1
EXHIBIT 10.8
License Agreement between the Regents of the University of
California and Molecular Dynamics dated September 15, 1993.
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EXHIBIT 10.8
THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
October 20, 1993
UNIVERSITY OF CALIFORNIA, BERKELEY [UNIVERSITY OF CALIFORNIA LOGO]
OFFICE OF TECHNOLOGY LICENSING
================================================================================
EXCLUSIVE LICENSE AGREEMENT
CAPILLARY ARRAY CONFOCAL FLUORESCENSE SCANNER
AND METHOD
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
MOLECULAR DYNAMICS
UC Case No.: B92-024-1
================================================================================
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October 20, 1993
TABLE OF CONTENTS
ARTICLE TITLE PAGE
------- ----- ----
1. BACKGROUND ................................................ 1
2. DEFINITIONS ............................................... 2
3. GRANT ..................................................... 4
4. SUBLICENSES ............................................... 5
5. LICENSE ISSUE FEE ......................................... 6
6. ROYALTIES ................................................. 7
7. DUE DILIGENCE ............................................. 9
8. PROGRESS AND ROYALTY REPORTS .............................. 11
9. BOOKS AND RECORDS ......................................... 12
10. LIFE OF THE AGREEMENT ..................................... 13
11. TERMINATION BY REGENTS .................................... 13
12. TERMINATION BY LICENSEE ................................... 14
13. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION . 14
14. PATENT PROSECUTION AND MAINTENANCE ........................ 14
15. MARKING ................................................... 17
16. USE OF NAMES AND TRADEMARKS ............................... 17
17. LIMITED WARRANTIES ........................................ 17
18. PATENT INFRINGEMENT ....................................... 18
19. INDEMNIFICATION ........................................... 20
20. EXPORT CONTROLS ........................................... 22
21. FOREIGN GOVERNMENTAL APPROVAL OR REGISTRATION ............. 22
22. ASSIGNMENT ................................................ 22
23. NOTICES ................................................... 22
24. LATE PAYMENTS ............................................. 23
25. WAIVER .................................................... 23
26. CONFIDENTIALITY ........................................... 23
27. FAILURE TO PERFORM ........................................ 25
28. FORCE MAJEURE ............................................. 25
29. SEVERABILITY .............................................. 25
30. APPLICABLE LAW ............................................ 26
31. SCOPE OF AGREEMENT ........................................ 26
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UNIVERSITY OF CALIFORNIA, BERKELEY [University of California SEAL]
OFFICE OF TECHNOLOGY LICENSING
================================================================================
EXCLUSIVE LICENSE AGREEMENT
FOR CAPILLARY ARRAY CONFOCAL FLUORESCENCE SCANNER AND METHOD
UC Case No.: B92-024-1
================================================================================
Effective September 15, 1993, THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a
California Corporation, whose legal address is 000 Xxxxxxxx Xxxxx, Xxxxxxx,
Xxxxxxxxxx 00000-0000, acting through its Office of Technology Licensing, at
the University of California, Berkeley, 0000 Xxxxxxxx Xxxxxx, Xxxxx 000,
Xxxxxxxx, XX 00000-0000, ("REGENTS") and MOLECULAR DYNAMICS having a principal
place of business at 000 Xxxx Xxxxxx Xxx., Xxxxxxxxx, Xx. 00000 ("LICENSEE"),
agree as follows:
1. BACKGROUND
1.1 REGENTS have an assignment of "Capillary Array Confocal Fluorescence
Scanner and Method" ("INVENTION"), as described in REGENTS' Case No.
B92-024-1 and LICENSED PATENTS as defined below, which are directed
to the INVENTION.
1.2 LICENSEE entered into a Confidential Disclosure Agreement with
REGENTS effective September 13, 1991, and terminating on September
13, 1996 for the purpose of evaluating the INVENTION.
1.3 LICENSEE further entered into a Letter Agreement effective
February 24, 1992 covering the LICENSEE's commitment to reimburse
REGENTS' patent costs during the period of good-faith negotiation
for an exclusive license.
1.4 The development of the INVENTION was sponsored in part by the US
Department of Energy and as a consequence, title is passed to
REGENTS and REGENTS in turn, grants back to the U.S. Government a
non-exclusive, non-transferrable, irrevocable, paid-up license to
practice or have practiced the
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INVENTION for or on behalf of the United States Government
throughout the world.
1.5 Both parties recognize and agree that royalties due hereunder will
be paid to REGENTS on both pending patent applications and issued
patents.
1.6 REGENTS are desirous to have said INVENTION perfected and marketed
at the earliest possible time in order that products resulting
therefrom may be available for public use and benefit.
1.7 LICENSEE has executed an exclusive license agreement with REGENTS
for US Patent No. 5,091,652 entitled "Laser Excited Confocal
Microscope Fluorescence Scanner and Method" and corresponding
foreign patents and patent applications described in UC Case No.
B90-001-2, effective January 16, 1991 (hereinafter referred to as
1991 LICENSE AGREEMENT).
1.8 LICENSEE will execute a non-exclusive license agreement with REGENTS
for US Patent Application Serial No. 07/854,375 entitled "Multiple
Tag Labeling Method for DNA Sequencing" and corresponding foreign
patents and patent applications described in UC Case No. B92-057-1,
effective August 15, 1993 (hereinafter referred to as 1993
NON-EXCLUSIVE LICENSE AGREEMENT).
1.9 LICENSEE wishes to acquire a license under the LICENSED PATENTS, for
the purpose of undertaking development, to manufacture, use, sell
and distribute LICENSED PRODUCTS as defined below.
1.10 REGENTS have disclosed to LICENSEE certain information and technical
data pertaining to the INVENTION and such disclosure gives the
LICENSEE an economic advantage in bringing the INVENTION to market.
2. DEFINITIONS
2.1 "LICENSED PATENTS" means any Letters Patent issued upon REGENTS'
U.S. Patent Application, Serial Number 07/840,501 entitled
"Capillary Array Confocal Fluorescence Scanner and Method" filed
February 24, 1992, by
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Xxxxxxxxx Xxxxxxx Xxxxxxx, Xxxxxxx Xxxx Xxxxx and Xxxx X. Xxxxxxx and
assigned to REGENTS; and continuing applications thereof including
divisions, substitutions, extensions and continuation-in-part applications
(only to the extent, however, that claims in the continuation-in-part
applications are entitled to the priority filing date of the parent patent
application; but excluding all other continuations-in-part), any patents
issuing on said application or continuing applications including reissues;
and any corresponding foreign patents or applications.
2.2 "LICENSED PRODUCTS" means any product, apparatus, or component part thereof
or other material produced by the LICENSED METHOD to the extent the
manufacture, use or sale of which is in a particular country:
(a) Is covered by a valid claim of an issued, unexpired patent under the
LICENSED PATENTS in that country in which such patent has issued
(claim of an issued, unexpired LICENSED PATENTS shall be presumed to
be valid unless and until it has been held to be invalid by a final
judgment of a court of competent jurisdiction from which no appeal can
be or is taken) or;
(b) Is covered by a pending claim being prosecuted in a pending patent
application under the LICENSED PATENTS in that country in which such
application is pending.
2.3 "LICENSED METHOD" means any process or method that is covered by the
LICENSED PATENTS in the country in which such process or method is used to
make LICENSED PRODUCTS or the use or practice would constitute, but for the
license granted to the LICENSEE pursuant to this Agreement, an infringement
of any issued or pending claim within LICENSED PATENTS in that country in
which the LICENSED METHOD is used or practiced.
2.4 "LICENSED FIELD-OF-USE" means the manufacture, use, sale or distribution of
any LICENSED PRODUCTS in any instrumentation.
2.5 "NET SALES" means the gross revenue of the LICENSED PRODUCTS in the form in
which it is sold, leased, used, or distributed, whether or not assembled
(and without excluding therefrom any components or subassemblies thereof,
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whatever their origin and whether or not patent impacted, except that
all separate optional items and products such as, without limitation,
printers, external storage devices, application software, network
connections or reagent kits which are not LICENSED PRODUCTS but which
are sold, leased, used or distributed for use in connection with the
system comprising LICENSED PRODUCTS shall be excluded), less the
following items but only insofar as they actually pertain to the
disposition of such LICENSED PRODUCTS by LICENSEE and are included in
such gross income, and (except Item d) are separately billed:
(a) Import, export, excise, and sales taxes, plus custom duties; If
custom duties are part of the sales price, REGENTS will accept
Licensee's statement to that effect provided accounting statement
is supplied, identifying each item and duty amount included.
(b) Costs of insurance, packing, and transportation from the place of
manufacture to the customer's premises or point of installation;
(c) Costs of installation at the place of use;
(d) Credit for returns, allowances, or trades; and
(e) Rebate paid to distribution on LICENSED PRODUCTS.
2.6 "LICENSED TERRITORY" means worldwide.
3. GRANT
3.1 Subject to the limitations set forth in this Agreement, REGENTS hereby
grant and LICENSEE hereby accepts an exclusive license under the
LICENSED PATENTS and within the LICENSED FIELD-OF-USE to make, have
made, use, lease, distribute and/or sell LICENSED PRODUCTS and to
practice LICENSED METHOD in the LICENSED TERRITORY.
3.2 Said license shall be EXCLUSIVE in the LICENSED FIELD-OF-USE for a
term commencing as of the effective date of this Agreement and ending
on the date of the last to expire patent under the LICENSED PATENTS.
3.3 REGENTS expressly reserve the right to use the INVENTION for
educational and research purposes.
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4. SUBLICENSES
4.1 LICENSEE shall have the right to sublicense to third parties to make,
have made, use, lease, distribute and/or sell LICENSED PRODUCTS and to
practice the LICENSED METHOD provided that LICENSEE has current
exclusive rights under this Agreement. Every such sublicense shall
contain at least the following:
(a) A statement setting forth the date upon which LICENSEE's
exclusive rights, privileges, and license hereunder shall expire.
(b) A statement such that, to the extent applicable, the obligations
of this Agreement shall be binding upon the sublicensee as if it
were in place of LICENSEE, except that:
(i) Earned royalty rate and minimum royalties may be at higher
rates than this Agreement;
(ii) Sublicensee(s) shall be precluded from granting further
sublicenses; and
(iii) Sublicensee(s) shall not be required to assume the
obligations due to REGENTS under Paragraph 6.5 and
Articles 5, 7, 14 and 21 of this Agreement. However, under
any sublicense, sublicensee shall at least be obligated to
LICENSEE under Articles 15 and 21.
(c) The same provision for indemnification of REGENTS as has been
provided for in this Agreement.
4.2 LICENSEE shall notify REGENTS of each sublicense granted hereunder and
furnish to REGENTS a summary of the material terms of each such
sublicense agreements.
4.3 LICENSEE shall collect and guarantee payment of all royalties due
REGENTS from sublicensees; and deliver all reports due REGENTS and
received from sublicensees.
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
4.4 Upon termination of this Agreement for any reason, all sublicenses
that are granted by LICENSEE pursuant to this Agreement shall
remain in effect and shall be assigned to REGENTS except that
REGENTS shall not be bound to perform any duties or obligations
set forth in any sublicenses that extend beyond the duties and
obligations of REGENTS set forth in this Agreement.
5. LICENSE ISSUE FEE
5.1 LICENSEE shall pay to REGENTS a non-creditable, non-refundable
license issue fee of [*] Dollars ($[*]) according to the following
schedule:
5.1.a [*] Dollars ($[*]) due upon signing of this Agreement;
5.1.b. [*] Dollars ($[*]) due in four months of the effective date of
this Agreement;
5.1.c [*] Dollars ($[*]) due on the anniversary day of the effective
date of this Agreement; and
5.1.d. [*] Dollars ($[*]) due within forty-five (45) days of written
notification to Licensee by REGENTS of Notice of Allowance from the US
Patent and Trademark Office of US Patent Application serial no.
07/840,501, or its continuation or divisional whichever is first to
occur.
5.2 This fee is non-refundable and not an advance against royalties.
However, in the event this Agreement is terminated for any reason
whatsoever on or before the one (1) year anniversary of the effective
date of this Agreement, LICENSEE shall not be obligated to pay to
REGENTS the payment specified in Paragraph 5.1.c above; in addition,
in the event this Agreement is terminated on or before the four (4)
month anniversary of the effective date of this Agreement due to
either REGENTS' breach of this Agreement or invalidity of a LICENSED
PATENT or any claim thereof, LICENSEE shall not be obligated to pay
to the REGENTS the payment specified in Paragraph 5.1.b above.
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
6. ROYALTIES
6.1 LICENSEE shall pay to REGENTS earned royalties at the rate of
[*] percent ([*]%) of the NET SALES OF LICENSED PRODUCTS.
6.2 Royalties shall be payable on LICENSED PRODUCTS and LICENSED METHODS
covered by both pending patent applications and issued patents.
6.3 If, after seven (7) years from the effective date of this Agreement or
seven (7) years from the filing date of the patent application
covered by LICENSED PATENTS in a particular country, whichever is
longer, no patent under LICENSED PATENTS has issued in a particular
country covering LICENSED PRODUCTS, then the royalty and minimum
royalty set forth in Paragraphs 6.1 and 6.5 due REGENTS in connection
with the sale of LICENSED PRODUCTS in such country will be suspended
from that date. Upon issuance of a patent in a particular country
under LICENSED PATENTS covering LICENSED PRODUCTS, LICENSEE's
obligation to pay to REGENTS earned royalties in accordance with the
royalty rate on the NET SALES of LICENSED PRODUCTS as specified in
Paragraph 6.1. and the minimum annual royalties set forth in Paragraph
6.5 shall resume only in connection with the LICENSED PRODUCTS that
would, but for the license granted herein, infringe a valid claim of
such issued, unexpired patent in such country, provided, however, that
the minimum annual royalties for the year in which such patent has
issued shall be pro-rated based upon the date of issuance of such
patent, and further provided that REGENTS shall forgive the minimum
annual royalties otherwise due REGENTS during the period of
suspension.
6.4 Royalties accruing to REGENTS shall be paid to REGENTS quarterly
commencing June 30, 1995, according to the schedule stated in
Paragraph 8.3 or, if production schedule is accelerated, on an earlier
date mutually agreed upon by REGENTS and LICENSEE.
6.5 For as long as the license granted herein is exclusive, the LICENSEE
shall pay REGENTS a minimum annual royalty of [*] ([*]).
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
[*] annually by February 28 of each year commencing January 1, 1995,
and such minimum annual royalty shall be credited until fully
exhausted against the earned royalty due and owing for the calendar
year in which the minimum annual royalty payment is made.
6.6 LICENSEE shall make all payments under this Agreement by check
payable to "The Regents of the University of California" and forward
it to REGENTS at the address shown in Article 23.
6.7 Royalties earned with respect to NET SALES of LICENSED PRODUCTS
occurring in any country outside the United States shall not be
reduced by any value-added taxes, fees, or other charges imposed by
the government of such country on the remittance of royalty income.
LICENSEE shall also be responsible for all bank transfer charges.
6.8 In the event that any patent or any claim thereof included within
the LICENSED PATENTS expires or shall be held invalid in a final
decision by a court of competent jurisdiction and last resort and from
which no appeal has been or can be taken, all obligation to pay
royalties for LICENSED PRODUCTS based on, covered by, or made using
such patent or claims or any claims patentability indistinct therefrom
shall cease as of the date of such expiration or final decision.
LICENSEE shall not, however, be relieved from paying any royalties for
LICENSED PRODUCTS that accrued before such expiration or decision or
that are based on another valid patent or claim not expired or
involved in such decision.
6.9 If it is necessary for LICENSEE to obtain licenses from third
parties such that the combined royalty rates paid on any one
particular LICENSED PRODUCT, covered by 1991 LICENSE AGREEMENT
(Article 1.7), 1993 NON-EXCLUSIVE AGREEMENT (Article 1.8), this
Agreement and other necessary agreements from third parties, exceeds
[*] percent ([*]%), REGENTS shall re-negotiate in good-faith with
LICENSEE to reduce the royalty rate due REGENTS. However, under no
circumstances for as long as this Agreement is in effect will the
total combined royalty due REGENTS under this Agreement, the 1991
LICENSE AGREEMENT and the 1993 NON-
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THE SYMBOL "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
EXCLUSIVE AGREEMENT be less than [*] percent ([*]%) on the NET SALES
of a given LICENSED PRODUCT.
7. DUE DILIGENCE
7.1 LICENSEE, upon execution of this Agreement, shall use diligent
commercial efforts to proceed with the development, manufacture, and
sale of LICENSED PRODUCTS and shall use diligent commercial efforts to
market them according to Schedule A in quantities sufficient to meet
the market demand. LICENSEE shall be entitled to exercise prudent and
reasonable business judgment in meeting its due diligence obligations
hereinunder.
Schedule A
----------
Performance Milestones
Activity Dates
-------- -----
1. Complete Feasibility Study & Initiate Full Staffing 10/01/93
2. First Prototype Completed 4/01/94
3. Domestic and International Product Introduction 10/01/94
4. Ship Demonstration Units 1/01/95
5. First Customer Shipment from Manufacturing 4/01/95
7.2 If LICENSEE is unable to meet the First Customer Shipment milestone
set forth in Schedule A in Paragraph 7.1 then REGENTS shall so notify
LICENSEE of failure to perform. LICENSEE shall have the right and
option to extend the target date of First Customer Shipment for a
period of 12 months or 24 months upon the payment of [*] within
thirty (30) days of the extension date, for each 12 months extension
option exercised by LICENSEE. These payments are in addition to the
minimum royalty payments specified in Paragraph 6.5. Should LICENSEE
opt not to extend the milestone or fail to meet First Customer
Shipment by the extended target date of April 1, 1997, then REGENTS
shall have the right and option either to terminate this Agreement or
to reduce the LICENSEE's exclusive license to a non-exclusive royalty
bearing license. This right, if exercised by REGENTS, supersedes the
rights granted in Article 3. The right to terminate this Agreement or
reduce LICENSEE's exclusive license granted hereunder to a
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non-exclusive license shall be REGENTS' sole remedy for breach of
Article 7. However, if LICENSEE is unable to perform any of the
performance milestones set forth in Schedule A due to hardships beyond
LICENSEE's control while LICENSEE has demonstrated diligent commercial
efforts to achieve these milestones, then REGENTS shall extent the
dates as appropriate (after conferring with LICENSEE in good faith
and, in any event, on at least a day for day basis) in writing to
LICENSEE, and REGENTS shall not terminate this Agreement or reduce
LICENSEE's exclusive license to a non-exclusive license.
7.3 At the request of either party, any controversy or claim arising out
of or relating to the diligence provisions of this Agreement shall be
settled by arbitration conducted in San Francisco, CA in accordance
with the then current Licensing Agreement Arbitration Rules of the
American Arbitration Association. Judgment upon the award rendered by
the Arbitrator(s) shall be binding on the parties and may be entered
by either party in the court or forum, state or federal, having
jurisdiction. In determination of due diligence, the arbitrator may
determine solely the issues of fact or law with respect to termination
of LICENSEE's or REGENTS' respective rights under this Agreement but
shall not have the authority to award monetary damages or grant
equitable relief.
7.4 To exercise either the right to terminate this Agreement or to reduce
the licenses to non-exclusive licenses for lack of diligence required
in Paragraph 7.1, REGENTS must give the LICENSEE written notice of the
deficiency. The LICENSEE thereafter has sixty (60) days to cure the
deficiency or to request arbitration. If REGENTS has not received a
written request for arbitration or satisfactory tangible evidence that
the deficiency has been cured by the end of the sixty (60) day
period, then REGENTS may, at its option, either terminate this
Agreement or reduce LICENSEE's exclusive licenses to non-exclusive
licenses by giving written notice to LICENSEE. These notices shall be
subject to Article 23 (Notices).
7.5 If REGENTS exercise its option to reduce LICENSEE's exclusive licenses
to non-exclusive licenses for lack of diligence, required in Paragraph
7.1, and
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thereafter REGENTS grants to a third party under another agreement
non-exclusive licenses to manufacture, use, sell, and/or distribute
LICENSED PRODUCTS and/or practice LICENSED METHOD at royalty rates
more favorable than those contained herein, then LICENSEE shall have
the option for a period of one year after notice from REGENTS of such
rates to substitute all royalty rates of the other agreements for all
corresponding royalty rates of this Agreement provided the LICENSEE
becomes obligated to substantially the same material terms and
conditions (except diligence provisions and any other inapplicable
provisions) of the other license.
8. PROGRESS AND ROYALTY REPORTS
8.1 Beginning January 31, 1994, and semi-annually thereafter, LICENSEE
shall submit to REGENTS a progress report covering LICENSEE's
activities related to the development and testing of all LICENSED
PRODUCTS and the obtaining of the governmental approvals necessary,
if any, for marketing in the United States. These progress reports
shall be made for each LICENSED PRODUCTS until the first commercial
sale of that LICENSED PRODUCTS occurs in the United States.
8.2 LICENSEE also agrees to report to REGENTS in its immediately
subsequent progress and royalty reports the date of first commercial
sale of LICENSED PRODUCTS.
8.3 After the first commercial sale of LICENSED PRODUCTS anywhere in the
world, LICENSEE will make quarterly royalty reports to REGENTS within
sixty (60) days after the quarters ending March 31, June 30,
September 30, and December 31, of each year. Each such royalty report
shall include at least the following:
(a) The number of LICENSED PRODUCTS manufactured and the number sold;
(b) Gross revenue for LICENSED PRODUCTS sold;
(c) NET SALES pursuant to Paragraph 2.5;
(d) Total royalties due REGENTS; and
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(e) Names and addresses of new sublicensees along with a summary of
the material terms of each new sublicense agreement entered into
during the reporting quarter.
8.4 If no sales of LICENSED PRODUCTS has been made during any report
period, a statement to this effect shall be required.
9. BOOKS AND RECORDS
9.1 LICENSEE shall keep full, true, and accurate books of accounts
containing all particulars that may be necessary for the purpose of
showing the amount of royalties payable to REGENTS. Said books of
accounts shall be kept at LICENSEE's principal place of business or
the principal place of business of the appropriate division of
LICENSEE to which this Agreement relates. Said books and the
supporting data shall be open to all reasonable times during the
normal business hours upon reasonable notice, for five (5) years
following the end of the calendar year to which they pertain, to the
inspection and audit by an independent certified public accountant
retained by the REGENTS for the purpose of verifying LICENSEE's
royalty statement or compliance in other respects with this
Agreement. Such independent certified accountant shall be bound to
hold all information in confidence except as necessary to communicate
LICENSEE's non-compliance with this AGREEMENT to REGENTS.
9.2 The fees and expenses of REGENTS' representatives performing such an
examination shall be borne by REGENTS. However, if an error in
underpaid royalties to REGENTS of more than five percent (5%) of the
total royalties due for any year is discovered, then the fees and
expenses of these representatives shall be borne by LICENSEE.
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10. LIFE OF THE AGREEMENT
10.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this
Agreement shall be in force from the effective date recited on page
one and shall remain in effect for the life of the last-to-expire
patent licensed under this Agreement.
10.2 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following articles and paragraphs:
Article 9 Books and Records
Article 13 Disposition of Licensed Products on Hand Upon
Termination
Paragraph 14.1 Patent Prosecution and Maintenance
Article 16 Use of Names
Article 19 Indemnification
Article 24 Late Payment
Article 26 Confidentiality
Article 27 Failure to Perform
11. TERMINATION BY REGENTS
If LICENSEE should violate or fail to perform any term or covenant of this
Agreement, then REGENTS may give written notice of such default (Notice of
Default) to LICENSEE. If LICENSEE should fail to repair such default within
sixty (60) days of the effective date such notice, REGENTS shall have the
right to terminate this Agreement and the licenses herein by a second
written notice (Notice of Termination) to LICENSEE. If a Notice of
Termination is sent to the LICENSEE, this Agreement shall automatically
terminate on the effective date of such notice. Such termination shall not
relieve LICENSEE of its obligation to pay any royalty or license fees owing
at the time of such termination and shall not impair any accrued right of
REGENTS. These notices shall be subject to Article 23 (Notices).
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12. TERMINATION BY LICENSE
12.1 LICENSEE shall have the right at any time to terminate this Agreement
in whole or as to any portion of LICENSED PATENTS by giving notice in
writing to REGENTS. Such notice of termination shall be subject to
Article 23 (Notice) and termination of this Agreement shall be
effective ninety (90) days from the effective date of such notice.
12.2 Any termination pursuant to the above paragraph shall not relieve
LICENSEE of any obligation or liability accrued hereunder prior to
such termination or rescind anything done by LICENSEE or any payments
made to REGENTS hereunder prior to the time such termination becomes
effective, and such termination shall not affect in any manner any
rights of REGENTS arising under this Agreement prior to such
termination.
12.3 In the event that LICENSEE terminates this Agreement and does not
terminate 1991 LICENSE AGREEMENT (Article 1.7), LICENSEE shall
consider opening negotiations in good-faith with REGENTS to enable
REGENTS to license LICENSED PATENTS to a third party or third parties.
13. DISPOSITION OF LICENSED PRODUCTS ON HAND UPON TERMINATION
13.1 Upon termination of this Agreement LICENSEE shall have the privilege
of disposing of all previously made or partially made LICENSED
PRODUCTS, but no more, within a period of one hundred and twenty (120)
days following the effective date of termination, provided, however,
that the sale of such LICENSED PRODUCTS shall be subject to the terms
of this Agreement including, but not limited to, the payment of
royalties at the rate and at the time provided herein and the
rendering of reports thereon.
14. PATENT PROSECUTION AND MAINTENANCE
14.1 REGENTS shall diligently prosecute and maintain the United States and
foreign patent applications and patents under LICENSED PATENTS using
counsel of its choice reasonably acceptable to LICENSEE. If LICENSEE
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rejects three choices of REGENTS' counsel, then REGENTS may choose
counsel without LICENSEE's assent. REGENTS counsel as of the effective
date of the Agreement is acceptable to Licensee. REGENTS can always
act to preserve rights. REGENTS shall promptly provide LICENSEE with
copies of all relevant documentation so that the LICENSEE may be
currently informed and apprised of the continuing prosecution and the
LICENSEE agrees to keep this documentation confidential in accordance
with Article 26 herein. LICENSEE may comment upon such documentation,
provided, however, that if LICENSEE has not commented upon such
documentation prior to the deadline for filing a response with the
relevant government patent office, REGENTS shall be free to respond
appropriately without consideration of LICENSEE's comments. REGENTS'
counsel will take instructions only from REGENTS unless otherwise
authorized by REGENTS in writing.
14.2 REGENTS shall use all reasonable efforts to prepare or amend any
patent application to include claims reasonably requested by LICENSEE
to protect the products contemplated to be sold, or methods or
procedures to be practiced under this Agreement.
14.3 Subject to Paragraphs 14.4 and 14.6, all past, present, and future
reasonable costs for preparing, filing, prosecuting, and maintaining
all United States and foreign patent applications, and patents issuing
thereon and contemplated by the executed Letter Agreement dated
February 24, 1992 and this Agreement and not paid for by a third party
shall be borne by LICENSEE, so long as the licenses granted to
LICENSEE herein are exclusive. If, however, REGENTS reduces the
exclusive licenses granted herein to non-exclusive licenses pursuant
to Paragraphs 7.2, 7.3, or 7.4 and REGENTS grants additional
license(s), the costs of preparing, filing, prosecuting and
maintaining such patent applications and patents shall be divided
equally among the licensed parties from the effective date of each
subsequently granted license agreement.
14.4 REGENTS shall file prosecute and maintain, at the request of LICENSEE,
patent applications and patents covered by LICENSED PATENTS in foreign
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19
Exhibit 10.8
countries if available and if LICENSEE so desires. LICENSEE must
notify REGENTS within nine (9) months of the filing of the
corresponding United States application of its decision to obtain
foreign patents. The notice concerning foreign filing shall be in
writing and must identify the countries desired. The absence of such a
notice from LICENSEE to REGENTS within such nine (9) month period
shall be considered an election not to secure foreign rights. REGENTS
shall have the right to file patent applications at its own expense in
any country in which LICENSEE has not included in the list of desired
countries and such application and resultant patents shall not be
subject to this Agreement unless LICENSEE pays to REGENTS an amount
equal to the costs LICENSEE would otherwise have been obligated to pay
and provided that such patent applications and patents and have not
been exclusively licensed to a third party subsequent to LICENSEE's
decision not to secure foreign protection in that country.
14.5 All patents and patent applications under this Agreement shall be held
in the name of REGENTS, shall be obtained using counsel of REGENTS'
choice reasonably acceptable to LICENSEE, and shall be subject to the
terms and provisions hereof. If LICENSEE rejects three choices of
REGENTS' counsel, then REGENTS may choose counsel without LICENSEE's
assent. REGENTS counsel as of the effective date of the Agreement is
acceptable to Licensee...REGENTS can always act to preserve rights.
REGENTS shall take into consideration LICENSEE'S reasonable
suggestions in the preparation and prosecution of LICENSED PATENTS
covering INVENTION in order to obtain the broadest claims and
protection.
14.6 LICENSEE's obligation to underwrite and to pay all domestic and
foreign patent filing, prosecution, and maintenance costs shall
continue for so long as this Agreement remains in effect, provided,
however, that LICENSEE may terminate its obligations with respect to
any given patent application or patent in any or all designated
countries upon three (3) months written notice to REGENTS. If REGENTS
initiates any action subsequent to the written notice from LICENSEE,
REGENTS shall bear all costs associated with such action. REGENTS will
use its best efforts to curtail patent costs when such a notice is
received from LICENSEE. REGENTS may continue prosecution
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20
and/or maintenance of such application(s) or patent(s) at its sole
discretion and expense; provided, however, that LICENSEE shall
have no further right or licenses thereunder unless LICENSEE pays
to REGENTS an amount equal to the costs LICENSEE would otherwise
have been obligated therefor, and provided that REGENTS has not
granted or are not in bonafide negotiation to grant an exclusive
license to a third party in such patent application(s) and
patent(s) subsequent to LICENSEE's written notice.
15. MARKING
Prior to the issuance of patents under LICENSED PATENTS, LICENSEE agrees to
xxxx LICENSED PRODUCTS (or their containers or labels) made, sold, or
otherwise disposed of by it in the United States under the license granted
in this Agreement with the words "Patent Pending," and following the
issuance in the United States of one or more patents under LICENSED
PATENTS, with the numbers of the LICENSED PATENTS. ALL LICENSED PRODUCTS
shipped to, manufactured, or sold in other countries shall be marked in
such manner as to conform with the patent laws and practices of such
countries.
16. USE OF NAMES AND TRADEMARKS
Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity or other promotional activities any
name, trademark, trade name, or other designation of either party hereto
(including any contraction, abbreviation, or simulation of any of the
foregoing). Unless required by law or consented to in writing by REGENTS,
the use of the name "The Regents of the University of California" or the
name of any University of California campus is expressly prohibited.
17. LIMITED WARRANTIES
17.1 REGENTS warrants to LICENSEE that it has the lawful right to
grant this license.
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21
17.2 These licenses and the associated INVENTION are provided without
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
ANY OTHER WARRANTY, EXPRESSED OR IMPLIED. REGENTS MAKE NO
REPRESENTATIONS OR WARRANTIES THAT THE LICENSED PRODUCTS OR LICENSED
METHOD WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHTS.
17.3 IN NO EVENT WILL REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THE LICENSE GRANTED
HEREUNDER OR THE USE OF THE INVENTION OR LICENSED PRODUCTS.
17.4 Nothing in this Agreement is or shall be construed as:
(a) A warranty or representation by REGENTS as to the validity or
scope of any LICENSED PATENTS; or
(b) A warranty or representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement
is or will be free from infringement of patents of third parties;
or
(c) An obligation to bring or prosecute actions or suits against
third parties for patent infringement, except as provided in
Article 18; or
(d) Conferring by implication, estoppel, or otherwise any license or
rights under any patents of REGENTS other than LICENSED PATENTS
as defined herein; or
(e) An obligation to furnish any know how, not provided in REGENTS'
LICENSED PATENTS.
18. PATENT INFRINGEMENT
18.1 In the event that the LICENSEE shall learn of the substantial
infringement of any LICENSED PATENTS under this Agreement, the
LICENSEE shall promptly inform REGENTS with reasonable evidence of
such infringement. Both parties to this Agreement agree that during
the period and in a jurisdiction where the LICENSEE has exclusive
rights under this Agreement, neither will notify a third party of the
infringement without first obtaining consent of the other party, which
consent shall not be unreasonably denied.
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22
Both parties shall use their best efforts, in cooperation with each
other, to terminate such infringement without litigation.
18.2 The LICENSEE may request that REGENTS take legal action against the
infringement. Such request shall be made in writing and shall include
reasonable evidence of such infringement and damages to the LICENSEE.
If the infringing activity has not been abated within ninety (90) days
following the effective date of such request, REGENTS shall have the
right to:
(a) Commence suit on their own account; or
(b) Refuse to participate in such suit.
REGENTS shall give notice of their election in writing to LICENSEE by
the end of the one-hundredth (100th) day after receiving notice of
such request from the LICENSEE and absent refusal to participate in
such suit, shall commence suit promptly thereafter. The LICENSEE may
thereafter bring suit for patent infringement if, and only if, REGENTS
elect not to commence suit and if the infringement occurred during the
period and in a jurisdiction where LICENSEE had exclusive rights under
this Agreement. In such event, LICENSEE shall have sole control and
sole decision making authority with respect to defending and enforcing
the LICENSED PATENTS solely in connection with such suit, provided
REGENTS does not thereafter join such suit. However, in the event the
LICENSEE elects to bring suit in accordance with this paragraph,
REGENTS may thereafter join such suit at their own expense and, in the
event REGENTS commences suit on their own account in accordance with
this paragraph, LICENSEE may thereafter intervene in such suit on its
own account and at its expense, provided that before application to
intervene is made to the court, LICENSEE shall first meet with REGENTS
and discuss fully and in good faith LICENSEE's reason for such
intervention. In the event LICENSEE elects to bring suit in accordance
with this paragraph and REGENTS does not join such suit as provided in
this paragraph, (i) as between LICENSEE and REGENTS, LICENSEE shall
have the sole right to prosecute such action and recover damages for
infringement (including, without limitation, past infringement) and
(ii) REGENTS acknowledge they will be bound by the result of such
action, will refrain from duplicative litigation involving such
infringement by the infringing party, will reasonably cooperate with
LICENSEE, at LICENSEE's expense, in
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23
THE SYMBOLS "[*]" IS USED TO INDICATE THAT A PORTION OF THE EXHIBIT HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
responding to discovery requests by the infringing party relevant to
issues of patent validity and enforceability and, upon LICENSEE's
request, will submit to the court an affidavit to the foregoing
effects.
18.3 [*]
18.4 Each party agrees to cooperate with the other in legal proceedings
instituted hereunder but at the expense of the party on account of
whom suit is brought. Such legal proceedings shall be controlled by
the party bringing the action, except that REGENTS may be represented
by counsel of their choice, at its sole expense, in any action
brought by LICENSEE and LICENSEE may be represented by counsel of
its choice, at its sole expense, in any action brought by REGENTS in
which LICENSEE intervenes.
19. INDEMNIFICATION
19.1 LICENSEE agrees, and agrees to require its sublicensees, to
indemnify, hold harmless, and defend REGENTS and their officers,
employees, and agents; sponsor(s) of the research that led to the
INVENTION; and the inventors of the patents and patent applications
in LICENSED PATENTS and their employees against any and all
liability, claims, suits, losses, damages, costs, fees, and expenses
for death, illness, personal injury, property damage, and improper
business practices arising out of the manufacture, use, sale, lease,
or other disposition of INVENTION, LICENSED PATENTS, or LICENSED
PRODUCTS by LICENSEE, by its sublicensees, or each of their customers.
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24
REGENTS shall promptly notify LICENSEE in writing of any claim or suit
or any perceived threat thereof brought against REGENTS for which
REGENTS intends to invoke the provisions of this Paragraph 19.1. and
LICENSEE shall have sole control of the defense thereof provided that
LICENSEE shall not settle any such claim or suit that admits liability
on the part of REGENTS or its employees without REGENTS prior written
consent. No settlement of any claim, suit or perceived threat thereof
received by REGENTS shall be made without prior written approval of
LICENSEE if indemnification is sought by REGENTS hereunder.
19.2 The LICENSEE, at its sole costs and expense, shall insure its
activities in connection with the work under this Agreement and
obtain, keep in force and maintain Comprehensive Insurance or
Commercial Form General Liability Insurance (contractual liability and
products liability included) with limits as follows:
(a) Each Occurrence $1,000,000
(b) Products/Completed Operations Aggregate $5,000,000
(c) Personal and Advertising Injury $1,000,000
(d) General Aggregate (commercial form only) $5,000,000.
It should be expressly understood, however, that the coverages and
limits referred to under the above shall not in any way limit the
liability of LICENSEE. Upon REGENTS' request, LICENSEE shall furnish
REGENTS with certificates of insurance evidencing compliance with all
requirements.
19.3 Insurance coverage, as required under Paragraph 18.2 above, shall:
(a) Provide for thirty (30) day advance written notice to REGENTS of
cancellation or of any modification;
(b) Indicate that "The Regents of the University of California" and
their officers, employees, students, agents, have been endorsed
as additional insured; and
(c) Include a provision that the coverages will be primary and will
not participate with, nor will be excess over, any valid and
collectible insurance or program of self-insurance carried or
maintained by REGENTS.
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25
20. EXPORT CONTROLS
LICENSEE understands that REGENTS are subject to United States Laws and
regulations (including the Arms Export Control Act, as amended, and the
Export Administration Act of 1979), controlling the export of technical
data, computer software, laboratory prototypes and other commodities, and
REGENTS' obligations under this Agreement are contingent on compliance with
such laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United
States Government and/or written assurances by LICENSEE that LICENSEE shall
not export such technical data and/or commodities to certain foreign
countries without prior approval of such agency. REGENTS neither represent
that a license shall not be required nor that, if required, it shall be
issued.
21. FOREIGN GOVERNMENTAL APPROVAL OR REGISTRATION
If this Agreement or any associated transaction is required by the law of
any nation to be either approved or registered with any governmental
agency, LICENSEE shall assume all legal obligations to do so.
22. ASSIGNMENT
This Agreement is binding upon and shall inure to the benefit of the
parties hereto and their respective successors and assigns, provided,
however, this Agreement shall be personal to the LICENSEE and assignable by
the LICENSEE only with the written consent of REGENTS, which consent shall
not be unreasonably withheld, except that LICENSEE may freely assign this
Agreement to an acquiror of all or substantially all of LICENSEE's stock,
assets or business.
23. NOTICES
All notices under this Agreement shall be deemed to have been fully given
when done in writing and deposited in the United States mail, registered or
certified, and addressed as follows:
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26
To REGENTS: Office of Technology Licensing
0000 Xxxxxxxx Xxxxxx, Xxxxx 000
Xxxxxxxx, XX 00000-0000
Attn.: Director (UC Case No.: B92-024-1)
To LICENSEE: Molecular Dynamics
000 Xxxx Xxxxxx Xxx.
Xxxxxxxxx, XX 00000
Attn.: President
Either party may change its address upon written notice to the other party.
24. LATE PAYMENTS
In the event royalty payments or fees are not received by REGENTS when due,
LICENSEE shall pay to REGENTS interest charges at a rate of the percent
(10%) per annum. Such interest shall be calculated from the date payment
was due until actually received by REGENTS.
25. WAIVER
25.1 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall
not constitute a waiver of that right or excuse a similar subsequent
failure to perform any such term or condition by the other party.
25.2 None of the terms, covenants, and conditions of this Agreement can be
waived except by the written consent of the party waiving compliance.
26. CONFIDENTIALITY
26.1 LICENSEE and REGENTS respectively shall hold the other party's
proprietary business, terms of this Agreement, patent prosecution
material, and technical information and other proprietary information
in confidence and against disclosure to third parties with at least
the same degree of care as it exercises to protect its own data and
license agreements of a similar nature.
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27
26.2 Nothing contained herein shall in any way restrict or impair the
right of LICENSEE or REGENTS to use, disclose, or otherwise deal with
any information or data which it can document:
(a) at the time of disclosure to a receiving party is generally
available to the public or thereafter becomes generally available
to the public by publication or otherwise through no act of the
receiving party;
(b) the receiving party can show by written record was in its
possession prior to the time of disclosure to it hereunder and
was not acquired directly or indirectly from the disclosing
party;
(c) is independently made available to the receiving party without
restrictions as a matter of right by a third party;
(d) is subject to disclosure under the California Public Records Act
or other requirements of law;
(e) was independently developed by the receiving party by employees
without the use of or access to the disclosing party's
proprietary information as shown by records; and/or;
(f) is furnished to a third party by the receiving party with similar
confidentiality restrictions imposed on such third party, as
evidenced in writing.
26.3 It is understood that REGENTS shall be free to release to the
inventors and senior administrators employed by REGENTS the terms and
conditions of this Agreement upon their request. If such release is
made, REGENTS shall inform such employees of the confidentiality
obligations set forth above and shall request and use its best efforts
to ensure that they do not disclose such terms and conditions to
others. It is further understood that should a third party inquire
whether a license to LICENSED PATENTS is available, REGENTS may
disclose the existence of this Agreement and the extent of the grant
in Article 3 to such third party, but shall not disclose the name of
LICENSEE, except where REGENTS are required to release information
under either the California Public Records Act or other applicable
law, provided REGENTS shall give prior written notice to LICENSEE of
such disclosure.
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28
26.4 LICENSEE and REGENTS agree to destroy or return to the disclosing
party proprietary information received from the other in its
possession within fifteen (15) days following the effective date of
termination. However, each party may retain one copy of proprietary
information of the other solely for archival purposes in non-working
files for the sole purpose of verifying the ownership of the
proprietary information, provided such proprietary information shall
be subject to the confidentiality provisions set forth in Paragraph
26.1. LICENSEE and REGENTS agree to provide each other, within thirty
(30) days following termination, with a written notice that
proprietary information has been returned or destroyed.
26.5 The terms of this Article 26 (Confidentiality) shall expire in five
(5) years from the official date of termination of this Agreement.
27. FAILURE TO PERFORM
In the event of a failure of performance due under the terms of this
Agreement and if it becomes necessary for either party to undertake legal
action against the other on account thereof, then the prevailing party
shall be entitled to reasonable attorney's fees in addition to costs and
necessary disbursements.
28. FORCE MAJEURE
The parties to this Agreement shall be excused from any performance
required hereunder if such performance is rendered impossible or
unfeasible due to any catastrophes or other major events beyond their
reasonable control, including, without limitation, war, riot, and
insurrection; laws, proclamations, edicts, ordinances, or regulations;
strikes, lockouts, or other serious labor disputes; and floods, fires,
explosions, or other natural disasters. When such events have abated, the
parties' respective obligations hereunder shall resume.
29. SEVERABILITY
The provisions of this Agreement are severable, and in the event that any
provision of this Agreement shall be determined to be invalid or
unenforceable under any
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29
controlling body of law, such invalidity or enforceability shall not in any
way affect the validity or enforceability of the remaining provisions
hereof.
30. APPLICABLE LAW
THIS AGREEMENT SHALL BE CONSTRUED, INTERPRETED, AND APPLIED IN ACCORDANCE
WITH THE LAWS OF THE STATE OF CALIFORNIA. QUESTIONS CONCERNING THE LAW AND
EFFECT OF THE LICENSED PATENTS SHALL BE DETERMINED BY THE LAW OF THE
COUNTRY IN WHICH THE PATENT WAS GRANTED.
31. SCOPE OF AGREEMENT
This Agreement (except for Confidential Disclosure Agreement dated February
14, 1992 and Letter Agreement dated November 15, 1991, which shall continue
to the extent it is not inconsistent with this Agreement) incorporates the
entire agreement between the parties with respect to the subject matter
hereof, and this Agreement may be altered or modified only by written
amendment duly executed by the parties hereto.
IN WITNESS WHEREOF, THE PARTIES HERETO HAVE EXECUTED THIS AGREEMENT IN DUPLICATE
ORIGINALS BY THEIR DULY AUTHORIZED OFFICERS OR REPRESENTATIVES.
THE REGENTS OF THE MOLECULAR DYNAMICS
UNIVERSITY OF CALIFORNIA
By /s/ Xxxxxxx X. Xxxxxxx By /s/ Xxx Xxxxxxx
------------------------------- -------------------------------
Xxxxxxx X. Xxxxxxx
Director
Office of Technology Licensing Printed Name Xxx Xxxxxxx
---------------------
Date Feb 9, 1994 Title President
----------------------------- ----------------------------
Date 11/9/93
-----------------------------
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