UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`Washington, D.C.
`
`In the Matter of
`
`CERTAIN FLOCKED SWABS, PRODUCTS
`CONTAINIG FLOCKED SWABS, AND
`METHODS OF USING SAME
`
` Inv. No. 337-TA-1279
`
`ORDER NO. 22:
`
`INITIAL DETERMINATION TERMINATING INVESTIGATION
`AS TO CARDINAL HEALTH AND INNOVATIVE PRODUCT
`BRANDS
`
`(November 15, 2021)
`
`On October 18, 2021, Complainants Copan Italia S.p.A. and Copan Industries, Inc.
`
`(collectively, “Copan”) and Respondents Cardinal Health, Inc. (“Cardinal”) and Innovative
`
`Product Brands, Inc. (“IPB”) filed a joint motion (Mot. Dkt. No. 1279-022; EDIS Doc. ID
`
`754425) to terminate this investigation as to Cardinal and IPB based upon settlement. On
`
`October 28, 2021, the Office of Unfair Import Investigation (“Staff”) filed a response (EDIS
`
`Doc. ID 753078) supporting the joint motion. No other party filed a response to the joint motion
`
`to terminate the investigation as to Cardinal and IPB.
`
`Under Commission Rule 210.21(a)(2), “[a]ny party may move at any time to terminate an
`
`investigation in whole or in part as to any or all respondents on the basis of a settlement . . . .”
`
`19 C.F.R. § 210.21(a)(2). In order to terminate the investigation on the basis of a settlement
`
`agreement, the moving party or parties must file a motion to terminate with “copies of the
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`licensing or other settlement agreements, any supplemental agreements, any documents
`
`referenced in the motion or attached agreements, and a statement that there are no other
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`agreements, written or oral, express or implied between the parties concerning the subject matter
`
`of the investigation.” Commission Rule 210.21(b)(1) (19 C.F.R. § 210.21(b)(1)).
`
`The joint motion complies with Commission Rule 210.21. In particular, the confidential
`
`settlement agreement is attached to the motion to terminate as Exhibit B. The public version of
`
`the settlement agreement is attached to the motion to terminate as Exhibit A.1 Copan, Cardinal,
`
`and IPB “represent that there are no other agreements between them, whether written or oral,
`
`express or implied, relating to the subject matter of this Investigation.” Joint Motion at 2.
`
`When considering a motion to terminate based upon a settlement agreement, the
`
`Commission Rules require the Administrative Law Judge to “consider and make appropriate
`
`findings in the initial determination regarding the effect of the proposed settlement on the public
`
`health and welfare, competitive conditions in the U.S. economy, the production of like or directly
`
`competitive articles in the United States, and U.S. consumers.” 19 C.F.R. § 210.50(b)(2).
`
`Copan, Cardinal, and IPB submit that “termination of this Investigation as to Cardinal Health and
`
`IPB at this stage of the proceedings poses no threat to the public interest” and “will not have any
`
`adverse impact on the public health and welfare and/or competitive conditions in the United
`
`States.” Joint Motion at 2, 3-4. Staff states that it “is not aware of any evidence that termination
`
`will prejudice or adversely impact the public interest.” Staff Response at 2. The movants and
`
`Staff further note that the public interest generally favors resolving litigation through settlement
`
`so as to conserve both public and private resources. Joint Motion at 2; Staff Response at 2. The
`
`undersigned finds that termination of this investigation does not impose any undue burdens on
`
`1 The settlement agreement is attached as Attachment 1 hereto.
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`the public health and welfare, competitive conditions in the United States economy, production
`
`of like or directly competitive articles in the United States, or United States consumers.
`
`Accordingly, it is the Initial Determination of the undersigned that Copan’s unopposed
`
`motion to terminate this investigation as to Cardinal and IPB (1279-022) is hereby GRANTED.
`
`Respondents Cardinal Health, Inc. and Innovative Product Brands, Inc. are hereby terminated
`
`from this Investigation.
`
`This Initial Determination, along with supporting documentation, is hereby certified to
`
`the Commission. Pursuant to 19 C.F.R. § 210.42(h), this Initial Determination shall become the
`
`determination of the Commission unless a party files a petition for review of the Initial
`
`Determination pursuant to 19 C.F.R. § 210.43(a), or the Commission, pursuant to 19 C.F.R. §
`
`210.44, orders, on its own motion, a review of the Initial Determination or certain issues, herein.
`
`SO ORDERED.
`
`Monica Bhattacharyya
`Administrative Law Judge
`
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`ATTACHMENT 1
`ATTACHMENT1
`PUBLIC
`PUBLIC
`
`

`

` SETTLEMENT AGREEMENT
`
`This Settlement Agreement is made and entered into as of the Effective Date, by and between
`Copan Italia S.p.A., a public company organized under the laws of Italy, having an address of Via F.
`Perotti 10, 25125, Brescia, Italy and Copan Industries, Inc., a private company, owned at 90 percent
`by Copan Italia, organized under the laws of Puerto Rico, having a physical address of Carr. 110 Km.
`28.8, San Antonio Industrial Park, Aguadilla, PR 00603, and postal address of 1068 Ave. General
`Ramey, #789 San Antonio, PR 00690 (together, “Copan”); Innovative Product Brands, Inc. a
`California corporation with a principal place of business at 7045 Palm Avenue, Highland, California
`92346-3291 (“IPB”); and Cardinal Health, Inc., an Ohio corporation with a principal place of business
`at 7000 Cardinal Pl, Dublin, Ohio 43017-1091 and its affiliates (“Cardinal Health”). As used in this
`Settlement Agreement, “Party” refers to either Copan or IPB or Cardinal Health, and “Parties” refers
`to Copan, IPB, and Cardinal Health collectively.
`
`WHEREAS, on July 9, 2021, Copan filed a complaint with the U.S. International Trade
`Commission (“Commission” or “ITC”) alleging unfair methods of competition and unfair acts in the
`unlawful importation and/or sale by IPB and Cardinal Health of certain flocked swabs and products
`containing flocked swabs that infringe U.S. Patent No. 9,011,358 (“the ’358 Patent”), U.S. Patent No.
`9,173,779 (“the ’779 Patent”), and U.S. Patent No. 10,327,741 (“the ’741 Patent”). The Commission
`instituted an investigation on August 27, 2021, with Cardinal Health and IPB as named respondents
`(Investigation No. 337-TA-1279) (the “ITC Proceedings”);
`
`WHEREAS, prior to any decision to institute the Section 337 investigation, IPB and Cardinal
`Health reached out to Copan to discuss the subject matter of the Complaint and potential resolution
`thereof;
`
`WHEREAS, IPB and Cardinal Health have denied liability as set forth therein and deny any
`liability as may be asserted by Copan based on its allegations in the Complaint or any other related
`federal or state civil proceeding;
`
`WHEREAS, The Department of Health and Human Services invoked the Public Readiness and
`Emergency Preparedness Act
`(“PREP Act”)
`to combat COVID-19
`in March 2020
`(https://www.phe.gov/Preparedness/legal/prepact/Pages/default.aspx), which Act “encourage[s] the
`expeditious development and deployment of medical countermeasures during a public health
`emergency . . .” by granting legal immunity to providers of, among other things, “tests.” (Kevin J.
`Hickey, Cong. Research Serv., LSB10443, The PREP Act and COVID-19: Limiting Liability for
`Medical Countermeasures 1–3 (Last Updated March 19, 2021));
`
`WHEREAS, IPB began manufacturing and importing SteriFlock swabs in response to the
`COVID-19 pandemic and emergency requests by parties in need of flocked swab in direct response to
`the national COVID-19 crisis within the United States;
`
`WHEREAS, Copan’s manufacturing capacity for flocked swabs has increased to provide
`sufficient numbers of swabs for continuing testing related to the COVID-19 pandemic;
`
`WHEREAS, IPB has stopped importation of SteriFlock swabs and flocked swabs accused of
`infringing Copan’s Asserted Patents;
`
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`WHEREAS, Cardinal Health is currently not purchasing SteriFlock swabs from IPB other than
`existing inventory as set forth herein;
`
`WHEREAS, both IPB and Cardinal Health desire to use its remaining inventory for COVID-
`19 testing;
`
`WHEREAS; Copan will not pursue any further remedies against IPB or Cardinal Health for
`any flocked swabs imported and sold prior to the Effective Date of this Settlement Agreement;
`
`WHEREAS, Copan and Cardinal Health desire and agree to expand their commercial
`relationship;
`
`WHEREAS, the Parties to the Actions have with mutual consent agreed to reach a compromise
`and settlement of the Action in acknowledgement of their existing commercial relationship and mutual
`desire expand on that relationship, and for the purpose of avoiding the costs, disruptions, and
`uncertainties associated with further litigation;
`
`NOW, THEREFORE, in consideration of the promises and mutual covenants and releases set
`forth in the Settlement Agreement herein, and other good and valuable consideration, the sufficiency
`of which is hereby acknowledged, Copan, IPB, and Cardinal Health agree as follows:
`
`A.
`
`DEFINITIONS
`
`The following definitions shall apply to this Settlement Agreement:
`
` “Accused Product” means (i) any flocked swab that is imported into the United
`1.
`States, and/or (ii) any product that, as packaged for commercial sale in the United States, contains
`at least one flocked swab that was imported in the United States; which are covered by Copan’s
`Asserted Patents and identified in the ITC Proceedings;
`
`2.
`
`“Effective Date” shall be October 13, 2021;
`
`“Affiliate” or “Affiliates” means any business entity that directly or indirectly
`3.
`controls or is controlled by, or is under common control or ownership and all entities that directly
`or indirectly, control, are controlled by, or are under common control or ownership by or with
`these entities, including, without limitation, subsidiaries, sister corporations, partnerships and joint
`venture companies;
`
`“Actions” means all patent infringement actions pending before the U.S.
`4.
`International Trade Commission involving Copan and IPB and Cardinal Health and any other
`actions that could have been asserted by Copan against IPB and Cardinal Health for flocked swabs
`falling within Copan’s Asserted Patents or Related Copan Patents;
`
`“Copan’s Asserted Patents” means U.S. Patent No. 9,011,358 (“the ’358 Patent”),
`5.
`U.S. Patent No. 9,173,779 (“the ’779 Patent”), and U.S. Patent No. 10,327,741 (“the ’741 Patent”;
`
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`“Related Copan Patents” means all existing or future North American divisional
`6.
`patents, North American continuation patents, North American continuation-in-part patents or any
`other North American patent application, North American utility model, North American reissue
`patent, North American reexamination patent, or North American patent claiming the same priority
`to any patent identified as Copan’s Asserted Patents;
`
` “Domestically Manufactured Product” means any flocked swab manufactured in
`7.
`the United States, and/or any product that, as packaged for commercial sale in the United States,
`contains at least one flocked swab(s) that were manufactured in the United States, and that are
`covered by the Copan’s Asserted Patents as identified in the ITC Proceedings;
`
`“North America” or “North American” means the United States of America (and
`8.
`its territories), Canada, and Mexico;
`
`“Settlement Agreement” means this Agreement and its attachments which are an
`9.
`integral part hereof.
`
`B.
`
`SALE OF AND DISTRIBUTION OF PRODUCT
`
`Cardinal Health’s Sale or Distribution of Accused Products. Cardinal Health agrees
`1.
`that as of the Effective Date, Cardinal Health will cease, within the United States, to market,
`advertise, offer for sale, and/or distribute Accused Products as identified in the ITC Proceedings,
`unless authorized by Copan to do so; except that Cardinal Health shall be entitled to market,
`advertise, offer for sale, and/or distribute Cardinal Health’s and IPB’s existing inventory of
`Accused Products until it is exhausted. The existing inventory shall be the inventory of Accused
`Products in Cardinal Health’s and IPB’s possession as of the Effective Date.
`
`To the extent that Copan objects to any future marketing, advertising, offering for
`2.
`sale, and/or distributing of any (i) any flocked swab that is imported into the United States, and/or
`(ii) any product that, as packaged for commercial sale in the United States, contains at least one
`flocked swab that was imported in the United States, other than the Accused Products, Copan shall
`Redacted
`notify Cardinal Health in accordance with Section G, Paragraph 11
`.
`
`Cardinal Health’s Sale and Distribution of Domestically Manufactured Products.
`3.
`Copan agrees not to seek to enjoin any third party from which Cardinal Health procures or sources
`Domestically Manufactured Products. Copan further agrees that it shall not seek damages directly
`from Cardinal Health, related to, or resulting from, a claim of patent infringement concerning a
`Redacted
`Domestically Manufactured Product.
`
`IPB agrees that, as of the Effective Date, IPB will not import into the United
`4.
`States, or market, offer for sale, or sell within the United States any Accused Product, unless (i)
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`authorized by Copan to do so, or (ii) strictly limited to the importation and sale after importation
`of Accused Products solely for the purpose of supplying Cardinal Health upon Cardinal Health’s
`exercise of rights granted to Cardinal Health in paragraph E.2. of this Settlement Agreement.
`C.
`DISMISSAL OF THE ACTIONS
`
`Within ten (10) business days after the Effective Date of this Settlement Agreement,
`1.
`Copan and IPB and Cardinal Health shall jointly file with the ITC a motion to terminate Cardinal
`Health and IPB from the ITC Proceedings based upon this Settlement Agreement. Each Party shall
`bear its own costs and attorneys’ fees, and each Party waives any and all rights of appeal.
`
`Each Party agrees to execute, acknowledge, deliver, file and record any other
`2.
`instruments, pleadings and documents, and to take any further action as may be required or
`appropriate to achieve the equivalent of a dismissal of the Actions with prejudice and without
`expense (including Attorneys’ fees and court costs) and to otherwise effect the intent and purpose
`of this Agreement.
`
`D. FUTURE CARDINAL HEALTH BUSINESS AND SUPPLY AGREEMENT
`
`Cardinal Health and Copan agree to enter into an updated supply agreement. Cardinal
`Health and Copan agree to negotiate in good faith the updated supply agreement whereby any such
`purchase and supply directly between Cardinal Health and Copan will be under commercially
`reasonable terms and conditions, taking into consideration terms and conditions typical of the
`medical device industry and past agreements between the parties. During the pendency of the
`negotiation and execution of an updated supply agreement, Cardinal Health and Copan understand
`and acknowledge that, as of the Effective Date until such time as an updated supply agreement is
`fully executed and effective, Cardinal Health and Copan agree that:
`Redacted
`
`1.
`
`Cardinal Health will, no less frequently than every sixty (60) days, inform Copan
`2.
`with of Cardinal Health’s burn down rate of existing inventory of Accused Products (expressed as
`units sold over a time interval);
`Redacted
`
`3.
`
`Continue to explore opportunities to make Copan a preferred supplier of flocked
`4.
`Redacted
`swab products
`
`status, Copan:
`
`As part of the preferred supplier
`
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`a.
`
`Redacted
`
`b.
`
`Redacted
`
`c.
`
`Redacted
`
`d.
`
`Redacted
`
`e.
`
`Redacted
`
`;
`
`f. Will continue to discuss with Cardinal Health additional co-marketing activities
`during negotiations of the updated supply agreement.
`
`Copan will make Cardinal Health a preferred distributor of Copan’s flocked swab
`5.
`products and Copan will provide Cardinal Health’s access to participate in Copan’s regional and
`national sales meetings, without obligation that Copan conduct regional or national sales meetings.
`
`To the extent that the updated supply agreement does not provide for a specific expiration,
`the above provisions shall terminate no later than the last to expire of Copan’s Asserted Patents.
`
`E. COVENANT AND RELEASES
`
`In consideration of the terms herein, Copan covenants not to sue IPB or Cardinal
`1.
`Health, or their respective customers (ultimate or in privity), distributors, or end-users for
`infringement of the Copan’s Asserted Patents concerning the design, manufacture, use, sale or
`offer for sale by IPB or Cardinal Health of an Accused Product that occurred before the Effective
`Date of the Settlement Agreement.
`
`Further, Copan acknowledges and agrees that Cardinal Health shall have the ability
`2.
`and authority from Copan to have Accused Products manufactured by another third-party selected
`by Cardinal Health, at its sole discretion, including IPB, to satisfy U.S. demand, when Copan is
`unable to meet the following supply conditions:
`
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`a.
`
`Redacted
`
`Redacted
`
` To the extent Cardinal Health exercises its rights under this paragraph E.2., Copan
`covenants not to sue Cardinal Health, its supplier, distributors, or end-users for infringement of the
`Copan’s Asserted Patents for any Accused Products procured or sourced through the exercise of those
`rights.
`
`In further consideration of the terms herein, Copan and IPB and Cardinal Health,
`3.
`each on behalf of itself and its respective parents, subsidiaries, and Affiliates, and managers,
`officers, directors, employees, shareholders, members, attorneys, representatives, agents, insurers,
`reinsurers, and the successors and assigns of each of them, hereby release and discharge the other
`and each of the other’s parents, subsidiaries, and Affiliates, and officers, directors, employees,
`brokers, shareholders, members, attorneys, representatives, agents, insurers, reinsurers, and the
`successors and assigns of each of them, from and in respect of all manner of actions, causes of
`action, debts, accounts, claims, promises, costs, expenses and demands whatsoever, asserted or
`unasserted, whether based on a tort, contract, statute, or other theory of recovery, including claims
`for attorneys’ fees, and whether for compensatory, punitive, statutory or other form of damage or
`relief, relating to the Actions, including, without limitation, Copan’s Asserted Patents and the Related
`Copan patents.
`
`This Settlement Agreement sets forth a compromise and settlement of the Actions for
`4.
`the purpose of avoiding the costs, disruptions, and uncertainties associated with further litigation. Such
`compromise and settlement does not constitute a ruling on the merits, an admission as to any issue of
`fact or principle of law or an admission of liability of any Party hereto and any findings or rulings in
`any Action are hereby deemed vacated by the parties. Any and all such admission of liability is
`expressly denied by all Parties to this Agreement.
`
`F. DISCLAIMER
`
`Nothing contained in this Settlement Agreement shall be construed as:
`
`An agreement by Copan or IPB and Cardinal Health to bring or prosecute actions
`1.
`against third parties for infringement or conferring any rights to bring or prosecute actions against third
`parties for infringement; or
`
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`Conferring any right to use in advertising, publicity, or otherwise, any trademark, trade
`2.
`name(s), or any abbreviation or simulation thereof, of either Party; or
`
`3.
`Conferring by implication, estoppel, or otherwise, upon any Party, any license or
`other right under any patent right, copyright, maskwork, trade secret, trademark, or other intellectual
`property right except the rights expressly granted hereunder.
`G. MISCELLANEOUS
`
`Copan and IPB and Cardinal Health agree that this Settlement Agreement is entered
`1.
`into to facilitate settlement of the Actions. Any future disposition by any court or administrative
`agency anywhere in the world regarding the validity or patentability of any claim of any patent
`within Copan’s Asserted Patents and Related Copan Patents will not impact this Settlement
`Agreement.
`
`Copan and IPB and Cardinal Health may disclose the existence of this Settlement
`2.
`Agreement to others, but its terms and conditions shall be treated as each Party’s own highly
`confidential information. Nothing in this section would preclude Copan and IPB and Cardinal
`Health from later mutually agreeing to disclose the terms and conditions of the Settlement
`Agreement to others or confirming that the Actions have been resolved and that this Settlement
`Agreement exists and, as a result, there is no potential impact on Cardinal Health’s ability to deliver
`flocked swabs and related products to its customers as a result of the Actions. The Parties agree
`that any press release issued will be jointly agreed by the Parties.
`
`Copan, IPB and Cardinal Health shall each bear their own attorneys’ fees and all
`3.
`other expenses and costs incurred in connection with or arising out of the Actions and of this
`Settlement Agreement, or arising out of any prior indemnity agreement between IPB and Cardinal
`Health.
`
`Copan and IPB and Cardinal Health represent and warrant that: (i) they have the
`4.
`full right and power to grant the covenants and releases set forth in this Settlement Agreement; (ii)
`there are no outstanding agreements, assignments or encumbrances inconsistent with the
`provisions of this Settlement Agreement or contrary to its intent and purpose; (iii) this Settlement
`Agreement is a valid, legal and binding obligation enforceable against it in accordance with its
`terms and it has the full right, power and authority to enter into and perform its obligations under
`this Settlement Agreement; (iv) the execution, delivery and performance by it does not conflict
`with, or result in a breach of, any agreement, written or oral, to which it is a party or by which its
`properties are bound and does not contradict or violate any law, ordinance, regulation or its articles
`of incorporation, bylaws or other formation or governance documents; and (v) it has taken all
`actions necessary, and no other consent or approval of any other person or entity is required to
`authorize it to enter into this Settlement Agreement and to perform its obligations hereunder.
`
`Nothing contained in this Settlement Agreement shall be construed as limiting the
`5.
`rights which Copan and IPB and Cardinal Health have outside the scope of this Settlement
`Agreement, or restricting the rights of either Copan or IPB and Cardinal Health to make, have
`
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`made, use, promote, lease, sell, offer for sale, import or otherwise dispose of any particular product
`or service.
`
`This Settlement Agreement may be modified (1) only in writing, and (2) when both
`6.
`Copan and IPB and Cardinal Health sign the modification.
`
`This Settlement Agreement and all of its terms and conditions are to be interpreted
`7.
`Redacted
`in accordance with the laws
` and venue for any action under this
`Redacted
`Agreement would be proper only in the federal district court for the
`.
`
`Should any portion of this agreement be found to be invalid, unenforceable, or
`8.
`illegal, that portion of the agreement shall be severed and inoperable and shall not affect the
`validity, enforceability, or legality of any other provision of this agreement, which shall remain
`operative and binding upon Copan and IPB and Cardinal Health.
`
`Nothing in this Settlement Agreement shall diminish or eliminate the rights of
`9.
`Copan or IPB and Cardinal Health in law or equity to enforce this Settlement Agreement, including
`but not limited to all such remedies that may be available for breach of contract in the event that
`either Copan or IPB and Cardinal Health fail to perform or observe or otherwise breach any of
`their obligations under this Settlement Agreement.
`
`This Settlement Agreement may be executed in counterparts or multiple originals,
`10.
`any of which shall be regarded as one and the same instrument, and which shall be the official and
`governing version in the interpretation of this Settlement Agreement. This Settlement Agreement
`may be executed by facsimile signatures and/or portable document format (PDF) signatures and
`such signatures shall be deemed to bind each party as if they were original signatures.
`
`All written notices or communications which Copan or IPB and Cardinal Health
`11.
`may desire or may be required to give pursuant to this Settlement Agreement shall be made by
`facsimile and mail. Such written notices shall be addressed to:
`
`For Copan:
`
`
`
`James M. Wodarski
`Mintz Levin
`
`One Financial Center
`Boston, MA 02111
`
`617.348.1855
`(jwodarski@mintz.com)
`
`Lorenzo Fumagalli, General Counsel
`Copan Group
`Via Francesco Perotti, 10, 25125
`Brescia, BS, Italia
`+39 030 2687203
`(Lorenzo.Fumagalli@copangroup.com)
`
` For IPB:
`
`W. West Allen
`Howard & Howard Attorneys, PLLC
`3800 Howard Hughes Pky
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`Suite 1000
`Las Vegas, Nevada 89169
`(wwa@h2law.com)
`
`For Cardinal Health:
`
`David Orensten
`Assistant General Counsel
`7000 Cardinal Place
`Dublin, OH 43017
`(david.orensten@cardinalhealth.com)
`
`Phil Makrogiannis
`Chief Patent Counsel
`7000 Cardinal Place
`Dublin, OH 43017
`(phil.makrogiannis@cardinalhealth.com)
`
`H. SUCCESSORS AND ASSIGNS.
`
`Limitations on Transfer. Notwithstanding anything set forth in Section H.2 below,
`1.
`this Settlement Agreement may not be transferred by a party, by assignment or operation of law
`or any other means without the prior, written consent of the other parties (the “non-Transferring
`Parties”). The Non-Transferring Parties shall be provided with sufficient detail of any proposed
`transfer so that the Non-Transferring may adequately assess the circumstances of the transfer prior
`to providing or withholding its consent to such transfer. Such consent may not be unreasonably
`withheld. In no instance may a response to notification of intention to transfer be delayed by more
`than 30 days after receiving written notice from the transferring party. Should the Non-
`Transferring Parties have an objection to the transfer, the Parties must act in good faith to resolve
`any issues within 30 business days.
`
`2.
`
`Transfer.
`
`a. With respect to any and all entities that become affiliates of Copan or IPB and
`Cardinal Health after the Effective Date, the rights and licenses under this
`Settlement Agreement shall extend to and cover each such Affiliate on the date that
`it becomes an Affiliate and with written notice to and consent of the non-
`Transferring Parties. Such consent may not be unreasonably withheld.
`
`b. Copan or IPB and Cardinal Health (each a potential “Transferring Party”) may
`Transfer this Settlement Agreement, after securing written consent of the other
`parties pursuant to Section H.1. above, to any third party (“Acquirer”) provided that
`(i) the releases granted by a Non-Transferring Party to the Transferring Party and
`its Released Parties shall not apply to the activities of the Acquirer or its affiliates
`that occurred prior to the effective date of the transaction or to any products or
`services of the Acquirer or its affiliates that were made, used, sold, offered for sale
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`or imported prior to the effective date of the transaction; (ii) the releases, rights, ,
`and covenants granted by the Transferring Party to the Non-Transferring Parties
`and its affiliates or released parties shall continue and remain in effect after the
`effective date of the transaction; and (iii) on and after the effective date of the
`transfer, the rights and covenants granted to the Transferring Party will extend to
`the Acquirer and its Affiliates only with respect to those types of Accused Products
`of the Transferring Party that existed on and before the effective date of such
`transfer and their natural evolutions.
`
`c.
`
`In addition to the foregoing, all releases, rights and covenants of the Transferring
`Party contained herein for the benefit of the Non-Transferring Parties and its
`Affiliates or released parties shall run with the rights of the Transferring Party being
`Transferred and shall be binding on any Acquirer. All Acquirers shall have the
`benefit of all releases, rights, and covenants granted to the Transferring Party under
`this Settlement Agreement, except to the extent expressly limited in Section H.2(b)
`above. Neither Copan nor IPB and Cardinal Health shall transfer any right
`hereunder to any other person unless (i) such transfer is subject to all of the terms
`and conditions of this Settlement Agreement; and (ii) such person executes an
`agreement agreeing to be bound by all of the terms and conditions of this Settlement
`Agreement with respect to the releases, rights and covenants being transferred.
`
`Covenants Follow the Patents. For clarity, the covenants granted within this
`3.
`Settlement Agreement and any obligations and limitations set forth herein shall run with the Copan
`Asserted Patents, such that the covenants, obligations and limitations will remain valid and fully
`enforceable in the event that Copan’s Asserted Patents and Related Copan Patents, or any of them,
`or any interest in any of them, is transferred to another person or entity as permitted in this Section
`H of this Settlement Agreement.
`
`Unpermitted Transfer Void. Any attempted transfer in contravention of this Section
`4.
`H of this Settlement Agreement shall be null and void.
`
`Successors and Assigns. Subject to the foregoing, this Settlement Agreement shall
`5.
`be binding upon and shall inure to the benefit of Copan and IPB and Cardinal Health and their
`respective permitted successors and permitted assigns.
`
`Signatures on following page
`
`Page 10 of 11
` Execution Copy
`
`PUBLIC VERSION
`
`

`

`IN WITNESS WHEREOF, the authorized representative of Copan, IPB and Cardinal Health, have
`executed this Settlement Agreement, which shall become effective as of the Effective Date.
`
`The signatories below are authorized representatives of the Parties and sign below on
`behalf of all the respective entities listed above.
`
`Agreed:
`
`Agreed:
`
`Copan Italia S.p.A.
`Copan Industries, Inc.,
`
`Redacted
`
`Innovative Product Brands, Inc..
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Agreed:
`
`CARDINAL HEALTH, Inc.,
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Page 11 of 11
` Execution Copy
`
`PUBLIC VERSION
`
`

`

`IN WITNESS WHEREOF, the authorized representative of Copan, IPB and Cardinal Health, have
`executed this Settlement Agreement, which shall become effective as of the Effective Date.
`
`The signatories below are authorized representatives of the Parties and sign below on
`behalf of all the respective entities listed above.
`
`Agreed:
`
`Agreed:
`
`Copan Italia S.p.A.
`Copan Industries, Inc.,
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Innovative Product Brands, Inc..
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Agreed:
`
`CARDINAL HEALTH, Inc.,
`
`Redacted
`
`Page 11 of 11
`Execution Copy
`
`PUBLIC VERSION
`
`

`

`IN WITNESS WHEREOF, the authorized representative of Copan, IPB and Cardinal Health, have
`executed this Settlement Agreement, which shall become effective as of the Effective Date.
`
`The signatories below are authorized representatives of the Parties and sign below on
`behalf of all the respective entities listed above.
`
`Agreed:
`
`Agreed:
`
`Copan Italia S.p.A.
`Copan Industries, Inc.,
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Innovative Product Brands, Inc..
`
`Redacted
`
`Agreed:
`
`CARDINAL HEALTH, Inc.,
`
`BY:__________________________
`
`Name:_______________________
`
`Title:________________________
`
`Date:________________________
`
`Page 11 of 11
`Execution Copy
`
`PUBLIC VERSION
`
`