exv10w13



 





Exhibit 10.13




LICENSE AGREEMENT




     This Agreement is entered into as of December 10, 2005 (the “Effective Date”) by and between
(i) SD Pharmaceuticals, Inc., a Delaware corporation (“SDP”), and (ii) Latitude Pharmaceuticals,
Inc., a Delaware corporation (“LPI”), and (iii) Andrew X. Chen (“Dr. Chen”), with respect to the
following facts:


A. Dr. Chen is the sole owner of LPI and is a co-founder and a principal owner in SDP.



B. In connection with the formation of SDP, Dr. Chen assigned to SDP certain inventions and related
patent rights, and LPI granted to SDP (pursuant to that certain Inventions First Negotiation and
Refusal Agreement, dated as of June 16, 2004, the “Inventions Agreement”) a first negotiation right
for SDP to acquire additional future inventions and related patent rights conceived and developed
by LPI.



C. From June 2004 through December 2005, various additional inventions and related patent rights
have been conceived and developed by Dr. Chen, as an employee of LPI, which inventions and related
patent rights are useful for the business plan of SDP; and SDP has funded some of the development
costs and patent application costs for said additional inventions (collectively called the
“Additional Inventions”).




     WHEREFORE, the parties hereto and each agree as follows:


1. Assignment. In consideration of the license grant-back set forth in Section 2 of this
Agreement, LPI and Dr. Chen hereby assign to SDP all rights and interests of Dr. Chen and LPI in
the Additional Inventions and the related patent rights for all areas worldwide except for China,
Taiwan, Hong Kong and Macao (collectively called the “Retained Asian Territories”). Additionally,
Dr. Chen and LPI agree to execute and deliver such additional assignment documents as may be
necessary or appropriate to further evidence such assignment. Attached hereto as Exhibit A is a
combined listing of the Additional Inventions and the previsiously assigned inventions and related
patent rights (collectively called the ‘Subject Patent Rights”). LPI and Dr. Chen hereby ratify
and confirm their assignment to SDP of all of their rights and interests in the Subject Patent
Rights except for rights and interests in the Retained Asian Territories.



2. License Grant-Back. In consideration for the forgoing assignment of the Additional
Inventions, and subject to the terms of this Agreement, SDP hereby grants to LPI the worldwide,
exclusive, royalty-free, paid-up, and irrevocable license right to use the Subject Patent Rights
for LPI to use to develop, make, have made, use, sell and import products and to practice methods
and processes, only within the Permitted Fields (as defined below).




     (a) “Permitted Fields” means all fields of use other than the “Excluded Fields” as defined in
Exhibit B attached hereto.



     (b) For avoidance of doubt, SDP retains the sole and exclusive right to utilize and practice
the Subject Patent Rights in the Excluded Fields for all areas worldwide except for the



 









 







Retained Asian Territories; and LPI has no rights to utilize or practice the Subject Patent
Rights in the Excluded Fields, other than in the areas of the Retained Asian Territories.



     (c) LPI shall be entitled to grant sublicenses (and sub-tier-sublicenses), and to assign its
license rights under this Agreement; and upon any such sublicense or assignment, LPI shall give
prompt written notice thereof to SDP.


3. Patent Prosecution and Maintenance. SDP shall have the responsibility and authority to
manage the patent prosecution for the Subject Patent Rights, worldwide except for the Retained
Asian Territories, and to monitor and maintain the Subject Patent Rights, all at the expense of
SDP. SDP shall instruct the patent attorney handling these patent matters to keep LPI fully
informed as to all material matters concerning the patent prosecution and patent maintenance for
the Subject Patent Rights, including furnishing copies of correspondence with the governmental
patent offices, and furnishing copies of relevant documents related to the Subject Patent Rights.



4. Patent Infringement. If there is any third party infringing the Subject Patent Rights,
LPI and SDI shall confer and endeavor to reach a consensus as to how best to deal with the
infringer. If the infringement primarily affects the Excluded Fields in the SDP territories, then
SDP shall have the final and ultimate authority to decide how to proceed against the infringer; and
alternatively, if the infringement primarily affects the Permitted Fields or the Retained Asian
Territories, then LPI shall have the final and ultimate authority to decide how to proceed against
the infringer.



5. Inventions Agreement. As additional consideration for the assignment set forth in
Section 1 above, SDP shall also amend the Inventions Agreement (described in Recital B), so as to
allow LPI to have an early termination of the Inventions Agreement in the event that SDP is later
sold or there is a change in control of SDP.



6. Development Costs. As additional consideration for the assignment set forth in Section
1 above, if SDP is later sold, funded, or there is a change in control of SDP (the “Triggering
Event”), then SDP shall reimburse LPI for its actual costs incurred after June 2004 through the
date of the Triggering Event to further develop the Subject Patent Rights (the “Development
Costs”). Said Development Costs shall be for the actual materials, labor, and overhead for such
development work, but shall not include any time and efforts contributed by Dr. Chen.



7. Confidentiality. To the extent that either party discloses its confidential information
to the other party, such other party shall maintain the confidentiality of that confidential
information and shall not use that confidential information without the prior written consent of
the disclosing party. This obligation of non-disclosure and non-use shall not extend to any
information which: (a) can be demonstrated by the recipient to have been within its legitimate
possession prior to the time of disclosure by the disclosing party; or (b) was in the public domain
prior to disclosure by the disclosing party; or (c) comes into the public domain through no fault
of the recipient party; or (d) is disclosed to the recipient by third party having legitimate
possession thereof and the unrestricted right to make such disclosure; or (e) is required by law or
legal proceedings to be disclosed, but then only to the limited extent the such disclosure is
legally required.




 









 







8. Disclaimers. Neither Dr. Chen, LPI nor SDP makes any representation or warranty of any
kind with respect to (i) the claims that will ultimately be included in the Subject Patent Rights
once patents are issued, or (ii) the validity or scope of any of the Subject Patent Rights, or
(iii) whether or not any viable products or services can be developed under the Subject Patent
Rights, or (iv) the utility or commercial applicability of the Subject Patent Rights, or (v) the
nature and scope of any other related third party patent rights.




IN WITNESS WHEREOF, the parties have executed this Agreement as of the date set forth above




	 	 	 	 	 
	/s/ Andrew X. Chen	 	 
	 	 	 
	Andrew X. Chen	 	 
	 
	 	 	 	 
	Latitude Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 
	By:

	 	/s/ Andrew X. Chen	 	 
	 

	 	 	 	 
	 

	 	Andrew X. Chen, President	 	 
	 
	 	 	 	 
	SD Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 
	By:

	 	/s/ Paul J. Marangos	 	 
	 

	 	 	 	 
	 

	 	Paul J. Marangos, President	 	 






 









 






Exhibit A

Subject Patent Rights




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	401
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401P1

	 	Pharmaceutical Compositions for Delivering Macrolide

Drugs
	 	60/493,209 08/06/03
	 	Chen
	 	N/A
	 	Expired	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401

	 	Pharmaceutical Compositions for Delivering Macrolides
	 	10/895,018 07/20/04
	 	Chen
	 	60/493,209 (401P1)
	 	Pending
	 	•
	 	Published as

US-2005-0049209-A1 on

03-Mar-05
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401CA

	 	Pharmaceutical Compositions for Delivering Macrolides
	 	 	 	Chen
	 	 	 	Unfiled
	 	•
	 	06-Jun-2007 –National

Stage Filing due
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401EP

	 	Pharmaceutical Compositions for Delivering Macrolides
	 	08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•
	 	05-Aug-2006 – Annuity due
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401JP

	 	Pharmaceutical Compositions for Delivering Macrolides
	 	08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•
	 	05-Aug-2007 – Deferred

Exam
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	401PC

	 	Macrolides Containing Oil-in-Water Emulsions
	 	US04/25284

08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•
	 	Published






 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	403
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	403P1

	 	Anti-Viral Pharmaceutical Compositions
	 	60/528,843

12/10/03
	 	Chen
	 	N/A
	 	Expired	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	403

	 	Anti-Viral Pharmaceutical Compositions
	 	11/003,302 12/03/04
	 	Chen
	 	60/528,843 (403P1)
	 	Pending
	 	•
	 	Published
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	403PC

	 	Anti-Viral Pharmaceutical Compositions
	 	US04/41117

12/08/04
	 	Chen
	 	60/528,843 (403P1)

& 11/003,302 (403)
	 	Pending
	 	•
	 	10-Jun-2006 – Chapter

I/II National Stage

Filing due
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	404
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	404P1

	 	Elemene Compositions Containing Liquid Oil
	 	60/538,851

01/23/04
	 	Chen
	 	N/A
	 	Expired	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	404

	 	Elemene Compositions Containing Liquid Oil
	 	11/040,079

01/21/05
	 	Chen
	 	60/538,851 (404P1)
	 	Pending
	 	•
	 	Published
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	406
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	406

	 	Injectable Pharmaceutical Compositions for

Irritating Drugs
	 	10/889,226

07/12/04
	 	Chen
	 	N/A
	 	Pending
	 	•
	 	Published
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	406PC

	 	Compositions for Delivering Highly Water

Soluble Drugs
	 	US2005/24594

7/12/05
	 	Chen
	 	10/889,226 (406)
	 	Pending
	 	•
	 	Published
	 

	 	 	 	 	 	 	 	 	 	 	 	•
	 	18-Mar-2006 – Amend Claims
	 

	 	 	 	 	 	 	 	 	 	 	 	•
	 	12-May-2006 – Demand Due

(Priority Date)
	 

	 	 	 	 	 	 	 	 	 	 	 	•
	 	12-Jan-2007 – Chapter

I/II National Stage

Filing due






 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	407
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	407P1

	 	Stable Injectable Composition of Alpha Tocopheryl
Succinate, Analogues and Salts Thereof
	 	60/592,097 07/28/04
	 	Chen
	 	N/A
	 	Expired	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	407

	 	Stable Injectable Composition of Alpha Tocopheryl
Succinate, Analogues and Salts Thereof
	 	11/192,439

07/28/05
	 	Chen
	 	60/592,097 (407P1)
	 	Pending
	 	•
	 	Published
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	407PC

	 	Stable Injectable Composition of Alpha Tocopheryl
Succinate, Analogues and Salts Thereof
	 	US2005/026783

7/28/05
	 	Chen
	 	60/592,097 (407P1)
	 	Pending
	 	•
	 	Published
	 

	 	 	 	 	 	 	 	 	 	 	 	•
	 	28-Jan-2007 – Chapter

I/II National Stage

Filing due
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	408
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	408

	 	Low Oil Emulsion Compositions for Delivering Taxoids
and Other Insoluble Drugs
	 	10/952,243

9/28/04
	 	Chen
	 	N/A
	 	Pending
	 	•
	 	30-Mar-2006 – Projected

Publication
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	408 PC

	 	Low Oil Emulsion Compositions for Delivering Taxoids
and Other Insoluble Drugs
	 	US2005/34971

9/28/05
	 	Chen
	 	10/952,243 (408)
	 	Pending
	 	•
	 	28-Mar-2007 – Chapter

I/II National Stage

Filing due






 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	409
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	409P1

	 	Vitamin E Succinate Stabilized Pharmaceutical
Compositions, Methods for the Preparation
Thereof and
Methods for the Use Thereof
	 	To be filed	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	409P2

	 	Vitamin E Succinate Stabilized Pharmaceutical
Compositions, Methods for the Preparation
Thereof and Methods for the Use Thereof
	 	To be filed	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	410

	 	Vancomycin formation Patent
	 	To be filed	 	 	 	 	 	 	 	 	 	 







 









 








Exhibit B

Excluded Fields



1. Clarithromycin intravenous emulsion formulation for infectious disease and any other disease
indication.



2. Chitosan in combination with Zinc for topical anti-viral use.



3. B-Elemene intravenous emulsion formulation for Cancer treatment and any other disease
indication.



4. Vinca Alkyloid intravenous emulsion formulation for cancer treatment and any other disease
indication.



5. Alpha tocopheryl Succinate, Paclitaxel and Docetaxel intravenous emulsion formulations for
Cancer and any other disease indication.



6. Paclitaxel and Docetaxel intravenous emulsion formulation for cancer treatment and any other
disease indication.



7. Vancomycin intravenous emulsion formulation for infectious disease and any other disease
indication.