PATENT LICENSE AGREEMENT
Exhibit
99.4
EXECUTION COPY
This Patent License Agreement (this “Agreement”) is entered into as of April 14, 2009
(the “Effective Date”) by and between PGxHealth, LLC, a Delaware limited liability
company (the “Licensor”) and Xxxxxxx Xxxxxxx, Inc., a Delaware corporation
(“Xxxxxxx Xxxxxxx”).
Recitals
WHEREAS, Licensor and/or its Affiliates have entered into that certain Stock Purchase
Agreement (the “Purchase Agreement”) dated as of April 1, 2009 with Licensee, Xxxxxxx
Xxxxxxx GmbH, a company registered under the laws of Republic of Germany and Xxxxxxx Xxxxxxx
Holdings GmbH, a company registered under the laws of Republic of Germany, for the sale of all of
the issued and outstanding capital stock of (i) Cogenics, Inc., a Delaware corporation, (ii)
Epidauros Biotechnologie, Aktiengesellschaft, a company registered under the laws of the Republic
of Germany, and (iii) Cogenics Genome Express, S.A., a French société anonyme simultaneously
herewith; and
WHEREAS, Licensor is the respective owner of or hold sublicensable rights in certain United
States and non-U.S. patents and patent applications as more particularly described on Schedule
A attached hereto and made a part hereof; and
WHEREAS, in connection with the consummation of the transactions contemplated in the Purchase
Agreement, Xxxxxxx Xxxxxxx desires to obtain from Licensor, a paid-up, perpetual, irrevocable and
non-exclusive license or sublicense under the Licensed Patents (as defined in Section 1).
NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth in this
Agreement and valuable consideration delivered under the Purchase Agreement and other good and
valuable consideration, the receipt and sufficiency of which are hereby acknowledged by both
parties, the parties hereby agree as follows:
Agreement
Section 1. Definitions.
As used in this Agreement:
1.1 “Affiliate” shall mean, as to any Person, any other Person that, directly or
indirectly through one or more intermediaries, controls, is controlled by or is under common
control with such Person. For purposes hereof, the term “control” means possession, directly or
indirectly, of the power to direct or cause the direction of the management or policies of a
Person, whether through ownership of equity interests, by contract or otherwise.
1.2 “Field” shall mean any and all research, but shall specifically exclude the
testing of a biological sample from a human individual to provide individual patient data to that
individual or that individual’s caregiver for the ultimate purpose of diagnosing, or determining
the susceptibility to, protection from or prognosis for developing a medical condition, disease,
trait or drug response in and as specific to that individual.
1.3 “Licensed Inventions” shall mean any product, method, apparatus or other invention
that without the licenses granted herein, would infringe a valid and enforceable claim of a patent
of the Licensed Patents.
1.4 “Licensed Patents” shall mean all of a Licensor’s rights, title and interest in
the patents and patent applications set forth on the attached Schedule A that Licensor has
as of the Effective Date or may subsequently acquire, including all United States and non-U.S.
patents and utility models and applications therefore claiming priority from the patents and patent
applications listed in Schedule A, and all reissues, divisionals, reexamination
certificates, renewals, extensions, continuations, continuations-in-part and patents by addition
thereof.
1.5 “Person” shall mean any individual, corporation, association, general partnership,
limited partnership, venture, trust, association, firm, organization, company, business, entity,
union, society, government (or political subdivision thereof) or governmental agency, authority or
instrumentality.
1.6 “Term” has the meaning set forth in Section 6.1.
1.7 “Third Party” means any person or entity other than the parties to this Agreement
and their respective Affiliates.
Section 2. License Grant.
2.1 Licensed Rights. Subject to the terms and conditions of this Agreement, Licensor
hereby grants to Xxxxxxx Xxxxxxx and its Affiliates (collectively, the “Licensees”, and
each, a “Licensee”) an irrevocable, paid-up, royalty-free, worldwide, non-exclusive
license to develop, make, have made, use, offer to sell, sell, commercialize, import and export
Licensed Inventions in the Field in accordance with the terms of this Agreement (the “Licensed
Rights”).
Section 3. Prosecution, Maintenance, Regulatory and Commercialization Obligations.
3.1 Maintenance. Licensor shall, at Licensor’s sole expense, pay all maintenance
fees, maintain the existence and present status of any Licensed Patent, and, at its sole
discretion, prosecute all pending applications for patents included within the Licensed Patents.
Subject to any applicable revival rights of Licensor, if Licensor: (i) fails or elects not to pay
any applicable maintenance fees for a Licensed Patent (ii) elects not to prosecute any applications
for a Licensed Patent, or (iii) otherwise fails or elects not to maintain its ownership interest in
any patent or application, excluding permitted assignments and transfers, included within the
Licensed Patents, then Licensor shall provide notice to Licensees thereof and a Licensee shall then
have the option to acquire all of the respective Licensor’s rights, title and interest in the
subject Licensed Patent for ten dollars (US$10.00), subject to any pre-existing license or
obligations of Licensor applicable to the subject Licensed Patent.
3.2 Patent Marking. Licensee agrees to xxxx, and shall require in writing from any
Affiliates that they xxxx, all manufactured Licensed Inventions subject to one or more claims of a
patent under the Licensed Patents sold in the United States with all applicable United States
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patent numbers. All manufactured Licensed Inventions in other countries shall be marked in
such a manner so as to conform to the patent laws and practice of the country of manufacture and/or
sale.
Section 4. Infringement.
4.1. Infringement by Third Parties. Licensee agrees to provide notice to the
respective Licensor after becoming aware of any infringement of a Licensed Patent.
4.2. Prosecution of Infringement. Licensor shall have the right, but not the
obligation, at its own expense, to prosecute any Third Party infringement of the Patent Rights or
to defend the Patent Rights in any declaratory judgment action brought by a Third Party which
alleges invalidity, unenforceability, or non-infringement of a Licensed Patent. Licensor may in its
discretion enter into any settlement, consent judgment, or other voluntary final disposition of any
infringement action as to a Licensed Patent; provided, Licensor shall advise respective Licensee
via written notice of the details of the same.
Section 5. Representations & Indemnification,
5.1 Authority. Licensor and each Licensee hereby represents and warrants that it has
the full power and authority and requisite rights necessary to execute and deliver this Agreement
and to perform all of its obligations under this Agreement; the execution and delivery of this
Agreement and the consummation of the transactions contemplated hereby have been duly and validly
authorized by all necessary action in respect thereof; and this Agreement constitutes the legal,
valid and binding obligation, enforceable against one another in accordance with its terms, subject
to bankruptcy, insolvency and other laws of general applicability relating to or affecting
creditors’ rights and to general equity principles.
5.2 Indemnification. Licensor agrees to hold harmless and indemnify Licensees from
any claim of infringement of a Licensed Patent asserted by any party against a Licensee practicing
a Licensed Invention in accordance with the Licensed Rights set forth in Section 2.1.
Section 6. Term.
6.1. Term. This Agreement shall commence on the Effective Date and shall remain in
effect until the expiration of all issued patents within the Licensed Patents.
6.2. Force Majeure. Neither party will be responsible for delays resulting from
causes beyond the reasonable control of such party, including without limitation fire, explosion,
flood, war, strike, or riot, provided that the non-performing party uses commercially reasonable
efforts to avoid or remove such causes of nonperformance and continues performance under this
Agreement with reasonable dispatch whenever such causes are removed.
Section 7. General Provisions.
7.1. Counterparts. This Agreement may be executed in one or more counterparts, each
of which shall be deemed an original, and all of which together shall be deemed to be one and the
same instrument.
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7.2. Headings. All headings are for convenience only and shall not affect the meaning
of any provision of this Agreement.
7.3. Binding Effect. This Agreement shall be binding upon and inure to the benefit of
the parties and their respective permitted successors and assigns.
7.4. Assignment. A party may assign its rights under this Agreement to a successor in
connection with the merger, consolidation, or sale of all or substantially all of its assets or
that portion of its business to which Licensed Inventions relate.
7.5. Amendment and Waiver. This Agreement may be amended, supplemented, or otherwise
modified only by means of a written instrument signed by both parties. Any waiver of any rights or
failure to act in a specific instance shall relate only to such instance and shall not be construed
as an agreement to waive any rights or fail to act in any other instance, whether or not similar.
7.6. Governing Law. This Agreement shall be governed by and construed in accordance
with the laws of the state of New York, irrespective of any conflicts of law principles.
7.7. Notice. Any notices required or permitted under this Agreement shall be in
writing, shall specifically refer to this Agreement, and shall be sent by hand, recognized national
overnight courier, confirmed facsimile transmission, confirmed electronic mail, or registered or
certified mail, postage prepaid, return receipt requested, to the following addresses of the
parties:
if to Licensees:
Xxxxxxx Xxxxxxx, Inc.
Attention: General Counsel
0000 X. Xxxxxx Xxxx.
X.X. Xxx 0000
Xxxxxxxxx, XX 00000-0000
Facsimile No.: (000) 000-0000
Attention: General Counsel
0000 X. Xxxxxx Xxxx.
X.X. Xxx 0000
Xxxxxxxxx, XX 00000-0000
Facsimile No.: (000) 000-0000
with a copy to (which shall not constitute notice):
Hunton & Xxxxxxxx LLP
Attention: X. Xxxx Xxxxx, II
Bank of America Plaza
000 Xxxxxxxxx Xxxxxx, X.X., Xxxxx 0000
Xxxxxxx, Xxxxxxx 00000
Facsimile No.: (000) 000-0000
Attention: X. Xxxx Xxxxx, II
Bank of America Plaza
000 Xxxxxxxxx Xxxxxx, X.X., Xxxxx 0000
Xxxxxxx, Xxxxxxx 00000
Facsimile No.: (000) 000-0000
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if to Licensor:
PGxHealth, LLC
Attention: Xxxxxx X. Xxxxxx, Executive Vice President and Chief Legal Officer
Xxx Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxxx, XX 00000
Facsimile No.: (000) 000-0000
Attention: Xxxxxx X. Xxxxxx, Executive Vice President and Chief Legal Officer
Xxx Xxxxxxx Xxxxxx, Xxxxx 000
Xxxxxx, XX 00000
Facsimile No.: (000) 000-0000
with a copy to (which shall not constitute notice):
Cooley Godward Kronish LLP
Attention: Xxxx X. Xxxxx
The Prudential Tower
000 Xxxxxxxx Xxxxxx, 00xx Xxxxx
Xxxxxx, XX 00000
Facsimile No.: (000) 000-0000
Attention: Xxxx X. Xxxxx
The Prudential Tower
000 Xxxxxxxx Xxxxxx, 00xx Xxxxx
Xxxxxx, XX 00000
Facsimile No.: (000) 000-0000
All notices under this Agreement shall be deemed effective upon receipt. A party may change
its contact information immediately upon written notice to the other party in the manner provided
in this Paragraph.
7.8. Severability. In the event that any provision of this Agreement shall be held
invalid or unenforceable for any reason, such invalidity or unenforceability shall not affect any
other provision of this Agreement.
7.9. Non-Agency. Nothing contained herein shall be construed or interpreted to make
either party the authorized agent or representative of the other or shall be construed to create
expressly or by implication a partnership or joint venture relationship between the parties.
Neither party is authorized to enter into an agreement or create any obligation on behalf of the
other.
7.10 Bankruptcy. Licensor and Licensee acknowledge that this Agreement and the
licenses set forth herein constitute an executory agreement as provided in 11 U.S.C. Section 365(n)
(the “Federal Bankruptcy Code”). The parties hereto each acknowledge that if it, as a
debtor in possession or a trustee in bankruptcy in a case under the Federal Bankruptcy Code,
rejects the licenses granted to the other party under this Agreement, the other party may elect to
retain its rights therein and upon written request of the other party, it will not interfere with
the right of the other party as provided in this Agreement.
7.11 Survival. Sections 4, 5 and 7 of this Agreement shall survive the Term of this
Agreement.
[Signature Page Follows.]
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IN WITNESS WHEREOF, the undersigned parties hereto have executed this Agreement, effective as
of the Effective Date.
PGxHealth, LLC |
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By: PGxHealth
Holding, Inc. |
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By: | /s/ Xxxxxx X. Xxxxxx | |||
Name: | Xxxxxx X. Xxxxxx | |||
Title: | Executive Vice President, Chief Legal Officer and Secretary |
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Xxxxxxx Xxxxxxx, Inc. |
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By: | /s/ Xxxxxxx Xxxxxxx | |||
Name: | Xxxxxxx Xxxxxxx | |||
Title: | Group Vice President High Sensitivity Testing Business Immunoassay & Molecular Diagnostics |
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EXECUTION COPY
MDR1
US 10/965348 (pending)
EP 1232260 (granted; validated in AT, BE, CH, DE, DK, ES, FR, GB, IE, IT, LU, MC, NL, SE)
US 10/965348 (pending)
EP 1232260 (granted; validated in AT, BE, CH, DE, DK, ES, FR, GB, IE, IT, LU, MC, NL, SE)
CYP3A4
US 6929912 (granted)
US 10/070587 (pending)
EP 00964092.1 (pending)
US 6929912 (granted)
US 10/070587 (pending)
EP 00964092.1 (pending)
CYP2B6
US 09/958635 (pending)
EP 01913809.8 (pending)
US 09/958635 (pending)
EP 01913809.8 (pending)
CYP3A5
EP 1358353 (granted; validated in BE, CH, DE, ES, FR, GB, IE, IT, LU, MC)
EP 1358353 (granted; validated in BE, CH, DE, ES, FR, GB, IE, IT, LU, MC)
CYP2C8
US 10/479225 (pending)
EP 02776511.4 (pending)
US 10/479225 (pending)
EP 02776511.4 (pending)
CYP2D6
US 10/635780 (pending)
US 10/635780 (pending)
GSTT1
US 6723508 (granted)
US 6723508 (granted)
FCGR3A
US 5985561 (granted)
US 10/492183 (pending)
US 11/629808 (pending)
US 11/597981 (pending)
EP 02782887.0 (pending)
EP 05768688.3 (pending)
US 5985561 (granted)
US 10/492183 (pending)
US 11/629808 (pending)
US 11/597981 (pending)
EP 02782887.0 (pending)
EP 05768688.3 (pending)