SETTLEMENT AND LICENSE
AGREEMENT
This Settlement and License Agreement
(“Agreement”) is effective and entered into as of
September 19, 2005 (the “Effective Date”), by and
between GE Healthcare Ltd. f/k/a Amersham plc, Amersham Health,
Inc., and Amersham Health AS, (collectively
“Amersham”), IMCOR Pharmaceutical Co. f/k/a Photogen
Technologies, Inc. (“IMCOR”), Alliance Pharmaceutical
Corp. (“Alliance”), and Molecular Biosystems, Inc.
(“MBI”), (Amersham, IMCOR, Alliance, and MBI,
collectively “the Parties”).
WHEREAS, Amersham possesses intellectual
property relating to the formulation, method of preparing or use of
ultrasound contrast products;
WHEREAS, until 2003 Alliance possessed
intellectual property relating to the formulation, method of
preparing or use of ultrasound contrast products;
WHEREAS, on June 18, 2003, Alliance and IMCOR
entered into an Asset Purchase Agreement (the “Asset Purchase
Agreement”) pursuant to which Alliance sold, conveyed,
transferred, assigned and delivered to IMCOR all of
Alliance’s right, title and interest in and to all of
Alliance’s tangible and intangible assets for all imaging
modalities, including (without limitation) (i) all rights related
to the Imagent product, (ii) all patents and other intellectual
property related to such assets, (iii) all claims and causes of
action (whether or not then asserted) related to such products,
patents or intellectual property, and (iv) all claims and causes of
action arising or related to Alliance’s business of
designing, developing, manufacturing, marketing, selling,
licensing, supporting and maintaining imaging modalities in
connection with Alliance’s imaging and diagnostic imaging
business;
WHEREAS, the Asset Purchase Agreement granted
Alliance certain rights with respect to the Imagent business and
related intellectual property after the closing of such sale under
the conditions, circumstances and terms specified in the Asset
Purchase Agreement;
WHEREAS, IMCOR currently possesses intellectual
property relating to the formulation, method of preparing or use of
ultrasound contrast products;
WHEREAS, there is pending in the United States
District Court for the District of New Jersey a litigation
captioned IMCOR Pharmaceutical Co. and Alliance Pharmaceutical
Corp. v. Amersham Health Inc., Amersham Health AS, and Amersham
plc. v. Molecular Biosystems Inc. , Civil Action No. 03-2853
(SRC), (the “Action”), and;
WHEREAS, the Parties desire to settle the Action
and all existing and potential intellectual property disputes
relating to certain products.
NOW, THEREFORE, in consideration of the
foregoing and the covenants, acknowledgements and representations
contained in this Agreement, the Parties hereby agree as
follows:
1.1.
Definitions
. For purposes of this Agreement,
the terms defined here shall have the meanings specified below.
These terms are intended to encompass both singular and plural
forms.
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1.1.1.
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“
Affiliate ” shall mean an entity that directly, or
indirectly through one or more intermediaries, controls, or is
controlled by, or is under common control with a Party. Without
limiting the generality of the foregoing, “control”
shall mean the ownership, directly or indirectly, of fifty percent
(50%) or more of the issued share capital or shares of stock
entitled to vote for the election of directors, in the case of a
corporation, or fifty percent (50%) or more of the equity interests
in the case of any other entity or the legal power to direct or
cause the direction of the general management and policies of the
entity in question.
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1.1.2.
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“
Amersham Licensed Patents ” shall mean Licensed
Patents that are owned, obtained, acquired, purchased by or
licensed to with a right to sublicense, or in any way under the
control or disposal of Amersham, including, but not limited to, all
patents asserted by Amersham in the Action, including United States
Patent Nos. 5,558,856, 5,558,857, 5,567,412, 5,567,413, 5,569,449,
5,614,169, 5,618,514, 5,637,289,, 5,648,062, 5,670,135, 5,817,291,
5,827,502, 6,106,806, 6,153,172, and 6,544,496.
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1.1.3.
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“
Field ” shall mean ultrasound diagnostic imaging in
humans and animals.
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1.1.4.
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“
Imagent ” shall mean the ultrasound contrast product
that is the subject of NDA 21-191 together with such modification
thereto as may be made in connection with such
application.
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1.1.5.
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“
IMCOR/Alliance Licensed Patents ” shall mean Licensed
Patents that are owned, obtained, acquired, purchased by or
licensed to, with a right to sublicense, or in any way under the
control or disposal of IMCOR and/or Alliance, including but not
limited to all patents asserted by IMCOR and/or Alliance in the
Action including United Sates Patent Nos. 5,540,909, 5,733,527,
6,019,960, 6,056,943, 6,280,704, 6,285,339, 6,287,539, and
6,706,253.
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1.1.6.
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“
Licensed Patents ” shall mean all present patents and
patent applications worldwide, which are issued or pending as of
the Effective Date, together with all future patents and patent
applications that claim priority (directly or indirectly through
other applications) to any patent or patent application pending as
of or before the Effective Date.
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1.1.7.
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“
Optison ” shall mean the ultrasound contrast product
that is the subject of NDA 20-899 together with such modification
thereto as may be made in connection with such
application.
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1.1.8.
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“
Party ” shall mean Amersham, Alliance, IMCOR, and/or
MBI.
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1.1.9.
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“
Sonazoid ” shall mean any phospholipid-containing
ultrasound contrast products that include gaseous C 4 F
10 , whether or not combined or modified with any other
ingredients, elements or materials.
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1.1.10.
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“
Territor y” shall mean the entire world.
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1.1.11.
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“
Third Party ” shall mean any entity other than
Alliance, Amersham, IMCOR, MBI or their Affiliates.
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ARTICLE II. WORLDWIDE
GRANT OF INTELLECTUAL PROPERTY RIGHTS
2.1. IMCOR hereby grants Amersham and its Affiliates
a fully paid-up, irrevocable royalty-free, nonexclusive license,
with the right to sublicense, under the IMCOR/Alliance Licensed
Patents to develop, make, have made, use, sell, offer to sell,
import, or export Optison and/or Sonazoid in the Field in the
Territory.
2.2. Alliance hereby grants Amersham and its
Affiliates a fully paid-up, irrevocable royalty-free, nonexclusive
license, with the right to sublicense, under the IMCOR/Alliance
Licensed Patents to develop, make, have made, use, sell, offer to
sell, import, or export Optison and/or Sonazoid in the Field in the
Territory.
2.3. Amersham hereby grants IMCOR and its Affiliates
a fully paid-up, irrevocable royalty-free, nonexclusive license,
with the right to sublicense, under the Amersham Licensed Patents
to develop, make, have made, use, sell, offer to sell, import, or
export Imagent in the Field in the Territory.
2.4. The rights granted hereunder shall extend to
IMCOR’s and Amersham’s respective distributors,
manufacturers, sales agents, exporters, and importers with respect
to activities authorized by and for the benefit of such Party or
its Affiliates and related to the manufacture, sale, distribution,
exportation or importation of Imagent, Optison or Sonazoid (as
applicable) for or under the direction of the applicable Party or
its Affiliates. The Parties acknowledge that nothing in this
Agreement shall be construed to convey any title or ownership
rights to the Licensed Patents. With the exception of the licenses
explicitly granted in paragraphs 2.1 through 2.3, no license,
release or other right, title or interest is granted by
implication, estoppel or otherwise.
ARTICLE III. SETTLEMENT
OF INTELLECTUAL PROPERTY DISPUTES
3.1. It is the intention of the Parties to settle
current and potential intellectual property disputes pertaining to
the Licensed Patents therefore the Parties have voluntarily entered
into this Agreement. In that connection, the Parties
shall:
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3.1.1.
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promptly cause
their respective claims in the Action to be dismissed with
prejudice by directing their respective counsel to execute and file
a Stipulation of Dismissal with prejudice and without costs in the
form annexed as Exhibit A; and
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3.1.2.
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withdraw, to
the maximum extent allowed by the law in each specific case, all
current oppositions brought within or outside the United States
against any Licensed Patent with claims which embrace Imagent,
Optison, and/or Sonazoid in the Field;
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3.2. Amersham hereby releases IMCOR, its current
Affiliates, and their respective current and former officers,
directors, employees, agents, and attorneys from all claims,
allegations, damages, obligations, liabilities or expenses of any
kind or nature that it may have against any of them. This releases
all claims and obligations resulting from anything which has
happened up to now, including claims of which Amersham is not
aware, and specifically including without limitation all claims
that were or could have been asserted in the Action, including but
not limited to all claims of breach of contract, breach of duties
of good faith and fair dealing, unfair competition, fraud,
conversion, unjust enrichment, misappropriation of trade secrets,
tortious interference with contract, antitrust violations, bad
faith enforcement and sham litigation, and infringement of Amersham
Licensed Patents on account of the manufacture, use, sale, offer
for sale, and importation of Imagent up to and including the
Effective Date.
3.3. Amersham hereby releases Alliance, its current
Affiliates, and their respective current and former officers,
directors, employees, agents, and attorneys from all claims,
allegations, damages, obligations, liabilities or expenses of any
kind or nature that it may have against any of them. This releases
all claims and obligations resulting from anything which has
happened up to now, including claims of which Amersham is not
aware, and specifically including without limitation all claims
that were or could have been asserted in the Action, including but
not limited to all claims of breach of contract, breach of duties
of good faith and fair dealing, unfair competition, fraud,
conversion, unjust enrichment, misappropriation of trade secrets,
tortious interference with contract, antitrust violations, bad
faith enforcement and sham litigation, and infringement of Amersham
Licensed Patents on account of the manufacture, use, sale, offer
for sale, and importation
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