Luitpold Complaint

I I I

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

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LUITPOLD PHARMACEUTICALS, INC., Case No. ILIDGE-HOLWELL

Plaintiff,

v.

ED. GEISTLICH SOHNE A.G. FOR CHEMISCHE : COMPLAINT rE

INDUSTRIE, and OSTEOMEDICAL LTD.

Defendants. x

Plaintiff Luitpold Pharmaceuticals, Inc. ("Plaintiff" or "Luitp

complaint against Defendants Ed. Geistlich Soh= A.G. Fiir Chemische Industrie ("Geistlich")

and Osteomedical Ltd. ("Osteomedical" and collectively with Geistlich, "Defendants") alleges as

follows:

INTRODUCTION

1. This action arises out of Geistlich's unilateral and bad faith termination of the

parties' agreements to distribute certain patented and trademarked dental regenerative products

over a "long term" in the United States, Canada, Mexico, Central America, the Caribbean and

Japan.

2. These agreements were intended to last past the expiration of the patents and for

so long as the trademarks are valid and Luitpold sells product under those marks, and were

otherwise terminable only upon the mutual consent of the parties or an incurable breach by one

of the parties.

3. Without justification, Geistlich repudiated and breached the agreements by

serving a notice to terminate the agreements as of March 31, 2011 (thereafter tolled to June 30,

2011), based on the bad faith assertion that the agreements were of indefinite duration and

Case 1:11-cv-00681-RJH Document 1 Filed 02/01/11 of 36

terminable after a reasonable time. This ill-conceived assertion is contrary to settled New York

law, the express terms of the termination provision in the agreements, and the unequivocal intent

of the parties.

4. Plaintiff asks this Court to: (i) enforce the plain terms of the Bio-Oss Commercial

Agreement, the Bio-Oss License Agreement and the Bio-Gide License Agreement and declare

that Geistlich's notice purporting to terminate those Agreements as of March 31, 2011 (as

thereafter tolled to June 30, 2011), is invalid and of no effect; (ii) declare that Geistlich, having

failed to fulfill product orders placed by Luitpold, is obligated to release the Manufacturing

Details (as that term is defined in the Bio-Oss Commercial Agreement) to Luitpold or to an

alternative supplier who is ready, willing and able to supply all of Luitpold's product

requirements under the Bio-Oss Commercial Agreement; (iii) enter an equitable decree of

specific performance requiring Geistlich to comply with its duties and obligations under the Bio-

Oss Commercial Agreement, Bio-Oss License Agreement, Bio-Gide License Agreement,

Mucograft Commercial Agreement and Mucograft License Agreement; (iv) award Luitpold

compensable damages as a result of Defendants' breaches of the Bio -Oss Commercial

Agreement, Bio-Oss License Agreement, Bio-Gide License Agreement and Mucograft

Commercial Agreement; and (v) grant Luitpold a pre-judgment attachment of the patents and

trademarks for the products.

PARTIES

5. Plaintiff Luitpold Pharmaceuticals, Inc. ("Luitpold") is a New York corporation

with its principal offices at One Luitpold Drive, Shirley, New York 11967.

6. Plaintiff Luitpold is engaged in the development and marketing of innovative,

quality drugs and medical devices for healthcare professionals, clinics, and hospitals around the

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world, but principally in the United States and Canada. Its Osteohealth division ("Osteohealth")

specializes in providing regeneration products to dental professionals. These products aid the

growth of bone and tissue after oral surgery or tooth removal in the gums and mouths of dental

patients.

7. Defendant Ed. Geistlich Sane A.G. Far Chemische Industrie ("Geistlich") is a

Swiss Corporation with its principal offices at Bahnofstrasse 40, P.O. Box 157, 6110 Wollhusen,

Switzerland. Ed. Geistlich Sohne Ag Fur Chemische Industrie is not registered to do business in

New York.

8. Defendant Osteomedical Ltd. ("Osteomedical") is an Irish corporation having its

principal offices at 2 Babmaes Street, London SWIY 6NT United Kingdom. Osteomedical is

not registered to do business in New York.

9. Upon information and belief, Geistlich and Osteomedical are part of a privately

held Swiss chemical and pharmaceutical conglomerate.

10. Geistlich and Osteomedical own patents and trademarks, more specifically

identified below, for certain biomaterials and regeneration products. The patents and trademarks

have been licensed to Luitpold, and Geistlich has unlawfully terminated Luitpold's rights to

utilize the patents and trademarks.

JURISDICTION AND VENUE

11. This Court has jurisdiction over this matter pursuant to 28 U.S.C. 1332(a)(2)

because the amount in controversy exceeds $75,000.00, exclusive of interest and costs, and

Geistlich and Osteomedical are both citizens of a foreign country while Luitpold is a citizen of

the United States.

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12. Venue is proper pursuant to 28 U.S.C. 1391(a)(3). The parties have agreed that

this judicial district is the proper venue for this action to be brought and have consented to

personal jurisdiction in this Court. Each of the agreements contains a provision under Article 19

titled "JURISDICTION AND GOVERNING LAW." In substance, each party agreed to submit

to the jurisdiction of the District Court for the Southern District of New York and that the

agreements shall be deemed made under, governed by and interpreted under the laws of the State

of New York.

THE FACTS

The Bio-Oss Commercial Agreement

13. On March 25, 1994, Geistlich and Luitpold established their long-term

relationship when they entered into a Commercial Agreement (the "Bio-Oss Commercial

Agreement"). A true and correct copy of the Bio-Oss Commercial Agreement is attached hereto

as Exhibit 1. The Bio-Oss Commercial Agreement establishes the basic business relationship in

the core territory, North America, between the parties as it pertains to the core Geistlich product,

Bio-Oss, and its related products, Bio-Oss Collagen and Bio-Tape (the "Bio-Oss Products").

14. Under the Bio-Oss Commercial Agreement, the Bio-Oss Products are to be

marketed and developed as a "bone substitute" for "dental, periodontal, oral maxillo facial, dental

implant and oral surgical purposes"; the parties' contemplated relationship was to be "over a

long period of time"; and Geistlich was "to supply the PRODUCT to [Luitpold] on a long-term

basis." Ex. 1 at ri 1.01, 1.05 (emphasis added).

15. In consideration for the right to market and sell the Bio-Oss Products, Luitpold

agreed to pay Geistlich a substantial up-front fee of $15 million, and Luitpold paid the fee as

promised over the first two years of the agreement. Id at ¶ 6.01.

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16. Significantly, the Bio-Oss Commercial Agreement contains an express

termination provision, so it could only be terminated by mutual consent of the parties, an

incurable breach by one of the parties, or upon a failure by Luitpold to meet certain sales

projections set forth in the Agreement. Id. at TT 5.02, 9.01, 9.02. The termination provision

regarding sales projections was later deleted in an amendment dated February 11, 1998.

17. Article 9 in the Bio-Oss Commercial Agreement, titled "TERMINATION,"

expressly states, in relevant part:

9.01 Subject to all of the provisions set forth in this COMMERCIAL AGREEMENT, this COMMERCIAL AGREEMENT may be terminated by mutual consent of the parties in writing at any time. 9.02 In the event that any of the terms or provisions hereof are [sic] incurably breached, the non-breaching party may immediately terminate this COMMERCIAL AGREEMENT by written notice.

18. From the beginning, the Bio-Oss Commercial Agreement has recited that

Luitpold "is desirous of obtaining and ensuring a supply of the PRODUCT for sale in the

TERRITORY over a long period of time," and that Geistlich "is willing to supply the

PRODUCT to BUYER on a long-term basis." Ex. 1 at pp. 1-2. The Bio-Oss Commercial

Agreement contemplated and required a long-term duration to protect the investments made by

Luitpold and to maximize the financial rewards of the relationship for both parties. Luitpold

paid a total of $35 million in up-front licensing fees to Geistlich and Osteomedical for rights to

products. Luitpold invested tens of millions of dollars on top of these up-front license fees to

create and develop a market for the Geistlich products, particularly in the core territory of North

America.

19. Though the Bio-Oss Commercial Agreement was amended in April 1996, in

February 1998, and again in June 2008, none of these amendments (including the 2008

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amendment) provided a unilateral right to terminate the Bio-Oss Commercial Agreement for

convenience. In 1998, the parties demonstrated that they understood how to and did amend the

Bio-Oss Commercial Agreement to remove one condition for termination — relating to Luitpold's

obligation to meet certain sales projections — out of the three permissible conditions. However

the parties left the remaining termination provisions undisturbed. In fact, each amendment re-

affirmed and ratified the Bio-Oss Commercial Agreement except as amended, meaning the

parties repeatedly re-affirmed that termination for convenience could only occur upon mutual

consent, not unilateral action.

The Bio-Oss License Agreement

20. Also in March 1994, as a companion agreement to the Bio-Oss Commercial

Agreement, Luitpold and Osteomedical entered into a License Agreement (the "Bio-Oss License

Agreement"). A true and correct copy of the Bio-Oss License Agreement is attached hereto as

Exhibit 2. The Bio-Oss License Agreement granted to Luitpold a license to the Bio-Oss

Products in North America. Like the Bio-Oss Commercial. Agreement, the Bio-Oss License

Agreement did not permit unilateral termination for convenience by Osteomedical.

21. The Bio-Oss License Agreement grants Luitpold exclusive and non-transferable

patent and trademark licenses for the Bio-Oss Products and sets a royalty and fee structure for

those licenses, for which Luitpold agreed to pay and did pay Osteomedical an "up front" fee of

$5 million, in addition to a royalty of 10% of net sales.

22. The parties' agreements contemplated that their relationship would continue past

the expiration of the patents and for so long as the trademarks are valid and Luitpold sells

product under those marks. Specifically, the royalty is 10% of net sales during the term of the

patents, and then after the expiration of the last-to-expire patents, it drops to 8% for the

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remaining PROPRIETARY ASSETS (i.e. the licensed trademarks). Licenses of this sort are

customarily intended to last for the life of the intellectual property licensed, unless otherwise

expressly agreed.

23. The Bio-Oss License Agreement may only terminate as a result of mutual consent

by the parties or an incurable breach by one of the parties. Article 11 in the Bio-Oss License

Agreement, titled "TERMINATION," expressly states, in relevant part:

11.01 Subject to all of the provisions set forth in this LICENSE AGREEMENT, this LICENSE AGREEMENT may be terminated by mutual consent of the parties in writing at any time.

11.02 In the event that any of the terms or provisions hereof are [sic] incurably breached, the non-breaching party may immediately terminate this LICENSE AGREEMENT by written notice.

24. Osteomedical assigned its rights and obligations under the Bio-Oss License

Agreement to Geistlich.

The 1994 Letter Agreement

25. Confirming that the 1994 Agreements are tied to the intellectual property, on

March 25, 1994, Luitpold, Geistlich, and Osteomedical entered into a letter agreement (the

"1994 Letter Agreement"). A true and correct copy of the 1994 Letter Agreement is attached

hereto as Exhibit 3. The 1994 Letter Agreement recited that the "rights granted to, and the

obligations assumed by" the parties under the Bio-Oss Commercial Agreement and Bio-Oss

License Agreement were "interdependent." Ex. 3 at p. 1. The 1994 Letter Agreement also

provided that a breach or termination of one of the agreements resulted in a breach or termination

of the other agreement. Id. at ¶ 3. Inasmuch as there was no form of unilateral termination for

convenience, the 1994 Letter Agreement only applied to termination by mutual consent of the


parties or an incurable breach by one of the parties. By confirming that the Bio-Oss Commercial

Agreement and the Bio-Oss License Agreement are interdependent, the parties reinforced their

expressions of intent that both were to last past the expiration of the patents and for so long as

the trademarks are valid and Luitpold sells product under those marks unless sooner terminated

for cause or on mutual, not unilateral, consent.

The 1996 Amendment

26. In April 1996, the parties amended both the Bio-Oss Commercial Agreement and

the Bio-Oss License Agreement to add Mexico as a territory subject to the Agreements (the

"1996 Amendment"). A true and correct copy of the 1996 Amendment is attached hereto as

Exhibit 4. Since that time, Luitpold has distributed the Bio-Oss Products in Mexico and paid a

royalty based upon its net sales that is the same arrangement that applies to North America (the

United States and Canada). The 1996 Amendment confirmed and ratified the un-amended

provisions in the Bio-Oss Commercial Agreement, which includes the "long-term" language and

the ability to terminate for convenience only upon mutual consent.

The Amendment to the Bio-Oss Commercial Agreement to add Bio-Gide and the Bio-Gide License Agreement

27. On February 11, 1998, the parties amended the Bio-Oss Commercial Agreement

to include a new Geistlich product, Bio-Gide. A true and correct copy of the amendment to the

Bio-Oss Commercial Agreement is attached hereto as Exhibit 5. This amendment again re-

affirmed that, except as amended, the Bio-Oss Commercial Agreement was confirmed and

ratified, which includes the "long-term" language and the ability to terminate for convenience

only upon incurable breach or mutual consent.

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28. Simultaneously, the parties entered into a license agreement (the "Bio-Gide

License Agreement") (together with the Bio-Oss Commercial Agreement and the Bio-Oss

License Agreement, the "Bio-Oss and Bio-Gide Agreements"), which granted Luitpold patent

and trademark licenses for Bio-Gide in the United States, Canada and Mexico. A true and

correct copy of the Bio-Gide License Agreement is attached hereto as Exhibit 6. Like the Bio-

Oss License Agreement for the Bio -Oss Products, the Bio -Gide License Agreement required

Luitpold to pay, and Luitpold did pay, an up-front license fee of $6 million to Osteomedical.

29. Like the Bio-Oss License Agreement for the Bio-Oss Products, the Bio-Gide

License Agreement contained a royalty structure corresponding to the "long-term" language of

the Bio-Oss Commercial Agreement that now also applied to Bio-Gide products. Specifically,

the royalty is 10% of net sales during the term of the Bio-Gide patents, and then after the

expiration of the last-to-expire patents it drops to 8% for the remaining PROPRIETARY

ASSETS (i.e., the licensed Bio-Gide trademarks). Ex. 6 at §§ 5.01, 5.02.

30. Significantly, the Bio-Gide License Agreement did not give a unilateral right to

terminate for convenience; rather, the Bio-Gide License could only terminate as a result of

mutual consent by the parties or an incurable breach by one of the parties.

31. Article 11 in the Bio-Gide License Agreement, titled "TERMINATION,"

expressly states, in relevant part:

11.01 Subject to all of the provisions set forth in this AGREEMENT, this AGREEMENT may be terminated by mutual consent of the parties in writing at any time.

11.02 In the event that any of the terms or provisions hereof are [sic] incurably breached, the non-breaching party may immediately terminate this AGREEMENT by written notice.


The 1998 Letter Agreement

32. On February 11, 1998, the parties entered into a letter agreement (the "1998

Letter Agreement"), re-confirming that the Bio-Oss Commercial Agreement and the Bio-Oss

License Agreement (and the Bio-Gide License Agreement) were interdependent. A true and

correct copy of the 1998 Letter Agreement is attached hereto as Exhibit 7. The 1998 Letter

Agreement recited that the "rights granted to, and the obligations assumed by" the parties under

the Bio-Oss Commercial Agreement, the Bio-Oss License Agreement, and the Bio-Gide License

Agreement were "interdependent." Ex. 7 at p. 1.

33. The February 1998 Letter Agreement also provided that a breach or termination

of one of the agreements resulted in a breach or termination of the other agreement. Inasmuch as

there was no form of unilateral termination for convenience, the 1998 Letter Agreement only

applied to termination by mutual consent of the parties or an incurable breach by one of the

parties. By confirming that the Bio-Oss Commercial Agreement and the Bio-Oss License

Agreement are interdependent, the parties reinforced their expressions of intent that both were to

last past the expiration of the patents and for so long as the trademarks are valid and Luitpold

sells product under those marks, unless sooner terminated for cause or on mutual, not unilateral,

consent.

The Mucograft Agreements

34. In December 2002, Geistlich and Luitpold entered into a "Commercial

Agreement" for the distribution of another new Geistlich product called Mucograft (the

"Mucograft Commercial Agreement"). A true and correct copy of the Mucograft Commercial

Agreement is attached hereto as Exhibit 8. Mucograft is a "resorbable double layer collagen

membrane for tissue regeneration of mucosa after surgery" for "dental, periodontal, oral

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maxillofacial, dental implants and oral surgery purposes," and was intended by the parties to be

marketed as part of the same product suite as the Bio-Oss and Bio-Gide Products. Ex. 8 at §§

1.01, 1.09.

35. Simultaneous to the Mucograft Commercial Agreement, Luitpold and

Osteomedical entered into a License Agreement for Mucograft (the "Mucograft License

Agreement"). A true and correct copy of the Mucograft License Agreement is attached hereto as

Exhibit 9. The Mucograft License Agreement grants Luitpold exclusive and non-transferable

patent and trademark licenses for Mucograft and sets a royalty and fee structure for those

licenses. In consideration for this license, Luitpold paid Osteomedical an up-front license fee of

$6 million, and agreed to pay Osteomedical a royalty on net sales. Specifically, the royalty is

10% of net sales during the term of the patents, and then after the expiration of the last-to-expire

Mucograft patent, it drops to 8% for the remaining PROPRIETARY ASSETS (i.e., the licensed

Mucograft trademarks).

36. The Mucograft License Agreement — unlike the prior license agreements — was

granted for a term. "for a period of 17 years unless earlier terminated as provided herein or

extended by mutual written agreement of the parties," or in the event of an incurable breach. Ex.

9 at § 11.1.

37. In 2008, Luitpold and Geistlich entered into an Amendment to the Mucograft

Commercial Agreement (the "Mucograft Commercial Agreement Amendment"). A true and

correct copy of the Mucograft Commercial Agreement Amendment is attached hereto as Exhibit

10. The Mucograft Commercial Agreement Amendment added Japan as a covered territory,

deleted certain other territories, and imposed upon Geistlich the obligation to use its best efforts

to obtain registration of the Mucograft product in the United States, Japan and Canada.

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leungj

Highlight

Can we argue that 17 years represented when the Bios agreements were to stay in place for as well because it would not make sense to have different time periods?

Termination of the Bio-Oss and Bio-Gide Agreements

38. Despite a nearly 16-year relationship in which it shared in Luitpold's success

distributing the Bio-Oss and Bio-Gide Products, Geistlich arbitrarily decided, in bad faith, to

terminate the Bio-Oss and Bio-Gide Agreements, using a fig-leaf argument that it has th right of

unilateral termination while in fact trying to steal for itself all of the business in the Bio-Oss and

Bio-Gide Products that Luitpold invested substantial time, money, and effort to establish.

39. By letter dated September 13, 2010, Geistlich notified Luitpold that the

"Commercial Agreement, as amended, and the License Agreements, as amended, will be

terminated as of March 31, 2011" (the "Termination Letter"), listing the affected territories as:

the 'United States, Canada, Mexico, Central America, the Caribbean, and Japan. A true and

correct copy of the Termination Letter is attached hereto as Exhibit 11. Geistlich executives

have also informed Luitpold that the board of directors of Geistlich decided to terminate the Bio-

Oss and Bio-Gide Agreements. Geistlich subsequently agreed to toll the termination date to June

30, 2011, but has refused to withdraw the termination notice.

40. With neither a legal basis nor any other justification, the Termination Letter

contended that because the Bio-Oss and Bio-Gide Agreements were of an indefmite duration,

they were terminable by either party after a reasonable duration and upon reasonable notice. Ex.

11. The Termination Letter asserted that six months termination notice was reasonable notice

and that March 31, 2011 was a reasonable termination date, despite:

• The "long-term" language of the Bio-Oss and Bio-Gide Agreements;

• The express termination provisions of the Bio-Oss and Bio-Gide Agreements;

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• The "long-term" license royalty provisions in the Bio-Oss License Agreement and the Bio-Gide License Agreement which expressly continue past the expiration of the patents and for so long as the trademarks are valid and Luitpold sells product under those marks;

• The substantial loss to Luitpold of up-front license fees and other huge investments in the good will of the licensed patents and trademarks;

• The total loss to Luitpold of future profits on the products, estimated at well in excess of $100 million; and

• Geistlich's complete refusal to tender any compensation to Luitpold for these enormous losses.

41. Despite repeated efforts by Luitpold requesting Geistlich to withdraw its

termination notice, including negotiations during a "tolling agreement" that temporarily delayed

the terminations, Geistlich remained obstinate and determined to impose unjustified and

premature termination of the Bio-Oss and Bio-Gide Agreements. Geistlich's insistence on

termination brings its motives into focus; it seeks to usurp the time, money, and effort invested

by Luitpold in cultivating a successful enterprise for over 16 years, and to rob Luitpold of its

future sales of the product and its exclusive license of the patents and trademarks, which are

worth at least tens of millions of dollars. Geistlich has declared to Luitpold that Geistlich seeks

to terminate the Bio-Oss and Bio-Gide Agreements so that it can distribute the products itself

Indeed, Geistlich has already sought greater access to clinical and market information, and

developed relationships with key opinion leaders in the core territory, North America, and made

direct efforts to develop brand recognition for Geistlich as well.

42. In addition, on October 26, 2009, prior to receiving the termination notices from

Geistlich, Luitpold ordered product from Geistlich, for delivery by December 10, 2010, as it was

entitled to do under the Bio-Oss and Bio-Gide Agreements. Geistlich failed to deliver the

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product, in breach of those Agreements. Then, at a January 18, 2011 meeting among Geistlich

and Luitpold executives, Geistlich executives admitted that Geistlich was intentionally

withholding delivery of product to Luitpold — product that Luitpold has previously ordered under

the Bio-Oss and Bio-Gide Agreements, and which Geistlich is obligated to deliver under those

same agreements — unless and until Luitpold would agree to termination or modification of the

Bio-Oss and Bio-Gide Agreements. This intentional breach by Geistlich demonstrates that

Geistlich's intent is to drive Luitpold out of the market and steal its business, without regard for

its obligations under the long-term Bio-Oss and Bio-Gide Agreements.

43. The patents and trademarks that are the subject of the Bio-Oss Commercial

Agreement, Bio-Oss License Agreement, Bio-Gide License Agreement, Mucograft Commercial

Agreement and Mucograft License Agreement have not yet expired. The last of those patents

does not expire until April 2022, as follows: (a) U.S. Patent No. 5,417,975, for Bio-Oss, expires

May 23, 2012; (b) U.S. Patent No. 5,573,771, for Bio-Oss Collagen, expires November 12, 2013;

(c) U.S. Patent No. 5,837,278, for Bio-Gide, expires November 17, 2015; and (d) U.S. Patent No.

6,713,085, for Mucograft, expires April 24, 2022.

44. The trademark rights are independent of the patents and will not expire so long as

they are maintained and used in commerce.

Harm Caused by the Repudiation

45. In order to initiate the long-term relationship with Geistlich and Osteomedical,

and to obtain licenses for the Bio-Oss and Bio-Gide Products, Luitpold paid Geistlich and

Osteomedical $26 million over the first four years of the relationship.

46. From September 1994 to September 2010, Luitpold also spent over $60 million

dollars in an effort to build up Osteohealth's association with the licensed products, including but

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not limited to developing a larger sales and management team for the products, adding new

partners to the product distribution network, expanding the product presence at major trade

shows, updating the product marketing materials with new clinical information, conducting

training sessions for the sales team on this new clinical information, securing and maintaining

sponsorships, and cultivating key opinion leader relationships. In addition, Luitpold has made

royalty payments to Geistlich of more than $28 million, license payments of $35 million, and has

incurred over $2 million in research and development expenses relating to the products.

47. Geistlich's unilateral termination of the parties' relationship is a bad-faith attempt

to steal away valuable rights and interests. The termination would harm a substantial portion of

Luitpold's business, result in the sudden loss of more than 75% of Osteohealth's business by

revenue, scores of employees would have to be let go, and Osteohealth's relationships with

vendors and trade associations would be decimated. The termination of the Bio-Oss and Bio-

Gide Agreements would thereby destroy Luitpold's business in Mucograft, and effectively

terminate Luitpold's rights under the Mucograft Commercial Agreement and the Mucograft

License Agreement.

48. The availability of the Bio-Oss and Bio-Gide products to Osteohealth attracts

customers who make purchases of the other, non-Geistlich, goods offered by Osteohealth.

Additionally, because Osteohealth is currently expanding its product offerings beyond Geistlich

products, the termination sends a false and damaging statement to the market that Osteohealth is

an unreliable distributor, and significantly impairs Osteohealth's ability to maintain its existing

or obtain additional customers for its non-Geistlich products. Given the sensitivities inherent in

any market for specialty surgical devices and products, this would be a severe and incalculable

blow to Osteohealth and its goodwill in the relevant industry.

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49. In addition, Bio-Oss, Bio-Gide and the related products at issue in this litigation

are unique in the sense that Geistlich is the sole source of those products in the market. The

products' uniqueness is confirmed by the fact that they are patented and/or trademarked, as well

as by the provisions of the parties' agreements that protect the confidentiality of the

"Manufacturing Details" for the products.

.50. In short, the availability of the Bio-Oss and Bio-Gide products are essential to the

life of Osteohealth's business.

51. Accordingly, the termination would cause immediate, substantial, and

immeasurable harm to Osteohealth.

52. In addition, the termination would result in the loss of a predictable and reliable

stream of profits to Luitpold from its sales of the Geistlich products and would turn those sales

and profits over to Geistlich or its licensee. But for the termination of the license, Luitpold

would continue to have 100% of the market in the "TERRITORY".

Geistlich's Own, Improper Use of the Bio-Oss and Bio-Gide Marks

53. Geistlich has also been advertising, both on its United States-accessible website

and in trade journals distributed in the United States, products it calls "Geistlich Bio-Oss" and

"Geistlich Bio-Gide." A true and correct copy of a sampling of the advertisements contained in

the journals are annexed hereto as Ex. 12.

54. Such use breaches the Bio-Oss License Agreement and the Bio-Gide License

Agreement, which each grant to Luitpold the exclusive right to use the "Bio-Oss" and "Bio-

Gide" marks.

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55. As a result of Geistlich's breaches the Bio-Oss License Agreement and the Bio-

Gide License Agreement, Luitpold has suffered damages, in an amount to be determined at trial.

Geistlich's Failure to Bring New Products to Luitpold's Attention

56. The Bio-Oss Commercial Agreement, Bio-Oss License Agreement and the Bio-

Gide License Agreement each require that "In the event that GEISTLICH develops or otherwise

obtains rights in NEW PRODUCT which may have a viable commercial use for the FIELD OF

USE, GEISTLICH agrees to undertake discussions with BUYER to evaluate whether

GEISTLICH wishes to enter into negotiations with BUYER for BUYER to acquire from

GEISTLICH the rights to sell, distribute, market and use the NEW PRODUCT in the

TERRITORY, for the FIELD OF USE." Exs. 1, 2 and 6 at § 8.01.

57. The defmition of "New Product" is broad, and includes: "products in the FIELD

OF USE other than PRODUCT or IMPROVEMENTS." Exs. 1, 2 and 6 at § 1.03, 1.07 and 1.07,

respectively.

58. Upon information and belief, Geistlich has developed or otherwise obtained rights

in products that fall within the defmition of NEW PRODUCT contained in the Bio-Oss License

Agreement, Bio-Gide License Agreement and the Bio-Oss Commercial Agreement, but Geistlich

has not undertaken any discussions with Luitpold in connection with evaluating whether

GEISTLICH wishes to enter into negotiations with Luitpold for Luitpold to acquire from

GEISTLICH the rights to sell, distribute, market and use the NEW PRODUCT in the

TERRITORY, for the FIELD OF USE, as required by the Bio-Oss and Bio-Gide Agreements.

For example, upon information and belief, a Geistlich affiliate filed on August 16, 2010 — prior

to Geistlich's termination notice to Luitpold — a United States trademark application Ser. No.

85108105 for the mark GEISTLICH BIO-OSS PEN for "bone implant material of natural origin"

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and "bone implant material"; and on July 9, 2010, the same Geistlich affiliate filed a U.S.

trademark application for the mark GEISTLICH BIO-GRAFT, Ser. No. 85081419 for "bone

implant materials." Further on information and belief, Geistlich or a Geistlich affiliate has filed

trademark registrations for the marks GEISTLICH BIO-OSS PEN and GEISTLICH BIO-

GRAFT in Canada also for "bone implant materials."

59. Upon information and belief, Bio-Oss Pen is a syringe pre-filled with Bio-Oss.

This product fits squarely within the definition of "New Product" contained in the Bio-Oss

License Agreement, Bio-Gide License Agreement and the Bio-Oss Commercial Agreement. For

years, Luitpold has been inquiring of Geistlich about the availability and development of this

product, yet Geistlich, to Luitpold's knowledge, has never made the product commercially

available. At their global marketing meetings in 2009 and 2010, Geistlich announced Bio-Oss

Pen on their development timeline, but has never provided Luitpold with any formal information

or updates concerning this New Product, as required under the parties' agreements.

60. In addition, Luitpold learned at trade meetings and through industry publications

that Geistlich had a slowly resorbing Bio-Gide membrane in development — initially referred to

by Geistlich as Bio-Gide Retard, and later by its VN number — which also falls squarely within

the definition of "New Product" contained in the Bio-Oss License Agreement, Bio-Gide License

Agreement and the Bio-Oss Commercial Agreement. A true and correct copy of an excerpt from

one of the industry publications referencing Bio-Gide Retard is annexed hereto as Exhibit 13. In

breach of its contractual obligation, Geistlich never undertook any discussions with Luitpold in

connection with evaluating whether Geistlich wishes to enter into negotiations with Luitpold for

Luitpold to acquire from Geistlich the rights to sell, distribute, market and use this New Product

in the Territory, for the Field of Use. Upon information and belief, Geistlich ultimately decided

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not to launch this New Product, without ever asking Luitpold whether it had an interest in

launching the product in Luitpold's territories.

61. Geistlich's secretive development of product that falls within the definition of

"New Product," taken together with its own improper use of the BIO-OSS and BIO-GIDE marks

and its subsequent premature termination of the Bio-Oss and Bio-Gide Agreements demonstrates

that Geistlich's longstanding intent has been to deprive Luitpold of the rights to which it was

entitled under the Bio-Oss and Bio-Gide Agreements and firmly establishes Geistlich's true

intent to terminate the entire relationship between them.

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COUNT I (Declaratory Relief)

62. Luitpold repeats and re-alleges the allegations contained in Paragraphs 1 through

61 as if fully pleaded herein.

63. Luitpold seeks a declaration pursuant to 28 U.S.C. § 2201 of the respective rights

and duties of the parties in this matter.

64. A valid case or controversy exists sufficient for this court to declare the rights and

remedies of the parties in that Geistlich has failed and refused to perform its supply obligations

under the Bio-Oss Commercial Agreement during the term of the agreement, and has improperly

asserted that it has the right to unilaterally terminate the Bio-Oss Commercial Agreement, the

Bio-Oss License Agreement, and the Bio-Gide License Agreement as of June 30, 2011, and that

its letter dated September 13, 2010 provided reasonable notice of such termination.

65. By its termination notice and its actions, Geistlich has declared its intention not to

honor any of the terms of the Bio-Oss Commercial Agreement, including §§ 12.02 and 12.03.

66. Section 12.02 of the Bio-Oss Commercial Agreement provides as follows: "In an

effort to reduce the possibility of non-performance on the part of Geistlich, Geistlich agrees that

Geistlich shall maintain Manufacturing Details for the production of the Product in escrow with a

mutually agreeable third party escrow agent, according to the escrow agreement attached hereto

as Appendix F. The "Manufacturing Details" shall be sufficient to enable the design,

engineering and development of facilities to meet Buyer's requirements under this Commercial

Agreement."

67. Section 12.03 of the Bio-Oss Commercial Agreement provides, in part, that "in

the event that Geistlich, for a period of one hundred twenty (120) days after receipt of any order

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from Buyer, shall fail, refuse or be unable for any reason, including reasons of Force Majeure, to

reasonably and without material interruption of Buyer's sales, perform its supply obligations

Geistlich shall at its option either (i) remedy its failure to perform its supply obligations within

thirty (30) days to the reasonable satisfaction of the Buyer, or (ii) secure an alternative supplier

who is ready, willing and able to supply all of Buyer's requirements hereunder, or (iii) Geistlich

and Buyer will mutually agree to appoint either an independent third party or Buyer to synthesize

or manufacture the Product. In the event that alternative (iii) is selected, Geistlich agrees to the

release of the Manufacturing Details held by the escrow agent in accordance with the terms of

the escrow agreement attached as Appendix F and to grant to Buyer or an independent third

party, a limited license to synthesize and manufacture the Product for Buyer, under obligations to

maintain the confidentiality of, and to only use, Manufacturing Details to perform the obligations

of Geistlich under and within the terms of this Commercial Agreement. If Buyer is the licensee

under such limited license, the license shall be royalty free."

68. On October 26, 2009, Luitpold placed an order for Bio-Oss and Bio-Gide product

from Geistlich, for delivery by December 10, 2010. Geistlich has failed and refused to fill the

purchase order according to its terms. At a January 18, 2011 meeting among Geistlich and

Luitpold executives, Geistlich executives admitted that Geistlich was intentionally withholding

delivery of product to Luitpold — product that Luipold has previously ordered under the Bio-Oss

and Bio-Gide Agreements, and which Geistlich is obligated to deliver under those game

agreements — unless and until Luitpold would agree to termination or modification of the Bio-

Oss and Bio-Gide Agreements. Again, on January 31, 2011, Geistlich refused to fulfill the

purchase order.

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69. Geistlich has neither remedied its failure to perform its supply obligations within

thirty (30) days to the reasonable satisfaction of the Buyer, nor secured an alternative supplier

who is ready, willing and able to supply all of Buyer's requirements hereunder.

70. Luitpold has the requisite standing to request this declaration in that Geistlich has

informed Luitpold of its intent to terminate the Bio-Oss Commercial Agreement, the Bio-Oss

License Agreement and the Bio-Gide License Agreement as of June 30, 2011, and has failed and

refused to perform its supply obligations under the Bio-Oss Commercial Agreement.

71. This controversy is ripe for determination at this time because the Bio-Oss

Commercial Agreement, the Bio-Oss License Agreement and the Bio-Gide License Agreement

are still in effect, Geistlich has refused and failed to perform under the Bio-Oss Commercial

Agreement, and Geistlich's improper termination of those Agreements and its failure to honor its

obligations under the Bio-Oss Commercial Agreement will cause substantial, immediate and

immeasurable harm to Luitpold.

72. By reason of the foregoing, Luitpold is entitled to a declaration that: (a)

Geistlich's notice purporting to terminate the Bio-Oss Commercial Agreement, the Bio-Oss

License Agreement and the Bio-Gide License Agreement as of March 31, 2011 (as later tolled to

June 30, 2011), is invalid and of no effect; (b) Geislich may not lawfully refuse to supply the

product covered by the Bio-Oss Commercial Agreement, Bio-Oss License Agreement and Bio-

Gide License Agreement; and (c) in the event that Geistlich fails, refuses, or is unable for any

reason, including reasons of force majeure, to reasonably and without material interruption of

Luitpold's sales, perform its supply obligations to Luitpold, Geistlich is contractually required to

release the Manufacturing Details to Luitpold, or to an alternative supplier who is ready, willing

and able to supply all of Luitpold's requirements under the Bio-Oss Commercial Agreement.

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COUNT II (Breach of the Bio-Oss Commercial Agreement and the Bio-Oss License Agreement —

Repudiation)



74. The Bio-Oss Commercial Agreement and the Bio-Oss License Agreement

constitute valid and binding contracts between Luitpold and Geistlich.

75. Luitpold has in all material respects and at all relevant times satisfied its

obligations under the Bio-Oss Commercial Agreement and the Bio-Oss License Agreement.

76. Geistlich, however, has repudiated and anticipatorily breached the Bio-Oss

Commercial Agreement and the Bio-Oss License Agreement by, among other things, terminating

them as of June 30, 2011, in the absence of the mutual consent of the parties or an incurable

breach by one of the parties, causing Luitpold to suffer immeasurable damages. Geistlich's

premature termination of the Bio-Oss Commercial Agreement and the Bio-Oss License

Agreement in their entireties evinced Geistlich's intent not to further perform under the contract

and constituted an absolute, unequivocal repudiation of the contract.

77. At the time of Geistlich's repudiation of the Bio-Oss Commercial Agreement and

the Bio-Oss License Agreement, Luitpold was ready, willing, and able to perform its obligations

under the Bio-Oss Commercial Agreement and the Bio-Oss License Agreement.

78. Luitpold remains willing and able to perform its remaining obligations under the

Bio-Oss Commercial Agreement and the Bio-Oss License Agreement, and is without an

adequate remedy at law as a result of Geistlich's breaches of those Agreements.

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79. Geistlich is able to perform its obligations under the Bio-Oss Commercial

Agreement and the Bio-Oss License Agreement.

80. Luitpold's only adequate remedy is an equitable decree of specific performance

and Luitpold therefore seeks specific performance of Geistlich's duties and obligations under the

Bio-Oss Commercial Agreement and the Bio-Oss License Agreement.

81. Alternatively, as a direct and proximate result of the conduct of Geistlich,

Luitpold has suffered, and is entitled to recover from Geistlich, damages caused by Geistlich's

repudiation of the exclusive license of trademark and patent rights, in an amount to be

determined at trial.

COUNT III (Breach of the Bio-Oss Commercial Agreement — Failure to Obtain Japanese Regulatory

Approval)



83. The Bio-Oss Commercial Agreement constitutes a valid and binding contract

between Luitpold and Geistlich.


obligations under the Bio-Oss Commercial Agreement.

85. Geistlich breached its agreement to "use its best efforts to obtain registration and

approval of any PRODUCT and IMPROVEMENTS subject to this COMMERCIAL

AGREEMENT from the Pharmaceutical and Medical Device Agency of Japan ("PDMA")" as

required under the Bio-Oss Commercial Agreement, as amended by the parties in 2008. A true

and correct copy of the 2008 amendment to the Bio-Oss Commercial Agreement is annexed

hereto as Exhibit 14.

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86. Upon information and belief, since June 2008, Geistlich has not obtained

registration of any of its products from the PDMA. Unbeknownst to Luitpold, Geistlich

preliminarily filed "Geistlich Bio-Oss" for approval in 2009, but never filed Bio-Oss for

approval in 2009. When questioned in July 2010 by Luitpold about the status of Geistlich's

filing of Bio-Oss, Geistlich represented that it was making an official submission in the "next

days." Instead, two months later, Geistlich sent to Luitpold the Termination Letter. Upon

information and belief, Geistlich's plan was to allow and encourage Luitpold to expend time and

money under the belief that Luitpold would reap the benefits it contracted for, while Geistlich

delayed complying with its obligations under the Bio-Oss Commercial Agreement long enough

to put itself in a position to misappropriate for itself the rights to market Bio-Oss in Japan. None

of the other products - Bio-Oss Collagen, Bio-Gide, or Mucograft - have, on information and

belief, been submitted for approval to PDMA since June 2008. Upon information and belief,

Geistlich has created further obstacles to obtaining product registration with PDMA by also

selling Bio-Oss Products directly to the Japanese market through its own Japanese distribution

partner.

87. As a result of Geistlich's failure to obtain registration of the products in Japan,

Luitpold has suffered damages.

88. By reason of the foregoing, Luitpold is entitled to recover damages from Geistlich

in an amount to be determined at trial.

COUNT IV (Breach of the Bio-Oss License Agreement —

Use of the Licensed Trademarks in Violation of the Exclusive License Granted to Luitpold)



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90. The Bio-Oss License Agreement constitutes a valid and binding contract between

Luitpold and Osteomedical.


obligations under the Bio-Oss License Agreement.

92. Geistlich has been advertising, both on its United States-accessible website and in

trade journals distributed in the United States, a product it calls "Geistlich Bio-Oss.". Such use

breaches the Bio-Oss License Agreement, which grants to Luitpold the exclusive right to use the

BIO-OSS mark, and has caused Luitpold to suffer damages and immeasurable harm to its

goodwill.

93. In addition, Geistlich or its affiliate filed a new trademark application for

GEISTLICH BIO-OSS in the United States and other countries even prior to the time it sent its

Termination Letter to Luitpold in September 2010.



COUNT V (Breach of the Bio-Gide License Agreement — Repudiation)



96. The Bio-Gide License Agreement constitutes a valid and binding contract

between Luitpold and Osteomedical.


obligations under the Bio-Gide License Agreement.

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98. Geistlich, however, has breached the Bio-Gide License Agreement by, among

other things, terminating it as of June 30, 2011, in the absence of the mutual consent by the

parties or an incurable breach by one of the parties, causing Luitpold to suffer damages.

Geistlich's premature termination of the Bio-Gide License Agreement in its entirety evinced

Geistlich's intent not to further perform under the contract and constituted an absolute,

unequivocal repudiation of the contract.

99. At the time of Geistlich's repudiation of the Bio-Gide License Agreement,

Luitpold was ready, willing, and able to perform its obligations under the Bio-Gide License

Agreement.


Bio-Gide License Agreement, and is without an adequate remedy at law as a result of Geistlich's

breaches of the Bio-Gide License Agreement.

101. Geistlich is able to perform its obligations under the Bio-Gide License

Agreement.



Bio -Gide License Agreement.





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COUNT VI (Breach of the Bio-Gide License Agreement —

Use of the Licensed Trademarks in Violation of the Exclusive License Granted to Luitpold)



105. The Bio-Gide License Agreement constitutes a valid and binding contract



obligations under the Bio-Gide License Agreement.

107. Geistlich has breached the Bio-Gide License Agreement by advertising, both on

its United States-accessible website and in trade journals distributed in the United States, a

product it calls "Geistlich Bio-Gide." Such use breaches the Bio-Gide License Agreement,

which grants to Luitpold the exclusive right to use the BIO-GIDE mark, and has caused Luitpold

to suffer damages and immeasurable harm to its goodwill.

108. In addition, Geistlich or its affiliate filed a new trademark application for

GEISTLICH BIO-GIDE in the United States and other countries even prior to the time it sent its

Termination Letter to Luitpold in September 2010.



COUNT VII (Pre-Judgment Attachment of the Patents and Trademarks)



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111. Pursuant to CPLR § 6201(1), Luitpold is entitled to a pre judgment attachment of

the patents and trademarks because: (a) Geistlich is not registered to do business in New York;

(b) Luitpold has stated valid causes of action against Geistlich for breaches of the Bio-Oss

Commercial Agreement, Bio-Oss License Agreement, Bio-Gide License Agreement, -Mucograft

Commercial Agreement, Mucograft License Agreement; and (c) it is probable that the Luitpold

will succeed on the merits of its claims.

112. Luitpold has an interest in the patents and trademarks under the Bio-Oss License

Agreement, the Bio-Gide License Agreement, the Bio-Oss Commercial Agreement, the

Mucograft Commercial Agreement, and the Mucograft License Agreement, which interest has

been wrongfully terminated and repudiated by Geistlich. These interests in the patents and

trademarks constitute debt or property against which a money judgment may be enforced as

provided in CPLR § 5201. Luitpold also claims damages against Geistlich.

113. Luitpold has satisfied all of the requirements under the Article 62 of the CPLR,

including 6212(a), for obtaining a pre-judgment attachment of the patents and trademarks.

114. By reason of the foregoing, Luitpold is entitled to a pre-judgment attachment of

the patents and trademarks pursuant to Federal Rule of Civil Procedure 64 pending full

determination of this controversy.

COUNT VIII (Breach of the Mucograft Commercial Agreement —

Failure to Obtain Regulatory Approval and Delays in Commercializing Mucograft)



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116. The Mucograft Commercial Agreement constitutes a valid and binding contract


117. The Mucograft Commercial Agreement, as amended in 2008, provides Luitpold

with distribution and sales rights for Mucograft in the United States, Canada, Japan, Mexico,

Central America, and the Caribbean.

118. The Mucograft Commercial Agreement also provides that the parties

contemplated a relationship "over a long period of time," that Geistlich is "willing to supply the

PRODUCT to [Luitpold] on a long-term basis." Ex. 8 at p. 1 (emphasis supplied).

119. The Mucograft Commercial Agreement may only be terminated upon a failure by

Luitpold to meet certain sales projections set forth in the Agreement. Ex. 8 at Art. V.

120. Only now, as Geistlich attempts to steal away the Luitpold business in dental

health products, has Geistlich begun to attempt to "roll out" the Mucograft product. In so doing,

Geistlich has made numerous attempts to secure unusual and lengthy meetings with Luitpold

employees, ostensibly in order to discuss Mucograft marketing but obviously (at least to

Luitpold) aimed at making it possible to hire Luitpold's people to continue the business of

Luitpold's Osteohealth division (that markets dental health products) after Geistlich steals that

business away.

121. Upon information and belief, Geistlich failed to submit Mucograft for approval in

Canada or Japan as it agreed to do under the 2008 Mucograft Commercial Agreement

Amendment.

122. In the Mucograft Commercial Agreement, "Geistlich represents that it has made

application to obtain Canadian Authority registration and approval for the product as a medical

device and shall use its best efforts to obtain and maintain such Canadian authority registration

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and approval for the product." Ex. 8 at 10.01 (emphasis supplied). However, as recently as

December 2010, Geistlich had not yet submitted Mucograft for approval in Canada, and Luitpold

had not received updates from Geistlich concerning the status of the submissions. Only after

Luitpold questioned Geistlich about this status in December 2010 did Geistlich report to Luitpold

that the submission to Canadian authorities had not yet been made, and that, once the submission

was made, approval was unlikely to occur before October of 2011. Luitpold has not been able to

exercise its contractual rights to Mucograft in any market other than the United States because of

Geistlich's delays.

123. Geistlich also delayed in making Mucograft commercially available in the United

States. For example, Geistlich failed to provide Mucograft to Luitpold, failed to notify Luitpold

when Mucograft was available to order, refused to provide clinical support to Luitpold

concerning Mucograft even though it knew that such support was necessary in order to make

Mucograft commercially available in the United States, and, without any basis in the parties'

contracts, refused to provide Mucograft to Luitpold or make Mucograft commercially available

to Luitpold unless and until Luitpold gave Geistlich authority to dictate the prices that Luitpold

could and could not charge in its market for Mucograft. As a result of these and other refusals

and delays, Luitpold's ability to market and sell Mucograft in the United States was significantly

delayed, causing Luitpold to suffer harm.

124. In addition, Geistlich failed to keep Luitpold informed of its progress in obtaining

registration in Japan on a periodic basis, when significant developments occurred but at least

once by the end of each calendar quarter, in violation of the 2008 Mucograft Commercial

Agreement Amendment. Ex. 10 at 10.06.

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125. Geistlich further breached the Mucograft Commercial Agreement by failing to

"utilize the PROPRIETARY ASSETS to aid BUYER in developing a market in the

TERRITORY and in distributing and selling PRODUCT." Ex. 10 at 2.01.

126. The obligations between the parties under the Mucograft Commercial Agreement

and the Mucograft License Agreement are continuing in nature. Geistlich's breaches of the

Mucograft Commercial Agreement continue to the present.

127. As recently as July 2010, Geistlich, having failed to provide Mucograft to

Luitpold as required under the Mucograft Commercial Agreement, continued its pattern of delay.

Luitpold submitted a purchase order for Mucograft to Geistlich on April 6, 2010, which was

accepted by Geistlich. However, Geistlich failed to provide the product to Luitpold, and instead

delayed by, inter alia, asking Luitpold in July 2010 to consider a higher pricing model, and,

despite having entered into the Mucograft Commercial Agreement years after the Bio-Gide

License Agreement was already in place, purporting to be concerned that Mucograft would

cannibalize Bio-Gide sales in the market. While Luitpold suffered — and continues to suffer —

the consequences of Geistlich's delay, Geistlich has for years retained the benefit of Luitpold's

$6 million payment and the interest it bore, and has, upon information and belief, improperly

used the time to lay the groundwork for misappropriating for itself Luitpold's rights in

Mucograft.


obligations under the Mucograft Commercial Agreement.

129. Geistlich, through its actions alleged in Paragraphs 1-128 herein, has therefore

breached the Mucograft Commercial Agreement.

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130. In the Mucograft Commercial Agreement, Geistlich agrees that "GEISTLICH will

indemnify and hold BUYER harmless against any and all liability, damage, loss, cost or expense

arising out of GEISTLICH's conduct..." Ex. 8 at 13.02.



COUNT IX (Breach of the Mucograft Commercial Agreement and the Mucograft License Agreement —

Repudiation)

132. Luitpold repeats and realleges the allegations contained in Paragraphs 1 through


133. Geistlich has, through its words and actions, made clear its intent not to further

perform under the Mucograft Commercial Agreement and the Mucograft License Agreement,

thereby absolutely and unequivocally repudiating those contracts.

134. By terminating the Bio-Oss and Bio-Gide Agreements, Geistlich would destroy

Luitpold's ability to market Mucograft. Mucograft was intended to be included as part of the

same product suite as the other products, so, as Geistlich knows, the termination of the Bio-Oss

and Bio-Gide Agreements makes it impossible to achieve the intent of the Mucograft agreement

and deprives Luitpold of its valuable rights to Mucograft. In any event, the termination of the

Bio-Oss and Bio-Gide agreements will effectively gut Osteohealth, resulting in the loss of 75% of

its revenues and scores of employees, thereby making it impossible for Osteohealth to continue in

business and terminating the Mucograft Commercial and License Agreements. Thus, the

termination of the Bio-Oss and Bio-Gide Agreements for the other products constitutes a

repudiation of the Mucograft Commercial Agreement and the Mucograft License Agreement.

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135. In addition, Geistlich has: (a) failed to supply the Mucograft product to Luitpold,

even though Luitpold submitted and Geistlich accepted purchase orders for Mucograft; (b) failed

to seek Japanese or Canadian regulatory approval for Mucograft until after it terminated the

parties' agreements; and (c) employed a pattern of delaying its performance under the Mucograft

Commercial Agreement and the Mucograft License Agreement. Geistlich has also made

overtures to purchase Osteohealth, and/or secure the services of Osteohealth's employees. It is

commercially unreasonable for Geistlich not to know that these actions would render Luitpold's

performance under the Mucograft Commercial and License Agreements impossible, thereby

effectively terminating those agreements so that Geistlich itself can take advantage of the benefits

thereunder.


obligations under the Mucograft Commercial Agreement and the Mucograft License Agreement.

137. Geistlich, through its actions alleged in Paragraphs 1-136 herein, has therefore

breached the Mucograft Commercial Agreement and the Mucograft License Agreement.

138. At the time of Geistlich's repudiation of the Mucograft Commercial Agreement

and the Mucograft License Agreement, Luitpold was ready, willing, and able to perform its

obligations under the Mucograft Commercial Agreement and the Mucograft License Agreement.


Mucograft Commercial Agreement and the Mucograft License Agreement, and is without an

adequate remedy at law as a result of Geistlich's breaches of those Agreements.

140. Geistlich is able to perform its obligations under the Mucograft Commercial

Agreement and the Mucograft License Agreement.

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Mucograft Commercial Agreement and the Mucograft License Agreement.





JURY DEMAND

Plaintiff demands a trial by jury on all causes of action so triable.

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Dated: New York, New York February 1, 2011

ARENT FOX LLP 1675 Broadway New York, NY 10019 Telephone: (212) 484-3900 Facsimile: (212) 484-3990 Attorneys for Plaintiff Luitpold Pharmac Inc.

By: H T. arter (HC-1844) Jennifer L. Bougher (JB-6245)

KANE KESSLER, P.C. Jeffrey H. Daichman, Esq. Dana M. Susman, Esq. 1350 Avenue of the Americas New York, New York 10019 Telephone: (212) 541-6222 Facsimile: (212) 245-3009 Of Counsel for Plaintiff Luio3old Pharmaceuticals, Inc.

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Luitpold Complaint

Documents

Transcript of Luitpold Complaint