EX-10.1 2 a09-11524_1ex10d1.htm EX-10.1
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`Page 1 of 2
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`Exhibit 10.1
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`AMENDMENT TO LICENSE AGREEMENTS
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`This Amendment to License Agreements (the “Amendment”) is made effective as of the date of the last
`signature below (the “Amendment Effective Date”) by and between ImmunoGen, Inc., a Massachusetts corporation
`(“ImmunoGen”), having its principal business office at 830 Winter Street, Waltham, Massachusetts 02451, and
`Genentech, Inc., a Delaware corporation (“Genentech”), having its principal business office at 1 DNA Way, South San
`Francisco, California 94080. ImmunoGen and Genentech are herein sometimes referred to as a “Party” and collectively
`as the “Parties.”
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`WHEREAS, ImmunoGen and Genentech are parties to the following agreements: that certain License Agreement
`dated as of May 2, 2000, as amended May 3, 2006 (the “5/2/00 License Agreement”); that certain License Agreement
`dated as of April 27, 2005 (the “4/27/05 License Agreement”); that certain License Agreement dated as of July 22, 2005
`(the “7/22/05 License Agreement”); that certain License Agreement dated as of December 12, 2005 (the “12/12/05
`License Agreement”); and that certain License Agreement dated as of December 1, 2008 (the “12/1/08 License
`Agreement,” and together with the 5/2/00 License Agreement, the 4/27/05 License Agreement, the 7/22/05 License
`Agreement and the 12/12/05 License Agreement, the “Existing License Agreements”); and
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`WHEREAS, in connection with Genentech’s exercise of its rights under the Existing License Agreements,
`Genentech has requested that ImmunoGen supply, and subject to the terms and conditions set forth in this Amendment
`ImmunoGen is willing to supply, Genentech with [***] for permitted purposes under the Existing License Agreements;
`and
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`WHEREAS, the Parties have agreed to modify the terms of the licenses granted by each of Existing License
`Agreements, specifically by revising the definition of “Improvements;”
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`NOW, THEREFORE, in consideration of the foregoing and for other good and valuable consideration, the receipt
`of which is hereby acknowledged, the Parties agree and covenant as follows.
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`Definitions. The definitions of “Improvements” in Section 1.27 of the 5/2/00 License Agreement,
`1.
`Section 1.26 of the 4/27/05 License Agreement, Section 1.29 of the 7/22/05 License Agreement, Section 1.29 of the
`12/12/05 License Agreement and Section 1.26 of the 12/1/08 License Agreement are each deleted in their entirety and, in
`each case, replaced with the following:
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`“Improvement” means: (a) improvements to any MAY Compound, (b) improvements to methods of
`making any MAY Compound, (c) improvements to the conjugation process for making antibody-drug conjugates
`that include any MAY Compound (including, for example, reaction conditions or changes in process that create
`improvements in the yield of such conjugate), and (d) improvements to non-antibody compositions or methods
`useful for conjugating a MAY Compound to an antibody (i.e., [***]). “Improvement” excludes any and all of the
`following items (“GNE Exclusions”): (x) any improvement that is specific to any antibody-drug conjugates that
`bind to an
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`Portions of this Exhibit were omitted, as indicated by [***], and have been filed separately with the Secretary of the
`Commission pursuant to the Company’s application requesting confidential treatment under
`Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
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`antigen that is subject to an exclusive license from ImmunoGen under, or arising from the Heads of Agreement or
`is subject to an Exclusive Target Option under the Heads of Agreement during the period that such exclusive
`license or Exclusive Target Option remains in effect; (y) improvements to [***] or [***] that is or was [***]or
`[***] by [***], or [***] of [***] or [***], or [***]or [***]any of the foregoing; or (z) the [***]or [***]of any
`[***](i.e., the [***]or [***]of such [***] (e.g., the [***] of [***] or the [***] of [***] to [***]) and [***] the
`manner of [***]such [***]) that binds to an antigen that is subject to an exclusive license from ImmunoGen
`under, or arising from the Heads of Agreement or an antigen that is subject to an Exclusive Target Option under
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`http://www.sec.gov/Archives/edgar/data/855654/000110465909030270/a09-11524_1ex10...
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`1/16/2015
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`IMMUNOGEN 2264, pg. 1
`Phigenix v. Immunogen
`IPR2014-00676
`
`

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`Page 2 of 2
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`the Heads of Agreement during the period that such exclusive license or Exclusive Target Option remains in
`effect. Notwithstanding the foregoing, “Improvements” shall include (and GNE Exclusions shall not include)
`any Improvements to the [***]or [***] of [***]covered by the Licensed Patent Rights, or the [***]of [***]or
`[***]such [***] to the extent such Improvements could be applied to [***] a [***] to an [***] or other [***].
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`Governing Law. Section 10.3 of each of the Existing License Agreements is hereby deleted in its
`2.
`entirety and replaced with the following:
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`Governing Law. This Agreement will be construed, interpreted and applied in accordance
`10.3
`with the laws of the State of New York without regard to any choice of law principle that would dictate the
`application of the law of another jurisdiction.
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`Miscellaneous. This Amendment will be construed, interpreted and applied in accordance with the
`3.
`laws of the State of New York without regard to any choice of law principle that would dictate the application of the law
`of another jurisdiction. Capitalized terms used and not otherwise defined herein shall have the respective meanings
`ascribed to them in the respective Existing License Agreements. The Existing License Agreements remain in full force
`and effect, as amended by this Amendment. References in the Existing License Agreements to “Agreement” mean those
`Existing License Agreements as amended by this Amendment.
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`[Signature page follows]
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`Portions of this Exhibit were omitted, as indicated by [***], and have been filed separately with the Secretary of the
`Commission pursuant to the Company’s application requesting confidential treatment under
`Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
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`2
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`IN WITNESS WHEREOF, the Parties have caused this AMENDMENT TO LICENSE AGREEMENTS to be
`duly executed, effective as of the Amendment Effective Date, by their duly authorized officers.
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`IMMUNOGEN, INC.
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`GENENTECH, INC.
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`By:
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`Name:
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`Title:
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`Date:
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`/s/ Gregory Perry
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`Gregory Perry
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`SVP, CFO
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`3/11/2009
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`By:
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`/s/ Ashraf Hanna
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`Name:
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`Ashraf Hanna
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`Title:
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`Date:
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`VP Alliance Mgmt
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`March 10, 2009
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`Portions of this Exhibit were omitted, as indicated by [***], and have been filed separately with the Secretary of the
`Commission pursuant to the Company’s application requesting confidential treatment under
`Rule 24b-2 of the Securities Exchange Act of 1934, as amended.
`
`3
`
`http://www.sec.gov/Archives/edgar/data/855654/000110465909030270/a09-11524_1ex10...
`
`1/16/2015
`
`IMMUNOGEN 2264, pg. 2
`Phigenix v. Immunogen
`IPR2014-00676
`
`