SOFTWARE LICENSE AGREEMENT
This SOFTWARE LICENSE AGREEMENT (the "Agreement") is made and entered
into effective as of the 31st day of January, 1999 (the "Effective Date"), by
and between AXYS PHARMACEUTICALS, INC., a Delaware corporation having a
principal place of business at 000 Xxxxxxx Xxx, Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx
00000 ("Axys"), and PHARMACEUTICAL PRODUCT DEVELOPMENT, INC., a North Carolina
corporation having a place of business at 0000 00xx Xxxxxx Xxxxxxxxx,
Xxxxxxxxxx, Xxxxx Xxxxxxxx 00000 ("Licensee"). Axys and Licensee may be referred
to herein individually as a "Party" and collectively as the "Parties."
RECITALS
WHEREAS, Sequana Therapeutics, Inc., as a wholly-owned subsidiary of
Axys Pharmaceuticals, Inc., has developed certain software and data relating to
the sequencing and study of genes with applications in the field of
Pharmacogenomics; and
WHEREAS, Axys has licensed (with right of sublicense) all of the
intellectual property Controlled by Sequana Therapeutics, Inc., including
without limitation rights in the Axys Software (as defined below); and
WHEREAS, Licensee desires to obtain certain license rights to such
software and database for use in the field of Pharmacogenomics and Axys is
willing to grant such rights upon the terms and conditions set forth herein.
NOW, THEREFORE, the parties hereby agree as follows:
AGREEMENT
1. DEFINITIONS.
1.1 "AXYS DERIVATIVES" means Derivative Works of the Axys Software or
Database created by or for Axys including, without limitation, bug fixes, error
corrections, new developments and improvements with respect thereto, but
specifically excluding any Licensee Derivatives. For clarity, the parties
acknowledge that, unless otherwise agreed in writing by the parties, any
software code written by Axys for Licensee pursuant to a software development
agreement between Axys and the Licensee shall not be deemed to be included
within the meaning of the term "Axys Derivatives" and shall not be subject to
this Agreement.
1.2 "AXYS SOFTWARE" means the software Controlled by Axys which is set
forth in Exhibit 1.3 including, without limitation, the Gene Trials Software,
LIMS Software, Target Validation System V.1 and Target Validation System V.2.
1.3 "CONFIDENTIAL INFORMATION" means any and all proprietary and
confidential information of either Party, whether technical or non-technical,
including patent, trade secret, and proprietary information, techniques,
sketches, drawings, models, inventions, know-how, processes, apparatus,
equipment, algorithms, software programs, software source documents, and
formulae related to the current, future and proposed products and services, and
includes, without limitation, each Party's respective information concerning
research, experimental work, development, design details and specifications,
engineering, financial information, procurement requirements, purchasing,
manufacturing, customer lists, business forecasts, sales and merchandising, and
marketing plans and information, whether in oral, written, graphic or electronic
form. Notwithstanding the foregoing, the Axys Software and Database shall be
deemed the
Confidential Information of Axys. In addition, Axys Derivatives shall be deemed
the Confidential Information of Axys and Licensee Derivatives shall be deemed
the Confidential Information of Licensee.
1.4 "CONTROLLED" means, with respect to any material, information or
intellectual property right, that Axys owns, has a license to or otherwise has
lawful access to such material, information or intellectual property right, and
has the ability to grant to PPGx access, a license, or a sublicense to such
material, information or intellectual property right as provided for in the
Agreement without violating an agreement with a Third Party as of the Effective
Date.
1.5 "DATABASE" means (i) the compilation of data and other information
contained in Axys' proprietary Allele Frequency Database as of the date of the
initial delivery (as set forth in Section 5.1 (Initial Delivery)) including,
without limitation, genetic and associated data, including sequences, pertaining
to single nucleotide polymorphisms and medical and general demographic data on
reference populations, and (ii) raw uncompiled data collected, as of the date of
the initial delivery (as set forth in Section 5.1 (Initial Delivery)), in
connection with the compilation of data comprising such Allele Frequency
Database, whether collected by questionnaire or otherwise. For clarification,
"Database" does not include any Axys Software or Third Party Software. The
Database shall include, without limitation, the polymorphisms listed in the
schedules delivered to Licensee by Axys by confidential letters dated January 26
and 28, 1999.
1.6 "DERIVATIVE WORK" shall mean a work which is based on one or more
pre-existing software programs or other works of authorship, such as a revision,
enhancement, modification, translation, abridgement, condensation, expansion or
any other form in which such software or work may be recast, transformed, or
adapted, and which, if prepared without the authorization of the owner of the
copyright in the software, would constitute a copyright infringement.
1.7 "DOCUMENTATION" means any existing and available documentation of
Axys for the Axys Software and Database, whether in printed or electronic
format. By way of illustration, such Documentation may include a description of
the full development environment, revision history, source code control systems,
validation test plans, user manuals and all material SOP's in effect during the
development of the Axys Software and Database, but only to the extent that such
documents are existing and in Axys' possession or control as of the date of the
initial delivery (as set forth in Section 5.1 (Initial Delivery)).
1.8 "INTELLECTUAL PROPERTY RIGHTS" means any and all intellectual
property rights in any country or jurisdiction worldwide arising under statutory
law, common law or by contract and whether or not perfected, including without
limitation all (i) patents, patent applications, and patent rights; (ii) rights
associated with works of authorship including copyrights, copyright
applications, copyright registrations; (iii) rights relating to the production
of trade secrets and confidential information; (iv) any rights analogous to
these set forth in this Section 1.7 and any other proprietary rights relating to
intellectual property; and (v) divisions, continuations, renewals, reissues and
extensions of the foregoing (as and to the extent applicable) now existing,
hereafter filed, used or acquired.
1.9 "LICENSEE DERIVATIVES" means Derivative Works of the Axys Software
or Database created by or for Licensee or its sublicensees and including,
without limitation, bug fixes, error corrections, new developments and
improvements relating thereto, but specifically excluding the Axys Software, the
Database and any Axys Derivatives. A Derivative Work will not be considered a
Licensee Derivative if (i) a programmer, reasonably skilled in the art, could
not trace the Derivative Work to the Axys Software from either its literal form
or based upon its features or functionality; or (ii) the database does not
contain substantial elements or portions of the Database.
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1.10 "LIMS SOFTWARE" shall mean the LIMS Software, a component of the
Axys Software, as set forth in Exhibit 1.3.
1.11 "PHARMACOGENOMICS" shall have the meaning set forth in the
Technology Transfer and License Agreement executed by and between Axys
Pharmaceuticals, Inc. and PPGx, Inc. on February 1, 1999.
1.12 "TARGET VALIDATION SYSTEM V.1" means version 1 of a component of
the Axys Software including the human-readable source code, machine-executable
object code, compiled database and any related Documentation.
1.13 "TARGET VALIDATION SYSTEM V.2" means version 2 of a component of
the Axys Software currently under development by Axys including the
human-readable source code, machine-executable object code, compiled database
and any related Documentation.
1.14 "THIRD PARTY SOFTWARE" means the third party software required to
perform or operate the Axys Software or Database including, without limitation,
the third party software described in Exhibit 1.14 (Third Party Software).
2. LICENSE GRANTS AND RESTRICTIONS.
2.1 LICENSE GRANTS.
(A) AXYS SOFTWARE AND DATABASE. Subject to the terms and
conditions of this Agreement, Axys hereby grants to Licensee a restricted,
exclusive (except as set forth in Section 2.3 (Reservation of Rights)),
fully-paid, royalty-free, worldwide, nontransferable (except as set forth in
Section 12.9 (Assignment)), perpetual, irrevocable (except as set forth in
Section 11.2 (Axys Termination for Breach)) license to use, reproduce, perform,
display publicly, create Derivative Works of, distribute and sublicense (through
multiple tiers of sublicensees) the Axys Software and Database solely for use in
the field of Pharmacogenomics. Notwithstanding any contrary provision of this
Agreement, Licensee's right to use, reproduce, perform, display publicly, create
Derivative Works of, distribute and sublicense (through multiple tiers of
sublicensees) the LIMS Software and the Target Validation System V.1 and V.2
shall not be restricted to use in the field of Pharmacogenomics.
(B) THIRD PARTY SOFTWARE. Subject to the terms and conditions
of this Agreement and the applicable Third Party Software license agreement,
Axys hereby grants to Licensee a sublicense to such Third Party Software
consistent with the rights granted to, and obligations and restrictions imposed
on, Axys by the applicable Third Party Software licensor. In the event Axys does
not have the right to grant such sublicenses, Axys shall use commercially
reasonable efforts to assist Licensee in obtaining at Licensee's expense such
required licenses directly from the Third Party Software licensor.
2.2 LICENSE RESTRICTIONS. Licensee shall not, directly or indirectly,
use, distribute or sublicense the Axys Software, Database or Licensee
Derivatives (so long as they remain Licensee Derivatives) for use outside of the
field of Pharmacogenomics. All proprietary rights notices on the Axys Software
and Database shall be reproduced and applied to all authorized copies, including
Licensee Derivatives. In addition, Licensee's rights to sublicense the Axys
Software, Database and Licensee Derivatives shall be subject to the restrictions
imposed in Section 4 (Sublicensing of the Axys Software and Database).
2.3 RESERVATION OF RIGHTS. Notwithstanding any contrary provision of
this Agreement, the license of the LIMS Software and the Target Validation
System V.1 and V.2 to Licensee is nonexclusive. Axys also hereby expressly
reserves the right to use, reproduce,
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perform, display publicly, create Derivative Works of, distribute and license
(through multiple tiers of sublicensees) the Axys Software, Database and any
Axys Derivatives for any purpose or activity outside the field of
Pharmacogenomics and in Axys' internal drug discovery and development
activities. In no event shall Licensee's exclusive rights granted under Section
2.1 affect in any manner any licenses to the Axys Software, Database or Axys
Derivatives granted by Axys prior to the Effective Date, it being acknowledged
by the parties that Licensee is being granted such exclusive rights under
Section 2.1 only as Axys is able to grant as of the Effective Date. To the
extent that such information is not confidential, Axys shall identify such
licensees and provide to PPGx a summary description of the rights granted to
them by Axys, in Schedule 2.3 attached hereto. Any such information disclosed to
PPGx shall be deemed to be the Confidential Information (as such term is defined
in Article 10 herein) of Axys.
3. OWNERSHIP.
3.1 AXYS OWNERSHIP. Licensee agrees that Axys shall retain its sole and
exclusive ownership of all right, title and interest to the Axys Software,
Database and any Axys Derivatives, and including all Intellectual Property
Rights thereto, but specifically excluding any Third Party Software contained
therein. Except for the rights expressly enumerated herein, Axys does not grant
any Intellectual Property Rights or any other rights or licenses with respect to
the Axys Software and Database.
3.2 LICENSEE OWNERSHIP OF LICENSEE DERIVATIVES. Axys agrees that
Licensee shall retain the sole and exclusive ownership of all right, title and
interest to any Licensee Derivatives, and including any Intellectual Property
Rights thereto, but specifically excluding the Axys Software, Database and any
Third Party Software contained therein.
3.3 THIRD PARTY SOFTWARE. Both Parties acknowledge and agree that,
except for the licenses granted in the applicable Third Party Software license
agreement, the licensors of such Third Party Software shall retain all right,
title and interest including any Intellectual Property Rights, to its Third
Party Software.
4. SUBLICENSING OF THE AXYS SOFTWARE AND DATABASE.
4.1 LICENSEE SOURCE CODE SUBLICENSE. Licensee acknowledges and agrees
that in order to maintain the economic value of the Axys Software, any
sublicense entered into by Licensee of all or any portion of the source code of
the Axys Software in source code format (herein "Licensee Source Code"), and any
sublicense of the source code of the Licensee Derivatives (so long as they
remain Licensee Derivatives) where indicated, shall be restricted as follows:
(A) All such sublicenses shall be in writing and executed by
the third party sublicensee and shall provide, at a minimum, that (i) the
Licensee Source Code and any source code of the Licensee Derivatives is
licensed, not sold, to the sublicensee and, except for the LIMS Software and
Target Validation System V.1 and V.2, is for use solely in the field of
Pharmacogenomics; (ii) Axys, as the original licensor, retains ownership of all
copies of the Licensee Source Code; (iii) all rights not expressly granted to
sublicensee are reserved for Licensee and Axys; (iv) sublicensee shall not
sublicense, assign or otherwise transfer the Licensee Source Code to any third
party without the prior written consent of Licensee; (v) Licensee shall retain
the right to terminate the sublicense in the event the sublicensee materially
breaches any term or condition; and (vi) upon termination of the sublicense, the
sublicensee shall promptly destroy the Licensee Source Code and all copies.
(B) Axys shall be named a third party beneficiary of any
sublicenses of the Licensee Source Code;
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(C) The third party shall agree to use the Licensee Source
Code solely for its internal purposes and agrees to maintain written records of
the location of each copy of the Licensee Source Code and permit audit of such
records by Licensee;
(D) Except as related to the LIMS Software and Target
Validation System V.1 and V.2, the sublicenses shall restrict the use of the
Licensee Source Code, the source code of any Licensee Derivatives, and any
Derivative Works created by or for the third party, to the field of
Pharmacogenomics.
(E) Licensee shall provide Axys the names of all sublicensees
of the Licensee Source Code once every six (6) months and, upon Axys' request,
will send a copy of all such sublicenses to Axys, although Licensee may delete
information relating to the sublicense fees and other financial terms from such
copies. The names of the sublicensees and any sublicenses provided to Axys shall
be deemed the Confidential Information of Licensee. In the event any sublicensee
refuses to agree that Licensee can provide its name to Axys, Licensee shall not
be obligated to do so; provided that Licensee shall have to provide a copy of
the sublicense with such sublicensee upon any reasonable request of Axys
relating to the protection of its property or rights.
(F) Licensee agrees to report any violations by any third
party of the confidentiality, ownership and other provisions that are important
to maintain the value of the Intellectual Property Rights in the Axys Software
and agrees to assist Axys at Axys' expense in enforcing such provisions.
4.2 LICENSEE OBJECT CODE SUBLICENSE. Axys acknowledges and agrees that
Licensee may sublicense the machine-executable object code of the Axys Software
and/or Licensee Derivatives (so long as they remain Licensee Derivatives) in
object code format (herein "Licensee Object Code") to third parties in
accordance with its standard licensing practices; provided that such sublicenses
only grant the third parties sublicensees the right to use such Licensee Object
Code (except for the LIMS Software and Target Validation System V.1 and V.2) in
the field of Pharmacogenomics and such sublicenses include prohibitions on
obtaining the human-readable source code of the Axys Software through reverse
engineering. Such Licensee Object Code licenses may include a source code escrow
provision; provided that (i) a reputable source code escrow agency will maintain
the Licensee Source Code (as defined in Section 4.1 above); (ii) the license to
use the Licensee Source Code in the event the licensee rightfully receives the
source code from the escrow agent shall be restricted to maintaining the
Licensee Object Code (except for the LIMS Software and the Target Validation
System V.1 and V.2) for use in the field of Pharmacogenomics; and (iii) Licensee
agrees to promptly notify Axys of each release of the Licensee Source Code from
the escrow account.
4.3 LICENSEE DATABASE SUBLICENSE. Licensee acknowledges and agrees that
in order to maintain the economic value of the Database, any sublicense entered
into by Licensee of all or any portion of the Database, or any Licensee
Derivatives of the Database (so long as they remain Licensee Derivatives), shall
be restricted to use in the field of Pharmocogenomics and shall include
prohibitions on reproducing or distributing the Database, its contents, or any
part thereof, for other than internal use by the sublicensee. Notwithstanding
the restrictions set forth in this Agreement, data retrieved from the Database
may be manipulated, analyzed, reformatted, printed and, to the extent necessary
for patent applications and for publication in scientific journals, displayed
publicly and/or published by Licensee and its sublicensees; provided that the
foregoing prohibition shall not preclude Licensee from creating and
demonstrating marketing demos of the Database and Licensee Derivatives to third
parties under appropriate confidentiality agreements.
4.4 AXYS DATABASE LICENSE. In consideration of the amounts paid to Axys
by Licensee for the Axys Software and Database, Axys hereby acknowledges and
agrees that it shall
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not license, publish or otherwise disclose the contents of the Database, in
whole or in part, except as set forth in Section 2.3 (Reservation of Rights) and
subject to the confidentiality restrictions set forth in Section 10.2 (Axys
Software and Database Confidentiality). Any license of the Database by Axys
shall include prohibitions on reproducing or distributing the Database, its
contents, or any part thereof for any use that is inconsistent with Axys'
reserved rights set forth in Section 2.3. Notwithstanding the restrictions set
forth in this Agreement, data retrieved from the Database may be manipulated,
analyzed, reformatted, printed and, to the extent necessary for patent
applications and for publication in scientific journals, displayed publicly
and/or published by Axys and its licensees; provided that the foregoing
prohibition shall not preclude Axys from creating and demonstrating marketing
demos of the Database and Axys Derivatives to third parties under appropriate
confidentiality agreements.
4.5 NO OTHER TRANSFER OF RIGHT, TITLE OR INTEREST. Except as set forth
in Sections 4.1 (Licensee Object Code Sublicense), 4.2 (Licensee Source Code
Sublicense), Section 4.3 (Licensee Database Sublicense) and 12.9 (Assignment),
Licensee shall not grant any right, title or interest in or to the Axys Software
or the Database without the prior written consent of Axys, which consent shall
not be unreasonably withheld.
5. DELIVERY AND ACCEPTANCE.
5.1 INITIAL DELIVERY. Within thirty (30) days of the execution of this
Agreement or as otherwise agreed between Axys and Licensee, Axys shall provide
to Licensee: (i) one (1) copy of the Axys Software (excluding the Target
Validation System V.2) in machine-executable object code; (ii) one (1) copy of
the Axys Software (excluding the Target Validation System V.2) in human-readable
source code; (iii) one (1) copy of the Database; and (iv) one (1) copy of any
related Documentation. Such Axys Software, Database and Documentation shall be
provided electronically or in such other form as mutually agreed to by the
Parties.
5.2 DELIVERY OF TARGET VALIDATION SYSTEM V.2. Upon its availability for
public release, Axys shall deliver to Licensee: (i) one (1) copy of the Target
Validation System V.2, in machine-executable object code; (ii) one (1) copy of
the Target Validation System V.2, in human-readable source code; and (iii) one
(1) copy of any related Documentation. In addition for a period of six (6)
months after the delivery of the Target Validation System V.2, Axys shall
provide Licensee with bug fixes and error corrections to the Target Validation
System V.2 that are developed, at Axys' sole discretion, and publicly released
by Axys.
5.3 ACCEPTANCE. Licensee acknowledges and agrees that because Licensee
has had the opportunity to inspect the Axys Software, Database and related
Documentation prior to execution of this Agreement, the Axys Software, Database
and Documentation shall be deemed accepted upon delivery; provided, however,
that Axys delivers the Axys Software that is identified in Exhibit 1.3 and the
Database and Documentation that conforms to the description set forth herein.
Licensee shall have a period of thirty (30) days from the respective delivery
dates of the Axys Software, Database and Documentation to notify Axys, in
writing, of any discrepancies in the Axys Software, Database and Documentation
delivered by Axys to Licensee. Licensee's sole and exclusive remedy, and Axys'
sole and exclusive obligation, regarding any identified discrepancies in such
delivery shall be for Axys to promptly resolve the discrepancies and redeliver
as promptly as practical such of the Axys Software, Database and Documentation
to Licensee as is necessary to fulfill Axys' delivery obligations hereunder.
6. PAYMENT AND TAXES.
6.1 LICENSEE FEES. In consideration of the licenses and other rights
granted to Licensee herein, Licensee shall pay to Axys a one-time,
non-refundable license fee of Two Million Dollars ($2,000,000) immediately upon
the execution of this Agreement.
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6.2 TAXES. Licensee agrees to pay, and to indemnify and hold Axys
harmless from, any and all taxes, including without limitation sales taxes, use
taxes and filing fees, as well as the collection or withholding thereof, imposed
upon or arising out of the licenses granted to Licensee hereunder, but excluding
any taxes based on the net income of Axys.
7. REPRESENTATIONS AND WARRANTIES.
7.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each Party hereby represents
and warrants to the other Party that:
(A) it has the full corporate power and authority under the
laws of the state of its incorporation to enter into this Agreement and to carry
out the provisions hereunder;
(B) to its knowledge as of the date of this Agreement, the
performance by either Party of the activities under this Agreement will not
infringe any Intellectual Property Rights owned by a third party;
(C) it will not take any material action or fail to take any
material action which would be in conflict with its obligations under this
Agreement;
(D) this Agreement is a legal and valid obligation binding
upon it and is enforceable in accordance with its terms, except as such
enforcement may be limited by applicable bankruptcy, insolvency, reorganization,
arrangement, moratorium or other similar laws affecting creditors' rights, and
subject to general equity principles and to limitations on availability of
equitable relief, including specific performance; and
(E) the execution, delivery and performance of this Agreement
by it does not materially conflict with any agreement, oral or written, to which
it is a Party or by which it may be bound, nor violate any law or regulation of
any court, governmental body or administrative or other agency having authority
over it.
7.2 AXYS REPRESENTATIONS AND WARRANTIES. Axys represents and warrants
to Licensee that:
(A) Axys has the full right to grant the licenses set forth in
Section 2 (License Grants and Restrictions) hereof, free and clear of any
adverse assignment, grant or other encumbrance inconsistent with such grant,
subject to Axys' reservation of rights set forth in Section 2.3 (Reservation of
Rights); and
(B) to Axys' knowledge as of the date of this Agreement, the
Axys Software and Database does not contain any Computer Virus and Axys shall
use due diligence in screening the Axys Software and Database prior to delivery
to Licensee to minimize the possibility of the introduction of an identified and
acknowledged Computer Virus into Licensee's systems. For purposes of this
Agreement, a "Computer Virus" is an undocumented and unauthorized program
designed to cause a loss of, or damage to, data files; or to gain access to,
and/or interfere with, the operations of, other programs or computer resources,
or any other results not intended by the user of the computer system on which
the virus resides.
(C) Prior to the Effective Date, Axys has not licensed, sold
or transferred, or agreed to license, sell or transfer, the Database to any
third party.
7.3 AXYS DISCLAIMER OF WARRANTIES. EXCEPT AS EXPRESSLY SET FORTH IN
THIS SECTION 7 (REPRESENTATIONS AND WARRANTIES), THE AXYS SOFTWARE, DATABASE AND
DOCUMENTATION ARE PROVIDED TO LICENSEE ON AN "AS IS"
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BASIS AND AXYS HEREBY EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES, EXPRESS,
IMPLIED AND STATUTORY WHETHER ARISING FROM COURSE OF DEALING OR USAGE OF TRADE
INCLUDING, WITHOUT LIMITATION, THE IMPLIED WARRANTIES OF MERCHANTABILITY, TITLE,
FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT. AXYS DOES NOT REPRESENT
OR WARRANT THAT THE AXYS SOFTWARE AND DATABASE WILL MEET THE LICENSEE'S NEEDS OR
WILL BE FREE FROM ERRORS OR OMISSIONS AND AXYS HEREBY EXPRESSLY DISCLAIMS ANY
WARRANTY OF SEQUENCE, ACCURACY OR COMPLETENESS OF THE DATA.
8. INDEMNIFICATION.
8.1 LICENSEE INDEMNITY. Licensee acknowledges that Axys is not directly
or indirectly engaged in the practice of medicine and that all medical-related
information in or provided by the Axys Software or Database is provided for
research and informational purposes only. Licensee further acknowledges that the
Axys Software and Database is not designed or intended for use in providing
advice or opinions on the treatment or care of an individual patient and that
all business, research and clinical decisions made using the Axys Software or
Database will be Licensee's exclusive responsibility. Licensee hereby agrees to
indemnify and defend Axys from any costs, damages, and reasonable attorneys'
fees resulting from all claims by third parties (i) arising from any act,
omission, failure to act, or misrepresentation by Licensee in its use or
sublicense of the Axys Software or Database; (ii) arising, directly or
indirectly, out of any medical, health care, clinical trial, drug discovery or
drug development decision made by Licensee or any of its sublicensees whether or
not such decision arose out of or relates to the use of the Axys Software or
Database, in whole or in part; or (iii) any intentional misconduct of Licensee
occurring after the Effective Date; provided that Axys gives Licensee prompt
written notice of any such claim, tenders to Licensee the defense or settlement
of such a claim at Licensee's expense, and cooperates with Licensee, at
Licensee's expense, in defending or settling such claim. The rights granted to
Axys under this Section 8.1 (Licensee Indemnity) shall be Axys' sole and
exclusive remedy and Licensee's sole obligation for any such third party claim.
8.2 AXYS INDEMNITY. Axys hereby agrees to indemnify and defend Licensee
from any costs, damages, and reasonable attorneys' fees resulting from all
claims by third parties arising from (i) any breach by Axys of any of the
representations and warranties made by Axys to Licensee under this Agreement or
(ii) any intentional misconduct of Axys occurring after the Effective Date;
provided that Licensee gives Axys prompt written notice of any such claim,
tenders to Axys the defense or settlement of such a claim at Axys' expense, and
cooperates with Axys, at Axys' expense, in defending or settling such claim. The
rights granted to Licensee under this Section 8.2 (Axys Indemnity) shall be
Licensee's sole and exclusive remedy and Axys' sole obligation for any such
third party claim.
8.3 LIMITATION ON INDEMNITY. Neither Party shall be entitled to
indemnification under this Article 8, notwithstanding any other provision hereof
to the contrary, to the extent that the events giving rise to the claim for
which indemnification is sought are due to the intentional misconduct or
negligence of the Party seeking indemnification, or any of its officers,
directors, employees or agents.
9. LIMITATION OF LIABILITY. Neither Party shall be liable to the other
Party or any third party for any loss of use, interruption of business or any
indirect, special, incidental or consequential damages of any kind (including
lost profits) regardless of the form of action whether in contract, tort
(including negligence), strict product liability or otherwise, arising out of
this Agreement or the existence, furnishing, functioning or use of or inability
to use the Axys Software or Database, or to any third party with respect
thereto, even if such Party has been advised of the possibility of such damages.
In no event shall either Party's liability under this
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Agreement, whether in contract, tort (including negligence) or otherwise, exceed
the license fee paid by Licensee hereunder. The foregoing limitations shall
apply even if the above stated warranties fail of their essential purpose.
Notwithstanding the foregoing, Licensee's limitation of liability hereunder
shall not apply to any breach of this Agreement related to the scope of the
licenses granted in Section 2 (License Grants and Restrictions) or ownership and
protection of Axys' proprietary rights set forth in Section 3.1 (Axys
Ownership).
10. CONFIDENTIALITY.
10.1 CONFIDENTIALITY. During the term of this Agreement and thereafter,
each Party hereto will maintain in confidence all Confidential Information
disclosed by the other Party hereto. Neither Party will use, disclose or grant
use of such Confidential Information except as expressly authorized by this
Agreement. To the extent that disclosure is authorized by this Agreement, the
disclosing Party will obtain prior agreement from its employees, agents or
consultants to whom disclosure is to be made to hold in confidence and not make
use of such information for any purpose other than those permitted by this
Agreement. Each Party will use at least the same standard of care as it uses to
protect its own Confidential Information to ensure that such employees, agents
or consultants do not disclose or make any unauthorized use of such Confidential
Information. Each Party will promptly notify the other Party upon discovery of
any unauthorized use or disclosure of the Confidential Information.
10.2 AXYS SOFTWARE AND DATABASE CONFIDENTIALITY. Axys hereby agrees to
(i) maintain the Axys Software and Database as its Confidential Information;
(ii) to obtain prior agreement from any third parties to whom disclosure is made
to hold such Confidential Information in confidence and not make use of such
Confidential Information for any unauthorized purpose; and (iii) to use at least
the same standard of care and due diligence Axys uses to protect its other
Confidential Information which Axys has disclosed to third parties to ensure
that such third parties do not disclose or make any unauthorized use of the Axys
Software and Database.
10.3 EXCEPTIONS. Notwithstanding the other provisions of this
Agreement, nothing received by the receiving Party will be considered to be the
Confidential Information of the other disclosing Party if:
(A) It has been published or is otherwise readily available to
the public other than by a breach of this Agreement;
(B) It has been rightfully received by the receiving Party
from a third party without confidential limitations;
(C) It has been independently developed for the receiving
Party by personnel or agents having no access to the disclosing Party's
Confidential Information; or
(D) It was known to the receiving Party prior to its first
receipt from the disclosing Party.
11. TERMINATION.
11.1 TERM. The term of this Agreement shall commence as of the
Effective Date and shall continue until terminated pursuant to Section 11.2
(Termination for Breach) below.
11.2 TERMINATION FOR BREACH.
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(A) Axys may terminate this Agreement and all licenses granted
by Axys hereunder upon thirty (30) days' written notice of a material breach of
this Agreement by Licensee that is likely to cause irreparable damage to Axys'
Intellectual Property Rights in the Axys Software or Database for which recovery
of money damages would be inadequate, if such breach is not cured within such
thirty (30) day period or, if such breach cannot reasonably be expected to be
cured within such thirty (30) day period, Licensee has not commenced within such
thirty (30) day period best efforts to effect such cure as promptly as possible
and has not continued to use its best efforts in the exercise of prudent
business judgment until such cure is effected; provided that in no event shall
the period in which to cure such breach exceed one hundred eighty (180) days
from Axys' written notice of a material breach of this Agreement.
(B) Licensee may terminate this Agreement upon thirty (30)
days' written notice of a material breach of this Agreement by Axys for which
recovery of money damages would be inadequate, if such breach is not cured
within such thirty (30) day period or, if such breach cannot reasonably be
expected to be cured within such thirty (30) day period, Axys has not commenced
within such thirty (30) day period best efforts to effect such cure as promptly
as possible and has not continued to use its best efforts in the exercise of
prudent business judgment until such cure is effected; provided that in no event
shall the period in which to cure such breach exceed one hundred eighty (180)
days from Licensee's written notice of a material breach of this Agreement.
11.3 EFFECTS OF TERMINATION.
(A) RETURN OF AXYS SOFTWARE, DATABASE AND CONFIDENTIAL
INFORMATION. Upon termination of this Agreement pursuant to Section 11.2 (Axys
Termination for Breach) above, Licensee will promptly return or destroy the Axys
Software and Database and all copies thereof, in its possession, and promptly
return to Axys any and all Confidential Information of Axys, existing in
tangible form. Upon termination of this Agreement pursuant to Section 11.2
above, Axys will promptly return to Licensee any and all Confidential
Information of Licensee, existing in tangible form.
(B) LICENSEE DERIVATIVES. Upon termination of this Agreement
pursuant to Section 11.2 above, Licensee shall discontinue all use of and shall
destroy all copies of the Licensee Derivatives, to the extent that such Licensee
Derivatives contain or incorporate the Axys Software, Database, or any component
thereof or information therein.
(C) EXISTING SUBLICENSES. Termination of this Agreement and
the licenses granted to Licensee shall not affect any sublicenses granted by
Licensee prior to the date of termination, so long as such sublicensees continue
to comply with the restrictions set forth in Section 4 (Sublicensing of Axys
Software and Database).
(D) NO LIABILITY. Each Party understands that the rights of
termination hereunder are absolute. Neither Party shall incur any liability
whatsoever for any damage, loss or expenses of any kind suffered or incurred by
the other arising from or incident to any termination of this Agreement, by such
Party or any expiration hereof which complies with the terms of the Agreement,
whether or not such Party is aware of any such damage, loss or expenses. In
particular, without in any way limiting the foregoing, neither Party shall be
entitled to any damages on account of prospective profits or anticipated sales.
(E) SURVIVAL. The provisions of Sections 1 (Definitions), 3
(Ownership), 4 (Sublicensing of the Axys Software and Database), 6 (Payment and
Taxes), 7 (Representations and Warranties), 8 (Indemnification), 9 (Limitation
of Liability), 10 (Confidentiality), 11.3 (Effects of Termination), and 12
(General Provisions) shall survive termination of this Agreement for any reason.
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12. GENERAL PROVISIONS.
12.1 NO AGENCY. Each Party shall act solely as an independent
contractor and nothing in this Agreement shall be construed to give either Party
the power or authority to act for, bind or commit the other Party in any way.
Nothing herein shall be construed to create the relationship of partnership,
principal and agent or joint venture between the Parties.
12.2 GOVERNING LAW. This Agreement shall be governed by the laws of the
State of Delaware that apply to contracts negotiated, executed and performed
within the State of Delaware.
12.3 NOTICES. All notices permitted or required under this Agreement
shall be in writing and shall be delivered by registered or certified mail,
return receipt requested, to the address set forth in the first paragraph of
this Agreement or delivered by hand. All notices shall be deemed to have been
given two days after such notice is mailed, as evidenced by the postmark at the
point of mailing or on the date of personal delivery, if not mailed. If the
notice is to Axys, a copy shall also be sent to its General Counsel.
12.4 INJUNCTIVE RELIEF. It is understood and agreed that,
notwithstanding any other provision of this Agreement, breach of the provisions
of this Agreement regarding the protection of Confidential Information by
Licensee will cause Axys irreparable damage for which recovery of money damages
would be inadequate, and that Axys shall therefore be entitled to seek timely
injunctive relief to protect Axys' rights under this Agreement in addition to
any and all remedies available at law.
12.5 WAIVER. The failure of either Party to require performance by the
other Party of any provision hereof shall not affect the full right to require
such performance at any time thereafter; nor shall the waiver by either Party of
a breach of any provision hereof be taken or held to be a waiver of the
provision itself.
12.6 SEVERABILITY. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any government or
other agency having jurisdiction over either Axys or Licensee deems any
provision to be contrary to any laws, then that provision shall be severed and
the remainder of the Agreement shall continue in full force and effect. The
Parties further agree to discuss in good faith an amendment to replace such
void, invalid, unenforceable, or unlawful provision with a valid and enforceable
provision that will achieve, to the extent possible, the economic, business and
other purposes of such void, invalid, unenforceable or unlawful provision.
12.7 HEADINGS. The section headings appearing in this Agreement are
inserted only as a matter of convenience and in no way define, limit, construe
or describe the scope or extent of such section, or in any way affect this
Agreement.
12.8 COMPLIANCE WITH LAWS; EXPORT CONTROLS. Each Party agrees to comply
with all applicable laws, rules and regulations in connection with its
activities under this Agreement. Each Party further agrees that it will comply
with all U.S. export control laws and the applicable regulations thereunder, as
well as any other applicable laws of the U.S. affecting the export of
technology.
12.9 ASSIGNMENT. Subsequent to the execution of this Agreement,
Licensee may assign this Agreement to PPGx, Inc. Upon such assignment, PPGx,
Inc. shall agree in writing to be bound by all of Licensee's obligations under
this Agreement; thereafter the term "Licensee" as used in this Agreement shall
be understood to mean PPGx, Inc., whose rights and obligations shall be governed
by this Agreement. Except as expressly set forth above, Licensee shall not
11
assign any rights or obligations arising under this Agreement without the prior
written consent of Axys. Notwithstanding the foregoing, PPGx, Inc. may assign
this Agreement to a third party in the event of a merger, acquisition,
reorganization or recapitalization by or of PPGx, Inc., upon written notice to
Axys. Subject to the above restrictions on assignment, this Agreement shall
inure to the benefit of and bind the successors and assigns of the Parties. Any
attempted assignment in derogation of the foregoing shall be void.
12.10 U.S. GOVERNMENT SUBLICENSEES. The Axys Software and Database are
"commercial items," as defined at 48 C.F.R. 2.101 (Oct 1995), consisting of
"commercial computer software" and "commercial computer software documentation,"
as such terms are used in 48 C.F.R. 12.212 (Sep 1995). Consistent with 48 C.F.R.
12.212 and 48 C.F.R. 227.7202-1 through 227.7202-4 (Jun 1995), Licensee will
provide the Axys Software and Database to U.S. Government sublicensees (i) only
as a commercial end item and (ii) with only those rights as are granted to all
other sublicensees pursuant to the terms and conditions of this Agreement.
12.11 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
12.12 ENTIRE AGREEMENT. This Agreement and the Exhibits hereto
constitute the entire, final and complete agreement and understanding between
the Parties, and replaces and supersedes all prior discussions and agreements
between them, with respect to the subject matter hereof. No amendment,
modification or waiver of any terms or conditions hereof shall be effective
unless made in writing and signed by a duly authorized officer of each Party.
IN WITNESS WHEREOF, the undersigned have caused this Agreement to be
executed by their respective authorized representatives. This Agreement may be
executed in counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same original.
AXYS: LICENSEE:
AXYS PHARMACEUTICALS, INC. PHARMACEUTICAL PRODUCT
DEVELOPMENT, INC.
/s/ Xxxx X. Xxxxxx /s/ Xxxxxxx X. Xxxxxxxx
-------------------------- -------------------------------
Authorized Signature Authorized Signature
Xxxx X. Xxxxxx Xxxxxxx X. Xxxxxxxx
-------------------------- -------------------------------
Printed Name Printed Name
Chairman / CEO CEO
-------------------------- -------------------------------
Title Title
January 31, 1999 January 31,1999
-------------------------- -------------------------------
Date Date
12
EXHIBIT 1.3
AXYS SOFTWARE
1
EXHIBIT 1.14
THIRD PARTY SOFTWARE
1
