Exhibit 10.9
[CERTAIN INFORMATION HAS BEEN OMITTED FROM THIS EXHIBIT AND FILED SEPARATELY
WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2.]
LICENSE AGREEMENT
THIS AGREEMENT is made and effective as of this 10th day of November,
1997 by and between CNS, Inc., a Delaware corporation ("Licensee"), and Onesta
Nutrition, Inc., a Minnesota corporation ("Licensor").
RECITALS
WHEREAS, Licensor is now and has been engaged in developing certain
Products (as defined in Subsection 1.1) for use in providing dietary fiber in
tablet form.
WHEREAS, the Products embody inventions and designs owned exclusively by
Licensor and Licensor has available certain Know-how relating to the manufacture
of the Products;
WHEREAS, Licensor owns or controls, or may hereafter own or control,
certain Know-how, patents or patent applications relating to the Products;
WHEREAS, Licensee desires to obtain an exclusive worldwide license from
Licensor of certain Know-how, patents and patent applications of Licensor
relating to the manufacture and use of the Products for providing dietary fiber
and Licensor is willing to grant such a license to Licensee.
NOW, THEREFORE, in consideration of the premises, the mutual covenants
and agreements hereinafter set forth and other good consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as follows:
1. GENERAL DEFINITIONS. As used herein, the following terms shall be
defined in the manner set forth below:
1.1 Products. The term "Products" shall mean the soluble fiber
supplement product described on Schedule 1.1 attached hereto, the manufacture,
use or sale of which is covered by the Licensed Patents or is made or developed
through the use of the Know-How, including all improvements thereto, and any
other inulin-based soluble fiber supplement products developed by Licensor or
any of its employees, consultants, agents or representatives during the term of
this Agreement using any Licensed Patents or Know-how; provided, however, that
for any such improvement or enhancement or similar product developed by Licensor
to be included within the license herein granted, Licensor shall notify Licensee
of any such improvement or enhancement and Licensee shall at its option make an
election to include such improvement or enhancement in this License by providing
written notice of such election to Licensor within thirty (30) days after
Licensee learns of such improvement, enhancement or similar product. If Licensee
shall make an such election, Licensee shall reimburse Licensor for reasonable
expenses incurred in developing such improvement or enhancement or similar
product.
1.2 Know-how. The term "Know-how" shall mean any and all
tangible and intangible information, technology, documents and materials in the
possession and control of Licensor, and necessary in order to enable Licensee to
utilize fully the rights granted by Licensor to Licensee hereunder and shall
include, without limiting the foregoing, the ideas, concepts, confidential
information, trade secrets and techniques, as well as all the materials,
documents, manuals, specifications, patterns, art work, bills of materials and
other information of Licensor relating to the Products.
1.3 Licensed Patents. The term "Licensed Patents" shall mean the
following: (i) the United States and foreign patent(s) and patent application(s)
to the Products listed on Schedule 1.3 attached hereto; (ii) all future United
States or foreign patent applications related to the Products and any patents
arising therefrom; (iii) the rights, patents and patent applications, if any, in
any country or jurisdiction in the world corresponding to the United States
patent applications; and (iv) any division, continuation, continuation-in-part,
divisional, re-examined, reissued or extended letters patent, applications and
petty patents, utility models, utility model conversions, inventor's
certificates relating to the inventions claimed in any of the foregoing United
States patents and patents pending and foreign patent rights, which may be
developed, acquired or controlled by Licensor during the term of this Agreement
and with respect to which Licensor shall have the right to grant the license
hereinafter provided.
1.4. Contract Year and Quarter. The term "Contract Year" shall
mean each period following October 1 of 1998, 1999 and 2000. The term "Contract
Quarter" shall mean each period of three consecutive months commencing January
1, April 1, July 1 and October 1.
1.5. Gross Revenues. The term "Gross Revenues" shall mean the
gross amounts collected by Licensee from any end-user, sublicensee, assignee or
other person or entity relating to or arising from the sale of Products after
the deduction of (i) any amounts repaid or credited by reason of rejections or
returns, and (ii) trade and quantity discounts actually allowed and taken.
1.6. Earned Royalty . The term "Earned Royalty" shall mean the
royalty payable to Licensor on Products.
2. GRANT OF LICENSES.
2.1 Patent and Know-how License. Licensor hereby grants to
Licensee a sole and exclusive, worldwide, transferable right and license under
the Licensed Patents and Know-How to make, have made, use, import, offer for
sale and sell the Products and to practice worldwide any process claimed or
disclosed in the Licensed Patents and Know-how. Without limiting the foregoing,
the Licensed Products may be distributed as a product to consumers, retailers,
wholesalers or otherwise.
2.2 Sublicenses and Assignments. Licensee may sublicense and/or
assign to any third party, including affiliates of Licensee, any and all rights
granted hereunder. In the event of an assignment, Licensee shall enter into a
written agreement with the assignee pursuant to which the assignee shall assume
all of the obligations of Licensee under this Agreement and this Agreement shall
be binding upon and inure to the benefit of such assignee. In the event of a
sub-license, Licensee shall enter into a written agreement with sub-licensee (i)
with a term no greater than the term of this Agreement, (ii) with rights granted
to sub- licensee which are no greater than the terms of this Agreement, and
(iii) pursuant to which Licensee shall use reasonable business efforts to impose
upon sub-licensees similar obligations as Licensor has imposed upon Licensee
under this Agreement.
2.3 Patent Procurement and Costs. Licensee shall be responsible
for and pay all patent costs and expenses (including reasonable attorneys' fees)
incurred by Licensor in obtaining, prosecuting, owning and maintaining any of
the Licensed Patents issued or to be issued under the law of any country or
jurisdiction, including filing, prosecution, working and maintenance costs and
taxes. Licensee shall have the right to review and comment on Licensor's filings
with respect to the Licensed Patents, at Licensee's own expense. Notwithstanding
the above, Licensor shall direct and control the procurement of the Licensed
Patents using patent counsel of its own choosing for such procurement (the
choice and which counsel is subject to the reasonable consent of Licensee). Such
patent costs and expenses incurred by Licensor and reimbursed by Licensee
hereunder may be offset against the royalties payable under excess of running
royalties payable under Section 4.1 over the minimum royalties payable under
Section 4.3 in any Contract Quarter to the extent that such excess arises from
sales of Licensed Products in the country or region in which such patent costs
and expenses were incurred.
2.4 Exploitation. Licensee hereby agrees that during the term of
this Agreement it will use its reasonable best efforts to manufacture, sell and
market the Products, and will exert its reasonable best efforts to create a
demand for the Products worldwide, and to increase and extend its business in
the manufacture, sale and marketing of the Products worldwide.
3. REPRESENTATIONS AND WARRANTIES.
3.1 Licensor hereby warrants and represents to Licensee as
follows:
(a) Licensor is a corporation duly organized, validly existing
and in good standing under the laws of the State of Minnesota.
(b) This Agreement has been duly authorized, executed and
delivered by Licensor and constitutes a valid and binding obligation of
Licensor, enforceable in accordance with its terms, except as rights to
indemnification thereunder may be limited by applicable law and except
as the enforcement thereof may be limited by bankruptcy, insolvency,
reorganization, moratorium or other similar laws relating to or
affecting creditors' rights generally or by general equitable
principles. The execution, delivery and performance of this Agreement by
Licensor and the consummation of the transactions contemplated hereby do
not and will not conflict with or result in any material breach of any
of the provisions of, or constitute a material default under, or result
in a material violation of, or require any authorization, consent or
approval, under the provisions of such party's Articles of Incorporation
or Bylaws or any other agreement or instrument to which such party is
bound or affected, or to he best of Licensor's knowledge, any law,
statute, rule, regulation, judgment order or decree to which such party
is subject.
(c) Licensor owns all the rights of Jerome J. Licari, Ph-D and
all other employees, agents, consultants or representatives of Licensor
with respect to the Products, Licensed Patents and Know-how.
(d) Licensor has filed the patent applications listed on
Schedule 1.3.
(e) To Licensor's knowledge, the Products, Licensed Patents and
Know-how do not infringe on any patent, copyright or other intellectual
property right of any third party.
(f) Licensor has not received notice of any claims, actions,
suits or proceedings pending or threatened effecting Licensor, the
Licensed Patents or Know-how which, if adversely determined, would have
a material adverse effect upon Licensee's ability to manufacture, have
manufactured, use or sell the Products or otherwise practice the rights
and technology licensed to Licensee by Licensor under this Agreement
and, to the best of Licensor's knowledge, there is no reasonable basis
for anyone to bring such claims, actions, suits or proceedings.
(g) Licensor has not received any claim from any third-party
proceedings relating to the Licensed Patents, Know-how, or the Products
which are based upon infringement of any patent or misappropriation or
misuse of trade secrets.
(h) Licensor represents that the product, in its current form,
is manufacturable in quantities sufficient enough to meet the sales
levels required for the minimum guaranteed royalties.
(i) That certain License Agreement between Licensor and Johnson
& Johnson/Merck Consumer Pharmaceuticals Company ("JJMCP"), dated March
31, 1997, was terminated effective June 25, 1997, and Licensor retains a
royalty-free unrestricted right to use any information concerning the
manufacture, formulation and use of the Licensed Products not generally
known to the public, and developed by JJMCP during the term of such
agreement (other than information covered by any published patent or
patent application).
3.2 Licensee hereby warrants and represents to Licensor as
follows:
(a) Licensee is a corporation duly organized, validly existing
and in good standing under the laws of the State of Delaware.
(b) This Agreement has been duly authorized, executed and
delivered by Licensee and constitutes a valid and binding obligation of
Licensee, enforceable in accordance with its terms, except as rights to
indemnification thereunder may be limited by applicable law and except
as the enforcement thereof may be limited by bankruptcy, insolvency,
reorganization, moratorium or other similar laws relating to or
affecting creditors' rights generally or by general equitable
principles. The execution, delivery and performance of this Agreement by
Licensee and the consummation of the transactions contemplated hereby do
not and will not conflict with or result in any material breach of any
of the provisions of, or constitute a material default under, or result
in a material violation of, or require any authorization consent or
approval, under the provisions of Licensee's Certificate of
Incorporation or Bylaws or, to the best of Licensee's knowledge, any
other agreement or instrument to which such party is bound or affected,
or any law, statute, rule, regulation, judgment order or decree to which
such party is subject.
4. CONSIDERATION AND REPORTS.
4.1 Royalties. Licensee agrees to pay to Licensor royalties as
follows based on the Gross Revenues from the sale of Products: (a) [CONFIDENTIAL
TREATMENT REQUESTED]% of Gross Revenues until royalties have been paid on an
aggregate total of $[CONFIDENTIAL TREATMENT REQUESTED] of Gross Revenues, then
(b) [CONFIDENTIAL TREATMENT REQUESTED]% of Gross Revenues until royalties have
been paid on an aggregate total of $[CONFIDENTIAL TREATMENT REQUESTED] of Gross
Revenues, and then (c) [CONFIDENTIAL TREATMENT REQUESTED]% of all Gross Revenues
in excess of an aggregate total of $[CONFIDENTIAL TREATMENT REQUESTED]. The
royalty provided for in this Subsection 4.1 shall be reduced to [CONFIDENTIAL
TREATMENT REQUESTED]% of the otherwise applicable rate, on a country-by-country
basis if no Licensed Patent issues in such country.
4.2 Quarterly Payments. All royalties due Licensor from Licensee
hereunder shall be payable on a Contract Quarterly basis. Within forty-five (45)
days after the end of each Contract Quarter during the term of this Agreement,
Licensee shall pay to Licensor, by wire transfer to an account designated
pursuant to Section 10.4, the royalty due Licensor under Subsection 4.1 through
the end of the preceding Contract Quarter and shall furnish Licensor with a
written statement setting forth the number of Products sold and the Gross
Revenues received during such Contract Quarter, and the resulting amount of the
royalty due Licensor under Subsection 4.1.
4.3 Minimum Royalties.
(a) To maintain its rights hereunder, Licensee shall pay to
Licensor minimum royalties as follows in the event that the Products may
be marketed and sold without a prescription:
Minimum Royalty Payment Minimum Royalty Payment
Contract Year* Per Contract Year per Contract Quarter
- -------------- ----------------------- -----------------------
Year 1 $[CONFIDENTIAL TREATMENT REQUESTED] $[CONFIDENTIAL TREATMENT REQUESTED]
Year 2 [CONFIDENTIAL TREATMENT REQUESTED] [CONFIDENTIAL TREATMENT REQUESTED]
Year 3** [CONFIDENTIAL TREATMENT REQUESTED] [CONFIDENTIAL TREATMENT REQUESTED]
* Twelve-month periods beginning on the Contract Year.
** Through the Contract Year of the expiration date of the last of the
Licensed Patents or if no Licensed Patent issues, December 26, 2015.
(b) In the event the royalty is reduced pursuant to Subsection
4.1 above, the minimum royalties provided for in Subsection 4.3(a) shall
be reduced by [CONFIDENTIAL TREATMENT REQUESTED] in each Contract Year,
pro rata on a country-by-country basis.
4.4 Minimum Royalty Payment. Licensee shall pay Licensor within
forty-five (45) days after the end of each Contract Quarter, by wire transfer to
an account designated pursuant to Section 10.4, an amount equal to the minimum
royalties payable pursuant to the terms of Subsection 4.3 for the Contract
Quarter then ended, less: (a) the aggregate amount of Earned Royalties actually
paid to Licensor pursuant to the terms of Subsections 4.1 and 4.2 for the
Contract Quarter then ended; and (b) any Earned Royalties paid to Licensor
during the prior Contract Quarters in the current Contract Year that exceed the
amount of cumulative minimum royalties payable for those Contract Quarters;
provided that in no event shall such deductions reduce the payment to Licensor
in any Contract Year below the then applicable minimum annual royalty payable
under 4.3 of this Agreement. Licensee's failure to pay any and all amounts
payable under the preceding sentence within thirty (30) days after receipt of
written notice from Licensor that such amounts have not been timely paid shall
render the licenses granted hereunder void and thereupon, Licensee shall have no
further rights or interests of any kind or nature with respect to the Products,
Know-how, License or Patents and Licensee shall take any and all action that
Licensor may request to further document the provisions hereof. In the event
that any law, statute, regulation, rule, guideline, ruling or decision of any
governmental or regulatory agency prevents Licensee from marketing or offering
Products for sale, the minimum royalty payment will be suspended until such time
that Licensee is no longer prevented from marketing or offering Products for
sale, such suspension to be determined pro rata on a country-by-country basis.
4.5 Late Payment. Licensee shall have ten (10) days to make any
late payments hereunder, without interest. Thereafter, Licensee shall pay a late
payment fee to Licensor calculated at a variable rate of 2% over the prime per
annum interest rate as set from time to time by Norwest Bank Minneapolis, N.A. ,
Minneapolis, Minnesota (the "Interest Rate"), on any and all amounts that are at
any time overdue and payable to Licensor under this Agreement, such interest
being calculated on each such overdue amount from the date when such amount
became due to the date of actual payment thereof. Such late payment fee shall be
in addition to and not in lieu of any and all other rights or remedies that
Licensor may have under this Agreement or law relating to a default by Licensee
under this Agreement.
4.6 Records. During the term of this Agreement and for three (3)
years after termination of this Agreement, Licensee shall at all times maintain
accurate and up-to-date records containing complete data from which amounts due
to Licensor under this Agreement may be readily calculated. Further, Licensee
shall preserve and permit examination of such records by Licensor's
representatives at reasonable intervals and under reasonable conditions during
the term of this Agreement and for three (3) years thereafter and, upon request,
shall supply to Licensor's representatives all information useful in making a
proper audit and verification of Licensee's performance of its obligations under
this Agreement.
4.7 Underpayment. If Licensor determines by audit and inspection
of Licensee's books and records that Licensee has failed to pay all royalties
due under Subsection 4.1, Licensee shall pay Licensor 105% of such additional
royalties as may be due, plus interest thereon. If the amount of underpayment
exceeds 5% of the royalties due under Subsection 4.1, then Licensor shall, in
addition to any other remedies available to it, recover from Licensee the
reasonable costs incurred in making any such audit and inspection pursuant to
Subsection 4.6 hereof which revealed such shortfall and Licensee shall pay
Licensor 105% of such additional royalties, plus interest thereon.
5. INDEMNIFICATION.
5.1 Indemnification by Licensor. Licensor shall indemnify and
hold Licensee harmless from and against any and all claims, damages, costs
(including reasonable attorneys' fees), judgments and liabilities of any kind or
nature arising out of any third party claim of (a) any breach by Licensor of any
of its warranties, representations and covenants under this Agreement or (b) any
misuse by Licensor of the patent process or fraud by Licensor on the patent
office or notice by Licensor before the date hereof of a claim by any party of a
prior or superseding right to practice the art of and commercialize the
Products.
5.2 Indemnification by Licensee. Licensee shall indemnify and
hold Licensor harmless from and against any and all claims, damages, costs
(including reasonable attorneys'.fees), judgments -and liabilities of any kind
or nature: (a) arising out of any third party claim of the breach by Licensee of
any of its warranties, representations and covenants under this Agreement; or
(b) arising out of any actual or alleged defect in a Product.
6. PROTECTION AGAINST INFRINGEMENT. In the event that Licensee becomes
aware of activity on the part of any third party which may constitute
infringement of the Licensed Patents, or any other intellectual property rights
with respect to which Licensee is granted a license hereunder, Licensee shall
give Licensor written notice thereof. Upon reasonable request by Licensor,
Licensee shall, at its sole expense, initiate and thereafter diligently maintain
reasonable efforts to prevent and abate such infringement, including the
initiation of an appropriate civil action for infringement and the taking of
such other action as may be necessary or appropriate, to enforce the Licensed
Patents or other intellectual property rights with respect to -which Licensee is
granted a license hereunder. In such event, (i) Licensor will permit the use of
its name in, and as a party to, all such suits and execute all pleadings,
documents and other papers necessary or appropriate in conjunction therewith and
(ii) Licensee shall receive the full benefits of any action it takes pursuant to
this subsection, including retaining all sums recovered in any such suit or in
settlement thereof after paying Licensor the Earned Royalties which shall be
calculated from the amount of Gross Revenues, if any, asserted by Licensee to
support any award of compensatory damages (as opposed to punitive or any other
damages). Licensor may, at its option and its cost and expense, participate in
meetings with Licensee and/or its counsel and receive all pleadings, documents
and other related papers useful for the purpose of keeping Licensor informed of
the status of any proceedings commenced by Licensee pursuant to this Section 6.
7. TERM AND TERMINATION.
7.1 Term. This Agreement shall commence on the effective date
hereof and shall expire, unless earlier terminated pursuant to Subsections 4.8,
7.2 or 7.3 of this Agreement, upon the later of (a) the expiration of the last
of the Licensed Patents to expire or (b) December 26, 2015.
7.2 Termination by Licensor. If Licensee defaults in any of its
obligations under this Agreement, Licensor shall have the right to terminate
this Agreement by giving thirty (30) days' written notice of termination
specifying the reason for termination, provided that such notice will be of no
effect and termination will not occur if the specified default is cured prior to
the expiration of said thirty (30) day notice period.
7.3 Termination by Licensee. (a) This Agreement may be
terminated by Licensee at any time at will, with or without cause, by the giving
of at least ninety (90) days' written notice to Licensor by Licensee, in which
event such license shall terminate upon the effective date stated in any such
notice. In the event of the termination of any such license, neither Licensor
nor Licensee shall have any further obligation to the other party hereunder
except as expressly provided in Sections 7.4 and 8.1 below.
(b) Upon the termination of any license granted under this
Agreement, Licensee may, after the effective date of such termination,
sell any of its (i) completed Products, (ii) Products then in the
process of manufacture and (iii) Products with respect to which
manufacture has been committed at the time of termination by reason of
either (x) any contracts for the purchase of materials to be used in the
manufacture of such Products or (y) any contract for the sale of such
Products. All such sales and uses shall be subject to the royalty
provisions of Section 4 of this Agreement as though the termination of
this Agreement had not occurred.
(c) Except as expressly provided in Subsection 7.3(b), after
termination of this Agreement, Licensee may not use develop, market or
sell the Products, Know-how, or Licensed Patents in any way or manner
that would violate any rights of Licensor and all rights with respect to
the Licensed Products, Know-how or Licensed Patents shall revert to
Licensor. In addition, Licensee shall assign to Licensor, and hereby
does, effective only upon such termination, any and all (i) improvements
to the Licensed Products, Know-how or Licensed Patents conceived or
reduced to practice during the term of this Agreement and (ii)
trademarks for the Licensed Products (other than master brand trademarks
of Licensee which shall be retained by Licensee). Licensee shall take
any and all steps reasonably requested by Licensor to fully document the
complete vesting of such rights in Licensor upon any such termination.
7.4 Continued Obligations. Termination shall not relieve or
release either party from its obligations to make any payment which may be owing
to the other under the terms of this Agreement or from any other liability which
either party may have to the other arising out of the terms of this Agreement.
Additionally, notwithstanding anything contained herein to the contrary,
Sections 3, 4 (including Subsection 4.8 to the extent then exercised), 5 and 8.2
shall survive termination of this Agreement and remain in full force and effect;
provided, that Licensor and Licensee hereby acknowledge that they may not bring
claims against one another based upon the representations and warranties
contained in Section 3, except to the extent such representations and warranties
are not accurate as of the date hereof.
8. LICENSEE'S UNDERTAKINGS.
8.1 Licensing Fee and Payment. Licensee will pay to Licensor the
sum of $[CONFIDENTIAL TREATMENT REQUESTED] as a license fee. The license fee
will be payable to, Licensee, by wire transfer to an account designated pursuant
to Section 10.4, as follows:
(a) $[CONFIDENTIAL TREATMENT REQUESTED] at the time of execution
of this License Agreement.
(b) $[CONFIDENTIAL TREATMENT REQUESTED] at the beginning of each
of the next three calendar quarters. If this Agreement is terminated by
Licensee prior to the payment of all license fees under this Section
8.1, the remaining payments shall be paid on or before the effective
date of such termination. All license fees shall be non-refundable. Of
the total $[CONFIDENTIAL TREATMENT REQUESTED] license fee,
$[CONFIDENTIAL TREATMENT REQUESTED] shall be set off against and reduce
the royalty payments to be made to Licensor under Section 4 of this
Agreement. Such credit shall be applied at the rate of [CONFIDENTIAL
TREATMENT REQUESTED] percent ([CONFIDENTIAL TREATMENT REQUESTED]%) of
the excess of running royalties payable under Section 4.1 over the
minimum royalties payable under Section 4.3 in any Contract Quarter.
8.2 Confidentiality. Licensee shall maintain the confidentiality
of Licensor's confidential information, both during and after the term of this
Agreement. After this Agreement is terminated, Licensee shall not use any of
Licensor's confidential information for any purpose that is not specifically
provided for in Subsection 7.3(b) of this Agreement.
8.3 Press Release. Upon launch of the first Licensed Product,
Licensee shall issue a press release, reasonably satisfactory to Licensor, which
shall, in part, acknowledge Onesta's and/or Licari's role in developing the
Licensed Products.
9. LICENSOR'S UNDERTAKINGS.
9.1 Disclosure of Improvements. Licensor agrees to promptly
disclose to Licensee any improvement, enhancement or modification to the
Products that Licensor may develop during the term of this Agreement or any
other inulin-based soluble fiber supplement products.
10. MISCELLANEOUS.
10.1 Force majeure. Neither party shall be responsible for any
delay or failure in the performance of any obligation hereunder due to strikes,
lockouts, fires, floods, acts of God, embargoes, wars, riots, or act or order of
any government or governmental agency; provided, however, nothing set forth in
this Subsection 10.1 shall be construed to relieve Licensee of the requirement
that it pay minimum royalties pursuant to Subsections 4.3 and 4.4 hereof.
10.2 Waiver. The waiver or failure of either party to enforce
the terms of this Agreement in one instance shall not constitute a waiver of
said party's right under this Agreement with respect to other violations.
10.3 Remedies. The election by either party of any particular
right or remedy shall not be deemed to exclude any other right or remedy and all
rights and remedies of either party shall be cumulative. The parties agree that,
in addition to any other relief afforded under the terms of this Agreement or by
law, each party shall have the right to enforce this Agreement by injunctive or
mandatory relief to be issued against the other party, it being understood that
both damages and specific performance shall be proper modes of relief and are
not to be considered as alternative remedies.
10.4 Notices. All notices and replies thereto required hereunder
shall be in writing, signed by the party giving notice, placed in an envelope
and either delivered by hand or sent by facsimile or registered mail, postage
prepaid, return receipt requested, and properly addressed to the other party.
Notices sent by mail shall be deemed received on the date of receipt indicated
by the receipt verification provided by the United States Postal Service.
Notices sent by facsimile shall be deemed received on the date indicated on the
sender's confirmation report. Notice shall be given, mailed or sent to the other
party at the following addresses or at such other address as may be given by
proper notice:
If to Licensor: Onesta Nutrition, Inc.
[CONFIDENTIAL TREATMENT REQUESTED]
[CONFIDENTIAL TREATMENT REQUESTED]
Attn: Jerome J. Licari, Ph.D
Fax No.: [CONFIDENTIAL TREATMENT REQUESTED]
Wire transfer
information: Anchor Bank of Wayzata
1055 Wayzata Boulevard
Wayzata, MN 55391
ABA Routing No: [CONFIDENTIAL TREATMENT
REQUESTED]
Account No: [CONFIDENTIAL TREATMENT
REQUESTED]
With a copy to: Dorsey & Whitney LLP
220 South Sixth Street
Minneapolis, MN 55402-1498
Attn: Karin A. Keitel
Fax No.: 612-340-8827
If to Licensee: CNS, Inc.
4400 West 78th Street
Minneapolis, MN 55435
Attn: Daniel E. Cohen, M.D.
Fax No.: 612-820-6697
With a copy to: Lindquist & Vennum P.L.L.P.
4200 IDS Center
80 South 8th Street
Minneapolis, MN 55402-2205
Attn: Patrick Delaney
Fax No.: 612-371-3207
Either party hereto may designate any other address for notices or account for
wire transfer given hereunder by written notice to the other party given at
least ten (10) days prior to the effective date of such change.
10.5 Entire Agreement. This Agreement represents the entire
agreement between the parties with respect to the subject matter hereof; there
are no oral promises, representations or warranties. No modification of this
Agreement or waiver of any of its terms shall be binding upon the parties unless
said modification or waiver is in writing, signed by both parties, and states
that it is an amendment to this Agreement.
10.6 Parties in Interest. This Agreement shall inure to the
benefit of, be binding upon, and be enforceable against the parties hereto,
their respective successors and assigns.
10.7 Governing Law. This Agreement shall be governed by,
construed and enforced under the internal laws (and not the laws of conflicts)
of the State of Minnesota. Licensee irrevocably submits to the jurisdiction of
the Minnesota state courts and federal courts sitting in Minneapolis or St.
Paul, Minnesota in connection with any action or proceeding arising out of or
relating to this Agreement and agrees that all claims in respect of such action
or proceeding shall be heard and determined in any such court.
10.8 Severability. If any portion of this Agreement is held
invalid by the final judgment of any court of competent jurisdiction, such
portion shall be deemed revised or "blue lined" so that it is enforceable to the
fullest extent possible under applicable law and the remaining provisions shall
remain in full force and effect as if such invalid provision had not been
included herein.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
CNS, INC.
By
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Its:
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ONESTA NUTRITION, INC.
By
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Its:
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LIST OF SCHEDULES
Number Description
------ -----------
1.1 Products
1.3 Licensed Patents
SCHEDULE 1.1
DESCRIPTION OF PRODUCTS
Soluble fiber supplement product covered by the Licensed Patents or made
or developed through the use of Know-How.
SCHEDULE 1.3
DESCRIPTION OF LICENSED PATENTS
U.S. Patent Application Serial No. 60/009,231 filed December 26, 1995, "Dietary
Fiber Delivery System"
U.S. Patent Application Serial No. 08/771,960 filed December 23, 1995, "Dietary
Fiber Delivery System"
PCT Patent Application PCT/US 96/20245 filed December 23, 1996, "Dietary Fiber
Delivery System"