1
EXHIBIT 10.36
LIMITED ASSIGNMENT AGREEMENT
By and Among
NOVARTIS PHARMACEUTICALS CORPORATION,
NOVEN PHARMACEUTICALS, INC.
and
VIVELLE VENTURES LLC
Dated as of May 1, 1998
2
LIMITED ASSIGNMENT AGREEMENT
LIMITED ASSIGNMENT AGREEMENT dated as of May 1, 1998 (this "Agreement")
by and among Novartis Pharmaceuticals Corporation, a Delaware corporation
("Novartis"), as the successor-in-interest to the Pharmaceuticals Division of
Ciba-Geigy Corporation, a New York corporation ("CIBA"), Vivelle Ventures, LLC,
a Delaware limited liability company ("LLC") and Noven Pharmaceuticals, Inc. a
Delaware corporation ("Noven"). Capitalized terms used but not otherwise defied
herein shall have the respective meanings assigned to such terms in that certain
Supply Agreement dated as of August 31, 1995 by and between Noven and CIBA (the
"Supply Agreement"), attached hereto as Exhibit A.
W I T N E S S E T H:
WHEREAS, Novartis, as successor-in-interest to CIBA, and Noven are
parties to the Supply Agreement, pursuant to which Noven has agreed to supply
Novartis with the Licensed Product in the form of Laminate and System and
Novartis has agreed to purchase annually certain minimum quantities of such
Licensed Product;
WHEREAS, Novartis and Noven have formed LLC for the purpose of creating
a platform to maintain and grow a franchise in women's health, focusing
initially on the manufacture and sale of the 17(beta)-estradiol single active
ingredient in a matrix currently being marketed by Novartis under the trademark
"Vivelle" pursuant to the Restated License Agreement;
WHEREAS, Novartis and Noven have agreed that in connection with the
formation of the joint venture, Novartis shall, as its contribution to LLC,
among other things, make a limited assignment to LLC of its rights and
obligations under the Supply Agreement; and
WHEREAS, LLC desires to obtain the rights under the Supply Agreement
and is willing to assume the obligation to purchase the quantities of Laminate
and System specified in the Supply Agreement;
NOW THEREFORE, in consideration of the agreements and covenants set
forth above and herein, and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereto agree as
follows:
1. Assignment and Assumption. (a) For the term of this Agreement,
Novartis hereby assigns to LLC its rights under Sections 2.11, 4.1, 4.2, 4.3,
4.4, 4.5, 4.6, 5.1, 5.2, 5.3, 5.4, 6.1, 6.2, 6.3 and Article 7 of the Supply
Agreement (the "Assigned Sections").
(b) For the term of this Agreement, LLC hereby accepts such assignment
and assumes and agrees to perform and discharge the duties and obligations of
Novartis arising under the Assigned Sections.
3
2. Consent to Assignment and Assumption; Release. For the term of
this Agreement, Noven hereby consents to the assignment by Novartis of the
rights under the Assigned Sections and the assumption by LLC of the performance,
discharge of duties and obligations arising under the Assigned Sections. For the
term of this Agreement, Noven hereby releases Novartis of all its duties and
obligations (including, without limitation, its obligation to purchase the
Annual Purchase Minimum or pay for any Laminate and/or System purchased by LLC)
arising under the Assigned Sections.
3. Retention of Remaining Rights and Obligations. Notwithstanding
the foregoing, Novartis retains all rights and obligations not assigned to LLC
hereby.
4. Canada. Subject to Section 2 of that certain Sublicense
Agreement dated as of May 1, 1998 by and among Novartis, Noven and LLC (the
"Sublicense Agreement"), the parties agree that for purpose of sale to Novartis'
Canadian Affiliate, Novartis may purchase Vivelle (as that term is defined in
that certain Operating Agreement of Vivelle Ventures LLC dated as of May 1, 1998
by and between Novartis and Noven (the "Operating Agreement")) from LLC at the
price at which LLC purchases Vivelle from Noven.
5. Absolute Assignment of All Rights and Obligations. In the
event that Noven purchases all of Novartis' Interest (as that term is defined in
the Operating Agreement) in LLC pursuant to Section 9.5 of the Operating
Agreement, Novartis, Noven and LLC shall execute an assignment agreement
assigning all of Novartis' rights and obligations under the Supply Agreement to
LLC and releasing Novartis from its obligations under the Supply Agreement.
6. Indemnification. LLC agrees and warrants to indemnify, defend
and hold harmless Noven and Novartis from and against any and all claims,
damages, expenses, attorneys' fees, settlements, and judgments arising out of
any injury or damage to a third party alleged to be caused by the Laminate or
System supplied by Noven to LLC or manufactured for or by LLC; provided, however
that Noven and/or Novartis notifies LLC within twenty (20) days of receipt of a
claim or action, fully cooperates with LLC in the defense of such claim or
action, and permits LLC to control the defense and settlement of such claim or
action. Notwithstanding the above, LLC does not warrant and shall not be liable
to indemnify Noven from and against any claims, damages, expenses, attorneys'
fees, settlements and judgments arising out of any injury or damage to a third
party caused by latent defects in the Laminate or System caused by the
negligence or willful misconduct on the part of Noven, for which Noven shall
have the right to control the defense and settle such claim or action. Noven
agrees and warrants to indemnify and hold harmless LLC from and against any and
all claims, damages, expenses, attorneys' fees, settlements and judgments for
personal injury to a third party caused by latent defects in the Laminate or
System caused by the negligence or willful misconduct of Noven. This provision
shall survive the expiration or termination of this Agreement.
7. Recalls. If an authorized government agency of the United
States or any country or territory based on requirements specifically notified
to Noven by LLC shall seize any Laminate and System or if LLC deems it necessary
to initiate a voluntary recall for any commercially reasonable reason, LLC shall
immediately notify Noven of such seizure or recall and
2
4
shall consult with Noven regarding the timely compliance with all pertinent
state or federal regulations pertaining thereto. Furthermore, each party shall
make a permanent and complete record of all costs incurred thereby, a copy of
which shall be delivered to the other party as soon after the completion of such
recall or seizure as practically may be done. When the cause or reason of said
recall or seizure resides in the negligent failure of Noven to manufacture in
accordance with the Specifications or applicable, notified government rules and
regulations, or in the failure of said product to maintain stability for the
period described in the product labeling, Noven shall reimburse LLC for all
reasonable costs incurred by LLC in effecting such recall or seizure, including
all reasonable credits extended to LLC's customers as a result thereof. When the
cause or reason for said recall or seizure is anything other than that set forth
in the preceding sentence, including, but not limited to, failure by other than
Noven to store, transport or care for the Laminate and System, LLC shall bear
all costs of such recall or seizure and indemnify Noven therefrom including
reimbursement for all reasonable costs incurred by Noven in effecting such
recall or seizure.
8. Term; Termination. This Agreement is effective upon the date
of its execution by the parties hereto and shall continue in effect until the
earlier to occur of the following events:
(a) the dissolution of LLC as provided in Article X of the
Operating Agreement dated as of May 1, 1998 between Novartis and Noven;
(b) the termination of the Supply Agreement; or
(c) the termination of the Restated License Agreement.
9. Obligations upon Termination. Except as otherwise agreed by
the parties, within thirty (30) days of the effective date of the expiration or
any termination of this Agreement, LLC and any Supplier in possession of
Know-How shall cease to use and deliver to Noven, upon written request, all
Know-How, to the extent that such use is not permitted by the License Agreement
except for any documents or records which either LLC or the Supplier is required
to retain by law, and Noven shall do the same with respect to any LLC know-how
in its possession. Noven shall deliver to LLC, at LLC's request and expense, all
Laminate, System and preprinted packaging, labeling and stock materials which
are in the possession of Noven, for which LLC shall be obligated to make payment
upon delivery.
10. Notices. Any notice or communication required or permitted to
be given or made under this Agreement by one of the parties hereto shall be in
writing and shall be deemed to have been sufficiently given or made for all
purposes if mailed by certified mail, postage prepaid, addressed to such other
party at its respective address as follows:
(a) If to Noven, to:
Noven Pharmaceuticals, Inc.
00000 X.X. 000xx Xxxxxx
Xxxxx, XX 00000
3
5
Attention: Xx. Xxxxxx X. Xxxxxxx, President and Chief
Executive Officer
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
with a copy to:
Xxxxx & Lardner
0000 X Xxxxxx, X.X.
Xxxxx 000
Xxxxxxxxxx, X.X. 00000
Attention: Xxxxx Xxxxx, Esq.
or to such other person or address as Noven shall furnish to
the other parties hereto in writing.
(b) If to Novartis, to:
Novartis Pharmaceuticals Corporation
00 Xxxxx 00
Xxxx Xxxxxxx, XX 00000
Attention: Office of the CEO
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
with copies to:
Novartis Pharmaceuticals Corporation
00 Xxxxx 00
Xxxx Xxxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxx, Esq., Legal Department
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
and
White & Case LLP
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx X. Xxxxx, Xx., Esq.
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
or to such other person or address as Novartis shall furnish
to the other parties hereto in writing.
4
6
(c) If to LLC, to:
Vivelle Ventures LLC
c/o Noven Pharmaceuticals, Inc.
00000 X.X. 000xx Xxxxxx
Xxxxx, XX 00000
Attention: Xx. Xxxxxx X. Xxxxxxx, President
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
with copies to:
Novartis Pharmaceuticals Corporation
00 Xxxxx 00
Xxxx Xxxxxxx, XX 00000
Attention: Xxxxxx Xxxxxxx, Esq., Legal Department
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
and
White & Case LLP
0000 Xxxxxx xx xxx Xxxxxxxx
Xxx Xxxx, XX 00000
Attention: Xxxxxxx X. Xxxxx, Xx., Esq.
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
or to such other person or address as LLC shall furnish to the other
parties hereto in writing.
11. Force Majeure. Neither party shall be responsible or liable to
the other hereunder for failure or delay in performance of this Agreement due to
any war, fire, accident or other casualty, or any labor disturbance or act of
God or the public enemy, or any other unforeseeable contingency beyond such
party's control. In addition, in the event of the applicability of this
Paragraph, the party affected by such force majeure shall immediately use its
best efforts to eliminate, cure and overcome any of such causes and resume
performance of its obligations.
12. Assignment. This Agreement and all rights and obligations
hereunder are personal to the parties hereto and may not be assigned, other than
to Affiliates of Novartis, without the express prior written consent of the
other. Any assignment or attempt at same in the absence of such prior written
consent shall be void and without effect.
13. Applicable Law. This Agreement shall be construed, and the
rights of the parties determined, in accordance with the laws of the State of
New York without regard to choice of law principles of the State of New York.
5
7
14. Severability. If any one or more of the provisions of this
Agreement shall be held to be invalid, illegal or unenforceable, the validity,
legality or enforceability of the remaining provisions hereof shall not in any
way be affected or impaired thereby. In the event any provisions shall be held
invalid, illegal or unenforceable the parties shall use best efforts to
substitute a valid, legal and enforceable provision, which insofar as possible,
implements the purposes hereof. The same principle shall apply in respect of the
filling of any contractual gap.
15. Supply Agreement. Unless otherwise specified herein, nothing
contained in this Agreement shall affect the rights and obligations of the
parties under the Supply Agreement or the Restated License Agreement, and the
terms and conditions of the Supply Agreement and the Restated License Agreement
shall remain in full force and effect.
16. No Waiver. The failure of any party hereto at any time or
times to require performance of any provisions hereof shall in no manner affect
its right to enforce such provision at a later time. No waiver by any party
hereto of any condition nor the breach of any term, covenant or representation
contained in this Agreement whether by conduct or otherwise in any one or more
instances shall be deemed to be or construed as a further or continuing waiver
of such condition or breach or a waiver of any other condition or deemed to be
or construed as the breach of any other term, covenant or representation in this
Agreement.
17. Draftsmanship. The parties acknowledge and agree that this
Agreement is the product of extensive negotiation and neither party will be
deemed to have drafted this Agreement.
18. Entire Agreement. This Agreement among the parties made on the
date of execution hereof and Section 2 of the Sublicense Agreement, constitute
the entire understanding among the parties relating to the subject matter
hereof, and no amendment or modification to this Agreement shall be valid or
binding upon the parties unless made in writing and signed by the
representatives of such parties.
19. Counterparts. This Agreement and any amendments hereto may be
executed in one or more counterparts, each of which shall be deemed an original,
but all of which together will constitute one and the same instrument. Delivery
of an executed counterpart of a signature page to this Agreement by telecopier
shall be as effective as delivery of a manually executed counterpart of this
Agreement.
6
8
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
written above.
NOVARTIS PHARMACEUTICALS CORPORATION
By: /s/ Xxxxx X. Xxxxxx
---------------------------------------------
Title: President and Chief Executive Officer
NOVEN PHARMACEUTICALS, INC.
By: /s/ Xxxxxx Xxxxxxxxx
---------------------------------------------
Title: Chairman
VIVELLE VENTURES LLC
By: /s/ Xxxxxx X. Xxxxxxx
---------------------------------------------
Title: President
