Exhibit
10.21


 


Certain portions of this
Exhibit have been omitted pursuant to a request for confidentiality. Such
omitted portions, which are marked with brackets [   ] and an asterisk*, have been separately
filed with the Commission.


 


LICENSE
AGREEMENT


 


THIS
LICENSE AGREEMENT (the “Agreement”) is made and entered into as of this 3rd day of February, 2003
(the “Effective Date”) by and between ACORDA THERAPEUTICS, INC., a corporation organized and
existing under the laws of the state of Delaware having a principal place of
business at 15 Skyline Drive, Hawthorne, New York 10532 (“Acorda”)
and CORNELL RESEARCH FOUNDATION, INC., a
non-profit corporation organized and existing under the laws of the state of
New York having an office at 20 Thornwood Drive, Suite 105, Ithaca, NY  14850 (“Foundation”).
Each of Acorda and Foundation may be referred to herein individually as a “Party” and collectively, as “Parties.”


 


RECITALS


 


WHEREAS,
Foundation owns all right, title and interest in U.S. Patent No. 5,952,357; and


 


WHEREAS, Foundation
is a wholly owned subsidiary of Cornell University (“Cornell”) and holds the
ownership interests of patents, know-how, and biological materials made by
Cornell’s employees and administers licenses in a manner consistent with the
policies of Cornell; and


 


WHEREAS, Acorda
desires to obtain and Foundation wishes to grant to Acorda, an exclusive
license to U.S. Patent No. 5,952,357, including all intellectual property
rights therein, for the development and commercialization of pharmaceutical products
for all purposes; and


 


WHEREAS, the
work leading to the Licensed Patents was supported in part by an agency of the
U.S. Government, and Foundation is obligated to comply with U.S. OMB Circular
A-124 and 37 CFR Part 401; and as such, this license is subject to the
applicable terms of U.S. Government regulations concerning Government funded
inventions.


 


NOW,
THEREFORE, for and in consideration of the mutual covenants
and the premises herein contained, the Parties, intending to be legally bound,
hereby agree as follows:


 


ARTICLE 1


 


DEFINITIONS


 


The following terms as
used herein shall have the following meanings:


 


1.1          “Affiliate” shall
mean any corporation or non-corporate business entity which controls, is
controlled by, or is under common control with a Party to this Agreement.  A corporation or non-corporate business
entity shall be regarded as in control of another corporation if it owns, or
directly or indirectly controls, at least fifty (50%) percent of the voting
stock of the other corporation, or (a) in the absence of the ownership of at
least fifty (50%) percent of the voting stock of a corporation or (b) in the
case of a non-corporate business entity, or non-profit corporation, if it
possesses, directly or indirectly, the power to direct or cause the


 












 


direction of the
management and policies of such corporation or non-corporate business entity,
as applicable.


 


1.2          “Clinical Trial”
shall mean one of those trials on sufficient number of subjects that are
designed to establish that a pharmaceutical product is safe and efficacious for
its intended use, to define warnings, precautions and adverse reactions that
are associated with the pharmaceutical product or label expansion of such
pharmaceutical product.


 


1.3          “Dollars” shall mean
United States dollars.


 


1.4          “Earned Royalties” shall
mean royalties payable to Foundation by Acorda for the Sale of a
Royalty-Bearing Product, as provided in Section 3.2.


 


1.5          “FDA” shall mean the
United States Food and Drug Administration or successor entity.


 


1.6          “Licensed Patents” shall
mean U.S. Patent No. 5,952,357, together with any and all substitutions,
extensions, divisionals, continuations, or continuations-in-part of such patent
(or its parent application), including reexamined and reissued patents, and all
foreign counterparts of any of the foregoing.


 


1.7          “Licensed Product” shall
mean any product or process that is covered by, or the manufacture or use of
which is covered by, a Valid Claim.


 


1.8          “Licensed Territory” shall
mean the world.


 


1.9          “Net Sales” shall
mean the actual amounts received by Acorda or an Affiliate or sublicensee of
Acorda for the Sale of Royalty-Bearing Products to a Third Party purchaser less
the following deductions to the extent that such amounts are actually accrued
or incurred as to such sales: (a) freight, packaging and insurance costs
incurred in transporting the Royalty-Bearing Product to such customers; (b)
quantity, cash and other trade discounts or rebates actually allowed and taken,
including without limitation, discounts or rebates granted to managed health
care organizations or to any governmental agency or branch thereof; (c) customs
duties, surcharges, taxes and other governmental charges incurred in connection
with the exportation or importation of such Royalty-Bearing Products; and (d)
amounts repaid or credited by reason of rejections, recalls or retroactive
price reductions.


 


1.10        “Regulatory Approval” shall
mean the approvals, registrations or authorizations of the FDA or other
applicable regulatory agency necessary for the manufacture, distribution, use
or sale of a pharmaceutical or diagnostic product in the United States.


 


1.11        “Royalty-Bearing Product” shall
mean the product known as Fampridine-SR for all indications.


 


1.12        “Sale” or “Sold” shall mean the sale, transfer, exchange, or other
commercial disposition of Royalty-Bearing Products by Acorda, its Affiliates or
sublicensees.  In case of doubt, Sales of
Royalty-Bearing Products shall be deemed consummated no later than receipt of


 


2












 


payment from a Third
Party for the applicable transaction involving such Royalty Bearing Product.


 


1.13        “Third Party” shall
mean any entity or individual other than Acorda, Foundation or an Affiliate of
either of them.


 


1.14        “Valid Claim” shall
mean: (a) an issued claim of any unexpired patent included among the Licensed
Patents, which patent has not been (i) held unenforceable, unpatentable or
invalid by a decision of a court or governmental body of competent jurisdiction
that is not further appealable, (ii) rendered unenforceable through
reexamination, reissue, disclaimer or otherwise, (iii) lost through an
interference proceeding or (iv) abandoned; or (b) a claim of a pending
application within the Licensed Patents, provided that not more than five (5)
years have elapsed from the date the claim takes priority for filing purposes.


 


ARTICLE 2


 


GRANT
OF LICENSE


 


2.1          License.  Subject to the terms and conditions of this
Agreement and to the rights of and obligations to the U.S. Government as set
forth in U.S. Office of Management & Budget Circular A-124 or 37 CFR Part
401 et seq., Foundation hereby grants to Acorda and its Affiliates and Acorda
hereby accepts an exclusive, fully sublicenseable license under the Licensed
Patents to practice the inventions claimed therein and to research, develop,
make, have made, use, sell, offer for sale, have sold, import and otherwise
exploit Licensed Products in the Licensed Territory during the term of this
Agreement.


 


2.2          Retained License.  The license granted in Section 2.1 above are
further subject to a right and license retained by Foundation and Cornell to
practice the Licensed Patents and any improvements thereto for non-commercial
academic research and education purposes only.


 


2.3          Sublicenses.  Acorda may grant sublicenses to Third Parties
under the license in Section 2.1 to practice Licensed Patents and to research,
develop, make, have made, use, sell, offer for sale, have sold, import or
otherwise exploit Licensed Products upon prior written approval by Foundation,
such approval not to be unreasonably withheld or delayed.  If Acorda fails to obtain the prior written
consent of Foundation to a sublicense agreement, Foundation shall have the
right to either terminate this Agreement pursuant to Section 10.3 or require
that the sublicense be terminated.  Any
such sublicense shall contain all the provisions of this Agreement which are
protective of and beneficial to Foundation and Acorda shall be responsible to Foundation
for the payment of Earned Royalties on Net Sales made by such sublicensees as
though they were Net Sales made by Acorda.


 


2.4          No Implied License.  The license and rights granted in this
Agreement shall not be construed to confer any rights upon Acorda by
implication, estoppel, or otherwise as to any technology not specifically
identified in this Agreement as Licensed Patents.


 


2.5          Government Regulations.  Acorda shall alone have the
obligation to ensure that any Licensed Product it makes, uses, or sells,
leases, or otherwise disposes of is not defective,


 


3












 


Certain portions of this Exhibit have been omitted pursuant to a
request for confidentiality. Such omitted portions, which are marked with
brackets [   ] and an asterisk*, have
been separately filed with the Commission.


 


that any Licensed Product
satisfies all applicable government regulations and that any export of any
Licensed Product satisfies export requirements.


 


ARTICLE 3


 


COMPENSATION


 


3.1          License Execution Fee.  Within ten (10) days of the Effective Date,
Acorda shall pay Foundation a license execution fee of [**].


 


3.2          Earned Royalties on Royalty-Bearing
Products.  For Sales of
Royalty-Bearing Product in the Licensed Territory, Acorda shall pay or cause to
be paid to Foundation Earned Royalties equal to the following percentages of
the aggregate annual Net Sales of such Royalty-Bearing Product by Acorda, its
Affiliates and its sublicensees:


 


(a)           for the portion of
such aggregate annual Net Sales of such Royalty-Bearing Product less than [**]
in any calendar year, [**] of such Net Sales;


 


(b)           for the portion of
such aggregate annual Net Sales of such Royalty-Bearing Product between [**]
and up to [**] in any calendar year, [**] of such Net Sales; and


 


(c)           for the portion of
such aggregate annual Net Sales of such Royalty-Bearing Product greater than
[**] in any calendar year, [**] of such Net Sales.


 


3.3          Annual Minimum Royalty.


 


(a)           Subject to Section
3.3(b), if Acorda’s annual Earned Royalties payment for the Royalty-Bearing Product
to Foundation pursuant to Section 3.2 after the first full calendar year
anniversary following the date of Regulatory Approval for the Royalty-Bearing
Product, or in any calendar year thereafter, is less than [**] (the “Minimum Royalty”), Acorda shall make or cause to be made a
payment to Foundation within sixty (60) days after the end of such applicable
calendar year equal to the difference between the Minimum Royalty and the total
Earned Royalties payment to Foundation for all Royalty-Bearing Products for
that calendar year, together with the applicable report in accordance with
Article 4.


 


(b)           If during a given
calendar year, the Earned Royalties payment to Foundation pursuant to Section
3.2 for Royalty-Bearing Products exceeds the Minimum Royalty for such year
pursuant to Section 3.3(a), Acorda shall have satisfied the requirements of
Section 3.3(a) for such year without any additional payment needed.


 


3.4          Milestone Payments.  Acorda shall pay Foundation
a milestone payment in the amount specified below no later than [***] days
after the occurrence of Milestone 1 and [***] days after the occurrence of
Milestone 2, both milestones as defined below.


 


4












 


Certain portions of this
Exhibit have been omitted pursuant to a request for confidentiality. Such
omitted portions, which are marked with brackets [   ] and an asterisk*, have been separately
filed with the Commission.


 


	
  Event

  	
   

  	
  Milestone Payment

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  (i) The effective date of a successful reissuance or
  reexamination of the Licensed Patents (“Milestone 1”).

  	
   

  	
  $

  	
  [**]

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  (ii) The date of completion of a Clinical Trial
  testing the use of Fampridine-SR in Amyotrophic Lateral Sclerosis (ALS),
  provided that such Clinical Trial shall be initiated at Acorda’s discretion
  and a negative or non-statistically significant trial would not trigger this
  milestone (“Milestone 2”).

  	
   

  	
  $

  	
  [**]

  	
   

  



 


No milestone
payment shall be paid more than once to Foundation pursuant to this Section
3.4.  Milestone 1 and Milestone 2 are
independent of each other and Milestone 2 may occur prior to Milestone 1.  In any event, Acorda shall pay the specified
milestone payment only upon the occurrence of the corresponding milestone
event, regardless of the order of occurrence of the milestone events.


 


3.5          Research Support.   Pursuant to a sponsored research agreement to
be negotiated by the Parties, Acorda shall pay Foundation [**] per year for
research support for two (2) years beginning the first full calendar year of
commercial sales for the Royalty-Bearing Product, Fampridine-SR.  Such sponsored research agreement shall
include commercially reasonable terms and conditions as are typical for
sponsored research agreements of similar nature in the biotechnology industry
as discussed and agreed upon in good faith by the Parties, and further, shall
provide that the payment for the first year shall be due within sixty (60) days
after the commencement of commercial sales for the Royalty-Bearing Product
while the second payment shall be due within sixty (60) days after the first
anniversary of commercial sales for the Royalty-Bearing Product.


 


ARTICLE 4


 


REPORTS,
PAYMENTS AND ACCOUNTING


 


4.1          Earned Royalties Reports and Records.  During the term of this Agreement, Acorda
shall furnish, or cause to be furnished to Foundation, quarterly written
reports governing each of Acorda and its Affiliates and sublicensees for each
fiscal quarter showing, as applicable:


 


(a)           the gross sales of
all Royalty Bearing Products Sold by Acorda, its Affiliates and sublicensees,
in the Licensed Territory during the reporting period, together with the
calculations of Net Sales in accordance with Section 1.9;


 


(b)           the Earned
Royalties payable in Dollars, which shall have accrued hereunder in respect to
such Net Sales;


 


(c)           the exchange rates,
if any, in determining the amount of Dollars; and


 


5












 


(d)           the occurrence of
any event triggering a milestone payment obligation in accordance with Section
3.4.


 


4.2          Payment Terms.  Acorda shall provide Foundation with quarterly
written reports of all sales, or other dispositions of Licensed Products by
Acorda and its Affiliates and sublicensees. 
In order to minimize Acorda’s time spent on royalty reports, a brief
one-page report form (a “Royalty Report Form”),
substantially the same as the form attached in Appendix A, will satisfy
Foundation’s reporting requirements under this Section 4.2.  The report shall be made within forty-five
(45) days after the end of each calendar quarter; provided,
however, that if an Acorda sublicense provides that the sublicensee
can submit its respective reports to Acorda forty-five (45) days or more after
the end of each calendar quarter, Acorda may then delay submitting its royalty
report under this Section 4.2 to Foundation with respect to such sublicensee
until sixty (60) days after the end of each calendar quarter.  Foundation agrees to keep the information in
these reports confidential, except as may be necessary to maintain an action
against Acorda for breach of this Agreement. 
Royalty payments for Net Sales of the Licensed Products invoiced during
a calendar quarter shall accompany the Royalty Report Form for that
quarter.  The Royalty Report Form shall
be submitted regardless of whether or not royalties are owed.  Payments shall be made in Dollars.  Conversion from foreign currencies, if any,
shall be based upon the conversion rate published in The Wall
Street Journal on the last day of the particular quarterly
accounting period (or on the last business day on which The Wall
Street Journal is published during said quarterly period) for which
royalties are due.  Royalty checks shall
be made payable to Cornell Research Foundation Inc. and mailed to the address
specified in Section 12.11.


 


4.3          Minimum Royalty Calculation.  Acorda shall provide in the Royalty Report
Form for the last quarter in each calendar year, the total Earned Royalties
paid by Acorda to the Foundation for such calendar year and if such total is
less than the Minimum Royalty, Acorda shall pay Foundation an amount equal to
the difference between the total Earned Royalties paid in such calendar year
and the Minimum Royalty.


 


4.4          Right to Audit.  Foundation shall have the right, upon prior
written notice to Acorda, not more than once in each Acorda fiscal year, to
engage an independent nationally-certified auditing firm selected by Foundation
and acceptable to Acorda, which acceptance shall not be unreasonably withheld
or delayed, to have access during normal business hours of Acorda as may be
reasonably necessary to verify the accuracy of the Earned Royalties reports
required to be furnished by Acorda pursuant to Section 4.1 of the
Agreement.  If such audit by Foundation
shows any underpayment of Earned Royalties by Acorda, its Affiliates or sublicensees,
then, within thirty (30) days after Acorda’s receipt of such report, Acorda
shall remit or shall cause its sublicensees to remit to Foundation:


 


(a)           the amount of such
underpayment; and


 


(b)           if such
underpayment exceeds five percent (5%) of the total Earned Royalties owed for
the fiscal year then being reviewed, the reasonably necessary fees and expenses
of such auditing firm performing the audit. 
Otherwise, such fees and expenses shall be borne solely by
Foundation.  Any overpayment of Earned
Royalties shall be fully creditable against future Earned Royalties payable in
any subsequent royalty period.


 


6












 


4.5          Confidentiality of Records.  All information subject to review under this
Article 4 shall be deemed Acorda’s Confidential Information (as defined in
Section 9.1). The independent nationally-certified auditing firm shall not
disclose to Foundation or to any Third Party any such Confidential Information,
except for any Confidential Information showing a discrepancy in amount owed to
Foundation, and Foundation shall not use any such information for any purpose
other than determining and enforcing its rights under this Agreement.  Foundation agrees to hold such records
confidential, except as may be necessary to maintain an action against Acorda
for breach of this Agreement.


 


4.6          The records required under Article 4
shall be maintained and available for inspection for a period of five (5) years
following the calendar quarter to which they pertain.  This Section 4.6 shall survive termination of
this Agreement.


 


4.7          Payments due under this Agreement that
are more than the sixty (60) days late shall be subject to a twenty percent
(20%) per annum interest charge.


 


4.8          Acorda shall keep Foundation appropriately
informed about Acorda’s development and commercialization efforts with respect
to Licensed Products.  Without limiting
the generality of the foregoing, Acorda shall provide Foundation with written
notice of significant development, regulatory approval and commercialization
plans, activities and results with respect to Licensed Products.  In addition, on each anniversary of the
Effective Date during the term of this Agreement (commencing with the first (1st)
anniversary thereof), Acorda shall provide Foundation with a written annual
report summarizing Acorda’s efforts and progress in developing and
commercializing Licensed Products during the immediately preceding twelve (12)
months.


 


ARTICLE 5


 


PATENTS
AND PATENT COSTS


 


5.1          Prosecution and Maintenance of
Licensed Patents.  Foundation
shall be primarily responsible for all patent prosecution and maintenance
activities pertaining to Licensed Patents. 
Foundation shall keep Acorda reasonably informed of its activities
relating to the filing, prosecution and maintenance of Licensed Patents,
including providing copies of all filings and correspondence with patent
authorities, in a timely manner, so as to give Acorda an opportunity to comment
thereon.  Foundation shall use good faith
efforts to accommodate all such comments. 
Without limiting the generality of the foregoing, Foundation shall work
collaboratively with Acorda to secure the reissuance or reexamination of the
Licensed Patents in a manner acceptable to Foundation and Acorda.  Acorda agrees to keep any documentation
received under this Section 5.1 confidential in accordance with Article 9
herein.


 


5.2          Future Patent Costs.  Acorda shall pay all fees
and out-of-pocket costs incurred by
Foundation pursuant to its activities under Section 5.1 after the Effective
Date for on-going patent prosecution and maintenance activities for the
Licensed Patents (the “Future Patent Costs”).  Acorda shall reimburse Foundation, no later
than thirty (30) days after receipt of an invoice from Foundation for such
Future Patent Costs.


 


7












 


5.3          Acorda’s Payment Obligation.  Acorda’s obligation, pursuant to Section 5.2
to pay for domestic and foreign patent filing, prosecution, and maintenance
costs for Licensed Patents shall continue for so long as this Agreement remains
in effect, provided, however, that Acorda may terminate its obligations with
respect to any given patent application or patent in the Licensed Patents in
any particular country or jurisdiction upon thirty (30) days written notice to
Foundation, provided, further, that Acorda’s rights under such patent
applications or patents in such countries, for which it has terminated its
payment obligations pursuant to this Section 5.3, shall terminate.  Patent costs already committed to prior to
the date of the termination notice and which are not cancelable, shall be the
responsibility of Acorda and shall survive termination of this Agreement.


 


ARTICLE
6


 


INFRINGEMENT


 


6.1          Enforcement of Patents.  If either Acorda or Foundation becomes aware
of a product made, used or sold in the Licensed Territory, which it believes
infringes a Valid Claim, the Party obtaining such knowledge shall promptly
advise the other Party of all relevant facts and circumstances pertaining to the
potential infringement.  Acorda shall
have the first right, but not the obligation, to enforce any patent rights
within the Licensed Patents against such infringement, at its own expense.  Foundation shall cooperate with Acorda in
such effort, at Acorda’s expense, including being joined as a Party to such
action, if necessary.  Any damages or
costs recovered in connection with any action filed by Acorda hereunder which
exceed Acorda’s out-of-pocket costs and expenses of litigation, shall be deemed
to be the proceeds of Sales of Royalty-Bearing Products in the fiscal quarter
received by Acorda, and Earned Royalties shall be payable by Acorda to
Foundation thereon in accordance with the terms of this Agreement.


 


6.2          Backup Enforcement Right of
Foundation.  If Acorda
fails within one hundred twenty (120) days after receiving notice from
Foundation of a potential infringement, or providing Foundation with notice of
such infringement, to either (a) terminate such infringement or (b) institute
an action to prevent continuation thereof and, thereafter to prosecute such
action diligently, or if Acorda notifies Foundation that it does not plan to
terminate the infringement or institute such action, then Foundation shall have
the right to do so at its own expense; provided however, that Foundation first
consults with Acorda and gives due consideration to Acorda’s reasons for not
instituting actions to terminate or otherwise prevent continuation of such
infringement.  If Foundation decides to
pursue such infringement, Acorda shall cooperate with Foundation in such effort
including being joined as a Party to such action if necessary.  Foundation shall be entitled to retain all
damages or costs awarded to Foundation in such action.


 


8












 


ARTICLE 7


 


REPRESENTATIONS
AND WARRANTIES; EXCLUSION OF WARRANTIES


 


7.1          Foundation Representations and
Warranties.


 


(a)           Foundation
represents and warrants that it has the right to enter into this
Agreement.  Foundation warrants that it
has the right to convey to Acorda the rights granted under this Agreement.


 


(b)           Foundation warrants
that it is the sole owner of Licensed Patents prior to the effective date of
this Agreement, and has not granted any license or other rights to any third
party under the Licensed Patents which rights are still in existence, subject
to U.S. government regulations concerning government funded inventions.


 


(c)           Foundation makes no representation or
warranty that Licensed Patents will be reissued.


 


(d)           Foundation makes no representations
or warranties concerning the validity or scope of any Licensed Patents.


 


(e)           Foundation does not warrant that any
Licensed Product made, used, sold, leased or otherwise disposed of under the
license of this Agreement is or will be free from infringement of patents of
third parties.


 


(f)            Nothing herein shall be construed as
granting by implication, estoppel, or otherwise any licenses or rights under
patents or other rights of Foundation or Cornell or other persons other than
Licensed Patents, regardless of whether such patents or other rights are
dominant or subordinate to any Licensed Patents.


 


(g)           Foundation is under no obligation to
furnish any technology or technological information other than the Licensed
Patents.


 


(h)           Nothing herein shall be construed to
grant Acorda rights under any applications or patents other than Licensed
Patents.


 


(i)            Foundation does not make any
representations, extend any warranties of any kind, express or implied, or
assume any responsibility whatever concerning the manufacture, use, or sale,
lease or other disposition by Acorda or its vendees or transferees of Licensed
Products.


 


(j)            Except as expressly set forth in
this Agreement, FOUNDATION MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE
USE OF THE LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.


 


7.2          Acorda Representations and Warranties.  Acorda represents, warrants and covenants to
Foundation that:


 


(a)           this Agreement is a
legal and valid obligation of, binding upon, and enforceable against Acorda in
accordance with the terms of this Agreement;


 


9












 


(b)           Acorda has the
right to enter into this Agreement and perform the obligations set forth in
this Agreement; and


 


(c)           the execution,
delivery and performance of this Agreement does not conflict with, constitute a
breach of, or in any way violate any arrangement, understanding or agreement to
which Acorda is a party or by which Acorda is bound.


 


ARTICLE 8


 


INDEMNIFICATION;
LIMITATION OF LIABILITY 


 


8.1          Indemnification by Acorda.  Acorda shall defend,
indemnify and hold harmless Foundation and Cornell and their respective
trustees, officers, directors, employees, agents and students (the “Foundation Indemnitees”), from and against any and all
losses, liabilities, expenses or damages (including reasonable attorneys’ fees)
(collectively, the “Losses”)
resulting from claims made or legal proceedings instituted, made or brought
against Foundation and/or Cornell by a Third Party arising or alleged to arise
by reason of, or in connection with, any and all personal injury (including
death) and property damage caused or contributed to, in whole or in part, by
the manufacture, testing, design, use, Sale or labeling of any Licensed
Products by Acorda, its Affiliates, contractors, agents, or sublicensees,
except to the extent of any Losses that arise from the negligence or
intentional misconduct of Foundation Indemnitees.


 


8.2          In the event
Foundation is found to be in breach of Sections 7.1(a) and/or 7.1(b) of this
Agreement, Foundation shall use its best efforts to remedy such breach within
ninety (90) days of receipt by Foundation of written notification that such a
breach has occurred.  If Foundation is
unable to remedy such breach within ninety (90) days after receiving such
written notification of a breach, Foundation shall use its best efforts to
obtain the right to grant, and to grant to Acorda, a non-exclusive, fully
sublicenseable license under the Licensed Patents to practice the inventions
claimed therein and to research, develop, make, have made, use, sell, offer for
sale, have sold, import and otherwise exploit Licensed Products in the Licensed
Territory pursuant to a new license agreement, the terms of which will be
negotiated in good faith by the Parties (which terms shall be no less favorable
to Acorda than the terms of this Agreement). 
Foundation shall not be liable for any indirect, special, consequential,
or other damages whatsoever, whether grounded in tort (including negligence),
strict liability, contract or otherwise. Foundation shall not have any
responsibilities or liabilities whatsoever with respect to Licensed Products.


 


8.3          Indemnification Procedure.  To be indemnified hereunder, the Foundation
shall provide Acorda with prompt notice of the claim giving rise to the
indemnification obligation pursuant to this Article 8 and the exclusive ability
to defend (with the reasonable cooperation of Foundation) or settle any such
claim provided however, that Acorda shall not
enter into any settlement for damages other than monetary damages without the
Foundation’s written consent, such consent not to be unreasonably withheld or
delayed.  The Foundation shall have the
right to participate, at its own expense and with counsel of its choice, in the
defense of any claim or suit that has been assumed by Acorda.


 


10












 


8.4          Insurance.  Acorda shall maintain commercially reasonable
levels of insurance or other adequate forms of protection to satisfy its
indemnification obligations under this Agreement.


 


ARTICLE 9


 


CONFIDENTIALITY


 


9.1          Nondisclosure of Confidential
Information.  Except as
otherwise provided hereunder, during the term of this Agreement and for a
period of five (5) years thereafter, Acorda and Foundation each agrees to
retain in strict confidence, use only for the purposes of this Agreement, and
not disclose any written information or data supplied by one Party to the other
under this Agreement and marked as proprietary or confidential without the
prior written consent of the disclosing Party. 
For purposes of this Agreement, all such information and data which a
Party is obligated to retain in confidence shall be “Confidential
Information.”


 


9.2          Permitted Disclosure.  It shall not be a breach of this Article 9 if
the recipient Party is required to disclose the other Party’s Confidential
Information pursuant to an order of the government or a court of competent
jurisdiction, provided that the recipient Party (a) provides the other Party
with adequate notice of the required disclosure, (b) cooperates with the other
Party’s efforts to protect its Confidential Information with respect to such
disclosure and (c) takes all reasonable measures requested by the other Party
to challenge or to modify the scope of such required disclosure.  To the extent that it is reasonably necessary
to fulfill its obligations or exercise its rights under this Agreement, or any
rights which survive termination or expiration hereof, the recipient Party may
disclose Confidential Information of the other Party to its Affiliates,
sublicensees, consultants, outside contractors and clinical investigators
provided that such entities or persons are bound by obligations of
confidentiality and non-use as strict as the obligations in this Agreement and
agree to use the Confidential Information only for such purposes as the
recipient Party is authorized to use the Confidential Information.


 


9.3          Exceptions.  The obligation under Section 9.1 not to use
or disclose Confidential Information shall not apply to any part of such Confidential
Information that the recipient Party can establish by competent written proof:


 


(a)           is or becomes
patented, published or otherwise part of the public domain, other than by
unauthorized acts of the recipient Party obligated not to disclose such Confidential
Information, its Affiliates or sublicensees in contravention of this Agreement;


 


(b)           is disclosed to the
recipient Party, its Affiliates or sublicensees by a Third Party having the
right to disclose it;


 


(c)           prior to disclosure
under this Agreement, was already in the possession of the recipient Party, its
Affiliates or sublicensees, as proven through contemporaneous documentation;


 


(d)           results from the
research and development by the recipient Party, its Affiliates or
sublicensees, independent of disclosures from the disclosing Party of this


 


11












 


Agreement, provided that
the persons developing such information have not had exposure to the
Confidential Information received from the disclosing Party; or


 


(e)           Acorda and
Foundation agree in writing may be disclosed.


 


9.4          Publication.  It is the policy of Foundation and Cornell to
promote and safeguard free and open inquiry by faculty, students and
others.  To further this policy,
Foundation and Cornell shall retain the right to publish the technology
described in Licensed Patents. 
Foundation and Cornell shall use reasonable efforts to furnish Acorda
with a copy of any proposed publication relating to the Licensed Products at
least sixty (60) days in advance of the publication date.  Within this sixty (60) day period, Acorda
shall review such proposed publication to determine whether Acorda desires to
file patent applications on subject matter contained therein and if it is
determined that a patent application should be filed, such patent application
shall be filed within this sixty (60) day period.


 


ARTICLE 10


 


TERM
AND TERMINATION


 


10.1        Term.  Unless sooner terminated as otherwise
provided in this Agreement, the term of this Agreement shall commence on the
Effective Date hereof and shall continue in full force and effect until the
expiration of the last to expire Valid Claim.


 


10.2        Termination by Acorda.  Acorda may terminate this Agreement at any
time upon forty five (45) days prior written notice to Foundation.


 


10.3        Termination for Material Breach.  If either Party breaches a material
obligation under this Agreement, the other Party shall have the right to give
the breaching Party written notice describing the alleged breach.  If the breaching Party does not cure such
breach within sixty (60) days after receipt of such notice, the notifying Party
may, in addition to any other rights it may have under this Agreement,
terminate this Agreement effective immediately. 
However, if there is a dispute between the Parties as to termination
under this Section 10.3, no termination shall be effected until such dispute is
resolved pursuant to Section 12.1.


 


10.4        Upon termination of
this Agreement for any reason, including the end of term as specified above,
all rights and obligations under this Agreement shall terminate, except those
that have accrued prior to termination and except as specified in the
Agreement.


 


ARTICLE 11


 


ASSIGNMENT


 


Neither Party may
assign or transfer this Agreement or any rights or obligations hereunder
without the prior written consent of the other, except a Party may make such an
assignment without the other Party’s written consent to an Affiliate or to a
successor to all, or substantially all, of the business to which this Agreement
relates of such Party, whether in a merger, sale of stock, sale of assets or
other transaction. Any permitted successor or assignee of rights and/or
obligations hereunder shall, in writing to the other Party, expressly assume


 


12












 


performance of such
rights and/or obligations.  Any permitted
assignment shall be binding on the successors of the assigning Party.  Any assignment or attempted assignment by either
Party in violation of the terms of this Article 11 shall be null and void and
of no legal effect.


 


ARTICLE 12


 


MISCELLANEOUS


 


12.1        Dispute Resolution.  If any disputes, controversies or claims
arise out of, or in connection with, this Agreement (each, a “Dispute”), the Parties shall notify each other in writing of
such Dispute and will use good faith efforts to resolve the Dispute.  If the Parties are unable to resolve such
Dispute within ten (10) business days of a Party receiving notification from
the other Party and requesting resolution of such Dispute, then either Party
may, for a period of thirty (30) days thereafter, request in writing that such
Dispute be resolved through arbitration, and such arbitration shall be
conducted under the auspices of the American Arbitration Association pursuant
to that organization’s rules for commercial arbitration.  If neither Party requests to resolve the
Dispute through arbitration within such thirty (30) day period, then either
Party may pursue resolution through any court of competent jurisdiction in
accordance with Section 12.7. 
Notwithstanding the foregoing, either Party may apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary or
permanent injunction, or other equitable relief.


 


12.2        Notwithstanding
Section 12.1, Foundation reserves the right and power to proceed with direct
judicial remedies against Acorda without conciliation, mediation, mediation,
arbitration or disputer resolution for breach of the royalty and/or milestone
payments and sales reporting provisions of this Agreement after giving written
notice of such breach to Acorda followed by an opportunity period of sixty (60)
days in which to cure such breach.  In
collecting overdue royalty and milestone payments and securing compliance with
reporting obligations, Foundation may use all judicial remedies available.


 


12.3        Legal Compliance.  Acorda shall comply with all laws and
regulations relating to its manufacture, use, Sale, labeling or distribution of
Licensed Products and shall not take any action which would cause Foundation or
Acorda to violate any applicable laws or regulations.


 


12.4        Independent Contractor.  Acorda’s relationship to Foundation shall be
that of a licensee only.  Neither Party
shall be considered to be an employee or agent of the other, nor shall this
Agreement constitute, create or in any way be interpreted as a joint venture,
partnership or formal business organization of any kind.  In that respect, neither Party shall have the
authority to execute any agreement on behalf of the other Party, nor shall
either Party have any authority to negotiate any agreement, except as the other
Party may expressly direct in writing.


 


12.5        Patent Marking.  Acorda agrees to mark the appropriate patent
number or numbers on all Licensed Products made or Sold in the Licensed
Territory in accordance with all applicable governmental laws, rules and
regulations, and to requires its sublicensees to do the same.


 


13












 


12.6        Use of Names.  Acorda shall 
not use, nor shall Acorda permit sublicensees to use, the names,
trademarks, logos or symbols of Foundation or Cornell University, or their
respective employees, students and faculty members for any commercial purpose,
except as required to comply with law, regulation or court order, without the
prior written approval of Foundation. Foundation shall obtain the prior written
approval of Acorda prior to making use of the name, trademarks, logos or
symbols of Acorda for any commercial purpose, except as required to comply with
law, regulation or court order.


 


12.7        Governing Law.  This Agreement and all
amendments, modifications, alterations, or supplements hereto, and the rights
of the Parties hereunder, shall be construed under and governed by the laws of
the State of New York, U.S.A (without regard to its laws regarding choice of
law) and the United States of America. 
Only federal or state courts located in the State of New York, U.S.A.,
shall have jurisdiction to hear and decide any controversy or claim between the
Parties arising under or relating to this Agreement.


 


12.8        Entire Agreement.  This Agreement and the Appendices attached
hereto and incorporated herein constitutes the entire, final and exclusive
agreement between the Parties hereto and supercedes and terminates all prior
agreements and understandings between the Parties with respect to the subject
matter hereof.  No subsequent alteration,
amendment, change or addition to this Agreement shall be binding upon the
Parties unless reduced to writing and signed by an authorized officer of each
Party.


 


12.9        Survival.  Articles 7, 8, 9, and 12 and Section 4.6
shall survive termination of this Agreement for any reason.


 


12.10      Severability.  All rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the extent that
they do not violate any applicable laws and are intended to be limited to the
extent necessary so that they will not render this Agreement illegal, invalid
or unenforceable.  If any provision or
portion of any provision of this Agreement, not essential to the commercial
purpose of this Agreement, shall be held to be illegal, invalid or
unenforceable by a court of competent jurisdiction, it is the intention of the
Parties that the remaining provisions or portions thereof shall constitute
their agreement with respect to the subject matter hereof, and all such
remaining provisions, or portions thereof, shall remain in full force and
effect.  To the extent legally
permissible, any illegal, invalid or unenforceable provision of this Agreement
shall be replaced by a valid provision which shall implement the commercial
purpose of the illegal, invalid, or unenforceable provision.  In the event that any provision essential to
the commercial purpose of this Agreement is held to be illegal, invalid or
unenforceable and cannot be replaced by a valid provision which will implement
the commercial purpose of this Agreement, the Party who is the beneficiary of
such illegal, invalid or unenforceable provision has the right to terminate
this Agreement upon written notice, effective upon receipt, to the other Party.


 


12.11      Notices.  Any notice required or permitted to be given
under this Agreement shall be in writing, shall specifically refer to this
Agreement and shall be deemed to have been sufficiently given for all purposes
if mailed by first class certified or registered mail, postage prepaid, express
delivery service or personally delivered. 
Unless otherwise specified in writing, the mailing addresess of the
Parties shall be as described below.


 


14












 


	
  For Acorda:

  	
   

  	
  Acorda Therapeutics,
  Inc.

  15 Skyline Drive

  Hawthorne, New York 10532

  Attention: Harold Safferstein

  Title: Vice President, Business Development

  
	
   

  	
   

  	
   

  
	
  For Foundation:

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Payments to
  Foundation shall be sent to:

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Cornell Research
  Foundation, Inc.

  20 Thornwood Drive, Suite 105

  Ithaca, NY 14850

  Attn:      Accounting

  Phone:   607-257-1081

  Fax:       607-257-1015

  
	
  All other
  communications to Foundation shall be sent to:

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Cornell Research
  Foundation, Inc.

  418 E. 71st Street, Suite 61

  New York, NY 10021

  Attn:Brian J. Kelly, Vice President

  Phone:   212-746-6186

  FAX:     212-746-6662

  



 


12.12      Force Majeure.  Any delays in, or failure
of, performance of any Party to this Agreement shall not constitute a default
hereunder, or give rise to any claim for damages, if and to the extent caused
by occurrences beyond the control of the Party affected, including, but not
limited to, acts of God, acts of terrorism, strikes or other concerted acts of
workmen, civil disturbances, fires, floods, earthquakes, explosions, riots,
war, rebellion, sabotage, acts of governmental authority or failure of
governmental authority to issue licenses or approvals which may be required.


 


15












 


12.13      No Waiver.  The failure by either Party, at any time, or
for any period of time, to enforce any of the provisions of this Agreement,
shall not be construed as a waiver of such provisions or as a waiver of either
Party’s rights thereafter to enforce each and every such provision of this
Agreement.


 


12.14      Counterparts.  This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which shall
constitute one and the same instrument.


 


IN
WITNESS WHEREOF, Acorda and Foundation have caused this
Agreement to be signed, under seal, by their duly authorized representatives
below.


 


 


	
  ACORDA THERAPEUTICS, INC.

  	
  CORNELL RESEARCH FOUNDATION,
  INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ Harold T. Safferstein

  	
   

  	
  By:

  	
  /s/ Brian Kelly

  	
   

  
	
   

  	
   

  
	
  Name:

  	
  Harold T. Safferstein

  	
   

  	
  Name:

  	
  Brian Kelly

  	
   

  
	
   

  	
   

  
	
  Title:

  	
  Vice President,
  Business Development

  	
   

  	
  Title:

  	
  Vice President

  	
   

  
										



 


16












 


TABLE OF
CONTENTS


 


	
  ARTICLE
  1

  	
  DEFINITIONS

  
	
   

  	
   

  
	
  ARTICLE
  2

  	
  GRANT
  OF LICENSE

  
	
   

  	
   

  
	
  ARTICLE
  3

  	
  COMPENSATION

  
	
   

  	
   

  
	
  ARTICLE
  4

  	
  REPORTS,
  PAYMENTS AND ACCOUNTING

  
	
   

  	
   

  
	
  ARTICLE
  5

  	
  PATENTS
  AND PATENT COSTS

  
	
   

  	
   

  
	
  ARTICLE
  6

  	
  INFRINGEMENT

  
	
   

  	
   

  
	
  ARTICLE
  7

  	
  REPRESENTATIONS
  AND WARRANTIES; EXCLUSION OF WARRANTIES

  
	
   

  	
   

  
	
  ARTICLE
  8

  	
  INDEMNIFICATION;
  LIMITATION OF LIABILITY

  
	
   

  	
   

  
	
  ARTICLE
  9

  	
  CONFIDENTIALITY

  
	
   

  	
   

  
	
  ARTICLE
  10

  	
  TERM
  AND TERMINATION

  
	
   

  	
   

  
	
  ARTICLE
  11

  	
  ASSIGNMENT

  
	
   

  	
   

  
	
  ARTICLE
  12

  	
  MISCELLANEOUS

  



 


i












 


APPENDIX A - ROYALTY
REPORT


 


Report royalty payment
information to the Cornell Research Foundation, Inc (CRF) using the report
format or facsimile attached to these instructions.  This minimal information must be provided in
order to correctly record royalty related events required by your license
agreement with CRF.


 


Use a separate report to
record royalty information for each license agreement.  For each licensee agreement, report royalty
sales by CRF docket number, which identifies the technology.  List each contributing technology if more
than one technology is used to produce a royalty generating process/product.  This level of detail permits evaluation of
the use of each technology under license with your company.


 


Submit this information
along with appropriate payment to:


 


Cornell Research
Foundation, Inc.

ATTN:  Finance and Accounting

20 Thornwood Drive, Suite 105

Ithaca, NY  14850

(607) 257-1081

www.crf.cornell.edu


 


For your convenience,
payments may be made by FEDWIRE or ACH to:

Tompkins Trust Company

The Commons      

Ithaca, NY  14851

(607) 273-3210

www.tompkinstrust.com


 


Account:  01-101-007353, ABA: 021302648


 












 


ROYALTY
REPORT – [licensee NAME]


 




	
  LICENSEE NAME:

  	
  CRF LICENSE NUMBER:

  






 


REPORTING PERIOD:


 


Individual to contact
concerning this information:


 




	
  Name:

  	
  Phone # or email ID:

  






 


For each product/item
subject to a royalty payment provision, provide the following information as
applicable.


 


PRODUCT/ITEM:


 


	
  CRF Docket Number

  	
   

  	
  Country

  	
   

  	
  Number of

  Units/Products Sold

  	
   

  	
  Gross Sales By

  Country

  	
   

  	
  Net Sales By

  Country

  	
   

  	
  Royalty Rate

  	
   

  	
  Less Minimum Royalty

  Payment Made

  	
   

  	
  Net Royalty

  Payment Due

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Total Payment

  	
   

  	
   

  	
   

  



 


3