EXHIBIT 10.21
INTERFERENCE SETTLEMENT AGREEMENT
(BETWEEN HYSEQ, INC. AND AFFYMETRIX, INC.)
This Settlement of Interference Agreement is made as of this 24th day of
October, 2001 (the "Effective Date") by and among Hyseq, Inc., a Nevada
corporation (herein "Hyseq"), having a place of business in Sunnyvale, CA, and
Affymetrix, Inc., a Delaware corporation (herein "Affymetrix"), having a place
of business in Santa Clara, California.
WHEREAS, the United States Patent and Trademark Office ("PTO") has
declared Interference No. 104,552 between US Patent Nos. 5,795,716 and
5,974,164 of Affymetrix, and Application No. 09/358,875 of Hyseq, in
order to determine priority between the parties with respect to
inventions; and
WHEREAS, Hyseq and Affymetrix have been involved in litigation,
opposition, interference, attempted interference and other adverse
proceedings involving their respective patents and patent applications
in various countries; referred to herein as "Litigation Proceedings";
and
WHEREAS, Hyseq and Affymetrix have resolved and settled the Litigation
Proceedings on an amicable basis and have entered into a Settlement
Agreement, which agreement includes a provision that the parties will
enter into a Interference Settlement Agreement to resolve Interference
No. 104,552.
Hyseq and Affymetrix do hereby agree as follows:
1. PRELIMINARY MOTIONS
1.1 The parties agree that no preliminary motions or
preliminary statements will be filed in this interference.
2. TERMINATION OF INTERFERENCE
2.1 On or before November 15, 2001 Hyseq, through its
attorneys, shall file an abandonment of contest in
Interference No. 104,552.
3. FUTURE INTERFERENCES
3.1 Affymetrix agrees not to actively seek [***] interferences
with [***].
3.2 Hyseq agrees not to actively seek [***] interferences with
[***].
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
3.3 The parties are [***].
4. FILING OF AGREEMENT
4.1 Promptly after this agreement is executed by both parties
Affymetrix will file a copy of this Interference
Settlement Agreement and all collateral agreements with
the PTO as required by 35 U.S.C. Section 135(c) and 37
C.F.R. Section 1.666(b), requesting that the copies of
this Interference Settlement Agreement and any collateral
agreement filed therewith be held separate from the file
of the interference, and made available only to Government
agencies upon written request, or to any person upon
petition and showing of good cause. In the event that such
a written request is made or such a petition is filed, it
is respectfully requested that the persons identified
below be notified before such request or petition is
granted:
Xxxxxx X. Xxxxxxx, Esq. Xxxxxxx X. Xxxxxx
Xxxxxxxx and Xxxxxxxx and Crew LLP Xxxxxxxx, Gerstein & Borun
Two Embarcadero Center, 8th Floor 6300 Sears Tower
8th Floor 000 Xxxxx Xxxxxx Xxxxx
Xxx Xxxxxxxxx, XX 00000-0000 Xxxxxxx, XX 00000-0000
Phone: (000) 000-0000 Phone: (000) 000-0000
Fax: (000) 000-0000 Fax: (000) 000-0000
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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IN WITNESS WHEREOF, the parties have caused this Interference Settlement
Agreement to be executed by their authorized officials.
AGREED TO:
Hyseq, Inc.
By: /s/ Xxx Love
------------------------------------
Xxx Love
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Printed Name
President and Chief Executive Officer
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Title
October 24, 2001
----------------------------------------
Date
Affymetrix, Inc.
By: /s/ Xxxxxxx X. Xxxxxxxxx
-------------------------------------
Xxxxxxx X. Xxxxxxxxx
----------------------------------------
Printed Name
Executive Vice President and General
Counsel
----------------------------------------
Title
October 24, 2001
----------------------------------------
Date
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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