Exhibit
10.23


 


EXECUTION
COPY


 


MGH PARTIAL ASSIGNMENT AGREEMENT


 


This ASSIGNMENT AGREEMENT (this Agreement), dated as of March 28, 2007, by and between AGA AB, a Swedish aktiebolag and subsidiary
of Linde AG, having an office at Agavägen 1, 181 81 Lindingö, Sweden (the Assignor), and INO THERAPEUTICS LLC,
a Delaware limited liability company, having an office at 6 Route 173, Clinton,
New Jersey 08809, USA (the Assignee).


 


W I T N E S S E T H:


 


WHEREAS the Assignor
has agreed to sell, assign and transfer to the Assignee such of the Assignor’s
rights, title and interest in and to the MGH License, and to delegate to the
Assignee such of the Assignor’s obligations and duties under the MGH License,
as relate to the Assigned Territories, so that INO-T is able to continue its
existing business and the Assignee has agreed to accept the same; and


 


WHEREAS the Assignor
proposes to retain such of the Assignor’s rights, title and interest in and to
the MGH License, and such of the Assignor’s obligations and duties under the
MGH License, as relate to the Linde Territories, so that Assignor is able to
continue its existing business in the Linde Territories, on the terms and
subject to the conditions of this Agreement.


 


NOW,  THEREFORE,
in consideration of the mutual covenants and agreements set forth herein, and
for other good and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the Parties, intending to be legally bound, hereby
agree as follows:


 


1.                                      Definitions


 


1.1          As used herein, the following terms have the
following respective meanings:


 


Affiliate shall mean, with respect to any Person, any
other Person that controls, is controlled by or is under common control with
such first Person (and for this purpose, the term control means the power to
direct the management and policies of such Person (directly or indirectly),
whether through ownership of voting securities, by Contract or otherwise (and
the terms controlling and controlled have meanings correlative to the
foregoing)).


 


Assigned Interest shall mean the rights of
the Assignor under the MGH License, including rights of research and
development worldwide, including all rights of the Assignor under Section 3.2
of the MGH License, and Exploitation Rights in the Assigned Territories, including
the Patent Rights and the right to use Technological Information set forth in Section 2
of the MGH License, but excluding the Exploitation Rights of the Assignor in
the Linde Territories.


 


Assignment Date shall mean the date of
Closing.


 


Assumed Obligations shall mean all the
obligations and duties of the Assignor under the MGH License other than the
royalty and other payment obligations, including obligations and duties
relating to research and development worldwide, including all obligations and
duties of the 


 

















 


Assignor under Section 3.2
and 3.3 of the MGH License, and obligations and duties relating to Exploitation
Rights in the Assigned Territories, but excluding the obligations and duties of
the Assignor relating to Exploitation Rights in the Linde Territories.


 


Assigned Territories shall mean everywhere in
the world outside the Linde Territories.


 


Contract shall mean any written contract, agreement,
instrument, lease, license, indenture or promissory note.


 


Closing shall have the meaning set forth in the SPA.


 


Exploitation Rights shall mean the right to
manufacture, have manufactured, import, stock, use, sell, have sold, offer to
sell and otherwise commercialise Products.


 


Linde Territories shall mean Albania,
Andorra, Armenia, Austria, Azerbaijan, Azores, Belarus, Belgium,
Bosnia-Herzegovina, Bulgaria, Canary Islands, Channel Islands, Croatia, Cyprus,
Czech Republic, Denmark, Estonia, Faeroe Islands, Finland, France, Georgia,
Germany, Gibraltar, Greece, Greenland, Hungary, Iceland, Ireland, Isle of Man,
Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Macedonia, Madeira, Malta,
Moldova, Monaco, Netherlands, Norway, Poland, Portugal, Republic of Montenegro,
Romania, Russian Federation, Serbia, Slovak Republic, Slovenia, Spain, Sweden,
Switzerland, Turkey, Ukraine and United Kingdom.


 


Losses shall mean direct loss, liability, claim, damage or
expense, including reasonable and documented legal fees and expenses incurred
in connection therewith.


 


MGH Assignment Agreement shall mean the contract assignment
between MGH and the Assignor referred to in the SPA.


 


MGH License shall mean the Amended License Agreement
between The General Hospital Corporation, a not-for-profit corporation doing
business as Massachusetts General Hospital (MGH), and the Assignor dated 31 December 1998,
as amended by the Amendment Agreement dated January 1, 2000.


 


MGH Sub-License Agreement shall mean the sub-license
agreement between the Assignor and the Assignee under the MGH License referred
to in the SPA.


 


Parties shall mean the Assignor and the Assignee and Party
shall mean the Assignor or the Assignee (as the case may be).


 


Person shall mean any individual or any corporation,
limited liability company, partnership, trust, association or other entity of
any kind.


 


SPA shall mean the sale and purchase agreement dated February 22,
2007 between Linde Gas Inc., Linde AG, Ikaria Holdings, Inc., Ikaria
Acquisition Inc. and Ikaria, Inc.


 


1.2          All other capitalised terms shall have the meanings
specified in the MGH License.


 


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2.                                      ASSIGNMENT
AND ASSUMPTION


 


2.1          Effective on and as of the Assignment Date, pursuant
to Section 10.8 of the MGH License:


 


(a)                                 the Assignor hereby (i) sells,
assigns and transfers to the Assignee, and the Assignee hereby accepts from the
Assignor, all of the right, title and interest of the Assignor in and to the
Assigned Interest, including the right to exclusively grant sub-licenses within
the Assigned Territories pursuant to Section 2.1(b) of the MGH
License; and (ii) assigns and transfers to the Assignee the Assumed
Obligations; and


 


(b)                                 the Assignee hereby accepts
the Assigned Interest and assumes the Assumed Obligations and agrees to satisfy
and perform all liabilities and obligations of the Assignor concerning the
Assumed Obligations.


 


3.                                      ROYALTIES
AND PAYMENTS


 


3.1          The Assignor hereby assigns and transfers to the
Assignee and the Assignee hereby accepts the royalty obligations set forth in
Sections 5.1 to 5.4 of the MGH License and the related reporting and payment
obligations set forth in Section 6 of the MGH License, arising prior to,
on or after the Assignment Date, insofar as they relate to research and
development anywhere in the world and/or sales of Products in the Assigned
Territories.


 


3.2          The Assignee shall not be liable for any of the
milestone payments set forth in Sections 5.5 and 5.6 of the MGH License.


 


4.                                      ACCRUED
RIGHTS, OBLIGATIONS AND LIABILITIES


 


The Assignor and Assignee
acknowledge and agree that this Agreement operates to assign, transfer and
delegate all of the Assignor’s accrued rights, liabilities and obligations
already in existence under the MGH License at the Assignment Date or
attributable to any period prior to the Assignment Date, concerning research
and development anywhere in the world and/or concerning sale of Products in the
Assigned Territory, including all claims and demands in relation to them.


 


5.                                      NO
WARRANTIES


 


The assignment made by the
Assignor to the Assignee set forth in this Agreement shall be made by the
Assignor without any warranties or indemnities.


 


6.                                      SUB-LICENSES


 


If either Party grants a
sub-license within any of its respective exclusive territories pursuant to Section 2.1(b) of
the MGH License, promptly after execution of such sub-license such Party will
notify the other Party in writing of the name of the sub-licensee and the
general scope of the sub-license.


 


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7.                                      ADVISORY
COMMITTEE AND BUSINESS PLAN


 


7.1          The members of the Advisory Committee to be
appointed by the licensee to the MGH Licence pursuant to Section 3.2 of
the MGH License shall be appointed by the Assignee and not by the Assignor.


 


7.2          The Assignee shall provide the Assignor with a brief
written report of each meeting of the Advisory Committee within thirty (30)
days of the meeting being held, provided that, if MGH objects to such
reporting, the Parties shall work together to agree an appropriate process to
keep the Assignor informed of material issues relating to the Assigned Interest
discussed by the Advisory Committee.


 


7.3          The Assignee shall be responsible for preparing and
providing to MGH the worldwide business, development or other plans required
under Section 3.2(d) of the MGH License.  The Assignor shall provide to the Assignee,
at no cost, all reasonable information and assistance in relation to the plans
insofar as they relate to the Linde Territories and shall work together with
the Assignee to agree on any reasonable and appropriate obligations on the
Assignor concerning the Linde Territories to be included in any such plans and
agree on what is to be submitted to MGH insofar as it relates to the Linde
Territories.


 


8.                                      FILING,
PROSECUTION AND MAINTENANCE OF PATENT RIGHTS


 


Neither Party may elect,
pursuant to Section 4.2 of the MGH License, to not pay the costs of a
certain Patent Right, if the relevant Patent Right is embodied in a priority
document on which further international filings may be based, without first
notifying the other Party in writing and giving the other Party the option to
pay the costs for the Patent Right.  The
Parties agree to cooperate with each other and work with MGH to determine an
appropriate process acceptable to MGH for handling filing, prosecution and
maintenance of Patent Rights by territory. 
Until such time as the Parties agree on such a process, the Assignor and
the Assignee shall continue to receive from MGH correspondence in relation to
the filing, prosecution and maintenance of Patent Rights in the same manner as
they do to date.


 


9.                                      INFRINGEMENT


 


9.1          In addition to the obligations owed to MGH pursuant
to Section 7 of the MGH License, each Party shall inform the other Party
if it becomes aware of any infringement of a Valid Claim of an issued Patent
Right anywhere in the world.


 


9.2          Neither Party shall have any right to enforce an
issued Patent Right or otherwise initiate an action against a third party for
acts occurring in the other Party’s territories.  If either Party (the Acting Party)
initiates an action in its own territory to enforce an issued Patent Right or
has patent proceedings concerning an issued Patent Right commenced against it
in its own territory, (i) the Acting Party shall keep the other Party
informed of the progress of such proceedings; and (ii) the other Party
(the Observing Party)
shall provide reasonable assistance and cooperation at the Observing Party’s
expense.


 


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10.                               MGH


 


10.1        In the event that the discussions with MGH
contemplated in the SPA do not result in execution of the MGH Assignment
Agreement and the MGH Sub-License Agreement, the Parties shall use reasonable
best efforts to agree with MGH amended and restated license agreements
concerning their respective rights, title and interest and obligations and
liabilities pursuant to the MGH License and this Agreement following the
Assignment Date.


 


10.2        If, pursuant to Section 9.7 of the MGH License,
MGH gives written notice to either Party (the Notified Party) that it believes that
the development or commercialization of Products under the MGH License has been
adversely affected by this partial assignment of the MGH License to the
Assignee, the Receiving Party shall promptly provide a copy of the notice to
the other Party (the Second
Party).  The Second Party
shall provide to the Notified Party all reasonable information within the
Second Party’s possession and control to assist the Notified Party to address
the concerns raised by MGH in the notice. 
In preparing evidence to demonstrate to MGH that the adverse events
described in the notice from MGH have not occurred, the Notified Party shall
take into due consideration any information and evidence provided or suggested
by the Second Party.  The Second Party
shall, upon notice to the Notified Party, be entitled to take reasonable
actions to assist in curing any adverse event identified by MGH in its notice.


 


10.3        If, pursuant to Section 9.7 of the MGH License,
MGH gives written notice to terminate the MGH License or to convert any and all
exclusive licenses under the MGH License to non-exclusive licenses, and the
Notified Party determines that it does not intend to pay the $500,000
stipulated in Section 9.7 of the MGH License in order to reinstate the MGH
License, the Second Party may pay the $500,000.


 


10.4        If a written notice served by MGH pursuant to Section 9.7
to terminate the MGH License or to convert any and all exclusive licenses under
the MGH License to non-exclusive licenses relies on an adverse event resulting
from the act or omission or other default of:


 


(a)                                 the Assignor, then the
Assignor shall indemnify and hold the Assignee harmless from all Losses
suffered by the Assignee arising out of or relating to the procedures and
activities conducted and the payments made by the Assignee pursuant to Sections
10.2 and 10.3 above.


 


(b)                                 the Assignee, then the
Assignee shall indemnify and hold the Assignor harmless from all Losses
suffered by the Assignor arising out of or relating to the procedures and
activities conducted by and the payments made by the Assignor pursuant to
Sections 10.2 and 10.3 above.


 


11.                               FURTHER
ASSURANCES


 


The Assignor and Assignee
hereby agree to execute and deliver such other documents, agreements and
instruments, and take such other actions, as either Party may reasonably
request in connection with the transactions contemplated by this Agreement.


 


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12.                               MISCELLANEOUS


 


12.1        Amendments and Waivers


 


This Agreement may not be
amended or modified except by an instrument in writing signed on behalf of the
Assignor and Assignee.  By an instrument
in writing, each of the Assignor and Assignee may waive compliance by the other
Party with any term or provision of this Agreement that such other Party was or
is obligated to comply with or perform.


 


12.2        Assignment


 


(a)                                 This Agreement and the
rights and obligations hereunder shall not be assignable or transferable by
either Party without the prior written consent of the other Party except that a
Party may assign this Agreement and the rights and obligations hereunder, to an
Affiliate or to an acquirer of substantially all of the assets of such
Party.  Any attempted assignment in
violation of this Section 12.2 shall be null and void and of no effect.


 


(b)                                 Each Party shall promptly
notify the other in writing if it assigns or transfers its rights and
obligations under this Agreement.


 


12.3        Third-Party Beneficiaries


 


This Agreement is for the
sole and exclusive benefit of the Parties and their successors and permitted
assigns, and nothing herein expressed or implied shall give, or be construed to
give, to any Person, other than the Parties and such successors and permitted
assigns, any legal or equitable right, remedies or claims under or with respect
to this Agreement or any provisions hereof.


 


12.4        Notices


 


All notices, consents, waivers,
and other communications required or permitted under this Agreement must be in
writing and will be deemed to have been duly given when (a) delivered by
hand to the Party to be notified, (b) when sent by facsimile if sent
during the normal business hours of the Party to be notified, if not, then on
the next Business Day or (c) when received by the Party to be notified, if
sent by an internationally recognized overnight delivery service, specifying
the soonest possible time and date of delivery, in each case to the appropriate
addresses and facsimile numbers set forth below (or to such other addresses and
facsimile numbers as a Party may designate by notice to the other Parties from
time to time).  All such notices and
other communications shall be sent:


 


(a)                                 if to the Assignor to:


 


AGA
AB


SE-181
81 Lidingö


Sweden


Attention:  Lars Källsäter, Head of Linde Gas
Therapeutics


Facsimile:  +46 8 731 91 55


 


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with a copy (which shall not constitute notice) to:


 


Freshfields Bruckhaus
Deringer, LLP


520 Madison Avenue, 34th Floor


New York, NY  10022


United States of America


Attention:  Matthew F. Herman, Esq.


Facsimile:  +1 212-277-4001


 


with a copy (which shall not constitute notice) to:


 


Freshfields
Bruckhaus Deringer, LLP


65
Fleet Street


London,
EC4Y 1HS


United
Kingdom


Attention:  Richard G.R.Lister Esq.


Facsimile:  +44 207 832 7001


 


and


 


(b)                                 if to the Assignee, to:


 


INO
Therapeutics, LLC


6
Route 173


Clinton,
New Jersey 08809


USA


Attention:  Dennis Smith, President and Chief Executive
Officer


Facsimile:
+1 908 238-6699


 


INO
Therapeutics, LLC


6
Route 173


Clinton,
New Jersey  08809


USA


Attention:  Elizabeth Holmberg Larkin, Vice President,
Global Finance


Facsimile:  +1 908 238-6699


 


with a copy (which shall not constitute notice) to:


 


Fried
Frank, Harris, Shriver & Jacobson


One
New York Plaza


New
York, New York  10004


USA


Attention:                 Aviva Diamant, Esq

Henry Lebowitz, Esq


Facsimile: +1 212 859 4000


 


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12.5        Counterpart Execution and Facsimile Delivery


 


This Agreement may be
executed in any number of counterparts, all of which shall be considered one
and the same agreement, and shall become effective when one or more such
counterparts have been signed by each of the Parties and delivered to the other
Parties.  Any such counterpart may be
delivered by a Party by facsimile, and any Party who signs this Agreement and
transmits such signature to the other Party by facsimile or e-mail shall be deemed
to have duly executed this Agreement.


 


12.6        Consent to Jurisdiction


 


Each Party irrevocably
submits to the exclusive jurisdiction of (a) the Supreme Court of the
State of New York, New York County, and (b) the United States District
Court for the Southern District of New York, for the purposes of any suit,
action or other proceeding arising out of this Agreement or any transaction
contemplated hereby.  Each Party agrees
to commence any such action, suit or proceeding either in the United States
District Court for the Southern District of New York or if such suit, action or
other proceeding may not be brought in such court for jurisdictional reasons,
in the Supreme Court of the State of New York, New York County.  Each Party further agrees that service of any
process, summons, notice or document by U.S. 
registered mail to such Party’s respective address set forth in Section 12.4
above shall be effective service of process for any action, suit or proceeding
in New York with respect to any matters to which it has submitted to
jurisdiction in this Section 12.6. 
Each Party irrevocably and unconditionally waives any objection to the
laying of venue of any action, suit or proceeding arising out of this Agreement
or the transactions contemplated hereby in (i) the Supreme Court of the
State of New York, New York County, or (ii) the United States District
Court for the Southern District of New York, and hereby further irrevocably and
unconditionally waives and agrees not to plead or claim in any such court that
any such action, suit or proceeding brought in any such court has been brought
in an inconvenient forum.


 


12.7        Governing Law


 


This Agreement shall be
construed in accordance with, and this Agreement and all matters arising out of
or relating in any way whatsoever (whether in contract, tort or otherwise) to
this Agreement shall be governed by, the law of the Commonwealth of
Massachusetts.


 


12.8        Waiver of Jury Trial


 


Each Party hereby waives to
the fullest extent permitted by applicable laws, any right it may have to a
trial by jury in respect to any litigation directly or indirectly arising out
of, under or in connection with this Agreement and any transaction contemplated
hereby.  Each Party (a) certifies
that no representative, agent or attorney of the other Party has represented,
expressly or otherwise, that such other Party would not, in the event of
litigation, seek to enforce the foregoing waiver and (b) acknowledges that
it and the other Party have been induced to enter into this Agreement by, among
other things, the mutual waivers and certifications in this Section 12.8.


 


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12.9        Entire Agreement


 


This Agreement, along with
any documents delivered under this Agreement contain the entire agreement and
understanding of the Parties hereto with respect to the subject matter hereof
and supersede all prior agreements and understandings relating to such subject
matter.


 


[SIGNATURE PAGE FOLLOWS]


 


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IN WITNESS
WHEREOF, the Parties hereto have caused this Agreement to be executed and
delivered as of the date first above written.


 


	
  ASSIGNOR

  	
   

  
	
   

  	
   

  
	
  AGA AB

  	
   

  
	
   

  	
   

  
	
  /s/
  Lars Källsäter

  	
   

  
	
  Name:
  

  	
  Lars
  Källsäter

  	
   

  
	
  Title:   

  	
  Vice
  President

  	
   

  
	
   

  	
   

  
	
  ASSIGNEE

  	
   

  
	
   

  	
   

  
	
  INO THERAPEUTICS LLC

  	
   

  
	
   

  	
   

  
	
  /s/
  Dennis L. Smith

  	
   

  
	
  Name:
  

  	
  Dennis
  L. Smith

  	
   

  
	
  Title:  

  	
  President
  and CEO

  	
   

  



 


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