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Exhibit 10.2
ENDOTHELIN LICENSE AGREEMENT
THIS ENDOTHELIN LICENSE AGREEMENT (this "Agreement") is entered into as of
this 6th day of June, 2000 by and between TEXAS BIOTECHNOLOGY CORPORATION, a
Delaware corporation ("TBC"), in favor and for the benefit of and with ICOS-
TEXAS BIOTECHNOLOGY L.P., a Delaware limited partnership (the "Partnership"),
pursuant to the terms and conditions of that certain Agreement of Limited
Partnership of the Partnership, dated as of June 6, 2000 (the "Partnership
Agreement"), by and between TBC and ICOS-ET-LP LLC, a Washington limited
liability company, as limited partners, and TBC-ET, Inc., a Delaware
corporation, and ICOS-ET-GP LLC, a Washington limited liability company ("ICOS-
GP"), as general partners.
RECITALS
WHEREAS, the Partnership intends to engage in the research, development,
manufacture, production and sale of Endothelin Products (as defined in Article 1
below) for use in the Field (as defined in Article I below); and
WHEREAS, in connection with the formation of the Partnership and the
granting of a limited partnership interest in the Partnership to TBC in
accordance with the Partnership Agreement, TBC is willing to contribute to the
Partnership a license to use the Background Technology (as defined in Article I
below) in the Field upon the terms set forth herein;
NOW, THEREFORE, in consideration of the initial capital contribution to the
Partnership pursuant to the Partnership Agreement, TBC and the Partnership
hereby agree as follows:
I. DEFINITIONS
As used in this Agreement:
1.1 Affiliate
The term Affiliate has the meaning as set forth in the Partnership
Agreement, except the Parties shall not be deemed to be Affiliates of each
other.
1.2 Background Technology
The term Background Technology means the Patents and Technical Information.
1.3 Consultant's Letter Agreement
The term Consultant's Letter Agreement means the letter agreement dated [ *
] to TBC pursuant to which TBC has engaged [ * ].
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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1.4 Endothelin Agent
The term Endothelin Agent means [ * ].
1.5 Endothelin Product
The term Endothelin Product means [ * ].
1.6 Endothelin Receptor
The term Endothelin Receptor means [ * ].
1.7 Field
The term Field means [ * ].
1.8 [ * ]
1.9 [ * ] Agreement
The term [ * ] Agreement means [ * ].
1.10 Party
The term Party means TBC or the Partnership.
1.11 Patents
The term Patents means those patents and patent applications set forth in
Attachment A and any patents and patent applications owned or controlled by TBC
or any of its Affiliates as of the date of this Agreement that cover or relate
to the composition, use or method of making an Endothelin Receptor, Endothelin
Agent or Endothelin Product, including any renewal, division, continuation or
continuation in part of any such applications and any patents issuing thereon,
and any reissues, extensions, substitutions, confirmations, registrations,
revalidations, revisions, supplementary protection certificates and additions of
or to any such patents.
1.12 Technical Information
The term Technical Information means any of the following that are owned
or controlled by TBC or any of its Affiliates: [ * ].
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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II. LICENSE OF BACKGROUND TECHNOLOGY
2.1 License
(a) Subject to the terms of this Agreement and the rights of [ * ] under
the [ * ] Agreement, TBC hereby grants to the Partnership [ * ] and license [ *
] to use the Patents solely within the Field to make, have made, use, offer for
sale, sell and import Endothelin Products in the Field or any invention claimed
in the Patents. The foregoing license is fully paid up and royalty free.
(b) Subject to the terms of this Agreement and the rights of [ * ] under
the [ * ] Agreement, TBC hereby grants to the Partnership an exclusive right and
license throughout the world to use the Technical Information in connection with
the discovery, research, development or commercialization of Endothelin
Receptors, Endothelin Agents or Endothelin Products. The foregoing license is [
* ]. This license is subject to the right of TBC to use the Technical
Information for any purpose other than as it relates to Endothelin Receptors,
Endothelin Agents or Endothelin Products.
(c) It is recognized and agreed that (i) some of the Background Technology
has been discovered or developed at [ * ].
2.2 Right to Sublicense
TBC also hereby grants to the Partnership the right to grant sublicenses
within and limited to the scope of the rights and licenses granted to the
Partnership in Section 2.1. The Partnership shall notify TBC of the identity of
each sublicensee to whom a sublicense is granted and provide TBC a true and
correct copy of such sublicense and any and all modifications, amendments, and
revisions.
2.3 Limitations
No right or license is granted to the Partnership hereunder except as
expressly specified in Sections 2.1 and 2.2.
2.4 [ * ] Agreement
The Partnership hereby is assigned and assumes all of TBC's rights and
obligations under the [ * ] Agreement associated with [ * ] (or its "Backup
Candidates" pursuant to Section 2.1(e) of the [ * ] Agreement) and [ * ] (as
defined in the [ * ] Agreement), except the Partnership does not assume and
shall not be responsible for any liabilities or obligations accruing from the
actions or inactions of TBC with respect to the [ * ] Agreement prior to the
date hereof. The payments from [ * ] under Sections 5.1 and 5.2 of the [ * ]
Agreement shall be assigned to the Partnership as follows:
(a) [ * ]
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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(b) [ * ]
(c) [ * ]
(d) [ * ]
III. DISCLOSURE AND USE OF BACKGROUND TECHNOLOGY
3.1 Disclosure by TBC
TBC shall promptly and fully disclose the Background Technology to the
Partnership and ICOS-GP (on behalf of the Partnership). TBC shall provide the
Partnership with reasonable quantities of currently available materials
identified in items (b) and (c) of the definition of Technical Information.
3.2 Limitation
Except as expressly authorized by this Agreement, as expressly required by
the [ * ] Agreement or by the written consent of the other party, during the
term of this Agreement and thereafter, each party shall maintain as
confidential, and not disclose or otherwise use, any confidential or proprietary
information received from the other party; provided, however, that the
Partnership may disclose and use the Background Technology in connection with
exercise of its license rights hereunder. The foregoing obligations shall not
apply to any information:
(a) which a receiving party can demonstrate by written records was
previously known to the party;
(b) which is now public knowledge, or becomes public knowledge in the
future, other than through acts or omissions of the receiving party in violation
of the terms of this Agreement;
(c) which is lawfully obtained by the receiving party from sources
independent of the other party who have a lawful right to disclose such
information; or
(d) which must be disclosed pursuant to applicable laws or regulations
or court order, provided the receiving party attempts to obtain an appropriate
protective order for such disclosure and provides prompt notice to the other
party of the expected disclosure.
3.3 Survival
The obligation of confidentiality imposed by the foregoing Section 3.2
shall survive termination of this Agreement for any reason whatsoever.
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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IV. PATENT, COPYRIGHT AND TRADE SECRET ENFORCEMENT
4.1 Enforcement
The Partnership shall have the right to bring, defend and maintain, and TBC
shall have the right, but not the obligation, unless as an indispensable party,
to join in, any suit or action involving infringement of any patents or
copyrights, misappropriation of any trade secrets or interference with any other
intellectual property right included in the Background Technology licensed to
the Partnership in the Field pursuant to this Agreement. Any settlement of such
action and/or suit shall only be entered into by the Partnership with the prior
written consent of TBC. [ * ]
The Partnership and TBC will cooperate to the extent necessary and provide
reasonable assistance in support of the defense of any suit or action involving
infringement of any patents, trademarks or copyrights, misappropriation or theft
of any trade secrets or interference with any other intellectual property right
included in Background Technology licensed to the Partnership pursuant to this
Agreement.
In the event the Partnership fails or declines to take action to enforce
any such patent, copyright, trade secret or other intellectual property right
within [ * ] following receipt of notice and evidence of such infringement,
misappropriation or interference, [ * ].
4.2 Notice of Infringements
Either Party hereto shall provide the other with reasonable notice of the
evidence and existence of third parties, who come to the attention of such Party
and who may be involved in activities which infringe or potentially infringe,
misappropriate or potentially misappropriate or interfere with patents,
copyrights or trade secrets concerning the Background Technology licensed to the
Partnership in the Field pursuant to this Agreement.
4.3 Defense of Infringement Claims
The Partnership will undertake the defense of any actions brought by a
third party alleging that the sale of an Endothelin Product or other action of
the Partnership infringes a patent, trademark, copyright or other intellectual
property right of such third party. [ * ]
V. PATENT APPLICATIONS AND COPYRIGHT REGISTRATIONS
5.1 Applications
The Partnership shall have the right and obligation, at its expense, to
file, prosecute (including interference actions), maintain and defend the patent
applications or patents and copyright registrations or copyrights, if any,
covering the Background Technology for Endothelin Products.
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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If the Partnership declines to file, prosecute or maintain any patent
application or patent covering the Background Technology, [ * ].
VI. REPRESENTATION; DISCLAIMER
6.1 Representations
TBC represents and warrants to the Partnership that:
(a) TBC (i) has the corporate power and authority and the legal right
to enter into this Agreement and to perform its obligations hereunder and (ii)
has taken all necessary corporate action on its part to authorize the execution
and delivery of this Agreement and the performance of its obligations hereunder.
(b) TBC has obtained all necessary consents, approvals and
authorizations of all governmental authorities and other third parties required
to be obtained in connection with its execution, delivery and performance of
this Agreement.
(c) Notwithstanding anything to the contrary in this Agreement, TBC's
execution, delivery and performance of this Agreement (i) will not conflict with
or violate any requirement of applicable laws or regulations and (ii) will not
conflict with, violate or breach or constitute a default or require any consent
under any of its contractual obligations.
(d) Other than the rights granted to [ * ] pursuant to the [ * ]
Agreement, TBC (i) has not granted any rights in, to or under the Background
Technology to any third party and (ii) has not entered into any agreements that
give any third party rights to acquire, own or possess any right or interest in
any Background Technology or other proprietary rights arising or resulting from
any research related thereto.
(e) TBC has provided to ICOS, on behalf of the Partnership, a true and
complete copy of the [ * ] Agreement. None of the terms of the [ * ] Agreement
have been amended, modified or waived and, with respect to [ * ], any "Backup
Candidates" thereto and the Endothelin Receptor Antagonist Program, will not be
amended, modified or waived without the prior written consent of the
Partnership.
(f) TBC has provided to ICOS-GP, on behalf of the Partnership, a true
and complete copy of the Consultant's Letter Agreement except for redactions of
terms thereof that do not relate to the fees that are due thereunder with
respect to the [ * ] Agreement. None of the terms of the Consultant's Letter
Agreement have been amended, modified or waived and, with respect to fees due on
payments under the [ * ] Agreement, will not be amended, modified or waived
without the prior written consent of the Partnership.
(g) Attachment A contains a list of all patents issued and patent
applications filed on or before the date of this Agreement that are owned or
controlled by TBC or any of its Affiliates and that cover or relate to the
composition, use or method of making an Endothelin
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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Receptor, Endothelin Agent or Endothelin Product. All the inventors named in the
patent applications have assigned, or are under an obligation to assign, to TBC
all of their right, title and interest in the inventions claimed in the patent
applications.
(h) TBC has not received any notice of a claim of infringement or
misappropriation of any alleged rights asserted by any third party in relation
to any Background Technology.
(i) TBC is not aware of any patents or other proprietary rights of any
third party which would materially affect the Partnership's exercise of the
license rights granted to it hereunder.
6.2 Disclaimer of Warranties
Except as provided in Section 6.1, TBC EXPRESSLY DISCLAIMS ALL WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, PATENTABILITY AND
NONINFRINGEMENT WITH RESPECT TO THE BACKGROUND TECHNOLOGY LICENSED HEREUNDER TO
THE PARTNERSHIP BY TBC.
VII. TERM AND TERMINATION
7.1 Term
This Agreement (including the license and rights granted under Sections 2.1
and 2.2) shall come into effect as of the date hereof and shall remain in full
force and effect until termination pursuant to Section 7.2.
7.2 Default
In the event that the Partnership (the "Defaulting Party") shall default in
a material obligation hereunder and fail to remedy such default within sixty
(60) days after such default shall have been called to its attention by a notice
in writing from TBC, then TBC, at its option, may terminate its obligations to,
and the rights of, the Defaulting Party under the license to the Background
Technology granted herein upon ten (10) days' written notice to the Defaulting
Party, which termination shall be effective as of the occurrence of the event
giving rise to the option to terminate.
7.3 Continuing Obligations
Notwithstanding the termination of a party's obligations to or the rights
of the Defaulting Party under this Agreement in accordance with the provisions
of Section 7.2, the provisions of Section 3.2, this Section 7.3 and 9.10 shall
survive such termination and continue in full force and effect for an indefinite
term, except to the extent the confidential technology or information
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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would not be deemed confidential pursuant to the Research and Development
Service Agreement by and among the Partnership, ICOS and TBC dated as of the
same date hereof.
VIII. NOTICE
All notices, requests, demands and other communications required or
permitted to be given under this Agreement shall be in writing and shall be
mailed to the Party to whom notice is to be given, by telex or facsimile, and
confirmed by first class mail, registered or certified, return receipt
requested, postage prepaid, and properly addressed as follows (in which case
such notice shall be deemed to have been duly given on the third (3rd) day
following the date of such sending):
<TABLE>
<S> <C>
TBC: Texas Biotechnology Corporation
7000 Fannin, 20th Floor
Houston, TX 77030
Attn: President
Partnership: ICOS-ET-GP LLC, General Partner
c/o ICOS Corporation
22021 - 20th Avenue S.E.
Bothell, WA 98021
Attn: Judith A. Woods, Esq.
Legal Department
With a copy to: TBC SUBSIDIARY, General Partner
700 Fannin, 20th Floor
Houston, TX 77030
Attn: President
</TABLE>
Any Party by giving notice to the others in the manner provided above may change
such Party's address for purposes of this Article VIII.
IX. MISCELLANEOUS
9.1 Entire Agreement
This Agreement, together with any other written agreements between the
Parties hereto referred to in the Partnership Agreement, sets forth the entire
agreement of the Parties with respect to the subject matter hereof and may not
be modified except by a writing signed by authorized representatives of the
Parties hereto.
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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9.2 Headings
Article and Section headings and numbers in this Agreement are included for
convenience of reference only and shall not constitute a part of this Agreement
for any other purpose.
9.3 Execution in Counterparts
This Agreement may be executed in any number of counterparts, each of which
when so executed and delivered shall be deemed to be an original and all of
which counterparts of this Agreement taken together shall constitute one
instrument.
9.4 Force Majeure
It is agreed that each of the Parties hereto is excused from performing
such acts as are required hereunder as may be prevented by or whose purpose is
frustrated by acts of God, governmental restrictions, wars, insurrections,
strikes, floods, work stoppages, lack of materials or any other condition beyond
the Party's reasonable control. The Party so affected shall give notice to the
other Party in writing promptly and thereupon shall be excused from such of its
obligations hereunder as it is unable to perform on account of the force majeure
condition throughout the duration thereof plus a period of thirty (30) days.
9.5 Applicable Law
This Agreement shall be governed by and construed in accordance with the
laws of the State of Delaware without regard to the choice of law provisions of
the State of Delaware or any other jurisdiction.
9.6 Assignment on Written Consent
This Agreement may not be assigned in whole or in part by TBC or the
Partnership, except with the prior written consent of the other Party; provided,
however, that the Partnership may sublicense its license rights hereunder and
may assign its rights or obligations in connection with a merger, consolidation
or reorganization of the Partnership or to a purchaser of all or substantially
all its assets and that, after termination of the Partnership Agreement for any
reason, this Agreement may be assigned in whole or in part by the Partnership.
To the extent the foregoing provision in this Section 9.6 is unenforceable
in the event of bankruptcy or insolvency of TBC, no assignment of this Agreement
by TBC shall be permitted unless the assignee can demonstrate to the Partnership
the assignee's ability to perform all TBC's obligations under this Agreement,
including, without limitation, the financial and technical ability to (a)
enforce, defend and maintain patents, copyrights and trade secrets and provide
notices in accordance with Article IV and (b) prosecute and maintain in force
patent applications and copyright registration in accordance with Article V.
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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9.7 Severability
In the event any one or more of the provisions contained in this Agreement
shall be invalid, illegal or unenforceable in any respect, the validity,
legality or enforceability of the remaining provisions contained herein shall
not in any way be affected or impaired thereby. In such event, such invalid
provision or provisions shall be validly reformed to as nearly approximate the
intent of the Parties as possible and, if unreformable, shall be severed and
deleted from this Agreement.
9.8 No Waiver
No failure or delay on the part of either Party in exercising any right,
power or remedy hereunder shall operate as a waiver thereof, nor shall any
single or partial exercise of any such right, power or remedy preclude any other
or further exercise thereof or the exercise of any other right, power or remedy
hereunder or the remedies provided by law.
9.9 Trademarks and Trade Names
TBC, by this Agreement, grants no rights to the Partnership in any
trademarks or trade names of TBC or of any of its respective subsidiaries or
affiliated companies. Any such rights to be granted shall be documented in a
separate written agreement.
9.10 Indemnity
The Partnership hereby (a) releases TBC from any obligation to defend,
indemnify or save the Partnership and its agents and employees harmless from and
(b) agrees to defend, indemnify and save TBC harmless from any and all costs,
expenses (including attorneys' fees), liabilities, damages and claims for any
injury or death to persons or damage to or destruction of property, or other
loss ("Losses"), arising out of or in connection with any product made, used,
offered for sale, sold, or imported by the Partnership or furnished pursuant to
any provision hereunder except that the Partnership shall have no obligation to
indemnify or defend TBC for or against Losses to the extent arising out of the
negligence or willful misconduct of TBC.
9.11 Other Agreements
Any other provision of this Agreement notwithstanding, nothing in this
Agreement shall obligate TBC to disclose to the Partnership any information or
to make available to the Partnership any materials in violation of an obligation
of secrecy or a limitation of use imposed by a third party from whom such
information or materials shall have been received.
9.12 Attorneys' Fees and Costs
In the event of any action at law or in equity between the Parties hereto
to enforce any of the provisions hereof, the unsuccessful Party to such
litigation shall pay to the successful Party all costs and expenses, including
actual attorneys' fees, incurred therein by such successful Party;
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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and if such successful Party shall recover judgment in any such action or
proceeding, such costs, expenses and attorneys' fees may be included in and as
part of such judgment. The successful Party shall be the Party who is entitled
to recover its costs of suit, whether or not the suit proceeds to final
judgment. A Party not entitled to recover its costs shall not recover attorneys'
fees.
9.13 Remedies
No right, power or remedy herein conferred upon or reserved to a Party is
intended to be exclusive of any other right, power or remedy, and each and every
right, power and remedy of a Party pursuant to this Agreement or now or
hereafter existing at law or in equity or by statute or otherwise shall, to the
extent permitted by law, be cumulative and concurrent and shall be in addition
to every other right, power or remedy pursuant to this Agreement or now or
hereafter existing at law or in equity or by statute or otherwise, and the
exercise or beginning of the exercise by a Party of any one or more of such
rights, powers or remedies shall not preclude the simultaneous or later exercise
by a Party of any or all such other rights, powers or remedies.
9.14 Binding Effect
This Agreement shall be binding upon and inure to the benefit of the
Parties, their successors and permitted assigns.
9.15 Attachment
Attachment A attached hereto and referred to herein is hereby incorporated
herein as though fully set forth.
9.16 Number and Gender
Words in the singular shall include the plural, and words in a particular
gender shall include either or both additional genders, when the context in
which such words are used indicates that such is the intent.
9.17 Representations
Each of the Parties hereto acknowledges and agrees (a) that no
representation or promise not expressly contained in this Agreement has been
made by the other Party hereto or by any of its agents, employees,
representatives or attorneys; (b) that this Agreement is not being entered into
on the basis of, or in reliance on, any promise or representation, expressed or
implied, covering the subject matter hereof, other than those which are set
forth expressly in this Agreement; and (c) that each has had the opportunity to
be represented by counsel of its own choice in this matter, including the
negotiations which preceded the execution of this Agreement.
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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9.18 Agreement to Perform Necessary Acts
Each Party agrees to perform any further acts and execute and deliver any
and all further documents and/or instruments which may be reasonably necessary
to carry out the provisions of this Agreement and to carry out the business
purposes of the Partnership.
9.19 Rights in the Event of Bankruptcy
All rights in the Background Technology granted under this Agreement to
the Partnership by TBC are, and shall otherwise be deemed to be, for purposes of
Section 365(n) of the U.S. Bankruptcy Code, a license of rights to "intellectual
property" as defined in Section 101 of the U.S. Bankruptcy Code. The
Partnership, as licensee of such rights under this Agreement, shall retain and
may fully exercise all of its rights and elections under the U.S. Bankruptcy
Code. In the event of the commencement of a bankruptcy proceeding by or against
TBC under the U.S. Bankruptcy Code, the Partnership shall be entitled to
complete access to (or a complete duplicate of, as appropriate) any Background
Technology.
IN WITNESS WHEREOF, TBC and the Partnership executed this Agreement as of
the date first above written.
TEXAS BIOTECHNOLOGY CORPORATION
By: David B. McWilliams
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Its: President/CEO
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ICOS-TEXAS BIOTECHNOLOGY L.P.
By ICOS-ET-GP LLC, as General Partner
By: Paul Clark
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Name: Paul Clark
----------
Title: Chairman & CEO
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By TBC-ET, Inc., as General Partner
By: David B. McWilliams
-------------------
Name: David B. McWilliams
-------------------
Title: President
---------
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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ATTACHMENT A
[ * ]
[ * ] designates portions of this document that have been omitted pursuant to a
request for confidential treatment filed separately with the Commission.
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