Exhibit 10.13


 


ASSIGNMENT OF NOVATED
LICENSE AND ROYALTY AGREEMENT


 


The Board of Supervisors of Louisiana State University and Agricultural
and Mechanical College, a public constitutional corporation, organized and
existing under the laws of the State of Louisiana (“LSU”); PLIVA d.d., a Croatian corporation having a principal
place of business at Ulica Grada Vukovara 49, 10000 Zagreb, Croatia (“PLIVA”); Ergo Research (Nevada) Corp., a
Nevada corporation (“ERC”), which
is successor by merger to Ergo Research Corporation, a Delaware corporation;
Ergo Science Corporation, a Delaware corporation (“ESC”) formerly known as Ergo Science Holdings, Incorporated;
and Ergo Science Development Corporation, a Delaware corporation (“ESD”) formerly known as Ergo Science Incorporated
(ERC, ESC, ESD, and each of their respective corporate predecessors,
successors, and Affiliates to be referred to, both individually and
collectively, as “Ergo”); enter
into the following Assignment of Novated License and Royalty Agreement (the “Assignment”).


 


WHEREAS LSU and Ergo are parties to a May 1, 1995
Novated License and Royalty Agreement (the “License”);


 


WHEREAS Ergo desires to assign to PLIVA, and
whereas PLIVA desires to accept from Ergo, all of Ergo’s respective rights and
certain of Ergo’s obligations under the License;


 


WHEREAS LSU’s approval of such an assignment is
required under Article II, Subparagraph (D)(1) of the License, and whereas LSU
is willing to grant such approval;


 


THEREFORE LSU, PLIVA, and Ergo have agreed as follows,
effective the 24th day of November, 2003 (the “Assignment Date”):


 


I.  Prior and Subsequent Rights and Obligations.


 


Except as expressly provided in this Assignment: (1) On and after the Assignment Date, PLIVA
shall enjoy all rights of Ergo or Licensee under the License.  (2)
PLIVA shall be responsible for all obligations of Ergo or Licensee under the
License that arise from events occurring on and after the Assignment Date.  (3)
Ergo shall have no rights or


 

















 


obligations under the License arising on and
after the Assignment Date.  (4) Ergo represents and warrants to LSU
that Ergo has paid to LSU all money to which LSU is due under Article III of
the License, arising from activities occurring on or before the Assignment
Date.  In reliance upon this representation
and warranty, and upon the other representations and warranties made by Ergo in
this Assignment, LSU hereby releases Ergo from all further obligation to LSU
under the License, whether under Article III or otherwise, except as expressly
provided in this Assignment.  (5) Ergo hereby releases LSU from all
further obligation to Ergo under the License. 
(6) Ergo and PLIVA each
represent and warrant to LSU that Ergo and PLIVA have each received legally
adequate consideration for the transfer of rights and obligations under the
License.


 


II.  Transfer of Certain Patent Rights


 


Ergo shall, via one or more separate documents that are mutually
agreeable in form to both PLIVA and Ergo, on the Assignment Date transfer to
PLIVA all of Ergo’s right, title, and interest in and to those Licensed Patents
that were previously co-owned by LSU and Ergo. 
Ergo represents and warrants to both PLIVA and LSU that Ergo has the
full, unencumbered right to transfer this title; and that no third party holds
any title, mortgage, security interest, or other interest in or to any of the
Licensed Patents, except as expressly provided in Article I, Paragraph (M)
respecting certain rights held by Massachusetts General Hospital.


 


III.  Patent Prosecution


 


Ergo shall provide all reasonable cooperation to PLIVA in PLIVA’s
prosecution and maintenance of the Licensed Patents under Article III,
Subparagraph (B)(6), at no out-of-pocket expense to Ergo.


 


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IV.  Prior Sublicenses Terminated


 


Ergo represents and warrants to both PLIVA and LSU that all prior
sublicenses and the like under the License, as well as all licenses and the
like under Ergo’s interest in the co-owned Licensed Patents, have previously
been terminated — including, by way of example and not limitation: (a) all agreements listed in Schedule A to
the License; and (b) the February
23, 1998 Joint Collaboration and License Agreement between Ergo and Johnson and
Johnson (and certain affiliates of Johnson and Johnson); and (c) all related agreements.


 


V.  No Residual Rights in Ergo; and Exception to
Same


 


(a) Ergo represents and warrants to LSU and to
PLIVA that Ergo has retained no residual rights in, nor any rights of reversion
in any of the Licensed Patents or Licensed Know How, nor in the License itself
(whether such rights are conditional or unconditional).  PLIVA represents and warrants to LSU that
PLIVA has not granted to Ergo any residual rights in, nor any rights of
reversion in, any of the Licensed Patents or Licensed Know How, nor in the
License itself (whether such rights are conditional or unconditional).  By way of example and not limitation, Ergo
and PLIVA are hereby representing and warranting to LSU: (1) that PLIVA has granted Ergo no
sublicense rights in any of the Licensed Patents, Licensed Know How, or in the
License; (2) that PLIVA has
granted Ergo no  right (whether
conditional or unconditional) to cause the reversion to Ergo of any rights in
the Licensed Patents, Licensed Know How, or in the License; and (3) that Ergo and PLIVA are not Affiliates
(where “Affiliate” has the meaning given in Article I, Paragraph (C) of the
License, but substituting —one percent (1%)— for each occurrence of “fifty
percent (50%)” in that definition).


 


(b) Ergo and PLIVA further represent and
warrant to LSU that, except as expressly provided in the Agreement dated
November 24, 2003 among PLIVA; ESC; Ergo Texas Holdings Incorporated, a
Delaware Corporation (“Ergo Texas”);
and ERC (the “Ergo Texas Agreement”)
regarding royalties on account of certain sales made in the states of Texas and
California (and only in Texas and California), Ergo has no right (whether
conditional or unconditional) to receive payment from PLIVA of any royalties,
license fees,


 


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or other amounts on account of activities
after the Assignment Date that are conducted under or that relate to the
Licensed Patents, Licensed Know How, or the License.  Ergo and PLIVA represent and warrant to LSU that annexed hereto
as Exhibit A is a true and correct copy of the Ergo Texas Agreement.  Ergo represents and warrants to LSU that the
amounts that PLIVA will be obligated to pay under the Ergo Texas Agreement do
not exceed the amounts that Ergo is obligated to pay to various arms-length
third parties under settlement agreements that Ergo had previously entered in
compromise of certain disputes.


 


(c) In reliance upon these representations and
warranties, LSU has not asked to review, and has not reviewed, any
contemporaneous agreements between PLIVA and Ergo, other than the present
Assignment.  In reliance upon these
representations and warranties, LSU has not asserted, and agrees not to assert,
entitlement under the License to any portion of the consideration being
transferred between Ergo and PLIVA in connection with this Assignment or in
connection with the purchase by PLIVA of certain assets from Ergo.


 


(d) All parties acknowledge that LSU’s approval
under this Assignment of the transfer of certain licensing rights from Ergo to
PLIVA is given in LSU’s capacity as the licensor of certain intellectual
property rights, and not in any other capacity.  All parties acknowledge that LSU has not otherwise reviewed, and
does not otherwise pass judgment upon, the adequacy, validity, or advisability
of any component of the transactions between Ergo and PLIVA.  All parties acknowledge that LSU did not
participate in the negotiations between PLIVA and Ergo.


 


VI.  Dispute Resolution


 


Any dispute arising out of or related to this Assignment shall be
resolved as otherwise provide in Article XVI, Paragraph (E), mutatis mutandis; except that the
penultimate sentence of the first subsection of Article XVI, Paragraph (E) is
amended to read as follows:  —No
arbitrator may be a resident of, or have a place of business in, Louisiana,
Massachusetts, Rhode Island, Texas, or New Jersey.—


 


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VII.  ESC Predecessors


 


ESC Ergo represents and warrants to LSU and to PLIVA: (a) that ESC is the same corporation that
was formerly known as Ergo Science Holdings, Incorporated, a Delaware
corporation; and (b) that Ergo
Science Development Corporation is the same corporation that was formerly known
as Ergo Science Incorporated.


 


VIII.  Responsibilities of Ergo and PLIVA Regarding
Certain Obligations


 


(a) Notwithstanding any other provision of this
Assignment to the contrary, Ergo shall remain obligated, and PLIVA shall not be
obligated, even after the Assignment Date, to fulfill Ergo’s obligations under
the following provisions; whether arising from events occurring, before, on, or
after the Assignment Date: Article III, Paragraph (L) (unrestricted research
grant); Article III, Paragraph (R) (reimbursement of expenses); and Article V,
Subparagraph (F)(2) (supplemental indemnification).


 


(b) Notwithstanding any other provision of this
Assignment to the contrary, Ergo and PLIVA shall each be separately obligated
to fulfill the Licensee’s obligations under Article VIII, Paragraph (A),
subpart (1) (respecting violation of securities laws) arising from that party’s
own actions (or the actions of that party’s Affiliates, or the actions of
anyone for whom that party or its Affiliates may be responsible); whether
arising from events occurring before, on, or after the Assignment Date.


 


(c) Notwithstanding any other provision of this
Assignment to the contrary, (I) Ergo shall remain obligated,
and PLIVA shall not be obligated, even after the Assignment Date, to fulfill
the Licensee’s obligations under the following provisions, arising from events
occurring before the Assignment Date; and (ii) PLIVA shall be obligated,
and Ergo shall not be obligated, to fulfill the Licensee’s obligations under
the following provisions, arising from events occurring on or after the
Assignment Date; (iii) these provisions being the following:
Article V, Subparagraph (F)(1) (general indemnification), and Article VIII
(indemnification) — except, in the case of Article VIII, as provided
immediately above regarding Article VIII, Paragraph (A), subpart (1) (respecting
violation of securities laws).


 


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IX.  Surviving Provisions


 


As between LSU and Ergo, the provisions of Article VI (Use of Other
Party’s Name), Article VII (Auditing and Confidentiality), and Article X (Notices)
shall continue in effect.  These same
provisions (where appropriate, as amended) shall also apply hereafter as
between LSU and PLIVA; provided, however, that PLIVA shall not have any
liability to LSU for breach of these provisions by Ergo.


 


X.  Prior Ratifications


 


Nothing in this Assignment, nor any provision of any related
transaction, shall be construed to release, waive, or nullify any of the
Ratifications of Article III, Subparagraph (L)(1) of the License, as made by
Albert H. Meier, Arlene Herrick Meier, Anthony H. Cincotta, and John M. Wilson.


 


XI.  Definitions


 


All capitalized terms not otherwise defined in this Assignment shall
have the meanings defined in the License. 
All references to a particular Article, Paragraph, or Subparagraph, not otherwise
defined, shall be understood to refer to the referenced Article, Paragraph, or
Subparagraph of the License.


 


XII.  True Copy of License


 


LSU represents and warrants to PLIVA that annexed hereto as Exhibit B
is a true and correct copy of the License; and that, after giving effect both
to the present Assignment, and to the contemporaneous Amendment No. 2 to
Novated License and Royalty Agreement between LSU and PLIVA, there will be no
other amendments to the License in effect as of the Assignment Date.


 


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XIII.  LSU Consent


 


LSU consents to the assignment by Ergo to PLIVA of Ergo’s rights and
obligations under the License, as provided in this Assignment.  LSU consents to the transactions and
payments contemplated by the Ergo Texas Agreement, in the form attached as
Exhibit A.


 


 


	
  WITNESSES:

  	
   

  	
  BOARD OF SUPERVISORS OF LOUISIANA

  STATE UNIVERSITY AND AGRICULTURAL

  AND MECHANICAL COLLEGE

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  /s/ Andrew William

  	
   

  	
  By:

  	
  /s/ Mani Iyer

  
	
   

  	
   

  	
  Mani Iyer,
  Director

  Office of Intellectual Property

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  Date: 

  	
  11/21

  	
  , 2003

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  PLIVA d.d.

  
	
   

  	
   

  	
   

  
	
  /s/ Jane N. Scott

  	
   

  	
  By:

  	
  /s/ Paul D. Cottone

  
	
   

  	
   

  	
  Paul D.
  Cottone

  Authorized Representative

  
	
   

  	
   

  	
   

  
	
  /s/ Terence Hogan

  	
   

  	
  Date:

  	
  November 24

  	
  , 2003

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  ERGO RESEARCH (NEVADA) CORP.

  
	
   

  	
   

  	
   

  
	
  /s/ Robert Chow

  	
   

  	
  By:

  	
  /s/ David R. Burt

  
	
   

  	
   

  	
  David R.
  Burt, President and

  Chief Executive Officer

  
	
   

  	
   

  	
   

  
	
  /s/ Jane F. Zaletofsky

  	
   

  	
  Date:

  	
  November 24

  	
  , 2003

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
  ERGO SCIENCE CORPORATION

  
	
   

  	
   

  	
   

  
	
  /s/ Robert Chow

  	
   

  	
  By:

  	
  /s/ David Burt

  
	
   

  	
   

  	
  David R.
  Burt, President and

  Chief Executive Officer

  
	
   

  	
   

  	
   

  
	
  /s/ Jane F. Zaletofsky

  	
   

  	
  Date:

  	
  November 24

  	
  , 2003

  
												



 


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  ERGO SCIENCE DEVELOPMENT CORPORATION

  
	
   

  	
   

  	
   

  
	
  /s/ Robert Chow

  	
   

  	
  By:

  	
  /s/ David Burt

  
	
   

  	
   

  	
  David R.
  Burt, President and

  Chief Executive Officer

  
	
   

  	
   

  	
   

  
	
  /s/ Jane F. Zaletofsky

  	
   

  	
  Date:

  	
  November 24

  	
  , 2003

  
							



 


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