EXHIBIT 10.1
TERMINATION AGREEMENT
THIS TERMINATION AGREEMENT (this "Agreement") is entered into as of the
19th day of November 2008, by and between Ivivi Technologies, Inc., a New Jersey
corporation ("Ivivi"), and Allergan Sales, LLC, a Delaware limited liability
company and successor in interest to Inamed Medical Products Corporation, and
its wholly-owned subsidiary, Allergan USA, Inc., a Delaware corporation
(collectively, "Allergan").
W I T N E S S E T H:
WHEREAS, Ivivi and Inamed Medical Products Corporation previously
entered into an Exclusive Distribution Agreement, dated as of November 9, 2006,
pursuant to which, among other things, Ivivi granted Allergan certain rights to
distribute and sell the pulsed electromagnetic field generating device commonly
known as SofPulse(R) (the "Distribution Agreement"); and
WHEREAS, each of Ivivi and Allergan desires to terminate the
Distribution Agreement, upon and subject to the terms and conditions specified
herein.
NOW, THEREFORE, in consideration of the conditions and mutual covenants
set forth herein, and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties to this Agreement
hereby agree as follows:
1. TERMINATION OF DISTRIBUTION AGREEMENT. Effective as of the date of
this Agreement, the Distribution Agreement is hereby terminated in all respects
and except as set forth in the immediately succeeding sentence, the Distribution
Agreement shall be null and void and of no effect whatsoever, and no party to
the Distribution Agreement shall have any further right, liability, or
obligation thereunder. Notwithstanding the termination of the Distribution
Agreement, the provisions of Article 1 (Definitions) of the Distribution
Agreement shall survive the termination of the Distribution Agreement solely for
purposes of this Agreement; the provisions of Article 12 (Confidential
Information) and Section 16.13 (Press Releases and Announcements) of the
Distribution Agreement shall survive the termination of the Distribution in
accordance with Section 4 of this Agreement; the provisions of Section 7.3
(Technical Support) of the Distribution Agreement shall survive the termination
of the Distribution Agreement until the first anniversary of the date hereof;
Article 8 (Product Warranties) of the Distribution Agreement shall survive the
termination of the Distribution Agreement; and the provisions of certain
sections of Article 14 (Indemnification; Insurance Requirements) of the
Distribution Agreement shall survive the termination of the Distribution
Agreement in accordance with Section 6 of this Agreement. Capitalized terms
used, but not defined herein, shall have the meanings ascribed to them in the
Distribution Agreement.
2. REPURCHASE OF INVENTORY.
(a) Allergan hereby agrees to provide the Product in its
possession to Ivivi, estimated and identified on SCHEDULE A attached hereto
(collectively, the "INVENTORY") in Irvine, California, which Product was
initially delivered to Allergan by Ivivi. Promptly following the execution and
delivery of this Agreement, Allergan shall return to Ivivi the Inventory in
exchange for $450,000 (the "INVENTORY REPURCHASE PRICE") payable in immediately
available funds, as more specifically set forth in this Section 2.
(b) Within five (5) business days of the date of this
Agreement, Ivivi shall pay the Inventory Repurchase Price in immediately
available funds by wire transfer to the bank account designated in writing by
Allergan. Within 20 business days of the date of this Agreement, Allergan shall
ship the Inventory from Irvine, California (the "ALLERGAN SHIPPING POINT") to
the location designated in writing by Ivivi (the "IVIVI DESTINATION POINT").
Ivivi shall pay the reasonable and customary costs of such shipping and the risk
of loss for the Inventory shall pass to Ivivi when the Inventory leaves the
Allergan Shipping Point. The parties shall cooperate to obtain commercially
reasonable rates for such shipping costs. All Inventory delivered by Allergan to
Ivivi shall be suitably packed for surface or air shipment, in Ivivi's sole
discretion, marked for shipment to the Ivivi Destination Point.
3. THIRD-PARTY DISTRIBUTORS. Ivivi hereby agrees that during the period
commencing on the date hereof and ending on the 180th day immediately following
the date hereof, Ivivi shall not enter into a distribution agreement with any
third-party distributor for the distribution by such distributor of the Product
in the Field in the United States.
4. CONFIDENTIAL INFORMATION; RELEASE OF ESCROW DEPOSIT.
(a) Notwithstanding anything contained herein to the contrary,
the provisions of Article 12 (Confidential Information) and Section 16.13 (Press
Releases and Announcements) of the Distribution Agreement shall survive the
termination of the Distribution Agreement until the fifth anniversary of the
date hereof, and each of Ivivi and Allergan, on behalf of themselves and their
respective directors, officers, affiliates, employees, and agents, hereby ratify
and adopt and agree to continue to comply with provisions contained in Article
12 (Confidential Information) and Section 16.13 (Press Releases and
Announcements) of the Distribution Agreement, as though such provisions were
fully incorporated herein. Promptly following the execution and delivery of this
Agreement, each of Ivivi and Allergan shall deliver to the other party or
destroy all Confidential Information of the other party, including, without
limitation, materials, samples and documents of the other party, subject to
either party retaining a copy of the other party's Confidential Information
solely as may be required by law.
(b) Promptly following the execution and delivery of this
Agreement, the Escrow Deposit shall be released to Ivivi and the parties hereto
shall execute any and all documents, consents and instruments and take any and
all actions and do any and all things reasonably necessary and appropriate to
effectuate such release.
5. INTELLECTUAL PROPERTY.
(a) The parties hereto hereby acknowledge and agree that
without limiting or restricting in any way any of Ivivi's right, title and
interest in and to any of its Intellectual Property whatsoever, the Product, the
Patents and the Ivivi Intellectual Property, including all derivatives,
Improvements and documentation thereof, that were solely conceived, fixed in a
tangible medium of expression or otherwise developed, invented or reduced to
practice by Ivivi or its Affiliates during the term of the Distribution
Agreement are the proprietary property of Ivivi or its licensors, and exclusive
title to such property shall remain with Ivivi or its licensors, after
termination of the Distribution Agreement.
(b) The parties hereto hereby acknowledge and agree that
without limiting or restricting in any way any of Allergan's right, title and
interest in and to any of its Intellectual Property whatsoever, Allergan shall
retain sole title to, and ownership of, all Allergan products, Allergan's
Intellectual Property and improvements thereon, all derivative works of Allergan
products, Allergan's Intellectual Property and improvements and all proprietary
rights therein, that were solely conceived, fixed in a tangible medium of
expression or otherwise developed, invented or reduced to practice by Allergan
or its Affiliates during and after termination of the Distribution Agreement.
The parties agree that Allergan shall retain sole ownership of information
regarding customers, distributors, sublicensees and subdistributors of the
Product acquired under the Distribution Agreement, which information shall be
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treated as confidential pursuant to Article 12 of the Distribution Agreement
(which shall survive the termination of the Distribution Agreement in accordance
with Section 4). The parties further agree that works that were created,
marketed or bundled with the Product by Allergan, during the term of the
Agreement, which works do not infringe the Patents, are the proprietary property
of Allergan or its licensors, and exclusive title to such property shall remain
with Allergan or its licensors, after termination of the Distribution Agreement.
(c) The parties hereto hereby acknowledge and agree that from
and after the date hereof, Ivivi shall not use any of (i) Allergan's name,
subject to Section 16.13, (ii) Allergan's marks or (iii) sales and/or
promotional materials conceived or developed by Allergan or its Affiliates or
agents in connection with the Distribution Agreement.
6. INDEMNIFICATION. Notwithstanding anything to the contrary contained
herein, the provisions of Sections 14.1, 14.3, 14.4, 14.6, 14.7 and 14.8 of the
Distribution Agreement shall survive the termination of the Distribution
Agreement; PROVIDED, HOWEVER, that Ivivi's obligation to indemnify, defend and
hold harmless the Allergan Indemnified Parties for any claims, losses, damages,
liabilities, causes of action, suits, costs and expenses incurred by the
Allergan Indemnified Parties under Section 14.1 of the Distribution Agreement
shall be limited solely to third-party claims arising out of or related to
matters expressly set forth in clauses (ii) through (v) of Section 14.1 of the
Distribution Agreement that relate to Product sold or promoted by Allergan in
accordance with the Distribution Agreement prior to the termination thereof.
Each of Ivivi and Allergan hereby ratify and adopt and agree to continue to
comply with the provisions of Sections 14.1, 14.3, 14.4, 14.6, 14.7 and 14.8 of
the Distribution Agreement, as modified by this Section 6, as though such
provisions were fully incorporated herein.
7. REPRESENTATIONS AND WARRANTIES.
(a) Ivivi hereby represents and warrants to Allergan that: (i)
Ivivi is a corporation duly organized, validly existing and in good standing
under the laws of the state of its formation; (ii) Ivivi has all requisite
corporate power and authority to execute, deliver and perform its obligations
under this Agreement; (iii) the execution, delivery and performance by Ivivi of
this Agreement and the consummation by Ivivi of the transactions contemplated
hereby has been duly authorized by all necessary action of Ivivi; and (iv) this
Agreement constitutes valid and binding obligations of Ivivi, enforceable
against Ivivi in accordance with its terms, except as may be limited by
bankruptcy, insolvency, moratorium, reorganization and other laws affecting the
enforcement of creditors' rights generally, and by general principles of equity.
(b) Allergan hereby represents and warrants to Ivivi that: (i)
Allergan is a corporation duly organized, validly existing and in good standing
under the laws of the state of its formation; (ii) Allergan has all requisite
corporate power and authority to execute, deliver and perform its obligations
under this Agreement; (iii) the execution, delivery and performance by Allergan
of this Agreement and the consummation by Allergan of the transactions
contemplated hereby has been duly authorized by all necessary action of
Allergan; and (iv) this Agreement constitutes valid and binding obligations of
Allergan, enforceable against Allergan in accordance with its terms, except as
may be limited by bankruptcy, insolvency, moratorium, reorganization and other
laws affecting the enforcement of creditors' rights generally, and by general
principles of equity.
8. MUTUAL RELEASE.
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(a) In consideration of the conditions and mutual covenants
set forth herein, and other good and valuable consideration, Ivivi hereby
releases and discharges Allergan and its agents, employees, officers, directors,
shareholders, subsidiaries, affiliates, partners, independent contractors,
predecessors, successors, administrators, assigns and legal representatives and
any other parties claiming by, through, or under Allergan, whether or not named
herein (collectively, "ALLERGAN PARTIES"), from any and all actions, charges,
complaints, controversies, demands, causes of action, suits, rights, judgments
and/or claims whatsoever, both in law and in equity, for debts, sums of money,
commissions, fees and costs, attorneys fees, losses, penalties, damages,
arising, directly or indirectly, out of any promise, agreement, offer letter,
contract, understanding, tort, or applicable law (whether statutory, common law,
regulatory or otherwise, local, state, federal or otherwise), whether arising
from the Distribution Agreement or by reason of any other matter, cause or thing
whatsoever from the beginning of time through and including the date of this
Agreement (collectively, "CLAIMS"), whether now existing or not, known or
unknown, and without regard to whether such liability may be direct, indirect or
contingent upon the happening of some event or liability. In furtherance of, but
without limiting, the foregoing, Ivivi waives the right, and covenants not to,
xxx, institute, or cooperate in the institution, commencement, filing, or
prosecution of any Claims against the Allergan Parties.
(b) Subject to Section 6 of this Agreement, in consideration
of the conditions and mutual covenants set forth herein, and other good and
valuable consideration, Allergan hereby releases and discharges Ivivi and its
agents, employees, officers, directors, shareholders, subsidiaries, affiliates,
partners, independent contractors, predecessors, successors, administrators,
assigns and legal representatives and any other parties claiming by, through, or
under Allergan, whether or not named herein (collectively, "IVIVI PARTIES"),
from any and all Claims, whether now existing or not, known or unknown, and
without regard to whether such liability may be direct, indirect or contingent
upon the happening of some event or liability. In furtherance of, but without
limiting, the foregoing, Allergan waives the right, and covenants not to, xxx,
institute, or cooperate in the institution, commencement, filing, or prosecution
of any Claims against the Ivivi Parties.
(c) Notwithstanding anything contained herein to the contrary,
the release and discharge by each of the parties hereto pursuant to this Section
8, does not constitute a release or discharge of Claims arising out of or
relating to the parties' undertakings in this Agreement or a breach by either
party of this Agreement or a release or discharge of Claims arising out of or
relating to the parties' undertakings in those provisions of the Distribution
Agreement that survive the termination thereof or a breach by either party of
such provisions.
9. ENTIRE AGREEMENT; AMENDMENT. This Agreement, including Schedule A
hereto, constitutes the entire agreement among the parties with respect to the
matters set forth herein, and merges all prior discussions between or among the
parties and supercedes any prior agreement (whether written or oral) with
respect to the subject matter herein. This Agreement may not be modified or
amended except in writing, signed by both parties.
10. GOVERNING LAW. This Agreement shall be governed by, and interpreted
and construed in accordance with the laws of the State of California, without
reference to rules of conflicts or choice of laws.
11. JURISDICTION AND VENUE. Each of the parties hereto irrevocably
submits to the exclusive jurisdiction of the courts of the State of California
located in the County of Orange and the United States District Court for the
Southern District of California for the purpose of any suit, action, proceeding
or judgment relating to or arising out of this Agreement and the transactions
contemplated hereby. Service of process in connection with any such suit, action
or proceeding may be served on each party hereto anywhere in the world by the
same methods as are specified for the giving of notices under this Agreement.
Each of the parties hereto (i) irrevocably consents to the jurisdiction of any
such court in any such suit, action or proceeding and to the laying of venue in
such court and (ii) irrevocably waives, and agrees not to assert, by way of
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motion, as a defense, or otherwise, in any such suit, action or proceeding, any
claim that it is not subject personally to the jurisdiction of the above named
court, that its property is exempt or immune from attachment or execution
(except as protected by applicable law), that the suit, action or proceeding is
brought in an inconvenient forum, that the venue of the suit, action or
proceeding is improper or that this Agreement or the subject matter hereof may
not be enforced in or by such court, and hereby waives and agrees not to seek
any review by any court of any other jurisdiction which may be called upon to
grant an enforcement of the judgment of any such court. Each of the parties
hereto agrees that its, his or her submission to jurisdiction and its, his or
her consent to service of process by mail is made for the express benefit of the
other parties hereto. Final judgment against any party hereto in any such
action, suit or proceeding may be enforced in other jurisdictions by suit,
action or proceeding on the judgment, or in any other manner provided by or
pursuant to the laws of such other jurisdiction.
12. NOTICES. All notices, requests, claims, demands and other
communications hereunder shall be in writing and shall be given (and shall be
deemed to have been duly given upon receipt) by delivery in person, by cable,
telegram, facsimile or telex, or by registered or certified mail (postage
prepaid, return receipt requested), to the other party at the following address
(or at such other address for which such party gives notice hereunder):
If to Allergan: Allergan Sales, LLC
0000 Xxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: General Counsel
Facsimile No.: (000) 000-0000
WITH A COPY TO:
Allergan, Inc.
0000 Xxxxxx Xxxxx
Xxxxxx, XX 00000
Attn: General Counsel
Facsimile No.: (000) 000-0000
If to Ivivi: Ivivi Technologies, Inc.
000 Xxxxxxxx Xxxxx Xxxx
Xxxxxxxx, XX 00000
Attn: President and Chief Executive Officer
Facsimile No.: (000) 000-0000
WITH A COPY TO:
Xxxxxxxxxx Xxxxxxx PC
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxx, Xxx Xxxxxx 00000
Attn: Xxxxxx X. Xxxxxxxx, Esq.
Facsimile No.: (000) 000-0000
13. COUNTERPARTS; FACSIMILE. This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original and all of which,
taken together, shall constitute one instrument. For purposes hereof, a
facsimile copy of this Agreement, including the signature pages hereto, shall be
deemed to be an original.
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14. NO WAIVER; AMENDMENT. No waiver of any term or condition of this
Agreement shall be valid or binding on any party unless agreed to in writing by
the party to be charged. The failure of either party to enforce at any time any
of the provisions of the Agreement, or the failure to require at any time
performance by the other party of any of the provisions of this Agreement, shall
in no way be construed to be a present or future waiver of such provisions, nor
in any way affect the validity of either party to enforce each and every such
provision thereafter. This Agreement may not be amended or modified except by
the written agreement of the parties. All purchase orders are subject to the
terms and conditions of this Agreement, and any attempt by such purchase order
to alter or modify the terms and conditions of this Agreement shall be void.
15. PARTIAL INVALIDITY. Whenever possible, each provision of this
Agreement shall be interpreted in such manner as to be effective and valid under
applicable law, but if any provision of this Agreement is held to be invalid by
a court of competent jurisdiction, then the remaining provisions shall remain,
nevertheless, in full force and effect. The parties agree to renegotiate in good
faith, or instruct the court to rewrite, any term held invalid and to be bound
by the mutually agreed substitute provision in order to give the most
approximate effect intended by the parties.
16. HEADINGS; NO STRICT CONSTRUCTION. The headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. Any article, section, recital,
exhibit, schedule and party references are to this Agreement unless otherwise
stated. No party, nor its counsel, shall be deemed the drafter of this Agreement
for purposes of construing the provisions of this Agreement, and all provisions
of this Agreement shall be construed in accordance with their fair meaning, and
not strictly for or against any party.
17. ASSIGNMENT. This Agreement shall be binding upon and shall inure to
the benefit of the parties and their respective permitted successors and assigns
and is not intended to confer upon any other person or entity any rights or
remedies hereunder; provided, however, that no party may assign this Agreement
without the prior written consent of the other party. Notwithstanding the
foregoing, Allergan may assign this Agreement, without the prior written consent
of Ivivi, to an Affiliate or affiliate (as such term is defined under the
federal securities laws). Prior to and promptly after any assignment not
requiring consent of the other party, the assigning party shall give the other
party notice of the assignment.
18. THIRD PARTY BENEFICIARIES. Nothing in this Agreement, express or
implied, is intended to confer upon any Person other than the parties to this
Agreement any rights or remedies under or by reason of this Agreement.
19. FURTHER ASSURANCES. The parties hereto shall execute any and all
documents, consents and instruments and take any and all actions and do any and
all things reasonably necessary and appropriate to effectuate the purposes and
intent of this Agreement.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the undersigned have executed this Termination
Agreement as of the date first written above.
IVIVI TECHNOLOGIES, INC.
By: /s/ XXXX X. XXXXXXXXX
------------------------------
Name: Xxxx X. Xxxxxxxxx
Title: Chief Financial Officer
ALLERGAN SALES, LLC
By: /s/ XXXXXX X. XXXXX
------------------------------
Name: Xxxxxx X. Xxxxx
Title: Vice President
ALLERGAN USA, INC.
By: /s/ XXXXXX X. XXXXX
------------------------------
Name: Xxxxxx X. Xxxxx
Title: Vice President
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SCHEDULE A
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INVENTORY
Comp Stor
Code Plnt Loc. Material Group Val Class Material Number Material Description Total Quantity
129 2200 INVENTORY 7920 22
SOFPULSE SOFPULSE, 1 COIL, 5-PACK 1,562
SOFPULSE/DUO SOFPULSE DUO, 2 COILS, 5-PACK 2,360
129 2200 SAMPLES 7920 22
S-SOFPULSE SOFPULSE, 1 COIL (SAMPLE) 990
SOFPULSE DUO, 2 COILS (SAMPLE)
S-SOFPULSE/DUO 1,177
129 2300 INVENTORY 7920 22
SOFPULSE SOFPULSE, 1 COIL, 5-PACK 3
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