EXHIBIT 10.37
CONFIDENTIAL TREATMENT REQUESTED BY QLT INC.
ATTORNEY-CLIENT PRIVILEGED COMMUNICATION; SUBJECT TO JOINT DEFENSE AGREEMENT
AND COMMON INTEREST PRIVILEGE. SUBJECT FED. R. EVID. 408.
AMENDED AND RESTATED CONTRIBUTION AGREEMENT
This Amended and Restated Contribution Agreement (this "AGREEMENT") is
entered into as of this 9th day of February, 2007 (the "EFFECTIVE DATE") between
QLT USA, Inc. (formerly Atrix Laboratories, Inc.), a Delaware corporation having
offices at 2579 Midpoint Drive, Fort Collins, Colorado, 80525-4417 ("QLT USA"),
and Sanofi-Synthelabo Inc., a Delaware corporation having offices at 55
Corporate Boulevard, Bridgewater, NJ 08807 ("SANOFI-SYNTHELABO").
RECITALS
WHEREAS, QLT USA and Sanofi-Synthelabo have previously entered into a
Collaboration, License and Supply Agreement dated as of December 8, 2000, as
subsequently amended (collectively, the "COLLABORATION AGREEMENT");
WHEREAS, Sanofi-Synthelabo and QLT USA are both defendants in on-going
litigation with plaintiffs TAP Pharmaceutical Products, Inc., Takeda Chemical
Industries, Ltd. and Wako Pure Chemical Industries Ltd. (each individually, and
collectively, "TAP") alleging that QLT USA's Eligard(R) product infringes TAP's
patent, US 4,728,721 (the "TAP LITIGATION");
WHEREAS, QLT USA and Sanofi-Synthelabo entered into that certain
Contribution Agreement, dated as of November 10, 2006, between QLT USA and
Sanofi-Synthelabo (the "EXISTING AGREEMENT");
WHEREAS, each of QLT USA and Sanofi-Synthelabo have agreed to amend
and restate the Existing Agreement to reflect the terms of that certain
Settlement, Release and Patent License, by and among QLT USA, Sanofi-Synthelabo,
TAP and Abbott Laboratories, Limited -- Laboratories Abbott, Limitee, in the
form attached hereto as Exhibit B (the "SETTLEMENT AGREEMENT") to settle the TAP
Litigation;
WHEREAS, without admitting liability to TAP and without admitting
liability as between Sanofi-Synthelabo and QLT USA under the Collaboration
Agreement, Sanofi-Synthelabo and QLT USA seek to settle the TAP Litigation and
certain other past, present or future claims, controversies or disputes in the
Territory (as defined in the Collaboration Agreement) between TAP or any of its
affiliates, on the one hand, and QLT USA and Sanofi-Synthelabo, on the other
hand, with respect to the Eligard(R) product or the Atrigel(R) Technology (as
defined in the Collaboration Agreement);
WHEREAS, subject to the terms and conditions of this Agreement, QLT
USA has agreed to contribute $112,500,000 (the "QLT USA CONTRIBUTION ") towards
the settlement of the TAP Litigation;
WHEREAS, subject to the terms and conditions of this Agreement,
Sanofi-Synthelabo has agreed to contribute $45,000,000 (the "SANOFI-SYNTHELABO
CONTRIBUTION" and together with
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the QLT USA Contribution, the "SETTLEMENT AMOUNT") towards the settlement of the
TAP Litigation;
WHEREAS, QLT USA has agreed to reimburse Sanofi-Synthelabo [**] which
amount represents [**] of the [**] payable to [**], an expert witness utilized
by Sanofi-Synthelabo and QLT USA in defending the TAP Litigation; and
WHEREAS, QLT USA and Sanofi-Synthelabo have agreed to certain
amendments to the Collaboration Agreement which amendments benefit both parties,
all as set forth in the Amendment to Agreement in the form attached hereto as
Exhibit A (the "AMENDING AGREEMENT").
NOW THEREFORE, in consideration of the mutual covenants and agreements
as hereinafter set forth, and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as follows:
1. Concurrently with the execution of this Agreement, QLT USA will deposit
the QLT USA Contribution with Morrison & Foerster LLP, as escrow agent for QLT
USA, and Sanofi-Synthelabo will deposit the Sanofi-Synthelabo Contribution with
Proskauer Rose LLP, as escrow agent for Sanofi-Synthelabo. Morrison & Foerster
LLP and Proskauer Rose LLP shall confirm receipt of the respective contribution
amounts via email to the other party, and shall release the escrow funds in
accordance with the terms of the Settlement Agreement. QLT USA and
Sanofi-Synthelabo shall execute the Settlement Agreement after each of Morrison
& Foerster LLP and Proskauer Rose LLP have confirmed receipt of the
Sanofi-Synthelabo Contribution and the QLT USA Contribution, respectively, as
set forth in this Section 1. Each party agrees to comply with the terms and
provisions of the Settlement Agreement.
2. Concurrently with the execution of this Agreement, QLT USA will pay the
[**], counsel to Sanofi-Synthelabo, or as otherwise directed by
Sanofi-Synthelabo. The payment of the [**] by QLT USA shall not waive or
otherwise modify, in any respect, the releases set forth in Section 4 of this
Agreement.
3. The Amending Agreement will only become effective upon payment by
Sanofi-Synthelabo of the Sanofi-Synthelabo Contribution in accordance with the
terms of the Settlement Agreement.
4. As additional consideration for entering into this Agreement, effective
upon the payment of the Sanofi-Synthelabo Contribution and QLT USA Contribution,
by Sanofi-Synthelabo and QLT USA, respectively, in accordance with the terms of
the Settlement Agreement, each party releases the other party from any claims,
actions, causes of action, demands, suits, proceedings, administrative
proceedings, losses, damages, costs, expenses, liabilities, charges, interest,
penalties, fines and charges of whatever nature (including costs of collection,
attorneys' fees and other costs of defense, costs of enforcing indemnification
provisions, and expenses of investigation) arising under, related to, or
connected with the TAP Litigation, whether such claims may arise out of, under
or pursuant to the Collaboration Agreement or otherwise, including any right or
claim for repayment, reimbursement or recapture from a party of the amounts
contributed by the other party under this Agreement. In addition, effective upon
the payment by Sanofi-Synthelabo of the Sanofi-Synthelabo Contribution in
accordance with the terms of the Settlement Agreement, QLT USA releases
Sanofi-Synthelabo
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** Confidential Treatment Requested.
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from any prior claims, actions, causes of action, demands, suits, proceedings,
administrative proceedings, losses, damages, costs, expenses, liabilities,
charges, interest, penalties, fines and charges of whatever nature (including
costs of collection, attorneys' fees and other costs of defense, costs of
enforcing indemnification provisions, and expenses of investigation) arising
under, related to, or connected with any previous assertion by QLT USA that
Sanofi-Synthelabo failed to use commercially reasonable efforts to promote the
sale, marketing and distribution of the Product in the Territory, whether such
claims may arise out of, under or pursuant to the Collaboration Agreement or
otherwise. For the avoidance of doubt, the releases set forth in this Section 4
shall be deemed not to release a party from any breach by that party of its
representations, warranties or covenants under this Agreement.
5. This Agreement and all rights hereunder may not be assigned or
transferred by either party. Notwithstanding the foregoing, the Amending
Agreement is assignable in accordance with its terms.
6. The parties acknowledge and agree that this Agreement is intended to be
a confidential privileged communication between the parties relating to their
joint defense of the TAP Litigation. Each party covenants and agrees with the
other party that neither party will use this Agreement nor any statement made in
conjunction with its negotiation for any purpose adverse to the other party in
any context other than the enforcement of this Agreement. Each party hereto
waives any right to object to a motion by the other party to preclude this
Agreement or any statement made in conjunction with its negotiation from
introduction into evidence in any ensuing litigation between the parties or in
any litigation between either of the parties and TAP.
7. THIS AGREEMENT AND ANY DISPUTES, CLAIMS OR CONTROVERSIES ARISING FROM OR
RELATING TO THIS AGREEMENT SHALL BE DEEMED TO BE MADE IN AND IN ALL RESPECTS
SHALL BE INTERPRETED, CONSTRUED AND GOVERNED BY AND IN ACCORDANCE WITH THE LAW
OF THE STATE OF NEW YORK WITHOUT REGARD TO THE CONFLICT OF LAW PRINCIPLES. The
parties hereby irrevocably submit to the jurisdiction of the courts of the State
of New York and the Federal courts of the United States of America located in
the County of New York, New York and hereby waive, and agree not to assert, as a
defense in any action, suit or proceeding for the interpretation or enforcement
hereof, that it is not subject thereto or that such action, suit or proceeding
may not be brought or is not maintainable in said courts or that the venue
thereof may not be appropriate or that this Agreement or any such document may
not be enforced in or by such courts, and the parties hereto irrevocably agree
that all shall be heard and determined in such a New York State or Federal
court. The parties hereby consent to and grant any such court jurisdiction over
the person of such parties and over the subject matter of such dispute and agree
that mailing of process or other papers in connection with any such claim by
certified mail to the address set forth in the preamble hereto.
8. This Agreement may be executed in one or more counterparts, and by the
different parties hereto in separate counterparts, each of which when executed
shall be deemed to be an original but all of which taken together shall
constitute one and the same agreement.
9. This Agreement shall survive the settlement of the TAP Litigation and
the execution of the Settlement Agreement.
10. Notwithstanding anything to the contrary contained in this Agreement,
the parties acknowledge that the terms of this Agreement and the Amending
Agreement may be disclosed as required by law, including but not limited to the
rules and regulations of the Securities and
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Exchange Commission, the rules and regulations of any securities exchange upon
which a party's securities are traded or any other such regulatory authority. In
the event of such disclosure, the disclosing party shall give written notice as
soon as practicable.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be duly
executed by their respective authorized officers as of the day and year first
above written.
QLT USA, INC.
By: /s/ Sean F. Moriarty
-----------------------------------
Sean F. Moriarty
President
SANOFI-SYNTHELABO INC.
By: /s/ John M. Spinnato
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Name: John M. Spinnato
Title: Vice President & General Counsel
By: /s/ Laurent Gilhodes
-----------------------------------
Name: Laurent Gilhodes
Title: Vice President & Controller
SANOFI-AVENTIS U.S. LLC
By: /s/ John M. Spinnato
-----------------------------------
Name: John M. Spinnato
Title: Vice President & General Counsel
By: /s/ Laurent Gilhodes
-----------------------------------
Name: Laurent Gilhodes
Title: Vice President & Controller
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