Fetal Antigen License Agreement - Donald L. Morton and CancerVax Corp.
FETAL ANTIGEN LICENSE AGREEMENT
This Fetal Antigen License Agreement (this "Agreement") is made and
entered into effective as of December 15, 2000, by and between Dr. Donald L.
Morton ("Morton") and CancerVax Corporation, a Delaware corporation
("CancerVax").
RECITALS
A. Contemporaneously with this Agreement, the parties are
entering into a Contribution of Technology and Exchange Agreement (the
"Contribution Agreement"), relating to, among other things, certain cell lines
and technology related to antigen-containing vaccines.
B. As an inducement to CancerVax to enter into the Contribution
Agreement, Morton is willing to provide CancerVax a nonexclusive license to U.S.
Patent Application USSN 08/483,128 and related technologies, upon the terms and
conditions set forth herein.
NOW THEREFORE, the parties agree as follows:
1. DEFINITIONS
1.1 "Patent Rights" shall mean patent rights claimed in or covered
under U.S. patent application USSN 08/483,128, including any divisionals,
continuations, continuations-in-part, foreign counterparts, any United States or
foreign patents issuing therefrom, as well as any extensions, reexaminations or
reissues thereof.
1.2 "Field" shall mean the treatment or prevention of cancer in
humans through the use of products or methodologies that employ an
antigen-containing vaccine.
1.3 "Licensed Products and Methods" shall mean any product,
composition, material or method whose manufacture, development, use, sale, offer
for sale or import by a party not licensed under the Patent Rights would
constitute an infringement of any claim or claims of the patent applications or
patents included in the Patent Rights.
1.4 "Related Materials" shall mean any information, data, know-how
and biological materials owned or controlled by Morton or any of his affiliated
entities as of the effective date of this Agreement that relate to the Patent
Rights.
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2. GRANT
Subject to the terms of this Agreement, Morton hereby grants to
CancerVax a paid-up, royalty-free, nonexclusive, worldwide license, with right
to sublicense, to use the Patent Rights and Related Materials to the extent
necessary or appropriate for the use, development, testing, manufacturing,
production, preparation or commercialization (including, but not limited to, the
sale and offer for sale) of the Assigned Assets (as defined in the Contribution
Agreement), including, without limitation, the Vaccine and the Three Cell Lines
(as such terms are defined in the Contribution Agreement), and to develop, make,
have made, use, sell, offer for sale and import Licensed Products and Methods
within the Field. Morton shall disclose, or cause to be disclosed, to CancerVax
upon request any information, data, know-how or biological materials related to
the Patent Rights or Related Materials.
3. CONSIDERATION
In consideration of CancerVax entering into the Contribution Agreement
and paying Morton Ten Dollars ($10) hereunder, the receipt of which is hereby
acknowledged, Morton grants the license set forth in Article 2 and enters into
this Agreement.
4. TERM AND TERMINATION
4.1 Term. Unless terminated earlier pursuant to this Article, the
term of the license of the Patent Rights shall continue in full force and effect
on a country-by-country basis until the last to expire of any patents within the
Patent Rights and the term of the license of the Related Materials shall be
perpetual.
4.2 Termination by CancerVax. CancerVax shall have the right to
terminate any portion of the license granted pursuant to Article 2 as to any
patent, patent application or Related Material at any time upon thirty (30)
days' written notice of termination to Morton.
4.3 Termination for Breach. Either party may terminate this
Agreement in the event the other party shall have materially breached or
defaulted in the performance of any of its obligations hereunder and such breach
shall have continued uncured for thirty (30) days after written notice is given
by the nonbreaching party to the breaching party specifying the breach. Upon
termination for breach by CancerVax, any sublicensee of CancerVax who is not
then in material breach shall have its sublicense converted to a direct license
from Morton under the terms and conditions of this Agreement, as further limited
and restricted by the terms of the original sublicense.
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4.4 Survival
4.4.1 Termination of this Agreement for any reason shall
not release either party hereto from any liability which, at the time of such
termination, has already accrued to the other party or which is attributable to
a period prior to such termination, nor preclude either party from pursuing any
rights or remedies it may have hereunder or at law or in equity with respect to
any breach of this Agreement.
4.4.2 In the event this Agreement is terminated for any
reason, CancerVax and its sublicensees shall have the right to sell or otherwise
dispose of their existing inventory of any Licensed Products and Methods then on
hand within twelve (12) months of such termination.
4.4.3 Articles 1, 2 (with respect to Related Materials), 6,
7, 8, 9 and 10 shall survive the expiration and any termination of this
Agreement.
5. INTELLECTUAL PROPERTY
5.1 Diagnostic Technologies. The parties recognize that an
underlying purpose of this Agreement is based on the realization that diagnostic
technologies controlled by Morton and within the scope of the Patent Rights may
be required for the development and commercialization of the Assigned Assets,
including the Licensed Products and Methods within the Field, and that, to this
end, this Agreement covers the use of such diagnostic technologies only within
the Field. Notwithstanding this, the parties recognize that Morton shall retain
all control of such diagnostic technologies, including the prosecution and other
handling of patents and patent applications within the Patent Rights at Morton's
own expense, as set forth hereinbelow.
5.2 Patent Prosecution. Morton shall, at his own expense, have the
full right to manage and control the filing for, prosecution and maintenance of
the Patent Rights, but shall, upon request by CancerVax, keep CancerVax
reasonably apprised of all such matters as reasonably requested.
5.3 Enforcement. Morton, but not CancerVax, has the right, but not
the obligation to enforce and defend the Patent Rights against any infringement
or misappropriation. CancerVax agrees to join in any such suit with respect to
the Field, as required. The costs and expenses incurred with respect to any such
enforcement or defense of the Patent Rights, and any costs and expenses
attendant to any joinder of CancerVax, shall be borne by Morton. Morton agrees
to keep CancerVax reasonably informed of all developments in connection with any
such action.
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5.4 Defense. If CancerVax or any affiliate, sublicensee,
distributor or other customer is sued by a third party charging infringement of
patent rights that are purported to dominate a claim of the Patent Rights,
CancerVax will promptly notify Morton in writing. CancerVax or such sued party
will control the defense in any such action at its own expense, provided that
Morton shall have the right to participate in the defense or settlement thereof
at his own expense with counsel of his own choosing. Except as agreed in writing
by Morton, CancerVax or such sued party shall not enter into any settlement of
any such action if such settlement admits the unpatentability, invalidity or
unenforceability of any Patent Rights. CancerVax agrees to keep Morton
reasonably informed of all developments in connection with any such action.
5.5 Cooperation. In any suit, action or other proceeding in
connection with defense or enforcement of the Patent Rights permitted hereunder,
Morton and CancerVax shall reasonably cooperate with each other with respect to
such proceeding.
5.6 No Obligation to Maintain. CancerVax recognizes and agrees
that Morton is under no duty whatsoever to CancerVax hereunder with respect to
the patent applications or patents included in the Patent Rights: (i) to
continue prosecution of any patent application; (ii) to conduct such prosecution
in a manner other than as he may so choose; (iii) to maintain any patent or
patent application; or (iv) to file a divisional or continuation application.
Morton may therefore, in his sole discretion, abandon or otherwise discontinue
prosecution of any and all patents and/or applications in the Patent Rights.
6. INSURANCE; INDEMNIFICATION
6.1 Insurance. CancerVax shall secure and maintain in effect
during the term of the Patent Rights and for a period of three (3) years
thereafter insurance policy(ies) underwritten by a reputable insurance company
and in a form and having limits standard and customary for the industry. Such
insurance shall include clinical trial liability and product liability coverage
with respect to the development and commercialization of Licensed Products and
Methods. Upon request by Morton, CancerVax shall provide to Morton certificates
of insurance evidencing the coverage required above.
6.2 Indemnification. CancerVax shall indemnify Morton and any of
his successors and assigns (collectively, the "Indemnitees"), and hold each
Indemnitee harmless from and against any and all liabilities, damages,
settlements, claims,
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actions, suits, penalties, fines, costs or expenses (including, without
limitation, reasonable attorneys' fees and other expenses of litigation)
incurred by any Indemnitee arising from or occurring as a result of any claim,
action, suit, or other proceeding brought by third parties against an Indemnitee
arising from or occurring as a result of the exercise of the license rights
granted to CancerVax under Article 2, including without limitation product
liability claims relating to any Licensed Product and Method used, sold or
otherwise distributed by or on behalf of CancerVax or its affiliates.
Notwithstanding the foregoing, CancerVax shall have no obligation under this
Section 6.2 with respect to liabilities, damages, settlements, claims, actions,
suits, penalties, fines, costs or expenses to the extent the same is caused by
the gross negligence or willful tortious misconduct of an Indemnitee.
6.3 Procedure. An Indemnitee that intends to claim indemnification
under this Article 6 shall: (i) promptly notify CancerVax in writing of any
claim, action, suit, or other proceeding brought by third parties in respect of
which the Indemnitee intends to claim such indemnification; (ii) provide
CancerVax sole control of the defense and/or settlement thereof; and (iii)
provide CancerVax, at CancerVax's request and expense, with reasonable
assistance and full information with respect thereto. Notwithstanding the
foregoing, the indemnity obligation in this Article 6 shall not apply to amounts
paid in settlement of any loss, claim, damage, liability or action if such
settlement is effected without an unconditional release of Indemnitees with
respect to such matter or without the consent of CancerVax, to the extent such
consent is not withheld or delayed unreasonably. Without limiting the foregoing
provisions of this Section 6.3, CancerVax shall keep Morton reasonably informed
of the progress of any claim, suit or proceeding under this Section 6.3 and
Morton shall have the right to participate in any such claim, suit or proceeding
with counsel of his choosing at his own expense.
7. USE OF NAMES
Except as required by law or in the normal course of business
identification and description, neither party shall issue any press release or
other public statements in connection with this Agreement intended for use in
the public media in a manner suggesting any endorsement by the other party,
without the prior written approval of such other party, which approval shall not
be unreasonably withheld or delayed.
8. REPRESENTATIONS AND WARRANTIES
8.1 Morton. Morton hereby represents and warrants to CancerVax
that: (i) he has the full right and authority to enter into this Agreement and
grant the rights and license granted herein; (ii) he has not previously granted
and will not grant during the term of this Agreement any rights in the Patent
Rights or Related Materials in the
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Field that are inconsistent with the rights and license granted to CancerVax
herein; (iii) to his knowledge, there are no claims of any third parties pending
against him that would call into question his right to grant to CancerVax the
rights and license contemplated hereunder; and (iv) except for the rights of the
other inventors of the Patent Rights to undivided interests in the Patent Rights
and Related Materials, the Patent Rights and Related Materials are not subject
to any dispute or claim of any third party (including, without limitation, any
claim of ownership or inventorship or any claim of any prior employer, employee,
consultant or third party client of Morton or any school, university or other
institution which Morton attended or with which Morton was affiliated or
employed) or any other rights that might interfere with CancerVax's use, or
exercise of its license to, the Patent Rights or Related Materials.
8.2 CancerVax. CancerVax hereby represents and warrants to Morton
that: (i) it has the full right and authority to enter into this Agreement and
(ii) to its knowledge, there are no undisclosed claims of any third parties
pending against it that would call into question its right to enter into and
perform its obligations under this Agreement.
8.3 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THIS ARTICLE 8,
NEITHER PARTY MAKES ANY REPRESENTATIONS, WARRANTIES OR CONDITIONS (EXPRESS,
IMPLIED, STATUTORY, OR OTHERWISE) WITH RESPECT TO THE SUBJECT MATTER HEREOF,
INCLUDING WITHOUT LIMITATION, THE PATENT RIGHTS AND LICENSED PRODUCTS AND
METHODS, AND MORTON SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OR
CONDITIONS OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND DISCLAIMS
ALL WARRANTIES AND CONDITIONS OF THE VALIDITY OF THE PATENT RIGHTS OR
NONINFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS.
9. CONFIDENTIALITY
9.1 Confidential Information. Except as expressly provided herein,
each party shall maintain in confidence, and shall not use for any purpose or
disclose to any third party, information disclosed by the other party in writing
and marked "confidential" or that is disclosed orally and confirmed in writing
as confidential within a reasonable time following such disclosure
(collectively, "Confidential Information"). Notwithstanding the foregoing,
Confidential Information shall not include any information that, in each case as
demonstrated by contemporaneous written documentation: (i) was already known to
the receiving party, other than under an obligation of confidentiality, at the
time of disclosure hereunder; or (ii) was generally available to the public or
otherwise part of the public domain at the time of
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its disclosure to the receiving party; or (iii) became generally available to
the public or otherwise part of the public domain after its disclosure, other
than through any act or omission of the receiving party; or (iv) was
subsequently lawfully disclosed to the receiving party by a person other than a
party hereto, without an obligation of confidentiality; or (v) was independently
developed by the receiving party without reference to any information or
materials disclosed by the disclosing party.
9.2 Permitted Usage. Notwithstanding the provisions of Section 9.1
above, each party may use or disclose the other party's Confidential Information
to the extent such use and disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation, complying
with applicable governmental regulations, submitting information to tax or other
governmental authorities conducting clinical trials or exercising its rights
hereunder (including granting any permitted sublicenses); provided that if a
party is legally required to make any public disclosures of the other party's
Confidential Information, to the extent it may legally do so, it will give
reasonable advance notice to the other party of such disclosure and will use its
reasonable efforts to secure confidential treatment of such Confidential
Information prior to its disclosure (whether through protective orders or
otherwise); provided, further, that CancerVax may disclose Confidential
Information pertaining to the Patent Rights to the extent required in connection
with the commercialization of products.
10. GENERAL
10.1 Independent Contractors. The relationship of CancerVax and
Morton established by this Agreement is that of independent contractors. Nothing
in this Agreement shall be construed to create any other relationship between
the parties. Neither party shall have any express or implied right, power or
authority to assume, create or incur any expense, liability or obligation on
behalf of or in the name of the other party.
10.2 Confidential Terms. Except as expressly provided herein, each
party agrees not to disclose any terms of this Agreement to any third party
without the prior written consent of the other party, except as required by
securities or other applicable laws and (subject to reasonable conditions of
confidentiality) to prospective and other investors and such party's
accountants, attorneys and other professional advisors.
10.3 Assignment. This Agreement shall not be assignable by either
party to any third party without the prior written consent of the other party,
except that (a) Morton may assign this Agreement without CancerVax's consent to
the Donald L. Martin Family Trust, originally dated June 2, 1989, and as amended
at any time, so long as he remains, during his lifetime the trustee and
principal beneficiary; and
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(b) CancerVax may assign this Agreement without Morton's consent to an entity
that acquires all or substantially all of the business or assets of CancerVax,
whether by sale, merger, transfer of assets of CancerVax, operation of law or
otherwise; provided that in either case, such assignee or transferee promptly
agrees in writing to be bound by the terms and conditions of this Agreement.
Upon a permitted assignment of this Agreement, all references herein to the
assigning party shall be deemed references to the assignee. Any assignment not
permitted under this Section 10.3 shall be null and void. This Agreement shall
be binding upon and inure to the benefit of the successors, legal
representatives and permitted assigns of the parties.
10.4 Force Majeure. Nonperformance of either party shall be excused
to the extent that performance is delayed or rendered impracticable by strike,
fire, earthquake, flood, governmental acts or orders or restrictions, or any
other reason, including failure of suppliers, where failure to perform is beyond
the reasonable control of the nonperforming party. Without limiting the
foregoing, the party subject to such inability shall use reasonable efforts to
minimize the duration of any force majeure event.
10.5 Patent Marking. CancerVax agrees to mark, and have its
affiliates and sublicensees mark, all Licensed Products sold, imported or
otherwise distributed pursuant to this Agreement in accordance with the
applicable patent statutes or regulations.
10.6 Notices. All notices, requests and other communications
hereunder shall be made in writing and shall be sent by registered or certified
mail, return receipt requested, postage prepaid; facsimile transmission (receipt
verified); or express courier service (signature required), in each case to the
respective address or fax number specified below, or such other address or fax
number as may be specified in writing to the other party:
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CancerVax: CancerVax Corporation
5620 Paseo Del Norte
No. 127-541
Carlsbad, CA 92008
Attn: President
Fax: (858) 756-3567
with a copy to: Perkins Coie LLP
1201 Third Avenue, 40th Floor
Seattle, WA 98101
Attn: James R. Lisbakken
Morton: Donald L. Morton, M.D.
1374 Bella Oceana Vista
Pacific Palisades, CA 90272
Fax: (310) 230-4143
with a copy to: Fulbright & Jaworski
600 Congress Ave., Suite 1900
Austin, TX 78701
Attn: David L. Parker
Fax: (512) 474-7577
10.7 Governing Law. This Agreement shall be governed by, and
construed and interpreted in accordance with, the laws of the State of
California, without regard to conflicts of laws principles.
10.8 Compliance with Law. CancerVax shall comply with all
applicable laws and regulations in connection with its activities pursuant to
this Agreement.
10.9 Modification; Waiver. No amendment or modification of any
provision of this Agreement shall be effective unless in writing signed by the
party to be charged. No provision of this Agreement shall be varied,
contradicted or explained by any oral agreement, course of dealing or
performance, or any other matter not set forth in an agreement in writing and
signed by both parties hereto. No failure on the part of either party to
exercise, and no delay in exercising any right under this Agreement or provided
by statute or at law or in equity or otherwise, shall impair, prejudice or
constitute a waiver of any such right, nor shall any partial exercise of any
such right preclude any other or further exercise thereof or the exercise of any
other right.
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10.10 Headings. Headings included herein are for convenience only,
do not form a part of this Agreement and shall not be used in any way to
construe or interpret this Agreement.
10.11 Severability. If any provision hereof should be held invalid,
illegal or unenforceable in any jurisdiction, the parties shall negotiate in
good faith a valid, legal and enforceable substitute provision that most nearly
reflects the original intent of the parties (or shall strike such provision in
the absence of such substitute provision) and all other provisions hereof shall
remain in full force and effect in such jurisdiction and shall be liberally
construed in order to carry out the intentions of the parties hereto as nearly
as may be possible. Such invalidity, illegality or unenforceability shall not
affect the validity, legality or enforceability of such provision in any other
jurisdiction.
10.12 Bankruptcy. All rights and licenses granted under or pursuant
to this Agreement by Morton to CancerVax are, and shall otherwise be deemed to
be, for purposes of Section 365(n) of Title 11, U.S. Code (the "Bankruptcy
Code"), licenses of rights to "intellectual property" as defined under Section
101(60) of the Bankruptcy Code. The parties agree that CancerVax, as a licensee
of such rights under this Agreement, shall retain and may fully exercise all of
its rights and elections under the Bankruptcy Code. Morton agrees during the
term of this Agreement to maintain current copies of all such intellectual
property licensed hereunder. The parties further agree that, in the event of the
commencement of a bankruptcy proceeding by or against Morton under the
Bankruptcy Code, CancerVax shall be entitled to a complete duplicate of (or
complete access to, as appropriate) any such intellectual property and all
embodiments of such intellectual property, and the same, if not already in its
possession, shall be promptly delivered to CancerVax, upon written request
therefor by CancerVax, (i) upon any such commencement of a bankruptcy
proceeding, unless Morton elects to continue to perform all of his obligations
under this Agreement, or (ii) if not delivered under clause (a) above, upon the
rejection of this Agreement by or on behalf of Morton.
10.13 Entire Agreement. This Agreement constitute the entire
understanding and agreement between the parties with respect to the subject
matter hereof and supersede any and all prior negotiations, representations,
agreements, and understandings, whether written or oral, between the parties
with respect to such subject matter.
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10.14 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written:
"CANCERVAX"
CANCERVAX CORPORATION "MORTON"
By /s/ David F. Hale /s/ Donald L. Morton
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David F. Hale, DONALD L. MORTON, M.D.
Chief Executive Officer
[Signature Page to Fetal Antigen License Agreement]