Exhibit 10.5
LICENSE
AGREEMENT
This LICENSE AGREEMENT
is entered into as of the latest
of the dated signatures below (“Effective Date”) by and
among Mark L. Kozam d/b/a MLK Software and Datasci,
LLC (collectively “ Datasci ”), and
Phase Forward
Incorporated (“
Phase Forward ”).
IN CONSIDERATION OF THE MUTUAL
COVENANTS AND PROMISES CONTAINED HEREIN, THE SUFFICIENCY OF WHICH
THE PARTIES IRREVOCABLY ACKNOWLEDGE, THE PARTIES AGREE AS
FOLLOWS:
ARTICLE 1
DEFINITIONS
The following terms shall have the
meaning set forth below when used herein:
1.1
“Settled Patent” means U.S. Patent No. 6,496,827
B2 entitled “Methods and Apparatus for the Centralized
Collection and Validation of Geographically Distributed Clinical
Study Data with Verification of Input Data to the Distributed
System,” including all foreign counterparts, divisional,
reissue, reexamined, continuation, and continuation in-part patents
thereof.
1.2
“License Agreement” means this License
Agreement.
1.3
“Settlement Agreement” means the Settlement Agreement
to which this License Agreement is attached as Appendix
A.
1.4
“Party” or “Parties” means any party or
parties to this License Agreement, including affiliate companies
and parent companies, as the case may be.
1.5
“Stipulation of Dismissal With Prejudice” means the
Stipulation of Dismissal with Prejudice attached hereto as Appendix
B.
ARTICLE 2
BACKGROUND
2.1
Datasci is the owner of the entire right, title and interest in and
to the Settled Patent.
2.2
Datasci filed an action against Phase Forward and
Quintiles, Inc. in the United States District Court for the
District of Maryland alleging that Phase Forward and
Quintiles, Inc. had infringed the Settled Patent; Civil Action
No. 04-CV-1787 (the “Action”). Phase Forward
asserted several affirmative defenses and counterclaims, alleging,
among other things, that it did not infringe the Settled Patent and
that the Settled Patent is invalid.
2.3
The Parties to this License Agreement now desire to settle the
Action, and to settle and resolve all issues set forth herein which
they may have against each other arising out of or in connection
with the Settled Patent.
ARTICLE 3
PAYMENTS AND ROYALTIES TO
DATASCI
3.1
On the Effective Date, Phase Forward shall pay Datasci a one-time,
lump sum, fully paid up royalty in the amount of Eight Million Five
Hundred Thousand and No/100 Dollars ($8,500,000.00).
3.2
Neither this License Agreement nor the Settlement Agreement shall
be effective until Datasci has received the payment required to be
made by the Effective Date in accordance with this License
Agreement and the Settlement Agreement.
ARTICLE 4
LICENSE
GRANT
4.1
Datasci hereby grants to Phase Forward and its parent companies,
subsidiaries, and affiliate companies a perpetual, irrevocable,
fully paid-up, worldwide, non-transferable (except as set forth in
Section 6.1), non-exclusive license to make, have made, use,
offer-to-sell, sell, export, and import, or otherwise dispose of
products and services the making, having made, use, offering to
sell, selling, exporting or importing of which would in the absence
of this license infringe any valid and enforceable claim of the
Settled Patent. This license shall apply to Phase Forward’s
customers, manufacturers, partners, distributors, re-sellers,
vendors, and their respective end users, regarding all products and
services made by, made for, provided by, purchased from, or
licensed from Phase Forward. This license shall not be interpreted
or construed as granting Phase Forward any right to sub-license any
third party or Non-subsidiary to use any of the methods or systems
claimed in the Settled Patent, except as such methods or systems
are or were provided directly or indirectly by Phase Forward.
“Non-subsidiary” shall mean any corporation of which
Phase Forward does not own or control more than 50% of the U.S. or
foreign corporation, company or other legal entity. This license
shall not apply to any products or services acquired by Phase
Forward from an entity identified in Appendix D. Further, this
license shall not be int
