EXHIBIT 10.4
CONDITIONAL LICENSE AGREEMENT
THIS CONDITIONAL LICENSE AGREEMENT ("Agreement") is made and entered
into as of the 24th day of February, 2000 ("Effective Date"), by and between, on
the one hand; Allen D. Allen ("Allen") and CytoDyn of New Mexico, Inc., a New
Mexico corporation ("CytoDyn") (Allen and CytoDyn are individually and
collectively referred to herein as "Inventor"), and, on the other hand,
Amerimmune, Inc., a Colorado corporation ("Amerimmune").
RECITALS
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A. Inventor has developed certain technolgy that is more specifically
described on Exhibit A hereto (the "Technology") and claims rights to the
trademarks CYTODYN and CYTOLIN and the goodwill associated herewith and
registrations and applications for registration thereof (the "Marks"):
B. Inventor has previously entered into a Termination and Shareholder
Agreement dated August 1, 1998 with Three R Associates, Inc., a California
corporation ("3R"), concerning the assignment to 3R of all rights of Inventor
in and to the Technology and the Marks.
C. Pursuant to that certain Patent and Trademark License Agreement,
dated October 24, 1998 between 3R and Amerimmune (the "3R License Agreement"),
Amerimmune has worldwide exclusive right and license in and to the Technology
and the Marks from 3R.
D. Inventor has represented to Amerimmune that circumstances have
arised leading Inventor to question Inventor's transfer, if any, of the
Technology and the Marks to 3R.
E. In the event that Inventor's transferof rights to the Technology and
the Marks to 3R was ineffective, invalid or in any manner inoperative or in the
event that rights in and to the Technology and the Marks otherwise revert to or
are acquired by Inventor, Amerimmune desires to obtain from Inventor, and
Inventor is willing to grant to Amerimmune, an exclusive worldwide license in
and to the Technology and the Marks on the terms contained in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
convenants contained herein, the parites hereto hereby agree as follows:
I. DEFINITIONS. The following terms shall have the following meanings for
purposes of this Agreement:
1.1 Allen. "Alien" shall mean Allen D. Allen.
1.2 Amerimmune. "Amerimmune" shall mean Amerimmune, Inc., a Colorado
corporation which is a wholly owned subsidiary of API.
1.3 API. "API" shall mean Amerimmune Pharmaceuticals, Inc., a Colorado
corporation.
1.4 Confidential Information. "Confidential Information" shall' mean
(i) the Know How and the Trade Secrets, as defined in Exhibit A attached hereto,
and (ii) all confidential information or trade secrets of, on the one hand,
Amerimmune or its affiliates, including without limitation API, and, on the
other hand, Inventor or its affiliates, disclosed orally, in writing or
otherwise by one party, to the other party, or to their respective affiliates,
officers, agents or employees. In order to be included in "Confidential
Information" pursuant to (ii) in the preceding sentence, the disclosing party
must mark written disclosures as "Confidential" or must give written notice
identifying the Confidential Information within five (5) business days after the
disclosure. "Confidential Information" shall not be deemed to include
information that is publicly known or that becomes publicly known through no
fault of Inventor (with repect to Amerimmune's Confidential Information), or
through no fault of Amerimmune (with respect Inventor's Confidential
Information).
1.5 Inventor. "Inventor" shall mean Allen and CytoDyn of New Mexico,
Inc., a New Mexico corporation, individually and collectively.
1.6 License. "License shall mean the license granted pursuant to
Section 2.1 hereof.
1.7 License Condition: "License Condition" shall mean that Inventor's
transfer of rights to the Technology and the Marks to 3R is held by a court or
arbitrator of competent jurisdiction, or by agreement between Inventor and 3R,
to have been ineffective, invalid or in any manner inoperative, or the rights in
and to the Technology and the Marks otherwise revert to or are acquired by
Inventor.
1.8 Licensed Products. *Licensed Products" shall mean all products
and/or services that (i) are developed, manufactured, marketed, distributed,
imported and/or sold by Amerimmune or its successors, assigns and/or
subtlicensees, in connection with the Marks, and/or (ii) incorporate or utilize
or are manufactured using any of the Technology.
1.9 Loan Agreement. "Loan Agreement" shall mean the Amendment to Loan
Documents of even date herewith between Amerimmune and Allen attached hereto as
Exhibit B.
1.10 Marks. "Marks" shall mean all worldwide rights in and to the marks
CYTODYN and CYTOLIN and all goodwill appurtenant thereto and all present and
future U.S. and foreign registrations and applications for registration thereof,
any corporate names and trade names for terms similar to CYTODYN and CYTOLIN,
and the domain name registration for CYTOLIN.
1.11 Technology. "Technology" shall have the meaning set forth on
Exhibit A attached hereto.
1.12 Term. "Term" shall mean the period set forth in Section II hereof.
1.13 3R. "3R" shall mean Three R Associates, Inc., a California
corporation.
1.14 3R License Agreement. "3R License Agreement" shall mean that
certain Patent and Trademark License Agreement dated October Z8, 1998 between 3R
and Amerimmune.
2. LICENSE OF RIGHTS TO MARK AND TECHNOLOGY
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2.1 License. In the event that the License Condition is satisfied,
Inventor shall be deemed to have granted to Amerimmune, and Amerimmune shall be
deemed to have accepted, an irrevocable (subject to the terms of this
Agreement), exclusive, worldwide right, license and privilege (including the
right to sublicense subject to the terms, of this Agreement) to use the Marks
and the Technology (as now owned or hereafter acquired by Inventor or Inventor's
successors or assigns) during the Term in connection with the development,
manufacture, use, marketing, distribution, import, offer for sale and/or sale of
Licensed Products. Except as otherwise set forth herein, the foregoing license
shall be exclusive even with respect to Inventor, and Amerimmune shall have the
right to use such names and marks, including without limitation the Marks, in
connection with labeling, packaging and advertising the Licensed Products, as
Amerimmune shall determine in its sole discretion; but (i) nothing contained
herein shall be construed to require CytoDyn to change its corporate name or to
prevent CytoDyn from utilizing "CytoDyn" as its corporate name or as an Internet
domain name, and (ii) neither Amerimmune nor Inventor shall use "cytolin" in
whole or part as an active Internet domain name, but either may use the term
"CYTOLIN" in articles and discussions appearing at their respective web sites.
Amerimmune may use Allen's name and bibliography and biography (as permitted by
law) in promoting Licensed Products, but shall take reasonable steps to ensure
that any such uses preserve Allen's good reputation.
2.2 Further Assurances: Cooperation.
(a) Notification. Inventor shall immediately notify Amerimmune
in writing in the event of the (i) transfer or reversion of any of the
Technology or Marks to, or the acquisition of any of the Technology or Marks by
Inventor or any affiliate of Inventor, or (ii) acquisition by Inventor or any
affiliate of Inventor from 3R of any capital stock or any proxy (including
without limitation a return of any proxy previously granted to 3R) or other
right to vote the stock of API and/or Amerimmune.
(b) Cooperation. Inventor shall execute such documents and
instruments as' Amerimmune shall reasonably request from time to time to the
license herein granted, and may cause such documents or instruments, to be
recorded in the records of the United States Patent and Trademark Office ("PTO")
and such other offices as Amerimmune shall deem appropriate.
(c) Documentation. Frin time to time following execution of
this Agreement, Inventor shall furnish to Amerimmune all information and
documents regarding the Technology and the Marks, including without limitation
research and development reports and all other data relating to the Technology,
as shall be reasonably requested by Amerimmune.
2.3 Patent Marking. Amerimmune shall mark all Licensed Prodcuts or the
packaging for such Licensed Products with patent numbers in accordance with
statutory requirements and prudent practice pursuant to industry standards and,
pending the issue of any patents covering the
Licenced Products, shall cause the term "Patent Pending" to appear on such
Licensed Products or the packaging for such Licensed Products.
2.4 Protection of Rights
(a) Prosecution. Amerimmune may apply for patent and trade
mark protection for the Techwfogy and the Marks in the name of Inventor in all
countries of the world, or Inventor shall file such applications in Inventor's
name as Amerimmune shall reasonably request; all of which shall be subject to
the License, using counsel of Amerimmune choice. Inventor shall diligently
prosecute and maintain or, at Amerimmune's election, shall cooperate with
Amerimmune in prosecuting and maintaining all such, patent and- trademark
applications, patents and trademark registrations, using counsel of Amerimmune's
choice. Inventor shall execute all papers, documents, and instruments necessary
to enable Amerimmune to cause to be prepared, filed and prosecuted, such
applications for letters patent and trademark registration in such countries of
the world as Amerimmune shall, in its sole discretion, determine is advisable.
Notwithstanding anything else contained in this Agreement, neither
Amerimmune/API nor a patent or trademark attorney or agent used by
Amerimmune/API pursuant to this Agreement shall have power of attorney to
assign, transfer, sell or register the patents or Marks owned by or applied for
in the name of Inventor. The patent attorney used by Amerimmune pursuant to this
paragraph shall possess the specialized qualifications enumerated in Exhibit F.
(b) Notices. Throughout the Term, Inventor shall promptly
notify Amerimmune in writing of all patent and trademark applications, patents,
and trademark registrations with respect to any of the Marks or the Technology
that are being prosecuted or maintained by Inventor, and all changes of status
of any such patent, applications or registrations, accompanied by complete and
accurate copies of all documents pertaining thereto. Within a reasonable period
of time before deadlines of or due dates relating to any such patent and
trademark applications, patents and trademark, Inventor shall provide Amerimmune
with copies of all relevant documentation so that Amerimmune may be informed and
apprised of the continuing prosecution and maintenance, and provide substantive
comment and input thereon. In the event that Amerimmune from time to bale during
the Term provides directions to Inventor in connection with prosecution and
maintenance of such patent and trademark applications, patents and trademark
registrations, Inventor shall comply with the directions given by Amerimmune,
provided such directions are reasonable.
(c) Reimbursement. Amerimmune shall directly pay or shall
reimburse Inventor for all fees and costs (including but not limited to
attorneys', engineering and drafting fees) that are authorized in advance by
Amerimmune for preparing, filing, prosecuting and maintaining the patent and
trademark applications, patent and trademark registrations covering the
Technology and the Marks. Inventor shall provide Amerimmune with documentation
to support these costs upon request of Amerimmune. Inventor shall provide
periodic statements to Amerimmune showing the amount to be reimbursed to
Inventor under the provisions of this Section 2.4(d), Payment to Inventor shall
be due within thirty (30) days of the date of these statements. If Amerimmune
does not reimburse Inventor or notify Inventor in writing of a good faith
dispute over the amount required to be reimbursed within thirty (30) days of
receipt of a statement from Inventor, Inventor shall have the right to give
Written Notice pursuant to Section 11.2 hereof to terminate the License with
respect to such patent or trademark application, patent or trademark
registration for which reimbursement has not been paid.
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3. CONSIDERATION
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In consideration for entering into this Agreement, Amerimmune has
agreed to advance an additional $50,000 to Inventor pursuant to the terms of the
Loan Agreement. In addition, as consideration for the License, upon Inventor's
delivery to Amerimmune of evidence satisfactory to Amerimmune that (i) the
License Condition has been satisfied with respect to all of the Technology and
the Marks, and that (ii) Amerimmune's obligations under the 3R License Agreement
have terminated, Amerimmune agrees to continue to pay to Inventor directly the
consideration provided for in Section 4(b) of th 3R License Agreement and
Section 2 of Letter Agreement dated August 1, 1998 (which Section, together with
the definitions for "Inventor" and "Licensee" from the 3R License Agreement and
Letter Agreement, both attached hereto as Exhibit C and are herein incorporated
by reference) and to take such other actions as are provided for in Exhibit D
attached hereto.
4. SURRENDER OF STOCK
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In the event that Inventor hereafter directly or indirectly acquires,
purchases (other than bona fide cash purchases of API common stock in the open
market at prevailing market prices), is awarded or otherwise receives from 3R,
the current stockholders of 3R, or their respective affiliates or successors in
interest any shares of capital stock of API and/or Amerimmune, Inventor shall
immediately for no additional consideration surrender to API and/or Amerimmune,
as applicable all such shares of capital stock of API and/or Amerimmune for
return to treasury stock.
5. CONFIDENTIALITY
Each of Amerimmune and Inventor shall regard and preserve the
Confidential Information of the other party as secret and confidential, and
shall not publish or disclose any Confidential Information in any manner without
the prior written consent of the other party. Each of Amerimmune and Inventor
shall use the same level of care to prevent disclosure of the other party's
Confidential Information that it exercises in protecting its own Confidential
Information and shall in any event take all reasonable precautions to prevent
the disclosure of Confidential Information to any third party. Except as
otherise provided herein, before disclosing Confidential Information to a third
palsy ("Recipient"), the disclosing party shall obtain a written commitment from
the Recipient to observe the confidentiality provisions of this Section 5. Each
party acknowledges and agrees that, in addition to any other available rights or
remedies, a disclosing party shall be entitled to specific performance,
injunctive relief and any other equitable remedy for the breach or default or
threatened breach or default of this Section 5 and waives any defense that a
remedy at law or damages is adequate. In addition to the confidentiality
provisians described above, Inventor agrees to be bound by the confidentiality
provisions contained in Exhibit G attached hereto. Neither party shall publicize
the terms of this Agreement without the prior written consent of the other party
(except as required in connection with any legal proceeding or arbitration, as
required by law, or to the extent reasonably required in connection with any
merger, acquisition, reorganization, capital or financing transaction), but each
party shall have the right to publicize the existence of this Agreement.
Inventor shall have the right to publish the results of any studies and/or
trials in connection with the Technology that confirms (as opposed to that
contradicts) information or study results already in the public domain.
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6. QUALITY CONTROL
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Amerimmune agrees to maintain reasonable quality standards common in
the industry for the Licensed Products to be distributed or sold by Amerimmune
in connection with any of the Marks or. Technology, and Amerimmune agrees to
manufacture or have manufactured such Licensed Products in accordance with such
standards. Inventor or its designated representatives shall have the right to
inspect the materials, manufacturing sites and processes employed by Amerimmune
in connection with, and samples of, such Licensed Products to assure that
Inventor that such quality standards are being complied with. Any such
inspection shall be preceded by at least two (2) full business days' advance
written notice, and shall be at Inventor's sole cost and expense.
7. IMPROVEMENTS
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Amerimmune shall have the right to improve through its own research and
development. All such improvements that do not infringe the claims of the
Patents shall be the property of Amerimmune, and improvements that infringe the
claims of the Patents shall be the property of Inventor, but still be subject to
the License. Amerimmune and Inventor promptly notify the other of improvements
to the Technolgy which either party shall invent, create, develop or acquire
during the Term.
8. REPRESENTATIONS, WARRANTIES AND COVENANTS
8.1 Authority. Each party represents and warrants to the other
party that (i) this Agreement has been duly authorized, executed and delivered
by it and that this Agreement is binding obligation of it, enforceable in
accordance with its terms, subject, as to enforcement of remedies, to applicable
bankruptcy, insolvency, moratorium, reorganization or other similar laws
affecting creditors' rights generally, and to general equitable principles, and
(ii) such party's performance under this Agreement will not violate any
agreement with any third party or any federal, state or local law or regulation.
8.2 Title; Validity; Infringment. Inventor represents,
warrants and covenants to Amerimmune that: (i) Investor is the sole inventor of
the inventions included in the Technology; (ii) except for rights claimed by 3R,
Iventor is the sole owner of all right, title and interest interest in and to
the Technology and the Marks; (iii) Inventor has not done or omitted any act ,
nor shall Inventor do or omit any act, which would impair the validity of the
Technology or the Marks or any part thereof or Inventor's ability to effect the
transactions contemplated by this Agreement; (iv) all of the statements,
declarations and claims made in any application for letters patent included in
the Technology are true, and correct in all respects and Inventor knows of no
prior art not disclosed is such applications; (v) except for rights claimed by
3R, Inventor has the sole right and full power to license the Technology and the
Marks to Amerimmune, and no consent of any other party is necessary or
appropriate to the consummation of the transactions contemplated to be performed
by Inventor under this Agreement; (vi) with the exception of rights assigned by
Inventor to 3R and licenses that have heretofore, been terminated in accordance
with their terms, Inventor has not granted, nor prior to or during the Term
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shall Inventor grant, any interest in or to the Technology or the Marks by way
of assignment, license, encumbrance, obligation, agreement, security interest,
lien, option or otherwise to any third party; (vii) to the best knowledge of
Inventor and its officers and director, the Technology and the Marks, and
Amerimmune's exploration of the right licensed thereto pursuant to this
Agreement, does not and will not infringe any valid patent, trade secret,
copyright, trademark of other proprietary right of any thrid party; and (viii)
Inventor and its officers and directors are mot aware of any present or
potential third party infringement of the Technology or the Marks, except as set
forth on Exhibit E attached hereto.
8.3 Certain Representations, Warranties and Covenants of Amerimmune.
Amerimmune represents, warrants and covenants to Inventor that: (i) Amerimmune
has not done or omitted any act, nor shall Amerimmune do or omit any act, which
would impair the validity of the Technology or any part thereof or Amerimmune's
ability to effect the transactions contemplated by this Agreement; (ii)
Amerimmune has not sublicensed any interest in or to the Technoly or the Marks
to any third party, and (iii) Amerimmune and its officers and directors are not
aware of any present or potential third party infringement of the Technology.
8.4 Acknowledgment by Amerimmune. Amerimmune acknowledges that Inventor
has advised Amerimmune that a License from Coulter Immunology, Inc. may be
required for Amerimmune to manufacture S6F2 Antibodies.
9. INFRINGEMENT
9.1 Third Party Infringement. If Inventor learns of facts that it
concludes may constitute an infringement of any of the Technology or the Marks
by any third party, Inventor shall promptly notify Amerimmune in writing,
setting forth such facts and the basis for its conclusion, and include with such
notice any other reasonably available evidence in support thereof.
(a) Substantial Infringements. Ameriimmune shall take
appropriate action at Amerimmune's expense against "Substantial Infringements"
of the Technology or the Marks ("including without limitation filing a lawsuit
or arbitration against such third party infringer, if necessary). For purposes
hereof, a "Substantial Infringement" shall be an infringement of Technology or
Marks (i) where failure by Amerimmune to take appropriate action against such
infringement would result in partial or total loss or abandonment of rights to
the infringed Technology and/or Marks, or (ii) if the infringement has resulted
in more more than a 25% reductions in sales of Licenced Products in any country
after introduction into the market in such country of the infringing product.
Unless Inventor agrees otherise in writing, Amerimmune's failure to commence
appropriate action against a Substantial Infringement within thirty (30) days
after learning or receiving written notice of such infriingement shall result in
the termination of the License in such country with respect to the Marks (if one
of the Marks is the subject of the such Substantial Infringement) or the
infringed Technology.
(b) Other Infringements. Amerimmune shall have the right, but
not thr obligation, at Amerimmune's expense to take such action against
infringements other than Substantial o Infringements as Amerimmune deems
appropriate. If Amerimmune declines to take action (i.e. send
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demand letter, file lawsuit) against an infringer within thirty (30) days of
receipt of notice thereof from Inventor, Inventor shall have the right to take
action against such infringer upon giving at least fifteen (15) days prior
written notice. Amerimmune shall have the right to participate in such action,
at Amerimmune's expense. Inventor shall not settle any action against a third
party infringer of the Technology or the Marks without Amerimmune's prior
written consent, which consent shall not be unreasonably withheld.
(c) Recovery. Amerimmune shall be entitled to any monetary
award, judgment or settlement resulting from action brought or taken by
Amerimmune against a third party infringer. Inventor shall be entitled to any
monetary award, judgment or settlement resulting from action brought or taken by
Inventor against a third party infringer. Any monetary award, judgment or
settlement resulting from action brought or taken jointly by Amerimmune and
Inventor shall be divided between Amerimmune and Inventor pari passu based on
each party's financial contribution towards such result.
9.2 Nominal Plaintiff: If any infringement action, suit or proceeding
is brought hereunder by Amerimmune to enforce any rights in the Technology or
the Marks, Inventor shall upon request and at the expense of Amerimmune,
cooperate with Amerimmune and be named, joined and participate therein as a
nominal plaintiff.
10. INDEMNIFICATION
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10.1 Inventor Indemnification. Inventor shall infemnify, harmless and
defend Amerimmune and its officers, directors, employees, representatives and
agents; from and against any and all claims, demands. lawsuits, actions,
proceedings, liabilities, losses, damages, fees, costs and expenses (including
without limitation attorneys' fees and costs of investigation and experts)
resulting from or arising out of (i) any breach by Inventor of this Agreement,
including without limitation any breach of the representations, warranties and
covenants of Inventor hereunder, (ii) any claim by 3R or any other party that
this Agreement represents as interference with a contractual relationship or
otherwise violates such party's rigts, or (iii) any claim that Amerimmune's
exploitation of any rights in the Technology and the Marks herein licensed
infringes or voilates any patent, copyright, trademark or other right of any
third party unless any such infringement or violation is due to actions or
inactions by Amerimmune other than by reason of Amerimmune's exercise of its
rights licensed pursuant to this Agreement; but Amerimmune shall not be entitled
to indemnification hereunder for infringement exclusively resuling from
Amerimmune's improvements to the Technology.
10.2 Amerimmune Indemnification. Amerimmune shall indemnify, hold
harmless and defend Inventor and its officers, directors; employees,
representatives and agents, from and against any and all claims, demands,
lawsuits, actions, proceedings, liabilities, losses, damages, fees, costs and
expenses (including without limitation attorneys' fees and costs of
investigation and experts) resulting from or arising out of (i) any breach by
Amerimmune of this Agreement, including without limitation any breach of the
representations, warranties and covenants of Amerimmune hereunder, and (ii) the
use of the Licensed Products (including without limitations any product
liability claims) and/or the development, manufacture, marketing, distribution
and/or sale by Amerimmune of the Licensed
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Products (except for infringement claims covered by Section 10.1(iii) above) In
addition, Amerimmune shall require any sublicensee to agree to indemnify
Inventor from and against all product liability claims by persons purchasing
Licensed Products from such sublicensee and/or its agent of distributors.
11. TERM.
11.1 Term. The term of the License shall commence as of the later of
(i) the date first above written, or (ii) the date that the License Condition is
satisfied; and shall terminate (i) with respect to the Patents or any other
patents covered by this Agreement, upon the expiration of the last to expire of
such Patents or patents; (ii) with respect to the Know-how and Trade Secrets,
and any improvements thereto, and the Marks, upon termination of this Agreement
as provided in Section 11.2 below; it being the intent of the parties that,
absent such termination, the license with respect to such Know-how, Trade
Secrets, and any improvements thereto, and Marks shall be in perpetuity.
11.2 Termination. Inventor may terminate the License for a material
breach of this Agreement by Amerimmune by delivering written notice to
Amerimmune setting forth that Amerimmune is in material breach of this Agreement
and specific statement of such material breach or breaches (the "Written
Notic"). The License will terminate (A) 30 days after the receipt of the Written
Notice (i) if material breaches capable of being corrected within such 30 days
have not been corrected, or (ii) for material breaches not capable of being
corrected within 30 days of receipt of the Written Notice, if correction of such
breach is not commenced within such 30, days and prosecuted reasonably
diligently therafter, and (B) immediately upon receipt of the Written Notice in
the case of material breaches incapable of being corrected.
11.3 Effect of Termination. Upon termination of the License, Amerimmune
shall transfer to Inventor all rights which Amerimmune may have, if any, to the
Technology and the Marks, and all rights to any sublicenses may have been
granted pursuant to terms hereof.
12. NOTICE
Any notice or other communication hereunder must be gives in writing
and either (i) delivered in person, (ii) transmitted by telex, facsimile or
telecopy mechanism provided that any notice so given is also mailed as provided
hereiin, (iii) delivered by Federal Express or similar commercial delivery
service or (iv) mialed by certified mail, postage prepaid, return receipt
requested, to the party to which such notice or communication is to be given at
the adress set forth on the signature page of this Agreement or to such other
address or to such other person as either party shall have last designated by
such notice to the other party. Each such notice or other communciation shall be
effective (i) if given telex, facsimile or telecopy mechanism, when transmitted,
(ii) if given by mail, two (2) days after such communication is deposited in the
mails and addressed as aforesaid, (iii) if given by Federal Express of similar
commercial delivery service one (1) business day after such communications is
deposited with such service and addressed as aforesaid, and (iv) if given by any
other means, when acutally delivered at such address.
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13. DISPUTE RESOLUTION BY REFEREE
-----------------------------
Amerimmune and Inventor agree to waive the right to a jury trial and to
submit any disagreement or controversy arising under or relating to this
Agreement or subjet matter hereof for resolution by a trial on Order of
Reference. Such trial shall be conducted by a retired judge of justice having
expertise in commerical disputes and who is acceptable to both parties. The
retired judge or justice shall be appointed pursuant to the provisions of
California Code of Civil Procedure ss.638(1) or any amendment, addition or
successor section thereto. If the parties are unable to agree upon a retired
judge or justice panel to act as referee, then upon petition by either party to
the presiding judge of the Superior Court of the State of California for the
County of Los-Angeles, Central District for such other judge as the presiding
judge may designate for such purpose), such shall in his or her sole discretion
select one retired judge or justice who shall serve as the referee. Such referee
shall hear the dispute or controversy until the final determination thereof
pursuant to Article VI, Section 21 it of the California Constitution, Section
638 of the California Code of Civil Procedure, and Rule 244.1(a) of the
California Rules of Court. The referee shall conduct such reference proceeding,
including making orders relating to discovery to take place in connection
therewith, so that the period of time from such referee's appointment until the
reference proceeding is concluded is no longer than six (6) months (such period
is directory only and a failure to conclude such proceeding within such period
shall result in a loss of jurisdiction by the referee). The referee's award
shall be in writing and shall include a statement of decision, in accordance
with Section 1632 of the California Code Civil Procedure. The parties shall pay
in advance to the referee, the estimated reasonable fees and costs of the
reference as may be specified in advance by the referee. The parties shall share
equally, by paying their proportionate amount, the fees of the reference. The
parties intend this general reference agreement to be specifically enforceable.
14. GOVERNING LAW
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This Agreement and the legal relations the parties shall be governed by
and construed in accordance with the laws of the State of California, except
where such are governed exclusively by federal law.
15. RELATIONSHIP
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Each party shall conduct all business in its own name as an independent
contractor. No joint venture, partnership, employment agency or similar
management is created between parties. Neither party has the right or power to
act for or on behalf of the other in any respect, to pledge its credit, to
accept any service of process upon it, or to receive any notices of any nature
whatsoever on its behalf.
16. SEVERABILTY
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If any provision of this Agreement is determined to be illegal, invalid
or otherwise unenforceable by a court of competent jurisdiction then, to that
extent and within the jurisdiction in
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which it is illegal, invalid or unenforceable, it shall be limited, construed or
severed and deleted from this Agreement, and the remaining extent and/or
remaining portions hereof shall survive, remain in full force and effect and
continue to be binding and shall not be affected except insofar as may be
necessary to make sense hereof, and shall be interpreted to give effect to the
intention of the parties insofar as that is possible.
17. BREACH: REMEDIES
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In the event of a breach of this Agreement, the non-breaching party
shall be entitled to exercise any right or remedy available to it hereunder, at
law or in equity, indluing without limitation -- specific enforcement of the
terms hereof. The exercise of any right or remedy available to a party shall not
preclude the concurrent or subsequential exercise by it of any other right or
remedy and all rights remedies shall be cumulative.
18. ENTIRE AGREEMENT
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This Agreement (including Exhibits A-G attached hereto which are
incorporated by this reference) contains the entire agreement between the
parties with respect to the subject MATTER hereof and supersedes all previOus
negotiations, agreements, arrangements and understandings with respect to the
subject matter hereof.
19. INTERPRETATION
--------------
The normal rule of construction that an agreement shall be interpreted
against the drafting party shall not apply. In this Agreement, wherever the
context so requires, the masculine, feminine or neuter gender, and the singular
or plural number or tense, shall include the others.
20. AMENDMENT AND WAIVER
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Neither this Agreement nor any of its provisions may be amended,
modified or waived except in a writing duly executed by an authorized officer of
the party to be bound thereby.
21. SUCCESSORS AND ASSIGNS
----------------------
This Agreement shall be binding upon and shall inure to the benefit of
the parties and their respective legal representatives, successors and assigns.
11
22. COUNTERPARTS
This Agreement may be executed in one or more counterparts, each of
which shall be deemed to be an original, and such counterparts together shall
constitute the agreement.
IN WITNESS WHEREOF, the undersigned have hereunto set their hands as of
the day and year above written.
/s/ Allen D. Allen Amerimmune, Inc.
- ------------------------------- 21550 Oxnard Street, Suite 830
Allen D. Allen Woodland Hills, California 91367
4236 Londgridge Avenue #302 Facsimile:(310)768-2026
Studio City, California 91604
Facsimile:____________________ BY: /s/ Rex H. Lewis
----------------------
Name: Rex H. Lewis
Facsimile:____________________ Consent of spouse of Allen D. Allen
The unersigned, who is the wife of Allen
D. Allen, consents to the terms of the
Name _________________________ foregoing Agreement.
Title:________________________
EXHIBIT A
TECHNOLOGY
"Technology" shall mean the Patents, Patent Rights, Know-hoe, Products and Trade
Secrets, as such terms are hereafter defined, existing upon commencement of the
Term (as such term is defined in the Agreement), together with any improvements
to any of the foregoing invented, created, developed or acquired by Inventor
during the Term.
The "Patents" shall mean all right, title and interest in the inventions,
processes and improvements described and claimed in United States Patent No.
5,424,066 entitled METHOD FOR INCREASING CD4+ CELL NUMBERS THROUGH THE USE OF
MONOCLONAL ANTIBODIES DIRECTED AGAINST SELF-REACTIVE, CD4 SPECIFIC CYTOTOXIC
T-CELLS issued June 13, 1995 and United States Patent No. 5,651,970 entitled
INHIBITING DISEASE ASSOCIATED WITH THE HUMAN IMMUNODEFICIENCY VIRUS THROUGH THE
USE OF MONOCLONAL ANTIBODIES DIRECTED AGAINST ANTI-SELF CYTOTOXIC T-LYMPHOCYTES
OR THEIR LYTICS, issued July 29, 1997.
The "Patent Rights" shall mean foreign patent applications corresponding to the
Pantents, together . with any U.S. or foreign continuations, divisional or
continuation-in-part applications and all other applications relating in any way
to the subject matter described, in the Patents and any letters patent related
thereto as well as reissue and/or re-examine patents issuing thereon, and shall
include without limitaion pending U.S. patent application nos. 08/940,22 7
(METHOD FOR TREATING DISEASE INCLUDING MOLLUSCUM CONTAGIOSUM ASSOCIATED WITH THE
HUMAN IMMUNDODEFICIENCY VIRUS THROUGH THE USE OF MONOCLONAL ANTIBODIES) and
08/940,228 (TREATMENT OF HIV INFECTION (sic) BY INFUSING A DOSE OF SELECTED
MONOCLONAL ANTIBODIES THAT INHIBIT PRODUCTION OF LYMPHOCYTE- ASSOCIATED MOLECULE
(sic) 1(LFA-1) ON CD8 CELLS).
"Know-how" shall mean all know-how, intellectual property, technical expertise,
inventions, information, improvements, computer programs, algorithms, data,
discoveries, ideas, and concepts, whether or not patentable or copyrightable,
including but not limited to medical, clinical, pharmaceutical, pharmacological,
topological, toxicological or other scientific data (including without
limitation preclinical and clinical data, notes, reports, models and samples),
unique methods, processes, techniques, designs, formulas, configurations of any
kind, computer graphics, apparatus products, devices, software, specifications,
drawings and all testing, assaying and analysis methodologies in any manner
pertaining or relating to, resulting from or useful in connection with the
Patents or Patent Rights.
"Products" shall mean all product that embody or make use of all or any part of
the Patents or Patent Rights Know-how.
"Trade Secrets" shall mean all documents and information in any form that have
been originated by, are peculiarly within the knowledge of or are proprietary to
Inventor in whole or in part, and are
subject to protection under recognized legal principles as trade secrets or
otherwise pertaining or relating to, resulting from or useful in connection with
the design, manufacture, installation, sales, marketing, administration, use,
repair or operation of products, processes or services pertaining or relating
to, resulting from useful in connection with the Patents or Patent Rights or
Know-how or Products.
ORIGINAL
- -----------------------------------------------------------------------------
FOR COURT USE ONLY
VENTURA
SUPERIOR COURTS
F1LED
OCT 04 2004
MICHAEL D. PLANEY
Executive Officer and Clerk
BY:_________________________, Deputy
- --------------------------------------------------------------------------------
ATTORNEY OR PARTY WITHOUT ATTORNEY (Name, state and bar number and address):
THOMAS C. MUNDELL, #99081
MARSHALL L. BRUBACHER, #199100
MUNDELL, ODLUM & HAWS, LLP
2829 Townsgate Rd., Ste. 320, Westlake Village, CA 91361
TELEPHONE NO: (805)446-2221 FAX NO (Optional): (805)446-2251
E-MAIL ADDRESS (Optional):
ATTORNEY FOR (Name): Plaintiffs Cytodyn, Inc. and Allen D. Allen
- --------------------------------------------------------------------------------
SUPERIOR COURT OF CALIFORNIA, COUNTY OF Ventura
STREET ADDRESS: 3855-F Alamo Street
MAILING ADDRESS: P.O. Box 1200
CITY AND ZIP CODE: Simi Valley 93062-1200
BRANCH NAME: East County Division
PLAINTIFF: Cytodyn, Inc. , et al.
DEFENDANT: Amerimmune, Inc., .et al.
- --------------------------------------------------------------------------------
JUDGMENT CASE NUMBER:
[ ] By Clerk [X] By Default [ ] After Court Trial
[ ] By Court [ ] On Stipulation [ ] Defendent Did Not SC039250
Appear at Trial
- --------------------------------------------------------------------------------
JUDGMENT
1. [X] BY DEFAULT
a. Defendant was properly served with a COPY of the summons and
complaint.
b. Defendant failed to answer the complaint or appear and defend the
action within the time allowed by law.
c. Defendant's default was entered by the clerk upon plaintiff's
application.
d. [ ] Clerk's Judgment (Code Civ. Proc.,ss.585(a)). Defendant was
sued only on a contract or judgment of a court of this state
for the recovery of money
e. [X] Court Judgment (Code Civ. Proc.,ss.585(b)). The court
considered
(1) [ ] plaintiff's testimony and other evidence
(2) [X] plaintiffs written declaration
(Code Civ. Proc.,ss.585(a)).
2. [ ] ON STIPULATION
a. Plaintiff and defendant agreed (stipulated) that a judgment be
entered in this case. The court approved the stipulated judgment
and
b. [ ] the signed written stipulation was filed in the case.
c. [ ] The stipulation was stated in open court.
[ ] the stipulation was stated on the record.
3. [ ] AFTER COURT TRIAL. The jury was waived. The court considered the
evidence.
a. The case was tried on (date and time):
before (name of judicial officer):
b. Appearances by:
[ ] Plaintiff (name each); [ ] Plaintiff's attorney (name each);
(1) (1)
(2) (2)
[ ] Continued on Attachment 3b:
[ ] Defendant (name each): [ ] Defendant's attorney (name each):
(1) (1)
(2) (2)
[ ] Continued On Attachment 3b:
c. [ ] Defendant did not appear at trial. Defendant was properly
served with notice of trial.
d. [ ] A statement of decision (Code Civ. Proc., ss 632)
[ ] was not [ ] was requested.
________________________________________________________________________________
JUDGMENT
- ------------------------------------------------- ------------------------------
PLAINTIFF: Cytodyn, Inc., et al. CASE NUMBER:
DEFENDANT: Amerimmune, Inc., et ;a1 SCO39250
- ------------------------------------------------- ------------------------------
JUDGMENT IS ENTERED AS FOLLOWS BY: [X] THE COURT [ ]THE CLERK
4. [ ] Stipulated Judgment. Judgment is entered according to the stipulation
of the parties.
5. Parties. Judgment is
a. [X] for plaintiff (name each): (1) Cytodyn, Inc.; and [ ] for cross-complainant (name each):
(2) Allen D. Allen
and against defendant (names): and against cross-defendant (name each):
(1) Amerimmune, Inc.; and
(2) Amerimmune Pharmaceuticals, Inc.
[ ] Continued on Attachment 5a. [ ] Continued on Attachment 5c.
b. [ ] for defendant (name each): d. [ ] for cross-defendant (name each):
6. Amount:
a. [X] Defendant named in item 3a above must c. [ ] Cross-defendant named in item 5c above must pay
pay plaintiff on the complaint: cross-complained on the cross-complaint:
- ------------------------------- ------------ ------------------------------- ------------
(1) [ ] Damages $ (1) [ ] Damages $
(2) [ ] Prejudgment $ (2) [ ] Prejudgment $
interest at the interest at the
annual rate of % annual rate of %
(3) [X] Attorney fees $22,372.54 (3) [ ] Attorney fees $
(4) [X] Costs $ 569.50 (4) [ ] Costs $
(5) [ ] Other (specify) $ (5) [ ] Other (specify) $
- ------------------------------- ------------ ------------------------------- ------------
(6) TOTAL $22,942.04 (6) TOTAL $
- ------------------------------- ------------ ------------------------------- ------------
b. [ ] Plaintiff to receive nothing from d. [ ] Cross complainant to receive nothing from
defendant named in item 5. cross-defendant named in item 5d.
[ ] Defendant named in item 5b to [ ] Cross-defendant named in item 5d to
recover costs $ recover costs $
[ ] and attorney fees $ [ ] and attorney fees $
7. [X] Other (specify): SEE ATTACHED
Date: October 4, 2004 [X] ______________________________________
JUDICIAL OFFICER
Date: [ ] Clerk, by____________________________, Deputy
- --------------------------------------------------------------------------------
CLERK'S CERTIFICATE (Optional)
I certify that this is a true copy of the original judgment on file in the
court.
Date:
Clerk, by____________________________, Deputy
________________________________________________________________________________
JUDGMENT
- --------------------------------------------------------------- ----------------
SHORT TITLE Cytodyn, Inc., et at. v. Amerimmune, Inc., et al CASE NUMBER:
SC 039250
- --------------------------------------------------------------- ----------------
ATTACHMENT 7
IT IS ADJUDGED AND DECREED that (1) the license and assignment of plaintiffs'
technology to defendants Amerimmune, Inc. and Amerimmune Pharmaceuticals Inc.
(collectively "Defendants"), pursuant to the Conditional License Agreement dated
February 24, 2000 ("CLA"), terminated no later than September 12, 2001; and (2)
by reason thereof, plaintiffs are, and have been since at least that date, the
owners of the technoloy licensed and assigned, pursuant to CLA, including, but
not limited to, Allen D. Allen's patents (i.e., U.S. Patents Nos. 5,424,066 and
5,651,970) and the investigational new drug application BB-IND #6485, free from
any claims by Defendants
(Required for verified pleading) The items on this page stated on information
and belief are (specify item numbers, not line numbers):
This page may be used with any Judicial Council form or any other paper filed
with the court.
THOMAS C. MUNDELL, #99081
MARSHALL L. BRUBACHER, #199100
MUNDELL, ODLUM & HAWS, LLP
2829 Townsgate Road, Suite 320
Westlake Village, CA 91361
Telephone: (805)446-2221
Facsimile (805)446-2251
Attorneys for Plaintiffs
Cytodyn, Inc. and Allen D. Allen
SUPERIOR COURT OF THE STATE OF CALIFORNIA
COUNTY OF VENTURA
CYTODYN, INC., a corporation; and ) CASE NO. SC039250
ALLEN D. ALLEN, an individual )
) PLAINTIFFS' EX PARTE APPLICATION FOR AN
Plaintiffs, ) ORDER ALLOWING SERVICE ON DEFENDANTS BY
) PERSONAL DELIVERY OF COPIES OF THE
vs. ) PROCESS AND THE ORDER GRANTING THIS
) APPLICATION TO THE SECRETARY OF STATE;
AMERIMMUNE, INC., a corporation, and ) DECLARATIONS IN SUPPORT THEREOF;
AMERIMMUNE PHARMACEUTICALS, INC., ) EXHIBITS THERETO
a corporation; and DOES 1-100, )
inclusive ) Dept.: S-5
) Judge: Thomas Hutchins
Defendants. )
As described below, plaintiffs Cytodyn, Inc. and Allen D. Allen have
diligently attempted to serve defendants Amerimmune, Inc. and Amerimmune
Pharmaceuticals,. Inc. wihtout success. Plaintiffs request that this Court issue
an order permitting plaintiffs to serve defendants by delivering copies of the
process and this court's order granting this this application to the California
Secretary of State.
I
FACTS
-----
A. Plaintiffs Diligent Efforts to Serve Process, on Defendant Amerimmune
---------------------------------------------------------------------
Defendant Amerimmune is a wholly owned subsidiary of defendant
Amerimmune
1
Pharmaceuticals, Ins. ("API"). Defendant Amerimmune is a Colorado corporation
that is registered to do business in California. [Brubacher Declaration 17,
Exhibit B]
In the annual statement information defendant Amerimmune filed with the
Secretary of State, it identified its agent for service of process as Wellington
Ewen at 21550 Oxnard Street, Suite 830 Woodland Hills, California and its
mailing address as One Wilshire Boulevard, Los Angeles, California 90017.
[Exhibit B]
Plaintiffs attempted to serve Mr. Ewen at the 21550 Oxnard Street
address, but the current resident at that address advised the process server
that he did not know Mr. Ewen; that Mr. Ewen had not been at that address for
more than a year; and that he did not have any forwarding information for Mr.
Ewen. {Brubacher Decalaration 3; Exhibit C]
Plaintiffs' counsel then obtained an alternative address for Mr. Ewen
at 6781 Shearwater Lane, Malibu, California 90265. Plaintiffs attempted to serve
Mr. Ewen at this address but were informed that Mr. Ewen did not reside at that
address. [Brubacher Declaration 4; Exhibit D]
Plaintiffs' counsel then learned, via an Internet search, thatMr.Ewen
is currently working as the Chief Financial Officer for plaintiff Cytodyn, Inc.
[Brubacher Declararion 5] Plaintiffs' counsel telephoned Mr. Ewen to discuss
serving a copy of the summons and complaint on him as Amerimmune's designated
agent for service of process.[Id.] Mr. Ewen told plaintiffs' counsel that he was
surprised that he was still listed as the agent for service of process for
Ammerimmune because he has not had any contact with anyone from Amerimmune for
many months and did not know how to contact Ammerimmune; that he believed that
it was a mistake that Amerimmune had not changed its designated agent for
service of process; that he would not know what to do, if served with copies of
the summons and complaint, and that he did not wish to accept service on behalf
of Amerimmune. [Id.]
Plaintiffs did not attempt to serve Mr. Ewen because plaintiffs'
counsel believed it would be inappropriate to serve defendant Ammerimmune by
serving one of plaintiff Cytodyn, Inc.'s own employees who had stated that he
did not wish to accept service an behalf of Amerimmune and
2
address
would not know what to do with the process if served.
Final1y, plaintiffs attempted to serve defendant Amerimmune at its
designated mailing address (i.e., the "One Wilshire Boulevard" address).
[Brubacher Declaration 6-7] However, the security guard at the One Wilshire
Boulevard address stated that the tenant Amerimmune is not a tenant in that
building; that he gad never heard of defendant Amerimmune; and that he has no
forwarding address for defendant Amcrimmune.[Id.]
Accordingly, plaintiffs have not been able to serve defendant
Amerimmune or its agent for service of process at any of the addresses it
designated with the Secretary of State's office.
B. Plaintiffs' Diligent Efforts to Serve Process on API
Defendant API (the parent of defendant Amerimmune) is a Colorado
corporation has been dissolved. [Brubacher Declaration 9]
Defendant API is not and has never been registered to do business in
California. [Brubacher Declaration 10-11; Exhibit E]
Plaintiffs' counsel was informed by the Colorado Secretary of State
that defendant API had dissolved; tbat all of API's officers have resigned; that
it does not have a trustee of its assets or shareho1ders; and that it does not
have a registered agent for service of process.[Brubacher Declaration 9]
Defendant API previously maintained an office at 21550 Oxnard Street,
Suite 830 Woodland Hills, CA 91367 (the same address that Amerimmune designated
Mr. Ewen). [Al1en Declaration 12] Defendant API does not maintain an office at
that address. [Brubacher Declaration 3; Exhibit C]
Defendamt API a1so previous1y maintained an office at 920 Hampshire
Road, Suite A-40, Westlake Village, Catifornia 91361. [Allen Declaration 14]
Plaintiffs attempted to serve defendant API at this address but defendant API no
longer maintains an offic at this address. [Lipson Declaration 7]
Plaintiffs' counsel located a possible alternative address at 2030 Main
Street, Suite 1300,
3
Irvine, California 926l4 and telephone number of (714)734-5000 for
defendant API. [Brubacher Declaration 7]
Plaintiffs' counsel cal1ed (714)734-5OOO and spoke to a man who
identified himself as Larry Delaney.[ld.] Mr. Delaney stated that the telephone
number correspondend to 2030 Main Street, Suite l300; that defendant API did not
maintain an office at that address; that API had dissolved and that all of API's
officers had resigned.[ld.]
II
This Court Should Issue an Order Permitting P1aintiff to Serve Defendant
------------------------------------------------------------------------
by De1ivering Copies of the Process and this Court's Order to the
-----------------------------------------------------------------
California Secretary of State
-----------------------------
California Code of Civil Procedure Section 416.10(d) provides that "a
summons may be served by delivering a copy of the summons and of the
complaint....., [w]hen authorized by any provision in Section 2111 of the
Corporations Code."
California. Corporations Code Sections 21111(1) governs service of
process on foreign corporations. Defendants Amerimmune and API are foreign
corporations because they were organized under the laws of the State of
Colorado. Cal. Corp. Code ss171 (West 2004)
Section 2111(a) provides as follows:
"If the agent designated for service of process is a natural person and
cannot be found with due diligence at the address stated in the
designation..., or if no agent has been designated and if no one of the
officers or agents of the corporation specified in section 2110[i.e.,
any officer of the corporation or its general manager in California]
can be found after diligent search and it is so shown by affidavit to
the satisfaction of the court, then the court may make an order that
the service be made by personal delivery to the Secretary of State or
to assistant or deputy secretary of
___________________
1 All statutory references in this application to California's
Corporations Code unless otherwise indicated.
4
the state of two copies of the process together with two copies of the
order, except that if the corporatian to be served has not filed the
statement requircd to be filed by Secetion 2105 then only one copy of
the process and order need be delivered but the order shall include and
set forth and address to which the process shall be sent by the
Secretary of State. Service in this manner is deemed complete on the
1Oth day after delivery of the process to the Secretary of State.
Cal. Corp. Code ss2111 (West 2004)
Defendant Amerimmune designated Mr. Ewen (a natural person) as its
agent for service of process. [Exhibit B] As described in detail above,
plaintiffs exercised due di1lgence in attempting to 1ocate and serve Mr. Ewen
without success. Accordingly, this Court should issue an order that be made on
defendant Amerimmune by personal delivery to the Secretary of State or to
assistant or deputy secretary of the state of two copies of the process together
witb two copies of this Court's order granting this application.
As for defendant API, it has not designated an agent gor service of
process in California. [Brubacher Declaration 10-11 I; Exhibit E]. Plaintiffs
cannot 1ocate any its officers or agents because defendant API has dissolved and
a1l of its officers and agents have resigned their position. [Brubacher
Declaration 8-9]
Plaintiffs have attempted unsuccessfully to serve defendant API at
locations where it previously maintained offices. According1y, the Court should
issue an order that the service be made on defendant API by delivering one copy
of the process and this Court's order granting this application to the Secretary
of State or to assistant or deputy secretary of the state as well as defendant
API's last known mai1ing address or 920 Hampshire Road, Suite A-40, Westlake
Village, California 91361.
III
Amerimmune and API Are Subect to This Court Exercising
------------------------------------------------------
Personal Jurisdiction Over Them
-------------------------------
In addition to the requirements of Section 2111(a) set forth above,
plaintiffs must make a
5
factua1 showing via declarations that defendants Amerimmune and API have
"sufficient contacts" with California to be subect to this Court exercising
personal jurisdiction over them. R. Weil and. J. Brown, California Practice
Guide, Civil Procedure Before Trial, ss 4:60 (TRG 2002).
A. This Court May Exercise Limited Personal Jurisdiction Over Defendants
-----------------------------------------------------------------------
Amerimmune and API.
-------------------
This Court may exercise limited jurisdiction over defendants Amerimmune
and API (collectively "Defendants") if (l} Defendants "purposeful1y established"
contacts with California; (2) plaintiffs' cause of action is "related to"
Defendants' contacts with California; and (3) this Court's exercise of personal
jurisdiction comports with "fair play and substantial justice." Burger King
Corp. v. Rudzewicz, 471 US 462, 477-478 (1985); Vons Cos., Inc. v. Seabest
Foods, Inc. l4 Cal.4th 434, 446 (1996).
In Safe-Lab, Inc. v. Weinberg, 193 Ca1.App.3d 1050 (1987), the
plaintiff sued the defendant for the breach of a marketing representative
contract. [Id. at lO52] The defenaant successfu11y moved to quash service of
summons on the ground that he lacked the requisite minimum contacts with
California to justify its assertion of personal jurisdiction over him. [Id.] The
Safe-Lab court reversed the trial court's order quashing service and held as
follows:
"[I}t is clear the California contacts relied on by Safe-Lab are part
and parcel of the consulting transaction which gives rise to this
litigation. Those contacts are, essentially: (l) [defendant] contracted
with a California corporation; (2) he came to California to negotiate
that contract; (e) the contract provided that its terms were to be
governed by California law; (4) [defendant] made monthly trips to
California to consult with the Company; and {5} [five percent] of his
marketing activities were directed at California. In our view, these
contacts unquestionably give rise to personal jurisdiction over
[defendant] as to controversies arising,from the consulting contract
with Safe-Lab."
6
Similarly, in this action, the California contact which plaintiffs'
rely are part and parcel of the Conditional License Agreement ("CLA"} which gave
rise to this 1itigation. Specifically, the following California contacts support
this Court's exercise of personal jurfisdiction over Defendants:
1. Defendant Amerimmune entered into the ClA with Cytodyn of New
Mexico, Inc. and Allen D. Allen (a California.resident).
[Allen Declaration 5, 9; Exhibit A, page 15]
2. All of the parties preliminary negotiations of the CLA
occurred in California. [Allen Declaration 6-8]
3. Plaintiffs executed the CLa in California. [Id.]
4. The CLA provides for the application of California law.
[Exhibit A, page 24]
5. The Amendment to Loan Documents that defendant API entered
into with CytoDyn of New Mexico Inc. (plaintiff Cytodybn's
predecessor) as part of the CLA provides for the application
of California law. [Exhibit A, page 31]
6. Defendant Amerimmune is registered to do business in
California. {Brubacher Declaration 5; Exhibit B]
7. Defendants Amerimmune and API operated offices in Woodland
Hills, California and Westlake Village, California. [Allen
Declaration 12-14]
8. Defendants' breached the CLA in California when plaintiffs
called Defendants' representative Pamela Kapustay to request
an inspection of defendant Amerimmune's manufacturing process
and Ms. Kapustay refused the plantiffs' request. [Id.]
Based on the California contacts described above, this Court may
properly exercise limited jurisdiction over Defendants.
7
B. Defendant Amerimmune Has Consented To This Court' s Exercise of
-----------------------------------------------------------------------
Personal Jurisdiction Over It
-----------------------------
Pursuant to the CLA, plaintiffs and defendant Amerimmune agreed that
eitner of them could submit a petition "to the presiding judge of the Superior
Court of the State California for the County of Los Angeles, Central District"
for an Order of Referencefor disputes arising from or relating the CLA. By so
doing, defendant Amerimmune consented to a California court (namely the Superior
Court of the State of California for the County of Los Angeles, Central
District) Star~uteatifvt exercising personal jurisdiction over it.
California may exercise personal jurisdiction over a nonresident has
consented in advance to such jurisdiction. National Equipment Rental Ltd., v.
Szukhent, 351 U.S. 311, 315-316 (1964); Smith, Valentino & Smith, Inc. v.
Superior Court, 17 Cal.3d 495, 496 (1981).(2)
Accordingly, California courts (such as this one) may properly exercise
personal jurisdiction over defendant Amerimmune.
IV
Conclusion
----------
For the reasons set forth above, plaintiffs respectfully request that
this court issue an order providing for the following
1. Plaintiffs may serve defendant Amerimmune by persona11y delivering
to the Secretary of State or to assistant or deputy secretary of the state two
copies of the process together with two copies of this Court's order granting
this application;
2. Plaintiffs may serve defendant API by personally delivering one copy
of the process
- --------------------
2 It is not relevant for jurisdictional purposes that the CLA
identifies the Superior Court of the State of California for the County of Los
Angeles, Central District. Plaintiffs' counsel has been unable to locate any
California case law or statutory authority permitting a defendant to limit its
consent to personal jurisdiction to a single court within the State of
California.
8
and this Court's order granting this application to the Secretary of State or to
assistant or deputy secretary of the state and by providing defendant API's last
known mailing address of 920 Hampshire Road, Suite A 40, Westlake Village,
California 91361 to the Secretary of State;
3. Service on defendants Anerunnybe and API shall be deemed complete on
the lOth day after personal delivery of the process as described above.
Dated: July 7, 2004 THOMAS C. MUNDELL
MARSHALL L. BRUBACHER
MUNDELL, ODLUM & HAWS, LLP
By: /s/ Marshall L. Brubacher
-----------------------------
Marshall L. Brubacher
Attorneys for Plaintiffs
Cytodyn, Onc, and Allen D. Allen
9
DECLARATION OF ALLEN D. ALLEN
-----------------------------
I, Allen D. Allen, declare as follows:
1. I am current1y the President and Chief Executive Officer of Cytodyn,
Inc. I have personal knowledge of each and every fact set forth in this
declaration and if called as a witness could and would testify competently
thereto under oath.
2. Cytodyn, Inc. is the successor in interest of Cytodyn of New Mexico,
Inc. ("CNMI").
3. Prior to becoming the President and Chief Executive Officer of
Cytodyn, Inc., I was the President and Chief Executive Officer of CNMI.
4. I was the President and Chief Executive Officer of CNMI at tje time
that all of the relevant events occurred in this action.
5. I am currently a resident of California and have been since 1936.
6. In early 2000, I, on behalf of CNMI, negotiated with Rex Lewis of
Amerimmune, Inc. the terms of the Conditional License Agreement ("CLA"} at issue
in this action.
7. The aforementioned negotiations took place in Century City,
California.
8. I signed the CLA at the offices of Amerimmune, Inc.'s attorneys in
Century City, California.
9. A true and correct copy of the CLA is attached hereto as Exhibit
"A."
10. Paragraph six of the CLA provides that both I and CNMI have the
right to inspect the manufacturing process that Amerimmune uses, to manufacture
products that use any of the
10
technology that CNMI licensed to Ammerimune.
11. After the parties executed the CLA, I learned that Amerimmune was
manufacturing a drug using technology that CNMI had licensed to Amerimmune.
12. 1 talked to Pamela Kapustay at Amerimmune's offices which were then
located at 21550 Oxnard Street, Suite 830, Woodland Hills, California and asked
to inspect Amerimmune's manufacturing process.
13. Ms. Kapustay advised that she had spoken with Mr. Lewis and that,
notwithstanding the terms of the CLA, Amerimmune would not allow me or any
representative of CNMI to inspect Amerimmune's manufacturing process.
14. On August 22 , 2002, I, along with my daughter Corinne Allen , met
with Mr. Lewis and Ms. Kapustay at Amerimmune's office located at 920 Hampshire
Road, Suite A-40 in Westlake Village, California.
I declare nor penalty of perjury under the laws of the State of
California that the foregoing is true and correct and that this declaration is
executed on June 24, 2004 at Sherman Oaks, California.
/s/ Allen D. Allen
------------------
Allen D. Allen
11
DECLARATION OF MARSHALL L. BRUBACHER
------------------------------------
I, Marshall L. Brubacher, declare as follows:
1. I am counsel of record for plaintiffs Cytodyn, Inc. and Allen D.
Allen in this action. I have peronal knowledge of each and every fact set forth
in this declaration and if called as a witness could and would testify
competently thereto under oath.
2. Submitted herewith as Exhibit "B" is a true and correct copy of a
printout of a webpage from the California Secretary of State's website that I
printed out containing information provided by defendant Amerimmune, Inc. in its
annual statement of information.
3. Submitted herewith as Exhibit "C" is a true and correct copy of the
Nonservice Report that I received from Douglas Alan McDonald of Amstar Express
detailing his unsuccessful efforts to serve Wellington Ewen, on behalf of
Amerimmune, Inc., at 21550 Oxnard Street, Suite 830, Woodland Hills, California
91367.
4. Submitted herewith as Exhibit "D" is a true and correct copy of the
Nonservice Report that I received from Douglas Alan McDonald of Amstar Express
detailing his unsuccessful efforts to serve Wellington Ewen at 6781 Shearwater
Lane, Malibu, California 90265.
5. I then learned, via an Internet search, that Mr. Ewen is currently
working as the Chief Financial Officer for plaintiff Cytodyn, Inc. I telephoned
Mr. Ewen to discuss serving a copy of the summons and complaint on him as
Amerimmune's designated agent for service of process. Mr. Ewen said that he was
surprised that he was still listed as the agent for service of process for
Amerimmune because he has not had any contact with anyone from Amerimmune for
many months and did not know how to contact Amerimmune; that he believed that it
was a mistake that Amerimmune had not changed its designated agent for service
of process; that he would not know what to do, if served with copies of the
summons and complaint, and that he did not wish to accept service on behalf of
Amerimmune.
6. On June 1, 2004, I telephoned the security desk for the building
located at One Wilshire Boulevard in Los Angeles, California and spokes to the
security guard on duty.
7. The security guard informed me that Amerimmune, Inc. was not a
tenant in that building; that he had never heard of Amerimmune, Inc.; and that
he did not have any forwarding
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information for Amerimmune, Inc.
8. On June 1, 2004, I located a possible telephone number for
Amerimmune Pharmaceuticals, Inc. ("API") of (714) 734-5000. I called that number
and spoke to a man who identified himself as Larry Delaney. Mr. Delaney advised
me that API had dissolved and that all of its officers had resigned.
9. I then telephoned the Colorado Secretary of State's office to
inquire about API's corporate status and was informed by a representative from
the Colorado Secretary of State's Office that API had been a Colorado
corporation but that it had dissolved and that it had not designated a trustee.
10. On July 2, 2004, I searched the website of the California Secretary
of State to determine whether API was registered to do business in California.
11. Submitted herewith as Exhibit "E" is a true and correct copy of a
webpage from the California Secretary of State's website that I printed
confirming that API is not registered to do business in California.
I declare under penalty of perjury that the foregoing, is true and
correct and that this declaration is executed on July 7, 2004 at Westlake
Village, California.
/s/ Marshall L. Brubacher
--------------------------
Marshall L. Brubacher
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DECLARATION OF SUSAN H. LIPSON
------------------------------
I, Susan H. Lipson, declare as follows:
1. I have personal knowledge of each and every fact set forth herein
and if called as a witness could and would testify competently thereto under
oath.
2. On May 24, 2004, I attempted to serve a copy of the summons and
complaint in this action on defendant Amerimmune Pharmaceuticals, Inc. ("API")
by delivering copies of said documents to an officer of API at 920 Hampshire
Road, Suite A-40, Westlake Village, California 91361.
3. I looked at the directory for the building at 920 Hampshire Road,
Westlake Village, California and it did not list Amerimmune Pharmaceuticals,
Inc. as a tenant.
4. I independently investigated the premises at 920 Hampshire Road,
Westlake Village, California but was unable to locate an office for Amerimmune
Pharmaceuticals, Inc. at that address.
I declare under penalty of perjury that the foregoing is true and
correct and that this declaration is executed on July 6, 2004 at Westlake
Village, California.
/s/ Susan H. Lipson
-------------------
Susan H. Lipson
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