**Exhibit 10.1**

 

Confidential Materials omitted and filed separately with theSecurities 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 tothat certain Collaboration and License Agreement made as of January 22,1999, as amended by an amendment dated August 10, 2000, an amendment madeas of January 29, 2001 and an amendment made as of March 15, 2002, byand between NitroMed, Inc. (the “Company”) and you (the “Licensor”) (asamended, the “License Agreement”). Capitalized terms sets forth herein and not defined shall have themeanings ascribed to them in the License Agreement.

 

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

 

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

 

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

 

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

 

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

 

(i)            The Royalty Rate payable for the period through thequarter ending June 30, 2008 shall be [**]%and (ii) commencing with the quarter beginning July 1, 2008, NitroMedshall pay to Licensor royalties on Net Sales of Collaboration products at arate of [**]%, without regard to theAnnual Sales Volume set forth above in this Section 4.2, until such timeas the aggregate dollar amount retained by NitroMed and not required to be paidto 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 periodthrough the quarter ending June 30, 2008 (the amount retained through June 30,2008 equals $[**]), together withthe period thereafter commencing July 1, 2008, equals an aggregate of $[**] (the “Maximum Amount”).  By way of illustration, if the Annual SalesVolume of Net Sales of the Collaboration Product is $[**]and the Maximum Amount has not yet been achieved, thenNitroMed shall make a royalty payment to Licensor at a Royalty Rate of [**]%, or $[**], instead of [**]%,or $[**], and the dollar differenceof $[**] shall be applied againstthe Maximum Amount.  Once the aggregatedollar differences arising from the payment of royalties at 

 

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

 

“(g)                           Inthe event that NitroMed grants a sublicense to an independent third partypursuant to Section 2.2 above (a “Sublicensee”), then notwithstanding anythingin this Agreement to the contrary, the Royalty Rate for royalties payable toLicensor with respect to the Net Sales of Collaboration Products by suchSublicensee (“Sublicensee Sales”) shall equal [**]% of the Royalty Rate at which such Sublicensee is payingroyalties, providedthat, during such time royalties are beingpaid 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 SublicenseeSales shall equal the lesser of (i) [**]%of the Royalty Rate at which such Sublicensee is paying royalties or (ii) [**]% of Sublicensee Sales, and the dollardifferences between [**]% of theRoyalty Rates at which such Sublicensee is paying royalties and such reducedroyalties shall be applied against the Maximum Amount.  By way of illustration, if pursuant to asublicense agreement between NitroMed and Sublicensee, NitroMed receives aRoyalty Rate of [**]% of SublicenseeSales, then the Royalty Rate for royalties paid by NitroMed to Licensor shallequal [**]% of such rate, or [**]%, providedthat, if thereduced Royalty Rate under Section 4.2(f) is in effect, then theRoyalty Rate for Licensor shall equal [**]%of Sublicensee Sales and the dollar differences between [**]% of the Royalty Rates at which such Sublicensee is payingroyalties and such reduced royalties shall be applied against the MaximumAmount.  Copies of all such sublicensesshall be delivered to Licensor together with a duly executed agreement ofSublicensee to be bound by all of the terms and conditions contained in thisLicense Agreement.

 

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Further, and notwithstandinganything in this License Agreement that may be to the contrary, in no eventshall the Royalty Rate payable on Net Sales of Collaboration Products be lessthan [**]%.”

 

2.                                       TheTerminating Amendments to the License Agreement made as of January 29,2001 and March 15, 2002, are hereby terminated ab initio and shall have nofurther force or effect, and each of the Parties hereby releases the other fromall liabilities, obligations and claims thereunder and from all liabilities,claims and obligations with respect to the Disputes.

 

3.                                       Inconsideration of Licensor’s agreement to the terms of this Amendment, NitroMedshall simultaneously remit to Licensor by certified check in immediatelyavailable funds drawn on a bank licensed to do business in Massachusetts, orwire transfer to Licensor, the sum of $800,000 (the “Payment”).

 

4.                                       NitroMedrepresents, warrants, confirms and agrees that, after giving effect to thesettlement of the Disputes hereunder, (i) it has fully observed, performedand complied with its obligations under the License Agreement, (ii) it isnot in breach or default of any provision of the License Agreement, (iii) ithas no claims against Licensor under the License Agreement, and (iv) theLicense Agreement remains in full force and effect except as modifiedhereby.  In reliance upon NitroMed’srepresentations and warranties herein, Licensor hereby confirms and agrees that(i) to the best of his knowledge, he has no claims against NitroMed underthe License Agreement, (ii) to the best of his knowledge NitroMed is notin breach or default of any provision of the License Agreement, and (iii) theLicense Agreement remains in full force and effect except as modified hereby.

 

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5.                                       TheLicense Agreement, as amended and as hereby further amended, contains theentire agreement among the parties with respect to the subject matter thereof,shall remain in full force and effect, and is hereby ratified andconfirmed.  Each reference in the LicenseAgreement to “this Agreement,” “hereunder,” “hereof,” “herein” or words of likeimport, shall mean and be a reference to the License Agreement, as amended andas further amended hereby.

 

6.                                       ThisAmendment may be executed in any number of counterparts, and each suchcounterpart shall be deemed to be an original instrument, but all suchcounterparts together shall constitute but one agreement.

 

The foregoing constitutes ouragreement 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 thedate set forth above.

 

 
| /s/ Jay N. Cohn |   |
|-----------------|--------|
| Jay N. Cohn     |   |

 

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