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Exhibit
10.26
Execution
Copy
INTELLECTUAL PROPERTY
LICENSE AGREEMENT
by and
between
ADVANCED TISSUES SCIENCES,
INC.
and
SKINMEDICA,
INC.
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INTELLECTUAL PROPERTY
LICENSE AGREEMENT
THIS INTELLECTUAL PROPERTY LICENSE
AGREEMENT (“Agreement”), is made by and between
Advanced Tissue Sciences, Inc., a Delaware corporation
(“ATS”) and SkinMedica, Inc., a Delaware Corporation
(“SkinMedica”).
WHEREAS , ATS and
SkinMedica are parties to an Asset Purchase Agreement dated as of
January 6, 2003(“APA”);
WHEREAS, under the
terms of the APA, ATS has retained certain United States and
foreign patents or licenses to such patents which have been used or
held for use in or relate to the Business in the Territory as those
terms are defined in the APA; and
WHEREAS, under the
terms of the Section 7.10 of the APA, SkinMedica is to have
exclusive rights to use the Retained Patent and Sublicensed Patent
in the Territory.
NOW, THEREFORE, in
consideration of the premises and the mutual covenants and
agreements set forth herein and in the APA, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
ARTICLE I.
DEFINITIONS.
Unless otherwise defined
herein, each capitalized term used in this Agreement that is
defined in the APA shall have the meaning specified for such term
in the APA.
“ APA
” shall have the meaning attributed to that term in the
first recital on page 1.
“ ATS Field of
Use ” means those businesses other than the
Business.
“ ATS
Intellectual Property ” means the Retained Patent and
Sublicensed Patent.
“ Inamed
” shall have the meaning attributed to that term in
Section 5.6.
“ Inamed
Agreement ” shall have the meaning attributed to that
term in Section 5.6.
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“ Indemnifying
Party ” shall have the meaning attributed to that
term in Section 7.2.
“ Liabilities
” shall have the meaning attributed to that term in
Section 7.1.
“ Licensed
Product(s) ” means any product, article, composition,
component or system that: (i) embodies or is covered in whole or in
part by a claim in an issued and unexpired patent that is included
in the ATS Intellectual Property; or (ii) is manufactured by using
a process or is employed to practice a process which embodies or is
covered, in whole or in part, by a claim in an issued and unexpired
patent that is included in the ATS Intellectual Property; or (iii)
is manufactured by using, employs or otherwise embodies Trade
Secrets of the Business within the Territory.
“ Retained
Patent ” means United States Patent No. 4,963,489
(the “489 Patent”) and all other United States patent
applications and patents, all international applications, and all
foreign applications and foreign patents, including all divisions,
renewals, continuations, continuations-in-part, extensions,
substitutions or equivalent international intellectual property
assets, owned in part or in whole by Seller, that claim priority
from the 489 Patent, or that claim subject matter necessary to
make, use, offer for sale, sell or import any material, substance
or composition, or any combination of the foregoing (including,
without limitation, the Product) to the extent necessary to operate
the Business in the Territory, other than the Method
Patent.
“ S&N
” shall have the meaning attributed to that term in
Section 2.1.
“ S&N
Agreement ” shall have the meaning attributed to that
term in Section 2.1.
“ S&N
Business ” means: (i) the business of developing,
manufacturing, marketing and selling Dermagraft®,
TransCyte® and other products developed from the same
technology for the medical care and treatment of skin tissue wounds
on humans, including diabetic foot ulcers, pressure ulcers, venous
ulcers, burns (partial thickness and full thickness), cosmetic
surgery for skin tissue defects or post-surgical skin tissue or
post-trauma skin tissue rehabilitation (but not cosmetic surgery
for the enhancement of normal skin tissue (e.g., chemical peels and
laser resurfacing)) and ostomy applications; and (ii) the business
of developing, and potentially manufacturing, marketing and selling
cartilage based tissue modification, repair or replacement products
for use in the repair or replacement of tissue attached to and/or
part of the musculoskeletal system.
“ Sublicensed
Patent ” means: (i) United States Patent No.
5,266,480 (the “480 Patent”); (ii) all
continuation-in-part applications and the resulting patents issued
therefrom to the extent directed to subject matter specifically
described in the 480 Patent; and (iii) all continuations,
divisions, reissues, or extensions of any of the
foregoing.
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ARTICLE II.
LICENSE.
2.1. Exclusive License
For Business . Effective as of the Closing Date: (i) ATS
hereby grants to SkinMedica an exclusive, worldwide, perpetual,
royalty-free license to the Retained Patent and the Sublicensed
Patent within the Territory only, with the right to assign and
sublicense (as set forth in Section 2.2), to make, have made, use,
sell, offer for sale, import and export Licensed Products.
SkinMedica acknowledges and agrees that the foregoing license grant
for the Sublicensed Patent is based solely on the rights granted to
ATS under the Sublicensed Patent as described in the Business
Intellectual Property License Agreement by and between Smith &
Nephew Wound Management (La Jolla), f/k/a Dermagraft Joint Venture
and T.J. Smith & Nephew Limited on the one hand (collectively,
“S&N” ) , and ATS on the other hand, dated
November 22, 2002 (the “S&N Agreement”), a copy of
which is attached hereto as Exhibit A . SkinMedica further
acknowledges and agrees that to the extent that any term or
condition of this Agreement is inconsistent with any term or
condition of the S&N Agreement as in effect on the date hereof,
the S&N Agreement shall control.
2.2. Right to Assign or
Sublicense . SkinMedica shall have the right to assign any
license granted under Section 2.1 to one or more third parties
other than to a competitor of S&N or its Affiliates in the
S&N Business. Otherwise, SkinMedica’s rights to assign
any of the rights granted hereunder shall be governed by the
provisions of Section 11.2. SkinMedica shall have the right to
sublicense any of the rights licensed hereunder to one or more
third parties other than to a competitor of S&N or its
Affiliates in the S&N Business. SkinMedica shall be responsible
for all activities of its sublicensees with respect to the rights
sublicensed.
2.3. Limitations and
Acknowledgements . No license or right to use, either
express or implied, is granted hereunder by ATS to SkinMedica with
respect to the ATS Intellectual Property except as expressly set
forth in this Article 2. SkinMedica hereby acknowledges and agrees
that, by and between the parties, all right, title and interest in
and to the ATS Intellectual Property shall belong to ATS, and that
SkinMedica’s rights therein shall be limited to those license
rights granted pursuant to this Agreement. SkinMedica further
acknowledges and agrees that it is bound by all the terms and
conditions of the S&N Agreement related to the Sublicensed
Patent. By entering into this Agreement, SkinMedica shall acquire
no ownership interest in the ATS Intellectual Property. Except in
the exercise of its rights under Section 5.3, SkinMedica shall not
take any action that jeopardizes the proprietary rights of S&N,
ATS or their Affiliates in the ATS Intellectual
Property.
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2.4. Patent Marking
. SkinMedica shall use commercially reasonable efforts to place
appropriate patent notices on all Licensed Products. If in the
judgment of SkinMedica it is impractical to so mark any such
product, then SkinMedica shall use commercially reasonable efforts
to so mark the packages, containers, or documentation distributed
with the Licensed Product. On request, SkinMedica shall provide to
ATS representative samples of patent markings used by such party.
In the event ATS reasonably believes that SkinMedica has not
properly marked any Licensed Product, ATS shall notify SkinMedica
and identify those products that it believes are not properly
marked, the patents covering such products, and the reasons for
ATS’s belief.
2.5. Covenant To Take
No Action . Subject to the terms and conditions of this
Agreement, ATS agrees that it and its Affiliates will take no
action under any intellectual property rights of ATS or its
Affiliates that exist as of the Closing Date to prevent SkinMedica
from making, having made, using, selling, offering for sale,
importing or exporting the Licensed Products in the
Territory.
ARTICLE
III.
MAINTENANCE AND SUPPORT OF
ATS INTELLECTUAL PROPERTY.
3.1. Maintenance
. ATS shall have the right, but not the obligation, at its
expense, to pay all maintenance fees for the ATS Intellectual
Property, maintain the existence and present status of the ATS
Intellectual Property, and prosecute all pending applications for
patents included within the ATS Intellectual Property. If ATS: (i)
elects not to pay any applicable maintenance fees, (ii) elects not
to prosecute any applications, or (iii) otherwise fails to maintain
its ownership interest in any patent or application included within
the ATS Intellectual Property, then ATS shall provide notice to
SkinMedica thereof at least thirty (30) days prior to the operative
date for payment, prosecution or other action. SkinMedica shall
then have the option to pay the fee, or prosecute or maintain the
patent or application that is the subject of the notice. If
SkinMedica wishes to exercise this option, it shall notify ATS
within ten (10) days following the date of the notice from ATS, and
tender with the notice any fee that may be required to maintain the
patent or prosecute the pending application (including agents or
attorneys fees) or otherwise maintain the ownership interest.
Thereafter, ATS shall pay such fee or take such action as may be
required to prosecute or maintain the patent right in question. ATS
shall continue to maintain all right, title and interest in and to
the particular patent or application that is the subject of any
option exercised by ATS under this Section 3.1.
3.2. Cooperation
. SkinMedica agrees to make its employees reasonably available
to assist ATS in the preparation, prosecution, maintenance, and
protection of applications and patents included within the ATS
Intellectual Property, and to execute any and all oaths,
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declarations, assignments, affidavits,
powers of attorney and any other papers in connection therewith.
Such assistance and cooperation shall include, but not be limited
to, communicating to S&N, ATS, their Affiliates or to their
successors, assigns and legal representatives, any relevant facts
known to the employees of SkinMedica the patent right in question,
and testifying in any legal proceedings, signing all lawful papers,
executing provisional applications, divisional applications,
continuation applications, continuation-in-part applications,
reissues, reexaminations, PCT applications, statutory invention
registrations, and making all other lawful oaths and
declarations.
ARTICLE IV.
TRADEMARK
RIGHTS.
SkinMedica shall have no
right or license to use any trademark, trade name, logo or other
mark of ATS other than as set forth in the APA. SkinMedica shall
have no right or license to use any trademark, trade name, logo or
other mark of S&N under any circumstance whatsoever. Except as
may be required in connection with any manufacturing services which
may be provided by S&N, SkinMedica shall not make any
representation, express or implied, that S&N, ATS or their
Affiliates are the source of any product of SkinMedica.
ARTICLE V.
ENFORCEMENT
PROCEEDINGS.
5.1. Notice of
Infringing Activities . In the event that a party becomes
aware of the actual or threatened infringement by a third party of
any ATS Intellectual Property anywhere in the world, such party
shall promptly notify the other in writing.
5.2. Infringement of
ATS Intelle
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