Exhibit 10.70
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SETTLEMENT AGREEMENT,
STIPULATION TO SETTLEMENT ORDER UNDER SEAL,
RELEASE AND LICENSE BETWEEN
XXXXXX-JEWISH HOSPITAL AND SYNBIOTICS CORPORATION
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This Settlement Agreement, Stipulation to Settlement Order Under Seal, Release
and License (the "Agreement") effective this 28th day of July, 1998 ("Effective
Date") is made by and between Xxxxxx-Jewish Hospital (hereinafter "the
HOSPITAL") , a Missouri not-for-profit corporation with headquarters in St.
Louis, Missouri, and Synbiotics Corporation (hereinafter "Synbiotics") , a
California corporation with headquarters in San Diego, California.
WHEREAS, the parties were in litigation and set to commence trial in early 1999;
WHEREAS, the HOSPITAL and Synbiotics agreed to forego that trial in exchange for
the terms of this Agreement; and
WHEREAS, the parties desire to fully and finally settle all controversies
between them by the terms of this Agreement.
NOW, THEREFORE, the parties agree to the following terms and conditions:
ARTICLE I - DEFINITIONS
-----------------------
For purposes of this Agreement the words and phrases set forth in this Article
shall have the following meanings:
1.1 As used in the Agreement, "HOSPITAL" and "Synbiotics" include and refer to
each such party's respective parents, subsidiaries, affiliates and
successors.
1.2 "LICENSED PATENTS" means [*].
1.3 "LICENSED PRODUCTS" means any [*] diagnostic products within the allowed
claims of the applicable LICENSED PATENTS, regardless of the end use of
such product. The Parties agree that [*] are covered within the allowed
claims of the applicable LICENSED PATENTS.
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[*] Certain confidential portions of this exhibit have been omitted by means of
blacking out the text (the "Xxxx"). This exhibit has been filed separately
with the Secretary of the Commission without the Xxxx pursuant to the
Company's Application Requesting Confidential Treatment under Rule 24b-2
under the Securities Exchange Act of 1934, as amended.
1.4 "NET SELLING PRICE" means the price charged by Synbiotics to customers for
the sale of LICENSED PRODUCTS, [*]. If any LICENSED PRODUCTS are
transferred to a third party which is not a subsidiary or affiliate of
Synbiotics in a barter transaction or for other than bona fide cash
consideration, NET SELLING PRICE for such LICENSED PRODUCTS shall be the
[*] of such product.
1.5 "SALE(S)" and forms of that term (e.g., "sold") used for purposes of this
agreement means "the passing of title from the seller to the buyer for a
price (U.C.C.(S) 2.401)" as set forth at U.C.C.(S) 2.106, from a person
within the definition of Synbiotics to a person not within the definition
of Synbiotics.
1.6 "NET SALES" means the total sales as calculated from the sales of [*] of
each such sale, together with [*] as set forth in paragraph 1.4.
1.7 "CALENDAR YEAR" means January 1 to December 31.
ARTICLE II - SUPERSEDURE
------------------------
2.1 Upon the Effective Date, the terms and conditions of the Agreement shall
supersede the terms and conditions of any other agreement between the
parties, whether written or oral, relating to the subject matter of this
Agreement, Omission of any terms of the July 9, 1998 Memorandum only
indicates that such term is,not included as a part of this Agreement.
Notwithstanding the above, while the parties intend and believe that the
terms of this Agreement are consistent with the terms of the July 9, 1998
Memorandum, in the event of any perceived or determined inconsistency of
any express terms therebetween, the terms and conditions of the Agreement
shall govern. The terms of this Agreement are both Court Orders and
contractual and not a mere recital.
ARTICLE III - LICENSE GRANT
---------------------------
3.1 Grant of Rights.
The HOSPITAL hereby grants to Synbiotics a [*] to make, use, import, market
and sell LICENSED PRODUCTS under the LICENSED PATENTS, and (without either
party expressing a position as to whether and to what extent such other
products are actually covered within the allowed claims of the applicable
LICENSED PATENTS) a [*], non-royalty bearing license [*] under the LICENSED
PATENTS to make, use, import, market and sell any and all [*], other than
LICENSED PRODUCTS.
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The Hospital hereby grants to Synbiotics a most [*] which applies [*]
hereunder. If the [*] by the Hospital now or at any time in the future [*]
to any other commercial licensee of the LICENSED PATENTS, or any of them,
is [*] then, on or after reaching the [*] of [*] Synbiotics may elect, at
its option, to adopt prospectively the [*] (as calculated above) [*] to
such [*]. The Hospital covenants to inform Synbiotics of all [*] to the
extent they contain [*] would make it [*]. This [*] is not [*]. This [*]
shall not apply to any [*] but shall apply to any [*].
3.2 Patent Marking.
A. Products
Synbiotics shall, within a reasonable amount of time from the Effective
Date of this Agreement, and until given written notice to the contrary by
the HOSPITAL, xxxx all LICENSED PRODUCTS sold by Synbiotics under this
Agreement in accordance with applicable laws and regulatory requirements,
with (at a minimum) the following patent notice:
[*]
Synbiotics' markings need not, however, refer to any country in which the
marked unit of product is not made or sold. It is agreed that patent
markings on product inserts shall be sufficient.
B. [*] for [*].
In the event that Synbiotics [*] LICENSED PRODUCTS as required by [*] of
this section, Synbiotics shall [*].
ARTICLE IV - ROYALTIES
----------------------
4.1 Settlement/License Issue Fee.
A. [*]
1. At the Time of Closing and Future Payments
Synbiotics shall pay to HOSPITAL a [*] settlement/license issue fee in the
sum of [*] payable [*] as follows: (a) [*] at the [*] of this Agreement,
(b) Synbiotics shall deliver to the HOSPITAL at Closing a [*] in a form to
be agreed upon by the parties with a [*] in [*] on the [*] of the Agreement
in the [*], and (c) Synbiotics shall deliver to the HOSPITAL at Closing a
[*] in a form to be agreed upon by the parties with a [*] in [*] on the [*]
of the Agreement in the [*].
2. [*] for [*]
Synbiotics agrees that, when its [*] with [*] is [*], Synbiotics shall [*]
the Hospital a [*] in Synbiotics' [*], in [*] of the [*] under Paragraphs
4.1.A.1.b and 4.1.A.l.c, provided, that such [*] shall be [*], and the
HOSPITAL shall
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execute and deliver any [*]. Synbiotics shall give notice to the Hospital
of the [*] of its [*] with [*] on or before the date of [*] thereof. The
parties agree that the [*] shall be in the form attached.
B. Stock
1. Issuance of Stock
Synbiotics shall issue 333,333 [*] shares of [*] Synbiotics common stock
(the "Shares") to the HOSPITAL on the fifth business day after the
Effective Date, wherein:
a. Synbiotics shall [*], covering the [*] the Hospital, or [*],
to be [*] by the [*] within [*] of issuance of the Shares
and [*] or (ii) the time when the [*]. Synbiotics shall
take any action necessary to [*] such Shares [*] as
requested by the Holders. Synbiotics shall be responsible
for the [*]. Synbiotics shall [*] the holders against [*].
Synbiotics shall provide, [*], copies of the [*] as
reasonably requested by the Holders in connection with [*]
thereunder. Upon request of Holders, Synbiotics shall, in
connection with [*] by the Holders, reasonably cooperate and
[*] as necessary for the Holders to [*].
b. If Synbiotics common stock [*] a [*] per share on [*] the
Effective Date, [*] the following number of [*] of
Synbiotics common stock to the HOSPITAL:
[*]
where
[*]
[*]
Synbiotics shall [*], [*], to be [*] by the [*] within [*]
of issuance of the [*] and shall cause it to [*] (i) [*], or
(ii) the time when the [*] may be [*]. Synbiotics shall
take any action necessary to [*] such [*] as requested by
the Holders. Synbiotics shall be responsible for the [*].
Synbiotics shall [*] against [*]. Synbiotics shall provide,
[*], copies of the [*] as reasonably requested by the
Holders in connection with [*] thereunder. Upon, request of
Holders, Synbiotics shall, in connection with [*] by
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the Holders, reasonably cooperate and [*] Holders to [*].
c. If the Hospital has disposed of any percentage of its
original Shares before the [*] xxxx, the number of [*]
issuable [*] shall be [*]. For purposes of this Paragraph
4.1.B.1 and Paragraph 4.1.B.2. transfers by the [*];
d. The parties agree that if for the [*] period as contemplated
in Paragraph 4.1.B.l.b, wherein Synbiotics' common stock
does [*] of [*] on [*], there is no day on which the [*] and
the [*] by Nasdaq for such [*] is less than [*], then the
[*] in Paragraph 4.1.B.l.b shall be [*] to a [*], subject
only to the original Paragraph 4.1.B.l.b requirements, and
of which the [*] then ended can count as the [*];
e. In the event that Synbiotics fails to cause the [*]
Paragraph 4.1.B.l.a [*], then Synbiotics shall at the option
of the Holders, pay to the Holders at the [*] the [*], in
exchange for all of the Shares; and
f. In the event that Synbiotics fail to cause the [*] within
the Paragraph 4.1.B.i.b [*], then Synbiotics shall at the
[*], in exchange for all of the [*], at the option of the
Holders, pay to the Holders the amount [*].
2. Buy-out or Merger of Synbiotics
In the event that prior to the date occurring [*] following the date hereof
Synbiotics common stock ceases to be included for quotation on the Nasdaq
National Market (and is not then being listed on the New York Stock Exchange),
then Synbiotics, at the time Synbiotics common stock ceases to be so included,
shall at the option of the Holders [*], and no [*] shall be [*]. In the event
that prior to the date occurring [*] following the date hereof, Synbiotics
engages in a transaction pursuant to which the Synbiotics common stock is to be
transformed into the right to receive anything but common stock which is
included for quotation on the Nasdaq National Market or listed on the New York
Stock Exchange, then immediately prior to such transaction Synbiotics or any
other party to any such transaction shall at the option of the Holders [*], and
no [*] shall be [*]. In the event that prior to the date occurring [*]
following the date hereof, Synbiotics engages in a transaction pursuant to which
the Synbiotics common stock is to be transformed into the right to receive
common stock of another entity which is included for quotation on the Nasdaq
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National Market or listed on the New York Stock Exchange, then immediately prior
to such transaction Synbiotics shall at the option of a majority of interest of
the Holders, either cause such other entity to execute an agreement to be bound
by the provisions of this Paragraph 4.1.B. as to [*] before the [*] or [*]. If
the Hospital has disposed of any percentage of its original shares before the
[*], all references to [*] in this Paragraph 4.1.B.2. shall be [*].
4.2. Royalties on Patent Rights.
A. [*] Royalties on [*]
[*] royalty shall be due on the [*] of Synbiotics' Net Sales of Licensed
Products cumulatively from and after [*]. For avoidance of doubt: [*]
shall be deemed only to include, for any purpose, Net Sales of LICENSED
PRODUCTS made, used, imported, or sold [*], as the case may be, after the
issuance of and prior to the expiration of the respective Licensed Patent
applicable to such country.
B. [*] Royalty on the [*]
Synbiotics will pay an [*] royalty on the [*] of Synbiotics' [*].
C. [*] Royalty [*]
Synbiotics will pay a [*] royalty on the [*] of Synbiotics' [*].
D. Royalties Payable [*]
Royalties payable under Paragraphs 4.2.B and 4.2.C shall be reportable and
payable [*] in the Calendar Year, provided that until royalties begin to accrue
pursuant to Paragraph, 4.2.B., reports need only be made annually as provided
below. [*]. (For example, if cumulative [*] are [*], royalties of [*] will be
due).
ARTICLE V - RECORDS, AUDITS, REPORTS AND PAYMENTS
-------------------------------------------------
5.1 Records.
Synbiotics shall keep full, complete, and accurate books and records
containing all particulars which may be reasonably necessary for
determining the amounts payable to the HOSPITAL. Said books of account
shall be kept at Synbiotics, principal place of business. For purposes of
this Agreement, the date of SALE shall be the date Synbiotics takes revenue
credit in its sales accounting records or upon actual receipt of the
proceeds of said SALE, lease or barter, whichever, is earlier.
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5.2 [*] Audit.
Said books and records of Section 5.1 shall be made available for
inspection, upon reasonable notice, [*] as of right during each CALENDAR
YEAR said license is active and for [*] after its termination. Said books
and records shall be maintained for at least [*] following the end of the
CALENDAR YEAR to which they pertain, for inspection by an authorized
accounting representative retained by the HOSPITAL at the HOSPITAL's
expense, for the purpose of verifying Synbiotics, statements. In the event
that Synbiotics, royalties calculated for any [*] reporting period are in
[*], the cost of the audit and review will be borne by Synbiotics.
Notwithstanding the foregoing provisions of this Paragraph 5.2. for any
CALENDAR YEAR which contains a calendar quarter for which net sales of
LICENSED PRODUCTS are [*] of the net sales of LICENSED PRODUCTS for the
same quarter of the prior CALENDAR YEAR, the HOSPITAL may secure [*]
additional audit initially at its own expense and according to all of the
terms of this Paragraph 5.2. Such [*] does not replace or preclude the [*]
set forth above.
5.3 Compliance Audit.
Synbiotics shall provide to the HOSPITAL upon the HOSPITAL's request the
following for the purpose of assuring compliance with the Agreement:
A. One sample of each and every product made, used, offered for sale,
sold or imported by Synbiotics related to detection of [*];
B. Reports on any tests or evaluations of the products described in 5.3.A
when such tests or evaluations are relevant to the determination of whether
such product is a LICENSED PRODUCT.
5.4 Reports.
Concurrently with the royalties required by Article IV, except as set forth
in 4.2.D, Synbiotics shall deliver true and accurate royalty and revenue
reports to the HOSPITAL within [*] after the end of each calendar quarter,
(provided however, that for Net Sales in 4.2.A, Synbiotics shall provide an
[*] for each Calendar Year within 60 days of the end of the calendar year
with all information set forth in 5.4.A through 5.4.D), giving such
particulars of the business conducted by Synbiotics during the preceding
quarter as follows:
[*]
E. For each CALENDAR YEAR, a certification from the Chief Financial Officer
of Synbiotics that the above 5.4.A through 5.4.D fairly represent an
accurate accounting.
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F. Synbiotics represents and warrants that the attached Exhibit A is a fair
and accurate accounting for all [*]. The supporting detail required for
this Paragraph 5.4 (and, correspondingly, Paragraph 5.1) will not be
required for the [*], provided, however, this will not reduce the audit
rights of HOSPITAL. For Net Sales commencing on [*] and thereafter the
details in Paragraph 5.4 shall be required.
5.5 [*] Payments.
Royalties will be accumulated and reported on a [*] calendar basis.
Payment shall be made within [*] following the close of each [*] calendar
period.
5.6 Currency.
All royalties and other payments payable by Synbiotics hereunder shall be
paid in United States Dollars. if transfer restrictions exist or; are
imposed which prevent such payments in United States Dollars, the parties
agree to cooperate to procure whatever licenses or permits are required to
obtain the waiver of such restrictions or otherwise to facilitate the
transfer of such dollars.
5.7 Late Payments
A late charge at the [*] shall accrue on the outstanding balance of any
payment under this Agreement for the period that payment is due until the
time payment is actually received.
ARTICLE VI - PATENT INFRINGEMENT
--------------------------------
6.1 Synbiotics agrees to notify the HOSPITAL promptly of each infringement of
one or more LICENSED PATENTS of which Synbiotics is or becomes aware. In
such event, Synbiotics shall cooperate in all respects if the HOSPITAL
decides to pursue litigation or otherwise take action, but the HOSPITAL
shall reimburse Synbiotics for all personnel and other costs reasonably
incurred in, and as requested by the Hospital, in providing such
cooperation. The HOSPITAL retains sole discretion whether to take action
or institute any litigation.
ARTICLE VII - REPRESENTATIONS AND WARRANTIES
--------------------------------------------
7.1 Authority.
Each party represents and warrants that it has the right and authority to
enter into this Agreement, including but not limited to the fact that it
has sufficient Board Authorization to do so. The persons undersigned
represent that they are authorized to bind the party on whose behalf they
are executing this agreement.
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7.2 Conflicts.
Each party represents and warrants that the making of this Agreement does
not violate any separate agreement it has with any other person or entity.
7.3 Exception.
NOTWITHSTANDING ANY PROVISIONS OF THIS AGREEMENT, THE PARTIES DO NOT
WARRANT OR REPRESENT THAT ANYTHING MADE, USED, SOLD OR OTHERWISE DISPOSED
OF UNDER ANY LICENSE GRANTED IN THIS AGREEMENT OR ANY METHOD(S) PRACTICED
UNDER ANY LICENSE GRANTED IN THIS AGREEMENT ARE OR WILL BE FREE FROM
INFRINGEMENT OF ANY PATENTS OR OTHER PROPRIETARY RIGHTS OF THIRD PARTIES,
NOR WARRANTS THE VALIDITY OR THE SCOPE OF PATENTS.
7.4 Disclaimer.
THE HOSPITAL MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY
KIND, EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS OF LICENSED PRODUCTS FOR A
PARTICULAR PURPOSE, AND SUCH REPRESENTATIONS AND WARRANTIES ARE EXPRESSLY
DISCLAIMED.
ARTICLE VIII - [*]
------------------
8.1 [*]
[*] shall [*], defend, and hold harmless the [*] and its directors,
officers, and employees (collectively [*]), against any liability, damage
or cost, fines, penalties, loss or expense (including, without limitation
attorney?s fees and court costs), incurred by or imposed upon [*] in
connection with any claims, suits, actions, demands, or judgments brought
against an [*] arising out of [*]
ARTICLE IX - CONFIDENTIALITY
----------------------------
9.1 General.
Each party agrees to keep secret [*] the confidential information provided
by the other. It is the obligation of the party seeking a confidential
status of information to designate such information as confidential by
stamping or marking each piece of paper "confidential" or otherwise
informing the receiving party, in writing, that the particular information
is "confidential". The parties will make all efforts possible to have this
Agreement filed under SEAL by the Order of the Court. In any event, this
Agreement, the terms of this Agreement and the July 9, 1998 Memorandum
constitute Confidential Information of each of the parties. Any information
related to the LICENSED PATENTS provided to Synbiotics by the HOSPITAL
under this Agreement shall be deemed "Confidential Information. 11 Each
party shall not use
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any Confidential Information of the other party for any purpose other than
for the purposes of this Agreement.
9.2 Exceptions.
Notwithstanding the foregoing, the confidentiality obligations herein shall
not apply to any Confidential Information received by a party ("Receiving
Party") which falls into any of the following categories:
A. Confidential Information of the HOSPITAL which Synbiotics needs to
disclose to third parties as necessary for making, using, offering for
sale, selling and importing LICENSED PRODUCTS, Any such disclosure shall be
pursuant to confidentiality obligations obtained from the third party, such
confidentiality obligations being acceptable to the HOSPITAL and obtained
prior to any disclosure.
B. The HOSPITAL may disclose this Agreement as necessary for it to comply
with existing provisions and obligations, including but not limited to most
favored nations provisions, in its existing license agreements for the
LICENSED PATENTS.
C. Synbiotics may disclose portions of this Agreement to the extent
strictly necessary for it to comply with its reporting obligations as a
public company.
D. Either party may disclose portions of this Agreement as necessary for
either party to comply with a valid Court Order (provided that the party
requested to disclose shall give the nondisclosing party as much notice as
practicable of the potential court order so as to allow it the opportunity
to resist, in its own or the disclosing party's name, if necessary, the
imposition of the order).
E. Information which becomes generally available to the public through no
breach of this Agreement or third party confidentiality obligations which
may arise consistent with this Agreement;
F. Information which is published or disclosed consistent with the terms of
this Agreement by a party, its employees, or agents to the general public
(including, but not limited to, publication in trade or academic journals,
or similar events open to the general academic or trade community);
G. Information which is disclosed to the Receiving Party by a third party
having the lawful right to disclose same, without direct or indirect
obligation of confidentiality to the Disclosing Party, or its consultants
or agents;
H. Information which is disclosed by the Receiving Party to a government
agency to comply with statutory requirements for
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market approval, clinical trials, certification, manufacture and/or
distribution of the LICENSED PRODUCTS, for which the ReceiVing Party is
unable to lawfully secure confidentiality; or
I. Information which is approved for release by the Disclosing Party, and
then only to the extent such written approval is granted.
ARTICLE X - TERM AND TERMINATION
--------------------------------
10.1 Term.
Unless this Agreement is terminated sooner as provided in this Article 10,
this Agreement shall extend from the Effective Date until the expiration of
the last Licensed Patent to expire.
10.2 Default.
A. Timely Payment of Royalties
Should Synbiotics default in its timely payment of royalties, "payments" or
any other charges or [*] amounts, the HOSPITAL shall have the right to
serve notice upon Synbiotics of its intention to terminate this Agreement
within [*] after said notice of termination, unless Synbiotics shall cure
such default within the [*] period. If within said [*] cure period,
Synbiotics fails in paying any or all such royalties as calculated per
Synbiotics, royalty reports or the Hospital's audits, payments, or other
charges or indemnification amounts due and payable, the rights, privileges,
and license granted hereunder shall terminate immediately upon receipt of
written notice thereof from the HOSPITAL. Synbiotics shall at any time
prior to receipt of notice of termination have the right to pay under
protest and xxx for refund.
B. Timely Issuance [*] of Stock
Should Synbiotics default in its timely issuance of stock and/or (despite
tender by the HOSPITAL of the securities to be surrendered for
cancellation) the [*], the HOSPITAL shall have the right to serve notice
upon Synbiotics of its intention to terminate this Agreement within [*]
after said notice of termination, unless Synbiotics shall cure such default
within the [*] period. If within said [*] cure period, Synbiotics fails in
fulfilling the obligations due to the Hospital,;the rights, privileges, and
license granted hereunder shall terminate immediately upon receipt of
written notice thereof from the HOSPITAL.
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C. Material Breach.
Upon any material breach by Synbiotics of its obligations under Paragraphs
5.1 through 5.4 of this Agreement, the HOSPITAL shall have the right to
terminate this Agreement, and the rights and license granted hereunder, by
giving [*] notice to Synbiotics. Such termination shall become effective
at the end of such [*] period unless Synbiotics has cured such breach prior
to the expiration of the [*] period.
D. Specific Remedies.
The parties confirm that damages at law would be an inadequate remedy for
breach or threatened breach of any of the promises described in Paragraphs
3.2, 5.11, 5.21, 5.31, 5.4 and Article IX and the parties further agree
that in the event of a breach or threatened breach of any provision
thereof, the respective rights and obligations shall be enforceable by
specific performance, injunction or other equitable remedy, but nothing
herein contained is intended or shall it limit or affect any rights
available to the parties at law, by statute or otherwise, it being the
intention of this paragraph to make clear that the promises shall be
enforceable in equity as law or otherwise.
10.3 Remedy Not Exclusive.
Termination shall not be the exclusive remedy for the matters described in
Paragraph 10.2, nor shall the seeking of any other remedy be deemed an
election of remedies.
10.4 Obligation on Termination.
Upon termination, a final report shall be submitted by Synbiotics as
described in Section 5.4 and any royalty payments under Article IV due to
the HOSPITAL shall become immediately payable. Upon termination,
Synbiotics and the HOSPITAL will, if such have not already been destroyed
in the ordinary course, return all originals and copies in all media of all
Confidential Information, subject to the exceptions provided in the
Protective Order entered by the United States District Court, Eastern
District of Missouri (the "Court"), in Civil Action Docket No. 4:97CV1989
DJS (the "Action") as to retention of pleadings and other confidential
documents related to said proceeding. In the absence of a default or
material breach of this Agreement by Synbiotics, upon termination
Synbiotics may complete the manufacture of LICENSED PRODUCTS then in
process and sell its remaining inventory of LICENSED PRODUCTS, subject to
the payment of royalties as set forth in Article V. However, nothing herein
shall be construed to release either party from any obligation which
matured prior to the effective date of such termination.
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10.5 Survival.
Section 3.2, Article V, Article VII, Article VIII, Article IX, Article X
and Article XII and Section 13.1 shall survive any termination of this
Agreement.
10.6 Survivability of This Agreement.
[*]
ARTICLE XI - [*]
----------------
11.1 [*] This Agreement shall inure to the benefit of and be binding upon the
HOSPITAL and Synbiotics, and their assigns and licensees. Notwithstanding the
above, the license granted herein [*] by [*].
ARTICLE XII - MISCELLANEOUS PROVISIONS
--------------------------------------
12.1 Government Rights.
This Agreement is subject to any rights pursuant to research funding from
the Federal Government and will be modified as necessary to conform to
government regulations.
12.2 Waiver.
Neither party may waive or release any of its rights or interests in this
Agreement except in writing. Failure to assert any right arising from this
Agreement shall not be deemed or construed to be a waiver of such right nor
to prohibit subsequent enforcement of such right.
12.3 Agent.
Neither party shall be deemed to be an agent, partner or joint venturer of
the other party as a result of any transaction under or related to this
Agreement, and shall not in any way pledge the other party's credit or
incur any obligation on behalf of the other party.
12.4 Notice.
Except as required by the provisions of Paragraph 9.2.D, any notice or
other communication pursuant to this Agreement shall be sufficiently made
or given on the date of mailing if sent to such party by certified First
Class mail, postage prepaid, addressed to it at its address as first set
forth in this Agreement, or as it shall designate by subsequent written
notice given to the other party. Notices shall be sent to:
If to the HOSPITAL:
Xxxxxx-Jewish Hospital
Xxx Xxxxxx-Xxxxxx Xxxxxxxx Xxxxx
Xx. Xxxxx, XX 00000
ATTENTION: Xxxxxxx Xxxxxxxx
Vice-President
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If to Synbiotics:
Synbiotics Corporation
00000 Xxx Xxxxxxxx
Xxx Xxxxx, XX 00000
ATTENTION: President
This notice information may be amended by either party upon written notice to
the other.
12.5 Publicity.
Synbiotics will not use the name of the HOSPITAL (except to identify it as
a patent licensor and the plaintiff in the settled litigation), nor any
physician, staff member, or employee of the HOSPITAL, in any form of
publicity, advertising, or news release without the prior approval of the
HOSPITAL.
12.6 Governing Law and Jurisdiction.
All questions relating to the license of the Patents granted by the
HOSPITAL to Synbiotics under this Agreement, not governed by Federal Law,
shall be governed by the laws of the State of [*] and all questions
relating to rights and/or releases granted by the HOSPITAL to Synbiotics
under Article 13 of this Agreement shall be governed by the laws of the
State of [*]. The United States District Court for the [*] shall have and
retain jurisdiction for enforcement and interpretation of the Agreement.
12.7 Severability.
The provisions of the Agreement are severable, and in the event that any
provision of this Agreement is determined to be invalid or unenforceable
under any controlling body of law, such invalidity or unenforceability
shall not in any way affect the validity or enforceability of the remaining
provisions hereof.
12.8 Integration.
The parties acknowledge that this instrument sets forth the entire
agreement and understanding of the parties hereto as to the subject matter
hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
12.9 Governmental Approval.
Synbiotics will be solely responsible for obtaining appropriate licenses
(including but not limited to exports) and other governmental approvals for
making, using, offering for sale, selling or importing the LICENSED
PRODUCTS.
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12.10 Settlement Order And Dismissal.
On or before August 1, 1998, the HOSPITAL and Synbiotics will jointly file
with the Court, in and as to the Action, a stipulation for Dismissal with
Prejudice and a motion for leave to file this Agreement under Seal as a
Settlement Order Under Seal and to maintain such sealed status. The
HOSPITAL and Synbiotics will cooperate in good faith to obtain entry of
the order for dismissal with prejudice and granting such motion, and
thereafter to file and maintain this Agreement under seal and
affirmatively resist all efforts by anyone to unseal it. The aforesaid
filings shall be approved in advance by Synbiotics and the Hospital.
12.11 Attorneys' Fees and Costs
In the event of a dispute regarding this Agreement (including but not
limited to interpretation and/or enforcement), the parties agree that the
prevailing party on a particular issue shall recover its reasonable fees
and costs expended related to that issue.
ARTICLE 13 - MUTUAL RELEASE
---------------------------
13.1 Release.
Synbiotics and the HOSPITAL hereby release, acquit and forever discharge
each other, their subsidiaries, affiliates, agents, employees, insurers,
directors, officers, and shareholders, and their successors and assigns
from any and all liabilities, actions, causes of action, claims or demands
for damages, costs, contribution or indemnification on account of, or in
any way growing out of, any and all known or unknown, foreseen or
unforeseen, anticipated or unanticipated damages of whatever kind or
equitable or declaratory, relief resulting or to result from occurrences
that happened at any time prior to the signing of this Agreement,
including but not limited to those matters set forth in a Complaint and
Counterclaim filed in the Action, except for those obligations set forth
in this Agreement and in the Court's Settlement Order Under Seal entered
or to be entered in said Action. For avoidance of doubt: the HOSPITAL's
claims for patent infringement for all LICENSED PRODUCT activities between
the date the Complaint was filed in the Action and the Effective Date are
also released.
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13.2 No Representations.
Synbiotics and the HOSPITAL admit that no representation of fact or
opinion has been made by either of them to the other with respect to the
extent or nature of the claims or damages in order to induce this
compromise, except as set forth in Paragraph 5.4.F. above.
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13.3 Advice Of Counsel.
Each party has had the advice of counsel of their own choosing before
executing this Agreement. Each party also acknowledges that they have
reviewed this Agreement prior to execution and the execution hereof is
their free act and deed.
IN WITNESS WHEREOF, the parties have hereunder set their hands and seals and
duly executed this Agreement in duplicate by their duly authorized officers the
day and year first above written.
XXXXXX-JEWISH HOSPITAL SYNBIOTICS CORPORATION
/s/ Xxxxx X. Xxxxx /s/ Xxxxxxx X. Xxxxx
----------------------------- -------------------------------
SIGNATURE SIGNATURE
Xxxxx X. Xxxxxx Xxxxxxx X. Xxxxx
NAME NAME
President President and CEO
TITLE TITLE
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EXHIBIT "A"
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