EX-10.11 3 dex1011.htm SOLAZYME LICENSE AGREEMENT CONFIDENTIAL TREATMENT REQUESTED. CERTAIN PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT AND, WHERE APPLICABLE, HAVE BEEN MARKED WITH AN ASTERISK TO DENOTE...
Exhibit 10.11
CONFIDENTIAL TREATMENT REQUESTED. CERTAIN PORTIONS OF THIS
DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT AND, WHERE APPLICABLE, HAVE BEEN MARKED
WITH AN ASTERISK TO DENOTE WHERE OMISSIONS HAVE BEEN MADE. THE
CONFIDENTIAL MATERIAL HAS BEEN FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION.
SOLAZYME LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the “Agreement”) is made as of December 16, 2010 (the “Effective Date”) by and between Solazyme, Inc., a Delaware corporation (“Solazyme”) and Solazyme Roquette Nutritionals, LLC, a Delaware limited liability company (the “Company”). Solazyme and the Company are sometimes referred to herein individually as a “Party” and collectively as the “Parties”.
SECTION 1
Capitalized terms not otherwise defined herein shall have the meaning provided in the Joint Venture Agreement.
1.1 “Accumulation Termination Date” shall mean the date that is the [*] anniversary of the Effective Date.
1.2 “Affiliate” shall have the meaning provided in the Joint Venture Agreement.
1.3 “Business” shall mean the research and development, Manufacture, distribution, sales, marketing and support of Products and corresponding Services in the Field.
1.4 “Change in Control” shall have the meaning provided in the Joint Venture Agreement.
1.5 “Control” or “Controlled” shall mean, with respect to any Intellectual Property rights, the right, whether by ownership, license or otherwise (other than by operation of the License), to grant a license, sublicense or other right to or under such item or right without (i) violating the terms of any agreement or other binding arrangement with any Third Party and/or (ii) incurring a contractual payment obligation to a Third Party for the grant or practice of such license or sublicense, as the case may be;
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provided, however, that, notwithstanding the foregoing, if such a contractual payment obligation would be due to a Third Party for the grant or practice of a license, sublicense or other right to the applicable Intellectual Property, such Intellectual Property shall also be deemed to fall within the scope of this definition if the licensee or recipient thereof (which for purposes hereof shall be the Company, except in the case of a Grantback License pursuant to Section 2.1(b)) agrees in writing to be responsible for any and all payments due to such Third Party for the grant or practice thereof.
1.6 “Co-Product” shall mean a tangible material produced incidentally to the manufacture or processing of a product. For example, but without limitation, one Co-Product of the growth of microalgae and the extraction of oil therefrom is the biomass remaining after the extraction.
1.7 “Cosmetics” shall mean products that are externally-applied for which the principal intended benefit to the user is the beautification of the externally visible parts of the body.
1.8 “Cosmeceuticals” shall mean products that combine features of Cosmetics and either Pharmaceuticals or Nutraceuticals.
1.9 “Dietary Supplements” shall mean products that are ingested and are intended to have a nutritional benefit by providing the user one or more of the following nutrients (including in extracts and concentrated form) that are not consumed adequately in a normal diet: vitamins, minerals, amino acids, enzymes, glandulars, metabolites, and herbs or other botanicals.
1.10 “Effective Date” shall have the meaning provided in the Joint Venture Agreement.
1.11 “Fermentation Production Process” shall mean one that utilizes a fixed carbon source such as a carbohydrate as the source of energy for the microalgae.
1.12 “Field” shall mean the following applications of microalgae-containing and microalgae-derived substances, including their biomass, in each case when resulting from a Fermentation Production Process using microalgae that have not been Genetically Modified, and, in each case, including ingredients for use therein: (a) human foods and beverages; (b) Nutraceuticals; and (c) animal feeds, including foods for domestic pets and aquaculture. For the avoidance of doubt, and without limitation, the following applications of microalgae-containing and microalgae-derived substances, including their biomass, in each case including ingredients for use therein, are specifically excluded from the Field: (i) fuels; (ii) chemicals, including but not limited to commodity, specialty and fine chemicals; (iii) Cosmetics; (iv) Pharmaceuticals; (v) Cosmeceuticals; (vi) home and personal care products; (vii) polyunsaturated fatty acids (PUFAs) and their derivatives; and (viii) Co-Products (other than Co-Products made in the course of making substances for applications (a) through (c) that are themselves to be used for applications (a) through (c)). Excluded from the Field are Co-Products for any of the applications (a) through (c) when made in the course of manufacturing items in (i) – (vii) above, or when made in the
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course of manufacturing in any other areas outside of the Field. For the further avoidance of doubt, excluded from the Field are all applications of microalgae-containing and microalgae-derived substances, including their biomass, in each case when resulting from a production process that (x) is Materially Phototrophic and/or (y) uses Genetically Modified organisms.
1.13 “Functional Foods” shall mean products that are ingested as part of a normal diet that provide specific and targeted nutritional benefits for overall health and that are not primarily intended for the diagnosis, cure, mitigation or treatment of a specific disease or condition.
1.14 “Genetically Modified”, in relation to an organism, shall mean an organism whose genetic code has been altered by the insertion of a recombinant or otherwise exogenous nucleic acid (whether or not similar or identical to a sequence contained in the genome of the naturally occurring organism), using the techniques of genetic engineering.
1.15 “Improvements” shall mean any improvements, enhancements, modifications or refinements, patented or not, to the Licensed Intellectual Property that are reduced to practice or otherwise developed prior to the Accumulation Termination Date, by the applicable Party alone or in collaboration with one or more Third Parties, which are Controlled by the applicable Party.
1.16 “Intellectual Property” shall mean all forms of intellectual property, including, without limitation, (i) Patents, (ii) Trademarks, (iii) copyrights and registrations thereof, (iv) domain names and registrations thereof, (v) software and (vi) confidential and proprietary information, including trade secrets and Know-How.
1.17 “Know-How” shall mean any and all information comprising (a) ideas, discoveries, inventions, improvements or trade secrets, (b) research and development data, such as biological, dietary, nutritional, analytical or quality control data, in each case together with supporting documentation, (c) databases, practices, experience, methods, techniques, specifications, formulations, formulae, processes, and Manufacturing information, (d) tangible compositions, e.g., microalgal strains, and (e) business, marketing and regulatory data, in each case, that are not generally known or available to the public as a compilation of information.
1.18 “Licensed Intellectual Property” shall mean the Solazyme Platform Patents, the Solazyme Nutritionals Patents, the Solazyme Know-How, the Materials and the Solazyme Trademarks. Notwithstanding the foregoing, in the event that Solazyme assigns this Agreement to a successor in interest by way of merger, acquisition, or sale of all or substantially all of its assets, any Intellectual Property Controlled by such successor or its Affiliates immediately prior to such assignment shall not be considered to be Licensed Intellectual Property for the purposes of this Agreement unless such Intellectual Property was licensed to and Controlled by Solazyme prior to such assignment.
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1.19 “Manufacture” shall mean, with respect to the applicable Product, the manufacturing, processing, formulating, packaging, labeling, holding (including storage) and quality control testing (including release) of such Product, and any corresponding Service associated therewith.
1.20 “Materially Phototrophic” shall mean, in regard to a process (the “Reference Process”), that there exists a stage in the production process that uses light to induce synthesis of specific molecules (which are critical to the usefulness of the end product compared to microalgae derived substances of the same strain made without a light stage) in the microalgae (for example, and without limitation, pigments), which molecules cannot be produced by a Fermentation Production Process [*]. In all cases, if a Member of the Company can show that a Fermentation Production Process can produce [*], then the Reference Process shall not be considered to be Materially Phototrophic. In the event of a dispute arising in connection hereto, Article 22 of the Joint Venture Agreement shall apply.
1.21 “Materials” shall mean any tangible compositions provided by Solazyme to the Company, including without limitation, any microalgal strains and any progeny, unmodified derivative or isolate of the preceding.
1.22 “Member” shall have the meaning set forth in the Joint Venture Agreement.
1.23 “Modified Materials” shall mean any modified form of any Material that has been modified by or on behalf of the Company.
1.24 “Nutraceuticals” shall mean Functional Foods and Dietary Supplements for human consumption.
1.25 “Patents” shall mean (i) all patents and patent applications (including, without limitation, provisional applications), (ii) any substitutions, divisions, continuations, continuations-in-part, reissues, renewals, registrations, confirmations, re-examinations, extensions, supplementary protection certificates and the like and (iii) any foreign or international counterparts of any of the foregoing.
1.26 “Person” shall mean any human being, organization, general partnership, limited partnership, corporation, limited liability company, joint venture, trust, business trust, association, governmental entity or other legal entity.
1.27 “Pharmaceuticals” shall mean products containing one or more active components intended for the diagnosis, cure, mitigation, or treatment of a specific disease or condition in humans or animals, in each case, that have been specifically approved for such use by a governmental regulatory authority. Pharmaceuticals are thus used for a specific medicinal benefit that is distinct from the nutritional benefits provided by Functional Foods and Dietary Supplements.
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1.28 “Product” shall mean a tangible product within the Field to be developed, manufactured, sold and distributed by or on behalf of the Company. For the avoidance of doubt, the classification of a Product as within or outside of the Field shall be made with reference to the intended final product. For example, if a product ordinarily classified as a Dietary Supplement would be used by a customer as an ingredient in formulating a pharmaceutical product, then such product shall in this specific case be classified as a Pharmaceutical and therefore outside of the Field, provided, however, this would not preclude the sale of that same product for use as a Dietary Supplement.
1.29 “Services” shall mean technology and expertise that the Company may provide or sell in the Territory in relation to the sale and/or Manufacture of Products in the Field.
1.30 “Solazyme Know-How” shall mean all Know-How Controlled by Solazyme on or before the Accumulation Termination Date that is necessary or useful to the research and development, Manufacture, distribution, sales, marketing and/or support of Products and corresponding Services in the Field.
1.31 “Solazyme Nutritionals Patents” shall mean all Patents Controlled by Solazyme on or before the Accumulation Termination Date that are necessary or useful to the research and development, Manufacture, distribution, sales, marketing and/or support of Products and corresponding Services and that relate solely to the Field. A list of Solazyme Nutritionals Patents existing as of the Effective Date is attached as Exhibit A-1.
1.32 “Solazyme Platform Patents” shall mean all Patents Controlled by Solazyme on or before the Accumulation Termination Date that are necessary or useful to the research and development, Manufacture, distribution, sales, marketing and/or support of both (a) Products and corresponding Services in the Field, and (b) products and corresponding services outside the Field. For clarity, the Solazyme Platform Patents shall not include any Solazyme Nutritionals Patents. A list of Solazyme Platform Patents existing as of the Effective Date is attached as Exhibit A-2.
1.33 “Solazyme Trademarks” shall mean the Trademarks set forth on Exhibit A-3.
1.34 “Territory” shall mean the entire world.
1.35 “Third Party” shall mean any Person other than (a) Solazyme, (b) the Company or (c) an Affiliate of Solazyme or the Company.
1.36 “Third Party Agreement” shall mean any agreement that was entered or is entered into by Solazyme with a Third Party prior to the Accumulation Termination Date, pursuant to which Solazyme obtained or obtains a license or other rights to Intellectual Property, with the right to license or sublicense such rights, that are necessary or useful to the research and development, Manufacture, distribution, sales, marketing and/or support of Products and corresponding Services in the Field.
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1.37 “Trademark” shall mean any word, name, symbol, color, designation or device or any combination thereof associated with a business, product or service, including any trademark, trade dress, service xxxx, service name, brand xxxx, trade name, brand name, logo, business symbol, or Internet domain names, and any applications or registrations thereof.
SECTION 2
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Materials for any purpose other than for the activities contemplated by this Agreement, and will not in any event utilize or permit the use of any of the Modified Materials for any use outside the Field. The Company will not transfer any Modified Materials to a Third Party other than to further the conduct of the Business in the Field and only if such Third Party agrees in writing to restrictions substantially similar to those set forth in this Section 2.1(c).
(a) The Company acknowledges that certain Intellectual Property within the License may be licensed to Solazyme pursuant to, or otherwise be subject to, the terms of a Third Party Agreement, and that the License granted by Solazyme to the Company with respect thereto is or will be subordinate to the terms of any such Third Party Agreement. The Company further acknowledges that any breach of such terms by the Company or its sublicensees may result in damage to Solazyme and/or other sublicensees of the subject Intellectual Property, which may include, without limitation, loss of license rights to such Intellectual Property and/or monetary damages, and the Company therefore agrees to act reasonably to avoid any breach of such terms.
(b) The Company further acknowledges that, with respect to Intellectual Property licensed to Solazyme pursuant to or otherwise subject to the terms of a Third Party Agreement, the license by Solazyme to the Company may result in payment and/or indemnification or other obligations to the Third Party as a consequence of the grant to the Company and/or practice of such sublicense by the Company, and the Company agrees that it shall only receive such a license or sublicense if it agrees in writing, in a form reasonably acceptable to Solazyme, to pay any such amounts and/or perform any other obligations due in connection with the grant of the license or sublicense to the Company or practice of such license or sublicense by the Company or its sublicensees (which payments may include milestone payments and/or royalties on product sales), and to otherwise comply with the terms of such Third Party Agreement.
(c) The Company acknowledges that Solazyme (a) shall use reasonable efforts to either (x) maintain in force and effect any Third Party Agreement described in Section 2.2(b) for which the Company has accepted obligations or (y) assign the Third Party Agreement to the Company and (b) may amend or modify the terms of any such Third Party Agreement; provided, however, that Solazyme shall provide to the Company prompt notice thereof at least forty-five (45) days prior to any applicable deadline.
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(d) To the extent allowable under applicable confidentiality agreements, Solazyme shall promptly notify the Company of the terms of any such Third Party Agreement as they relate to the License or may otherwise give rise to any obligations pursuant to Section 2.2(a) or (b).
(e) With respect to any Intellectual Property that Solazyme seeks to in-license prior to the Accumulation Termination Date, if, in the reasonable view of Solazyme, use of such Intellectual Property in the Field would improve the conduct of the Business, Solazyme shall present such license opportunity to the Board, and if directed by the Board, shall use reasonable efforts to obtain the right to sublicense such rights to the Company for use in the Field.
2.5 Third Party Agreements. In connection with the commercialization of Products in the Field, in any agreement that the Company enters with a Third Party relating to the sale of any Product, whether a license agreement, distribution agreement, supply agreement or other agreement, the Company shall ensure that any such agreement shall include provisions that (a) prohibit the sale of any Product for any use outside the Field, (b) require the Third Party to indemnify Solazyme against any losses incurred as a result of any breach of such prohibition on Product sales and/or use outside the Field, and (c) name Solazyme as an intended third party beneficiary, with the right to bring an action against such Third Party for any breach of such agreement, for any conduct in violation of the prohibition on any sales of Products for uses outside the Field.
2.6 Continued License Rights. Upon the occurrence of the Accumulation Termination Date:
(a) All Licenses granted under this Agreement in effect as of the Accumulation Termination Date shall remain in effect, subject to the terms and conditions of this Agreement; and
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(b) All obligations of Solazyme to license further Intellectual Property as provided in Section 2.1(a), or help to sublicense Intellectual Property as provided in Section 2.2(e), shall cease as of the Accumulation Termination Date, whether such further Intellectual Property becomes Controlled by Solazyme through license, acquisition, development or otherwise.
(a) Solazyme. Notwithstanding the License, the Parties agree that:
(i) Solazyme shall retain a right to conduct research with respect to the Licensed Intellectual Property in the Field for the purpose of improving and expanding such Licensed Intellectual Property; provided, however, that Solazyme shall not use Licensed Intellectual Property for the primary intended purpose of developing any Products or Services for use in the Field, on its own behalf or on behalf of any Third Party.
(ii) At all times during and after the Term of this Agreement, nothing herein shall restrict, or be construed to restrict, Solazyme’s right to practice and grant licenses to practice its Intellectual Property for any uses outside the Field.
SECTION 3
(a) Subject to the License granted in Section 2.1(a), as between the Parties, Solazyme shall own all right, title, and interest in and to the Licensed Intellectual Property subject to the present Agreement.
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(b) Subject to the Grantback License granted in Section 2.1(b), as between the Parties, the Company shall own all right, title, and interest in and to any Improvements, or any new Intellectual Property, reduced to practice or otherwise developed by either Party or any of its Affiliates pursuant to the Services Agreement or the Manufacturing Agreement.
3.3 Prosecution and Maintenance. As between the Parties, for purposes of this Agreement:
(a) The Company
(i) The Company shall have the sole right during the duration of the prosecution of the Solazyme Nutritionals Patents, at its own cost and expense, to prosecute, seek, obtain, maintain and update any registrations or similar protection for the Solazyne Nutritional Patents; provided, however, that the Company (a) will use reasonable efforts to maintain in force the Solazyme Nutritionals Patents and (b) shall file continuations, divisional applications and/or continuation-in-parts as part of the prosecution of a parent application, and will notify Solazyme of these filings but shall not file any claim relating to any composition, process, system, or method directed to any subject matter outside the Field without a written authorization from Solazyme. Prosecution of any subject matter outside the Field shall be conducted by Solazyme, and shall be at the cost and expense of Solazyme, who shall in turn provide notice of filing to the Company.
(ii) Notwithstanding Section 3.3(a)(i), (A) in the event that the Company elects in writing not to exercise (or fails to commence such exercise within thirty (30) days from receipt of a written request to do so from Solazyme) any of the rights described in Section 3.3(a)(i) with respect to any Solazyme Nutritionals Patents, and (B) the Company reasonably believes that the conduct of such activities shall not have a material adverse effect on other Company Intellectual Property, then Solazyme shall have the right (but not the obligation) to exercise such rights, at its sole cost and expense, and in its own name.
(iii) In the case of any actions described in Section 3.3(a)(ii), the Company shall, upon request by and at the expense of Solazyme, reasonably cooperate with Solazyme regarding such matter.
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(i) Solazyme shall have the right during the Term, at its own cost and expense, to prosecute, seek, obtain, maintain and update any registrations or similar protections for the Solazyme Platform Patents.
(ii) Solazyme will keep the Company informed of the progress with regard to all activities relating to the prosecution of the Solazyme Platform Patents. More specifically, Solazyme shall provide to the Company copies of all proposed filings and patent office responses and copies of all office actions and other material communications from patent offices relating to such prosecution efforts, a reasonable time in advance of any proposed filing or required response, and the Company will have the right to comment on any such filing or response, and Solazyme will consider in good faith the timely received requests and suggestions of the Company with respect to such filings or responses.
(iii) If Solazyme intends to abandon or not maintain a Solazyme Platform Patent in a particular jurisdiction (or chooses not to file and/or prosecute in a particular jurisdiction), and is not abandoning such Solazyme Platform Patent in favor of another Solazyme Platform Patent, Solazyme will provide reasonable prior written notice to the Company of such intention to abandon, not maintain or not file (which notice will, in any event, be given no later than forty-five (45) days prior to the next deadline for any action that may be taken with respect to such Patent with the U.S. Patent & Trademark Office or any foreign patent office). If the Company requests that Solazyme continue to prosecute a particular Solazyme Platform Patent, or requests that Solazyme prosecute a particular Solazyme Platform Patent in a particular jurisdiction, Solazyme shall do so unless Solazyme reasonably believes that such prosecution or filing will ultimately be uneconomical (i.e., the costs to Solazyme of continuing such activities will outweigh the detrimental effects on the Company if such activities are terminated) or such prosecution will detrimentally effect Solazyme’s other Intellectual Property.
(iv) The Company acknowledges that the Solazyme Platform Patents may be licensed outside the Field to Third Parties and that Solazyme has the responsibility and sole discretion to determine how to best maintain and prosecute the Solazyme Platform Patents for the benefit of all licensees, including Third Parties other than the Company. The Company further acknowledges that such responsibility may affect Solazyme’s determination whether or how to maintain and prosecute particular Solazyme Platform Patents.
3.4 Enforcement. As between the Parties, for purposes of this Agreement:
(a) Subject to the first rights of any Third Party licensor of the applicable Licensed Intellectual Property provided in any Third Party Agreement, the Company shall have the initial right (but not the obligation) during the Term, at its own cost and expense, to assert any actual or threatened infringement of the Solazyme Nutritionals Patents and/or any declaratory judgment action relating thereto. In any such action, Solazyme shall, at the Company’s request and expense, join in any such action as
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a party, if required by applicable law. In such a case, the Company shall be entitled to retain any and all proceeds from such enforcement. Notwithstanding the foregoing, (i) in the event the Company elects in writing not to exercise any of the foregoing rights (or fails to commence such exercise within ninety (90) days from receipt of a written request to do so from Solazyme) then Solazyme shall have the right (but not the obligation) to exercise such rights, at its sole cost and expense, and in its own name. In such a case, Solazyme shall be entitled to retain any and all proceeds from such enforcement.
(b) Solazyme shall have the sole right during the Term, at its own cost and expense, to assert any actual or threatened infringement or misappropriation of the Solazyme Platform Patents and/or any declaratory judgment action relating thereto. The Company acknowledges that the Solazyme Platform Patents may be licensed outside the Field to Third Parties and that Solazyme has the sole discretion and right to determine how to best enforce and defend the Solazyme Platform Patents for the benefit of itself and all licensees, including Third Parties other than the Company. The Company further acknowledges that such responsibility may affect Solazyme’s determination whether or how to enforce particular Solazyme Platform Patents in any particular circumstance.
3.6 Allegations by Third Parties.
(b) Defense. If a Third Party asserts that Intellectual Property owned by or licensed to it are infringed by the development, manufacture, use, importation, offer for sale or sale of Products and/or Services by the Company or its sublicensees, or that its trade secrets were misappropriated in connection with such activity, then the Company shall have the exclusive right and responsibility to resolve any such claim, whether by obtaining a license from such Third Party, by defending against such Third Party’s claims or otherwise, and shall be solely responsible for the defense of any such action, any and all costs incurred in connection with such action (including, without limitation, attorneys’ and expert fees) and all liabilities incurred in connection therewith. Notwithstanding the foregoing, the Company shall not enter into any settlement of any such claim without the prior written consent of Solazyme if such settlement would require Solazyme to be subject to an injunction or to make any monetary payment, or admit any wrongful conduct by Solazyme or its Affiliates, or would limit or restrict the claims of or admit any invalidity and/or unenforceability of any Intellectual Property Controlled by Solazyme, or
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have any impact on activities conducted by Solazyme or its Affiliates or sublicensees outside the Field.
SECTION 4
(a) Adherence to Quality Standards. In all matters related to the Company’s use of the Solazyme Trademarks, the Company shall maintain and adhere to standards of quality and specifications that conform to or exceed the highest of (i) such quality standards and technical and operational specifications as may be adopted and authorized by Solazyme with respect to Solazyme’s Trademarks (“Quality Standards”) and (ii) such quality standards and technical and operational specifications as may be imposed by Applicable Law. These obligations are intended to ensure that the quality of the Services performed under the Solazyme Trademarks and of any Products manufactured at any plant operated by or on behalf of the Company under the Solazyme Trademarks be consistent with the high reputation of the Solazyme Trademarks and conform with all Applicable Laws.
(b) Establishment of Initial Quality Standards. Solazyme shall establish, not later than ninety (90) days after the Effective Date, the initial Quality Standards for any Services provided in connection with the Business and for any Products manufactured at any plant operated by or on behalf of the Company under Solazyme’s Trademarks.
(c) Changes in Quality Standards. Should Solazyme wish to modify the Quality Standards relating to Solazyme’s Trademarks, Solazyme shall give the Company written notice of any such change, and shall afford the Company a reasonable
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time within which to adopt such changes as may be required for the Company to conform to the revised Quality Standards.
SECTION 5
REPRESENTATIONS, WARRANTIES, COVENANTS AND DISCLAIMER
5.1 Solazyme. Solazyme represents and warrants that, as of the Effective Date:
(a) It has the right to enter into this Agreement, and the power and authority to execute and deliver this Agreement and to perform its obligations hereunder, and that the execution, delivery, and performance by Solazyme of this Agreement will not conflict with or result in any breach of, or constitute a material default under, any security agreement, commitment, contract, or other agreement, instrument or undertaking to which Solazyme is a party;
(b) On or before the Effective Date, no Intellectual Property within the License has been licensed to Solazyme pursuant to, or otherwise is subject to, the terms
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of a Third Party Agreement, and that the License granted to the Company with respect thereto is not subordinated to the terms of any such Third Party Agreement;
(c) During the Term of this Agreement, it will not grant any rights that conflict with or will be inconsistent with the rights and Licenses granted to the Company herein;
(d) It has all requisite right and title to grant the License and that it has not made any grant to any Third Party of any right or license that would conflict or be inconsistent with its grant of the License to the Company hereunder;
(e) It Controls the Licensed Intellectual Property existing as of the Effective Date;
(f) It has not received written notice from a Third Party alleging that the practice of the Licensed Intellectual Property would infringe any patent, copyright, or other Intellectual Property right of a Third Party;
(g) Solazyme has implemented such policies and procedures as are necessary to ensure proper vesting with Solazyme of Intellectual Property made by Solazyme’s employees, and Solazyme shall disclose such policies or procedures to the Company upon request. In addition, Solazyme represents and warrants that any individual conducting activities for Solazyme in connection with this Agreement, who is not an employee of Solazyme, has entered or shall enter into an agreement with Solazyme that requires the assignment to Solazyme, or as it may direct, of Intellectual Property made by such individual in the course of such activities; and
(h) To the best of its knowledge (limited for the purposes of this Section 5.1(h) to the actual knowledge of Solazyme’s Chief Technology Officer, General Counsel and Patent Counsel), the practice of the Licensed Intellectual Property in the Field may be performed in a manner that would not infringe the Intellectual Property rights of any Third Party.
5.2 The Company. The Company represents and warrants that, as of the Effective Date:
(a) It has the right to enter into this Agreement, and the power and authority to execute and deliver this Agreement and to perform its obligations hereunder, and that the execution, delivery, and performance by the Company of this Agreement will not conflict with or result in any breach of, or constitute a material default under, any security agreement, commitment, contract, or other agreement, instrument or undertaking to which Company is a party.
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(a) Practice the License for the purposes of developing or commercializing products or services for any use outside the Field;
(b) Grant to any Person any right or license under the Licensed Intellectual Property to practice such Licensed Intellectual Property outside the Field or otherwise authorize or assist any Third Party to do the same;
(c) Violate any term of any Third Party Agreement pursuant to which Solazyme has obtained rights to any Licensed Intellectual Property licensed to the Company;
(d) Utilize the Materials other than for the activities contemplated by this Agreement, and will not in any event utilize or permit the use of any of the Materials for any use outside the Field; and
(e) Transfer any Materials to a Third Party other than to further the conduct of the Business in the Field and only if such Third Party agrees in writing to restrictions substantially similar to those set forth in Section 5.4(d) and (e).
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SECTION 6
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inappropriate (e.g., due to issues relating to the Field or scope of the rights licensed to the Indemnitor in this Agreement, and rights licensed to another entity), the Indemnitee may select separate counsel and the Indemnitor shall be responsible for the costs of such representation of the Indemnitee. Under all other circumstances, the Indemnitee may, in its sole discretion, participate in any such proceeding with separate counsel of its choice, at its own expense. The foregoing indemnity obligation shall not apply to amounts paid by the Indemnitee in settlement of any claim if such settlement is effected by the Indemnitee without the consent of the Indemnitor, which consent shall not be withheld unreasonably. At the Indemnitor’s request and expense, the Indemnitee and its employees and agents shall provide reasonable cooperation to the Indemnitor and its legal representatives in the investigation of and preparation for the defense against any action, claim or liability covered by this indemnification. The Indemnitor shall not enter into any settlement or consent to an adverse judgment in any such claim, demand, action or other proceeding that admits any wrongdoing on the part of the Indemnitee or its officers, directors, employees and agents, or that imposes additional obligations (financial or otherwise) on the Indemnitee, without the prior express written consent of the Indemnitee, which consent shall not be unreasonably withheld or delayed.
SECTION 7
(a) Filing or prosecuting Patents, and otherwise protecting Intellectual Property, as permitted under this Agreement;
(b) Regulatory filings relating to Products or Services;
(c) Prosecuting or defending litigation as permitted under this Agreement; and
(d) Disclosure, in connection with the performance of this Agreement, to Affiliates, employees, or agents, each of whom prior to disclosure must be bound by similar obligations of confidentiality and non-use at least equivalent in scope to those set forth in this Section 7.
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Notwithstanding the foregoing, such terms may be disclosed by a Party to investment bankers, investors, and potential investors or acquirers (and their agents), in the context of a potential transaction, each of whom prior to disclosure must be bound by similar obligations of confidentiality and non-use at least equivalent in scope to those set forth in this Section 7. In addition, relevant terms of this Agreement may be disclosed by a Party to potential licensees or acquirers of such Party’s Intellectual Property (in the case of the Company, for use inside the Field, and in the case of Solazyme for use outside the Field) in order for such potential licensee or acquirer to be able to understand the scope of the License and the Grantback License; provided, however, that (i) prior to disclosure each such potential licensee or acquirer shall be bound by similar obligations of confidentiality and non-use at least equivalent in scope to those set forth in this Section 7 and (ii) the disclosing Party take reasonable measures to minimize the disclosure of Confidential Information.
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8.2 Consequences of Expiration or Termination.
(a) Rights and Obligations. Expiration or termination of this Agreement for any reason shall not release any Party from any liability that, at the time of such expiration or termination, has already accrued or that is attributable to a period prior to such expiration or termination nor preclude either Party from pursuing all rights and remedies it may have hereunder or at law or in equity with respect to any breach of this Agreement.
(i) Upon the expiration of this Agreement, the License granted in Section 2.1(a) and the Grantback License granted in Section 2.1(b) shall remain in full force and effect.
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(ii) Upon termination of this Agreement by mutual agreement, the License granted in Section 2.1(a) shall concurrently terminate, and, unless otherwise agreed in writing by the Parties, the Grantback License granted in Section 2.1(b) shall remain in full force and effect.
(iii) Upon dissolution of the Company, the License granted in Section 2.1(a), and the Grantback License granted in Section 2.1(b), shall concurrently terminate and the provisions of Section 21.1(a)(iii)(A) and Section 21.1(c) of the Joint Venture Agreement shall apply.
SECTION 9
(a) All notices, requests, demands and other communications that are required or may be given pursuant to the terms of this Agreement shall be in writing and shall be deemed delivered (i) on the date of delivery when delivered by hand on a Business Day during normal business hours or, if delivered on a day that is not a Business Day or after normal business hours, then on the next Business Day, (ii) on the date of transmission when sent by facsimile transmission during normal business hours on a Business Day with telephone confirmation of receipt or, if transmitted on a day that is not a Business Day or after normal business hours, then on the next Business Day, (iii) on the second Business Day after the date of dispatch when sent by a reputable courier service that maintains records of receipt or (iv) three (3) Business Days after the date of dispatch when sent by first class or airmail letter; provided, however, that, in any such case, such communication is addressed as provided in the immediately following paragraph (b).
(b) All notices, requests, demands and other communications that are required or may be given pursuant to the terms of this Agreement shall be addressed as follows:
if to the Company, to:
Solazyme Roquette Nutritionals, LLC
000 Xxxxxxx Xxxxxxxxx
Xxxxx Xxx Xxxxxxxxx, XX 00000
Attn: General Manager
Telephone: 0-000-000-0000
Facsimile: 0-000-000-0000
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or to such other address as the Company may designate in a written notice to the other Party; and
if to Solazyme, to:
Solazyme, Inc.
000 Xxxxxxx Xxxxxxxxx
Xxxxx Xxx Xxxxxxxxx, XX 00000
Attn: General Counsel
Telephone: 0-000-000-0000
Facsimile: 0-000-000-0000
or to such other address as Solazyme may designate in a written notice to the other Party.
(a) Each Party acknowledges and agrees that the services to be furnished by it hereunder and the rights granted to it hereunder are of a special, unique, extraordinary, artistic and intellectual character that gives them a special value, the loss of which cannot reasonably or adequately be compensated for in damages in an action at law, and the breach by any Party of the provisions herein shall cause the other Party or Parties irreparable injury and damage. Each Party shall be entitled as a matter of right to injunctive and other equitable relief to prevent the violation of this Agreement by the other Party, in addition to any other rights or remedies that such Party may have to damages or otherwise pursuant to this Agreement or Applicable Law.
(b) The rights and remedies herein expressly provided are cumulative and not exclusive of any other rights or remedies that any Party would otherwise have at law, in equity, by statute or otherwise.
9.6 Governing Law. This Agreement shall be governed and construed in accordance with the laws of the State of Delaware, excluding any conflicts or choice of
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law rule or principle that might otherwise refer construction or interpretation of this Agreement to the substantive law of another jurisdiction.
9.9 Entire Agreement; Amendments. This Agreement is being executed in conjunction with the Joint Venture Agreement, the Roquette License Agreement, the Manufacturing Agreement and the Services Agreement, which, taken together, collectively represent the entire understanding and agreement between the Parties with respect to the subject matter of and the transactions contemplated by this Agreement. The provisions of this Agreement shall be construed within the four corners of this Agreement; provided, however, that reasonable efforts shall be made to interpret and give full force and effect to the provisions of this Agreement in a manner that is not inconsistent with the interpretation given to the relevant provisions of the foregoing agreements and that gives full force and effect to all relevant provisions of the foregoing agreements in their entirety. No modification or amendment of any provision of this Agreement shall be valid or effective unless made in writing and signed by a duly authorized officer of each Party.
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shall be for accommodation only and shall not be binding upon the Parties. All communications and notices to be made or given pursuant to this Agreement, and any dispute proceeding related to or arising hereunder, shall be in the English language. If there is a discrepancy between any translation of this Agreement and this Agreement, this Agreement shall prevail.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the Parties have caused this License Agreement to be duly executed and delivered as of the date first above written.
| SOLAZYME ROQUETTE NUTRITIONALS, LLC | ||
| By: | /s/ Xxxxx Xxxxxxx | |
| Name: Xxxxx Xxxxxxx | ||
| Title: Treasurer |
| SOLAZYME, INC. | ||
| By: | /s/ Xxxx Xxxxxxx | |
| Name: Xxxx Xxxxxxx | ||
| Title: General Counsel |
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EXHIBIT A-1
SOLAZYME NUTRITIONALS PATENTS
[*]
| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |
EXHIBIT A-2
SOLAZYME PLATFORM PATENTS
[*]
| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |
EXHIBIT A-3
SOLAZYME TRADEMARKS
[*]
| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |
EXHIBIT B
MATERIALS TO BE TRANSFERRED
[*]
| * | Certain information on this page has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions. |