Exhibit 10.28


 


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.


 


 


ASSIGNMENT AND ASSUMPTION AGREEMENT


 


This Assignment and Assumption Agreement (this “Agreement”)
is entered into this 21st day of July 2004, by and among Acorda
Therapeutics, Inc. (“Buyer’’), Elan Pharmaceuticals, Inc. (together
with its affiliates, “Elan”), on behalf of itself and its affiliates, and
Novartis Pharma AG (together with its affiliates, “Novartis”), on behalf of
itself and its affiliates.


 


WHEREAS, Buyer and Elan have entered into that certain
Asset Purchase Agreement dated as of July 21, 2004 (the “Asset Purchase
Agreement”) for the sale by Elan to Buyer of certain assets, including certain
rights of Elan under that certain License Agreement (the “License Agreement”)
dated April 17, as amended, between Athena Neurosciences, Inc., the
predecessor to the interest of Elan in the License Agreement, and Sandoz Pharma
Ltd., the predecessor to the interest of Novartis in the License Agreement;


 


WHEREAS, under the terms of the Asset Purchase
Agreement, Elan has agreed to assign to Buyer certain rights of Elan, and Buyer
has agreed to assume certain liabilities and obligations of Elan, under or
pursuant to the License Agreement, and the parties desire to effect other
arrangements regarding the terms of the License Agreement;


 


WHEREAS, Elan has previously assigned to Medeus UK
Limited (“Medeus”) certain rights under or pursuant to the License Agreement,
and Medeus agreed to assume certain liabilities and obligations of Elan under
or pursuant to the License Agreement (collectively, the “Medeus Assignment”);
and


 


WHEREAS, Novartis desires to consent to such
assignment and assumption, and the parties hereto desire to effect such other
arrangements, in each case on the terms and conditions described herein.


 


NOW, THEREFORE, for good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the parties
hereto agree as follows:


 


1.             For value received
and effective as of, and simultaneously with, the closing of the transactions
contemplated by the Asset Purchase Agreement (the “Closing”), Elan hereby assigns
to Buyer all of Elan’s rights under or pursuant to the License Agreement
relating to Products and Improvements in the Territory (such term to be used
herein as defined in the Asset Purchase Agreement), and Buyer hereby assumes
and agrees to satisfy, perform, pay, discharge and otherwise be responsible for
all liabilities and obligations of Elan to be performed under or pursuant to
the License Agreement following the Closing relating to Products and
Improvements in the Territory, but expressly excluding any such liabilities or
obligations as have resulted or may result from any breach or failure to
perform by Elan prior to the Closing under or pursuant to the license
Agreement.  The parties intend that: (a) the
foregoing assignment and assumption shall be effected upon the terms and
conditions contained herein, (b) all of the terms and conditions of the
License Agreement shall be incorporated by reference herein, subject to any
modifications and agreements made herein, and (c) such modifications to
have no effect on the rights and obligations of Novartis and Medeus resulting
from the Medeus Assignment or the


 

















 


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.


 


 


rights and obligations of any other person or entity that is not a
party hereto.  Elan hereby represents and
warrants to Buyer that neither Elan nor any of its Affiliates has granted
rights under the License Agreement relating to Products in the Territory to
Medeus or any other third party.


 


2.             The parties further
agree as follows:


 


a.                                       Notwithstanding
anything to the contrary contained herein, Elan shall maintain all rights and perform
all obligations under the License Agreement at all times up to and including
the date of the Closing (the “Closing Date”). Further, it is understood and
agreed that, notwithstanding the assignment and assumption to Buyer as of the
Closing, from and after such Closing Date Elan shall maintain all rights
necessary to enforce or perform under, and shall remain responsible for all
obligations and liabilities under, the License Agreement with respect to events
occurring or circumstances existing on or prior to such Closing Date. For the
avoidance of doubt and without limiting the generality of the foregoing, Elan
shall maintain all rights and remain responsible for all obligations and
liabilities under the License Agreement with respect to Products sold by Elan
(or its Affiliates, sublicensees and marketing, promotion or distribution
partners) on or prior to the Closing Date, and Buyer shall have all rights and
be responsible for all obligations and liabilities under the License Agreement
with respect to Products sold by Buyer (or its Affiliates, sublicensees and
marketing, promotion or distribution partners) on or after the Closing Date.
Without limiting the generality of the foregoing, and notwithstanding anything
to the contrary contained herein, Elan shall be responsible for and entitled to
(i) the indemnification provided under Section 9 of the license
Agreement (arising from events occurring or circumstances existing on or prior
to the Closing Date) and (ii) the rights and obligations provided under the
confidentiality provisions in Section 4 of the License Agreement.


 


b.                                      Any
provisions of the License Agreement that (a) are not expressly assigned to
or assumed by Buyer herein and (b) are necessary (as determined by Buyer)
for the exercise of rights assigned to Buyer hereunder or the performance of
obligations assumed by Buyer hereunder shall be deemed to have been assigned to
or assumed by Buyer, as applicable, and to be in full force and effect, in each
case to the extent necessary to exercise or enforce such rights or perform such
obligations.


 


c.                                       The
parties hereby acknowledge and agree that all references in the License
Agreement to “Sandoz Pharma Ltd.” or “Sandoz Pharma” shall be deemed to be
references to Novartis.


 


d.                                      The
parties hereby acknowledge and agree that in connection with the Closing and
the assignment being made hereunder, Elan may transfer to Buyer all Know-How
and other information and materials related to Products and/or


 


2

















 


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.


 


 


Improvements furnished to
Elan by Novartis under Section 3.1 of the License Agreement or otherwise.


 


e.                                       Section 1.11
of the License Agreement shall be deleted and replaced in its entirety by the
following:


 


“1.11 “Territory”
means the United States of America, its territories and possessions and the
Commonwealth of Puerto Rico.”


 


f.                                         The
parties hereby acknowledge and agree that the five-year period beginning on the
first commercial sale of a Product (as specified in Section 5.1.4 of the License
Agreement) has elapsed, and that as such the royalty payable to Novartis
relating to sales of Product by Buyer (or its affiliates or licensees) pursuant
to Section 5.1.5 of the License Agreement shall be [***] of Net Sales (for
the avoidance of doubt, as such term is defined in the License Agreement as
amended hereby) in the Territory of any formulation of Product, whether now
existing or to be developed in the future, for the term of the License
Agreement.


 


g.                                      The
parties hereby acknowledge and agree that (i) Elan has developed a
microparticulate capsule formulation of Product (the “MPC Formulation”), (ii) for
the avoidance of doubt the term “Purchase Requirements” as used in the License
Agreement does not apply to the supply by Novartis of the MPC Formulation, (iii) Elan
shall have a worldwide, perpetual, royalty-free license, with the right to
sublicense, to use all rights in technology (including without limitation the
Compound and all Improvements) necessary to manufacture the MPC Formulation, to
develop improvements to its processes and methods of manufacturing the MPC
Formulation and to sell the MPC Formulation to Buyer, its sublicensees and
affiliates, (iv) Elan shall have no liability or obligation, contractual
or otherwise, to Novartis as a result of any past development, manufacture or
testing of the MPC Formulation or the sale by Elan to Buyer of its inventory of
MPC Formulation existing as of the Closing Date and (v) notwithstanding
anything to the contrary contained in the License Agreement, Novartis shall not
be entitled to any royalty or other compensation from Elan in connection with
sales of the MPC Formulation by Elan to Buyer from and after the Closing Date;
provided, however, the parties acknowledge and agree that the MPC Formulation
constitutes an Improvement developed by Elan, and nothing in this subclause (g) or
elsewhere in this Agreement is intended to diminish the rights of Novartis to
such Improvement provided under Section 12 of the License Agreement or
elsewhere.


 


h.                                      Notwithstanding
anything to the contrary contained herein, the parties hereby acknowledge and
agree that two separate supply agreements (the “Supply Agreements”) shall be
negotiated and entered into by the parties subsequent to the signing of this
Agreement: one between Buyer and Novartis to regulate the supply of Products containing
Compound as their active pharmaceutical ingredients currently approved by the
FDA pursuant to NDA No. 20-397 (“Zanaflex Tablets”), and one between Elan
and Novartis to regulate the supply of Compound (the “Compound Agreement”).
Concurrently or prior to the execution of the Compound Agreement, Elan and
Buyer shall enter into a contract relating to Elan’s regulation of Compound
based on Buyer’s forecasted requirements of Zanaflex Tablets (in which Elan
will agree to sell Compound to Buyer’s designated manufacturer of Zanaflex
Tablets at the price at which Elan purchased such Compound). The
above-mentioned contract with respect to the ordering of Compound for the
tablets shall take effect at the same time when Novartis has transferred the
supply of Zanaflex Tablets to Buyer’s designated manufacturer of Zanaflex
Tablets.


 


i.                                          The
parties hereby acknowledge and agree that Elan has fully complied with all of
the obligations contained in Sections 2.2 and 7.1 of the License Agreement and,
as a result, as of the Closing Date the provisions of Sections 2.2 and 7.1 of
the


 


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.


 


 


License Agreement
granting to Novartis certain rights relating to the Product in the Territory
have been fully satisfied and do not apply to Buyer.


 


j.                                          Section 7.6
and 7.7 of the License Agreement shall be deleted and replaced in its entirety
by the following:


 


“7.6
Prior to the execution of the Supply Agreements, Novartis shall supply Zanaflex
Tablets to Buyer and Compound to Elan at the following prices (the “Interim
Supply Prices”):


 


	
  Product

  	
   

  	
  Price (US$)

  	
   

  
	
  2 mg Zanaflex
  Tablet

  	
   

  	
  [***]

  	
   

  
	
  4 mg Zanaflex
  Tablet

  	
   

  	
  [***]

  	
   

  
	
  Compound

  	
   

  	
  [***]

  	
   

  



 


These Interim Supply Prices may be adjusted by
Novartis before the Supply Agreements have been executed; provided that such
adjusted Interim Supply Prices shall not be effective until Buyer (with respect
to Zanaflex Tablets) or Elan (with respect to Compound) have been notified of
such adjustments in writing; and, provided, further, that increases to such
Interim Supply Prices shall be limited to the percentage increase in the Swiss
consumer price index, as compared to the most recent price adjustment. The
Supply Agreements shall stipulate price and price changes, if any, for the
terms of the Supply Agreements.


 


k.                                       Article 8
is amended by the addition of the following Section 8.3:


 


“8.3        The
provisions of Sections 8.1 and 8.2 shall not apply to any materials previously
approved by Novartis that are changed solely to add the name of a sublicensee
and/or delete the name of Licensee.”


 


l.                                          The
parties hereby acknowledge and agree that the term of the License Agreement as
determined pursuant to Section 14.1 shall expire on February 28,
2007.


 


m.                                    Any
notices to be sent to Buyer pursuant to the notice provisions of the License
Agreement shall be sent to Buyer as follows:


 


Acorda Therapeutics

15 Skyline Drive 

Hawthorne, NY 10532 

Facsimile: 914-347-4560 

Attention: General Counsel; and


 


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.


 


any notices to be sent to Novartis pursuant to the
notice provisions of the License Agreement shall be sent to Novartis as
follows:


 


Novartis Pharma AG

Lichtstrasse 35

4002 Basel 

Swizerland

Attention: Manager, BD&L Mature Products

Facsimile: 41 61 324 2322.


 


3.             Each party hereto
agrees, upon the reasonable request of any other party hereto, and at the
expense of the requesting party, to make, execute and deliver any or all
documents or instruments of any kind or character, and to perform all such
other actions, that may be necessary or proper and reasonable to effectuate,
confirm, perform or carry out the terms and provisions of this Agreement.


 


4.             By its execution
below, Novartis consents to the assignment to Buyer of the rights and the
assumption by Buyer of the related obligations and liabilities under the License
Agreement, as set forth in Section 1 above, and as provided in Section 18
of the License Agreement, and agrees to the other terms and conditions
contained in this Agreement.


 


5.             Capitalized terms
used herein and not otherwise defined in this Agreement shall have the meanings
assigned to such terms in the License Agreement, as amended herein.


 


6.             This Agreement shall
in all respects be construed in accordance with and governed by the laws of the
State of New York without giving effect to its conflicts-of-laws principles.


 


7.             This Agreement may be
executed in any number of counterparts and by facsimile and by different
parties hereto in separate counterparts, and each of which when so executed
shall be deemed to be an original and all of which taken together shall
constitute one and the same Agreement.


 


[SIGNATURE PAGE TO FOLLOW]


 


5

















 


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.


 


 


IN WITNESS WHEREOF, the
parties have executed this Agreement as of the day and year first written
above.


 


	
  ACORDA
  THERAPEUTICS, INC. (on behalf of itself and its affiliates)

  
	
  By:

  	
  /s/  Ron
  Cohen

  	
   

  	
   

  
	
  Name:

  	
   

  
	
  Title:

  	
   

  
	
   

  
	
   

  
	
  ELAN
  PHARMACEUTICALS, INC. (on behalf of itself and its affiliates)

  
	
  By:

  	
   

  
	
  Name:

  	
   

  
	
  Title:

  	
   

  
	
   

  
	
   

  
	
  NOVARTIS PHARMA
  AG (on behalf of itself and its affiliates)

  
	
  By:

  	
  /s/  Peter
  Hewes

  	
   

  	
   

  
	
  Name:

  	
  Peter B. Hewes

  
	
  Title:

  	
  Mature Products
  BU

  
	
   

  	
  WSJ-210.211

  
	
   

  	
  Tel. 47225

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/  Sheyenne
  Scriven-Jin

  	
   

  	
   

  
	
  Name:

  	
  Sheyenne
  Scriven-Jin

  
	
  Title:

  	
  Senior Legal
  Counsel

  
	
   

  	
  Transplantation
  and

  
	
   

  	
  Mature Products

  



 


 


 


 

















 


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.


 


 


IN WITNESS WHEREOF, the
parties have executed this Agreement as of the day and year first written
above.


 


	
  ACORDA
  THERAPEUTICS, INC. (on behalf of itself and its affiliates)

  
	
  By:

  
	
  Name:

  
	
  Title:

  
	
   

  
	
   

  
	
  ELAN
  PHARMACEUTICALS, INC. (on behalf of itself and its affiliates)

  
	
  By:

  	
  /s/

  	
  Jack Laflin

  	
   

  	
   

  
	
  Name:

  	
  Jack Laflin

  
	
  Title:

  	
  Executive Vice
  President,

  
	
   

  	
  Global Core
  Services

  
	
   

  
	
   

  
	
  NOVARTIS PHARMA
  AG (on behalf of itself and its affiliates)

  
	
  By:

  	
   

  
	
  Name:

  	
   

  
	
  Title: