Exhibit 10.23

RELEASE AND LICENSE AGREEMENT

This Release and License Agreement (this *"Agreement"*)dated as of November 28, 2001 (the *"Effective Date"*) is enteredinto by and among NaPro BioTherapeutics, Inc. (*"NaPro"*), aDelaware corporation with a principal office at 6304 Spine Road, Unit A,Boulder, Colorado, Abbott Laboratories (*"Abbott"*), an Illinoiscorporation with a principal office of 100 Abbott Park Road, Abbott Park,Illinois and Bristol-Myers Squibb Co. (*"BMS"*), a DelawareCorporation with a principal office at 345 Park Avenue, New York, New York.NaPro, Abbott and BMS are referred to herein collectively as the *"Parties"*and individually as a *"Party"*.

 

WHEREAS, BMS and NaPro hold patents relating to themanufacture, formulation and administration of paclitaxel;

 

WHEREAS, the Parties are parties to Civil Action No.00-B-1818 in the United States District Court for the District of Coloradoand/or Civil Action No. 01-2991 the United States District Court for theDistrict of New Jersey (the *"Lawsuits"*) alleging patentinfringement relating to the manufacture, formulation and/or administration ofpaclitaxel;

 

WHEREAS, the Parties wish to settle the Lawsuits and releaseclaims relating to such Lawsuits;

 

WHEREAS, the Parties wish to grant each other licenses tocertain patents.

 

NOW, THEREFORE, the Parties agree as follows:

 

Definitions

 
"Affiliate"
 shall mean, with respect to any entity, any  other entity Controlling, Controlled by or under common Control with the first  entity. For the purposes of this Section 1.1, Control shall mean the ownership  of 50% or more of any class of capital stock of any entity, an interest in 50%  or more of the profits of any entity or the possession of the power to direct  the activities of an entity, whether by contract or otherwise.

 
*"BMS Patents"
 shall mean any United States letters patent  claiming priority from any of application serial nos. 08/715,914, 08/544,594,  08/109,331, 07/923,628, 08/559,890, 08/232,404, and 09/499,373, and [THIS  PORTION HAS BEEN REDACTED] any Canadian counterparts of such patents.

 
*"Customer"
 shall mean any person or entity purchasing or  using paclitaxel or formulated paclitaxel from BMS, NaPro or Abbott or from  any Customer of BMS, NaPro or Abbott.

 
*"NaPro Patents"
 shall mean any United States letters patent  claiming priority from any of application serial nos. 07/995,501, 08/594,478,  08/979,836, 09/028,906, 09/356,158, and 09/563,969 and any Canadian  counterparts of such patents.

 

 
*"Third Party"
 shall mean a person or entity other than NaPro,  Abbott, BMS or an Affiliate of any of them.

 
*"Paclitaxel ANDA"
 shall mean any abbreviated new drug  application for paclitaxel controlled by NaPro, Abbott or NaPro and Abbott for  the treatment of second line ovarian cancer or metastatic breast cancer, 
i.e.
,  the indications for which BMS's Hatch-Waxman Title I exclusivity expired in  June 2000.

 
**RELEASE

 
- NaPro and Abbott Release of BMS.  In consideration of mutual    releases, licenses, covenants, agreements and/or other good and valuable    consideration, the receipt of which is hereby acknowledged, each of NaPro    and Abbott, for itself and for its Affiliates and for its and their    respective administrators, successors, assigns, officers, directors,    employees, and trustees (all of the foregoing being referred to in this    paragraph as  "Releasors" ) release, acquit and forever    discharge BMS, its Affiliates and its and their Customers, administrators,    successors, assigns, officers, directors, employees, attorneys, and trustees    (all of the foregoing being referred to in this paragraph as  "Releasees" )    from all debts, demands, actions, causes of action, suits, accounts,    covenants, contracts, agreements, torts, damages, and any and all claims,    defenses, offsets, judgments, demands and liabilities whatsoever, of every    name and nature, both at law and in equity, known or unknown, suspected or    unsuspected, accrued or unaccrued, which have been asserted in the Lawsuits,    and/or which arise out of the prosecution or defense of those actions,    and/or which are based on any infringement or alleged infringement of the    NaPro Patents prior to the Effective Date,  provided ,  however ,    that nothing contained herein is intended to or shall release the Releasees    from any and all obligations set forth in this Release and License    Agreement, and provided further that Customers are released only to the    extent of their purchases from BMS and its Affiliates.

 
BMS Release of NaPro and Abbott.
 In consideration of mutual releases,  licenses, covenants, agreements and/or other good and valuable consideration,  the receipt of which is hereby acknowledged, BMS, for itself and for its  Affiliates and for its and their respective administrators, successors,  assigns, officers, directors, employees, and trustees (all of the foregoing  being referred to in this paragraph as 
"Releasors"
) release,  acquit and forever discharge NaPro, Abbott, their respective Affiliates and  their respective Customers, administrators, successors, assigns, officers,  directors, employees, attorneys, and trustees (all of the foregoing being  referred to in this paragraph as 
"Releasees"
) from all debts,  demands, actions, causes of action, suits, accounts, covenants, contracts,  agreements, torts, damages, and any and all claims, defenses, offsets,  judgments, demands and liabilities whatsoever, of every name and nature, both  at law and in equity, known or unknown, suspected or unsuspected, accrued or  unaccrued, which have been asserted in the Lawsuits, and/or which arise out of  the prosecution or defense of those actions, and/or which are based on any  infringement or alleged infringement of the BMS Patents prior to the Effective  Date, 
provided
, 
however
, that nothing contained herein is  intended to or shall release the Releasees from any and all obligations set  forth in this Release and License Agreement, and provided further that  Customers are released only to the extent of their purchases from NaPro and  Abbott and their Affiliates.
**Order of Dismissal.
 BMS, NaPro and Abbott shall execute and file with  the United States District Court for the District of Colorado the Stipulation  of Dismissal attached hereto as Exhibit A. BMS and Abbott shall execute and  file with the United States District Court for the District of New Jersey the  Stipulation of Dismissal attached hereto as Exhibit B. In the event additional  documents are necessary to effect the entry of the foregoing Stipulations of  Dismissal, the Parties hereby agree to execute and submit such additional  documents without further consideration.
** 
Fees and Expenses.
 The Parties shall each bear the fees and expenses  of its counsel and their own out-of-pocket costs in connection with the  Lawsuits and this Agreement.
** 

 
LICENSE

 
- NaPro License to BMS.  NaPro hereby grants BMS under the NaPro    Patents a non-exclusive, royalty-free, perpetual and irrevocable right and    license, without the right to sublicense except to Affiliates (which    sublicense shall be effective only so long as such Affiliates remain    Affiliates of BMS), to make, have made, use, sell, offer for sale and import    paclitaxel-containing products for injection formulated in polyethoxylated    castor oil and ethanol.

 
BMS License to NaPro. 
BMS hereby grants NaPro under the BMS Patents a  non-exclusive, royalty-free, perpetual and irrevocable right and license to  use, offer to sell and sell paclitaxel-containing products for injection  formulated in polyethoxylated castor oil and ethanol pursuant to a Paclitaxel  ANDA. NaPro shall have the right to grant a sublicense of the rights granted  in 3.2 and 3.3 to an Affiliate and, at any given time, to one United States  distributor and such distributor's Affiliates. Only one party (either NaPro  or NaPro's distributor, but not both) shall be licensed to offer to sell and  sell such paclitaxel-containing products to Third Party Customers in the  United States pursuant to this license and the covenant in 3.3 below.  Effective [THIS PORTION HAS BEEN REDACTED] NaPro shall have the right to grant  a sublicense of the rights granted in 3.2 and 3.3 to one Canadian distributor  and such distributor's Affiliates. Only one party (either NaPro or NaPro's  distributor, but not both) shall be licensed to offer to sell and sell such  paclitaxel-containing products to Third Party Customers in Canada pursuant to  this license and the covenant in 3.3 below.
** 
BMS Covenants.

 
- BMS hereby covenants that it will not take any action that seeks to      block or delay (or has the effect of blocking or delaying) approval by the      United States Food and Drug Administration of a Paclitaxel ANDA or      marketing of paclitaxel in the United States pursuant to a Paclitaxel ANDA      solely for the treatment of second line ovarian cancer or metastatic      breast cancer,  i.e. , the indications for which BMS's Hatch-Waxman      Title I exclusivity expired in June 2000; provided however that this      covenant shall not apply to any actions BMS might take or refrain from      taking with respect to United States patent 6,096,331. BMS further      covenants that it will not provoke any interference action in the United      States Patent Office involving any of the NaPro Patents.

 

 

- BMS hereby covenants that [THIS PORTION HAS BEEN REDACTED] it will not      take any action that seeks to block or delay (or has the effect of      blocking or delaying) approval by the Canadian Health Regulatory Authority      of a Canadian equivalent of a Paclitaxel ANDA or marketing of paclitaxel      in Canada pursuant to a Canadian equivalent of a Paclitaxel ANDA solely      for the treatment of second line ovarian cancer or metastatic breast      cancer.
** 
No Other License.
 Other than the rights granted in Sections 3.1, 3.2,  and 3.3, no Party grants any other right or license pursuant to this  Agreement, including any trademark license.
** 
Patent Marking.
 Each of the Parties, and their permitted sublicensees,  shall have the right (but not the obligation) to mark products and services  licensed hereunder with any one or more of the patents licensed hereunder and  shall have the right (but not the obligation) to include a phrase such as  "Purchase of this product carries with it a right to practice under  Patent No. ________."
** 
Further Assurances.
 Each of the Parties shall, following the Effective  Date, at the request of the other, and without further consideration, take all  such actions, provide such assistance, execute and deliver (or cause to be  executed and delivered) to the other Parties or their designee, such  instruments and documents in addition to those required by this Agreement as  such other Party may reasonably deem necessary or desirable to implement any  provision of this Agreement.
** 

 
WARRANTIES AND LIMITATION OF LIABILITY

 
- Limited Warranties.  Each Party hereby warrants that it has the right    and authority to enter into and carry out its obligations under this    Agreement and to grant the licenses granted herein and that this Agreement    has been authorized by all requisite corporate action. Each Party hereby    warrants that it shall not enter into any Agreement in conflict with this    Agreement. Each Party hereby warrants that it has not transferred any right    to damages or other relief with respect to the Lawsuits, the NaPro Patents    or the BMS Patents. OTHER THAN THE FOREGOING EXPRESS WARRANTIES AND THE    WARRANTY CONTAINED IN SECTION 5.2, NONE OF THE PARTIES MAKES AND EACH OF THE    PARTIES HEREBY DISCLAIMS ANY OTHER WARRANTY, EXPRESS OR IMPLIED, INCLUDING    WARRANTIES OF NONINFRINGEMENT, MERCHANTABILITY AND FITNESS FOR A PARTICULAR    PURPOSE.

 
Limitation of Liability.
 EXCEPT FOR DAMAGES ARISING OUT OF A BREACH OF  SECTION 4.1, EACH PARTY AGREES THAT THE OTHERS SHALL NOT BE LIABLE PURSUANT TO  THIS AGREEMENT FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES (INCLUDING  LOSS OF PROFITS), EVEN IF ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.  NOTWITHSTANDING THE FOREGOING, AMOUNTS PAYABLE TO THIRD PARTIES PURSUANT TO A  WRITTEN SETTLEMENT AGREEMENT OR COURT ORDER SHALL BE CONSIDERED DIRECT  DAMAGES.
** 
MISCELLANEOUS

 
- Relationship of the Parties.  Nothing herein shall create any    association, partnership, joint venture or the relation of principal and    agent between the Parties. Each Party is acting as an independent    contractor, and no Party shall have the authority to bind any other Party or    its representatives in any way.

 
Entire Agreement.
 This Agreement constitutes the entire agreement  between the Parties with respect to the subject matter hereof, and cancels and  supercedes all prior negotiations, understandings and agreements relating to  the subject matter hereof. The Parties represent and warrant that there is no  other agreement or contract relating to the settlement of the Lawsuits or any  consideration transferred or to be transferred between the Parties other than  as set forth in this Agreement.
** 
Waiver and Amendment.
 This Agreement may not be amended except  pursuant to a written instrument signed by each of the Parties. No right of a  Party, and no breach of any terms of this Agreement, can be waived and no  election under this Agreement can be made unless such waiver or election is in  writing and signed by the Party waiving such right or making such election.
** 
Governing Law.
 This Agreement shall be governed by the laws of the New  York, without regard to the choice of law principles thereof.
** 
Construction and Interpretation.
 This Agreement shall be deemed to  have been jointly drafted by the Parties, no rules of strict construction  against either Party shall be applied. In this Agreement, the word  "including" shall be deemed to be followed by "without  limitation".
** 
Severability.
 The provisions of this Agreement are severable. If any  such provision shall be held invalid or unenforceable for any reason, such  provision shall be replaced with a provision which accomplishes, to the extent  possible, the original business purpose of such provision in a valid and  enforceable manner. The invalidity or unenforceability of any provision of  this Agreement shall not affect any other provision of this Agreement.
** 
Assignment.
 Each of the Parties shall have the right to assign its  rights hereunder only to a purchaser of all such Party's assets relating to  paclitaxel or to a surviving entity of a merger with such Party, by operation  of law. This Agreement shall be binding on and inure to the benefit of the  Parties and their respective successors and permitted assigns.
** 
Notices.
 Any notice given under this Agreement shall be made in  writing by registered mail, return receipt requested, or by overnight courier,  and shall be deemed given on the date received.
** **
If to NaPro: Attention General Counsel

6304 Spine Road, Unit A

Boulder, CO 80301, USA

 

 

If to Abbott: Abbott Laboratories

200 Abbott Park Road

Abbott Park, Illinois 60064, USA

Attention of: President, Hospital Products Division

 

with a copy to: Abbott Laboratories

Domestic Legal Operations, Dept. 322, Bldg. AP-6

100 Abbott Park Road

Abbott Park, Illinois 60064, USA

 

If to BMS: General Counsel

Bristol-Myers Squibb Company

345 Park Avenue

New York, New York 10154

Facsimile: (212) 546-9562

 

with a copy to: Patent Counsel

Bristol-Myers Squibb Company

Route 206 & Province Line Road

Princeton, New Jersey 08543

Facsimile: (609) 252-3265

 
**Counterparts.
 This Agreement may be executed by facsimile and in one  or more counterparts, each of which shall be deemed to be an original and all  of which together shall constitute the same agreement.
** 
Publicity.
 Upon execution of this Release and License Agreement by all  parties, the parties will issue the joint press release attached hereto as  Exhibit C.
** 

********************
IN WITNESS WHEREOF, the Parties have executed this Agreement as of theEffective Date.
Abbott Laboratories NaPro BioTherapeutics, Inc.  By:  /s/ By:  /s/   Name:  Christopher Begley Name:  Gordon Link  Title:  President HPD  Title:  Vice President, CFO
 

Bristol-Myers Squibb Co.

By:  /s/  

Name:  Brian Markison

Title:  President BMSOI 

 

EXHIBIT A
IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO
 

NAPRO BIOTHERAPEUTICS, INC.

and ABBOTT LABORATORIES,

Plaintiffs,

-against-

BRISTOL-MYERS SQUIBB COMPANY,

Defendant.

 

 

Civil Action No.

00 B 1818
 

 

STIPULATION OF

DISMISSAL OF ACTION WITH PREJUDICE
 

It is hereby stipulated and agreed that, pursuant to Rule 41(a)(1)(ii)of the Federal Rules of Civil Procedure, the above captioned action is herebydismissed withprejudice bystipulation of the parties. Each of the parties is to bear its own costs andattorneys=fees.
DATED: November , 2001

 

CONSENTED TO:
**TIMOTHY J. MARTIN, P.C.**WELLS, ANDERSON AND RACE, LLC
__________________________
__________________________
Timothy J. Martin
Mary A. Wells
Mark H. Weygandt
Suanne M. Dell
9250 W. 5th Avenue, Suite 200
1700 Broadway, Suite 1020
Lakewood, CO 80226
Denver, CO 80290
(303) 232-3388
(303) 830-1212**WINSTON & STRAWN**CRAVATH, SWAINE & MOORE
James F. Hurst
Evan R. Chesler
George Lombardi
Richard J. Stark
35 W. Wacker Drive
Worldwide Plaza
Chicago, IL 60601
825 Eighth Avenue
(312) 558-5600
New York, NY 10019
(212) 474-1000

 

Attorneys for Plaintiffs
Attorneys for Defendant
Napro Biotherapeutics, Inc.
Bristol-Myers Squibb Company
and Abbott Laboratories
EXHIBIT B
UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY
 

BRISTOL-MYERS SQUIBB COMPANY,

Plaintiff,

-against-

ABBOTT LABORATORIES,

Defendant.

 

 

Civil Action No.

01-2991 (WHW)
 

 

STIPULATION OF

DISMISSAL OF ACTION WITH PREJUDICE
 

It is hereby stipulated and agreed that, pursuant to Rule 41 of theFederal Rules of Civil Procedure, the above captioned action is hereby dismissedwith prejudice by stipulation of the parties. Each of the parties is to bear itsown costs and attorneys=

fees. The Court will retain jurisdiction to enforce the provisions of theSettlement Agreement, a copy of which is attached.

DATED: November , 2001

 

SO ORDERED:

 

_______________________

Williams H. Walls

United States District Judge

CONSENTED TO:
**WINSTON & STRAWN**McCARTER & ENGLISH, LLP
_________________________
_________________________
Brian J. McCarthy
William J. O'Shaughnessy
One Gateway Center
Four Gateway Center
Newark, NJ 07102-5398
P.O. Box 652
(973) 621-5761
Newark, New Jersey 07101 
(973) 639-2094**WINSTON & STRAWN**CRAVATH, SWAINE & MOORE
James F. Hurst
Evan R. Chesler
George Lombardi
Richard J. Stark
35 W. Wacker Drive
Worldwide Plaza
Chicago, IL 60601
825 Eighth Avenue
(312) 558-5600
New York, NY 10019 
(212) 474-1000
Attorneys for Defendant
Attorneys for Plaintiff
Abbott Laboratories
Bristol-Myers Squibb Company
Exhibit C

---------------------------------------

 

NaPro letterhead

6304 Spine Road, Unit ABoulder, Colorado 80301Tel: (303) 516-8500Fax: (303) 530-1296

Contact:
NaPro BioTherapeutics, Inc. Burns McClellan, Inc.Kai Larson (303) 516-8500Margaret Wahle (415) 352-6262
 

For Immediate Release
**NAPRO BIOTHERAPEUTICS AND ABBOTT LABORATORIES

ENTER INTO PACLITAXEL CROSS-LICENSE AGREEMENT WITH

BRISTOL-MYERS SQUIBB

Boulder, Colo., November 27, 2001- NaPro BioTherapeutics (Nasdaq: NPRO)and Abbott Laboratories (NYSE: ABT) announced today that they have entered intoa non-exclusive cross license agreement with Bristol-Myers Squibb (NYSE: BMY),relating to the anti-cancer drug, paclitaxel. The agreement grants NaPro alicense under BMS patents to market paclitaxel injection, pursuant to an ANDAapproval. NaPro has the right under the agreement to sublicense its distributor,Abbott Laboratories.

The agreement grants BMS a license to NaPro's patents relating to stablepaclitaxel formulations. The scope of both licenses is limited to thepolyethoxylated castor oil and ethanol formulation currently approved by theFDA. In connection with this cross license, the parties have agreed to settlethe paclitaxel-related litigation currently pending in Colorado and New Jersey.

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