EXHIBIT 10.1
SETTLEMENT AND RELEASE
AGREEMENT
This Agreement is by and between
DePuy Spine, Inc. and Biedermann Motech GmbH (collectively,
“Plaintiffs”), on the one hand, and Alphatec Spine,
Inc. (“Alphatec” or “Defendant”), on the
other hand. Plaintiffs and Defendant are sometimes collectively
referred to herein as a “Party” and collectively as the
“Parties.” This Settlement and Release Agreement is
effective as of May 5, 2008 (the “Effective
Date”).
WHEREAS, Plaintiffs filed Civil
Action No. 06 CV 11111 EFH against Alphatec in the United
States District Court for the District of Massachusetts (the
“Court”), with respect to United States Patent
No. 5,207,678 (the “‘678 patent”), that case
being referred to herein as the
“Litigation”;
WHEREAS, Plaintiffs
accused Alphatec’s Zodiac ® screw products and
Solanas ® screw products (collectively
“Alphatec Screw Products”) of infringing the ‘678
patent;
WHEREAS, the Parties hereto desire
to compromise, settle and release all claims in the Litigation and
intend that the final terms and conditions be set forth in this
Settlement and Release Agreement (hereinafter referred to as
“Agreement”).
NOW, THEREFORE, for and in
consideration of the mutual promises and agreements herein
contained, including the Recitals set forth above and herein, the
Parties agree as follows:
1. Following the execution of this
Agreement, the Parties agree to execute and file with the Court a
Stipulated Dismissal with Prejudice and Consent Judgment in
the form attached hereto as Exhibit A (the
“Dismissal”).
2. Alphatec shall pay Plaintiffs
eleven million dollars ($11,000,000) by wire transfer
to:
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This payment shall be made on the
Effective Date, [***].
3. Concurrently with the execution
of this Agreement and the dismissal with prejudice of this Lawsuit,
Plaintiffs will grant Alphatec a license to manufacture, import,
use, offer to sell and sell Licensed Products (as defined in the
License Agreement) in the form attached hereto as Exhibit B
(“the License Agreement”), said License Agreement being
part of this settlement.
4. Alphatec admits that the
‘678 patent is valid and enforceable [***].
5. Plaintiffs hereby release and
discharge Alphatec and, solely with respect to the use or sale of
Alphatec Screw Products manufactured by Alphatec, its agents,
representatives, suppliers, distributors, re-sellers, customers,
end-users, shareholders, officers, directors, employees, insurers
and affiliates (hereinafter, “Alphatec Releasees”),
from any and all causes of action, in law or in equity, as well as
costs, claims, liabilities, demands, damages, losses, expenses and
attorneys’ fees, of any nature whatsoever, known or unknown,
fixed or contingent, suspected or unsuspected, which Plaintiffs
have, up to and including the Effective Date, for infringement of
the ‘678 patent.
6. Each Party hereby agrees to be
liable and responsible for its own legal expenses, including, but
not limited to attorneys’ fees and costs, incurred by each
Party in connection with the Litigation and settlement.
7. The Parties hereto warrant that
they have read this Agreement and fully understand its terms. Each
Party to this Agreement warrants that it has full right and
authority to enter into and fulfill applicable terms and
obligations of this Agreement. Biedermann Motech GmbH represents
and warrants that it is the sole owner of the ‘678 patent
and, together with its exclusive licensee, DePuy Spine, Inc., has
the sole right and authority to sue for infringement of the
‘678 patent.
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