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`Licence Agreement
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`(hereinafter called “the Agreement”)
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`between
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`Fumapharm AG, having an address at Haldenstrasse 24a, CH-6006 Luceme, Switzerland,
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`acting on its own behalf and on behalf of its AFFILIATES as hereinafter defined
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`“FUMAPHARM”
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`and
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`Biogen Inc., a Massachusetts corporation, with a principal address at 14 Cambridge Center,
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`Cambridge, MA 02142, USA, acting on its own behalf and on behalf of its AFFILIATES as
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`hereinafter defined
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`“BIOGEN”
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`(singularly referred to as a “PARTY” and collectively referred to as the “PARTIES”)
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`concerning
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`(further) development, production, registration,
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`exploitation, supply, marketing and distribution
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`of FAG-201/LICENSED PRODUCT
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`Page 1 0‘ 70
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`Biogen Exhibit 2016
`Coalition v. Biogen
`IPR2015-01993
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`Page 1 of 70
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`Biogen Exhibit 2016
`Coalition v. Biogen
`IPR2015-01993
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`Subject
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`Clauses
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`Applicable law
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`76
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`I’uu\npharm_l!iugcn_ /\gu‘cm«:n(
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`lmnl \'ctsim\
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`L% ‘\
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`PATENTS shall mean any and all patents, patent applications, and any patents issuing
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`therefrom worldwide together with any extensions, registrations, confirmations, supplemental
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`protection certificates, and other like forms of patent term extensions, rcissucs, continuations,
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`divisions, continuations—in—part, reexaminations, substitutions or renewals thereof.
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`PSORIASIS means the indication psoriasis in all of its forms.
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`Chan_e_s and IMPROVEMENTS; All changes and proposed IMPROVEMENTS of
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`FAG—20l
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`are only permissible after written approval of the MANAGEMENT
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`COMMITTEE. The ownership of, and the application, prosecution, maintenance
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`and enforcement of PATENTS claiming IMPROVEMENTS are the exclusive right
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`and responsibility of FUMAPHARM.
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`Page 32 of 70
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`Amount: For the granting of the production and exclusive distributing licence for
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`indication PSORIASIS in CONTRACT Tl£RR.I'l‘ORY B BIOGISN will pay
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`FUMAPHARM the following tiered licence fees, plus any outstanding statutory value
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`added tax.
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`Page 33 of 70
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`3434
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`AA
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`3838
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`H.
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`Secrecy and confidentiality
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`47
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`43.3. COLLABORATION TECHNOLOGY: BIOGEN acknowledges that FUMAPHARM is
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`the sole proprietor of COLLABORATION TECHNOLOGY. Each PARTY reveals
`COLLABORA'I‘ION TECHNOLOGY to the other PARTY on the basis of a
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`relationship based on trust as regards the co—opcration. For
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`the duration of this
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`Agreement neither Party is permitted to communicate the COLLABORATION
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`TECHNOLOGY
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`to
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`THIRD
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`PARTIES,
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`to
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`exploit
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`COLLABORATION
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`TECHNOLOGY commercially, indirectly or directly, in its own name or that ofothcrs,
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`on its own account or that ofothcrs. or to use or cxnloit it. directlv or indircctlv. in the
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`Page 47 of 70
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`48
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`development, specification, production or sales of drugs (incl. generic products) based
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`on fumaric acid derivatives, other than as expressly permitted hereunder.
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`Page 49 of 70Page 49 0f 70
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`I.
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`Intellectual Property Rights
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`45.
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`Licences
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`45.1. Licence to BIOGENI Subject
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`to the terms and conditions of this Agreement,
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`FUMAPHARM hereby grants to BIOGEN an exclusive (excluding FUMEDICA’S
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`rights to FAG—20l
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`in Germany) worldwide, licence (with the right to sub-license to
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`THIRD PARTY distributors of BIOGEN), under the FUMAPHARM TECHNOLOGY
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`and COLLABORATION TECHNOLOGY to research, develop, formulate, make, have
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`made, use, market, sell, distribute, export, im ort, offer for sale or have sold, distributed
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`or imported LICENSED PRODUCTS,—
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`Page 50 of 70
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`46.
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`Ownership, Registration, Enforcement and Protection of Intellectual Property
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`46.1.
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`(a)
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`FUMAPI-IARM TECI-INQI:§)(}_Y. All right, title to, and interest in the
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`FUMAPHARM TECHNOLOGY shall continue to be solely owned by
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`FUMAPHARM, subject to the provisions of clause 45.1 above.
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`(C)
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`COLLABORATION
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`TECHNOLOGY.
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`All
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`COLLABORATION
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`TECHNOLOGY shall be solely owned by FUMAPHARM, subject
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`to the
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`provisions of clause 45.l above, during the term of this Agreement, and, with
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`respect
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`to
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`INVENTIONS and
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`IMPROVEMENTS for which
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`patent
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`applications are filed, subject to the provisions of clause 46.4 (c). BIOGEN
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`hereby assigns to FUMAPHARM all of its and its AFFILIATES rights in and
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`to
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`such
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`INVENTIONS
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`and
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`IMPROVEMENTS
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`relating
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`to
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`the
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`COLLABORATION TECHNOLOGY.
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`48.2
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`_C_()_LLAl3_Ql{ATlO_l§I 'l‘ECI'INOLOGY. In the event of termination of this Agreement
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`for any reason (other than for breach of BIOGEN) or in the event of expiration ofthis
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`Agreement, FUMAPHARM shall
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`continue
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`to own all COLLABORATION
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`TECHNOLOGY; provided that FUMAPIIARM shall grant to BIOGEN a worldwide,
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`non-exclusive, perpetual, royalty-free licence, with rights to subliccnse, under all
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`COLLABORATION TECHNOLOGY and OUTSIDE THE SCOPE INVENTIONS
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`owned by FUMAPI-IARM solely or with BIOGEN or a THIRD PARTY for the
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`OUTSIDE THE SCOPE USES.
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`In the event of
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`termination of
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`this Agreement due to BIOCiEN’S breach,
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`FUMAPHARM shall have no obligation to grant to BIOGEN any licence under
`COLLABORATION TECHNOLOGY and/or OUTSIDE THE SCOPE INVENTIONS
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`owned by FUMAPHARM solely or with BIOGEN or a THIRD PARTY.
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`Page 58 of 70
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`§Iv()_(}_EN-IDEC merer: Assuming that the proposed merger between BIOGEN
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`and IDEC Pharmacteuticals announced on 23 June 2003 is approved and
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`completes, references in this Agreement to BIOGEN shall be deemed to comprise
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`references to Biogen ldec Inc.
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`Page 61 of 70
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`76.
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`Alieable law: Swiss law applies to this Agreement, without regard to its conflict of
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`law provisions and without regard to the UN. Convention on lnternationa! Sales of
`Goods.
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`The PARTIES hereto have
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`executed this Agreement
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`by
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`their duly authorized
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`representatives as of the last date set forth below.
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`Page 66 of 70
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`Cambridge, 35/ %Z_{ Zwfl
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`For BIOGEN:
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`Biogcn Inc.
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`Cambridge, 2: ‘ Q ’ ‘ma 2
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`For FUMAPHARM:
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`Fumapharm AG
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`gnature]
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`By:
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`[signature]
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`Name: James C. Mullen
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`Title: President and CEO, Chairman of the
`Board of Directors
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`Name: Dr. H.P. Strebel
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`Title: CEO & President of the Board
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`By:
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`Name: Dr. R.K. Joshi
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`Title: Executive Vice President & Delegate
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`[represented by Dr. H.P. Strebel]
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`Page 67 of 70
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`Proxy
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`Dr. R.K. Joshi, Executive Vice President and Delegate of the Board of Fumapharm AG,
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`Lucerne, (hereinafter called the ‘‘Principal’’) declares that he appoints as his special Agent
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`Dr. H.P. Strebel, CEO and President of the Board of Fumapharm AG, Lucerne,
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`To whom the Principal grants full powers on behalf and in the name of the Principal:
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`To conclude and sign the Licence Agreement between Fumapharm AG, Lucerne, and
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`Biogen Inc., Cambridge, concerning (further) development, production, registration,
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`exploitation, supply, marketing and distribution of FAG—201/LICENSED PRODUCT.
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`For the above purpose, to execute and sign any deeds or documents and generally to do
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`whatever shall be necessary or expedient, notwithstanding that
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`specifically be provided for herein.
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`The proxy is valid until October 3 l, 2003.
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`Zurich, September 16, 2003
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`Dr. R.K. Joshi
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`Page 68 of 70
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`15 September 200315 September 2003
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