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
