EXHIBIT 10.13
PATENT LICENSE AGREEMENT
This PATENT LICENSE AGREEMENT (this "Agreement"), dated December 5,
2003, (the "Effective Date") is made and entered into by and between General
Nutrition Investment Company, an Arizona corporation (hereinafter the
"Licensor"), and Numico Research B.V., a company organized under the laws of The
Netherlands (hereinafter the "Licensee").
WHEREAS, Licensor is the owner of technology covered by certain Patent
Rights (as hereinafter defined) as a result of an Assignment, as of the date
hereof, of such Patent Rights from Licensee to Licensor (the "Assignment").
WHEREAS, as a condition to said Assignment, Licensor agreed to grant an
exclusive right and license to Licensee for unrestricted exploitation of the
Patent Rights outside the Protected Business (as defined in that certain
Purchase Agreement, dated as of October 16, 2003, among Royal Numico N.V.,
Numico USA, Inc. and Apollo GNC Holding, Inc., as amended (the "Purchase
Agreement")) in order to continue to develop, manufacture, have manufactured,
market, offer for sale and sell certain product compositions and to sublicense
existing third party licensees.
WHEREAS, this Agreement is made pursuant to and is subject to the terms
and conditions of the Purchase Agreement.
NOW, THEREFORE, for good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto, intending to be
legally bound, hereby agree as follows:
1. DEFINITIONS
1.1 As used in this Agreement, the capitalized terms set forth herein
shall have the following meanings:
(a) "LICENSED PRODUCTS" means (i) any product composition
outside the Protected Business, which if made, used or sold by
Licensee, in the absence of the rights and license granted under this
Agreement, would infringe one or more claims of the Patent Rights, or
(ii) any method, process, procedure or technique within or outside the
Protected Business, which if used or provided by Licensee, in the
absence of the rights and license granted under this Agreement, would
infringe one or more claims of the Patent Rights.
(b) "PATENT RIGHTS" means (i) the patents (the "Patents") and
the patent applications (the "Patent Applications") set forth in
Exhibit A, attached hereto and incorporated herein, and (ii) any
counterpart patents or patent applications that are equivalents of the
Patents or Patent Applications issued, granted or filed in any country
other than the
original filing country (the "Counterpart Patents"), including without
limitation any continuation, continuation-in-part, divisional,
reexamination, reissue or any other such patent right of the Patents or
Patent Applications not expressly set forth herein as of the Effective
Date; but exclusive of any continuation, continuation-in-part,
divisional, reexamination, reissue or any other such patent right of
the Patents or Patent Applications that are filed in Licensor's sole
discretion after the Effective Date.
1.2 "TERM" means the term of this Agreement as further defined in
Article 7 below.
2. LICENSE GRANT
2.1 Licensor hereby grants to Licensee, subject to the terms and
conditions of this Agreement, an exclusive, worldwide, royalty-free right and
license, with the right to sublicense, under the Patent Rights to make, have
made, use, offer for sale and sell Licensed Products outside the Protected
Business.
2.2 Prior to the Assignment, Licensee granted to certain third parties
the right and license to practice certain of the Patent Rights. Licensee shall
have the right and license to continue to sublicense such third parties in
accordance with the terms of any prior agreement between Licensee and such third
party.
2.3 Licensor shall restrict its practice of the Patent Rights to the
Protected Business only, and covenants not to practice the Patent Rights for any
purpose outside the Protected Business.
3. MARKING
3.1 Licensee agrees to lawfully mark all Licensed Products (or their
containers or labels) with a proper patent marking based on the Patent Rights
pursuant to the U.S. Code Title 35 or any other international marking
requirements.
4. PROSECUTION AND MAINTENANCE
4.1 Licensor may, as it determines in its sole discretion: (a)
prosecute any and all U.S. and foreign patent applications included in or
related to the Patent Rights (the "Prosecution"); and (b) pay maintenance or
annuity fees of any and all U.S. and foreign patents which result from the
Patent Rights (the "Maintenance"). Upon Licensee's written request, Licensor
will furnish copies of specifically requested Patent Rights-related documents to
Licensee.
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4.2 In the event Licensor decides not to pursue Prosecution or
Maintenance of any of the Patent Rights, Licensor shall provide reasonable
notice to Licensee thereof. If Licensee desires, at its sole cost, expense and
discretion, to assume and continue the obligations of Prosecution or Maintenance
of such Patent Rights, upon request by Licensee, Licensor shall execute and
deliver such documents and perform such acts as may be reasonably necessary to
effect assignment of all right, title and interest in and to such Patent Rights
to Licensee, subject to any outstanding rights or licenses granted prior to such
assignment, without further consideration from Licensee.
4.3 In the event that letters patent are issued or granted based on any
patent application so assigned in accordance with Section 4.2, Licensee shall
restrict its practice of such letters patent to making, having made, using,
offering for sale, and selling products covered by the claims of such letters
patent outside the Protected Business and hereby grants to Licensor an
exclusive, royalty-free right and license, with the right to sublicense, under
such letters patent to make, have made, use, offer for sale and sell any
products covered by the claims of such letters patent within the Protected
Business and, except where the context otherwise requires, on such other terms
as the Patent Rights provided in this Agreement, as if such Patent Rights
included such letters patent, Licensor as the Licensee hereunder with respect to
such letters patent and Licensee as the Licensor hereunder with respect to such
letters patent.
5. INFRINGEMENT BY THIRD PARTIES
5.1 Each party shall promptly give notice to the other of any actual or
potential infringement of any Patent Right by any third party that becomes known
to such first-mentioned party. Licensor shall have the first right to take such
action it determines, in its sole discretion, to be necessary to terminate or
prevent any actual or potential infringement of such Patent Right. If Licensor
has not taken any action (including an informed decision to take no action)
within one hundred twenty (120) days from such first-mentioned party's notice,
Licensee may submit to Licensor a notice that Licensee will take such action as
Licensee reasonably determines is necessary to terminate or prevent the
infringement, including filing right to file suit to the extent provided by any
applicable law, rule or regulation, unless Licensor notifies Licensee that
Licensor will file suit or otherwise terminate such infringement within thirty
(30) days after Licensor's receipt of such notice from Licensee.
5.2 In the event Licensor files suit to stop infringement, Licensor may
enter into any settlement, consent judgment or other voluntary final disposition
of such suit at its sole discretion. In the event Licensee elects to join
Licensor in any such suit or action, Licensee shall pay it's own attorneys' fees
and costs of its participation in such suit or action. Regardless if Licensee
joins or does not join Licensor in any such suit or action, upon request by
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Licensor, Licensee shall cooperate with Licensor in such suit or action. In the
event Licensor requests Licensee to join Licensor in participation in such suit
or action, Licensee shall have the right to consult with Licensor and be
represented by counsel at Licensor's sole expense. Any recovery of damages from
any suit or action brought by Licensor, where Licensee has joined Licensor,
shall be shared equally by the parties.
5.3 In the event Licensee solely files suit to stop infringement,
Licensee may enter into any settlement, consent judgment or other voluntary
final disposition of such suit at its sole discretion, so long as the same does
not adversely affect Licensor's rights or interest in the Patent Rights. Any
recovery of damages from any suit or action brought solely by Licensee shall be
retained by Licensee.
6. COSTS; EXPENSES AND TAXES
6.1 Except as otherwise provided herein, each party shall bear its own
costs and expenses incurred by it in performing its obligations hereunder.
6.2 Each party shall be responsible for payment of any applicable
sales, use and income taxes, including any privilege or excise taxes in the
nature of sales or use taxes, and other similar charges imposed upon it by any
jurisdiction arising from the performance of its obligations under this
Agreement.
7. TERM AND TERMINATION
7.1 The Term of this Agreement shall run from the Effective Date of
this Agreement and shall terminate automatically upon the expiration or
extinguishment of all of the Patent Rights set forth in Exhibit A and all
letters patent that may be issued as contemplated by Section 4.3, subject to
early termination, as set forth herein below:
(a) Either party shall have the right to terminate this
Agreement without judicial resolution upon written notice to the other
party of a material breach of any provision of this Agreement by such
other party that is not cured within sixty (60) days after such notice.
(b) This Agreement shall be terminated immediately upon
Licensor and Licensee reaching mutual agreement to so terminate this
Agreement.
(c) Licensee may terminate this Agreement without cause upon
sixty (60) days notice to Licensor.
(d) This Agreement shall automatically terminate, without
requirement of notice, upon the occurrence of any of the following:
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(i) any attempt by Licensee to assign or otherwise
transfer its interest in whole or in part, in this Agreement
voluntarily or by operation of law to any other third party
except as otherwise permitted herein; or
(ii) a cessation by Licensee of all or substantially
all of its business, or
(iii) a petition in bankruptcy or reorganization is
filed by Licensee under any applicable bankruptcy law now or
hereafter in force or shall be filed against Licensee and not
vacated or dismissed within sixty (60) days after such filing;
or Licensee shall make an assignment for the benefit of its
creditors, or a receiver, trustee, liquidator or custodian
shall be appointed for all or a substantial part of Licensee's
property, and the order of appointment is not vacated or
dismissed within sixty (60) days after it is made; or all or
any material portion of Licensee's property shall be
sequestered, and the order of sequestration is not vacated or
dismissed within sixty (60) days after it is entered; or
Licensee shall generally fail or admit in writing its
inability to pay its debts as such debts become due and
payable.
7.2 The following provisions of this Agreement shall survive
termination: Sections 7.3, 7.4 and 7.5, and Articles 6, 8, 9 and 10.
7.3 Neither party shall be relieved of any obligation or liability
under this Agreement arising from any act or omission committed prior to the
effective date of such termination.
7.4 Upon termination of this Agreement for any reason, and for one (1)
year following the effective date of termination, Licensee may continue to sell
any inventory of Licensed Products in its possession or control which was
manufactured, for which Licensee had issued binding commitments to manufacture
or for which Licensee had purchased or ordered raw materials to manufacture (all
in the ordinary course of business) prior to the effective date of termination.
7.5 Except as specified in Section 7.4, from and after any termination
of this Agreement, Licensee shall not make or have made, use or have used or
sell or have sold any Licensed Products under any of the Patent Rights.
7.6 The rights and remedies granted herein, and any other rights or
remedies which the parties may have, either at law or in equity, are cumulative
and not exclusive of others.
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8. LIMITATIONS OF WARRANTIES
8.1 PATENT RIGHTS ARE PROVIDED "AS IS" WITH NO WARRANTIES OR
REPRESENTATIONS OF ANY KIND, AND LICENSOR EXPRESSLY DISCLAIMS ALL OTHER
WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED, INCLUDING, BUT NOT LIMITED
TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT OR FITNESS FOR A
PARTICULAR PURPOSE.
9. INDEMNIFICATION
9.1 Licensee shall indemnify Licensor and its Affiliates against all
damages, costs, and expenses, including reasonable attorney's fees, arising or
resulting from, Licensee making, having made, using, offering for sale or
selling the Licensed Products based upon the Patent Rights in whatever form.
10. LIMITATION OF LIABILITY
10.1 Neither Licensor nor its Affiliates will be responsible for any
injury to or death of persons, or damage to or destruction of materials, or
other property, or for any other loss, damage, or injury of any kind whatsoever
resulting from Licensee making, having made, using, offering for sale or selling
of the Licensed Products based upon the Patent Rights.
11. GENERAL PROVISIONS
11.1 Under the terms of this Agreement, Licensor and Licensee are
independent contractors. Neither party is an employee, agent, partner or
representative of the other party. Nothing contained herein shall be deemed to
create a joint venture relationship between the parties. Each party specifically
acknowledges that it does not have authority to incur any obligations or
responsibilities on behalf of the other party.
11.2 All notices required or permitted to be given by one party to the
other under this Agreement shall be sufficient if sent by certified mail, return
receipt requested, by a nationally recognized courier or by hand delivery to the
parties at the respective addresses set forth below or to such other address as
the party to receive the notice has designated by notice to the other party:
Licensor: Licensee:
General Nutrition Investment Company Numico Research B.V.
300 Sixth Street Bosrandweg 20
Pittsburgh, Pennsylvania 15222 6704 PH Wageningen
Fax No.______________________________ Netherlands
Attn:________________________________ Fax No.___________________________
Attn: ____________________________
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All notices shall be effective upon receipt or refusal of delivery by
the party being notified. Either party may change its address, etc., by giving
notice of such change as provided herein, provided that such notice is effective
only on receipt.
11.3 Licensee shall not use the name of the Licensor or any of its
Affiliates in any advertising, marketing or sales without the prior written
consent of Licensor, except that Licensee may state that the Licensed Products
are licensed under the Patent Rights, Licensee may mark the Licensed Products
pursuant to Section 3 of this Agreement and Licensee may use Licensor's name in
various documents used by Licensee for capital raising and financing without
such prior written consent only to the extent such use is required by any U.S.
federal law or regulation. However, by entering into this Agreement, Licensor
does not directly or indirectly endorse any Licensed Products and Licensee shall
not state or imply that this Agreement is an endorsement by Licensor.
11.4 No waiver of the terms and conditions of this Agreement, or the
failure of either party to strictly enforce any such term or condition on one or
more occasions, shall be construed as a waiver of the same or of any other term
or condition of this Agreement on any other occasion.
11.5 This Agreement shall be governed by and construed in accordance
with the internal laws of the State of New York, without reference to any
principles of conflicts of laws. The parties hereby consent to the jurisdiction
and venue of the United States district courts sitting in the State of New York
and any courts of the State of New York in which any suit, action or proceeding
is brought arising under this Agreement. The parties hereby waive any claim of
forum non conveniens in any suit, action or proceeding brought in any of the
above-mentioned courts. Licensor and Licensee agree that service of process in
any such suit, action or proceeding shall be effective if in writing, delivered
in any manner permitted in Section 11.2 hereof and actually received by the
addressee.
11.6 If any provision in this Agreement may be held to be invalid or
unenforceable in any jurisdiction in which this Agreement is being performed,
the meaning of such provision shall be construed so as to render it enforceable
to the extent feasible. If no feasible interpretation would save such provision,
it shall be severed from this Agreement and the remainder shall remain in full
force and effect. However, in the event such provision is considered an
essential element of this Agreement, the parties shall promptly negotiate
alternative, reasonably equivalent, enforceable terms.
11.7 Licensee shall comply with all laws, rules and regulations
applicable to the performance of its obligations hereunder, including, without
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limitation, all import/export laws, restrictions, controls and regulations
relating to the Patent Rights and/or Licensed Products.
11.8 Subject to the Purchase Agreement, the terms and conditions
contained in this Agreement, including the attached Exhibit A, supersede all
prior oral or written understandings between the parties with respect to the
subject matter thereof, and constitutes the entire agreement of the parties with
respect to such subject matter. All prior negotiations, representations,
agreements, and understandings are merged into, extinguished by and completely
expressed by this Agreement. Such terms and conditions shall not be modified or
amended except by a writing signed by authorized representatives of both
parties.
11.9 This Agreement may be executed in several counterparts, each of
which shall be deemed an original, but all of which together shall constitute
one and the same Agreement. A signature page of this Agreement executed and
transmitted via facsimile or electronic mail shall be deemed an original for all
purposes.
11.10 This Agreement shall be binding upon and shall inure to the
benefit of the parties hereto and their respective permitted assigns and
successors.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed below
by their duly authorized representatives.
General Nutrition Investment Company Numico Research, B.V.
By: /s/ James M. Sander By: /s/ Bert Moulet
--------------------------- -------------------------------
Printed Name: James M. Sander Printed Name: Bert Moulet
Title: SVP Title: EVP
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EXHIBIT A
APPLICATION PUBLICATION ISSUE
TITLE NUMBER DATE FILED NUMBER DATE COUNTRY
- ------------------------------- ------------- ---------- --------------- ----- -------------
Dietetic Preparation and Method US 09/880,937 06/15/2001 US 2003/0004215 United States
for Inhibiting Intestinal
Carbohydrate Absorption WO WO 02/102362 PCT
2002NL00394