Settlement and License Agreement Sample Contracts

Horizon Pharma Plc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (November 7th, 2018)

This Confidential Settlement And License Agreement (the “Settlement Agreement”) is entered into by and among HORIZON THERAPEUTICS, LLC, a corporation organized and existing under the laws of the State of Delaware with a principal place of business at 150 S. Saunders Road, Lake Forest, Illinois, 60045 (“Plaintiff”) and PAR PHARMACEUTICAL, INC. (“Par”), a corporation organized and existing under the laws of New York with a principal place of business at One Ram Ridge Road, Chestnut Ridge, NY 10977 (each individually a “Party”, collectively, the “Parties”), and made effective as of the date upon final execution of the Settlement Agreement by an authorized representative of each Party (the “Effective Date”).

Conformis Inc – Confidential Materials omitted and filed separately with the Securities and Exchange Commission. Double asterisks denote omissions. EXECUTION VERSION SETTLEMENT AND LICENSE AGREEMENT This Settlement and License Agreement (this “Settlement Agreement”) is entered into as of September 14, 2018 (the “Effective Date”) by and between Smith & Nephew, Inc., a Delaware corporation with its principal place of business at 150 Minuteman Road, Andover, MA 01810 (“Smith & Nephew”) and Conformis, Inc., a Delaware corporation with its principal place of business at 600 Technology Park Drive, Billerica, Massac (November 5th, 2018)
Avista Healthcare Public Acquisition Corp. – Avista Healthcare Public Acquisition Corp. has requested that portions of this document be accorded confidential treatment pursuant to Rule 406 of the Securities Act of 1933, as amended. SETTLEMENT AND LICENSE AGREEMENT Confidential materials omitted and filed separately with the Securities and Exchange Commission. Triple asterisks [***] denote omissions. (October 9th, 2018)

This Settlement and License Agreement (“Agreement”) is effective as of the date it is last signed (“Effective Date”), including the releases attached to it as Exhibit B and Exhibit C, by each of the following (each a “Party” and collectively, the “Parties”):

Viveve Medical, Inc. – Settlement and License Agreement (August 9th, 2018)

This confidential agreement (the “Agreement”) is made as of the date of full execution hereof (the “Effective Date”) by and between Viveve, Inc., a corporation organized and existing under the laws of the State of Delaware, having its principal place of business at 345 Inverness Drive South, Suite 250, Englewood, Colorado (“Viveve”), and ThermiGen LLC and ThermiAesthetics LLC, limited liability companies organized and existing under the laws of the State of Texas, having their principal place of business at at 3131 West Royal Lane, Suite 100, Irving, Texas 75063 (collectively, “ThermiGen”), and Dr. Red Alinsod, an individual having a principal place of business at 31852 Coast Highway, Suite 203, Laguna Beach, California, (collectively with ThermiGen, “Defendants”), each a “Party” and, collectively, the “Parties”;

Horizon Pharma Plc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (August 8th, 2018)

Appellees Lupin Ltd. and Lupin Pharmaceuticals, Inc. respectfully move to withdraw as Appellees and named parties from this appeal. Appellant Horizon Therapeutics, LLC consents to the withdrawal. Appellees’ withdrawal is appropriate because the parties have reached a confidential settlement agreement.The parties have agreed to bear their own costs.

Immersion Corp – SETTLEMENT AND LICENSE AGREEMENT (July 31st, 2018)

This Settlement and License Agreement (“Agreement”) is made as of January 26, 2018 (“Effective Date”) between Apple Inc., a California corporation (“Apple”) and Immersion Corporation, a Delaware corporation (“Immersion”). As used herein, “Party” refers to either Immersion or Apple, and “Parties” refers to Immersion and Apple collectively.

Progenics Pharmaceuticals Inc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (May 31st, 2018)

This Confidential Settlement And License Agreement (the “Settlement Agreement”) is made effective as of May 25, 2018 (the “Effective Date”) by and among

Progenics Pharmaceuticals Inc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (May 11th, 2018)

This Confidential Settlement And License Agreement (the “Settlement Agreement”) is made effective as of May 10, 2018 (the “Effective Date”) by and among Valeant Pharmaceuticals International, inc., a Canadian corporation with its United States headquarters at 400 Somerset Corporate Boulevard, Bridgewater, New Jersey 08807 (“Valeant”), SALIX PHARMACEUTICALS, INC., a California corporation with its principal place of business at 8510 Colonnade Center Drive, Raleigh, North Carolina 27615 (“Salix”), PROGENICS PHARMACEUTICALS, INC., a Delaware corporation with its principal place of business at 777 Old Saw Mill River Road, Tarrytown, New York 10591 (“Progenics”), and Wyeth LLC, a Delaware limited liability company with its principal place of business at 235 East 42nd Street, New York, New York 10017 (“Wyeth”) (Wyeth, collectively with Valeant, Salix and Progenics, “Plaintiffs”) and PAR STERILE PRODUCTS, LLC (“Par Sterile”), a Delaware limited liability company, with a place of business at 6

Immersion Corp – SETTLEMENT AND LICENSE AGREEMENT (May 11th, 2018)

This Settlement and License Agreement (“Agreement”) is made as of January 26, 2018 (“Effective Date”) between Apple Inc., a California corporation (“Apple”) and Immersion Corporation, a Delaware corporation (“Immersion”). As used herein, “Party” refers to either Immersion or Apple, and “Parties” refers to Immersion and Apple collectively.

Alder Biopharmaceuticals Inc – SETTLEMENT AND LICENSE AGREEMENT (May 8th, 2018)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is hereby entered into and made effective on January 5, 2018 (the “Effective Date”) by and among Teva Pharmaceuticals International GmbH (“Teva”), AlderBio Holdings, LLC (“AlderHoldings”) and Alder Biopharmaceuticals, Inc. (“AlderBio”). AlderHoldings and AlderBio are referred to collectively as “Alder”. Teva and Alder are referred to herein individually as a “Party” and collectively, as the “Parties.”

Biomarin Pharmaceutical Inc – Settlement and License Agreement (November 13th, 2017)

This Settlement and License Agreement (“Agreement”), effective April 12, 2017, is entered into by and between BioMarin Pharmaceutical Inc., a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 770 Lindaro Street, San Rafael, California 94901 (“BioMarin”), Merck & Cie, a Swiss corporation having a principal place of business at Im Laternenacker 5, 8200 Schaffhausen, Switzerland (“Merck”) (together “Plaintiffs”); and Par Pharmaceutical, Inc. (“Par”), a company organized under the laws of Delaware, having a principal place of business at 300 Tice Boulevard, Woodcliff Lake, NJ 07677.  Each of BioMarin, Merck, and Par are individually referred to herein by name or the term “Party” and collectively referred to herein as “Parties.”

Biomarin Pharmaceutical Inc – Settlement and License Agreement (August 2nd, 2017)

This Settlement and License Agreement (“Agreement”), effective April 12, 2017, is entered into by and between BioMarin Pharmaceutical Inc., a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 770 Lindaro Street, San Rafael, California 94901 (“BioMarin”), Merck & Cie, a Swiss corporation having a principal place of business at Im Laternenacker 5, 8200 Schaffhausen, Switzerland (“Merck”) (together “Plaintiffs”); and Par Pharmaceutical, Inc. (“Par”), a company organized under the laws of Delaware, having a principal place of business at 300 Tice Boulevard, Woodcliff Lake, NJ 07677.  Each of BioMarin, Merck, and Par are individually referred to herein by name or the term “Party” and collectively referred to herein as “Parties.”

Sarepta Therapeutics, Inc. – — Achieved net revenue of $35 million for the second quarter 2017 — — Increased revenue guidance range to $125 – $130 million for the year — — Entered into global settlement and license agreements resolving exon skipping patent disputes with BioMarin — — Entered into a micro-dystrophin gene therapy research collaboration with Genethon — (July 19th, 2017)

CAMBRIDGE, Mass., July 19, 2017 (GLOBE NEWSWIRE) — Sarepta Therapeutics, Inc. (NASDAQ:SRPT), a U.S. commercial-stage biopharmaceutical company focused on the discovery and development of unique RNA-targeted therapeutics for the treatment of rare neuromuscular diseases, today reported financial results for the second quarter of 2017.

Kala Pharmaceuticals, Inc. – Settlement and License Agreement (June 23rd, 2017)

This Settlement and License Agreement (including its attachments, this “Agreement”) is entered into as of October 24, 2014 (“Settlement Agreement Effective Date”), by and between GrayBug, LLC, a limited liability company organized and existing under the laws of the State of Maryland and having an address of P.O. Box 13043, Baltimore, MD 21203, on behalf of itself and its Affiliates (as defined below) (collectively, “GrayBug”), and Kala Pharmaceuticals, Inc., a corporation organized and existing under the laws of State of Delaware and having a place of business at 100 Beaver Street, Suite 201, Waltham, MA 02453, on behalf of itself and its Affiliates (collectively, “Kala”).

Forward Pharma a/S – SETTLEMENT AND LICENSE AGREEMENT among Biogen Swiss Manufacturing GmbH, Biogen International Holding Ltd., Forward Pharma A/S and Each of the Parties Listed on Appendix I Dated as of January 17, 2017 (April 18th, 2017)
Biogen Inc. – SETTLEMENT AND LICENSE AGREEMENT among Biogen Swiss Manufacturing GmbH, Biogen International Holding Ltd., Forward Pharma A/S and Each of the Parties Listed on Appendix I Dated as of January 17, 2017 (February 1st, 2017)
Biogen Inc. – BIOGEN REPORTS 2016 REVENUES OF $11.4 BILLION 2016 GAAP diluted EPS rise 10%; Non-GAAP diluted EPS rise 19% Board of Directors Appoints Michel Vounatsos as Chief Executive Officer SPINRAZATM Approved and Launched in the US for Spinal Muscular Atrophy Biogen and Forward Pharma Agree to Enter into Settlement and License Agreement (January 26th, 2017)

Cambridge, Mass., January 26, 2017 -- Biogen Inc. (NASDAQ: BIIB) today reported full year and fourth quarter 2016 financial results, including:

Biogen Inc. – Biogen and Forward Pharma Agree to Enter into Settlement and License Agreement (January 17th, 2017)

CAMBRIDGE, Mass.--(BUSINESS WIRE)--Biogen Inc. (NASDAQ: BIIB) today announced that it has agreed to enter into a settlement and license agreement with Forward Pharma, subject to the approval of Forward Pharma’s shareholders and other customary conditions. The license agreement will provide Biogen an irrevocable license to all intellectual property owned by Forward Pharma.

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (October 13th, 2016)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of the date of the last signature required by this Agreement (the “Effective Date”) by and between Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”) and Illumina, Inc., a corporation organized and existing under the laws of the State of Delaware, having offices at 5200 Illumina Way, San Diego, CA 92122 (“Illumina”). Enzo and Illumina are individually referred to herein as a “Party,” and collectively as the “Parties.”

Enzo Biochem Inc – SETTLEMENT and license AGREEMENT (June 8th, 2016)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of the date of the last signature required by this Agreement (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”) and Defendant Agilent Technologies, Inc., a corporation organized and existing under the laws of the State of Delaware, having offices at 5301 Stevens Creek Blvd., Santa Clara, CA 95051 (“Agilent”). Enzo and Agilent are individually referred to herein as a “Party,” and collectively as the “Parties.”

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (June 8th, 2016)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of May 16, 2016 (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”), and Defendant Life Technologies Corporation, a corporation organized and existing under the laws of the State of Delaware, having offices at 5791 Van Allen Way, Carlsbad, California, 92008 (“Life”). Enzo and Life are individually referred to herein as a “Party,” and collectively as the “Parties.”

Spherix Inc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (March 29th, 2016)

This SETTLEMENT AND LICENSE AGREEMENT (the “Agreement”) is by and between NNPT, LLC, a Texas limited liability corporation, and SPHERIX INCORPORATED, as Delaware corporation (collectively “Licensor”), and HUAWEI TECHNOLOGIES CO., LTD.; a Chinese company with major business address at Huawei Industrial Base, Bantian, Longgang District, Shenzhen 518129 P.R. China (hereinafter referred as “Huawei”) on behalf of itself and all Licensees (each a “Party” and both collectively “Parties”). This Agreement is effective as of September 16, 2015 (“Effective Date”).

Vringo Inc – Confidential Settlement and License Agreement (March 10th, 2016)

This Confidential Settlement and License Agreement (“Agreement”) is effective as of December 3, 2015 (“Effective Date”) between Vringo, Inc, a corporation organized under the laws of Delaware having its principal place of business at 780 Third Avenue, 12th Floor, New York, New York 10017 for itself and on behalf of its Affiliates (individual and together “Vringo”) and ZTE Corporation, a corporation organized under the laws of China and having its principal place of business at ZTE Plaza, Keji Road South, Hi-Tech Industrial Park, Nanshan District, Shenzhen, P.R. China, for itself and on behalf of its Affiliates (individually and together “ZTE”).

Galena Biopharma, Inc. – SETTLEMENT AND LICENSE AGREEMENT (November 9th, 2015)

This Settlement and License Agreement (hereinafter referred to as “Agreement”) dated as of this 23rd day of October, 2015 (the “Effective Date”), by and among Actavis Laboratories FL, Inc., a company organized and existing under the laws of the State of Florida, having a principal place of business at 4955 Orange Drive, Davie, FL 33314 (“Actavis”), Orexo AB, a company organized and existing under the laws of Sweden, having a principal place of business at Virdings allé 32 A, 05 Uppsala, Sweden SE-751 (“Orexo”), and Galena Biopharma Inc., having a principle place of business at 4640 SW Macadam Avenue, Portland, OR 97239 (“Galena”). Actavis, Orexo and Galena each are sometimes referred to herein as a “Party” and collectively referred to herein as “Parties.”

Horizon Pharma Plc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (November 6th, 2015)

This Confidential Settlement And License Agreement (the “Settlement Agreement”) is made effective as of September 9, 2015 (the “Effective Date”) by and among HORIZON PHARMA IRELAND LIMITED, a corporation organized and existing under the laws of Ireland with a principal place of business at Adelaide Chambers, Peter Street, Dublin 8, Ireland (“Horizon Ireland”), HZNP LIMITED, a nonresident Irish company that is a tax resident of Bermuda with a principal place of business at 21 Laffan St., Hamilton, Pembroke, Bermuda HM09 (“HZNP”), and HORIZON PHARMA USA, INC., a corporation organized and existing under the laws of the State of Delaware with a principal place of business at 520 Lake Cook Road, Suite 520, Deerfield, Illinois (“Horizon USA”) (collectively, “Plaintiffs”) and TARO PHARMACEUTICALS USA, INC, a New York corporation with a principal place of business at 3 Skyline Drive, Hawthorne, New York (“Taro USA”) and TARO PHARMACEUTICALS INDUSTRIES, LTD., an Israeli corporation with a princ

Biomarin Pharmaceutical Inc – Settlement and License Agreement (November 2nd, 2015)

This Settlement and License Agreement (“Agreement”), effective September 14, 2015, is entered into by and between BioMarin Pharmaceutical Inc., a corporation organized and existing under the laws of the State of Delaware, having a principal place of business at 770 Lindaro Street, San Rafael, California 94901 (“BioMarin”), Merck & Cie, a Swiss corporation having a principal place of business at Im Laternenacker 5, 8200 Schaffhausen, Switzerland (“Merck”) (together “Plaintiffs”); and Dr. Reddy’s Laboratories, Ltd., a company organized under the laws of India, having a principal place of business at 8-2-337, Road No. 3, Banjara Hills, Hyderabad, 500 034, India and its subsidiaries, including Dr. Reddy’s Laboratories, Inc., a corporation incorporated under the laws of the State of New Jersey, having its principal place of business at 107 College Road East, Princeton, New Jersey 08540 (collectively “DRL”).  Each of BioMarin, Merck, and DRL are individually referred to herein by name or the

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (October 13th, 2015)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of the date of the last signature required by this Agreement (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”) and Defendant Affymetrix, Inc., a corporation organized and existing under the laws of the State of Delaware, having offices at 3420 Central Expressway, Santa Clara, CA 95051 (“Affymetrix”). Enzo and Affymetrix are individually referred to herein as a “Party,” and collectively as the “Parties.”

Kala Pharmaceuticals, Inc. – Settlement and License Agreement (September 21st, 2015)

This Settlement and License Agreement (including its attachments, this “Agreement”) is entered into as of October 24, 2014 (“Settlement Agreement Effective Date”), by and between GrayBug, LLC, a limited liability company organized and existing under the laws of the State of Maryland and having an address of P.O. Box 13043, Baltimore, MD 21203, on behalf of itself and its Affiliates (as defined below) (collectively, “GrayBug”), and Kala Pharmaceuticals, Inc., a corporation organized and existing under the laws of State of Delaware and having a place of business at 100 Beaver Street, Suite 201, Waltham, MA 02453, on behalf of itself and its Affiliates (collectively, “Kala”).

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (September 4th, 2015)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of July 20, 2015 (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”), and Defendant Siemens Healthcare Diagnostics Inc., a corporation organized and existing under the laws of the State of California, having offices at 511 Benedict Ave., Tarrytown, NY 10591 (“Siemens”). Enzo and Siemens are individually referred to herein as a “Party,” and collectively as the “Parties.”

Horizon Pharma Plc – CONFIDENTIAL SETTLEMENT AND LICENSE AGREEMENT (August 7th, 2015)

This Confidential Settlement And License Agreement (the “Settlement Agreement”) is made effective as of May 6th, 2015 (the “Effective Date”) by and among HORIZON PHARMA IRELAND LIMITED, a corporation organized and existing under the laws of Ireland with a principal place of business at Adelaide Chambers, Peter Street, Dublin 8, Ireland (“Horizon Ireland”), HZNP LIMITED, a nonresident Irish company that is a tax resident of Bermuda with a principal place of business at 21 Laffan St., Hamilton, Pembroke, Bermuda HM09 (“HZNP”), and HORIZON PHARMA USA, INC., a corporation organized and existing under the laws of the State of Delaware with a principal place of business at 520 Lake Cook Road, Suite 520, Deerfield, Illinois (“Horizon USA”) (collectively, “Plaintiffs”) and PERRIGO COMPANY, a Michigan corporation with a place of business at 515 Eastern Avenue, Allegan, Michigan 49010 (“Perrigo Co.”) and PADDOCK LABORATORIES, LLC, a limited liability company organized and existing under the laws

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (July 22nd, 2015)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of July 20, 2015 (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”), and Defendant Siemens Healthcare Diagnostics Inc., a corporation organized and existing under the laws of the State of California, having offices at 511 Benedict Ave., Tarrytown, NY 10591 (“Siemens”). Enzo and Siemens are individually referred to herein as a “Party,” and collectively as the “Parties.”

Enzo Biochem Inc – SETTLEMENT AND LICENSE AGREEMENT (July 7th, 2015)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and entered into as of July 2, 2015 (the “Effective Date”) by and between Plaintiff Enzo Life Sciences, Inc., a corporation organized and existing under the laws of the State of New York, having offices at 10 Executive Boulevard, Farmingdale, NY 11735 (“Enzo”), and Intervenor-Defendant Luminex Corporation, a corporation organized and existing under the laws of the State of Delaware, having offices at 12212 Technology Blvd., Austin, TX 78727 (“Luminex”). Enzo and Luminex are individually referred to herein as a “Party,” and collectively as the “Parties.”

Eagle Pharmaceuticals, Inc. – SETTLEMENT AND LICENSE AGREEMENT (May 15th, 2015)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is hereby entered into and made effective on February 13, 2015 (the “Effective Date”) by and between Cephalon, Inc. (“Cephalon”) and Eagle Pharmaceuticals, Inc. (“Eagle”). Cephalon and Eagle are referred to herein individually as a “Party” and collectively, as the “Parties.”

VirnetX Holding Corp – AMENDED SETTLEMENT AND LICENSE AGREEMENT (March 2nd, 2015)

Pursuant to 35 U.S.C. § 317(a), Petitioner Microsoft Corporation (“Microsoft” or “Petitioner”) and Patent Owner VirnetX, Inc. (“Patent Owner” or “VirnetX”) jointly request that this inter partes review proceeding (“this Review”) involving U.S. Patent No. X,XXX,XXX (“the ’XXX patent”) be terminated based on a settlement between Petitioner and Patent Owner (“the Parties”).

Sucampo Pharmaceuticals, Inc. – SETTLEMENT AND LICENSE AGREEMENT (November 7th, 2014)

This SETTLEMENT AND LICENSE AGREEMENT (this “Agreement”) is made and effective as of September ___, 2014 (the “Effective Date”), by and between, on the one hand, Sucampo AG and Sucampo Pharmaceuticals, Inc. (collectively, “Sucampo”), R-Tech Ueno, Ltd. (“RTU”), Takeda Pharmaceutical Company Limited and Takeda Pharmaceuticals USA, Inc. and Takeda Pharmaceuticals America, Inc. (collectively, “Takeda”), and on the other hand, Anchen Pharmaceuticals, Inc., Par Pharmaceutical, Inc., Par Pharmaceutical Companies, Inc. (collectively, “Par”).  Sucampo, RTU, Takeda, and Par are collectively referred to as the “Parties,” and each separately as a “Party.”