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* TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4),
200.83 AND 240.24b-2
EXHIBIT 10.44
LICENSE AGREEMENT
BETWEEN
XENOMETRIX, INC.
AND
AFFYMETRIX, INC.
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LICENSE AGREEMENT
This Agreement is made this 30th day of September 1998 (the "Effective Date"),
by and between Xenometrix, Inc. ("XENO"), a Delaware corporation with principal
offices at 0000 00xx Xxxxxx, Xxxxxxx, XX 00000-0000 and Affymetrix, Inc.
("AFFYMETRIX"), a Delaware corporation with principal offices at 0000 Xxxxxxx
Xxxxxxxxxx, Xxxxx Xxxxx, XX 00000 to license certain technology.
RECITALS
WHEREAS, XENO is the owner or exclusive licensee of the XENO Patents relating to
certain assays, technology and intellectual property further described herein,
and desires to non-exclusively license the same to AFFYMETRIX; and
WHEREAS, AFFYMETRIX seeks to obtain certain non-exclusive license rights under
the XENO Patents, according to the terms contained herein (the "Agreement");
Now, therefore, in consideration of the foregoing and the covenants and promises
contained herein the parties agree as follows:
1. DEFINITIONS
1.1. "Affiliate" means any corporation or other business entity controlled
by, or in common control of an entity. Control, as used in the context
of a business entity, means the ownership directly or indirectly of
fifty percent (50%) of the voting securities of the person,
corporation, or other entity or a fifty percent (50%) or greater
interest in a) the income of such corporation or other entity or b) the
ability otherwise of the entity to secure that the affairs of such
person, corporation or other entity are managed in accordance with the
such entity's wishes.
1.2. "Confidential Information" means all information, compounds, data, and
Materials received by either party from the other party pursuant to
this Agreement including, without limitation, technology of each party,
subject to the exceptions set forth in Section 5.1.
1.3. "Control" or "Controlled" means, in the context of intellectual
property, possession by a party of the ability to grant a license or
sublicense in accordance with the terms of this Agreement, and without
violating the terms of any agreement by such party with any Third
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Party.
1.4. "Field" means [*].
1.5. "Harvard License Agreement" means the license agreement between the
President and Fellows of Harvard College and Venmark Ltd., now XENO,
executed on January 17, 1992 attached hereto as Exhibit B.
1.6. "Licensed Product(s)" means products or components thereof claimed in
Xeno Patents or products or components thereof made in accordance with
or by means of Licensed Processes.
1.7. "Licensed Process(es)" means the processes claimed in XENO Patents.
1.8. "Materials" means any biological or chemical entity for screening or
assays, including reagents, cells, promoters, enhancers, vectors,
plasmids, proteins and fragments thereof, peptides, antigens,
antibodies, antagonists, agonists, inhibitors, and chemicals.
1.9. "Net Sales" means the amounts received for sales or use of Licensed
Products or Licensed Processes less: a) reasonable credits or
allowances, if any, actually granted on account of price adjustments,
recalls, rejections, or return of items previously sold, b) excises,
sales taxes, value added taxes, consumption taxes, duties, or other
taxes imposed upon and paid with respect to such sales (excluding
income or franchise taxes of any kind) and c) separately itemized
insurance and transportation costs incurred in shipping Licensed
Products to such third parties. Net Sales shall not include any
transfer between AFFYMETRIX and any of its Affiliates for resale when
such Affiliate pays royalties upon such resale. If AFFYMETRIX or its
Affiliate sells Licensed Products or Processes to or through a
distributor (which is not an Affiliate), Net Sales shall be the gross
revenues from the sales to such distributor. In the event that
AFFYMETRIX or any of its Affiliates shall make any transfer to third
parties for other than monetary value in whole or in part, such
transfer shall be considered a sale hereunder for accounting and
royalty purposes. Net Sales for any such non-monetary transfers shall
be determined on a country-by-country basis and shall be the average
price of arms length sales by AFFYMETRIX or its Affiliates in such
country during the royalty reporting period in which such transfer
occurs, or if no such arms length sales occurred in such country during
such period, during the last period in which such arms length sales
occurred. If no arms length sales have occurred in a particular
country, Net Sales for
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* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24b-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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such transfer shall be the average price of arms length sales in all
countries. Notwithstanding the foregoing, no transfer of products or
services for evaluation testing or as samples shall be considered a
sale hereunder for accounting and royalty purposes unless such transfer
is for value. If a Licensed Product or Process is sold as part of a
system, package, or combination product or process (including
combinations of a product and a process), Net Sales shall be calculated
by multiplying the Net Sales of the combination product or process by
the fraction A/B where "A" is the average unit price of the licensed
product or process when sold separately and "B" is the average unit
price of the combination product or process. If the product or process
is not sold separately, the Parties shall negotiate in good faith the
appropriate percentage of the unit price of the combination product or
process. Net Sales shall not include technology access, support fees,
or service fees paid in partial consideration for access to nucleic
acid arrays, provided that a material profit is derived from the sale
of such nucleic acid arrays. It is assumed for the purposes of this
Agreement that the business model of AFFYMETRIX provides for the
derivation of profits primarily or substantially through the sale of
nucleic acid arrays licensed hereunder, or processes using such nucleic
acid arrays. In the event that AFFYMETRIX modifies its business
strategy such that derivation of profits is substantially or primarily
through another vehicle (such as the licensing of software or sale of
Systems) the Parties will meet and confer to negotiate in good faith a
substitute definition of Net Sales that will provide XENO with a
substantially equivalent royalty payment as if such business model was
not modified. In the event that the Parties cannot agree upon an
alternate definition of Net Sales, the Parties shall resolve the issue
by prompt, binding arbitration by the rules of the ICC.
1.10. "XENO Patents" means the U.S. patents and patent applications listed on
Exhibit A hereto, any patent applications filed prior or subsequent to
the Effective Date that claim the benefit of an early filing date of
any of the patent applications listed in Exhibit A, and any reissues,
extensions, substitutions, confirmations, re-registrations,
re-examinations, continuations, divisionals or continuations-in-part of
the foregoing patents and patent applications, as well as all foreign
counterparts or equivalents thereof.
1.11. "Third Party" means any entity other than (i) AFFYMETRIX and any of its
Affiliates, and (ii) XENO and any of its Affiliates.
2. LICENSES
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2.1. Grant of Licenses Under the XENO Patents from XENO to AFFYMETRIX.
2.1.1. Non-Exclusive License to XENO Patents. XENO hereby grants to
AFFYMETRIX and its Affiliates a non-exclusive, worldwide
license in the Field, without the right to sublicense under
XENO's ownership interest in the XENO Patents to make, use,
have made, sell, have sold, offer for sale, import, export or
otherwise exploit any process, composition of matter or other
invention claimed in the XENO Patents. Licensed Products shall
enjoy the benefit of this license for any Third Party who
purchases Licensed Product, however, the license shall only
apply to those Licensed Products that are purchased by the
Third Party from Affymetrix.
2.1.2. Non-Exclusive Sublicense to XENO Patents under the Harvard
License Agreement. XENO hereby grants to AFFYMETRIX and its
Affiliates a non-exclusive, worldwide sublicense in the Field,
without the right to sublicense, under XENO's right to
sublicense the XENO Patents in the Harvard License Agreement
to make, use, have made, sell, have sold, offer for sale,
import, export or otherwise exploit any process, composition
of matter or other invention claimed in the XENO Patents.
AFFYMETRIX acknowledges the Harvard License Agreement and
XENO's and AFFYMETRIX's duties and obligations thereunder.
Licensed Products shall enjoy the benefit of this license for
any Third Party who purchases Licensed Product, however, the
license shall only apply to those Licensed Products that are
purchased by the Third Party from Affymetrix.
3. COMPENSATION
3.1. Compensation for the XENO Patents License.
3.1.1. XENO Patent Licenses and Rights.
3.1.1.1 Payments As consideration for the licenses and rights
granted to AFFYMETRIX herein, AFFYMETRIX has, or will pay to
XENO:
(a) [*];
(b) [*] payment of $[*] fee and for i) access to the
technology licensed hereunder; and ii) assistance from
XENO to Affymetrix in toxicity chip
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* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24b-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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design. The chip design assistance component shall be
negotiated in good faith between the parties after the
conclusion of this Agreement, but shall provide for
technical assistance [*];
(c) an earned royalty of [*] percent [*] for sales in a
specific country which has patents that cover the
Licensed Products and which have issued [*]. It is
understood that no earned royalty is payable on products
and processes not specifically designed, labeled or
marketed for use in the Field.
The [*] fee paid above shall be considered [*] to constitute an up-front
payment for technology hereunder. [*].
3.1.1.2 Duration of Compensation
Compensation for the XENO Patents License will be due by
AFFYMETRIX to XENO until the termination of this
Agreement and at the most until the last expiration date
of all XENO Patents.
3.1.2. Royalty Reports, and Payments. Beginning on the Effective
Date, AFFYMETRIX shall make non-audited written reports (even
if there are no sales) and earned royalty payments to within
sixty (60) days after the end of the each calendar quarter.
These reports shall state the Net Sales of Licensed Product(s)
and Licensed Service(s) during such completed calendar
quarter, and resulting calculations of royalty payment due
XENO for such completed calendar quarter. Concurrent with the
making of each such report, AFFYMETRIX shall include payment
due XENO of royalties for the calendar quarter covered by such
report. The royalty will be solely due for the countries where
there is an issued XENO Patent and where a valid claim is in
effect.
3.1.3. [*].
3.1.4. Accounting. AFFYMETRIX agrees to keep and maintain records for
a period of three (3) years showing the manufacture, sale,
use, Net Sales and other income
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* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24b-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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according to this Agreement. Such records will include general
ledger records showing cash receipts and expenses, and records
that include sufficient detail to enable the royalties payable
hereunder by AFFYMETRIX to be determined. AFFYMETRIX further
agrees to permit its relevant books and records to be examined
by XENO confidentially pursuant to the provisions herein, from
time to time from three (3) years from the date of a
transaction to the extent necessary to verify reports provided
for above. Such examination is to be made by XENO or its
designee, at the expense of XENO except in the event that the
results of a definitive audit reveal an underreporting of
royalties due XENO of five percent (5%) or more in any
calendar year, then the audit costs shall be paid by
AFFYMETRIX.
4. REPRESENTATIONS AND WARRANTIES
4.1. Representations and Warranties of AFFYMETRIX and XENO.
Each party hereby represents and warrants:
Corporate Power. Such party is duly organized and validly existing and
in good standing under the laws of the state and/or country of its
incorporation and has all requisite corporate power and authority to
enter into this Agreement and to carry out the provisions hereof.
Due Authorization. Such party is duly authorized to execute and deliver
this Agreement and to perform its obligations hereunder.
Binding Agreement. This Agreement is a legal and valid obligation
binding upon it and enforceable in accordance with its terms. The
execution, delivery and performance of this Agreement by such party
does not conflict with any agreement, instrument or understanding, 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 jurisdiction over it.
4.2 Harvard License Agreement. XENO represents and warrants that the
Harvard License Agreement has not at the date hereof expired, been
terminated by either XENO or the President and Fellows of Harvard
College and that XENO has not at the date hereof received
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nor given notice of termination for breach of the Harvard License
Agreement. XENO represents and warrants to use best efforts to maintain
the Harvard License Agreement, including, but not limited to complying
with its obligations to pay the compensation due for the Harvard
License Agreement. XENO agrees to notify AFFYMETRIX of any allegation
by Harvard of XENO having breached the Harvard License Agreement. XENO
warrants that to the best of its knowledge after reasonable inquiry it
has the right under the Harvard License Agreement to make the grants
herein.
4.3 XENO represents and warrants that, under the non-Harvard owned patents
referred to herein that it has the right to make the grants herein.
XENO represents that it is not aware of patents owned or controlled by
XENO other than those licensed herein which are needed or desirable to
practice the methods licensed hereunder.
4.4 Negation of Warranties
Except as expressly set forth in this Agreement, XENO 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 FOR A PARTICULAR PURPOSE, OR THAT THE USE OF
THE LICENSED PRODUCTS OR SERVICES WILL NOT INFRINGE ANY PATENT,
COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLED
WARRANTIES.
4.5 Infringement. AFFYMETRIX hereby agrees to notify XENO immediately of
any claim it receives for alleged patent infringement by AFFYMETRIX of
Third Party patents through and specifically directed to use of XENO
Patents Licenses and Rights.
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5. CONFIDENTIALITY
5.1. Confidential Information. Except as expressly provided herein, the
parties agree that, for the Term and five (5) years thereafter, the
receiving party shall keep completely confidential and shall not
publish or otherwise disclose to another party and shall not use for
any purpose other than to perform the purposes contemplated by this
Agreement any Confidential Information furnished to it by the
disclosing party hereto pursuant to this Agreement, except that to the
extent that it can be established by the receiving party by competent
proof that such Confidential Information:
was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving
party;
became generally available to the public or otherwise part of
the public domain after its disclosure and other than through
any act or omission of the receiving party in breach of this
Agreement; or
was lawfully disclosed to the receiving party by a person
other than a party hereto, or was independently developed by
the receiving party.
5.2. Permitted Use and Disclosures. Each party hereto may use or disclose
Confidential Information disclosed to it by the other party to the
extent such use or disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation,
complying with applicable law, governmental regulation or court order,
submitting information to tax or other governmental authorities, making
a permitted sublicense or otherwise exercising its rights hereunder,
provided that if a party is required to make any such disclosure of
another party's Confidential Information, other than pursuant to a
confidentiality agreement, it will give reasonable advance notice to
the latter party of such disclosure and, save to the extent
inappropriate in the case of patent applications, will use reasonable
efforts to secure confidential treatment of such information prior to
its disclosure (whether through protective orders or otherwise).
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5.3. Confidential Terms. Except as expressly provided herein, each party
agrees not to disclose any material or financial terms of this
Agreement to another party without the consent of the other party, not
to be unreasonably withheld; provided, however, each party reserves the
right to make reasonable disclosures (including the redaction of
material or financial terms) as required by securities or other
applicable laws, or to actual or prospective investors or corporate
partners (including licensees and acquirers), or to accountants,
attorneys and other professional advisors on a need-to-know basis under
circumstances that ensure the confidentiality thereof, or to the extent
required by law.
5.4. Press Release. Notwithstanding the foregoing, the parties shall agree
upon a press release to announce the execution of this Agreement.
Thereafter, XENO and AFFYMETRIX may each disclose to Third Parties the
information contained in such press release without the need for
further approval by the other.
6. TERMINATION
6.1. This Agreement shall continue until the last expiration date of all
patents licensed under this Agreement.
6.2. Either party shall have the right to terminate this Agreement at any
time for a material breach of this Agreement by the other party,
provided that the non-breaching party shall have first given ninety
(90) days prior written notice (thirty (30) days in the event of
non-payment of any amounts due under this Agreement) to the breaching
party describing such breach and stating the non-breaching party's
intention to terminate this Agreement if such breach remains uncured,
and the breaching party thereafter fails to cure same within thirty
(30) days.
6.3. AFFYMETRIX may terminate this Agreement without cause at any time by
providing written notice to XENO of such termination and such
termination will be effective ninety (90) days thereafter. Any
termination pursuant to Section 6.1.3 shall not relieve AFFYMETRIX of
any obligation or liability accrued hereunder prior to such
termination, including AFFYMETRIX's obligation to pay royalties accrued
or accruable. The licenses granted under this agreement shall terminate
in the event the Agreement is terminated by AFFYMETRIX or terminated by
an arbitrator for an uncured breach by AFFYMETRIX.
7. MISCELLANEOUS
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7.1. Binding Effect; Assignment. This Agreement shall be binding upon the
parties' respective successors and permitted assigns. Neither party may
assign this Agreement or any of its rights or obligations hereunder
without the prior written consent of the other party (not to be
unreasonably withheld), and any such attempted assignment shall be
void; provided, that AFFYMETRIX and XENO may assign this Agreement as
part of a merger or consolidation in which the surviving entity assumes
all of AFFYMETRIX's and XENO's rights and obligations hereunder or a
sale of substantially all of the assets of such party to which this
Agreement relates. The parties agree that in the event of the
termination of the Harvard License Agreement, the President and Fellows
of Harvard College shall have the option of having rights in this
Agreement as it relates to the Harvard License Agreement assigned to it
or terminating the license from Harvard granted herein.
7.2. Effect of Waiver. No waiver of any default, condition, provisions or
breach of this Agreement shall be deemed to imply or constitute a
waiver of any other like default, condition, provision or breach of
this Agreement.
7.3. Limitation of Liability. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR
ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT
OF THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
7.4. Indemnification. AFFYMETRIX will defend, indemnify and hold XENO, its
officers, directors, employees, Affiliates and agents harmless against
any and all liability, loss, damage, claim or expense (including
attorney's fees) arising out of a suit by a Third Party from the
performance under this Agreement by AFFYMETRIX; except to the extent
such claim is caused by the negligence or willful misconduct of XENO or
a breach of a representation of XENO. XENO will defend, indemnify and
hold AFFYMETRIX, its officers, directors, employees, Affiliates and
agents harmless against any and all liability, loss, damage, claim or
expense (including attorney's fees) arising out of a suit by a Third
Party from the performance under this Agreement by XENO; except to the
extent such claim is caused by the negligence or willful misconduct of
AFFYMETRIX or a breach of a representation of AFFYMETRIX.
7.5. Patent Defense Costs. XENO will use reasonable efforts, at its
discretion to defend XENO patents at its own expense against any Third
Party infringement. AFFYMETRIX at its
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option may elect to join in any prosecution of Third Party infringer
initiated by XENO at AFFYMETRIX's expense. In the event that AFFYMETRIX
is sued by a Third Party for infringement of a Third Party's patent,
XENO hereby agrees, if AFFYMETRIX so requests, to provide AFFYMETRIX
with all reasonable advice or technical support that AFFYMETRIX may
reasonably request at AFFYMETRIX's expense.
7.6. Patent Marking. AFFYMETRIX agrees reasonably to xxxx Licensed
Product(s), covered by a product claim in the XENO device patents, (or
their containers, labels or associated materials) made, sold, or
otherwise disposed of by it under the license granted in this Agreement
with issued Licensed Patent Numbers covering the Licensed Product(s).
XENO shall from time to time provide AFFYMETRIX with issued Licensed
Patent numbers and AFFYMETRIX will make reasonable efforts to adopt
such markings within a reasonable time frame from such notice.
7.7. Diligence. AFFYMETRIX agrees to use best efforts to fulfill the
obligations of the express due diligence provision of the Harvard
License Agreement as it applies to a sublicense under the Harvard
License Agreement.
7.8. Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment
obligations) on account of failure of performance by the defaulting
party if the failure is occasioned by war, strike, fire, act of God,
earthquake, flood, lockout, embargo, governmental acts or orders or
restrictions, failure of suppliers, or any other reason where failure
to perform is beyond the reasonable control and not caused by the
negligence or intentional conduct or misconduct of the nonperforming
party, and such party has exerted all reasonable efforts to avoid or
remedy such force majeure; provided, however, that in no event shall a
party be required to settle any labor dispute or disturbance.
7.9. Amendment. No modification, supplement to or waiver of this Agreement
or any Addendum hereto or any of their provisions shall be binding upon
a party hereto unless made in writing and duly signed by an authorized
representative of both XENO and AFFYMETRIX. In no event may the terms
of this Agreement be changed, deleted, supplemented or waived by any
notice, purchase order, receipt, acceptance, xxxx of lading or other
similar form of document. A failure of either party to exercise any
right or remedy hereunder, in whole or in part, or on one or more
occasions, shall not be deemed either a waiver of such right or remedy
to the extent not exercised, or of any other right or remedy, on such
occasion or a waiver of any right or remedy on any succeeding occasion.
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7.10. Entire Agreement. This Agreement, and each Exhibit attached hereto, and
each supplemental written agreement contemplated hereunder, sets forth
the entire understanding and agreement of the parties as to the subject
matter thereof, and there are no other understandings, representations
or promises, written or verbal, not set forth herein or on which either
party has relied. If any provisions of any such Addendum or
supplemental written agreement conflict with any provisions set forth
in this Agreement, the provisions of this Agreement shall take
precedence, unless such Addendum or supplemental written agreement
expressly refers to the specific provision(s) of this Agreement that it
is intended to replace or modify (and which shall be limited in force
and effect to such Addendum or supplemental written agreement only).
7.11. Notices. All Notices under this Agreement shall be given in writing and
shall be addressed to the parties at the following addresses:
For XENO:
President
Xenometrix, Inc.
0000 Xxxxx 00xx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
For AFFYMETRIX:
President
Affymetrix, Inc.
0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, XX 00000
Notices shall be in writing and shall be deemed delivered when
received, if delivered by a courier, overnight mail service or the
like, or a week following mailing, if sent by first-class certified or
registered mail, postage prepaid.
7.12. Arbitration. The parties recognize that disputes as to certain matters
may from time to time arise during the term of this Agreement which
relate to either party's rights and/or obligations hereunder. It is the
objective of the parties to establish procedures to facilitate the
resolution
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of disputes arising under this Agreement in an expedient manner by
mutual cooperation and without resort to arbitration. The parties agree
that prior to any arbitration concerning this Agreement, XENO's CEO and
AFFYMETRIX's CEO will meet in person or by video-conferencing in a good
faith effort to resolve any disputes concerning this Agreement. Within
thirty (30) days of a formal request by either party to the other, any
party may, by written notice to the other, have such dispute referred
to their respective officers designated or their successors, for
attempted resolution by good faith negotiations, such good faith
negotiations to begin within thirty (30) days after such notice is
received. Except as otherwise provided specifically herein, any
controversy or claim under this Agreement shall be solely settled by
arbitration by one arbitrator pursuant to the Commercial Arbitration
Rules of the American Arbitration Association (the "Association");
provided that the parties shall first use their best efforts to resolve
such dispute by negotiation. The arbitration shall be conducted in Salt
Lake City, Utah. The arbitrator shall be selected by the joint
agreement of the parties, but if they do not so agree within twenty
(20) days of the date of a request for arbitration, the selection shall
be made pursuant to the rules of the Association. The decision reached
by the arbitrator shall be conclusive and binding upon the parties
hereto and may be filed with the clerk of any court of competent
jurisdiction, and a judgment confirming such decision may, if desired
by any party to the arbitration, be entered in such court. Each of the
parties shall pay its own expenses of arbitration and the expenses of
the arbitrator(s) shall be equally shared; provided, however, that if
in the opinion of the arbitrator(s) any claim hereunder or any defense
or objection thereto was unreasonable, the arbitrator(s) may assess, as
part of the award, all or any part of the arbitration expenses
(including reasonable attorneys' fees) against the party raising such
unreasonable claim, defense or objection. Nothing herein set forth
shall prevent the parties from settling any dispute by mutual agreement
at any time.
7.13. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of Colorado, without regard or
giving effect to its principles of conflict of laws.
7.14. Severability and Survival. This Agreement is intended to be severable.
If any provision(s) of this Agreement are or become invalid, are ruled
illegal by a court of competent jurisdiction or are deemed
unenforceable under the current applicable law from time to time in
effect during the term hereof, it is the intention of the parties that
the remainder of the Agreement shall not be affected thereby and shall
continue to be construed to the maximum extent permitted by law at such
time. It is further the intention of the parties that in lieu of each
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such provision which is invalid, illegal, or unenforceable, there shall
be substituted or added as part of this Agreement by such court of
competent jurisdiction a provision which shall be as similar as
possible, in economic and business objectives as intended by the
parties to such invalid, illegal or unenforceable provision, but shall
be valid, legal and enforceable. Unless expressly stated otherwise, any
provision intended by its meaning to survive, will survive the
expiration or any other termination of this Agreement.
7.15 Independent Contractors. The parties hereto are acting as independent
contractors and shall not be considered partners, joint venturers or
agents of the other. Neither shall have the right to act on behalf of,
or to bind, the other.
7.16 Headings. Captions and paragraph headings are for convenience only and
shall not form an interpretative part of this Agreement. Unless
otherwise specifically provided, all references to an Article
incorporate all Articles or subsections thereunder. This Agreement
shall not be strictly construed against either party hereto and maybe
executed in two or more counterparts, each of which will be deemed an
original and the same instrument.
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IN WITNESS WHEREOF, the parties have executed this Agreement.
By: /s/ Xxxxxxx X. Xxxxxxxx Date: 9/30/98
------------------------------- -------
Xxxxxxx X. Xxxxxxxx
CEO and President
For Xenometrix, Inc.
By: /s/ Xxxxxxx P.A. Xxxxx Date: 9/29/98
------------------------------- -------
Xxxxxxx P.A. Xxxxx
President and CEO
For Affymetrix, Inc.
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EXHIBIT A
EUKARYOTIC GENE PROFILING
--------------------------------------------------------------------------------
PATENT/ FILING COUNTRY ISSUE TITLE
APPLICATION # DATE DATE
--------------------------------------------------------------------------------
08/008,896 1/21/93 US
--------------------------------------------------------------------------------
5,811,231 7/21/95 US 9/22/98 METHODS AND KITS FOR
MAMMALIAN GENE PROFILING
--------------------------------------------------------------------------------
612434 1/21/94 AUSTRALIA 6/11/98
--------------------------------------------------------------------------------
E160178 1/21/94 AUSTRIA 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 BELGIUM 11/12/97
--------------------------------------------------------------------------------
2154265 1/21/94 CANADA
--------------------------------------------------------------------------------
0 680 517 1/21/94 DENMARK 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 EPC 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 FRANCE 11/12/97
--------------------------------------------------------------------------------
694 06 772.5-08 1/21/94 GERMANY 11/12/97
--------------------------------------------------------------------------------
980400301 1/21/94 GREECE 11/12/97
--------------------------------------------------------------------------------
0 680 517 HONG KONG
--------------------------------------------------------------------------------
E77394 1/21/94 IRELAND 11/12/97
--------------------------------------------------------------------------------
20035BE/98 1/21/94 ITALY 11/12/97
--------------------------------------------------------------------------------
6-517147 1/21/94 JAPAN
--------------------------------------------------------------------------------
0 680 517 1/21/94 LUXEMBOURG 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 MONACO 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 NETHERLANDS 11/12/97
--------------------------------------------------------------------------------
US94/00583 1/21/94 PCT
--------------------------------------------------------------------------------
0 680 517 1/21/94 PORTUGAL 1/19/98
--------------------------------------------------------------------------------
9601405-5 2/13/96 SINGAPORE
--------------------------------------------------------------------------------
0 680 517 1/21/94 SPAIN 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 SWEDEN 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 SWITZERLAND 11/12/97
--------------------------------------------------------------------------------
0 680 517 1/21/94 UK 11/12/97
--------------------------------------------------------------------------------
17
18
Procaryotic Gene Profiling
EP 651,825, granted January 14, 1998, filed July 6, 1993
priority July 6, 1992
USSN 08/231,990, filed April 21, 1994, now US 5,585,232,
issued December 17, 1996
USSN 08/374,641, filed July 21, 1995, now US 5,589,337
USSN 07/910,793, filed July 6, 1992 (now abandoned)
Xxxxxxxxx 0000000-0, filed February 14, 0000
Xxxxxx 2,13,9,667, filed July 6, 1993
Korea 95-700038, filed July 6, 0000
Xxxxxxxxx 45884/93, filed July 6, 0000
Xxxxxx 95.0040, filed July 6, 1993.
18
19
EXHIBIT B
HARVARD LICENSE AGREEMENT
19
