EXHIBIT 10.1
CONFIDENTIAL TREATMENT REQUEST
[*]
INDICATES INFORMATION
THAT HAS BEEN OMITTED
PURSUANT TO A CONFIDENTIAL
TREATMENT REQUEST, AND THIS INFORMATION HAS BEEN FILED UNDER
SEPARATE COVER
WITH THE COMMISSION.
SETTLEMENT AGREEMENT AND RELEASE
This
Settlement Agreement
and Release (the
"Agreement") is effective this
15th day of September
2006 (the "Effective
Date"), between (i) ENZO BIOCHEM,
INC. and ENZO LIFE SCIENCES, INC. (formerly ENZO DIAGNOSTICS, INC.)
(referred to
collectively herein as "ENZO"), and YALE UNIVERSITY, on the one hand, and (ii)
SIGMA-ALDRICH CORP.,
SIGMA CHEMICAL COMPANY, INC., SIGMA-ALDRICH CO., and
SIGMA-ALDRICH, INC.
(referred to collectively herein as "SIGMA") (individually,
each a "Party" and collectively, the "Parties"), on the other
hand.
RECITALS
WHEREAS, ENZO
DIAGNOSTICS,
INC. and SIGMA
CHEMICAL COMPANY, INC. were
parties to a Distributorship Agreement (the "Distributorship
Agreement"), dated
January 5, 1996;
WHEREAS, YALE
is the owner of United States Patent Nos. 4,711,955,
5,328,824, 5,449,767 and 5,476,928 and it is the position of Enzo
that it is the
exclusive licensee of those patents;
WHEREAS, ENZO
is the owner of United States Patent Nos. 4,707,440,
4,994,373, 5,013,831, 5,175,269 and 5,241,060;
WHEREAS, ENZO,
YALE and SIGMA are
currently engaged in
litigation in the
United States District
Court for the Southern
District of New York,
in a case
captioned ENZO
BIOCHEM, INC. AND ENZO LIFE SCIENCES, INC. V. SIGMA-ALDRICH
CORP., SIGMA CHEMICAL CO., INC., SIGMA-ALDRICH CO., AND SIGMA-ALDRICH, INC.,
Civil Action No. 03-CV-3820 (JES) (S.D.N.Y.) (the
"Litigation");
WHEREAS, the
Litigation involves claims by ENZO for infringement of United
States Patent
Nos. 4,707,440, 4,994,373, 5,013,831, 5,175,269, 5,241,060,
4,711,955, 5,328,824,
5,449,767 and 5,476,928 by certain Sigma Products as
defined below in
paragraph 1.6,
breach of the
Distributorship
Agreement and
unfair competition
under federal law as alleged in the pleadings of the
Litigation;
WHEREAS, SIGMA filed an answer and counterclaims in the
Litigation;
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WHEREAS, the
Paties desire to reach an amicable resolution of the
Litigation and all
claims, defenses and
counterclaims
asserted therein, in
accordance with the provisions of this Agreement;
NOW,
THEREFORE,
in consideration of
the foregoing premises and the mutual
promises and
agreements
hereinafter
set forth,
and other good and
valuable
consideration the receipt and sufficiency of which are hereby
acknowledged, the
Parties agree as follows:
ARTICLE I: DEFINITIONS
1.1 Reference to "Enzo Parties" means and includes, without
limitation: (a) Enzo
Biochem, Inc. and Enzo
Life Sciences, Inc.
and (i) their respective officers,
directors, employees,
agents and/or representatives, and (ii) their respective
subsidiaries,
affiliates and/or related companies that the respective party
now
or in the future owns or controls; and (b) any entity that Enzo
Biochem, Inc.
and/or Enzo Life Sciences Inc. acquires or merges with in the
future.
1.2 Reference to "Sigma Parties" means and includes, without limitations: (a)
Sigma Aldrich Corporation, Sigma-Chemical Company, Inc., Sigma Aldrich Co.
and
Sigma Aldrich, Inc.
and (i) their respective officers, directors, employees,
agents and/or
representatives, and
(ii) the respective
party's
subsidiaries,
affiliates and/or related companies that it now owns or
controls.
1.3 Reference
to "Yale" means and includes, without limitations: (a) Yale
University and (i) its respective officers, directors, employees, agents and/or
representatives, (ii) its subsidiaries, affiliates and/or related
entities.
1.4 "Enzo Patents" means and is limited to United States Patent
Nos. 4,707,440,
4,994,373, 5,013,831,
5,175,269,
5,241,060 and foreign counterparts. Enzo
Patents does not include any other Enzo patents or patent
applications,
whether
related or
unrelated to the Enzo Patents (including, but not limited to
continuations and/or
continuations-in-part), and whether pending, allowed,
allowable or soon to be issued.
1.5 "Yale Patents" means and is limited to United States Patent
Nos. 4,711,955,
5,328,824, 5,449,767
and 5,476,928 and foreign counterpart applications. Yale
Patents does not include any other Yale patents or patent
applications,
whether
related or
unrelated to the Yale Patents (including, but not limited to
continuations and/or
continuations-in-part), and whether pending, allowed,
allowable or soon to be issued.
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1.6 "Sigma
Products"
means
any product listed in the 2002-2003 Sigma
Catalog-Biochemicals
and Reagents for Life Science Research plus the products
listed on EXHIBIT A hereto, and include, without limitation, the following
products:
(a)
8-(6-aminohexyl) amino-adenosine 5' monophosphate (A 3771);
(b)
8-(6-aminohexyl) amino-adenosine 5' triphosphate (A0269);
(c)
Aminoallyl-dUTP (A 0410);
(d)
Aminoallyl-dUTP (A 5910);
(e)
Aminoallyl-UTP (A 5660);
(f) Bio-4-dUTP
(B 1765);
(g) Bio-4-UTP
(B 1640);
(h)
Bio-11-dUTP (B 7645);
(i) Bio-11-UTP
(B 5770);
(j) Bio-14-ATP
(B 5895);
(k) Bio-17-ATP
(B 6020);
(l) Hg-dUTP (M
0511);
(m) Hg-UTP (M
6143);
(n)
Photobiotin (A 7667);
(o)
SigmaScreen APS Coated Slides for Microarray (S 9936);
(p)
SigmaScreen Coated Slides for Microarray (S 7934); and
(q)
SigmaScreen Ready-to-Coat Slides for Microarray (S 2940).
1.7 "Claims"
means any and all claims, counterclaims and causes of action
accrued or unaccrued, known or unknown, based on or related to the
Enzo Patents,
the Yale Patents, the
Distribution Agreement
and/or related unfair competition
claims under federal
or state law,
including without
limitation
any and all
claims, counterclaims
or causes of action involving the manufacture, use,
marketing,
advertising, sale,
offer for sale or
importation or exportation of
any Sigma Product.
ARTICLE II: RELEASE BY ENZO AND YALE UNIVERSITY
2.1 RELEASES BY THE
ENZO PARTIES AND YALE.
Each of the Enzo
parties and Yale
University hereby
releases the Sigma
Parties and their
respective
customers
(arising out of the use of any Sigma Product), from any and all
Claims which any
of the Enzo Parties or Yale ever had, now has, or may in the future
have against
any of the Sigma Parties, including but not limited to (1)
infringement (direct
or indirect)
of the Enzo Patents and Yale Patents, (2) breach of the
Distribution Agreement
and (3) related unfair
competition claims und
