Patent License Agreement [RSV] - Protein Design Labs Inc. and MedImmune Inc.
PATENT LICENSE AGREEMENT
between
PROTEIN DESIGN LABS, INC.
and
MEDIMMUNE, INC.
This Agreement ("Agreement"), effective as of July 17, 1997 ("Effective
Date"), is made by and between PROTEIN DESIGN LABS, INC., a Delaware
corporation having offices at 2375 Garcia Avenue, Mountain View, CA
94043, USA (hereinafter "PDL") and MEDIMMUNE, INC., a Delaware
corporation, having offices at 35 West Watkins Mill Road, Gaithersburg,
MD 20878 (hereinafter "MEDIMMUNE").
RECITALS
A. MEDIMMUNE desires to license certain patents owned or controlled by
PDL related to a humanized antibody directed against RSV (as defined
below), which antibody has involved significant development efforts
undertaken by MEDIMMUNE (including without limitation the antibody known
as "MEDI-493"); and
B. PDL is willing to license to MEDIMMUNE such rights under the terms
and conditions of this Agreement.
AGREEMENT
NOW THEREFORE, in consideration of the mutual covenants herein contained
and intending to be legally bound, the parties agree as follows:
1. DEFINITIONS
All references to Exhibits, Articles and Sections shall be references
to Exhibits, Articles and Sections of this Agreement. In addition,
except as otherwise expressly provided herein, the following terms in
this Agreement shall have the following meanings:
1.01 "Affiliate" means, with respect to a party hereto, any corporate
or other entity which, directly or indirectly, controls, is controlled
by, or is under common control with such party where "control" means the
ownership of not less than 50% of the voting shares of a corporation, or
decision-making authority as to an unincorporated entity.
1.02 "Combination Product(s)" shall mean any product containing both a
pharmaceutically active agent or ingredient which constitutes a Licensed
Product and one or more other pharmaceutically active agents or
ingredients which do not constitute Licensed Products.
1.03 "Field" means the field of human prophylaxis and therapy.
1.04 "Licensed Product(s)" shall mean an Antibody for which MEDIMMUNE
has undertaken significant development efforts (e.g., conducted or
sponsored a human clinical trial), which product is an Antibody that
binds to RSV (including without limitation, the MEDI-493 product of
MEDIMMUNE or MEDIMMUNE's sublicensees and any modifications or
improvements) whose development, importation, manufacture, use or sale
would, but for a license under this Agreement, infringe a Valid Claim.
"Antibody" as used in the preceding sentence shall include, without
limitation, monospecific and bispecific antibodies; less than full-length
antibody forms such as Fv, Fab, and F(ab')(2); single-chain antibodies;
and antibody conjugates bound to a toxin, label or other moiety.
1.05 "Net Sales" shall mean the aggregate gross revenues, whether in
cash or in kind, derived by or payable from or on account of the sale of
Licensed Products, less an allowance of Five Percent (5%) to cover
factors such as (a) credits or allowances, if any, actually granted on
account of price adjustments, recalls, rejection or return of items
previously sold, (b) excise and sales taxes, duties or other taxes
imposed on and paid with respect to such sales (excluding income or
franchise taxes of any kind) and (c) outer packing, freight and freight
insurance costs. If MEDIMMUNE or any of its Affiliates or sublicensees
receive non-cash consideration for any Licensed Product sold or otherwise
transferred to an independent third party not an Affiliate of the seller
or transferor, the fair market value of such non-cash consideration on
the date of such transfer as known to MEDIMMUNE, or as reasonably
estimated by MEDIMMUNE if unknown, shall be included in the definition of
Net Sales.
1.06 "PDL Patent Rights" means the patents (as well as any foreign
counterparts or patent applications thereto) identified on Exhibit A,
including any addition, continuation, continuation-in-part or division
thereof or any substitute application therefor; any patent issued with
respect to such patent application, any reissue, extension or patent term
extension of any such patent, and any confirmation patent or registration
patent or patent of addition based on any such patent.
1.07 "Territory" means the world.
1.08 "Valid Claim" means any claim in any issued patent included in
the PDL Patent Rights which has not been disclaimed or held unenforceable
or invalid by a governmental agency or court of competent jurisdiction by
a decision beyond right of review.
1.09 "Europe" means one or more the following countries: U.K.,
France, Germany, Italy and Spain.
2. LICENSE
2.01 License Grant. Subject to the terms and conditions of this
Agreement, PDL hereby grants and MEDIMMUNE hereby accepts a nonexclusive
license under the PDL Patent Rights limited to the Field and Territory,
including the right to grant sublicenses (subject to Section 2.02), to
make, import, have made, use or sell Licensed Products.
2.02 Limitation on Sublicenses; Notification of Grant of Sublicense.
MEDIMMUNE shall have the right to grant sublicenses of its rights under
Section 2.01 only in connection with the assignment or license by it of a
Licensed Product to a third party and only with respect to that Licensed
Product. The right to grant sublicenses under Section 2.01 shall be on
terms and conditions which are subject to and subordinate to the terms of
this Agreement. Promptly following execution of any sublicense
hereunder, but in any event not less than ten (10) days thereafter,
MEDIMMUNE shall notify PDL of the identity of the sublicensee and the
scope of the sublicense.
2.03 Notification of Other Potential Licensee. PDL shall use
commercially reasonable efforts to notify MEDIMMUNE in the event that a
third party proposes to obtain a license under the PDL Patent Rights in
the Field. MEDIMMUNE shall have a period of ten (10) business days from
notification to propose terms for an amendment to this Agreement for an
exclusive license in the Field and Territory. PDL agrees to reasonably
consider any proposal to enter into an amendment to this Agreement for an
exclusive license proposed by MEDIMMUNE, but neither party shall have any
obligation to enter into such amendment.
2.04 (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
3. MILESTONE PAYMENTS; ROYALTIES, REPORTS
3.01 Payments. In consideration for the license granted by PDL under
Article 2 of this Agreement MEDIMMUNE shall pay the amounts set forth in
this Section 3.01.
(a) Initial Payment. Unless this Agreement is terminated as
provided in Section 7.02(a), not later than September 1, 1997 MEDIMMUNE
shall pay to PDL a nonrefundable signing and licensing fee in the sum of
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED).
(b) Milestone Payments.
i. Filing of Biologics License Application(s). Within thirty
(30) days following the submission of a biologics license application (or
foreign counterpart thereto) to regulatory authorities with respect to a
Licensed Product in any country in the Territory, MEDIMMUNE shall pay to
PDL a one time nonrefundable sum of (CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED).
ii. Approval to Market in the U.S. Within thirty (30) days
following the initial approval to market a Licensed Product in the U.S.,
MEDIMMUNE shall pay to PDL the nonrefundable sum of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED).
iii. Approval to Market in Europe. Within thirty (30) days
following the initial approval to market a Licensed Product in any
country in Europe, MEDIMMUNE shall pay to PDL the nonrefundable sum of
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED).
iv. First Sale in the U.S. Within thirty (30) days following the
initial sale of a Licensed Product that, but for the licenses granted to
MEDIMMUNE under this Agreement would infringe a Valid Claim in the U.S.,
MEDIMMUNE shall pay to PDL the nonrefundable sum of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED).
v. First Sale in Europe. Within thirty (30) days following the
initial sale of a Licensed Product that, but for the licenses granted to
MEDIMMUNE under this Agreement would infringe a Valid Claim in any
country in Europe, MEDIMMUNE shall pay to PDL the nonrefundable sum of
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED).
Each milestone set forth in this Section 3.01 shall be deemed achieved
and the corresponding milestone payment due upon the achievement of the
milestone, whether by MEDIMMUNE, its Affiliates or sublicensees. Any
payment made by MEDIMMUNE for the achievement of any milestone herein
shall be paid by MEDIMMUNE only once.
3.02 Annual Maintenance Fee. In further consideration of the
license granted under Article 2, not later than June 30, 2000 and not
later than May 31 each year thereafter, MEDIMMUNE shall pay PDL a
nonrefundable annual maintenance fee in the amount of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED).
3.03 Royalties to PDL; Credits Against Royalties.
(a) In further consideration of the rights and licenses granted
under Article 2, MEDIMMUNE shall pay to PDL a royalty of (CONFIDENTIAL
TREATMENT HAS BEEN REQUESTED) of the Net Sales of all Licensed Products
sold by MEDIMMUNE or its Affiliates or sublicensees to non-Affiliated
third parties in each country in the Territory until the last date on
which there is a Valid Claim that, but for the licenses granted to
MEDIMMUNE under this Agreement, would be infringed by the making,
importing, using, having made or sale of that Licensed Product in such
country in the Territory or by the manufacture of Licensed Product in the
country of manufacture.
(b) (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
3.04 Sales Among Affiliates. Sales between and among MEDIMMUNE, its
sublicensees and its Affiliates of Licensed Products which are
subsequently resold or to be resold by such sublicensees or Affiliates
shall not be subject to royalty, but in such cases royalties shall accrue
and be calculated on any subsequent sale of such Licensed Products to a
non-affiliated third party.
3.05 Combination Products. Net Sales in a particular country in the
Territory, in the case of Combination Products for which the
pharmaceutically active agent or ingredient constituting a Licensed
Product and each of the other pharmaceutically active agents or
ingredients not constituting Licensed Products have established market
prices in that country in the Territory when sold separately, shall be
determined by multiplying the Net Sales for each such Combination Product
by a fraction, the numerator of which shall be the established market
price for the Licensed Product(s) contained in the Combination Product
and the denominator of which shall be the sum of the established market
prices for the Licensed Product(s) plus the established market prices for
the other pharmaceutically active agents or ingredients contained in the
Combination Product. When such separate market prices are not
established in that country in the Territory, then the parties shall
negotiate in good faith to determine a fair and equitable method of
calculating Net Sales in that country for the Combination Product in
question.
3.06 Withholding.
(a) Payments. MEDIMMUNE shall pay all amounts payable to PDL under
Section 3.01 and Section 3.02 from a U.S. bank account. Any deductions
for any taxes or other withholding that may be applicable to the payments
to PDL under Sections 3.01 and 3.02 shall be promptly paid by MEDIMMUNE
to the appropriate governmental authority and MEDIMMUNE shall provide
proof of payment to PDL..
(b) Royalty Payments. MEDIMMUNE may withhold from royalties due to
PDL amounts for payment of any withholding tax that MEDIMMUNE has paid to
any taxing authority with respect to royalties due on account of the sale
or manufacture of Licensed Products in the Territory. MEDIMMUNE agrees
to reasonably cooperate with PDL in obtaining a foreign tax credit in the
U.S. with respect to royalties due to PDL on the sale or manufacture of
Licensed Products.
3.07 Currency Conversion. All amounts payable to PDL under this
Agreement shall be payable in U.S. Dollars by wire transfer to-a bank
account designated by PDL. In the case of royalties on Net Sales, all
amounts payable shall first be calculated in the currency of sale and
then converted into U.S. Dollars using the average of the daily exchange
rates for such currency quoted by Citibank, N.A. for each of the last
fifteen (15) banking days of each calendar quarter.
3.08 Royalty Reports.
(a) Current Reports. MEDIMMUNE agrees to make written reports and
royalty payments to PDL within forty-five (45) days after the close of
each calendar quarter during the term of this Agreement, beginning with
the calendar quarter in which the date of first commercial sale occurs.
These reports shall show for the calendar quarter in question Net Sales
by MEDIMMUNE, its Affiliates and sublicensees of the Licensed Products in
the Territory on a country-by-country basis, details of the quantities of
Licensed Products sold in each country and the country of manufacture if
different, and the royalty due to PDL thereon pursuant to Article 2.
Concurrently with the making of each such report, MEDIMMUNE shall make
any payment due to PDL of royalties for the period covered by such
report.
(b) Termination Report. For each Licensed Product, MEDIMMUNE also
agrees to make a written report to PDL within ninety (90) days after the
date on which MEDIMMUNE, its Affiliates or sublicensees last sell that
Licensed Product in the Territory stating in such report the same
information required by quarterly reports for all such Licensed Products
made, sold or otherwise disposed of which were not previously reported to
PDL.
3.09 Inspection MEDIMMUNE agrees to keep clear, accurate and complete
records for a period of at least three (3) years (or such longer period
as may correspond to MEDIMMUNE's internal records retention policy) for
each reporting period in which Net Sales occur showing the manufacturing,
sales, use and other disposition of Licensed Products in the Territory in
sufficient detail to enable the royalties payable hereunder to be
determined, and further agrees to permit its books and records to be
examined by an independent accounting firm selected by PDL and reasonably
satisfactory to MEDIMMUNE, from time-to-time to the extent necessary,
during normal business hours and upon reasonable notice, but not more
than once a year. Such examination is to be made at the expense of PDL,
except in the event that the results of the audit reveal that MEDIMMUNE
underpaid PDL by five percent (5%) or more, then the audit fees shall be
paid by MEDIMMUNE. Any such discrepancies will be promptly corrected by
a payment or refund, as appropriate.
4. PATENT UPDATE
4.01 Updates. Upon the written request of MEDIMMUNE (which request
shall not be made more than once per calendar year), PDL agrees to
provide a written update of the information relating to the PDL Patent
Rights as set forth on Exhibit A.
4.02 Defense of PDL Patent Rights. With respect to the PDL Patent
Rights licensed under this Agreement, PDL at its sole cost and expense
agrees to take all steps and proceedings and to undertake such other acts
as PDL may, in its sole discretion, deem necessary or advisable to
restrain any infringement or improper or unlawful use of the PDL Patent
Rights in the Field and Territory. MEDIMMUNE shall permit PDL to have
the sole right to take such steps, conduct any such proceedings or
undertake any such actions to restrain any infringement or improper or
unlawful use of the PDL Patent Rights in the Territory, whether or not
MEDIMMUNE is a party to such steps, proceedings or actions. Any Moines
recovered from alleged infringers shall be retained by PDL.
4.03 Notification. MEDIMMUNE shall promptly notify PDL in writing of
any actual or suspected infringement of any PDL Patent Right, which
notification shall specify in reasonable detail the nature of such actual
or suspected infringement. If, in MEDIMMUNE's reasonable opinion, PDL
has not undertaken action reasonably designed to restrain any
infringement or improper or unlawful use of the PDL Patent Rights with
respect to an Antibody directed against RSV by such third party in the
particular country and MEDIMMUNE's market share of the indications for
which Licensed Products are sold in that country is reduced by
(CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) or more as a result of the
infringing or unlawful use of PDL Patent Rights with respect to an
Antibody directed against RSV, then MEDIMMUNE shall be entitled to reduce
the royalties payable on Net Sales of Licensed Products in that country
as follows: (a) by (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) if
MEDIMMUNE's market share is reduced by (CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED) up to CONFIDENTIAL TREATMENT HAS BEEN REQUESTED), and (b) by
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) if MEDIMMUNE's market share is
reduced by CONFIDENTIAL TREATMENT HAS BEEN REQUESTED) or more; provided
that the royalty rate on Net Sales of Licensed Products in that country
shall revert to the applicable royalty rate under Section 3.03 at such
time as the infringement is abated.
5. REPRESENTATIONS AND WARRANTIES; INDEMNIFICATION
5.01 Valid Agreement. Each party represents and warrants to the other
that it knows of no legal reason to prevent it from entering into this
Agreement and that the signatory hereto is duly authorized to execute and
deliver this Agreement. In addition, PDL represents and warrants that it
is the owner of the PDL Patent Rights.
5.02 No Warranty of Validity, Non-Infringement. Nothing in this
Agreement shall be construed as (a) a warranty or representation by PDL
as to the validity or scope of any PDL Patent Rights; or (b) a warranty
or representation that any Licensed Product made, used, sold or otherwise
disposed of under the license granted in this Agreement is or will be
free from infringement of patents, copyrights, trademarks, trade secrets
or other rights of third parties.
5.03 No Other Warranties. EXCEPT AS SPECIFICALLY SET FORTH IN ARTICLE
5, PDL MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, WITH RESPECT TO ANY CELL LINES, ANTIBODIES, LICENSED PRODUCTS
DEVELOPED BY MEDIMMUNE UNDER THE LICENSE SET FORTH IN THIS AGREEMENT AND
PDL FURTHER MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF ANY CELL LINES,
ANTIBODIES, LICENSED PRODUCTS OR OTHER MATERIALS DEVELOPED BY MEDIMMUNE
UNDER THE LICENSE SET FORTH IN THIS AGREEMENT WILL NOT INFRINGE ANY THIRD
PARTY RIGHTS.
5.04 Indemnification. MEDIMMUNE shall at all times, during the term
of this Agreement and thereafter, defend, indemnify and hold harmless PDL
and its Affiliates, sublicensees, directors, officers, agents and
employees from any third party claim, proceeding, loss, expense, and
liability of any kind whatsoever (including but not limited to those
resulting from death, personal injury, illness or property damage and
including legal expenses and reasonable attorneys' fees) arising out of
or resulting from the development, manufacture, holding, use, testing,
advertisement, sale or other disposition by MEDIMMUNE, its Affiliates or
sublicensees, or any distributor, customer or representative of MEDIMMUNE
or any one in privity therewith, of any Licensed Product. PDL shall give
MEDIMMUNE prompt notice of any such claim, proceeding or action and
MEDIMMUNE shall control the defense, settlement or compromise of any such
claim, proceeding or action; provided that the control granted to
MEDIMMUNE hereunder shall not include any right to grant licenses or
sublicenses under the PDL Patent Rights without the prior written consent
of PDL, which consent may be withheld in PDL's sole discretion.
6. CONFIDENTIALITY
6.01 Confidentiality. PDL and MEDIMMUNE acknowledge that in the
course of negotiations and furtherance of the interests of the parties
hereunder that it ("Recipient") may receive confidential information of
the other party ("Provider"). "Confidential Information" means any and
all data and information which (a) has been reduced to tangible form and
marked clearly and conspicuously with a legend identifying its
confidential or proprietary nature; or (b) with respect to any oral
presentation or communication, is designated as confidential immediately
before, during, or within a reasonable time after the oral presentation
or communication and such designation is subsequently confirmed in
writing; or (c) is otherwise characterized by Provider as confidential
information.
6.02 Limitations on Use; Information Not Considered Confidential.
Except as expressly provided in Section 8.03(a), each party shall keep
confidential, and shall not use the Confidential Information of the other
party for any purpose other than the development and commercial
exploitation of Licensed Products in the Territory, during the term of
this Agreement and for five (5) years after termination hereof, all
Confidential Information heretofore and hereafter supplied by the other,
provided however, that the foregoing obligation of confidentiality shall
not apply to the extent that any Confidential Information (a) is already
known to the recipient at the time of disclosure or is developed by
recipient thereafter in the course of work entirely independent of any
disclosure by the other party; (b) is publicly known prior to or becomes
publicly known after disclosure other than through acts or omissions of
the recipient; (c) is disclosed in good faith to recipient by a third
party under a reasonable claim of right, or (d) is required to be
disclosed pursuant to an order of a court of law or governmental agency;
provided that the disclosing party shall advise the other party promptly
of any such disclosure requirement in order to permit such other party to
undertake efforts to restrict or limit the required disclosure.
7. TERM AND TERMINATION
7.01 Term. Unless earlier terminated as provided in this Article 7,
this Agreement shall come into force on the date first set forth above
and shall continue until the expiration of the obligation to pay
royalties to PDL in accordance with Article 3 above. Thereafter, this
Agreement shall terminate and all licenses or sublicenses granted
hereunder shall become fully paid-up, irrevocable licenses.
7.02 Termination.
(a) This Agreement may be terminated by MEDIMMUNE (I) immediately
upon written notice that it is terminating further development of MEDI-
493 (or any successor thereto); or (II) for convenience on thirty (30)
days prior written notice.
(b) If either party shall at any time default in the payment of any
royalty, or the making of any report hereunder, or shall commit any
material breach of any covenant or agreement herein contained or shall
make any false report, and shall fail to have initiated and actively
pursued remedy of any such default or breach within (I) in the case of
default in payment, ten (10) days, and (II) in all other cases of default
or breach, thirty (30) days after receipt of written notice thereof by
the other party, that other party may, at its option, cancel this
Agreement and revoke any rights and licenses herein granted and directly
affected by the default or breach by notice in writing to such effect,
but such act shall not prejudice the right of the party giving notice to
recover any royalty or other sums due at the time of such cancellation,
it being understood, however, that if within the specified cure period
after receipt of any such notice the receiving party shall have initiated
and actively pursued remedy of its default, then the rights and licenses
herein granted shall remain in force as if no breach or default had
occurred on the part of the receiving party, unless such breach or
default is not in fact remedied within a reasonable period of time.
(c) This Agreement may be terminated by either party upon the
occurrence of any of the following which is not stayed or vacated within
ninety (90) days of such occurrence: (i) petition in bankruptcy filed by
or against the other party; (ii) adjudication of the other party as
bankrupt or insolvent; (iii) appointment of a liquidator, receiver or
trustee for all or a substantial part of the other party's property; or
(iv) an assignment for the benefit of creditors of the other party.
7.03 No Waiver. The right of either party to terminate this
Agreement as provided herein shall not be affected in any way by its
waiver of, or failure to take action with respect to, any previous
failure to perform hereunder.
7.04 Survival. Termination for any reason hereunder shall not
affect any accrued rights or obligations of the parties arising in any
manner under this Agreement as of the date of termination. In any event,
the confidentiality and indemnity obligations and any accrued payment
obligations under Articles 3, 5 and 6 shall survive any termination of
this Agreement.
7.05 Direct License. In the event that this Agreement terminates,
any sublicense granted under the terms of Section 2.02 hereunder shall,
upon the written request of the sublicensee, become a direct license
between PDL and that sublicensee so long as the (a) sublicense does not
impose obligations on PDL beyond those set forth in this Agreement, and
(b) sublicensee is not in breach of its sublicense agreement or, mutatis
mutandis, the terms of this Agreement.
8. MISCELLANEOUS
8.01 Force Majeure. Neither party shall be responsible to the other
for failure or delay in performing any of its obligations under this
Agreement or for other non-performance hereof provided that such delay or
non-performance is occasioned by a cause beyond the reasonable control
and without fault or negligence of such party, including, but not limited
to earthquake, fire, flood, explosion, discontinuity in the supply of
power, court order or governmental interference, act of God, strike or
other labor trouble and provided that such party will inform the other
party as soon as is reasonably practicable and that it will entirely
perform its obligations immediately after the relevant cause has ceased
its effect.
8.02 Validity. Should one or several provisions of the Agreement be
or become invalid, then the parties hereto shall substitute such invalid
provisions by valid ones, which in their economic effect come so close to
the invalid provisions that it can be reasonably assumed that the parties
would have contracted this Agreement with those new provisions. In the
event that such provisions cannot be determined or are legally
impermissible, the invalidity of one or several provisions of the
Agreement shall not affect the validity of the Agreement as a whole,
unless the invalid provisions are of such essential importance for this
Agreement that it is to be reasonably assumed that the parties would not
have contracted this Agreement without the invalid provisions.
8.03 (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)
8.04 Notices. Any notice or report required or permitted to be given
under this Agreement shall be in writing and shall be sent by expedited
delivery or telecopied and confirmed by mailing, as follows and shall be
effective three (3) days after such delivery:
If to PDL: Protein Design Labs, Inc.
2375 Garcia Avenue
Mt. View, California 94043 USA
Attention: Chief Executive Officer
Copy to: Protein Design Labs, Inc.
2375 Garcia Avenue
Mt. View, California 94043 USA
Attention: General Counsel
If to MEDIMMUNE: MedImmune, Inc.
35 West Watkins Mill Road
Gaithersburg, MD 20878
Attention: Chief Executive Officer
Copy to: Elliot M. Olstein, Esq.
Carella, Byrne, Bain, Gilfillan,
Cecchi, Stewart & Olstein
6 Becker Farm Road
Roseland, NJ 07068
8.05 Governing Law. The validity, performance, construction, and
effect of this Agreement shall be governed by the laws of the State of
California without regard to choice of law principles .
8.06 Entire Agreement. This Agreement constitutes the entire
Agreement between the parties hereto with respect to the within subject
matter and supersedes all previous Agreements, whether written or oral.
This Agreement shall not be changed or modified orally, but only by an
instrument in writing signed by both parties.
8.07 Assignment. The rights of either party under this Agreement may
not be assigned, and the duties of either party under this Agreement may
not be delegated, without the prior written consent of the other party,
which consent shall not be unreasonably withheld; provided however, that
either party may assign this Agreement without prior written consent to a
party which acquires all or substantially all of the assignor's business,
whether by merger, sale of assets or otherwise.
8.08 Publicity. PDL may issue a press release identifying the identity
of MEDIMMUNE, the parties' entry into this Agreement, with the content of
such release to be approved in advance by MEDIMMUNE, which approval shall
not be unreasonably withheld. Except as required by law, neither party
shall publicly disclose the terms and conditions of this Agreement unless
expressly authorized to do so by the other party, which authorization shall
not be unreasonably withheld. In the event that it is determined that a
disclosure shall be made by either or both of the parties hereunder, then
the parties will work together to develop a mutually acceptable disclosure.
MEDIMMUNE agrees to provide PDL with press releases or other information
regarding the development status of the Licensed Products hereunder;
provided that PDL shall have no obligation to publicly update the status of
any Licensed Product.
8.09 Headings. The captions used herein are inserted for convenience of
reference only and shall not be construed to create obligations, benefits,
or limitations.
8.10 Export. Each party acknowledges that the laws and regulations of
the United States restrict the export and re-export of commodities and
technical data of United States origin. Each party agrees that it will
not export or re-export restricted commodities or the technical data of
the other party in any form without the appropriate United States and
foreign government licenses.
8.11 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original, and such
counterparts together shall constitute one agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the date first above written.
PDL: MEDIMMUNE:
PROTEIN DESIGN LABS, INC. MEDIMMUNE, INC.
By: (SIGNATURE) By: (SIGNATURE)
/S/Jon Saxe /s/David M. Mott
Title: President Title: President and Chief Operating
Officer
EXHIBIT A
PDL Patent Rights
The following are patents (the "Queen Patent") issued in certain countries
in the world as of the Effective Date and licensed under the Agreement. The
Queen Patent shall expressly include any patent applications and foreign
counterparts thereto filed by PDL before or during the term of this
Agreement.
1. European Patent number 0451216B1, Queen, "Humanized Immunoglobulins and
their production and use".
2. U.S. patent application number 5,530,101, Queen, "Improved Humanized
Immunoglobulins".
3. U.S. patent continuations, continuations-in-part, and divisional
applications numbers (CONFIDENTIAL TREATMENT HAS BEEN REQUESTED)of issued
U.S. patent number 5,530,101, Queen, "Improved Humanized Immunoglobulins".
4. Japan patent application number (CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED), Queen, "Improved Humanized Immunoglobulins".