Company Patent License Agreement

EXHIBIT 10.8


COMPANY PATENT LICENSE AGREEMENT


This Patent License Agreement (this "Agreement") is effective as of
--------- the Closing (as defined herein), between Carter-Wallace, Inc., a Delaware corporation (the "Company"), and Armkel, LLC, a Delaware limited liability
------- company ("Buyer").
-----


WHEREAS, the Company and Buyer have executed and delivered an Asset Purchase Agreement, dated as of May 7, 2001 (including the exhibits, schedules and annexes thereto, the "Asset Purchase Agreement"), providing for, among other
------------------------ things, the sale, conveyance, transfer, assignment and delivery to Buyer of all of the Company's and its Affiliates' rights, title and interest in and to the Purchased Assets (as defined in the Asset Purchase Agreement) and the assumption by Buyer of all of the Assumed Liabilities (as defined in the Asset Purchase Agreement; such sales, transfers, assignments, purchases, acceptances and assumptions collectively, the "Assets Purchase"), effective in each case
--------------- immediately prior to the ABC Merger (as hereinafter defined);


WHEREAS, the Company, CPI Development Corporation, a Delaware corporation ("ABC"), MedPointe Inc., a Delaware corporation ("Parent"), MCC
--- ------ Merger Sub Corporation, a Delaware corporation and a wholly owned subsidiary of Parent ("Company Merger Sub"), and MCC Acquisition Sub Corporation, a Delaware
------------------ corporation and a wholly owned subsidiary of Parent ("ABC Merger Sub"), have
-------------- executed and delivered an Agreement and Plan of Merger, dated as of May 7, 2001 (including the exhibits, schedules and annexes thereto, the "Merger Agreement"),
---------------- providing for, among other things, the merger of ABC Merger Sub with and into ABC (the "ABC Merger") and the merger of Company Merger Sub with and into the
---------- Company; and


WHEREAS, in connection with the consummation of the Assets Purchase, Buyer desires to grant to the Company a license to use certain Patents (as hereinafter defined).


NOW, THEREFORE, in consideration of the premises, and the representations, warranties, covenants and agreements contained in this Agreement, the Parties agree as follows:


ARTICLE I


Definitions
-----------


SECTION 1.1. Definitions. For the purpose of this Agreement, the
----------- following capitalized terms are defined in this Article I and shall have the meaning specified herein:


"ABC" has the meaning ascribed to such term in the Recitals.
---


"ABC Merger Sub" has the meaning ascribed to such term in the
-------------- Recitals.


"Action" means any claim, suit, arbitration, action or proceeding.
------


"Asset Purchase Agreement" has the meaning ascribed to such term in
------------------------ the Recitals.


"Assets Purchase" has the meaning ascribed to such term in the
--------------- Recitals.


"Licensed Patents" means those patents and patent applications listed
---------------- on Exhibit A.


"Business" has the meaning ascribed to such term in the Asset Purchase
-------- Agreement.


"Buyer" has the meaning ascribed to such term in the Preamble.
-----


"Closing" means the meaning ascribed to such term in the Asset
------- Purchase Agreement.


"Company" has the meaning ascribed to such term in the Preamble.
-------


"Company Merger" has the meaning ascribed to such term in the
-------------- Recitals.


"Company Merger Sub" has the meaning ascribed to such term in the
------------------ Recitals.


"Confidential Information" has the meaning ascribed to such term in
------------------------ Section 4.1.


"Licensed Field" has the meaning ascribed to such term in Section
-------------- 2.1(a).


"Licensed Property" means the Licensed Patents and the Related
----------------- Know-How.


"Parent" has the meaning ascribed to such term in the Recitals.
------


"Patents" means patents, utility models, design patents, design
------- registrations, certificates of invention and other governmental grants for the protection of inventions or industrial designs anywhere in the world and all applications, reissues, renewals, re-examinations, continuations, continuations-in-part, divisionals, substitutions and extensions of any of the foregoing, including: (i) all claims and inventions described therein and (ii) all foreign or international patents, patent applications, rights and priorities relating to the foregoing.


"Person" means any individual, firm, partnership, association, group
------ (as such term is used in Rule 13d-5 under the Securities and Exchange Act of 1934, as amended, as such Rule is in effect on the date of this Agreement), corporation or other entity.


"Related Know-How" shall mean the proprietary and confidential
---------------- know-how of the Buyer existing as of the Closing that relates to any inventions that are the subject matter of any claims of the Licensed Patents. Related Know-How shall not include any improvements, enhancements, derivatives, modifications or other developments made by or for Buyer after the Closing. Related Know-How shall be considered Confidential Information of Buyer for purposes of Section 4.1 hereof.


"Subsidiary" means, with respect to any party, any entity, whether
---------- incorporated or unincorporated, of which at least a majority of the securities or ownership interests having by their terms ordinary voting power to elect a majority of the board of directors or other persons performing similar functions is directly or indirectly owned or controlled by such party or by one or more of its respective Subsidiaries or by such party and any one or more of its respective Subsidiaries.


"Third Party" means a Person other than the Company and its
----------- Subsidiaries or Buyer and its Subsidiaries.


SECTION 1.2. Interpretation. The words "hereof," "herein," and
-------------- ------ ------ "hereunder" and words of similar import, when used in this Agreement, shall --------- refer to this Agreement as a whole and not to any particular provision of this Agreement. Terms defined in the singular shall have correlative meanings when used in the plural, and vice versa. The table of contents and headings herein are for convenience of reference only, do not constitute part of this Agreement and shall not be deemed to limit or otherwise affect any of the provisions hereof. Where a reference in this Agreement is made to a Section or Exhibit, such reference shall be to a Section of or Exhibit to this Agreement unless otherwise indicated. Whenever


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the words "include," "includes" or "including" are used in this Agreement, they
------- -------- --------- shall be deemed to be followed by the words "without limitation."
------------------


ARTICLE II


LICENSES AND RIGHTS
-------------------


SECTION 2.1. License Grants to Company.
-------------------------


(a) Patents. Buyer hereby grants and agrees to cause its appropriate
------- Subsidiaries to grant to the Company and its Subsidiaries, an irrevocable, worldwide, fully-paid, royalty-free, exclusive (even as against Buyer and its Subsidiaries within the Licensed Field), non-transferable (except as set forth in Section 8.13), sublicensable right and license to make, have made, use, lease, license, import, distribute, offer for sale and sell products and services under the Licensed Patents solely in connection with the sale, manufacture and use of products in the field of professional health care and laboratory diagnostic applications, including without limitation applications in hospitals, health care centers and laboratories, but excluding any and all consumer and personal care products, including antiperspirants and deodorants, condoms, at-home pregnancy and ovulation test kits, depilatories, tooth whitening and similar oral hygiene products, skin care products, non-prescription medication and various pet products formulated, developed, manufactured, sold and/or distributed in connection with the Business (the "Licensed Field"). --------------


(b) Know-How. Buyer hereby grants to Company an irrevocable (subject
-------- to Section 5.1), worldwide, fully-paid, royalty-free, non-exclusive, non-transferable (except as set forth in Section 8.13), sublicensable right and license to use the Related Know-How to make, have made, use, lease, license, import, distribute, offer for sale and sell products and services solely within the Licensed Field. During the 180 day period following the Closing, Buyer agrees to provide any Related Know-How, including copies of tangible materials prepared prior to the Closing that embody or include Related Know-How, to the Company at the reasonable request of the Company.


SECTION 2.2. Sublicense Rights. The Company may sublicense the
----------------- Licensed Property or any portion thereof at its sole discretion, whether as independent sublicenses and/or as sublicenses to end-users implied by sales of products or services in the Licensed Field; provided that no Related Know-How may be sublicensed by the Company to any third party unless such third party agrees in writing to be bound by confidentiality obligations no less restrictive than those set forth in Article IV hereof.


SECTION 2.3. Duration. All licenses granted herein with respect to
-------- each item of Licensed Property shall expire upon the expiration or invalidation of such item provided that the term remains in effect with respect to all other items of Licensed Property.


ARTICLE III


ADDITIONAL OBLIGATIONS AND AGREEMENTS
-------------------------------------


SECTION 3.1. Assignment of Patents. Buyer shall not assign or grant
--------------------- any rights under any of the Licensed Patents unless such assignment or grant is made subject to the licenses granted by Buyer in this Agreement.


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SECTION 3.2. Infringement Suits.
------------------


(a) Each party agrees to notify the other party immediately after it becomes aware of any actual or threatened infringement of the Licensed Patents by a Third Party. Buyer shall have the initial right, at its cost and expense, to bring an Action to enjoin infringement in the Licensed Field and recover damages therefor. Any damages recovered in such action will be applied first against any out of pocket expenses incurred by Buyer in prosecuting such Action and then to Company to the extent the damages relate to any infringement of the Licensed Patents in the Licensed Field. Buyer shall be entitled to retain the remaining balance of any such damages. If Buyer does not bring any such Action or if the parties do not decide to proceed jointly within sixty (60) days after written notice of infringement is given by Company, Company, at its cost and expense, shall have the right to bring an Action to enjoin such infringement in the Licensed Field and recover damages therefor; provided that, subject to Buyer's prior written consent, which consent shall not be unreasonably withheld, Company may commence such an Action within such time period as may be necessary to avoid a substantial loss of rights or remedies with respect to any such infringement; provided further, that, if Company so commences an Action with Buyer's prior written consent, Buyer, at its sole discretion, thereafter may elect to assume control of such Action within seventy (70) days of the written notice of infringement, with counsel of its choosing and at its cost and expense, upon ten days' written notice to Company. Any damages recovered in such action will be applied first against any out of pocket expenses incurred by Company in prosecuting such action, second against any damages suffered by Company to the extent they relate to any infringement of the Licensed Patents in the Licensed Field. Company will pay any remaining balance of damages, if any, to Buyer. In any action brought pursuant to this Section 3.2 hereof, the party initiating the Action (the "Initiating Party") shall select and control counsel
---------------- for the prosecution of such Action. The other party hereto (the "Non-Initiating
-------------- Party") shall (x) have the right, at its own expense, to be represented therein - ----- by its own counsel in an advisory or consultative capacity, (y) have the right to receive, from time to time, upon reasonable request, full and complete information from the Initiating Party concerning the status of such Action, and (z) cooperate with the Initiating Party and provide such assistance as is reasonably requested by the Initiating Party, including the preparation and signing of documents, subject to the Initiating Party reimbursing the Non-Initiating Party for any reasonable out of pocket costs and expenses, including attorneys' fees. No party shall have the right to settle any infringement Action described in Section 3.2 hereof in any way that affects the other party's rights to the Licensed Property without the prior written consent of the other party, which consent shall not be unreasonably withheld. No party shall have any obligation to bring or prosecute any Actions or take any other steps against Third Parties for infringement, except as set forth herein. Buyer is under no obligation to Company to defend any Action brought by a third party which challenges or concerns the validity of any of any Licensed Property or which claims that any Licensed Property infringes any patent, copyright or other intellectual property right of any third party or constitutes a misappropriated trade secret of any third party.


(b) Each party shall cooperate with the other party as necessary to protect, maintain and preserve the validity of the Licensed Patents; provided that Buyer is under no obligation to Company to file or continue the prosecution of any patent application, secure any patent or maintain any patent in force or otherwise obtain, maintain or protect any Patent. Notwithstanding the foregoing, if Buyer elects to discontinue the prosecution or maintenance of any Licensed Patent, Buyer shall promptly notify Company of such election and, at the written request of Company, supply Company with copies of all relevant written communications with the pertinent official patent office, and cooperate reasonably with Company to, at Buyer's sole option, (i) transfer ownership and control of such Licensed Patent or application to Company, including providing all papers necessary or desirable to effectuate same (in which case, such Patent or patent application shall be assigned to the Company, subject to an irrevocable, worldwide, fully-paid, royalty-free, non-exclusive, transferable, sublicensable right and license in favor of the Buyer to make, have made, use, lease, license, import, distribute, offer for sale and sell any and all products and services of any kind or nature other than products or services within the Licensed Field, and

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