EXHIBIT 10.17
LICENSE AGREEMENT
NOTE: INFORMATION IN THIS DOCUMENT MARKED WITH AN "[*]" HAS BEEN OMITTED AND
FILED SEPARATELY WITH COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH
RESPECT TO THE OMITTED PORTIONS.
This LICENSE AGREEMENT (this "AGREEMENT"), effective as of August 21, 2002
(the "EFFECTIVE DATE"), is by and between Symyx Technologies, Inc., a Delaware
corporation with offices at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxx, Xxxxxxxxxx
00000 ("SYMYX"), and Argonaut Technologies, Inc., a Delaware corporation with
offices at 0000 Xxxxx Xxxxx, Xxxxxx Xxxx, XX 00000 ("ARGONAUT") (each, a
"PARTY"; together, the "PARTIES").
BACKGROUND
A. Symyx and Argonaut previously entered into a License and Supply
Agreement effective as of August 6, 1999, as amended by an Amendment to License
and Supply Agreement, effective as of May 4, 2000, a Second Amendment to License
and Supply Agreement, effective as of June 28, 2001, and an Amendment Three to
License and Supply Agreement, effective as of January 1, 2002 (collectively, the
"PRIOR AGREEMENT");
B. The Parties desire to terminate the Prior Agreement as set forth
herein;
C. The Parties desire to enter into this license agreement as of the
Effective Date on the terms and conditions set forth herein.
NOW, THEREFORE, in consideration of the foregoing and mutual promises and
covenants contained herein, the Parties agree as follows:
0.XXXXXXXXXXXX AND DEFINITIONS
1.1 Construction.
(a) All references in this Agreement to "Articles," "Sections" and
"Exhibits" refer to the articles, sections and exhibits of this Agreement.
(b) As used in this Agreement, neutral pronouns and any variations
thereof include the feminine and masculine and all terms used in the singular
include the plural, and vice versa, as the context may require.
(c) The words "hereof," "herein" and "hereunder" and other words of
similar import refer to this Agreement as a whole, as the same may from time to
time be amended or supplemented, and not to any subdivision contained in this
Agreement.
(d) The word "including" when used herein is not intended to be
exclusive and means "including, without limitation."
1.2 Definitions. As used herein:
(a) "Affiliate" means, with respect to a Party hereto, a
corporation, company or other entity that is owned or controlled by such Party
by virtue of such Party's direct or indirect ownership or control of more than
fifty percent (50%) of the outstanding shares or securities (representing the
right to vote for the election of directors or other managing authority) of such
corporation, company or other entity, but such corporation, company or other
entity shall be deemed to be an Affiliate only so long as such ownership or
control exists.
(b) "Ancillary Patents" means those patents set forth on EXHIBIT B
and foreign counterparts thereto and such other patents as Symyx may designate
in writing from time to time.
(c) "Confidential Information" means any information: (i) disclosed
by one Party (the "DISCLOSING PARTY") to the other (the "RECEIVING PARTY"),
which, if in written, graphic, machine-readable or other tangible form is marked
as "Confidential" or "Proprietary," or which, if disclosed orally or by
demonstration, is identified at the time of initial disclosure as confidential
and reduced to writing and marked "Confidential" within thirty (30) days of such
disclosure; or (ii) which is otherwise deemed to be confidential by the terms of
this Agreement.
(d) "Cost of Goods" means the cost to produce the Licensed Product,
consisting of the sum of the standard manufacturing cost, warranty cost,
installation cost and third party royalty cost paid by Argonaut (other than to
Symyx), if applicable.
(e) "Improvements" means any and all improvements, additions,
enhancements, changes or modifications to the Licensed Products or any component
thereof, that Argonaut, (whether by invention, assignment, license or otherwise)
conceives, reduces to practice or otherwise develops during the term of the
Agreement, in each case independent of Symyx, and all intellectual property
rights relating thereto, including any patent applications and patents
worldwide.
(f) "Know-How" means certain component drawings, data sheets, cost
estimates, assembly criteria, test data and prototypes and other information
that is owned, controlled or licensable by Symyx and was provided to Argonaut
pursuant to the Prior Agreement. Know-How does not include any inventions
included in the Patent Rights or the Software Patent.
(g) "Licensed Product" means a System (as defined in Section 1.2(j)
below), that but for the license granted under this Agreement the manufacture,
use, offer for sale, sale or import of which would infringe the Patent Rights or
the Software Patent, together with consumable items (e.g., stirrers, glass vial
inserts, seals) that are consumed or commonly replaced as a result of the
routine operation of such System.[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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(h) "Patent Rights" means (i) those US patent applications and
issued patents owned or controlled by Symyx as set forth on EXHIBIT A, (ii) all
divisionals, substitutions, continuations, continuations-in-part (only to the
extent such continuations-in-part claim the same subject matter that was
disclosed in an application or patent listed in EXHIBIT A) and re-issues and
re-examinations of (i) above, (iii) any foreign counterparts of any of the
preceding, and (iv) any patents issuing on any of the preceding.
(i) "Software Patent" has the meaning given to it pursuant to
Section 2.1(a)(3).
(j) "System" means a parallel reactor system[*]
(k) "Term" has the meaning given to it pursuant to Section 10.1.
(l) "Territory" means all countries in the world.
(m) "Value Added Reseller" means a person or entity that modifies a
System in a Licensed Product for resale. For clarification, the addition or
integration of third party software and/or equipment with such System, such as
an HPLC or "design of experiment" software, does not constitute a modification
to the System.
2. LICENSE
2.1 Licenses to Argonaut.
(a) Patent Rights and Know-How.
(i) Subject to the terms and conditions of this Agreement, Symyx
hereby grants Argonaut and its Affiliates:
(1) an exclusive (even as to Symyx, except as provided in Section
2.1(a)(ii) below), non-transferable, irrevocable, fully paid, non-sublicensable
(except as set forth in Section 2.1(c)) license during the Term, under the
Patent Rights and Know-How, solely to make, have made, sell, have sold (solely
through sales agent and distributor relationships but not through OEM or Value
Added Reseller relationships), offer for sale, import and export Licensed
Products[*]
(2) a non-exclusive, non-transferable, irrevocable, fully paid,
non-sublicensable (except as set forth in Section 2.1(c)) license during the
Term, under the Patent Rights and Know-How, solely to make, have made, sell,
have sold (solely through sales agent and distributor relationships but not
through OEM or Value Added Reseller relationships), offer for sale, import and
export Licensed Products,[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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(3) a non-exclusive, non-transferable, irrevocable, fully
paid, non-sublicensable (except as set forth in Section 2.1(c)) license during
the Term, [*]
(ii) Notwithstanding Section 2.1(a)(i)(1) above, nothing in this
Agreement shall restrict or prevent Symyx or its Affiliates (1) from making,
having made, or using Licensed Products or any of the components thereof for
internal use by Symyx or its Affiliates for themselves or on behalf of third [*]
(iii) Notwithstanding Section 2.1(a)(i) above, Argonaut and its
Affiliates shall not sell, have sold, offer for sale, import or export a
parallel pressure reactor system containing [*]
(iv) Subject to the terms and conditions of this Agreement, Symyx
hereby grants to Argonaut and its Affiliates a non-exclusive, non-transferable,
worldwide, irrevocable, fully paid, non-sublicensable (except as set forth in
Section 2.1(c)) license during the Term, under the Ancillary Patents solely to:
(1) to use internally Licensed Products in the Territory solely in connection
with the development, sale, support and quality control of such Licensed
Products (but not for internal research and development of materials or
processes); and (2) to grant the rights to sublicensees as set forth in Section
2.1(c) below).
(b) Use of Symyx Name and Logo. In furtherance of Argonaut's marketing of
Licensed Products, Symyx grants to Argonaut, during the term of this Agreement,
the non-exclusive, non-transferable, non-sublicensable, limited right to use
Symyx' name and logo (the "MARKS") in connection with marketing and sales of
Licensed Products and Argonaut agrees to use such Marks in connection with the
marketing and sales of Licensed Products; provided, however, Argonaut shall
comply with Symyx' guidelines, to be provided to Argonaut by Symyx, for use of
the Marks in every use of the Marks on any product advertising or other
marketing material. Argonaut shall, prior to using the Marks, obtain Symyx'
written consent, which consent shall not be unreasonably withheld. The Marks and
all good will associated therewith, including any intellectual property rights
therein, are the exclusive property of Symyx. In all events, Symyx may at any
time terminate the right granted in this Section 2.1(b) in its sole discretion.
(c) Sublicenses. Subject to the terms and conditions of this Agreement,
Symyx hereby grants Argonaut the right to grant to a purchaser of a Licensed
Product a limited, non-exclusive license under the Patent Rights, Software
Patent and Ancillary Patents to use the applicable Licensed Product solely in
accordance with the terms and conditions as set forth in the buyers' license
substantially in the form attached as EXHIBIT C in the case of the Endeavor(R)
instrument and a form to be agreed upon by Argonaut and Symyx prior to the
commercial introduction of any other Licensed Product (collectively, the
"BUYERS' LICENSE"). The terms of the Buyers' License shall be included in the
terms and conditions of Argonaut's quote to potential buyers, as well as in
handbooks for the applicable Licensed Products.
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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(d) Reservation of Rights. All rights in the Patent Rights, Software
Patent, Know-How and Marks not expressly granted to Argonaut above are reserved
to Symyx. Only the licenses granted pursuant to the express terms of this
Agreement shall be of any legal force or effect. No other license rights shall
be created by implication, estoppel or otherwise. ARGONAUT ACQUIRES NO RIGHTS IN
OR LICENSE TO, EXPRESS, IMPLIED, OR OTHERWISE, ANY PATENTS, COPYRIGHTS OR TRADE
SECRETS OWNED OR CONTROLLED BY SYMYX OTHER THAN AS SET FORTH IN THIS ARTICLE 2
HEREOF.
(e) Enforcement. In the event that either Party becomes aware of
third-party activities that could constitute an infringement or misappropriation
of the Patent Rights, Know-How, Marks, or Endeavor trademark, in each case with
respect to Licensed Products, then such Party shall promptly notify the other
Party in writing of such third-party activities, including identification of the
third party and delineation of the facts relating to such third-party
activities. Symyx shall have the sole right, except as expressly set forth
below, in its sole discretion and without obligation, for initiating contact
with, providing notice to, asserting claims or causes of action against, or
initiating proceedings or lawsuits with respect to such third-party activities,
and shall retain complete control over any such matter, including without
limitation issues regarding validity, interpretation, existence, enforceability,
damages or infringement of the Patent Rights, Know-How, Marks, or the Endeavor
trademark. Symyx shall keep Argonaut reasonably informed with respect to
enforcement activities involving Licensed Products and prior to settling any
such matter where such settlement would materially adversely affect the license
rights granted herein, Symyx shall notify Argonaut, and Argonaut shall have the
right to provide to Symyx its comments with respect to such proposed settlement,
provided that Symyx shall retain complete control over any such settlement and
all decisions with respect thereto.
[*]
As used herein, Symyx Expenses shall mean out of pocket costs incurred
by Symyx, including without limitation legal costs, court costs, expert fees,
copy and mailing expenses, travel expenses, etc., but shall not include a charge
for time spent by Symyx employees (including Symyx in house legal counsel).
The Party not enforcing the applicable Patent Rights shall provide
reasonable assistance to the other Party, including providing access to relevant
documents and other evidence and making its employees available, subject to the
enforcing Party's reimbursement of any out-of-pocket expenses incurred by the
non-enforcing Party. Any amounts recovered by either Party pursuant to this
subsection involving third party infringing activities with respect to Licensed
Products that are licensed exclusively to Argonaut hereunder, whether by
settlement or judgment, shall be allocated in the following order: (i) to
reimburse the Parties for their reasonable out-of-pocket expenses in making such
recovery (which amounts shall be allocated pro rata if insufficient to cover the
totality of such expenses); and (ii) the remaining proceeds from any recoveries
or awards relating to such infringing activities shall be allocated eighty
percent (80%) to Argonaut and twenty percent (20%) to
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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Symyx. Any amounts recovered by Symyx involving third party infringing
activities other than as described in the preceding sentence shall be allocated
one hundred percent (100%) to Symyx.]
(f) Maintenance. Symyx shall have the exclusive right to prosecute and
maintain, at its own expense, the Patent Rights and the Software Patent through
patent counsel of its own choosing. If Symyx should decide to abandon or
otherwise choose to discontinue maintenance of any of the issued or granted
Patent Rights or Software Patent, Argonaut shall have the right to assume
control of the maintenance of such issued or granted Patent Rights or Software
Patent at its own expense. Symyx shall inform Argonaut at least ninety (90) days
prior to the abandonment of any of the issued or granted Patent Rights or
Software Patent or promptly in the event that any of the issued or granted
Patent Rights or Software Patent is the subject of a judicial or regulatory
proceeding through which such patent may be held permanently unenforceable,
unpatentable or invalid.
2.2 License to Improvements and Right to First Negotiation.
(a) During the Term, Argonaut shall promptly disclose to Symyx any and all
Improvements. Argonaut hereby grants to Symyx and its Affiliates (1) a
nonexclusive, worldwide, royalty-free, fully paid, non-transferable,
non-sublicensable license, under all Improvements, to make, have made and use
any product and practice any process utilizing the Improvements solely for
internal use by Symyx or its Affiliates for themselves or on behalf of third
parties, and (2) a nonexclusive, worldwide, royalty-free, fully paid,
non-transferable, non-sublicensable license, under all Improvements relating to
the Software Patent, to make, have made, sell, have sold, offer for sale, import
and export such Improvements.
(b) If Argonaut wishes to grant a license to a third party to sell
products incorporating the Improvements other than as provided in Section 2.2(a)
above, or Symyx wishes to acquire such a license, then the applicable Party
shall so notify the other Party in writing, and the Parties shall negotiate in
good faith the terms and conditions of such an agreement for a ninety (90) day
period starting from the date of such notice. Neither Party shall have any
liability to the other for any failure to reach any agreement. However, in the
event the Parties do not enter into such an agreement, Argonaut shall not enter
into an agreement with any third party on terms more favorable to such third
party than those last offered to Symyx. Further, in the event the Parties do not
enter into such an agreement, Argonaut shall not enter into an agreement with
any third party on terms more favorable to Argonaut than those last offered by
Symyx (the "MOST FAVORABLE OFFER") without first providing written notice to
Symyx of such Most Favorable Offer. Symyx shall then have sixty (60) days after
receipt of such notice within which to elect to match the Most Favorable Offer.
If Symyx so elects, the Parties shall negotiate in good faith the terms and
conditions of a definitive agreement based on the terms of the Most Favorable
Offer. If Symyx does not elect to match the Most Favorable Offer, either
expressly or due to the lapse of the sixty (60) day election period, or the
Parties otherwise fail to reach a definitive agreement, Argonaut shall have no
further obligation to Symyx with respect to a license relating to such
Improvements.
(c) Symyx shall promptly disclose to Argonaut any and all improvements,
additions, enhancements, changes or modifications related to Licensed Products,
that Symyx, (whether by invention, assignment, license or otherwise) conceives,
reduces to practice or otherwise develops during the term of the Agreement and
that Symyx commercializes in connection with any
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instrument sold by or on behalf of the Symyx Discovery Tools(R) division (the
"SYMYX IMPROVEMENTS"). If Argonaut wishes to acquire a license to sell products
incorporating the Symyx Improvements, then following written notice of this fact
the Parties shall negotiate in good faith the terms and conditions of such an
agreement for a ninety (90) day period starting from the date of such notice.
Neither Party shall have any liability to the other for any failure to reach any
agreement regarding such Symyx Improvements.
2.3 Trademarks. Argonaut shall select the trademarks, trade names and
trade dresses to be used in connection with the Licensed Products, subject to
Symyx' prior approval, such approval not to be unreasonably withheld. All such
trademarks, trade names and trade dresses (the "TRADEMARKS") and all good will
associated therewith shall be and become the exclusive property of Argonaut.
Argonaut shall bear the reasonable costs of registering and maintaining the
Trademarks. Notwithstanding the above, the provisions of Section 5.5 of the
Prior Agreement shall continue to apply with respect to the xxxx "Endeavor(R)"
during the Term.
2.4 Prior Agreement. Except as expressly set forth in this Agreement, the
Prior Agreement shall be terminated as of the Effective Date.
3. OWNERSHIP
3.1 Patent Rights, Know-How & Marks. Argonaut acknowledges that, as
between the Parties, Symyx owns all right, title and interest in and to the
Patent Rights, Software Patent, Know-How and Marks.
3.2 Improvements. Symyx acknowledges that, as between the Parties,
Argonaut owns all right, title and interest in and to the Improvements.
4. SALES
4.1 Purchase and Sale to Symyx. Argonaut shall manufacture and sell to
Symyx Licensed Products for Symyx' internal research purposes (including
research conducted on behalf of third parties) at a price equal to[*] of the
Cost of Goods per Licensed Product. All such sales shall be pursuant to
Argonaut's standard terms and conditions of sale as set forth in EXHIBIT D. In
the event of any inconsistency or conflict between Argonaut's standard terms and
conditions of sale and the terms of this Agreement, the terms of this Agreement
shall prevail.
4.2 Payment for Product Purchases. Symyx shall pay each invoice for
Licensed Products purchased by Symyx within sixty (60) days of the date of such
invoice or the delivery date, whichever is later. All payments due hereunder
shall be made by check or by wire transfer to an account specified by Argonaut.
4.3 Overdue Payments. Any payments due hereunder which are not paid within
five (5) days of the date such payments are due in accordance with Section 4.2
shall bear interest at
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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the lesser of one and one-half percent (1.5%) per month or the maximum rate
permitted by law, calculated on the number of days such payment is delinquent.
This Section 4.3 shall in no way limit any other remedies available to either
Party.
5. PAYMENT TO SYMYX
5.1 Payment. In consideration of the licenses and other rights granted
herein, Argonaut shall pay to Symyx (i)[*]
5.2 Prior Agreement. Upon payment of the amounts set forth in Section 5.1,
no further payment shall be due under the Prior Agreement. Nothing contained
herein shall relieve Argonaut of its obligations in the event it failed to pay
any royalty due under the Prior Agreement prior to the Effective Date hereof,
including without limitation its obligations pursuant to Section 6.5 of the
Prior Agreement.
5.3 Overdue Payments. Any payments due hereunder which are not paid within
five (5) days of the date such payments are due in accordance with Section 5.1
shall bear interest at the lesser of one and one-half percent (1.5%) per month
or the maximum rate permitted by law, calculated on the number of days such
payment is delinquent. This Section 5.3 shall in no way limit any other remedies
available to either Party.
6. PRODUCT QUALITY
6.1 Quality Assurance. Argonaut agrees to assure the quality level of
Licensed Products through the use of Argonaut's standard quality assurance
program currently maintained for Argonaut's other commercially manufactured
products. During the term of the Agreement, no more than once per calendar year
(unless there is evidence of a quality assurance problem), Symyx shall have the
right to audit such quality assurance program, at its expense, during regular
business hours upon no less than ten (10) days written notice to Argonaut.
7. CONFIDENTIALITY
7.1 Confidential Information and Exclusions. Notwithstanding Section
1.2(b), Confidential Information shall exclude information that the Receiving
Party can demonstrate: (i) was independently developed by the Receiving Party
without any use of the Disclosing Party's Confidential Information or by the
Receiving Party's employees or other agents (or independent contractors hired by
the Receiving Party) who have not been exposed to the Disclosing Party's
Confidential Information; (ii) becomes known to the Receiving Party, without
restriction, from a source other than the Disclosing Party without breach of
this Agreement and that had a right to disclose it; (iii) was in the public
domain at the time it was disclosed or becomes in the public domain through no
act or omission of the Receiving Party; or (iv) was rightfully known to the
Receiving Party, without restriction, at the time of disclosure.
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
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7.2 Confidentiality Obligation. During the Term and for a period of five
(5) years after its termination or expiration, the Receiving Party shall treat
as confidential all of the Disclosing Party's Confidential Information and shall
not use such Confidential Information except as expressly permitted under this
Agreement. Without limiting the foregoing, the Receiving Party shall use at
least the same degree of care that it uses to prevent the disclosure of its own
confidential information of like importance, but in no event with less than
reasonable care, to prevent the disclosure of the Disclosing Party's
Confidential Information.
7.3 Confidentiality of Agreement. Each Party agrees that the terms and
conditions, but not the existence, of this Agreement shall be treated as the
other's Confidential Information and that no reference to the terms and
conditions of this Agreement or to activities pertaining thereto can be made in
any form of public or commercial advertising without the prior written consent
of the other Party; provided, however, that each Party may disclose the terms
and conditions of this Agreement: (i) as required by any court or other
governmental body; (ii) as otherwise required by law; (iii) to legal counsel of
the Parties; (iv) in connection with the requirements of an initial public
offering or securities filing; (v) in confidence, to accountants, banks, and
financing sources and their advisors; (vi) in confidence, in connection with the
enforcement of this Agreement or rights under this Agreement; or (vii) in
confidence, in connection with a merger or acquisition or proposed merger or
acquisition, or the like.
7.4 Compelled Disclosure. If a Receiving Party believes that it will be
compelled by a court or other authority to disclose Confidential Information of
the Disclosing Party, it shall give the Disclosing Party prompt notice so that
the Disclosing Party may take steps to oppose such disclosure.
7.5 Remedies. Unauthorized use by a Party of the other Party's
Confidential Information will diminish the value of such information. Therefore,
if a Party breaches any of its obligations with respect to confidentiality or
use of Confidential Information hereunder, the other Party shall be entitled to
seek equitable relief to protect its interest therein, including but not limited
to injunctive relief, as well as money damages.
8. INDEMNITY
8.1 Argonaut. Argonaut shall indemnify, defend and hold harmless Symyx and
its directors, officers and employees (each an "INDEMNITEE") from and against
any and all liabilities, damages, losses, costs or expenses (including
reasonable attorneys' and professional fees and other expenses of litigation
and/or arbitration) (a "LIABILITY") resulting from a claim, suit or proceeding
brought by a third party against an Indemnitee, arising from or occurring as a
result of (a) Argonaut's material breach of any representation, warranty or
covenant contained in this Agreement; (b) the design, development, manufacture,
sale or other commercialization of the Licensed Product(s); and (c) any action
arising from or related to Argonaut's negligence in the manufacture, storage, or
handling of the Licensed Product(s).
8.2 Symyx. Symyx shall indemnify, defend and hold harmless Argonaut and
its directors, officers and employees (each an "INDEMNITEE") from and against
any and all liabilities, damages, losses, costs or expenses (including
reasonable attorneys' and professional fees and other expenses of litigation
and/or arbitration) (a "LIABILITY") resulting from a claim, suit or proceeding
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brought by a third party against an Indemnitee, arising from or occurring as a
result of (a) Symyx' material breach of any representation, warranty or covenant
contained in this Agreement; and (b) Symyx' use of the Licensed Products
purchased or acquired hereunder; except, in each case, to the extent caused by
the negligence or willful misconduct of Argonaut.
8.3 Procedure. In the event that any Indemnitee intends to claim
indemnification under this Article 8, it shall promptly notify the indemnifying
Party in writing of such alleged Liability. The indemnifying Party shall have
the sole right to control the defense and settlement thereof. The Indemnitees
shall cooperate with the indemnifying Party and its legal representatives in the
investigation of any action, claim or liability covered by this Article 8. The
Indemnitee shall not, except at its own cost, voluntarily make any payment or
incur any expense with respect to any claim or suit without the prior written
consent of the indemnifying Party, which the indemnifying Party shall not be
required to give.
9. REPRESENTATIONS AND WARRANTIES
9.1 Symyx. Symyx represents and warrants on a continuing basis that: (i)
it has the right to enter this Agreement, is a corporation duly organized,
validly existing, and in good standing under the laws of the State of Delaware,
(ii) it has the right to grant the rights hereunder, in the manner set forth in
this Agreement, (iii) it has the power and authority to execute and deliver this
Agreement and to perform its obligations hereunder, (iv) it has by all necessary
corporate action duly and validly authorized the execution and delivery of this
Agreement and the performance of its obligations hereunder, (v) the patents and
patent applications included within the Patent Rights and the Software Patent
are the only patents and patent applications owned or controlled by Symyx under
which Argonaut requires a license hereunder in order to make, use, sell, offer
for sale, import, and export a Licensed Product that conforms to the
Specification as defined in the Prior Agreement without the addition of any
other features, (vi) to Symyx' knowledge, solely as of the Effective Date, no
third party has asserted or threatened a claim against Symyx alleging that
Symyx' PPR(R) (parallel pressure reactor) technology as used and sold by Symyx
infringes the patent rights of such third party, and (vii) it has not and will
not during the term of this Agreement enter into any agreement which conflicts
with or which will result in any breach of, or constitute a default under this
Agreement, any note, security agreement, commitment, contract or other
agreement, instrument or undertaking to which Symyx is a party.
9.2 Argonaut. Argonaut represents and warrants on a continuing basis that
it: (i) has the right to enter this Agreement, is a corporation duly organized,
validly existing and in good standing under the laws of the State of Delaware,
(ii) has the power and authority, to execute and deliver this Agreement and to
perform its obligations hereunder, (iii) has by all necessary corporate action
duly and validly authorized the execution and delivery of this Agreement and the
performance of its obligations hereunder, and (iv) has not and will not during
the term of this Agreement enter into any agreement which conflicts with or
which will result in any breach of, or constitute a default under this
Agreement, any note, security agreement, commitment, contract or other
agreement, instrument or undertaking to which Argonaut is a party.
9.3 Disclaimer of Liability. NEITHER PARTY MAKES AND BOTH PARTIES HEREBY
DISCLAIM ALL WARRANTIES, EXPRESS, IMPLIED, OR STATUTORY, REGARDING THE PATENT
RIGHTS, SOFTWARE PATENT, KNOW-HOW, TRADEMARKS, MARKS AND LICENSED PRODUCTS,
INCLUDING ANY
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AND ALL WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON-INFRINGEMENT.
9.4 Limitation of Liability. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO
THE OTHER PARTY FOR ANY INCIDENTAL, CONSEQUENTIAL, PUNITIVE, INDIRECT, OR
SPECIAL DAMAGES ARISING OUT OF OR IN RELATION TO THIS AGREEMENT, EVEN IF SUCH
PARTY HAS BEEN INFORMED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL
EITHER PARTY'S ENTIRE LIABILITY ARISING OUT OF OR IN RELATION TO THIS AGREEMENT
OR THE RIGHTS GRANTED HEREUNDER (EXCEPT LIABILITY UNDER ARTICLES 7 AND 8) EXCEED
THE SUMS PAID BY ARGONAUT TO SYMYX PURSUANT TO SECTION 5.1.
10. TERM AND TERMINATION
10.1 Term. This Agreement shall commence on the Effective Date be in full
force in effect until the expiry of the last to expire patent in the Patent
Rights or the Software Patent (such period, the "TERM").
10.2 Termination for Cause. Either Party may, without penalty, terminate
this Agreement effective upon written notice to the other Party in the event the
other Party materially breaches this Agreement, and such breach remains uncured
for thirty (30) days following written notice of breach by the nonbreaching
Party and subject to Section 11.1 below. Notwithstanding the foregoing, Symyx
shall have the right to terminate this Agreement in the event that Argonaut
fails to make the payment specified in Section 5.1 pursuant to the terms of that
section, such termination to be effective immediately upon receipt by Argonaut
of written notice of termination by Symyx.
10.3 Effect of Termination or Expiration.
(a) Any right or obligation of a Party that has accrued as of the
effective date of any termination or expiration, including without limitation,
obligations to deliver Licensed Products and pay amounts owed, shall survive
such termination or expiration.
(b) In the event of a termination or expiration of this Agreement,
the provisions of this Agreement shall continue to apply to all purchase orders
accepted by Argonaut prior to the effective date of such termination or
expiration.
(c) In the event of any termination of this Agreement by Symyx under
Section 10.2, the licenses granted to Argonaut in Section 2.1 shall terminate;
provided, however, that any sublicenses granted pursuant to Section 2.1(c) shall
remain in effect according to the terms of the applicable Buyers' License.
10.4 Survival. Sections 2.1(d), 2.4, 9.3, 9.4, 10.3, 10.4 and Articles 3, 7, 8,
11, and 13 shall survive the termination of this Agreement for any reason.
11. DISPUTE RESOLUTION
11.1 Arbitration. If a dispute arises between the Parties relating to the
interpretation or performances of this Agreement or the grounds for the
termination thereof, the Chief Executive Officers of each Party, or their
designees, shall meet to attempt in good faith to negotiate a resolution
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of the dispute prior to pursuing other available remedies. If within thirty (30)
days after such meeting the Parties have not succeeded in negotiating a
resolution of the dispute, such dispute shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA") by one (1) arbitrator in San Francisco,
California. Such arbitrator shall be selected by the mutual agreement of the
Parties or, failing such agreement, shall be selected according to the aforesaid
AAA rules. The arbitrator will be instructed to prepare and deliver a written,
reasoned opinion stating his decision within thirty (30) days of the completion
of the arbitration. Such arbitration shall be concluded within nine (9) months
following the filing of the initial request for arbitration. The Parties shall
bear the costs of arbitration equally and shall bear their own expenses,
including professional fees. The decision of the arbitrator shall be final and
non-appealable and may be enforced in any court of competent jurisdiction.
12. DEFENSE
12.1 Third Party Claims. In the event a claim is asserted against Symyx by
a third party where the resolution of such claim could materially adversely
affect the license rights granted herein, Symyx shall notify Argonaut and keep
Argonaut reasonably informed with respect to such proceeding, and Argonaut shall
have the right to provide to Symyx its comments with respect to such proceeding,
provided that Symyx shall retain complete control over any such proceeding and
all decisions with respect thereto.
13. MISCELLANEOUS
13.1 Governing Law. This Agreement and all acts and transactions pursuant
hereto and the rights and obligations of the Parties hereto shall be governed,
construed and interpreted in accordance with the laws of the State of
California, without reference to rules of conflicts or choice of laws.
13.2 Independent Contractors. The relationship of Argonaut and Symyx
established by this Agreement is that of independent contractors, and nothing
contained in the Agreement shall be construed to (i) give either Party the power
to direct and control the day-to-day activities of the other, (ii) constitute
the Parties as partners, joint venturers, co-owners or otherwise as participants
in a joint or common undertaking, or (iii) allow either Party to create or
assume any obligation on behalf of the other Party for any purpose whatsoever.
13.3 Compliance with Laws. Each Party shall perform this Agreement in
compliance with all applicable federal, state and local laws, rules and
regulations, including the United States Foreign Corrupt Practices Act and the
export laws of the United States.
13.4 Publicity. Neither Party shall make any statement to the public
regarding this Agreement or any aspect of this Agreement without the prior
written approval of the other Party. Notwithstanding the foregoing, either Party
shall have the right to publicly disclose information regarding this Agreement
or the Parties' activities hereunder, to the extent such information has already
been made publicly available in a manner consistent with this Section 13.4.
13.5 Patent Marking. Argonaut shall xxxx and have its Affiliates xxxx all
Licensed Products they sell or distribute pursuant to this Agreement to provide
notice of issued and
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pending patent applications having claims that cover the Licensed Product. The
form of such marking shall be in accordance with the applicable statute or
regulations in the country or countries of manufacture and sale thereof.
13.6 Interpretation. The Parties hereto acknowledge and agree that: (i)
each Party and its counsel reviewed and negotiated the terms and provisions of
this Agreement and have contributed to its revision; (ii) the rule of
construction to the effect that any ambiguities are resolved against the
drafting Party shall not be employed in the interpretation of this Agreement;
and (iii) the terms and provisions of this Agreement shall be construed fairly
as to both Parties hereto and not in a favor of or against either Party,
regardless of which Party was generally responsible for the preparation of this
Agreement.
13.7 Force Majeure. Neither Party shall be held responsible for any delay
or failure in performance hereunder (except for failure to make any payment due
hereunder) caused by strikes, embargoes, unexpected government requirements,
civil or military authorities, acts of God, or by the public enemy or other
similar causes reasonably beyond such Party's control and without such Party's
fault or negligence.
13.8 Further Assurances. At any time or from time to time on and after the
Effective Date, a Party shall at the request of the other Party (i) deliver to
such other Party such records, data or other documents consistent with the
provisions of this Agreement, and (ii) execute, and deliver or cause to be
delivered, all such assignments, consents, documents or further instruments of
transfer or license, and (iii) take or cause to be taken all such other actions,
as such other Party may reasonably deem necessary or desirable in order for such
other Party to obtain the full benefits of this Agreement and the transactions
contemplated hereby.
13.9 Notices. Any notice required or permitted by this Agreement shall be
in writing and shall be sent by prepaid registered or certified mail, return
receipt requested, internationally recognized courier or personal delivery, or
by fax with confirming letter mailed under the conditions described above in
each case addressed to the other Party at the address shown below or at such
other address for which such Party give notice hereunder. Such notice shall be
deemed to have been given when delivered:
If to Symyx: 0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: President
If to Argonaut: 0000 Xxxxx Xxxxx
Xxxxxx Xxxx, Xxxxxxxxxx 00000
Attn: President
13.10 Assignment. Argonaut shall not assign this Agreement or any rights
hereunder, directly or indirectly, by operation of law, change of control or
otherwise, without the prior written consent of Symyx. Notwithstanding the
foregoing, Argonaut may assign this Agreement without the consent of Symyx to an
acquirer of all or substantially all of the stock or assets of Argonaut. Symyx
may assign this Agreement or the underlying Patent Rights or Software Patent, in
whole or in part, without restriction; provided that (i) Symyx provides to
Argonaut written notice of such assignment,
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and (ii) the assignee assumes all of Symyx' rights and obligations under this
Agreement in writing or by operation of law. Any permitted assigns or successors
hereof shall be bound by all terms and conditions of this Agreement. Any
attempted assignment or transfer not in compliance with this Section 13.10 shall
be null and void.
13.11 Affiliates. Each Party warrants and guarantees the performance by
its Affiliates of all applicable obligations under this Agreement.
13.12 Severability; Waiver. If any provision(s) of this Agreement shall be
held invalid, illegal or unenforceable by a court of competent jurisdiction,
this Agreement shall continue in full force and effect without said provision.
The failure of a Party to enforce any provision of the Agreement shall not be
construed to be a waiver of the right of such Party to thereafter enforce that
provision or any other provision or right.
13.13 Entire Agreement. This Agreement together with the Exhibits hereto
represent and constitute the entire agreement between the Parties and supersede
all prior agreements and understandings with respect to the matters covered by
this Agreement. This Agreement may only be amended in writing signed by both
Parties.
SYMYX TECHNOLOGIES, INC. ARGONAUT TECHNOLOGIES, INC.
By: By:
---------------------------------- ---------------------------------
Print Name: Print Name:
---------------------------- -------------------------
Title: Title:
--------------------------------- ------------------------------
Date: Date:
---------------------------------- -------------------------------
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Exhibits: A: Patent Rights
B: Ancillary Patents
C: Form of Buyers' License
D: Argonaut's Standard Terms and Conditions of Sale
EXHIBIT A
PATENT RIGHTS
[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
EXHIBIT B
ANCILLARY PATENTS
[*]
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
EXHIBIT C
FORM OF BUYERS' LICENSE FOR ENDEAVOR
ENDEAVOR(R) PATENT LICENSE: Seller is selling the Instrument (defined
below) to Buyer under license from Symyx Technologies, Inc., Santa Clara, CA
("SYMYX"), the owner of certain Licensed Patents (defined below), and Seller
desires to grant to Buyer an express, limited license to the Licensed Patents on
the following terms and effective upon the date of delivery of the Instrument
(the "EFFECTIVE DATE"):
a) Definitions. "INSTRUMENT" shall mean the particular Endeavor(R) [*]
b) Grant. During the Term, Seller hereby grants to Buyer a limited,
non-exclusive, worldwide, paid-up license under the Licensed Patents and the
Ancillary Patents solely to use the Instrument for the life of the Instrument,
including the preparation of materials solely for use in the Instrument. No
license is granted herein to screen such prepared materials other than in the
Instrument. The license granted herein may be transferred by Buyer to a
subsequent purchaser of the Instrument.
c) Reserved Rights. Buyer shall have only those rights in Symyx'
intellectual property expressly granted in subparagraph (b) hereof; all other
intellectual property rights related to the manufacture, use or sale of the
Instrument, together with related improvements, are expressly reserved to Seller
or Symyx. BUYER ACQUIRES NO RIGHTS IN OR LICENSE TO, EXPRESS, IMPLIED, OR
OTHERWISE, ANY PATENTS, COPYRIGHTS OR TRADE SECRETS OWNED OR CONTROLLED BY SYMYX
OTHER THAN AS SET FORTH IN SUBPARAGRAPH (B) HEREOF.
[*] Certain information on this page has been omitted and filed separately
with the Commission. Confidential treatment has been requested with respect to
the omitted portions.
EXHIBIT D
STANDARD TERMS AND CONDITIONS OF SALE
1. PRICE: Quoted Prices are valid for the 45 Days from the date of the quote
unless canceled in writing by Seller. Shipping charges, insurance, duties
and taxes are not included in prices and will be invoiced, if applicable,
as separate items.
2. PACKING AND LOSS OR DAMAGE IN TRANSIT: Equipment will be packed for
shipment in a manner suitable to air or truck. Unless otherwise indicated
on the sales order acknowledgment, all sales are F.O.B. shipping point and
all risk of loss or damage to equipment in transit is upon Buyer. Payment
will be made in accordance with Paragraph 4 below.
3. TAXES: Buyer is responsible for the ultimate payment of all taxes which
may be assessed or levied on or on the account of materials sold hereunder
to the Buyer whether termed a gross receipts tax, use tax, property tax,
sales tax or otherwise. Where Buyer claims that this transaction is not
subject to any such tax; that Buyer is exempt or that Seller is not
required to collect such tax, Buyer agrees to provide Seller with any
documentation necessary to support such a claim, to allow Seller to
document its decision not to collect such tax(es), and to indemnify Seller
from any subsequent claims that such tax(es) were due.
4. TERMS OF PAYMENT: Payment terms are net 30 from day of invoicing not
installation. Seller reserves the right in its sole discretion to require
alternative payment terms, including, without limitation, sight draft,
letter of credit or full or partial payment in advance.
5. INSTALLATION AND SITE PREPARATION: Installation services are included in
the purchase price of the equipment sold hereunder only if expressly so
stated on the face of seller's quotation or in Seller's most current price
list. For equipment requiring installation by Seller's service personnel,
it is the responsibility of the Buyer to prepare the site environmentally
and provide the required services, power, water, drain, air, bottled gases,
permits, licenses, approvals, etc. as well as whatever is required to
un-crate and move the equipment to its location. The tasks that must be
completed by the Buyer prior to Seller installation are outlined in the
Seller's pre-installation manual.
6. DELIVERY DATES: The scheduled shipping date shown on the sales order
acknowledgment is our best estimate of the time the order will be shipped.
Seller may make, and invoice, partial shipments. Seller assumes no
liability for loss, general damages, or special or consequential damages
due to delays.
7. RETURNED GOODS: Credit will not be issued for goods returned without prior
approval. Please call Order Administration for required approval and
return procedures. Returns may be subject to a restocking fee.
8. TERMINATION: Upon any termination or cancellation of this sales order by
Buyer, either in whole or in part, Buyer agrees to promptly pay
appropriate termination or cancellation charges invoiced by Seller.
9. WARRANTY:
A) The Seller warranties hardware products against defects in
materials and workmanship based on the specific warranty period
and terms specified in the product quotation.
B) The Seller warrants that the software media, if any, on which the
program is distributed and the related documentation will be free
from defects in materials and workmanship for ninety (90) days
from the date of shipment.
C) Seller makes and Buyer receives no other warranty, expressed or
implied, and all warranties of merchantability and fitness for a
particular purpose are expressly excluded. Neither party shall
have any liability with respect to its obligations under this
agreement for consequential, exemplary, or incidental damages even
if it has been advised of the possibility of such damages.
Consumable products or the like are only warranted to conform to
the quantity and content stated on the label at the time of
delivery.
EXCLUSIONS: This warranty covers normal use. Preventive maintenance is not
included. Seller does not warrant and will not be held responsible for
loss or damages resulting from a cause other than defects in material or
workmanship, including damage or loss caused by:
a) neglect, accident, servicing or modification by anyone other
than a qualified Service Engineer or appointed party.
b) any natural disaster, including earthquake, lightning, flood,
or fire.
c) electrical surges or use of improper power sources.
d) non-conformance to recommended instrument operation procedure.
10. SOFTWARE LICENSES AND COPYRIGHTED MATERIAL: Seller provides certain
software products by license only. The terms of the license are available
from Seller and are accepted by Buyer on delivery of the licensed
software. Unless otherwise specified, Seller's copyrighted material
(software, firmware and printed documentation) may not be copied except
for archive purpose, to replace a defective copy, or for program error
verification by Buyer.
11. AUTHORITY TO EXPORT: All orders accepted for export (and/or re-export) are
subject to: a) issuance of an export (re-export) license by the United
States Government, and b) the Buyer providing Seller with all
documentation necessary for shipment to the destination country.
12. PATENT INDEMNITY: Seller agrees to defend, at its own expense, any suit or
legal proceeding which may be brought against Buyer alleging infringement
by Buyer of any patent of the United States, by Buyer's use of the Product
sold hereunder for its intended purpose, provided that Buyer shall give
Seller prompt written notice of any claim, threat, or institution of suit
or legal proceeding and provided that Seller shall then have the sole
right to control and conduct the defense and/or settlement of such claim,
threat, suit or legal proceeding, either in the name of Seller or Buyer or
both, and Buyer shall, at Seller's request and expense, provide relevant
information and reasonable cooperation. Seller shall pay final judgment
and all costs and attorney's fees assessed against Buyer in any such suit
or legal proceeding, provided Buyer has complied with the conditions
hereof with respect to prompt notice and cooperation in connection with
such suit or legal proceeding and given exclusive control thereof to
Seller, but Seller shall not be liable for any attorney's fees or other
legal expenses incurred by Buyer without the knowledge and prior written
consent of Seller. Seller shall also have the right , at its own expense,
to replace the equipment claimed to infringe with equally satisfactory
non-infringing equipment, modify said Product so that it becomes
non-infringing, or remove such equipment and refund the price thereof.
The foregoing indemnity fully defines Seller's obligations for patent
infringement. Such obligations to defend and make payment shall
specifically not apply to:
a) an infringement claim resulting from additions or changes in
or to the product made by Buyer or any third party or from use
in combination with other equipment, or
b) an infringement claim which is settled without the consent of
Seller; or
c) an infringement claim which resulted from compliance by Seller
with specifications furnished by Buyer.
d) The total amount of Seller's obligation and liability under
this Section shall not exceed the price paid by Buyer to
Seller for the product held to infringe and in not event will
Seller be accountable for consequential damages under this
indemnity, such as, for example, loss of business profits or
goodwill. With respect to goods manufactured in whole or part
to Buyers specifications, the buyer will protect and indemnify
Seller against all claims for damages or profits arising from
infringements of patents, designs, copyrights or trademarks.
13. SPECIFICATIONS: Weights and dimension set forth in sales literature are
not guaranteed unless previously certified in writing. Seller may without
affecting the obligations under this sales order, make insignificant
changes to the specification of the product or products delivered under
this sales order from those contained in sales literature.
14. MISCELLANEOUS: This sales order is made and entered into and shall be
governed by the laws of the State of California, United States of America.
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