This Settlement Agreement and General Release
(the “Agreement”) is made and entered into between
Keryx Biopharmaceuticals, Inc. (hereinafter
“Keryx”) on the one hand and Alfa Wassermann
S.p.A. (hereinafter “Alfa”) on the other hand
(Keryx and Alfa are collectively referred to as the
“Parties”).
WHEREAS , Keryx and Alfa entered into a License
Agreement on November 12, 1998 (the “License
Agreement”), which has been terminated;
WHEREAS , the parties are engaged in a dispute over
issues arising from the License Agreement; and
WHEREAS , Alfa and Keryx now desire to compromise and
settle any and all remaining claims that were raised or could have
been raised by the Parties with regard to the License Agreement;
and otherwise
NOW THEREFORE , for and in consideration of the mutual
promises and covenants set forth below, the receipt and sufficiency
of which is hereby acknowledged, the undersigned Parties agree as
follows:
Any capitalized terms herein that are not
otherwise defined shall have the meaning ascribed to them in the
License Agreement.
1.
Payment . Alfa will pay, or cause to be
paid, to Keryx, the total sum of Three Million Five Hundred
Thousand United States Dollars (US$3,500,000.00) (the
“Settlement Sum”), with Two Million Seven Hundred and
Fifty Thousand United States Dollars (US$2,750,000.00) of the
Settlement Sum to be paid by wire transfer within five business
days of the date hereof (the “First Payment”), and the
remaining Seven Hundred and Fifty Thousand United States Dollars
(US$750,000.00) to be paid on or before the first anniversary of
this Agreement. Alfa will wire, or caused to be wired,
the payments comprising the Settlement Sum to TD Bank, N.A., using
the wire instructions attached hereto as Exhibit A
.
2.
Release by Keryx . The Keryx Released
Parties (as defined in Section 4, below) hereby knowingly,
voluntarily and irrevocably release and discharge Alfa, as well as
all related companies and entities, including but not limited to
parent companies, subsidiaries and affiliates, together with their
respective officers, directors, managers, shareholders, members,
employees, agents, successors, assigns and attorneys (all of the
foregoing being collectively referred to as the “Alfa
Released Parties”) from any and all claims, actions, causes
of action, sums of money due, attorney's fees, suits, debts,
covenants, contracts, agreements, torts, promises, demands or
liabilities whatsoever, in law or in equity, whether known or
unknown, direct or indirect and fixed or contingent
which Keryx ever had, now has, or might in the future have against
any of the Alfa Released Parties which now exist or which may arise
in the future, including, but not limited to, any and all claims
arising out of or related to the License Agreement or the
termination thereof. The claims released by the Keryx Released
Parties pursuant to this Agreement include, but are not limited to,
any and all contractual claims, all common law claims, all claims
arising under statute, rule or regulation, all claims for breach of
an implied covenant of good faith and fair dealing, and all claims
for the violation of any public policy. Keryx on behalf of the
Keryx Released Parties, covenants and agrees not to file a lawsuit,
initiate any action or assert any such claims against any Alfa
Released Parties.
3.
Transfer and Assignment by Keryx . Keryx
hereby contributes, transfers, conveys, assigns and delivers to
Alfa and its successors, assigns, designees and legal
representatives, all right, title and interest of Keryx in and to
all data, clinical trial results and other
Intellectual Property Rights relating to the compound known as
Sulodexide (or Sulonex) and the Patent Rights and Know-how licensed
to Keryx under the License Agreement, (the “Assigned
Intellectual Property”), the same to be used and enjoyed by
Alfa and for the use and enjoyment of its successors, assigns,
designees and other legal representatives, as fully and entirely as
the same would have been held and enjoyed by Keryx if the License
Agreement had not been terminated.
Keryx will cause its agents, representatives and
designees to transfer to Alfa copies, whether paper or electronic,
of all documents containing the Assigned Intellectual Property,
including, without limitation, all data and results generated in
clinical trials conducted by or for Keryx with respect to
Sulodexide, and a current copy of the Investigational
New Drug Application filed by Keryx with the United States Food and
Drug Administration with respect to Sulodexide (the
“IND”) no later than 45 days following receipt of the
First Payment to the following location: Alfa Wassermann S.p.A.,
Viale Sarca, 223, 20126 Milano, Italy, Attn: Massimo
Grilli. Keryx shall have the right to retain copies of
all documents transferred to Alfa pursuant to this Agreement,
however, such possession shall in no way diminish the rights
granted to Alfa by Keryx hereunder. For the purpose of
clarification, the right, title and interest in and to the IND
shall remain with Keryx, but Alfa shall be permitted to use and
reference the IND for any purpose.
Keryx will cause its agents, representatives and
designees to, from time to time, without additional compensation,
execute and deliver to Alfa such additional instruments, documents,
conveyances or assurances and take such other action as shall be
necessary, or otherwise reasonably requested by Alfa, to confirm
and assure the transfer to Alfa of the rights and obligations
provided for in this Section 3 with respect to the Assigned
Intellectual Property, including without limitation, the assignment
of all patents and patent applications included in the Assigned
Intellectual Property. Notwithstanding the foregoing,
Alfa shall have no direct access to any employees of Keryx pursuant
to the terms of this Agreement. Keryx shall also use its
best efforts to cooperate with Alfa, at Alfa’s request, to
encourage the principal investigators that conducted Keryx’s
clinical trials on Sulodexide to make themselves available for
discussion with Alfa, however, Alfa acknowledges that such
investigators are not employees of Keryx and their cooperation
cannot be guaranteed by Keryx.
Keryx does not warrant that it is the owner of
the Assigned Intellec
