Exhibit 10.1


 


Confidential Materials omitted and filed separately with the

Securities and Exchange Commission. 
Asterisks denote omissions.


 


NITROMED, INC.


45 HAYDEN AVENUE, SUITE 3000


LEXINGTON, MA 02421


 


September 5, 2008


 


Jay N. Cohn, M.D.


University of Minnesota


Variety Club Research Center, Room 174A


401 East River Parkway


Minneapolis, MN 55455


 


Dear Jay:


 


Reference is hereby made to
that certain Collaboration and License Agreement made as of January 22,
1999, as amended by an amendment dated August 10, 2000, an amendment made
as of January 29, 2001 and an amendment made as of March 15, 2002, by
and between NitroMed, Inc. (the “Company”) and you (the “Licensor”) (as
amended, the “License Agreement”). 
Capitalized terms sets forth herein and not defined shall have the
meanings ascribed to them in the License Agreement.


 


Whereas, the undersigned
parties have heretofore disputed (the “Disputes”) (i) the Royalty Rate at
which NitroMed is obligated to pay Licensor royalties on Net Sales of
Collaboration Products pursuant to the License Agreement, and (ii) the
amount of the planned costs and “Excess Costs” as defined and referred to in
the amendments to the License Agreement made as of January 29, 2001 and March 15,
2002 (the “Terminating Amendments”); and


 


Whereas, the parties now desire
to resolve such Disputes by this Amendment.


 


Now therefore, for good and
valuable consideration, including without limitation the Payment set forth in Section 3
below, the receipt and sufficiency of which is hereby acknowledged, the Company
and Licensor agree as follows:


 

















 


1.             Section 4.2 of the License Agreement is hereby
amended to add new Sections (f) and (g) at the end of Section 4.2
to read as follows:


 


“(f)          Notwithstanding the
foregoing provisions of this Section 4.2, the following shall apply:


 


(i)            The Royalty Rate payable for the period through the
quarter ending June 30, 2008 shall be [**]%
and (ii) commencing with the quarter beginning July 1, 2008, NitroMed
shall pay to Licensor royalties on Net Sales of Collaboration products at a
rate of [**]%, without regard to the
Annual Sales Volume set forth above in this Section 4.2, until such time
as the aggregate dollar amount retained by NitroMed and not required to be paid
to Licensor as a result of such reduction in the Royalty Rate to [**]% (i.e. the reduction from [**]% to [**]% on the Annual Sales Volume of [**] to $[**] million,
from [**]% to [**]% on Annual Sales Volume from $[**] million to $[**] million, and from [**]%
to [**]% on Annual Sales Volume over
$[**] million) during the period
through the quarter ending June 30, 2008 (the amount retained through June 30,
2008 equals $[**]), together with
the period thereafter commencing July 1, 2008, equals an aggregate of $[**] (the “Maximum Amount”).  By way of illustration, if the Annual Sales
Volume of Net Sales of the Collaboration Product is $[**]and the Maximum Amount has not yet been achieved, then
NitroMed shall make a royalty payment to Licensor at a Royalty Rate of [**]%, or $[**], instead of [**]%,
or $[**], and the dollar difference
of $[**] shall be applied against
the Maximum Amount.  Once the aggregate
dollar differences arising from the payment of royalties at 


 


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such reduced
Royalty Rate reach $[**] million,
then the Royalty Rate will revert back to the applicable rate set forth in Section 4.2(a) above.”


 


“(g)                           In
the event that NitroMed grants a sublicense to an independent third party
pursuant to Section 2.2 above (a “Sublicensee”), then notwithstanding anything
in this Agreement to the contrary, the Royalty Rate for royalties payable to
Licensor with respect to the Net Sales of Collaboration Products by such
Sublicensee (“Sublicensee Sales”) shall equal [**]% of the Royalty Rate at which such Sublicensee is paying
royalties, provided  that, during such time royalties are being
paid to Licensor at a reduced Royalty Rate in accordance with Section 4(f) above,
the Royalty Rate for royalties payable to Licensor with respect to Sublicensee
Sales shall equal the lesser of (i) [**]%
of the Royalty Rate at which such Sublicensee is paying royalties or (ii) [**]% of Sublicensee Sales, and the dollar
differences between [**]% of the
Royalty Rates at which such Sublicensee is paying royalties and such reduced
royalties shall be applied against the Maximum Amount.  By way of illustration, if pursuant to a
sublicense agreement between NitroMed and Sublicensee, NitroMed receives a
Royalty Rate of [**]% of Sublicensee
Sales, then the Royalty Rate for royalties paid by NitroMed to Licensor shall
equal [**]% of such rate, or [**]%, provided  that, if the
reduced Royalty Rate under Section 4.2(f) is in effect, then the
Royalty Rate for Licensor shall equal [**]%
of Sublicensee Sales and the dollar differences between [**]% of the Royalty Rates at which such Sublicensee is paying
royalties and such reduced royalties shall be applied against the Maximum
Amount.  Copies of all such sublicenses
shall be delivered to Licensor together with a duly executed agreement of
Sublicensee to be bound by all of the terms and conditions contained in this
License Agreement.


 


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Further, and notwithstanding
anything in this License Agreement that may be to the contrary, in no event
shall the Royalty Rate payable on Net Sales of Collaboration Products be less
than [**]%.”


 


2.                                       The
Terminating Amendments to the License Agreement made as of January 29,
2001 and March 15, 2002, are hereby terminated ab initio and shall have no
further force or effect, and each of the Parties hereby releases the other from
all liabilities, obligations and claims thereunder and from all liabilities,
claims and obligations with respect to the Disputes.


 


3.                                       In
consideration of Licensor’s agreement to the terms of this Amendment, NitroMed
shall simultaneously remit to Licensor by certified check in immediately
available funds drawn on a bank licensed to do business in Massachusetts, or
wire transfer to Licensor, the sum of $800,000 (the “Payment”).


 


4.                                       NitroMed
represents, warrants, confirms and agrees that, after giving effect to the
settlement of the Disputes hereunder, (i) it has fully observed, performed
and complied with its obligations under the License Agreement, (ii) it is
not in breach or default of any provision of the License Agreement, (iii) it
has no claims against Licensor under the License Agreement, and (iv) the
License Agreement remains in full force and effect except as modified
hereby.  In reliance upon NitroMed’s
representations and warranties herein, Licensor hereby confirms and agrees that
(i) to the best of his knowledge, he has no claims against NitroMed under
the License Agreement, (ii) to the best of his knowledge NitroMed is not
in breach or default of any provision of the License Agreement, and (iii) the
License Agreement remains in full force and effect except as modified hereby.


 


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5.                                       The
License Agreement, as amended and as hereby further amended, contains the
entire agreement among the parties with respect to the subject matter thereof,
shall remain in full force and effect, and is hereby ratified and
confirmed.  Each reference in the License
Agreement to “this Agreement,” “hereunder,” “hereof,” “herein” or words of like
import, shall mean and be a reference to the License Agreement, as amended and
as further amended hereby.


 


6.                                       This
Amendment may be executed in any number of counterparts, and each such
counterpart shall be deemed to be an original instrument, but all such
counterparts together shall constitute but one agreement.


 


The foregoing constitutes our
agreement amending the License Agreement.


 


 


	
   

  	
  Very truly yours,

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  NITROMED, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
   

  	
  /s/ Kenneth M. Bate

  
	
   

  	
  Kenneth M. Bate

  
	
   

  	
  President and Chief Executive Officer

  



 


 


Accepted and Agreed to as of the

date set forth above.


 


 


	
  /s/ Jay N. Cohn

  	
   

  
	
  Jay N. Cohn

  	
   

  



 


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