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Exhibit 2.2
CROSS-LICENSE AGREEMENT
This CROSS-LICENSE AGREEMENT, dated as of May 17, 1999 (the "Cross
License Agreement"), is by and among BioSepra Inc., a Delaware corporation
("BioSepra") and its successors or assigns, Life Technologies, Inc., a Delaware
corporation ("LTI") and its successors or assigns, and LTI's affiliate BioSepra
S.A. ("BSA") and its successors and assigns. Each of BioSepra, BSA and LTI is
sometimes referred to herein individually as a "Party" and collectively as the
"Parties."
R E C I T A L S :
A. BioSepra and LTI have entered into an Asset Purchase Agreement
dated April 14, 1999, in connection with which certain assets of BioSepra have
been transferred to LTI (the "Asset Transfer"), including without limitation,
certain patents, patent applications, trade secrets and know-how set forth on
SCHEDULE 1 attached hereto (as further defined in SCHEDULE A, "LTI Technology").
B. As part of the Asset Transfer, LTI has acquired 100% of the
capital stock of BSA, formerly a subsidiary of BioSepra.
C. LTI and BSA have agreed to license, or sublicense, as the case
may be, the LTI Technology exclusively to BioSepra solely for use in the
BioSepra Field and BioSepra desires to obtain such licenses, or sublicenses, as
the case may be, from LTI and BSA.
D. In the future BioSepra may, based on its use or development of
the LTI Technology, develop certain technology, inventions, improvements,
derivatives, processes or know-how, that are or may be useful in the business of
LTI and/or BSA, and, in each such case, BioSepra is willing to grant to each of
LTI and BSA a license to use such technology, inventions, improvements,
derivatives, processes or know-how for such purposes.
E. In the future LTI and/or BSA may develop certain technology,
inventions, improvements, derivatives, processes or know-how, that are or may be
useful in the BioSepra Field, and, in each such case, each of LTI and BSA is
willing to grant to BioSepra a license or sublicense to use such technology,
inventions, improvements, derivatives, processes or know-how for such purposes.
NOW, THEREFORE, in consideration of the mutual covenants set forth
herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, each of LTI, BSA and BioSepra
hereby agree as follows:
1. DEFINITIONS. If not otherwise defined in this Cross License
Agreement, capitalized terms have the respective meanings set forth in SCHEDULE
A attached hereto and incorporated herein by reference.
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2. LICENSES.
2.1. GRANT OF LICENSE TO BIOSEPRA. Subject to the terms and
conditions of this Cross License Agreement, LTI and/or BSA hereby grant to
BioSepra a perpetual, worldwide, royalty-free and exclusive right and license,
including the right to grant sublicenses, to the LTI Technology, and all LTI
Improvements for the development, manufacture, use or sale of any products or
services within the BioSepra Field. Notwithstanding the foregoing, the right to
manufacture products employing either LTI Technology or LTI Improvements is
subject to the obligations of BioSepra under the Supply Agreement between
BioSepra and BSA of even date herewith.
2.2. THIRD-PARTY LICENSES. To the extent that any LTI
Technology or LTI Improvements licensed to BioSepra hereunder consist of rights
of LTI or BSA under an agreement or license with or from a third party, any
license granted to BioSepra hereunder shall be (a) limited to the rights which
LTI or BSA, as the case may be, has a right to grant under such agreement or
license and (b) otherwise subject to any obligations assumed by LTI or BSA, as
the case may be, in consideration of the grant or assignment of such right or
license to LTI or BSA which is sublicensed to BioSepra hereunder.
2.3. GRANT OF LICENSES TO LTI AND BSA. Subject to the terms
and conditions of this Cross License Agreement, BioSepra hereby grants to each
of LTI and BSA a perpetual, worldwide, royalty-free and exclusive right and
license, including the right to grant sublicenses, to all BioSepra Improvements
for the development, manufacture, use or sale of any products or services within
the LTI Field.
2.4. TERMINATION. The provisions of this Section 2, in so far
as they relate to Improvements, shall terminate on the fifth anniversary of the
date first written above; provided, however, that any licenses or sublicenses
granted under this Section 2 shall survive such termination to the extent that
they confer rights in and to LTI Technology or any Improvements existing on such
date of termination.
3. PATENT RIGHTS AND DISCLOSURE.
3.1. PATENT RIGHTS.
a. LTI or BSA, as the case may be, shall have the
exclusive right, at its expense, to prepare, prosecute and maintain patent
applications, and to maintain and enforce patents issued thereon with respect to
the LTI Technology and the LTI Improvements. BioSepra agrees that it will, upon
the written request of either LTI or BSA, provide reasonable assistance and
cooperation to facilitate such filing, preparation and maintenance.
b. BioSepra shall have the exclusive right, at its
expense, to prepare, prosecute and maintain patent applications and to maintain
and enforce patents issued thereon with respect to the BioSepra Improvements.
Each of LTI and BSA agree that it shall, upon the written request of BioSepra,
provide reasonable assistance and cooperation to BioSepra to facilitate such
filing, prosecution and maintenance.
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c. Subject to Sections d and e of this Section 3.1,
no Party hereto shall have any obligation to prepare, prosecute or maintain any
patent or patent application. Each Party hereto shall have the right to
determine that any Improvement owned by such Party shall be protected as a trade
secret, or shall be published, and LTI shall have the right to determine that
any component of the LTI Technology which constitutes Confidential Information
shall be protected as a trade secret, or be published. Each of LTI and BSA
hereby agree that it shall timely disclose any LTI Improvements developed by
such Party to BioSepra. BioSepra hereby agrees that it shall timely disclose any
BioSepra Improvements to LTI and BSA.
d. In the event that LTI or BSA elects not to
continue to prosecute, or maintain any patent application which has been
published, or to maintain or enforce any patent with respect to the LTI
Technology or to any LTI Improvements, such Party shall give written notice to
BioSepra which shall identify the patent or patent application not to be
prosecuted, maintained or enforced.. Following receipt of such notice, BioSepra
shall have the right to prosecute, obtain, maintain and enforce the patent
application(s) and patent(s) identified in the notice, at its sole expense, and
BioSepra shall thereafter be deemed to be the sole owner of any such application
or patent, and any such patent or patent application shall be assigned to
BioSepra. Upon such assignment, BioSepra shall grant a worldwide, irrevocable,
royalty free license, with the right to grant sub-licenses co-exclusively to LTI
and BSA for use in the LTI Field as a BioSepra Improvement hereunder.
e. In the event that BioSepra elects not to continue
to prosecute, or maintain any patent application which has been published, or to
maintain or enforce any patent with respect to the BioSepra Improvements,
BioSepra shall give written notice to LTI and BSA which shall identify the
patent or patent application not to be prosecuted, maintained or enforced.
Following receipt of such notice, LTI and/or BSA, as they shall agree, shall
have the right to prosecute, obtain, maintain and enforce the patent
application(s) and patent(s) identified in the notice, at its sole expense, and
shall thereafter be deemed to be the owner of any such application or patent,
and any such patent or patent application shall be assigned to either LTI or
BSA, as they shall agree. Each of LTI and BSA agree that upon any such
assignment it shall grant a worldwide, irrevocable, royalty free license, with
the right to grant sub-licenses, exclusively to BioSepra for use in the BioSepra
Field as an LTI Improvement hereunder.
f. With respect to filing of patent applications
claiming LTI Technology, LTI Improvements or BioSepra Improvements which the
Parties have agreed shall be prosecuted by LTI or BSA, LTI or BSA, as the case
may be, shall keep BioSepra regularly informed of the status of such Patent
Rights in accordance with this Section 3.1, and shall provide copies to BioSepra
of all non-privileged filings and correspondence with the patent offices,
administrative boards or courts which it sends or receives in connection with
filing, prosecution, maintenance and defense of such Patent Rights. With respect
to filing of patent applications claiming BioSepra Improvements, or LTI
Improvements which the Parties have agreed shall be prosecuted by BioSepra,
BioSepra shall keep LTI and BSA regularly informed of the status of such Patent
Rights in accordance with this Section 3.1, and shall provide copies to LTI and
BSA of all non-privileged filings and correspondence with the patent offices,
administrative boards or courts which it sends or receives in connection with
filing, prosecution,
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maintenance and defense of such Patent Rights. Each Party agrees to cause each
of its employees and agents to take all actions and to execute, acknowledge and
deliver all instruments or agreements reasonably requested by an other Party,
and necessary for the perfection, maintenance, enforcement or defense of that
other Party's rights as set forth herein.
3.2. CONFIDENTIAL INFORMATION.
Any Party receiving Confidential Information of another Party hereto shall
maintain the confidential and proprietary status of such Confidential
Information, keep such Confidential Information and each part thereof within its
possession or under its control sufficient to prevent any activity with respect
to such Confidential Information that is not specifically authorized by this
Cross License Agreement, use commercially reasonable efforts to prevent the
disclosure of any such Confidential Information to any other Person, and use
commercially reasonable efforts to ensure that all such Confidential Information
is used only for those purposes specifically authorized herein. Notwithstanding
the foregoing, Confidential Information of a Party hereto may be disclosed by
another Party hereto to any permitted assignee, permitted sublicensee or
permitted subcontractor of either BioSepra, BSA or LTI hereunder (if such
assignee, sublicense or subcontractor accepts and is held subject to
confidentiality obligations no less restrictive than those set forth in this
Section 3.2, provided that such assignee, sublicensee or subcontractor agrees to
not disclose Confidential Information of the initial disclosing Party to any
further party). The obligations set forth in this Section 3.2 shall survive for
a period of ten (10) years from the termination or expiration of this Cross
License Agreement. Without limiting the foregoing, each of BioSepra, BSA and LTI
shall take all reasonable efforts to ensure that each of its respective
employees and agents understands and complies with the provisions of this
Section 3.2 with respect to the Confidential Information of another Party
hereto.
Each of BioSepra, LTI and BSA shall be obligated under this Section 3.2 to
protect the Confidential Information of another Party with the same degree of
care that it uses to protect its own similar Confidential Information, but in
any event, to use not less than a reasonable degree of care.
3.3 ABANDONMENT. If a filing Party (for the purposes of this
Section 3.3 the "Transferor") decides to abandon or to allow to lapse any of its
Patent Rights which have earlier been published, the Transferor shall inform the
other Party (the "Transferee", which for the purposes of this Section 3.3 shall
be LTI if BioSepra is the Transferor, and shall be BioSepra if either BSA or LTI
is the Transferor) at least forty-five (45) days prior to the effective date of
such abandonment or lapse, and the Transferee shall be given the opportunity to
assume responsibility as the filing Party with respect to such Patent Right in
which such case the Patent Right shall become a Patent Right of the Transferee,
subject to the licenses granted to the Transferor hereunder. Upon transfer of a
Party's responsibility for prosecuting, maintaining and enforcing any of its
Patent Rights to the Transferee under the preceding sentence, the Transferor
shall promptly deliver to the Transferee all necessary files related to the
transferred Patent Rights, and all Technology related exclusively thereto, and
Transferor shall take all actions and execute all documents reasonably necessary
for the Transferee to assume the prosecution, maintenance and/or enforcement of
the transferred Patent Rights.
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3.4. PERMITTED DISCLOSURES. Notwithstanding the provisions of
Section 3.2 hereof, each of BioSepra, LTI and BSA may, to the extent necessary,
and subject to the assumption by the intended recipient of obligations of
confidentiality and non-use no less restrictive than those set forth in Section
3.2, disclose and use Confidential Information of another Party hereto,
consistent with the rights of such Party granted hereunder, where such
disclosure is (a) for the purpose of engaging in research and development,
conducting clinical testing and marketing programs, or securing institutional or
government approval to clinically test or market any product, (b) for the
purpose of sharing clinical trial results and data with third parties conducting
clinical trials, (c) for the purpose of securing patent protection for an
invention within the scope of the Improvements or (d) for the purpose of
complying with laws, statute, rules or court order. Notwithstanding the
foregoing, no Party hereto may disclose the Confidential Information of another
Party hereto to a third party, other than a government for approval or patenting
purposes, unless such third party agrees not to disclose such Confidential
Information to any further party. Except as provided herein, BioSepra shall not,
without prior written consent of LTI, which may be withheld at LTI's absolute
discretion, disclose any LTI Technology or LTI Improvements. If BioSepra
requests such consent, LTI agrees to reasonably consider such request, and to
respond timely. Except as provided herein, neither LTI nor BSA shall, without
prior written consent of BioSepra, which may be withheld at BioSepra's absolute
discretion, disclose any BioSepra Improvements. If LTI or BSA requests such
consent, BioSepra agrees to reasonably consider such request, and to respond
timely.
4. DISCLAIMER OF WARRANTY; CONSEQUENTIAL DAMAGES.
4.1 DISCLAIMER OF LTI AND BSA WARRANTY. Nothing in this Cross
License Agreement shall be construed as a representation made or warranty given
by either LTI or BSA that any patents will issue based on applications pending
from time to time within the LTI Technology or LTI Improvements, or that any
such patents which do issue will be valid, or that the practice by BioSepra of
any license granted hereunder, or that the use of any LTI Technology or LTI
Improvement will not infringe the patent or proprietary rights of any other
Person. In addition, BioSepra acknowledges that THE LTI TECHNOLOGY AND LTI
IMPROVEMENTS ARE LICENSED OR SUBLICENSED, AS THE CASE MAY BE, TO BIOSEPRA AS IS,
AND LTI AND BSA EXPRESSLY DISCLAIM AND HEREBY WAIVE, RELEASE AND RENOUNCE ANY
WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO SUCH LTI TECHNOLOGY AND LTI
IMPROVEMENTS, INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
4.2 DISCLAIMER OF BIOSEPRA WARRANTY. Nothing in this Cross
License Agreement shall be construed as a representation made or warranty given
by BioSepra that any patents will issue based on applications pending from time
to time within the BioSepra Improvements, or that any such patents which do
issue will be valid, or that the practice by BSA or LTI of any license granted
hereunder, or that the use of any BioSepra Improvement will not infringe the
patent or proprietary rights of any other Person. In addition, each of BSA and
LTI acknowledges that THE BIOSEPRA IMPROVEMENTS ARE LICENSED OR SUBLICENSED,
AS THE CASE MAY BE, TO BSA AND LTI, RESPECTIVELY, AS IS,
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AND BIOSEPRA EXPRESSLY DISCLAIMS AND HEREBY WAIVES, RELEASES AND RENOUNCES ANY
WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO SUCH BIOSEPRA IMPROVEMENTS,
INCLUDING, WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE.
4.3 INDEMNIFICATION.
a. BioSepra shall indemnify, defend and hold LTI,
BSA, their Affiliates and their respective stockholders, directors, officers,
employees and agents harmless against any liability for infringement of the
intellectual property rights of any third Person, or for injury, death or damage
to property or interest arising from actions by BioSepra, its Affiliates,
sublicensees or the agents or customers of any of the foregoing under this Cross
License Agreement, including but not limited to the manufacture, development,
sale and use of any products based on LTI Technology, LTI Improvements or
BioSepra Improvements or use of the same by BioSepra, its Affiliates,
sublicensees or the agents or customers of any of the foregoing.
b. LTI shall indemnify, defend and hold BioSepra, its
Affiliates, and their respective stockholders, directors, officers, employees
and agents harmless against any liability for infringement of the intellectual
property rights of any third Person, or injury, death or damage to property or
interest arising from actions by LTI, its Affiliates other than BSA, its
sublicensees or the agents or customers of any of the foregoing under this Cross
License Agreement, including but not limited to manufacture, development, sale
and use of any products based on LTI Technology, LTI Improvements or BioSepra
Improvements or use of the same by LTI, its Affiliates other than BSA, its
sublicensees or the agents or customers of any of the foregoing.
c. BSA shall indemnify, defend and hold BioSepra, its
Affiliates, and their respective stockholders, directors, officers, employees
and agents harmless against any liability for infringement of the intellectual
property rights of any third Person, or injury, death or damage to property or
interest arising from actions by BSA, its sublicensees or the agents or
customers of any of the foregoing under this Cross License Agreement, including
but not limited to manufacture, development, sale and use of any products based
on LTI Technology, LTI Improvements or BioSepra Improvements or use of the same
by BSA, its Affiliates other than LTI and the Affiliates of LTI other than BSA,
its sublicensees or the agents or customers of any of the foregoing.
4.4 CONSEQUENTIAL DAMAGES. NO PARTY TO THIS AGREEMENT SHALL BE
ENTITLED TO RECOVER FROM ANOTHER ANY SPECIAL, INCIDENTAL,
CONSEQUENTIAL(INCLUDING BUT NOT LIMITED TO LOSS OF PROFITS) OR PUNITIVE DAMAGES.
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5. ACTUAL OR THREATENED INFRINGEMENT; DEFENSE OF CLAIMS.
(a) In the event a Party becomes aware of any
possible infringement or unauthorized possession, knowledge or use in the Fields
of any intellectual property which is the subject matter of this Cross License
Agreement (in each case, an "Infringement"), that Party shall promptly notify
the other Parties and provide them with full details. LTI and BSA shall each, in
respect of the intellectual property owned by such Party, have the first right
and option, but not the obligation, to prosecute or prevent the Infringement of
any patent claiming subject matter substantially within LTI Technology or LTI
Improvements at its sole expense. In the event LTI and/or BSA elect not to
prosecute or prevent any such Infringement, LTI or BSA, as the case may be,
shall give written notice to BioSepra stating that LTI or BSA, as the case may
be, elects not to prosecute or prevent such Infringement, and BioSepra shall
have the right, but not the obligation, upon written notice to LTI or BSA, as
the case may be, to prosecute or prevent such Infringement at its sole expense.
BioSepra shall keep LTI or BSA, as the case may be, advised of all actions taken
by BioSepra in the prosecution or prevention of any Infringement of LTI
Technology or LTI Improvement, and, in any lawsuit, legal action or legal
proceeding brought by BioSepra to prosecute or prevent Infringement of any LTI
Technology or LTI Improvement, BioSepra shall keep LTI or BSA, as the case may
be, advised of all progress and developments in such lawsuit, legal action or
legal proceeding, and BioSepra shall not (i) consent to any judgement, (ii)
enter into any settlement agreement, or (iii) take any action in such lawsuit,
legal action or legal proceeding that may directly or indirectly relate to or
affect the validity and/or enforceability of any LTI Technology or LTI
Improvements without the consent of LTI or BSA, as the case may be, which
consent shall not be unreasonably withheld. If BioSepra lacks standing to bring
a suit, action or proceeding to prosecute or prevent any such Infringement, and
LTI or BSA has standing to bring such suit, action or proceeding, then LTI or
BSA, as the case may be, shall do so at the request of BioSepra, at BioSepra's
sole expense.
BioSepra shall have the first right and option, but not the obligation, to
prosecute or prevent the Infringement of any patent claiming subject matter
within the BioSepra Improvements. In the event BioSepra elects not to prosecute
or prevent any such Infringement, BioSepra shall give written notice to LTI and
BSA stating that BioSepra elects not to prosecute or prevent such Infringement,
and LTI and BSA shall each have the right, but not the obligation, upon written
notice to BioSepra, to prosecute or prevent such Infringement, at its sole
expense. LTI and BSA shall keep BioSepra advised of all actions taken by LTI or
BSA, as the case may be, in the prosecution or prevention of any Infringement of
BioSepra Improvements, and, in any lawsuit, legal action or legal proceeding
brought by LTI or BSA to prosecute or prevent Infringement of any BioSepra
Improvement, LTI or BSA, as the case may be, shall keep BioSepra advised of all
progress and developments in such lawsuit, legal action or legal proceeding, and
LTI or BSA, as the case may be, shall not (i) consent to any judgement, (ii)
enter into any settlement agreement, or (iii) take any action in such lawsuit,
legal action or legal proceeding that may directly or indirectly relate to or
affect the validity and/or enforceability of any BioSepra Improvements without
the consent of BioSepra, which consent shall not be unreasonably withheld. If
LTI or BSA lacks standing to bring a suit, action or proceeding to prosecute or
prevent any such Infringement, and BioSepra has standing to bring such suit,
action or proceeding, then BioSepra shall do so at the request of LTI or BSA, at
the sole expense of LTI or BSA, as the case may be.
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If a Party determines that it is necessary or desirable for another Party hereto
to join any such suit, action or proceeding, such other Party shall execute all
papers and perform such other acts, at the expense of the Party prosecuting an
Infringement, as may be reasonably required in the circumstances. Each Party
shall bear the full cost of any proceeding or suit it will bring under this
Section 5, and shall have the full right to any recovery from such suit or
settlement. Each Party shall always have the right to be represented by counsel
of its own selection and at its own expense in any suit instituted under this
Section 5 by another Party for Infringement.
b. In any action under this Section 5, the Parties
shall fully cooperate with and assist each other. No suit under this Section 5
relating to an Infringement in the BioSepra Field may be settled by LTI or BSA
without BioSepra's consent, and no suit under this Section 5 relating to an
Infringement in the LTI Field may be settled by BioSepra without LTI's consent.
c. In the event that any action, suit or proceeding
is brought against BioSepra, BSA or LTI, or any Affiliate, licensee or
sublicensee of a Party hereto (the "Defending Party") alleging the infringement
of the intellectual property rights of a third party by reason of the discovery,
development, manufacture, use, sale, importation or offer for sale by the
Defending Party of a product in respect of which the Defending Party is a
licensee or sub-licensee hereunder, the Defending Party will have the sole
obligation to defend itself. The other Party (the "Secondary Party", which for
the purposes of this Section 5c shall mean BioSepra in those instances where the
Defending Party is BSA, LTI or any of their Affiliates, licensees, or
sub-licensees, and either or both, as the context requires, BSA and LTI in those
instances where the Defending Party is BioSepra or any of their Affiliates,
licensees, or sub-licensees) shall have the right to separate counsel at its own
expense in any such action or proceeding. The Parties will cooperate with each
other in the defense of any such suit, action or proceeding. The Parties will
give each other prompt written notice of the commencement of any such suit,
action or proceeding or claim of infringement and will furnish each other a copy
of each non-privileged communication relating to the alleged infringement. No
Party as a Defending Party shall compromise, litigate, settle or otherwise
dispose of any such suit, action or proceeding which involves the use of
Technology or Patent Rights licensed to the Defending Party hereunder without
the advice and prior consent of the Secondary Party, provided that such
Secondary Party shall not unreasonably withhold its consent to any settlement
which does not have a material adverse effect on its business. If the Defending
Party desires that the Secondary Party should join any suit, action or
proceeding pursuant to this Section 5c, which suit, action or proceeding
pertains to Technology or Patent Rights licensed hereunder to the Defending
Party, and the Secondary Party consents in writing to such joinder, the
Defending Party may at its expense, join the Secondary Party as a party to the
suit, action or proceeding, and the Secondary Party so joined shall execute all
documents and take all other actions, including giving testimony, which may
reasonably be required in connection with the prosecution or defense of such
suit, action or proceeding. If as a consequence of such action, suit or
proceeding by a third party claiming that the discovery, development,
manufacture, use or sale by or for the Defending Party of a product in respect
of which the Defending Party is a licensee or sub-licensee hereunder, infringes
such third party's intellectual property rights, the Defending Party is
prohibited or is only allowed in a
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restricted manner or subject to some conditions, financial or other, to
discover, develop, manufacture, use and/or sell such a product, the Parties
shall examine and discuss in good faith the consequences of such prohibition or
restriction or other conditions on this Cross License Agreement and on possible
modifications thereto.
6. NO IMPLIED WAIVERS; RIGHTS CUMULATIVE. No failure on the part of
BioSepra, LTI, or BSA to exercise and no delay in exercising any right, power,
remedy or privilege under this Cross License Agreement, or provided by statute
or at law or in equity or otherwise, shall impair, prejudice or constitute a
waiver of any such right, power, remedy or privilege or be construed as a waiver
of any breach of this Cross License Agreement or as an acquiescence therein, nor
shall any single or partial exercise of any such right, power, remedy or
privilege preclude any other or further exercise thereof or the exercise of any
other right, power, remedy or privilege.
7. FORCE MAJEURE. Each of BioSepra, LTI and BSA shall be excused for
any failure or delay in performing any of its respective obligations under this
Cross License Agreement if such failure or delay is caused by Force Majeure.
8. NOTICES. All notices, requests and other communications to BioSepra,
BSA or LTI hereunder shall be in writing (including telecopy or similar
electronic transmissions), shall refer specifically to this Cross License
Agreement and shall be personally delivered or sent by telecopy or other
electronic facsimile transmission or by registered mail or certified mail,
return receipt requested, postage prepaid, in each case to the respective
address specified below (or to such other address as may be specified in writing
to the other Party hereto):
BioSepra Inc.
000 Xxxxx Xxxxx
Xxxxxxxxxxx, XX 00000
ATTENTION: President
with a copy to:
Mintz, Levin, Xxxx, Xxxxxx
Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
ATTENTION: Xxxxxxx X. Xxxxxx, Esq.
Life Technologies, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
ATTENTION: Director Corporate Development
with a copy to: General Counsel
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BioSepra SA,
C/o Life Technologies, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, XX 00000-0000
ATTENTION: Director Corporate Development
with a copy to: General Counsel
and with a copy to:
Fulbright & Xxxxxxxx L.L.P.
000 Xxxxx Xxxxxx
Xxx Xxxx, XX 00000
ATTENTION: Xxxx Xxxxxx, Esq.
Any notice or communication given in conformity with this Section 8 shall be
deemed to be effective when received by the addressee, if delivered by hand,
telecopy or other electronic facsimile transmission, and three (3) days after
mailing, if mailed.
9. FURTHER ASSURANCES. Each of BioSepra, BSA and LTI agrees to duly
execute and deliver, or cause to be duly executed and delivered, such further
instruments and do and cause to be done such further acts and things, including,
without limitation, the filing of such additional agreements, documents and
instruments, that may be necessary or as a Party hereto may at any time and from
time to time reasonably request in connection with this Cross License Agreement
or to carry out more effectively the provisions and purposes of, or to better
assure and confirm unto such other Party its rights and remedies under, this
Cross License Agreement.
10. SUCCESSORS AND ASSIGNS. The terms and provisions of this Cross
License Agreement shall inure to the benefit of, and be binding upon LTI, BSA,
BioSepra, and their respective successors and assigns. Each of LTI, BSA or
BioSepra may assign or otherwise transfer its rights and interests, and delegate
any of its respective obligations hereunder, pursuant to a merger or
consolidation, sale of stock or sale of all or substantially all of a Party's
assets related to the business to which this Cross License Agreement pertains
without the prior written consent of any other Party hereto. Any attempt to
assign or delegate any portion of this Cross License Agreement in violation of
this Section 10 shall be null and void. Any reference to LTI, BSA or BioSepra
hereunder shall be deemed to include the successors thereto and assigns thereof.
11. AMENDMENTS. No amendment, modification, waiver, termination or
discharge of any provision of this Cross License Agreement, nor consent to any
departure by LTI, BSA or BioSepra therefrom, shall be effective unless the same
shall be in writing specifically identifying this Cross License Agreement and
the provision intended to be amended, modified, waived, terminated or discharged
and signed by LTI, BSA and BioSepra, and each such amendment, modification,
waiver, termination or discharge shall be effective only in the specific
instance and for the specific purpose for which given. No provision of this
Cross License Agreement shall be
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varied, contradicted or explained by any oral agreements, course of dealing or
performance or any other matter not set forth in an agreement in writing and
signed by LTI, BSA and BioSepra.
12. GOVERNING LAW. This Cross License Agreement shall be governed by
and construed in accordance with the laws of the State of Delaware, without
giving effect to the principle of conflicts of laws.
13. SEVERABILITY. If any provision hereof should be held invalid,
illegal or unenforceable in any respect in any jurisdiction, then, to the
fullest extent permitted by law, (a) 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 and (b) such invalidity, illegality or unenforceability shall not
affect the validity, legality or enforceability of such provision in any other
jurisdiction. To the extent permitted by applicable law, each of LTI, BSA and
BioSepra hereby waive any provision of law that would render any provision
hereof prohibited or unenforceable in any respect.
14. HEADINGS. Headings used herein are for convenience only and shall
not in any way affect the construction of, or be taken into consideration
interpreting, this Cross License Agreement.
15. EXECUTION IN COUNTERPARTS. This Cross License Agreement may be
executed in counterparts, each of which counterparts, when so executed and
delivered, shall be deemed to be an original, and all of which counterparts,
taken together, shall constitute one and the same instrument.
16. ENTIRE AGREEMENT. This Cross License Agreement together with any
Schedules and agreements referenced herein, constitutes, on and as of the date
hereof, the entire agreement of LTI, BSA and BioSepra with respect to the
subject matter hereof, and all prior or contemporaneous understandings or
agreements, whether written or oral, between LTI, BSA and BioSepra with respect
to such subject matter are hereby superseded in their entirety.
17. TERMINATION.
a. This Cross License Agreement shall continue unless
and until terminated as set forth below.
b. In the event of material breach of any provision
of this Cross License Agreement, the breaching Party shall have sixty (60) days
after written notice thereof by a non-breaching Party within which to cure such
breach. In the event such breach has not been cured within such period of time,
a non-breaching Party may on notice to the breaching Party terminate this Cross
License Agreement.
c. Any Party may terminate this Cross License
Agreement on notice to a Party who becomes the subject of a petition filed for
relief under any bankruptcy or insolvency law, which is not dismissed within
sixty (60) days of its filing, any general arrangement with its creditors, or
any liquidation, termination or winding up of its business.
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d. This Cross License Agreement may not be terminated
pursuant to either Section 17b or 17c by either BSA or LTI on account of (i)
uncured breach by LTI or BSA, respectively, or (ii) the occurrence of the events
described in Section 17c. by LTI or BSA, respectively.
e. Termination of this Cross License Agreement for
any reason shall not extinguish the obligations of any Party that accrued prior
to the effective date of termination. The obligations and rights of all Parties
under Sections 3.2, 4, 5, 8, 10, and 12 hereof shall survive termination for any
reason.
f. If the Party who has failed to cure a material
breach, or who has suffered the events described in Section 17c., is BioSepra,
the termination of this Agreement shall result in the termination of all rights
granted in Sections 2.1 and 2.2 above. In the event of such termination, the
rights granted to LTI and BSA in section 2.3 shall survive such termination. In
such event, BioSepra shall either promptly return to or dispose of all
Confidential Information of BSA or LTI in any form whatsoever which it may have
in its possession, custody or control (whether direct or indirect), provided
that any such disposition shall be conducted in a manner that protects the
confidentiality of such information.
If the Party who has failed to cure a material breach, or who has suffered the
events described in Section 17c, is BSA or LTI, the termination of this
Agreement shall result in the termination of all rights granted in Section 2.3
above. In the event of such termination, the rights granted to BioSepra in
Sections 2.1 and 2.2 above shall survive such termination. In such event, LTI
and BSA shall either promptly return to or dispose of all Confidential
Information of BioSepra in any form whatsoever which it may have in its
possession, custody or control (whether direct or indirect), provided that any
such disposition shall be conducted in a manner that protects the
confidentiality of such information.
g. No Party shall by reason of the termination of
this Cross License Agreement be liable to another for special, incidental or
consequential damages arising under this Cross License Agreement.
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IN WITNESS WHEREOF, the parties hereto have caused this Cross License
Agreement to be duly executed under seal and delivered as of the date first
above written.
BIOSEPRA INC.
By: /s/ Xxxx-Xxxxx Xxxxx
----------------------------------------
Xxxx-Xxxxx Xxxxx
President and Chief Executive Officer
LIFE TECHNOLOGIES, INC.
By: /s/ C. Xxxx Xxxxxx
----------------------------------------
C. Xxxx Xxxxxx
Vice President-Finance, Chief Financial
Officer, Secretary and Treasurer
BIOSEPRA S.A.
By: /s/ Xxxxxxx Xxxxxx
----------------------------------------
Xxxxxxx Xxxxxx
Director General
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SCHEDULE A
GLOSSARY
"AFFILIATE" shall mean any corporation, firm, partnership or other
entity which directly or indirectly is controlled by or is under common control
with a Party to this Cross License Agreement. "Control" means ownership,
directly or through one or more Affiliates, of fifty percent (50%) or more of
the shares of stock entitled to vote for the election of directors, in the case
of a corporation, fifty percent (50%) or more of the equity interests in the
case of any other type of legal entity, status as a general partner in any
partnership, or any other arrangement whereby a Party controls or has the right
to control the Board of Directors or equivalent governing body of a corporation
or other entity. Notwithstanding the foregoing, an "Affiliate" of LTI or BSA
shall not include The Dexter Corporation and its subsidiaries other than LTI and
LTI's subsidiaries. Notwithstanding the foregoing, an "Affiliate" of BioSepra
shall not include Sepracor Inc. and its subsidiaries other than BioSepra and
BioSepra's subsidiaries.
"BIOSEPRA FIELD" shall mean intracorporeal and "on line" extracorporeal
therapy, or any autologous treatment.
"BIOSEPRA IMPROVEMENTS" shall mean any developments directly relating
to any LTI Technology, including but not limited to variations, extensions,
improvements or enhancements to any LTI Technology that are discovered,
developed or otherwise acquired by BioSepra prior to the termination date set
forth in Section 2.4.
"CONFIDENTIAL INFORMATION" shall mean (1) all LTI Technology and LTI
Improvements disclosed by LTI or BSA to BioSepra and (2) all BioSepra
Improvements disclosed by BioSepra to LTI and/or BSA pursuant to this Cross
License Agreement, provided, however, that Confidential Information shall not
include any LTI Technology, LTI Improvement or BioSepra Improvement which is (a)
independently developed after the Effective Date hereof by the receiving Party
as demonstrated to the reasonable satisfaction of the disclosing Party, (b) in
the public domain at the time of its receipt or thereafter becomes part of the
public domain through no fault of the receiving Party as demonstrated to the
reasonable satisfaction of the disclosing Party, (c) received after the
Effective Date hereof without an obligation of confidentiality from a third
party having the right to disclose such information, (d) released from the
restrictions of Section 3.2 of this Cross License Agreement by the express
written consent of the disclosing Party, or (e) required by law, statute, rule
or court order to be disclosed (the receiving Party shall use reasonable efforts
to provide the disclosing Party the opportunity to obtain confidential treatment
of any such Confidential Information).
"FIELDS" shall mean the LTI Field and the BioSepra Field.
"FORCE MAJEURE" shall mean any act of God, any accident, explosion,
fire, storm, earthquake, flood, drought, peril of the sea, riot, embargo, war or
foreign, federal, state or municipal order of general application seizure,
requisition or allocation, any failure or delay of transportation, shortage of
or inability to obtain supplies, equipment fuel or labor or any other
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circumstances or event beyond the reasonable control of the Party relying upon
such circumstance or event.
"IMPROVEMENTS" shall mean LTI Improvements and the BioSepra
Improvements.
"KNOW-HOW" shall mean originals or copies of laboratory notebooks,
primary data, research records and documentation, research plans, proposals,
conclusions, specification and information, to the extent any of the foregoing
is recorded in any tangible form, including, without limitation, gels,
photographs, printouts, electronic files and paper documents.
"LTI FIELD" shall mean all applications outside of the BioSepra Field.
"LTI IMPROVEMENTS" shall mean any development directly relating to any
LTI Technology, including but not limited to variations, extensions,
improvements or enhancements to any LTI Technology, that is discovered,
developed or otherwise acquired by LTI and/or BSA prior to the termination date
set forth in Section 2.4.
"LTI PATENT RIGHTS" shall mean Patent Rights owned by LTI and/or BSA.
"LTI TECHNOLOGY" shall mean all Technology which (i) was transferred to
LTI in the Asset Transfer, and is owned or controlled by LTI, or under which, as
a result of the Asset Transfer, LTI is licensed or sub-licensed and has the
right to grant licenses, sub-licenses or sub-sub-licenses, as the case may be,
as of the date hereof, or (ii) is owned or controlled by BSA, or under which BSA
is licensed or sub-licensed and has the right to grant licenses, sub-licenses or
sub-sub-licenses, as the case may be, as of the date hereof, including, but not
limited to, the LTI Patent Rights and other rights listed and described in
SCHEDULE 1.
"PATENT RIGHTS" shall mean (a) issued patents and patent applications,
(b) any patent application constituting an equivalent, counterpart, reissue,
extension or continuation (including, without limitation, continuations-in-part,
divisions, and renewals, all letters patent granted thereon, all reissues,
reexamination) of any of the foregoing applications, including pending patent
applications in any country and (c) any patent issued or issuing upon any of the
foregoing applications.
"PERSON" shall mean any individual, partnership, corporation, firm,
association, unincorporated organization, joint venture, trust or other entity.
"TECHNOLOGY" shall mean public and nonpublic technical or other
information, trade secrets, Know-How, processes, formulations, concepts, ideas,
preclinical, clinical, pharmacological or other data and testing results,
experimental methods, or results, descriptions, scientific plans, depictions,
and any other written, printed or electronically stored materials that
constitute or contain any of the foregoing.
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