCELLANEOUS
9.01 Words of the masculine gender shall include feminine and neuter
genders and, when the sentence so indicates, words of neuter shall refer to any
gender. Words in the singular and include the plural and vice-versa. This
Agreement shall be construed according to its fair meaning and as if prepared by
both parties.
9.02 The headings of the Articles in this Agreement have been inserted for
convenience only and do not constitute part of this Agreement.
9.03 This Agreement may be executed in counterparts, each of which shall be
deemed an original, but all of such counterparts shall constitute one and the
same instrument.
9.04 The relationship of the parties under this Agreement is that of a
licensor (FHRX) and licensee (JFC). Nothing contained in this Agreement is
intended or is to be construed so as to constitute the parties as partners,
joint venturers or agents of each other. Neither party has any express or
implied right or authority under this Agreement to assume or create any
obligations or make any representations or warranties of behalf of or in the
name of the other party.
9.05 Any specific right or remedy provided in this Agreement shall not be
exclusive but shall be cumulative upon all other rights and remedies set forth
herein and allowed under applicable laws.
9.06 The parties hereto shall consult with each other before making any
public announcements (including, without limitation, press releases, marketing
materials or public securities filings) regarding a party or this Agreement.
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ARTICLE X - ENTIRE AGREEMENT
10.01 This Agreement supersedes and cancels any and all previous
understandings, agreements and commitments between the parties with respect to
the subject matter hereof, including, without limitation, the Memorandum of
Understanding dated May 7, 2002 between the parties hereto. This document
constitutes the entire agreement between the parties hereto with respect to the
subject matter hereof, and any modification of this Agreement shall be in
writing and shall be signed by a duly authorized representative of each party.
There are no understandings, representations, warranties or guarantees, except
as expressly set forth herein and no licenses or rights are granted hereunder
except as expressly set forth herein.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the day and year first written above.
XXXXX FINE CHEMICALS, INC. FIRST HORIZON PHARMACEUTICAL
D/B/A JFC TECHNOLOGIES CORPORATION
By: /s/ Xxxxx X. Xxxxxxx By: /s/ Xxxxxx Xxxxxxxxxxxx
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Name: Xxxxx X. Xxxxxxx Name: Xxxxxx Xxxxxxxxxxxx
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Title: President Title: COO
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