Back to top

LICENSE AGREEMENT

License Agreement

LICENSE AGREEMENT | Document Parties: King Pharmaceuticals Research and Development, Inc | King Pharmaceuticals, Inc | Vascular Solutions, Inc You are currently viewing:
This License Agreement involves

King Pharmaceuticals Research and Development, Inc | King Pharmaceuticals, Inc | Vascular Solutions, Inc

. RealDealDocs™ contains millions of easily searchable legal documents and clauses from top law firms. Search for free - click here.
Title: LICENSE AGREEMENT
Governing Law: New York     Date: 2/2/2007

LICENSE AGREEMENT, Parties: king pharmaceuticals research and development  inc , king pharmaceuticals  inc , vascular solutions  inc
50 of the Top 250 law firms use our Products every day

 

EXHIBIT 10.22

 

LICENSE AGREEMENT

This License Agreement (this " Agreement ") is effective as of January 9, 2007 (the " Effective Date ") by and between Vascular Solutions, Inc., a Minnesota corporation (" VSI "), and King Pharmaceuticals, Inc., a Tennessee corporation ("King Pharmaceuticals"), and King Pharmaceuticals Research and Development, Inc., a Delaware corporation and wholly owned subsidiary of King Pharmaceuticals ("King R&D", and together with King Pharmaceuticals, " King ").

RECITALS :

WHEREAS , VSI owns and/or controls certain technologies and intellectual property having application in development and commercialization of Hemostatic Devices, including certain Products that have been or will be developed by VSI, (as such terms are defined below); and

WHEREAS , King desires to exclusively license from VSI all such technologies and intellectual property for worldwide use, and VSI desires to grant such license rights to King, each under the terms and conditions set forth in this Agreement.

NOW, THEREFORE , in consideration of the foregoing premises and the mutual covenants herein contained, the Parties hereby agree as follows:

 

1.

DEFINITIONS.

 

The terms used in this Agreement have the following meaning:

" Affiliates " means, in relation to a party, any person, corporation, firm, partnership or other entity, whether de jure or de facto , which directly or indirectly through one or more intermediaries controls, is controlled by or is under common control with such party. An entity shall be deemed to control another entity if it: (i) owns, directly or indirectly, at least fifty percent (50%) of the outstanding voting securities or capital stock (or such lesser percentage which is the maximum allowed to be owned by a foreign corporation in a particular jurisdiction) of such other entity, or has other comparable ownership interest with respect to any entity other than a corporation; or (ii) has the power, whether pursuant to contract, ownership of securities or otherwise, to direct the management and policies of the entity.

" Controlled " means, with respect to any product, device, data, results, information, inventions, know-how, formulas, trade secrets, techniques, methods, procedures, development, material or compositions of matter of any type or kind, whether or not patentable, or any intellectual property right, possession of the ability, whether by ownership or license, to assign, grant a license, sublicense, immunities or other rights to such item or under such right without violating the terms of any agreement or other arrangement with any Third Party.

" Device Supply Agreement " means that Device Supply Agreement entered into by VSI and King Pharmaceuticals as of even date with this Agreement.

" Exploit " means to make, have made, import, use, sell, offer for sale or otherwise dispose of a product or process, including the research, development, registration, modification, enhancement, improvement, Manufacture, storage, formulation, optimization, export, transport, distribution, promotion or marketing of a product or process.

 

1

 

" Field " means all applications of Hemostatic Devices with or without active hemostats in all areas outside catheterization laboratories (cardiac and peripheral), electrophysiology laboratories, and holding and recovery rooms for all such laboratories.

" Governmental Authority " means any governmental agency, board or commission or other governmental authority or other instrumentality of the United States, any state, county, city or other political subdivision within the United States or any other jurisdiction in the world (including the United States Food and Drug Administration).

" Hemostatic Devices " means medical devices, whether external, implanted, absorbable or otherwise, intended to produce hemostasis by accelerating the clotting process of blood.

" Know-How " means technical information, know-how (including confidential data and Confidential Information), formulae, processes, trade secrets, technologies, improvements, enhancements, modifications, derivative works and discoveries whether or not patentable, including without limitation device, implant and instrument design, synthesis, preparation, recovery and purification processes and techniques, materials, testing and manufacturing processes, techniques, methods and data, clinical data, medical uses, product forms and product drawings and specifications, experimental protocols and procedures, biological, chemical, pharmacological, toxicological, preclinical, clinical, assay, control, manufacturing data and other information.

" Licensed Know-How " means all Know-How owned and/or Controlled by VSI and/or its Affiliates as of the Effective Date or at any time thereafter relating to Hemostatic Devices in the Field and the Products in the Field.

" Licensed Patents " means all Patents owned and/or Controlled by VSI and/or its Affiliates as of the Effective Date or at any time thereafter relating to Hemostatic Devices in the Field and the Products in the Field.

" Manufacture " and " Manufacturing " means the manufacturing, processing, formulating, packaging, labeling, holding and quality control testing of Hemostatic Devices in the Field.

" Other Agreements " means the Device Supply Agreement, the Device Quality Agreement, the Thrombin-JMI® Supply Agreement, and the Thrombin-JMI® Quality Agreement, each entered into between VSI and King Pharmaceuticals as of even date with this Agreement.

 

" Party " means King and VSI, individually, and " Parties " means King and VSI, collectively.

" Patents " means all patents and patent applications and utility models, including without limitation, any and all continuations, continuations-in-part, divisions, patents of addition, confirmations, reissues, renewals, extensions, counterparts and SPC’s thereof.

" Person " means any natural person, corporation, firm, business trust, joint venture, association, organization, company, partnership or other business entity, or any government or any agency or political subdivision thereof.

" Products " means the Thrombix® 3x3, ThrombiGel® 10, 40 and 100 and ThrombiGel Paste® medical devices and all future medical devices developed, owned, or Controlled by VSI having application in the Field, as amended from time to time.

" Regulatory Approvals and Filings " means any and all approvals (including pricing and reimbursement approvals), licenses, registrations or authorizations of any Governmental Authority (as well as any filings, data rights, rights to cross-reference and correspondence relating thereto) necessary or useful

 

2

 

for the Exploitation of the Hemostatic Devices in the Field anywhere in the world, including any: (a) premarket approval or premarket notification of Hemostatic Devices in the Field, including any supplements and amendments thereto; (b) post-approval marketing authorizations (including any prerequisite Manufacturing approval or authorization related thereto); (c) labeling approval; and (d) technical, medical, and scientific licenses; in each case owned and/or Controlled by VSI and/or its Affiliates as of the Effective Date or at any time thereafter.

" SPC " means a right based upon a Patent to exclude others from making, using or selling any Product or any Hemostatic Devices in the Field, such as a Supplementary Protection Certificate.

" Third Party " means any party other than VSI, King or their respective Affiliates. For purposes of Net Sales, a Third Party shall not include any Sublicensees.

 

2.

LICENSES.

2.1                 Grant to King . VSI hereby grants to King an exclusive (even as to VSI), royalty-free, fully paid-up, perpetual, worldwide right and license, with the right to grant sublicenses in multiple tiers, under the Licensed Patents, Licensed Know-How and Regulatory Approvals and Filings to develop, make, have made, use, sell, offer for sale, import, and otherwise Exploit Hemostatic Devices in the Field and the Products in the Field.

2.2                 Grantback to VSI . During the term of the Device Supply Agreement, King hereby grants to VSI the non-exclusive, royalty-free, right and license under the Licensed Patents, Licensed Know-How and Regulatory Approvals and Filings to develop and make the Products in the Field. VSI shall have no right to grant sublicenses under the foregoing license grant without obtaining the prior written consent of King.

2.3                 Transfer of Licensed Know-How . Upon request of King, VSI shall use its commercially reasonable efforts to transfer, or cause to be transferred to King, a copy of the materials and information (whether in electronic or documented form) which are Controlled by VSI and covered by the license granted to King in Section 2.1 above.

2.4                 Reservation of Rights . No rights to any patents, know-how, trade secrets, technical information, or other intellectual property rights of either Party, other than as explicitly identified herein, are granted or deemed granted by this Agreement to the other Party. No right, expressed or implied, is granted by this Agreement to a Party to use in any manner the name or any other trade name or trademark of the other Party in connection with the performance of this Agreement or otherwise.

 

3.

PAYMENT.

3.1                 Upfront Payment . In full consideration to VSI for the licenses and other rights granted to King under this Agreement, upon the Effective Date, King shall pay to VSI a one-time payment of Six Million U.S. Dollars (US $6,000,000).

3.2                 No Other Payments . For the avoidance of doubt, no other payments or any milestone or royalty payments shall be due from King to VSI in consideration for any licenses or other rights granted to King under this Agreement.

 

3

 

4.

REPRESENTATIONS AND WARRANTIES; NEGATIVE PLEDGE.

4.1                 Representations and Warranties of Both Parties . Each Party represents and warrants to the other Party, as of the Effective Date, that:

(a)                Such Party is duly organized and validly existing and in good standing under the laws of the jurisdiction of its incorporation and has full corporate power and authority to enter into this Agreement and to carry out the provisions hereof;

(b)                Such Party has taken all corporate action necessary to authorize the execution and delivery of this Agreement and the performance of its obligations under this Agreement and has full power and authority to enter into this Agreement and perform its obligations under this Agreement;

(c)                This Agreement has been duly executed by such Party and assuming due authorization, execution and delivery by the other Party, constitutes a valid and legally binding obligation of such Party, enforceable in accordance with its terms, subject to and limited by: (i) applicable bankruptcy, insolvency, reorganization, moratorium, and other laws generally applicable to creditors’ rights; and (ii) judicial discretion in the availability of equitable relief;

(d)                Such Party is not required to obtain, the consent, approval, order, or authorization of any Third Party, or is not required to complete any registration, qualification, designation, declaration or filing with, any regulatory authority, in connection with the execution and delivery of this Agreement and the performance by such Party of its obligations under this Agreement, including any grant of rights to the other Parties pursuant to this Agreement; and

(e)                The execution and delivery of this Agreement, and the performance by such Party of its obligations under this Agreement, including the grant of rights to the other Party pursuant to this Agreement, does not and will not: (i) conflict with, nor result in any violation of or default under any such instrument, judgment, order, writ, decree, contract or provision to which such Party is otherwise bound; (ii) give rise to any lien, charge or encumbrance upon any assets of such Party or the suspension, revocation, impairment, forfeiture or non-renewal of any material permit, license, authorization, or approval that applies to such Party, its business or operations or any of its assets or properties, except any or all of which could not reasonably be expected to have a material adverse effect on its ability to perform its obligations under this Agreement or on the rights of the other Party under this Agreement; or (iii) conflict with any rights granted by such Party to any Third Party or breach any obligation that such Party has to any Third Party.

(f)                No representation or warranty made by a Party in this Agreement or the Other Agreements, nor any statement or record contained in any schedule or exhibit hereto or thereto furnished by a Party, contains any untrue statement of a material fact or omits any material fact necessary to make the statements contained herein or therein not misleading.

4.2                 Representations and Warranties of VSI . VSI represents and warrants to King, as of the Effective Date, that:

(a)                VSI is the owner of, or has exclusive rights to, all of the Licensed Patents and Licensed Know-How in existence on the Effective Date, and has the exclusive right to grant the rights granted under this Agreement therefor. All of the issued Licensed Patents in existence on the Effective Date are valid, in full force and effect and have been maintained to date, and are not the subject of any interference or opposition proceedings;

 

4

 

(b)                VSI has provided King, or given King access to, true, complete and unredacted copies of all (i) files, filings, correspondence and all other documentation relating to the prosecution, maintenance and/or enforcement of the Licensed Patents in existence on the Effective Date, (ii) regulatory documentation relating to the Products in existence on the Effective Date, and (iii) material agreements (including any letter agreements) between VSI and any licensee, production or financing partner or other Third Party, including all effective amendments to any such agreements or documents, which, in any event (A) affects or may affect King’s rights under this Agreement, or (B) relates to a Product or any Licensed Patents or Licensed Know-How in existence on the Effective Date; and

(c)                There is no pending or, to the knowledge of VSI, threatened claim, interference, opposition or demand of any Third Party challenging the inventorship, ownership, validity or scope of any Licensed Patents in existence as of the Effective Date. The manufacture, use or sale of the Products will not infringe or otherwise violate any intellectual property right of any Third Party.

4.3                Disclaimer . EXCEPT AS EXPRESSLY SET FORTH IN THIS SECTION 4, NEITHER PARTY MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND EACH PARTY EXPRESSLY DISCLAIMS ALL IMPLIED WARRANTIES OF MERCHANTABILITY AND OF FITNESS FOR A PARTICULAR PURPOSE OR USE.

4.4                Negative Pledge . VSI represents, warrants, and covenants that there are no liens or claims currently existing on or to the Licensed Patents or Licensed Know-How (including any liens or claims on or to rights to sue for past, present and future infringements thereof, any licenses, claims, damages, and proceeds of suit arising


 
SITE SEARCH

AGREEMENTS / CONTRACTS

Document Title:

Entire Document: (optional)

Governing Law:(optional)


Try our advanced search >>
 

CLAUSES

Search Contract Clauses >>

Browse Contract Clause Library>>

Get Email Updates
Email:
This is only a partial view of this document. We have millions of legal documents and clauses drafted by top law firms. learn more search for free browse for free learn more