Exhibit 10.2
SETTLEMENT AGREEMENT
THIS SETTLEMENT AGREEMENT (the "Settlement Agreement"), which is entered
into as of May 6, 1999, and effective as of the Effective Date (as defined in
the License Agreement described below), by and among Emory University, a
non-profit Georgia corporation, having a place of business in Atlanta,
Georgia ("Emory"), Triangle Pharmaceuticals, Inc., a Delaware corporation,
having a place of business in Research Triangle Park, North Carolina
("Triangle"), ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇, Triangle's Chairman and CEO, ("▇▇. ▇▇▇▇▇"),
Glaxo Wellcome plc, an English corporation, having a place of business in
Greenford, England ("GW plc"), and Glaxo Wellcome Inc. a North Carolina
corporation, having a place of business in Research Triangle Park, North
Carolina ("GW Inc.") (GW plc and GW Inc. shall be referred to collectively
herein as "GW"), Glaxo Group Limited, an English corporation, having a place
of business at Greenford, Middlesex ("GGL") and The Wellcome Foundation
Limited, an English corporation, having a place of business in ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ("▇▇▇ ▇▇▇").
W I T N E S S E T H:
WHEREAS, Emory, on one hand, and GW plc and GW Inc., on the other hand,
desire to enter into a settlement to amicably resolve Civil Action
No. 1/:96-CV-1754-GET in U.S. District Court for Northern District of Georgia
Atlanta Division (the "FTC Litigation") without further court proceedings;
WHEREAS, Triangle and ▇▇. ▇▇▇▇▇, in his individual capacity, on one
hand, and GW plc. and GW Inc., on the other hand, desire to settle any
differences that have arisen between them including relating to FTC and ▇▇.
▇▇▇▇▇'▇ separation from ▇▇▇▇▇▇▇▇▇ Wellcome Co. (or any successor company or
Affiliates), without engaging in court proceedings;
WHEREAS, the parties agree that each should receive consideration as
provided herein for entering into this Settlement of their respective
differences and in order to avoid further litigation;
WHEREAS, as aspects of this settlement, the parties desire that GW cause
the appropriate entity to assign certain FTC patent rights to Emory, license
certain other FTC patent rights to Emory, convey all rights relating to
certain FTC related data and technology to Emory and convey a certain
quantity of FTC drug substance to Emory for use in the development and
marketing of FTC by Emory's licensee, Triangle, or any subsequent or
successor licensee; and the parties agree that GW shall receive a certain
payment and royalty on such sales of FTC as set forth in the License
Agreement described below and Emory shall release GW from all claims of
liability in the FTC Litigation and that Emory shall receive the monetary
payments and assignment of patent properties described below;
WHEREAS, GGL and The WFL have rights in certain patent property relevant
to this Settlement Agreement and to the License Agreement described below; and
WHEREAS, the parties desire to set forth the details of their
obligations relating to the licensing matters referred to above in a separate
Exclusive License Agreement among GGL, The WFL, GW Inc., Emory and Triangle
(the "License Agreement") to be executed concurrently herewith.
NOW, THEREFORE, in consideration of the premises and the promises and
mutual agreements hereinafter contained, the sufficiency of which is
acknowledged, the parties hereto hereby agree as follows:
ARTICLE 1
DEFINITIONS
Capitalized terms used in this Settlement Agreement but not defined
herein, shall have the meanings defined in the License Agreement.
ARTICLE 2
TERMS OF SETTLEMENT AGREEMENT
2.1 PAYMENT BY GW TO EMORY. In connection with this Settlement Agreement,
GW shall pay Emory a total of [***] ($[***]) in the following manner. Within
[***] GW shall pay to Emory [***]([***]). GW shall pay Emory an additional
[***]([***]) within [***]. Such payments shall be made by wire transfer or
as otherwise mutually agreed by the parties; provided, in each case, that
wire transfer instructions have been given to GW Inc. within [***] (for the
first payment) and [***] (for the second payment).
2.2 GW'S ASSIGNMENT OF THE FTC FOR HBV PATENT PROPERTY FAMILY TO EMORY. As
of the Effective Date, GW shall assign (or cause the appropriate entity to
assign) to Emory all of GW and its Affiliates' rights, title and interest in
and to the patents and patent applications arising out of United Kingdom
patent application number [***] which claims a method of using FTC to treat
HBV (the "Assigned Patents"). The Assigned Patents are listed in Appendix A
hereto, which shows the status of each such application in each country in
which it has been filed according to GW's records. Emory shall prepare, file
and register, at its own expense, the documentation necessary to effectuate
the assignment of the Assigned Patents. Commencing upon the Effective Date
and continuing thereafter, GW shall not be responsible for maintaining,
prosecuting or taking any action regarding the Assigned Patents, provided,
however, GW agrees to execute, or cause the execution of, any document or
instrument reasonable necessary to effectuate the assignment of the Assigned
Patents.
Within sixty (60) days of the Effective Date, GW and its Affiliates will
transfer to Emory all files and documents relating to the preparation and
prosecution of all patents and patent applications assigned under this
section. Thereafter, GW and its Affiliates shall cooperate with
2
*** Portions of this page have been omitted pursuant to a request for
Confidential Treatment and filed separately with the Commission.
Emory, at Emory's expense in doing such acts and executing such papers as may
reasonably be required to prosecute and maintain the patents and patent
applications.
GW represents that it produced, in the FTC Litigation, all files and
documents relating to the making and development of the inventions described
in the patent and patent applications assigned under this section that it
could locate following a reasonable good faith search, and GW expressly
releases Emory from any obligation of confidentiality imposed by the
protective order entered in the FTC Litigation solely with respect to those
documents; provided, however, Emory provides GW fourteen (14) days notice or,
if that is not possible, as much notice as reasonably practicable, as to the
identity of the GW documents Emory proposes to disclose, so that GW has an
opportunity to object that the GW documents (or any part thereof) do not
relate to the making or development of the invention. GW further agrees that
it will use reasonable efforts to preserve and make available to Emory the
originals of those documents to the extent such originals are extant and have
been previously located or can be located following a reasonable search to
the extent reasonably required for the prosecution, enforcement or
maintenance of the assigned patents or patent applications.
2.3 STIPULATION OF DISMISSAL. Emory and GW plc and GW Inc. (collectively
the "Stipulating Parties") agree that within ten (10) days of the Effective
Date, they will act promptly to cause their attorneys to sign and file in the
FTC Litigation a Stipulation of Dismissal with Prejudice in the form appended
hereto as Appendix B.
2.4 MUTUAL RELEASES. Effective as of the Effective Date, the Stipulating
Parties, for themselves, their successors and assigns, hereby release and
forever discharge each other, their Affiliates, their past and present
directors, officers and employees, agents, attorneys, successors, assigns,
customers, licensees (including, without limitation, Triangle), and other
transferees from any and all promises, agreements (other than this Settlement
Agreement and the License Agreement), causes of action, actions, claims, and
demands whatsoever in law or in equity relating to FTC with or against such
parties, and any liabilities, losses, costs and expenses related thereto
relating to FTC, which they ever had, now have, or which they or their
successors or assigns can, shall or may in the future have upon or by reason
of any and all claims relating to FTC or relating to any other claim which
has or could have been brought in the FTC Litigation, based on occurrences up
to and including the Effective Date. For the avoidance of doubt, it is
expressly understood and acknowledged that Emory does not release GW or its
Affiliates from any claim or liability of any alleged infringement of any
patent rights Emory may have relating to 3TC, and the GW, its Affiliates do
not release Emory from any claim or liability related to 3TC.
2.5 RELEASES AMONG EMORY, TRIANGLE, ▇▇. ▇▇▇▇▇ AND GW. Effective as of the
Effective Date (i) on the one hand, Emory, Triangle and ▇▇. ▇▇▇▇▇ and (ii) on
the other hand, GW, for themselves and their heirs, their Affiliates, their
successors and assigns, hereby release and forever discharge each other,
their Affiliates, their past and present directors, officers and employees,
agents, attorneys, successors, assigns, customers, and other transferees for
any and all promises, agreements (other than this Settlement Agreement and
the License Agreement and other than the executory obligations under that
certain Termination Agreement between ▇▇. ▇▇▇▇▇ and ▇▇▇▇▇▇▇▇▇ Wellcome Co.
dated as of June 30, 1995 and the letter agreement between
3
▇▇. ▇▇▇▇▇ and GW plc, dated July 21, 1995, relating to, among other things,
▇▇. ▇▇▇▇▇'▇ cooperation in certain patent prosecution matters), causes of
action, claims and demands whatsoever in law or in equity with or against
such parties, and any liabilities, losses, costs and expenses related
thereto, which they ever had, now have, or which they or their successors or
assigns can, shall or may in the future have upon or by reason of any and all
claims which have or could have been brought on any matter, including but not
limited to any matter relating in any way to FTC or ▇▇. ▇▇▇▇▇'▇ separation
from ▇▇▇▇▇▇▇▇▇ Wellcome Co. (or any successor company) or Affiliates based on
occurrences up to and including the Effective Date. These releases and this
Settlement Agreement do not include, affect or release any promises,
agreements, causes of action, claims or demands between or among Emory,
Triangle or ▇▇. ▇▇▇▇▇ or any of them.
ARTICLE 3
PUBLICITY AND CONFIDENTIALITY
On the date that this Settlement Agreement is executed, GW, Emory and
Triangle shall issue a joint press release the form of which shall be agreed
to by all parties hereto. Each of GW, Emory and Triangle shall be permitted
to issue additional press releases limited to the subject of the economic or
financial impact of this Settlement Agreement on each of GW, Emory or
Triangle, as the case may be, however, none of the specific financial terms
of this Settlement Agreement shall be disclosed. The other parties hereto
shall have a reasonable opportunity to review and comment on any such
proposed press release, which comments shall not be unreasonably refused.
The specific terms of this Settlement Agreement shall be confidential and
neither party may publicly disclose, except to legal, accounting and
financial consultants and except as otherwise provided herein, any such term
without the prior written approval of the other party, unless such disclosure
is compelled by a court or administrative agency or otherwise required by
law. In the event that such disclosure is compelled by a court or
administrative agency or otherwise required by law, the disclosing party
shall make reasonable effort to provide the other party with notice
beforehand. Emory and its Affiliates and Sublicensees (including Triangle)
may disclose the terms of this Settlement Agreement to a bona fide
prospective sublicensee or Marketing Collaborator, subject to an obligation
of confidentiality of such sublicensee or Marketing Collaborator that is no
less restrictive than the confidentiality obligations contained herein. GW
and Emory hereby acknowledge that Triangle has notified each of them that
this Settlement Agreement constitutes a material agreement to Triangle and
must be filed by Triangle with the Securities and Exchange Commission
pursuant to Triangle's reporting obligations under the Securities and
Exchange Act of 1934, as amended. In any case where a party makes disclosure
of the terms hereunder to a court, it shall be disclosed under seal. In all
other respects, except as required by law, neither party shall use the name
of the other party in any publicity release without the prior written
permission of such other party, which shall not be unreasonably withheld.
The parties acknowledge that for the avoidance of doubt, each of GW and Emory
shall be free to disclose both the existence and the terms of this Settlement
Agreement to the United States District Court for the Northern District of
Georgia in connection with Civil Action 1:96-CV-1754-GET between Emory
and GW.
4
ARTICLE 4
DISCOVERY MATERIALS FROM THE FTC LITIGATION
The Stipulating Parties further agree that discovered materials from the
FTC Litigation, can be used by the Stipulating Parties in Civil Action No.
1/:96-CV-1868-GET, in the same manner and to the same extent that they could
be used as if discovered in that case. The Stipulating Parties do not waive
any objections regarding admissibility or use. The Stipulating Parties
further agree to abide by the Protective Order entered in the FTC Litigation.
The parties agree that the facts and circumstances surrounding the
negotiation and terms of this Settlement Agreement and of the License
Agreement are not admissible and shall not be introduced in any action
(including Civil Action 1:96-CV-1868-GET), unless the action concerns the
enforcement of the terms of the Settlement Agreement or the License Agreement.
ARTICLE 5
ENTIRE AGREEMENT
This Settlement Agreement and the License Agreement constitute the
entirety of the agreements and understandings between GW on the one hand and
any of the other parties on the other hand and anyone acting for, associated
with or employed by any party concerning the subject matter hereof and
replace and supersede any and all prior discussions, agreements or
understandings. With respect to the subject matter hereof, there are no
promises, representations or agreements, whether oral or written, between the
parties hereto or anyone acting for, associated with or employed by any party
hereto other than as set forth in this Settlement Agreement and the License
Agreement. Each party hereto represents and warrants that, other than as
recited herein, there has been no reliance, inducement, representation or
agreement causing, affecting or in connection with this Agreement.
This Settlement Agreement can be amended or modified only by a written
instrument referencing this Settlement Agreement and executed by the parties
hereto.
It is understood and agreed that this Settlement Agreement, any
consideration given or accepted in connection with it and the covenants made
in it are all made, given and accepted in settlement and compromise of
disputed claims and are not an admission of liability by anyone.
Each party has undertaken such independent investigation and evaluation
as he, she or it deems appropriate and is entering this agreement in reliance
on that and not in reliance on any advice, disclosure, representation or
information provided by or expected from any other party or party's lawyers.
This is an agreement of settlement and compromise, made in recognition that
the parties may have different or incorrect understandings, information and
contentions, as to facts and law, and with each party compromising and
settling any potential correctness or incorrectness of its understandings,
information and contentions as to the facts and law, so that no
misunderstanding or misinformation and no claim of fraud or fraudulent
inducement occurring prior to or in connection with the execution hereof
shall be a ground for rescission hereof or for recovery of damages, except as
otherwise expressly provided herein.
5
ARTICLE 6
INDEPENDENT CONTRACTORS
It is understood and agreed that the parties hereto are independent
contractors and are engaged in the operation of their own respective
businesses, and neither party hereto is to be considered the agent, partner,
or joint venturer of the other party for any purpose whatsoever, and neither
party shall have any authority to enter into any contracts or assume any
obligations for the other party nor make any warranties or representations on
behalf of that other party. It is understood and agreed that to the extent
that any relationship other than an independent contractors relationship may
have existed, or was alleged to have existed, prior to the Effective Date,
among GW or its Affiliates on the one hand, and one or more of Emory or its
Affiliates, and ▇▇. ▇▇▇▇▇, Triangle or its Affiliates on the other hand, such
relationship is hereby terminated and the parties are now solely independent
contractors.
ARTICLE 7
ASSIGNMENT AND BENEFIT
This Settlement Agreement may not be assigned by any party hereto
without the prior written consent of the other party or parties. However,
each party may, at its discretion, (i) assign this Settlement Agreement in
whole or in part to one or more of its Affiliates as defined in the License
Agreement, and/or (ii) assign this Settlement Agreement to a third party as
part of the sale or merger of all or substantially all of the party's
pharmaceutical business and related assets to which this Settlement Agreement
and the License Agreement relate. In the event of any assignment under this
Settlement Agreement, the assignor and assignee shall be jointly and
severally liable for the assignor's obligations hereunder.
This Settlement Agreement shall be binding upon and inure to the benefit
of the successors and permitted assigns of the parties.
ARTICLE 8
GW'S WARRANTY
GW, and its Affiliates, warrant that the patent applications and patents
listed in Appendix A are all of the patents and patent applications owned by
GW and its Affiliates that claim the use of FTC for the treatment of HBV and
all of the patent applications that were filed based on or claiming priority
from United Kingdom application number [***] GW warrants that it and its
Affiliates have taken whatever steps GW believed were reasonably necessary to
preserve and/or maintain the Assigned Patents. Any claim by Emory, its
Affiliates, or Triangle or its Affiliates, brought against GW with respect to
an alleged breach or violation of this Article must be commenced within one
year from the Effective Date.
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Confidential Treatment and filed separately with the Commission.
ARTICLE 9
GOVERNING LAW
This Settlement Agreement is made and shall be interpreted in accordance
with the laws of the State of North Carolina without reference to provisions
relating to conflicts of law.
ARTICLE 10
NOTICE
In the event that any party hereto desires to provide notice to any
other party hereto relating to this Settlement Agreement, such party shall do
so in accordance with the notice provision (Section 15.9) of the License
Agreement.
ARTICLE 11
COUNTERPARTS
This Settlement Agreement may be executed in one or more counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Settlement Agreement to
be executed with effect as of the Effective Date.
[INTENTIONALLY LEFT BLANK]
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GLAXO WELLCOME PLC
By: /s/ ▇ ▇ ▇▇▇▇▇▇▇▇
------------------------------------
Name: ▇ ▇ ▇▇▇▇▇▇▇▇
Title: Assistant Secretary
GLAXO WELLCOME INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, ▇▇.
------------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, ▇▇.
Title: Senior Vice President,
General Counsel and Secretary
GLAXO GROUP LIMITED
By: /s/ ▇ ▇ ▇▇▇▇▇▇▇▇
------------------------------------
Name: ▇ ▇ ▇▇▇▇▇▇▇▇
Title: Assistant Secretary
THE WELLCOME FOUNDATION LIMITED
By: /s/ ▇ ▇ ▇▇▇▇▇▇▇▇
------------------------------------
Name: ▇ ▇ ▇▇▇▇▇▇▇▇
Title: Assistant Secretary
EMORY UNIVERSITY
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------------------
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇
Title: Executive Vice President
TRIANGLE PHARMACEUTICALS, INC.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
------------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: Chairman and Chief Executive
Officer
▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇▇, IN HIS INDIVIDUAL CAPACITY,
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇
---------------------------------------
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APPENDIX A
CASE NO. PB1225
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Country Application No. Status
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Australia 1367692 Granted
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Canada 2105486 Pending
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Czechoslovakia PV183593 Granted
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Europe 92906520.9 Pending
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Hungary P9302493 Pending
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Ireland 920701 Pending
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Israel 101144 Granted
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Japan 50582592 Pending
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▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ Pending
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▇▇▇▇▇▇ ▇▇▇▇▇▇ Pending
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Malaysia P19200358 Pending
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▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ Dead
264621 Granted
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Philippines 44011 Pending
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Portugal 100198 Pending
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Russia 93043875.04 Granted
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Saudi Arabia 92120445 Pending
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▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ Granted
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Thailand 015608 Pending
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Taiwan 81101693 Granted
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Ukraine 94051484 Pending
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[***] [***] [***]
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South Africa 921658 Granted
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APPENDIX B
United States District Court for the
Northern District of Georgia
Atlanta Division
---------------------------
:
Emory University, :
:
Plaintiff, :
: Civil Action No.
: 1/:96-CV-1754-GET
-v- :
:
Glaxo Wellcome Inc. and :
Glaxo Wellcome plc, :
:
--------------------------- :
STIPULATION OF DISMISSAL
Pursuant to the provisions of Fed. R. Civ. P. 41 (a)(1), the parties, by
and through their counsel of record, hereby dismiss with prejudice all claims
and counterclaims asserted by them in the above-styled action. Each side will
bear its own fees and costs.
This _____ day of May, 1999
Respectfully submitted,
_______________________________________
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ LLP
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Esq.
▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ and ▇▇▇▇▇▇
▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
Counsel for Plaintiff
_______________________________________
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, ▇▇.
▇▇▇▇▇▇ ▇. ▇▇▇▇▇
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Admitted PRO HAC VICE
▇▇▇▇▇▇ & ▇▇▇▇▇, LLP.
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, III
Georgia Bar No. 461200
▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Georgia Bar No. 460313
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇, ▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇
2
Of Counsel:
▇▇▇▇▇ ▇. ▇▇▇▇, Esq.
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
Glaxo Wellcome Inc.
Five ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(▇▇▇) ▇▇▇-▇▇▇▇ Counsel for Defendants
3
