Exhibit
10.14


 


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


 


THIS LICENSE AGREEMENT
(the “Agreement”)  is
made and entered into as of this
                
day of
                 , 2003
(the “Effective
Date”) by and between ACORDA THERAPEUTICS, INC., a corporation
organized and existing under the laws of the state of Delaware having a
principal place of business at 15 Skyline Drive, Hawthorne, New York 10532 (“Acorda”)
and CORNELL
RESEARCH FOUNDATION, INC., a non-profit corporation organized and
existing under the laws of the state of New York having an office at 20 Thornwood
Drive, Suite 105, Ithaca, NY  14850 (“Foundation”).
Each of Acorda and Foundation may be referred to herein individually as a “Party”
and collectively, as “Parties.”


 


RECITALS


 


WHEREAS, Foundation
owns all right, title and interest in U.S. Patent No. 5,952,357; and


 


WHEREAS, Foundation
is a wholly owned subsidiary of Cornell University (“Cornell”) and holds the
ownership interests of patents, know-how, and biological materials made by
Cornell’s employees and administers licenses in a manner consistent with the
policies of Cornell; and


 


WHEREAS, Acorda
desires to obtain and Foundation wishes to grant to Acorda, an exclusive
license to U.S. Patent No. 5,952,357, including all intellectual property
rights therein, for the development and commercialization of pharmaceutical
products for all purposes; and


 


WHEREAS, the work
leading to the Licensed Patents was supported in part by an agency of the U.S.
Government, and Foundation is obligated to comply with U.S. OMB Circular A-124
and 37 CFR Part 401; and as such, this license is subject to the applicable
terms of U.S. Government regulations concerning Government funded inventions.


 


NOW, THEREFORE, for
and in consideration of the mutual covenants and the premises herein contained,
the Parties, intending to be legally bound, hereby agree as follows:


 


ARTICLE 1


 


DEFINITIONS


 


The following terms as
used herein shall have the following meanings:


 


1.1          “Affiliate”
shall mean any corporation or non-corporate business entity
which controls, is controlled by, or is under common control with a Party to
this Agreement.  A corporation or
non-corporate business entity shall be regarded as in control of another
corporation if it owns, or directly or indirectly controls, at least fifty
(50%) percent of the voting stock of the other corporation, or (a) in the
absence of the ownership of at least fifty (50%) percent of the voting stock of
a corporation or (b) in the case of a non-corporate business entity, or
non-profit corporation, if it possesses, directly or indirectly, the power to
direct or cause the


 

















 


direction of the
management and policies of such corporation or non-corporate business entity,
as applicable.


 


1.2          “Clinical
Trial” shall mean one of those trials on sufficient number of
subjects that are designed to establish that a pharmaceutical product is safe
and efficacious for its intended use, to define warnings, precautions and
adverse reactions that are associated with the pharmaceutical product or label
expansion of such pharmaceutical product.


 


1.3          “Dollars”
shall mean United States dollars.


 


1.4          “Earned
Royalties” shall mean royalties payable to Foundation by
Acorda for the Sale of a Royalty-Bearing Product, as provided in Section 3.2.


 


1.5          “FDA”
shall mean the United States Food and Drug Administration or
successor entity.


 


1.6          “Licensed
Patents” shall mean U.S. Patent No. 5,952,357, together with
any and all substitutions, extensions, divisionals, continuations, or
continuations-in-part of such patent (or its parent application), including
reexamined and reissued patents, and all foreign counterparts of any of the
foregoing.


 


1.7          “Licensed
Product” shall mean any product or process that is covered
by, or the manufacture or use of which is covered by, a Valid Claim.


 


1.8          “Licensed
Territory” shall mean the world.


 


1.9          “Net
Sales” shall mean the actual amounts received by Acorda or an
Affiliate or sublicensee of Acorda for the Sale of Royalty-Bearing Products to
a Third Party purchaser less the following deductions to the extent that such
amounts are actually accrued or incurred as to such sales: (a) freight,
packaging and insurance costs incurred in transporting the Royalty-Bearing
Product to such customers; (b) quantity, cash and other trade discounts or
rebates actually allowed and taken, including without limitation, discounts or
rebates granted to managed health care organizations or to any governmental
agency or branch thereof; (c) customs duties, surcharges, taxes and other
governmental charges incurred in connection with the exportation or importation
of such Royalty-Bearing Products; and (d) amounts repaid or credited by reason
of rejections, recalls or retroactive price reductions.


 


1.10        “Regulatory
Approval” shall mean the approvals, registrations or
authorizations of the FDA or other applicable regulatory agency necessary for
the manufacture, distribution, use or sale of a pharmaceutical or diagnostic
product in the United States.


 


1.11        “Royalty-Bearing
Product” shall mean the product known as Fampridine-SR for
all indications.


 


1.12        “Sale”
or “Sold” shall mean the sale, transfer,
exchange, or other commercial disposition of Royalty-Bearing Products by
Acorda, its Affiliates or sublicensees. 
In case of doubt, Sales of Royalty-Bearing Products shall be deemed
consummated no later than receipt of


 


2

















 


payment from a Third
Party for the applicable transaction involving such Royalty Bearing Product.


 


1.13        “Third
Party” shall mean any entity or individual other than Acorda,
Foundation or an Affiliate of either of them.


 


1.14        “Valid
Claim” shall mean: (a) an issued claim of any unexpired
patent included among the Licensed Patents, which patent has not been (i) held
unenforceable, unpatentable or invalid by a decision of a court or governmental
body of competent jurisdiction that is not further appealable, (ii) rendered
unenforceable through reexamination, reissue, disclaimer or otherwise, (iii)
lost through an interference proceeding or (iv) abandoned; or (b) a claim of a
pending application within the Licensed Patents, provided that not more than
five (5) years have elapsed from the date the claim takes priority for filing
purposes.


 


ARTICLE 2


 


GRANT
OF LICENSE


 


2.1          License.  Subject to the terms and conditions of this
Agreement and to the rights of and obligations to the U.S. Government as set
forth in U.S. Office of Management & Budget Circular A-124 or 37 CFR Part
401 et seq., Foundation hereby grants to Acorda and its Affiliates and Acorda
hereby accepts an exclusive, fully sublicenseable license under the Licensed
Patents to practice the inventions claimed therein and to research, develop,
make, have made, use, sell, offer for sale, have sold, import and otherwise
exploit Licensed Products in the Licensed Territory during the term of this
Agreement.


 


2.2          Retained
License.  The license
granted in Section 2.1 above are further subject to a right and license
retained by Foundation and Cornell to practice the Licensed Patents and any
improvements thereto for non-commercial academic research and education
purposes only.


 


2.3          Sublicenses.  Acorda may grant sublicenses to Third
Parties under the license in Section 2.1 to practice Licensed Patents and to
research, develop, make, have made, use, sell, offer for sale, have sold,
import or otherwise exploit Licensed Products upon prior written approval by
Foundation, such approval not to be unreasonably withheld or delayed.  If Acorda fails to obtain the prior written
consent of Foundation to a sublicense agreement, Foundation shall have the
right to either terminate this Agreement pursuant to Section 10.3 or require
that the sublicense be terminated.  Any
such sublicense shall contain all the provisions of this Agreement which are
protective of and beneficial to Foundation and Acorda shall be responsible to
Foundation for the payment of Earned Royalties on Net Sales made by such
sublicensees as though they were Net Sales made by Acorda.


 


2.4          No
Implied License.  The
license and rights granted in this Agreement shall not be construed to confer
any rights upon Acorda by implication, estoppel, or otherwise as to any
technology not specifically identified in this Agreement as Licensed Patents.


 


2.5          Government
Regulations.  Acorda
shall alone have the obligation to ensure that any Licensed Product it makes,
uses, or sells, leases, or otherwise disposes of is not defective,


 


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.


 


that any Licensed Product
satisfies all applicable government regulations and that any export of any
Licensed Product satisfies export requirements.


 


ARTICLE 3


 


COMPENSATION


 


3.1          License
Execution Fee.  Within
ten (10) days of the Effective Date, Acorda shall pay Foundation a license
execution fee of [**].


 


3.2          Earned
Royalties on Royalty-Bearing Products.  For
Sales of Royalty-Bearing Product in the Licensed Territory, Acorda shall pay or
cause to be paid to Foundation Earned Royalties equal to the following
percentages of the aggregate annual Net Sales of such Royalty-Bearing Product
by Acorda, its Affiliates and its sublicensees:


 


(a)           for
the portion of such aggregate annual Net Sales of such Royalty-Bearing Product
less than [**] in any calendar year, [**] of such Net Sales;


 


(b)           for
the portion of such aggregate annual Net Sales of such Royalty-Bearing Product
between [**] and up to [**] in any calendar year, [**] of such Net Sales; and


 


(c)           for
the portion of such aggregate annual Net Sales of such Royalty-Bearing Product
greater than [**] in any calendar year, [**] of such Net Sales.


 


3.3          Annual
Minimum Royalty.


 


(a)           Subject
to Section 3.3(b), if Acorda’s annual Earned Royalties payment for the
Royalty-Bearing Product to Foundation pursuant to Section 3.2 after the first
full calendar year anniversary following the date of Regulatory Approval for
the Royalty-Bearing Product, or in any calendar year thereafter, is less than
[**] (the “Minimum Royalty”), Acorda shall make or cause to be made a
payment to Foundation within sixty (60) days after the end of such applicable
calendar year equal to the difference between the Minimum Royalty and the total
Earned Royalties payment to Foundation for all Royalty-Bearing Products for
that calendar year, together with the applicable report in accordance with
Article 4.


 


(b)           If
during a given calendar year, the Earned Royalties payment to Foundation
pursuant to Section 3.2 for Royalty-Bearing Products exceeds the Minimum
Royalty for such year pursuant to Section 3.3(a), Acorda shall have satisfied
the requirements of Section 3.3(a) for such year without any additional payment
needed.


 


3.4          Milestone
Payments.  Acorda
shall pay Foundation a milestone payment in the amount specified below no later
than [***] days after the occurrence of Milestone 1 and [***] days after the
occurrence of Milestone 2, both milestones as defined below.


 


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.


 


	
  Event

  	
   

  	
  Milestone
  Payment

  	
   

  
	
   

  	
   

  	
   

  	
   

  
	
  (i) The effective date of a successful reissuance or
  reexamination of the Licensed Patents (“Milestone 1”).

  	
   

  	
  $

  	
  [**]

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  (ii) The date of completion of a Clinical Trial
  testing the use of Fampridine-SR in Amyotrophic Lateral Sclerosis (ALS),
  provided that such Clinical Trial shall be initiated at Acorda’s discretion
  and a negative or non-statistically significant trial would not trigger this
  milestone (“Milestone 2”).

  	
   

  	
  $

  	
  [**]

  	
   

  



 


No milestone
payment shall be paid more than once to Foundation pursuant to this Section
3.4.  Milestone 1 and Milestone 2 are
independent of each other and Milestone 2 may occur prior to Milestone 1.  In any event, Acorda shall pay the specified
milestone payment only upon the occurrence of the corresponding milestone
event, regardless of the order of occurrence of the milestone events.


 


3.5          Research
Support.   Pursuant to a sponsored research agreement to
be negotiated by the Parties, Acorda shall pay Foundation [**] per year for
research support for two (2) years beginning the first full calendar year of commercial
sales for the Royalty-Bearing Product, Fampridine-SR.  Such sponsored research agreement shall include commercially
reasonable terms and conditions as are typical for sponsored research
agreements of similar nature in the biotechnology industry as discussed and
agreed upon in good faith by the Parties, and further, shall provide that the
payment for the first year shall be due within sixty (60) days after the
commencement of commercial sales for the Royalty-Bearing Product while the
second payment shall be due within sixty (60) days after the first anniversary
of commercial sales for the Royalty-Bearing Product.


 


ARTICLE 4


 


REPORTS,
PAYMENTS AND ACCOUNTING


 


4.1          Earned
Royalties Reports and Records.  During the term of this Agreement, Acorda shall furnish, or cause
to be furnished to Foundation, quarterly written reports governing each of
Acorda and its Affiliates and sublicensees for each fiscal quarter showing, as
applicable:


 


(a)           the
gross sales of all Royalty Bearing Products Sold by Acorda, its Affiliates and
sublicensees, in the Licensed Territory during the reporting period, together
with the calculations of Net Sales in accordance with Section 1.9;


 


(b)           the
Earned Royalties payable in Dollars, which shall have accrued hereunder in
respect to such Net Sales;


 


(c)           the
exchange rates, if any, in determining the amount of Dollars; and


 


5

















 


(d)           the
occurrence of any event triggering a milestone payment obligation in accordance
with Section 3.4.


 


4.2          Payment
Terms.  Acorda shall
provide Foundation with quarterly written reports of all sales, or other
dispositions of Licensed Products by Acorda and its Affiliates and
sublicensees.  In order to minimize
Acorda’s time spent on royalty reports, a brief one-page report form (a “Royalty
Report Form”), substantially the same as the form attached in
Appendix A, will satisfy Foundation’s reporting requirements under this Section
4.2.  The report shall be made within
forty-five (45) days after the end of each calendar quarter; provided,
however, that if an Acorda sublicense provides that the sublicensee
can submit its respective reports to Acorda forty-five (45) days or more after
the end of each calendar quarter, Acorda may then delay submitting its royalty
report under this Section 4.2 to Foundation with respect to such sublicensee
until sixty (60) days after the end of each calendar quarter.  Foundation agrees to keep the information in
these reports confidential, except as may be necessary to maintain an action
against Acorda for breach of this Agreement. 
Royalty payments for Net Sales of the Licensed Products invoiced during
a calendar quarter shall accompany the Royalty Report Form for that quarter.  The Royalty Report Form shall be submitted
regardless of whether or not royalties are owed.  Payments shall be made in Dollars.  Conversion from foreign currencies, if any, shall be based upon
the conversion rate published in The Wall Street Journal on the last day of
the particular quarterly accounting period (or on the last business day on
which The
Wall Street Journal is published during said quarterly period) for
which royalties are due.  Royalty checks
shall be made payable to Cornell Research Foundation Inc. and mailed to the
address specified in Section 12.11.


 


4.3          Minimum
Royalty Calculation. 
Acorda shall provide in the Royalty Report Form for the last quarter in
each calendar year, the total Earned Royalties paid by Acorda to the Foundation
for such calendar year and if such total is less than the Minimum Royalty,
Acorda shall pay Foundation an amount equal to the difference between the total
Earned Royalties paid in such calendar year and the Minimum Royalty.


 


4.4          Right to Audit.  Foundation shall have the right, upon prior
written notice to Acorda, not more than once in each Acorda fiscal year, to
engage an independent nationally-certified auditing firm selected by Foundation
and acceptable to Acorda, which acceptance shall not be unreasonably withheld
or delayed, to have access during normal business hours of Acorda as may be
reasonably necessary to verify the accuracy of the Earned Royalties reports
required to be furnished by Acorda pursuant to Section 4.1 of the
Agreement.  If such audit by Foundation
shows any underpayment of Earned Royalties by Acorda, its Affiliates or
sublicensees, then, within thirty (30) days after Acorda’s receipt of such
report, Acorda shall remit or shall cause its sublicensees to remit to
Foundation:


 


(a)           the
amount of such underpayment; and


 


(b)           if
such underpayment exceeds five percent (5%) of the total Earned Royalties owed
for the fiscal year then being reviewed, the reasonably necessary fees and
expenses of such auditing firm performing the audit.  Otherwise, such fees and expenses shall be borne solely by
Foundation.  Any overpayment of Earned
Royalties shall be fully creditable against future Earned Royalties payable in
any subsequent royalty period.


 


6

















 


4.5          Confidentiality
of Records.  All
information subject to review under this Article 4 shall be deemed Acorda’s
Confidential Information (as defined in Section 9.1). The independent
nationally-certified auditing firm shall not disclose to Foundation or to any
Third Party any such Confidential Information, except for any Confidential
Information showing a discrepancy in amount owed to Foundation, and Foundation
shall not use any such information for any purpose other than determining and
enforcing its rights under this Agreement. 
Foundation agrees to hold such records confidential, except as may be
necessary to maintain an action against Acorda for breach of this Agreement.


 


4.6          The records required under Article 4
shall be maintained and available for inspection for a period of five (5) years
following the calendar quarter to which they pertain.  This Section 4.6 shall survive termination of this Agreement.


 


4.7          Payments due under this Agreement that
are more than the sixty (60) days late shall be subject to a twenty percent
(20%) per annum interest charge.


 


4.8          Acorda shall keep Foundation
appropriately informed about Acorda’s development and commercialization efforts
with respect to Licensed Products. 
Without limiting the generality of the foregoing, Acorda shall provide
Foundation with written notice of significant development, regulatory approval
and commercialization plans, activities and results with respect to Licensed
Products.  In addition, on each
anniversary of the Effective Date during the term of this Agreement (commencing
with the first (1st) anniversary thereof), Acorda shall provide
Foundation with a written annual report summarizing Acorda’s efforts and
progress in developing and commercializing Licensed Products during the
immediately preceding twelve (12) months.


 


ARTICLE 5


 


PATENTS
AND PATENT COSTS


 


5.1          Prosecution
and Maintenance of Licensed Patents.  Foundation
shall be primarily responsible for all patent prosecution and maintenance
activities pertaining to Licensed Patents. 
Foundation shall keep Acorda reasonably informed of its activities
relating to the filing, prosecution and maintenance of Licensed Patents,
including providing copies of all filings and correspondence with patent
authorities, in a timely manner, so as to give Acorda an opportunity to comment
thereon.  Foundation shall use good
faith efforts to accommodate all such comments.  Without limiting the generality of the foregoing, Foundation
shall work collaboratively with Acorda to secure the reissuance or
reexamination of the Licensed Patents in a manner acceptable to Foundation and
Acorda.  Acorda agrees to keep any
documentation received under this Section 5.1 confidential in accordance with
Article 9 herein.


 


5.2          Future
Patent Costs.  Acorda
shall pay all fees and  out-of-pocket costs incurred by Foundation
pursuant to its activities under Section 5.1 after the Effective Date for
on-going patent prosecution and maintenance activities for the Licensed Patents
(the “Future
Patent Costs”).  Acorda shall
reimburse Foundation, no later than thirty (30) days after receipt of an
invoice from Foundation for such Future Patent Costs.


 


7

















 


5.3          Acorda’s
Payment Obligation. 
Acorda’s obligation, pursuant to Section 5.2 to pay for domestic and
foreign patent filing, prosecution, and maintenance costs for Licensed Patents
shall continue for so long as this Agreement remains in effect, provided,
however, that Acorda may terminate its obligations with respect to any given
patent application or patent in the Licensed Patents in any particular country
or jurisdiction upon thirty (30) days written notice to Foundation, provided,
further, that Acorda’s rights under such patent applications or patents in such
countries, for which it has terminated its payment obligations pursuant to this
Section 5.3, shall terminate.  Patent
costs already committed to prior to the date of the termination notice and
which are not cancelable, shall be the responsibility of Acorda and shall
survive termination of this Agreement.


 


ARTICLE
6


 


INFRINGEMENT


 


6.1          Enforcement
of Patents.  If either
Acorda or Foundation becomes aware of a product made, used or sold in the
Licensed Territory, which it believes infringes a Valid Claim, the Party
obtaining such knowledge shall promptly advise the other Party of all relevant
facts and circumstances pertaining to the potential infringement.  Acorda shall have the first right, but not
the obligation, to enforce any patent rights within the Licensed Patents
against such infringement, at its own expense. 
Foundation shall cooperate with Acorda in such effort, at Acorda’s
expense, including being joined as a Party to such action, if necessary.  Any damages or costs recovered in connection
with any action filed by Acorda hereunder which exceed Acorda’s out-of-pocket
costs and expenses of litigation, shall be deemed to be the proceeds of Sales
of Royalty-Bearing Products in the fiscal quarter received by Acorda, and
Earned Royalties shall be payable by Acorda to Foundation thereon in accordance
with the terms of this Agreement.


 


6.2          Backup
Enforcement Right of Foundation.  If Acorda fails within one hundred twenty (120) days after
receiving notice from Foundation of a potential infringement, or providing
Foundation with notice of such infringement, to either (a) terminate such infringement
or (b) institute an action to prevent continuation thereof and, thereafter to
prosecute such action diligently, or if Acorda notifies Foundation that it does
not plan to terminate the infringement or institute such action, then
Foundation shall have the right to do so at its own expense; provided however,
that Foundation first consults with Acorda and gives due consideration to
Acorda’s reasons for not instituting actions to terminate or otherwise prevent
continuation of such infringement.  If
Foundation decides to pursue such infringement, Acorda shall cooperate with
Foundation in such effort including being joined as a Party to such action if
necessary.  Foundation shall be entitled
to retain all damages or costs awarded to Foundation in such action.


 


8

















 


ARTICLE 7


 


REPRESENTATIONS
AND WARRANTIES; EXCLUSION OF WARRANTIES


 


7.1          Foundation
Representations and Warranties.


 


(a)           Foundation
represents and warrants that it has the right to enter into this
Agreement.  Foundation warrants that it
has the right to convey to Acorda the rights granted under this Agreement.


 


(b)           Foundation
warrants that it is the sole owner of Licensed Patents prior to the effective
date of this Agreement, and has not granted any license or other rights to any
third party under the Licensed Patents which rights are still in existence,
subject to U.S. government regulations concerning government funded inventions.


 


(c)           Foundation makes no representation or
warranty that Licensed Patents will be reissued.


 


(d)           Foundation makes no representations
or warranties concerning the validity or scope of any Licensed Patents.


 


(e)           Foundation does not warrant that any
Licensed Product made, used, sold, leased or otherwise disposed of under the
license of this Agreement is or will be free from infringement of patents of
third parties.


 


(f)            Nothing herein shall be construed as
granting by implication, estoppel, or otherwise any licenses or rights under
patents or other rights of Foundation or Cornell or other persons other than
Licensed Patents, regardless of whether such patents or other rights are
dominant or subordinate to any Licensed Patents.


 


(g)           Foundation is under no obligation to
furnish any technology or technological information other than the Licensed
Patents.


 


(h)           Nothing herein shall be construed to
grant Acorda rights under any applications or patents other than Licensed
Patents.


 


(i)            Foundation does not make any
representations, extend any warranties of any kind, express or implied, or
assume any responsibility whatever concerning the manufacture, use, or sale,
lease or other disposition by Acorda or its vendees or transferees of Licensed
Products.


 


(j)            Except as expressly set forth in
this Agreement, FOUNDATION MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES
OF ANY KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE
USE OF THE LICENSED PRODUCTS WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.


 


7.2          Acorda
Representations and Warranties.  Acorda represents, warrants and covenants to Foundation that:


 


(a)           this
Agreement is a legal and valid obligation of, binding upon, and enforceable
against Acorda in accordance with the terms of this Agreement;


 


9

















 


(b)           Acorda
has the right to enter into this Agreement and perform the obligations set
forth in this Agreement; and


 


(c)           the
execution, delivery and performance of this Agreement does not conflict with,
constitute a breach of, or in any way violate any arrangement, understanding or
agreement to which Acorda is a party or by which Acorda is bound.


 


ARTICLE 8


 


INDEMNIFICATION;
LIMITATION OF LIABILITY 


 


8.1          Indemnification
by Acorda.  Acorda
shall defend, indemnify and hold harmless Foundation and Cornell and their
respective trustees, officers, directors, employees, agents and students (the “Foundation
Indemnitees”), from and against any and all losses, liabilities,
expenses or damages (including reasonable attorneys’ fees) (collectively, the “Losses”)
resulting from claims made or legal proceedings instituted, made or brought
against Foundation and/or Cornell by a Third Party arising or alleged to arise
by reason of, or in connection with, any and all personal injury (including
death) and property damage caused or contributed to, in whole or in part, by
the manufacture, testing, design, use, Sale or labeling of any Licensed
Products by Acorda, its Affiliates, contractors, agents, or sublicensees,
except to the extent of any Losses that arise from the negligence or
intentional misconduct of Foundation Indemnitees.


 


8.2          In
the event Foundation is found to be in breach of Sections 7.1(a) and/or 7.1(b)
of this Agreement, Foundation shall use its best efforts to remedy such breach
within ninety (90) days of receipt by Foundation of written notification that
such a breach has occurred.  If
Foundation is unable to remedy such breach within ninety (90) days after
receiving such written notification of a breach, Foundation shall use its best
efforts to obtain the right to grant, and to grant to Acorda, a non-exclusive,
fully sublicenseable license under the Licensed Patents to practice the
inventions claimed therein and to research, develop, make, have made, use,
sell, offer for sale, have sold, import and otherwise exploit Licensed Products
in the Licensed Territory pursuant to a new license agreement, the terms of
which will be negotiated in good faith by the Parties (which terms shall be no
less favorable to Acorda than the terms of this Agreement).  Foundation shall not be liable for any
indirect, special, consequential, or other damages whatsoever, whether grounded
in tort (including negligence), strict liability, contract or otherwise.
Foundation shall not have any responsibilities or liabilities whatsoever with
respect to Licensed Products.


 


8.3          Indemnification
Procedure.  To be
indemnified hereunder, the Foundation shall provide Acorda with prompt notice
of the claim giving rise to the indemnification obligation pursuant to this
Article 8 and the exclusive ability to defend (with the reasonable cooperation
of Foundation) or settle any such claim provided however, that Acorda shall not
enter into any settlement for damages other than monetary damages without the
Foundation’s written consent, such consent not to be unreasonably withheld or
delayed.  The Foundation shall have the
right to participate, at its own expense and with counsel of its choice, in the
defense of any claim or suit that has been assumed by Acorda.


 


10

















 


8.4          Insurance.  Acorda shall maintain commercially
reasonable levels of insurance or other adequate forms of protection to satisfy
its indemnification obligations under this Agreement.


 


ARTICLE 9


 


CONFIDENTIALITY


 


9.1          Nondisclosure
of Confidential Information. 
Except as otherwise provided hereunder, during the term of this
Agreement and for a period of five (5) years thereafter, Acorda and Foundation
each agrees to retain in strict confidence, use only for the purposes of this
Agreement, and not disclose any written information or data supplied by one
Party to the other under this Agreement and marked as proprietary or
confidential without the prior written consent of the disclosing Party.  For purposes of this Agreement, all such
information and data which a Party is obligated to retain in confidence shall
be “Confidential
Information.”


 


9.2          Permitted
Disclosure.  It shall
not be a breach of this Article 9 if the recipient Party is required to
disclose the other Party’s Confidential Information pursuant to an order of the
government or a court of competent jurisdiction, provided that the recipient
Party (a) provides the other Party with adequate notice of the required
disclosure, (b) cooperates with the other Party’s efforts to protect its
Confidential Information with respect to such disclosure and (c) takes all
reasonable measures requested by the other Party to challenge or to modify the
scope of such required disclosure.  To
the extent that it is reasonably necessary to fulfill its obligations or
exercise its rights under this Agreement, or any rights which survive
termination or expiration hereof, the recipient Party may disclose Confidential
Information of the other Party to its Affiliates, sublicensees, consultants,
outside contractors and clinical investigators provided that such entities or
persons are bound by obligations of confidentiality and non-use as strict as
the obligations in this Agreement and agree to use the Confidential Information
only for such purposes as the recipient Party is authorized to use the
Confidential Information.


 


9.3          Exceptions.  The obligation under Section 9.1 not to use
or disclose Confidential Information shall not apply to any part of such
Confidential Information that the recipient Party can establish by competent
written proof:


 


(a)           is
or becomes patented, published or otherwise part of the public domain, other
than by unauthorized acts of the recipient Party obligated not to disclose such
Confidential Information, its Affiliates or sublicensees in contravention of
this Agreement;


 


(b)           is
disclosed to the recipient Party, its Affiliates or sublicensees by a Third
Party having the right to disclose it;


 


(c)           prior
to disclosure under this Agreement, was already in the possession of the
recipient Party, its Affiliates or sublicensees, as proven through
contemporaneous documentation;


 


(d)           results
from the research and development by the recipient Party, its Affiliates or
sublicensees, independent of disclosures from the disclosing Party of this


 


11

















 


Agreement, provided that
the persons developing such information have not had exposure to the
Confidential Information received from the disclosing Party; or


 


(e)           Acorda
and Foundation agree in writing may be disclosed.


 


9.4          Publication.  It is the policy of Foundation and Cornell
to promote and safeguard free and open inquiry by faculty, students and
others.  To further this policy,
Foundation and Cornell shall retain the right to publish the technology
described in Licensed Patents. 
Foundation and Cornell shall use reasonable efforts to furnish Acorda
with a copy of any proposed publication relating to the Licensed Products at
least sixty (60) days in advance of the publication date.  Within this sixty (60) day period, Acorda
shall review such proposed publication to determine whether Acorda desires to
file patent applications on subject matter contained therein and if it is
determined that a patent application should be filed, such patent application
shall be filed within this sixty (60) day period.


 


ARTICLE 10


 


TERM
AND TERMINATION


 


10.1        Term.  Unless sooner terminated as otherwise
provided in this Agreement, the term of this Agreement shall commence on the
Effective Date hereof and shall continue in full force and effect until the
expiration of the last to expire Valid Claim.


 


10.2        Termination
by Acorda.  Acorda may
terminate this Agreement at any time upon forty five (45) days prior written
notice to Foundation.


 


10.3        Termination
for Material Breach. 
If either Party breaches a material obligation under this Agreement, the
other Party shall have the right to give the breaching Party written notice
describing the alleged breach.  If the
breaching Party does not cure such breach within sixty (60) days after receipt
of such notice, the notifying Party may, in addition to any other rights it may
have under this Agreement, terminate this Agreement effective immediately.  However, if there is a dispute between the
Parties as to termination under this Section 10.3, no termination shall be
effected until such dispute is resolved pursuant to Section 12.1.


 


10.4        Upon
termination of this Agreement for any reason, including the end of term as specified
above, all rights and obligations under this Agreement shall terminate, except
those that have accrued prior to termination and except as specified in the
Agreement.


 


ARTICLE 11


 


ASSIGNMENT


 


Neither Party may
assign or transfer this Agreement or any rights or obligations hereunder
without the prior written consent of the other, except a Party may make such an
assignment without the other Party’s written consent to an Affiliate or to a
successor to all, or substantially all, of the business to which this Agreement
relates of such Party, whether in a merger, sale of stock, sale of assets or
other transaction. Any permitted successor or assignee of rights and/or
obligations hereunder shall, in writing to the other Party, expressly assume


 


12

















 


performance of such
rights and/or obligations.  Any
permitted assignment shall be binding on the successors of the assigning
Party.  Any assignment or attempted
assignment by either Party in violation of the terms of this Article 11 shall
be null and void and of no legal effect.


 


ARTICLE 12


 


MISCELLANEOUS


 


12.1        Dispute
Resolution.  If any
disputes, controversies or claims arise out of, or in connection with, this
Agreement (each, a “Dispute”), the Parties shall notify each
other in writing of such Dispute and will use good faith efforts to resolve the
Dispute.  If the Parties are unable to
resolve such Dispute within ten (10) business days of a Party receiving
notification from the other Party and requesting resolution of such Dispute,
then either Party may, for a period of thirty (30) days thereafter, request in
writing that such Dispute be resolved through arbitration, and such arbitration
shall be conducted under the auspices of the American Arbitration Association
pursuant to that organization’s rules for commercial arbitration.  If neither Party requests to resolve the
Dispute through arbitration within such thirty (30) day period, then either
Party may pursue resolution through any court of competent jurisdiction in
accordance with Section 12.7. 
Notwithstanding the foregoing, either Party may apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary or
permanent injunction, or other equitable relief.


 


12.2        Notwithstanding
Section 12.1, Foundation reserves the right and power to proceed with direct
judicial remedies against Acorda without conciliation, mediation, mediation,
arbitration or disputer resolution for breach of the royalty and/or milestone
payments and sales reporting provisions of this Agreement after giving written
notice of such breach to Acorda followed by an opportunity period of sixty (60)
days in which to cure such breach.  In
collecting overdue royalty and milestone payments and securing compliance with
reporting obligations, Foundation may use all judicial remedies available.


 


12.3        Legal
Compliance.  Acorda
shall comply with all laws and regulations relating to its manufacture, use,
Sale, labeling or distribution of Licensed Products and shall not take any
action which would cause Foundation or Acorda to violate any applicable laws or
regulations.


 


12.4        Independent
Contractor.  Acorda’s
relationship to Foundation shall be that of a licensee only.  Neither Party shall be considered to be an
employee or agent of the other, nor shall this Agreement constitute, create or
in any way be interpreted as a joint venture, partnership or formal business
organization of any kind.  In that
respect, neither Party shall have the authority to execute any agreement on
behalf of the other Party, nor shall either Party have any authority to
negotiate any agreement, except as the other Party may expressly direct in
writing.


 


12.5        Patent
Marking.  Acorda
agrees to mark the appropriate patent number or numbers on all Licensed
Products made or Sold in the Licensed Territory in accordance with all
applicable governmental laws, rules and regulations, and to requires its
sublicensees to do the same.


 


13

















 


12.6        Use
of Names.  Acorda
shall  not use, nor shall Acorda permit
sublicensees to use, the names, trademarks, logos or symbols of Foundation or
Cornell University, or their respective employees, students and faculty members
for any commercial purpose, except as required to comply with law, regulation
or court order, without the prior written approval of Foundation. Foundation
shall obtain the prior written approval of Acorda prior to making use of the
name, trademarks, logos or symbols of Acorda for any commercial purpose, except
as required to comply with law, regulation or court order.


 


12.7        Governing
Law.  This Agreement
and all amendments, modifications, alterations, or supplements hereto, and the
rights of the Parties hereunder, shall be construed under and governed by the
laws of the State of New York, U.S.A (without regard to its laws regarding
choice of law) and the United States of America.  Only federal or state courts located in the State of New York,
U.S.A., shall have jurisdiction to hear and decide any controversy or claim
between the Parties arising under or relating to this Agreement.


 


12.8        Entire
Agreement.  This
Agreement and the Appendices attached hereto and incorporated herein
constitutes the entire, final and exclusive agreement between the Parties
hereto and supercedes and terminates all prior agreements and understandings
between the Parties with respect to the subject matter hereof.  No subsequent alteration, amendment, change
or addition to this Agreement shall be binding upon the Parties unless reduced
to writing and signed by an authorized officer of each Party.


 


12.9        Survival.  Articles 7, 8, 9, and 12 and Section 4.6
shall survive termination of this Agreement for any reason.


 


12.10      Severability.  All rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the extent that
they do not violate any applicable laws and are intended to be limited to the
extent necessary so that they will not render this Agreement illegal, invalid
or unenforceable.  If any provision or
portion of any provision of this Agreement, not essential to the commercial
purpose of this Agreement, shall be held to be illegal, invalid or
unenforceable by a court of competent jurisdiction, it is the intention of the
Parties that the remaining provisions or portions thereof shall constitute
their agreement with respect to the subject matter hereof, and all such
remaining provisions, or portions thereof, shall remain in full force and
effect.  To the extent legally permissible,
any illegal, invalid or unenforceable provision of this Agreement shall be
replaced by a valid provision which shall implement the commercial purpose of
the illegal, invalid, or unenforceable provision.  In the event that any provision essential to the commercial
purpose of this Agreement is held to be illegal, invalid or unenforceable and
cannot be replaced by a valid provision which will implement the commercial
purpose of this Agreement, the Party who is the beneficiary of such illegal,
invalid or unenforceable provision has the right to terminate this Agreement
upon written notice, effective upon receipt, to the other Party.


 


12.11      Notices.  Any notice required or permitted to be given
under this Agreement shall be in writing, shall specifically refer to this
Agreement and shall be deemed to have been sufficiently given for all purposes
if mailed by first class certified or registered mail, postage prepaid, express
delivery service or personally delivered. 
Unless otherwise specified in writing, the mailing addresess of the
Parties shall be as described below.


 


14

















 


	
  For Acorda:

  	
   

  	
  Acorda Therapeutics,
  Inc.

  15 Skyline Drive

  Hawthorne, New York 10532

  Attention: Harold Safferstein

  Title: Vice President, Business Development

  
	
   

  	
   

  	
   

  
	
  For Foundation:

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  Payments to
  Foundation shall be sent to:

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Cornell Research
  Foundation, Inc.

  20 Thornwood Drive, Suite 105

  Ithaca, NY 14850

  Attn:      Accounting

  Phone:   607-257-1081

  Fax:       607-257-1015

  
	
  All other
  communications to Foundation shall be sent to:

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Cornell Research
  Foundation, Inc.

  418 E. 71st Street, Suite 61

  New York, NY 10021

  Attn:Brian J. Kelly, Vice President

  Phone:   212-746-6186

  FAX:     212-746-6662

  



 


12.12      Force
Majeure.  Any delays
in, or failure of, performance of any Party to this Agreement shall not
constitute a default hereunder, or give rise to any claim for damages, if and
to the extent caused by occurrences beyond the control of the Party affected,
including, but not limited to, acts of God, acts of terrorism, strikes or other
concerted acts of workmen, civil disturbances, fires, floods, earthquakes,
explosions, riots, war, rebellion, sabotage, acts of governmental authority or
failure of governmental authority to issue licenses or approvals which may be required.


 


15

















 


12.13      No
Waiver.  The failure
by either Party, at any time, or for any period of time, to enforce any of the
provisions of this Agreement, shall not be construed as a waiver of such
provisions or as a waiver of either Party’s rights thereafter to enforce each
and every such provision of this Agreement.


 


12.14      Counterparts.  This Agreement may be executed in one or
more counterparts, each of which shall be deemed an original, but all of which
shall constitute one and the same instrument.


 


IN WITNESS WHEREOF,
Acorda and Foundation have caused this Agreement to be signed, under seal, by
their duly authorized representatives below.


 


 


	
  ACORDA THERAPEUTICS,
  INC.

  	
  CORNELL RESEARCH
  FOUNDATION, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ Harold T.
  Safferstein

  	
   

  	
  By:

  	
  /s/ Brian Kelly

  	
   

  
	
   

  	
   

  
	
  Name:

  	
  Harold T. Safferstein

  	
   

  	
  Name:

  	
  Brian Kelly

  	
   

  
	
   

  	
   

  
	
  Title:

  	
  Vice President,
  Business Development

  	
   

  	
  Title:

  	
  Vice President

  	
   

  
										



 


16

















 


TABLE OF
CONTENTS


 


	
  ARTICLE
  1

  	
  DEFINITIONS

  
	
   

  	
   

  
	
  ARTICLE
  2

  	
  GRANT
  OF LICENSE

  
	
   

  	
   

  
	
  ARTICLE
  3

  	
  COMPENSATION

  
	
   

  	
   

  
	
  ARTICLE
  4

  	
  REPORTS,
  PAYMENTS AND ACCOUNTING

  
	
   

  	
   

  
	
  ARTICLE
  5

  	
  PATENTS
  AND PATENT COSTS

  
	
   

  	
   

  
	
  ARTICLE
  6

  	
  INFRINGEMENT

  
	
   

  	
   

  
	
  ARTICLE
  7

  	
  REPRESENTATIONS
  AND WARRANTIES; EXCLUSION OF WARRANTIES

  
	
   

  	
   

  
	
  ARTICLE
  8

  	
  INDEMNIFICATION;
  LIMITATION OF LIABILITY

  
	
   

  	
   

  
	
  ARTICLE
  9

  	
  CONFIDENTIALITY

  
	
   

  	
   

  
	
  ARTICLE
  10

  	
  TERM
  AND TERMINATION

  
	
   

  	
   

  
	
  ARTICLE
  11

  	
  ASSIGNMENT

  
	
   

  	
   

  
	
  ARTICLE
  12

  	
  MISCELLANEOUS

  



 


i

















 


APPENDIX A - ROYALTY
REPORT


 


Report royalty payment
information to the Cornell Research Foundation, Inc (CRF) using the report
format or facsimile attached to these instructions.  This minimal information must be provided in order to correctly
record royalty related events required by your license agreement with CRF.


 


Use a separate report to
record royalty information for each license agreement.  For each licensee agreement, report royalty
sales by CRF docket number, which identifies the technology.  List each contributing technology if more
than one technology is used to produce a royalty generating
process/product.  This level of detail
permits evaluation of the use of each technology under license with your
company.


 


Submit this information
along with appropriate payment to:


 


Cornell Research
Foundation, Inc.

ATTN:  Finance and Accounting

20 Thornwood Drive, Suite 105

Ithaca, NY  14850

(607) 257-1081

www.crf.cornell.edu


 


For your convenience,
payments may be made by FEDWIRE or ACH to:

Tompkins Trust Company

The Commons      

Ithaca, NY  14851

(607) 273-3210

www.tompkinstrust.com


 


Account:  01-101-007353, ABA: 021302648


 

















 


ROYALTY
REPORT – [licensee NAME]


 




	
  LICENSEE NAME:

  	
  CRF LICENSE NUMBER:

  






 


REPORTING PERIOD:


 


Individual to contact
concerning this information:


 




	
  Name:

  	
  Phone # or email ID:

  






 


For each product/item
subject to a royalty payment provision, provide the following information as
applicable.


 


PRODUCT/ITEM:


 


	
  CRF Docket Number

  	
   

  	
  Country

  	
   

  	
  Number of

  Units/Products Sold

  	
   

  	
  Gross Sales By

  Country

  	
   

  	
  Net Sales By

  Country

  	
   

  	
  Royalty Rate

  	
   

  	
  Less Minimum Royalty

  Payment Made

  	
   

  	
  Net Royalty

  Payment Due

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  Total
  Payment

  	
   

  	
   

  	
   

  



 


3