1
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
EXHIBIT 10.13
TECHNOLOGY ACCESS AGREEMENT
THIS TECHNOLOGY ACCESS AGREEMENT ("Agreement"), dated as of August 12,
1999 (the "Effective Date"), is entered into by and between XXX XXXXX AND
COMPANY, having offices at Lilly Xxxxxxxxx Xxxxxx, Xxxxxxxxxxxx, Xxxxxxx 00000
("Lilly") and CALIPER TECHNOLOGIES CORP. ("Caliper"), having offices at 000
Xxxxxxxxx Xxxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000.
RECITALS
WHEREAS, Lilly is in the business of discovering, developing,
manufacturing and marketing actual or potential pharmaceutical, therapeutic,
animal health and agricultural agents, compounds and products (collectively,
"Lilly Products"); and
WHEREAS, Lilly uses Screening techniques in its business activities; and
WHEREAS, Caliper has developed proprietary microfluidics and
miniaturization technology applicable to Screening techniques; and
WHEREAS, Caliper and Lilly desire to establish a technology access
program to implement Screening capabilities utilizing Caliper Technology at
Lilly's facilities;
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1 "AFFILIATE" shall mean, with respect to any Person, any other
Person controlling, controlled by or under common control with,
such Person. For purposes of this definition, the term "control"
means the possession, directly or indirectly, of the power to
direct the management or policies of a Person, whether through
the ownership of voting securities, by contract or otherwise.
1.2 "ANNUAL SUBSCRIPTION FEE" shall have the meaning specified in
Section 3.1.2.
1.3 "CALIPER KNOW-HOW" shall mean all discoveries, materials,
techniques, procedures, data, trade secrets and other technical
information that (a) either as of the Effective Date or during
the Term Caliper owns or controls, or in which Caliper has an
interest that it is not legally or contractually prohibited
from licensing or sublicensing to Lilly,
2
and (b) Caliper treats as confidential or proprietary. Caliper
Know-How does not include Caliper Patents.
1.4 "CALIPER PATENTS" shall mean any and all Patents that either as
of the Effective Date or during the Term Caliper owns or
controls, or in which Caliper has an interest that it is not
legally or contractually prohibited from licensing or
sublicensing to Lilly.
1.5 "CALIPER SCREENING SYSTEM" shall mean a system for performing
Screening that consists of a LabChip, a set of reagents and
software, one or more Instruments on which such LabChip,
reagents and software are designed to operate, and a protocol
for performing a LapChip Assay.
1.6 "CALIPER TECHNOLOGY" shall mean, collectively, the Caliper
Patents and the Caliper Know-How.
1.7 "CONFIDENTIAL INFORMATION" of a party shall mean all information
provided by such party to the other party either in connection
with the discussions and negotiations pertaining to this
Agreement or in the course of performing this Agreement, which
information is considered to be proprietary and confidential by
the disclosing party, including without limitation, data;
knowledge; practices; processes; ideas; research plans; chemical
compounds; engineering designs and drawings; research data;
manufacturing processes and techniques; scientific,
manufacturing, marketing and business plans; and financial and
personnel matters relating to the disclosing party or to its
present or future products, sales, suppliers, customers,
employees, investors or business. Notwithstanding the foregoing,
information shall not be deemed Confidential Information for
purposes of this Agreement if such information:
(a) was already known to the receiving party or its
Affiliates, other than under an obligation of
confidentiality, at the time of disclosure by the
disclosing party;
(b) was generally available or known to the public or
otherwise part of the public domain at the time of its
disclosure to the receiving party;
(c) became generally available or known to the public or
otherwise part of the public domain after its disclosure
to the receiving party through no fault of the receiving
party;
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
2
3
(d) was disclosed to the receiving party or its Affiliates,
other than under an obligation of confidentiality to a
third party, by a third party who had no obligation to
the disclosing party not to disclose such information to
others; or
(e) was independently discovered or developed by the
receiving party or its Affiliates without the use of
Confidential Information belonging to the disclosing
party.
[ * ].
1.8 "CONTRACT YEAR" shall mean a period of one year commencing on
the Effective Date or on any anniversary of the Effective Date.
1.9 "EFFECTIVE DATE" shall have the meaning stated in the
introductory paragraph of this Agreement.
1.10 "FTE" shall mean one or more Caliper full-time equivalent
person(s), whether employees, contractors or consultants,
engaged in activities on Lilly's behalf under this Agreement for
the equivalent of one full-time employee's time (assuming a
40-hour workweek).
1.11 "INSTRUMENT" shall mean any hardware component of a system
offered for sale by Caliper to develop LabChip Assays or perform
Screening.
1.12 "LABCHIP" shall mean a chip offered for sale by Caliper to
perform microfluidic or miniaturization experimentation
utilizing Caliper Technology. LabChip(tm) is a Caliper trademark
but is printed without the trademark designation (tm) in this
Agreement for convenience.
1.13 "LABCHIP ASSAY" shall mean a Screening assay for a particular
Target designed to be performed on a Caliper Screening System.
1.14 "LABCHIP IMPROVEMENTS" shall mean all inventions (whether or not
patentable), discoveries, techniques, procedures, trade secrets
and other technical information (and any Patents claiming the
foregoing) that are conceived or first reduced to practice [*]
and that specifically relate to Caliper's proprietary Screening
Products that incorporate Caliper Technology (or to improvements
to such Screening Products), including but not limited to the
world-to-chip interface or chip-to-world interface, chip
construction, composition or design, assay strategies or reagent
conditions directed to chip-based microfluidic systems,
electrical or other means of controlling fluids or molecules on
a chip, or detection of results produced by chips. LabChip
Improvements shall not include any inventions, discoveries,
techniques, procedures, trade secrets, information or Patents
that (a) are conceived or first reduced to practice after
expiration or termination of the Term or (b) relate to Targets,
Lilly compounds, Materials, Lilly Products, or technology
unrelated to Screening Products.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
3
4
1.15 "LICENSE" shall mean the license granted to Lilly and its
Affiliates by Caliper in Section 2.1 of this Agreement.
1.16 "LICENSE FEE" shall have the meaning specified in Section 3.1.1.
1.17 "LILLY PRODUCTS" shall have the meaning specified in the
Recitals.
1.18 "LILLY PROGRAM" shall mean any joint venture, alliance,
collaboration, program or similar relationship between Lilly or
any of its Affiliates and a third party, or any activity or
project that Lilly or any of its Affiliates performs or
undertakes without the participation of a third party, the
purpose of which, in either case, is to research, discover,
develop, improve, manufacture or commercialize Lilly Products;
[ * ].
1.19 "MATERIALS" shall have the meaning specified in Section 4.3.
1.20 "PARTICIPANT" shall mean a Person participating in the
Technology Access Program under the terms and conditions of an
agreement such as this Agreement.
1.21 "PATENTS" shall mean any and all patents, together with any
substitutions, reissues, renewals, divisions, continuations,
continuations-in-part, reexaminations, patent term restorations,
patents of additions and extensions thereof, any supplementary
protection certificates relating thereto, and any inventors'
certificates, which have not been held invalid or unenforceable
by a non-appealable or non-appealed decision of a court of
competent jurisdiction, issuing from patent applications filed
in any jurisdiction and any provisionals, divisionals,
continuations, and continuations-in-part of such applications.
1.22 "PERSON" shall mean an individual, partnership, firm,
corporation, limited liability company, joint venture,
association, trust or other entity, or any governmental agency
or political subdivision thereof.
1.23 "PROGRAM COLLABORATOR" shall mean a third party participant in a
Lilly Program.
1.24 "PROGRAM LEADER" shall have the meaning specified in Section
2.2.
1.25 "PROGRAM PLAN" shall have the meaning specified in Section 2.2.
1.26 "REINSTATEMENT ELECTION" shall have the meaning specified in
Section 7.6.4.
1.27 "REINSTATEMENT PAYMENT" shall have the meaning specified in
Section 7.6.4.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
4
5
1.28 "SCREENING" shall mean the process of performing a screening
assay of a designated agent or compound against a target (e.g.,
an enzyme, receptor or cell type) to determine the agent's or
compound's potential safety, efficacy, biological activity,
chemical activity or other characteristics relevant to its use
as a Lilly Product. For purposes of this Agreement, Screening
shall include, but not be limited to, primary high throughput
screening assays of specified agents or compounds and secondary
screening assays of analogues and derivatives of such agents or
compounds.
1.29 "SCREENING DATA" shall have the meaning specified in Section
4.4.
1.30 "SCREENING PRODUCTS" shall mean all Instruments, LabChips and
other hardware, software or reagents that Caliper offers in
writing during the Term for sale to Participants for use in
Screening.
1.31 "SUSPENSION" shall have the meaning specified in Section 7.6.
1.32 "SUSPENSION PERIOD" shall have the meaning specified in Section
7.6.
1.33 "SUSPENSION YEAR" shall have the meaning specified in Section
7.6.
1.34 "TARGETS" shall mean the molecules, complexes or cell lines
(such as enzymes, binding proteins, receptors, transporters, or
ion channels) selected by Lilly for LabChip Assay development in
accordance with Section 2.3.
1.35 "TECHNOLOGY ACCESS PROGRAM" or "TAP" shall mean Caliper's
program for providing access to its evolving line of Screening
Products in the context of an ongoing, renewable business
relationship. In addition to sales of finished products, this
relationship involves customer input into development, early
access to prototypes and substantial training and support.
1.36 "TERM" shall mean the period commencing on the Effective Date
and ending on the third anniversary of the Effective Date,
unless extended or earlier terminated pursuant to Section 7 or
modified by mutual written agreement of the parties pursuant to
Section 9.4.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
5
6
2. TECHNOLOGY ACCESS PROGRAM
2.1 LICENSE GRANT. Caliper hereby grants to Lilly and its Affiliates
a worldwide, nonexclusive, nontransferable (except as provided
in Section 9.3) license, with no right to sublicense, under
Caliper Technology:
(a) to use Screening Products to develop LabChip Assays and
to perform Screening, for itself or for Program
Collaborators, in Lilly Programs; and
(b) to carry out any and all activities contemplated from
time to time pursuant to this Agreement or the Program
Plan.
With respect to each of the Screening Products offered for sale
by Caliper in the first Contract Year, this license shall become
fully-paid, irrevocable and perpetual upon Caliper's receipt of
the License Fee and the first Annual Subscription Fee. With
respect to Screening Products offered in each subsequent
Contract Year, this license shall become fully-paid,
irrevocable and perpetual upon Caliper's receipt of the Annual
Subscription Fee for such Contract Year. For the avoidance of
doubt, the parties intend that Lilly shall have a fully-paid,
irrevocable and perpetual license with respect to all Screening
Products offered to Participants in each Contract Year for
which the Annual Subscription Fee is paid. Accordingly, as
provided in Section 7.5, after payment of the applicable Annual
Subscription Fee, this license, insofar as it relates to
Screening Products offered in the Contract Year for which such
Annual Subscription Fee was paid, shall survive in perpetuity
despite the expiration or termination of this Agreement.
2.2 PROGRAM LEADERS AND PLAN. Caliper and Lilly shall each designate
a TAP leader (each, a "Program Leader") who shall jointly
coordinate the activities carried out under this Agreement and
monitor the progress of such activities on a periodic basis. The
initial Program Leader of Lilly shall be Xxxx X. Xxxxxxx, Ph.D.,
and the initial Program Leader of Caliper shall be Xxxxxx X.
Xxxxxxxx, Ph.D. From time to time, the Program Leaders shall
jointly prepare and update a program plan (the "Program Plan")
describing Lilly's goals as a Participant, the tasks for Lilly
support to be provided by Caliper personnel under Section 2.3,
and such other matters as the Program Leaders determine to be
appropriate. The initial Program Plan is attached hereto as
Exhibit A. Either party, in its sole discretion, may change its
Program Leader by delivering written notice of the name and
qualifications of the proposed successor Program Leader to the
other party. If the other party questions the qualifications of
the proposed successor, then the parties shall consult with one
another in good faith for the purpose of resolving any issues.
In the event of a change in Program Leader, a reasonable
transition period shall be
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
6
7
allowed for, if possible, in order to maximize continuity of
Lilly's participation in the TAP.
2.3 LILLY SUPPORT.
2.3.1. GENERAL. [ * ] Caliper shall provide to Lilly, up to the
limits set forth below, assistance and support in
implementing the Program Plan and otherwise carrying out
the activities contemplated by this Agreement. Such
activities may include, without limitation, (i) assay
development for Lilly Targets, (ii) training and support
for Lilly personnel developing LabChip Assays or using
Screening Products, and (iii) custom development
projects requested by Lilly (each discussed further
below). The Program Leaders will jointly propose
priorities and tasks to be accomplished by the FTEs
assigned by Caliper to provide such assistance and
support to Lilly. Caliper's Program Leader will
determine the necessary personnel resources, and provide
estimates (in writing, if requested) of the projected
time needed to perform relevant tasks and the technical
feasibility of various tasks. Based on this information,
the Program Leaders will update the Program Plan to
include the applicable tasks for Lilly support
activities. Absent Caliper's agreement to the contrary,
the amount of assistance and support shall not exceed [
* ] FTEs in any calendar quarter. Administrative
activities of the Caliper Program Leader shall not be
counted toward this limit. The Program Leaders shall
attempt to schedule the activities of the FTEs in order
to avoid significant fluctuations in the number of
Caliper personnel devoted to Lilly support over the
course of the Contract Year. [ * ]. The parties expect
that the skills, experience, training and qualifications
required of such FTEs will vary from time to time during
the Term. Caliper will use its best efforts at all times
to assign FTEs with the proper skills, experience,
training and qualifications, and will not assign FTEs to
whom Lilly reasonably objects on the grounds of improper
skills, experience, training and qualifications. In
addition, Caliper agrees not to discriminate against
Lilly in selection or assignment of FTEs. Caliper shall
deliver quarterly reports to Lilly describing the actual
time applied by its FTEs to Lilly support tasks. The
Program Leaders may adjust the Lilly support FTEs
scheduled for subsequent quarters based on such reports.
2.3.2. LABCHIP ASSAY DEVELOPMENT. LabChip Assays for Lilly's
Targets will be developed collaboratively by the parties
or solely by Lilly, as determined by Lilly. In general,
Lilly will develop the appropriate biochemical and/or
cellular reagents for a Screening assay and will provide
necessary quantities of reagents to Caliper as
determined by Lilly. Initially, Caliper will be
primarily responsible for adapting the Screening assay
to the LabChip format. Over time, the parties expect
that Lilly will assume an increasing role in developing
LabChip Assays and eventually conduct such activities
independently.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
7
8
2.3.3. TRAINING AND SUPPORT. At Lilly's request, [ * ] or more
of the Caliper FTEs shall provide training and support
for Lilly employees in development of LabChip Assays and
use of Screening Products, with the intended result of
making Lilly independent in its use of Caliper
Technology. The parties will schedule such training and
support at mutually convenient times and locations,
including a reasonable number of visits to Lilly's
facilities in Indiana, North Carolina or elsewhere.
2.3.4. CORE SCREENING PRODUCT OFFERINGS; CUSTOM DEVELOPMENT.
Caliper will consult with Lilly with respect to the
Screening Products it offers during each Contract Year.
From time to time, Caliper will notify Lilly of the
particular Screening Products that Caliper has decided
to develop and offer to Participants. If Lilly is
interested in having Caliper develop additional
products, or accessories to core products, then Lilly
may elect to apply a portion of the Lilly support FTEs
to such custom development efforts.
2.4 NON-EXCLUSIVITY. The TAP is a mutually non-exclusive
collaboration. Lilly and Caliper are each free to work with any
third party in any area. Screening Products developed by
Caliper, independently or jointly with Lilly, will be sold on a
non-exclusive basis (subject to Section 5.1). Lilly acknowledges
that other customers, independently or together with Caliper,
may develop LabChip Assays for the same or similar targets as
those pursued by Lilly or pursue development of drugs that may
compete with drugs Lilly is developing or commercializing,
subject in all cases to Section 5.1 and the other terms of this
Agreement. Similarly, Caliper acknowledges that Lilly may
continue to perform Screening on non-Caliper systems and may
collaborate with third parties on [ * ]; subject in all cases to
Section 5.1 and the other terms of this Agreement.
2.5 SPECIAL PROJECTS. Lilly may propose to Caliper special product
development projects that combine Lilly proprietary technology
and Caliper Technology and that could involve a period of [ * ].
In such case, the parties shall discuss in good faith
alternative business arrangements, including a period of [ * ],
which would accomplish the objectives of such special projects.
In the first Contract Year, however, the parties intend to focus
on core technology implementation and do not expect to initiate
special projects.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
8
9
2.6 USE AND TRANSFER OF SCREENING PRODUCTS. Caliper authorizes Lilly
and its Affiliates to use Screening Products to pursue all
activities within the scope of the License. Caliper authorizes
Lilly and its Affiliates to transfer or resell Screening
Products among themselves. Subject to the foregoing, Lilly shall
not transfer or resell Screening Products to others, use
Screening Products to provide services to others (except in the
context of a Lilly Program), or authorize others to use
Screening Products. Lilly's use of information and data derived
from its use of Screening Products is governed by Section 4.4 of
this Agreement and not by this Section.
2.7 COMMERCIALIZATION OF SCREENING PRODUCTS. Caliper represents and
warrants to Lilly that, as of the Effective Date, Caliper has no
plans to sell to parties other than Participants any Screening
Products currently in development for performing custom LabChip
Assays (i.e., assays for targets selected by the user, rather
than by Caliper); however, Caliper reserves the right to do so
should Caliper determine that technical or business reasons
warrant such a change in plans. However, with respect to any
Screening Product offered to Lilly in the first Contract Year
for performing custom LabChip Assays, if Caliper sells within [
* ] of the date such Screening Product is first offered to
Lilly, such Screening Product to any party other than a
Participant, then (a) the parties shall mutually agree in good
faith on an appropriate repayment in the form of a refund or
credit of a portion of the License Fee and the Annual
Subscription Fee for the first Contract Year, and (b) the
parties shall mutually agree on a [ * ], from which Lilly may
thereafter [ * ].
2.8 OTHER PRODUCTS. During the course of this Agreement, Caliper
may offer Lilly the opportunity to receive products other than
Screening Products. For example, Lilly may receive products
being commercialized through Caliper's research collaboration
with Hewlett-Packard Company. Terms related to such transactions
will be agreed upon separately or established for all customers
by Caliper and Hewlett-Packard and are not intended to be
included under the scope of this Agreement.
3. FINANCIAL TERMS
3.1 TECHNOLOGY ACCESS FEES.
3.1.1. LICENSE FEE. Lilly shall pay to Caliper a non-refundable
(except as provided in Section 2.7) license fee of [ * ]
Dollars [ * ] within thirty (30) days of the Effective
Date (the "License Fee").
3.1.2. ANNUAL SUBSCRIPTION FEES. Lilly shall pay to Caliper a
non-refundable (except as provided in Section 2.7)
annual subscription fee of [ * ] Dollars [ * ] for each
Contract Year of the TAP (each, an "Annual Subscription
Fee"). Each Annual Subscription Fee shall be due within
[ * ] of the commencement of the applicable Contract
Year, except that, with respect to the Annual
Subscription Fee payable with respect to the first
Contract Year, [ *
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
9
10
] Dollars [ * ] of such Annual Subscription Fee shall be
payable within thirty (30) days of the commencement of
the first Contract Year, [ * ] Dollars [ * ] of such
Annual Subscription Fee shall be payable [ * ] pursuant
to this Agreement. For purposes of clarity, [ * ] shall
not be deemed to constitute [ * ].
3.2 SCREENING PRODUCTS AVAILABLE FOR PURCHASE. Exhibit B-1 sets
forth the complete list of Screening Products available for
purchase by Lilly as of the Effective Date. Exhibit B-2 sets
forth a list of additional Screening Products that Caliper
expects to make available for purchase by Lilly during the first
Contract Year.
3.3 LABCHIP PRICING. Caliper estimates that when commercially
available, LabChips will be priced at between [ * ] per data
point measured. Both parties recognize that this cost is an
estimate based only on preliminary information. This estimate
applies to LabChips for the LabChip Assays described on Exhibit
B-1 when run on Instruments with the functionality described on
Exhibit B-1.
3.4 PRODUCT SALES. Caliper will notify Lilly in writing when Caliper
is prepared to offer each Screening Product for sale to Lilly,
together with standard commercial terms and conditions to be
established by Caliper, such as price, warranty, service
arrangements and the like. Throughout the Term, Lilly shall have
the right to purchase [ * ]. Notwithstanding the foregoing,
during the first Contract Year, [ * ]. Caliper agrees [ * ].
3.5 MINIMUM WARRANTY AND SERVICE. The specific warranty terms and
service arrangements relating to Screening Products will be
stated in a supply agreement or other documents governing the
purchase and sale thereof. However, the parties expect that, at
a minimum, Caliper will warrant to Lilly, in connection with
each sale of a LabChip to Lilly, that the LabChip will (a)
operate in accordance with the documentation provided by Caliper
with respect thereto, (b) conform to the specifications
established when the LabChip was ordered and (c) operably
interface with any Instrument specified by Caliper for use
therewith. Each Instrument purchased by Lilly under the TAP
(other than Instruments designated by Caliper in writing as
development stage Instruments) will carry a standard commercial
manufacturer's warranty that will be passed through to Lilly.
Caliper will cause reasonable service arrangements to be made
available to Lilly for all Screening Products sold by Caliper
hereunder.
3.6 PRODUCT DELIVERY AND ALLOCATION. At the time Caliper offers any
Screening Product for sale to Lilly, unless Caliper has advised
Lilly in writing that such Screening Product is in the
development stage, Caliper shall have sufficient manufacturing
capability, or shall have made adequate outsourcing
arrangements, to enable it to meet the reasonably anticipated
demand for such Screening Product within a commercially
reasonable delivery period. If Caliper is unable to satisfy the
demand for a Screening Product within a commercially reasonable
time frame [ * ], then Lilly's orders for such Screening Product
will be [ * ]. Notwithstanding the foregoing, during the first
Contract Year, [ * ].
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
10
11
4. INTELLECTUAL PROPERTY
4.1 OWNERSHIP OF INVENTIONS. Except as provided in Section 4.2,
below, each party shall own all inventions, whether patentable
or not, conceived or reduced to practice solely by its employees
and/or consultants during the course of the Technology Access
Program. Caliper and Lilly shall jointly own inventions
conceived or reduced to practice jointly by employees and/or
consultants of both parties during the course of the Technology
Access Program. Each party shall execute all documents and take
all actions reasonably necessary to perfect such ownership
rights of the other party and to enable the filing of patent
applications. Inventorship shall be determined under U.S. patent
laws.
4.2 LABCHIP IMPROVEMENTS. To the extent Lilly owns a LabChip
Improvement:
4.2.1. Patented Improvements. Lilly hereby assigns to Caliper
all of Lilly's right, title and interest in and to all LabChip
Improvements for which patent applications are filed. Lilly
shall give Caliper thirty (30) days' advance written notice
before filing any such patent application. If requested by
Caliper, Lilly agrees to cooperate in patenting activities for
such LabChip Improvements, at Caliper's expense, and agrees to
execute any documents necessary to effect such assignment. In
exchange for this assignment, Caliper hereby grants to Lilly a
royalty-free, non-exclusive, non-transferable (except as
provided in Section 9.3), perpetual license to use such LabChip
Improvements in Lilly Programs; provided that no rights in any
other Caliper Technology (e.g. background patents) are granted
pursuant to this Section 4.2.1.
4.2.2. Unpatented Improvements. For any LabChip Improvement with
respect to which Lilly elects not to file a patent application,
Lilly may elect either to disclose information regarding such
LabChip Improvement to Caliper or to retain such information as
confidential to Lilly. Caliper may use or disclose freely in the
course of its business, without restriction under Article 5
below, any such information that Lilly discloses to Caliper.
Such use or disclosure may include, without limitation,
inclusion of such information in any patent application filed by
Caliper. If Lilly would like to work with Caliper on an
un-patented LabChip Improvement but retain a proprietary
interest in such LabChip Improvement, it may propose a special
project to Caliper as described in Section 2.5 by first
providing Caliper with a non-confidential summary of the LabChip
Improvement for discussion.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
11
12
4.3 LILLY MATERIALS. Lilly and/or its Affiliates may provide to
Caliper pursuant to this Agreement certain compounds,
substrates, reagents and other materials (collectively, the
"Materials"), which are and shall remain the sole property of
Lilly. Any information provided in connection with the Materials
shall be treated as Confidential Information. The provision of
Materials to Caliper under this Agreement does not grant Caliper
any license or other right to such Materials, except the limited
right to use the Materials for the sole purpose of satisfying
its obligations to Lilly under this Agreement and for no other
purpose. Caliper understands that some Materials may have
unpredictable or unknown biological and/or chemical properties
and that they should be used with caution. Upon request by
Lilly, Caliper shall promptly return to Lilly or destroy any
remaining Materials.
4.4 SCREENING DATA. Subject to Sections 4.1 and 4.2, Lilly shall own
all information and data resulting from or arising out of its
Screening activities (collectively, "Screening Data") and all
discoveries and Lilly Products based on or resulting from such
Screening Data. [ * ] Subject to such restriction and to the
provisions of Section 5.1. Lilly shall be free without further
restriction to use, disclose, transfer or otherwise take
commercial advantage of Screening Data.
5. CONFIDENTIALITY; PUBLICITY
5.1 CONFIDENTIAL INFORMATION. During the Term, and for a period of
[ * ] years following the expiration or termination of this
Agreement, each party shall maintain in confidence any and all
Confidential Information received from the other party. Each
party further agrees that it shall not use for any purpose not
authorized under this Agreement or disclose to any third party
the Confidential Information of the other party, except that
either party may disclose Confidential Information of the other
party on a need-to-know basis to its directors, officers,
employees, consultants, agents, Affiliates and third-party
collaborators if it shall have first required such recipients to
undertake an obligation of confidentiality and non-use similar
to this Section 5.1. Upon request from the disclosing party, the
receiving party shall return to the disclosing party any
Confidential Information of the disclosing party received from
it in tangible form.
5.2 PUBLICITY. Neither party shall originate any news release or
other public announcement relating to the contents of this
Agreement without the prior written approval of the other party,
which approval shall not be unreasonably withheld or delayed for
longer than [ * ]. Notwithstanding the foregoing,
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
12
13
either party may disclose the existence and/or the provisions of
this Agreement, under standard obligations of confidentiality
and non-use on a need-to-know basis, to investors and their
representatives in a private or public financing transaction, to
potential acquirers or targets and their representatives in a
corporate change of control transaction, or as required by law
(including but not limited to the filing of this Agreement as an
exhibit to a document filed with the Securities and Exchange
Commission), order or regulation of a governmental agency;
provided, however, that no such disclosure shall be permitted to
the extent it would constitute a violation of Section 5.1. The
disclosing party shall provide written notice to the other party
of any such disclosure required by law, order or regulation of a
governmental agency, reasonably in advance if practical. If
Caliper intends to file this Agreement with the Securities and
Exchange Commission, Caliper agrees to provide Lilly with a copy
of the proposed filing for review and comment at least ten days
in advance of the filing date. Caliper shall not unreasonably
withhold its acceptance of any comments made by Lilly.
5.3 PUBLICATIONS. Subject to their obligations under Section 5.1,
Caliper and Lilly shall have the right to publish data they
acquire in the course of the TAP, provided that the publishing
party will provide the other party with [ * ] to review and
approve any publication disclosing subject matter involving the
other party. Approval of such publications shall not be
unreasonably withheld. For the avoidance of doubt, the use and
disclosure of any Confidential Information shall remain subject
to Section 5.1. In addition, if the reviewing party determines
that a patent application should be filed in advance of
publication, the reviewing party shall have an additional [ * ]
days in order to file an application.
6. INDEMNIFICATION; DISCLAIMERS; LIMITATION OF LIABILITY
6.1 INDEMNIFICATION BY CALIPER. Caliper shall defend, indemnify and
hold harmless Lilly and its Affiliates and all of their
officers, directors, employees and agents (collectively, the
"Lilly Indemnitees") from and against any and all damages,
awards, costs and expenses (including court and arbitration
costs, witness fees and reasonable attorneys' fees) incurred by
any Lilly Indemnitee in connection with any claim, demand,
lawsuit or other legal action by any third party against such
Lilly Indemnitee:
(a) arising out of any breach by Caliper of any representation
or warranty contained in this Agreement; or
(b) arising out of any breach of Caliper of any covenant or
obligation contained in this Agreement; or
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
13
14
(c) alleging infringement of any patent claim or other
intellectual property right of a third party with
respect to Lilly's purchase, possession or use of any
Screening Product; provided, however, that no such
indemnification shall apply with respect to any such
damages, awards, costs or expenses arising primarily as
a result of (i) Lilly's use of Screening Products in
violation of this Agreement or in violation of any
reasonable restrictions on use imposed by Caliper in
accordance with Section 6.4 below, (ii) Lilly's
combination of Screening Products with technology other
than Caliper Technology, (iii) Lilly's unauthorized
modification of Screening Products, or (iv) Lilly's
continued use of Screening Products notwithstanding
termination of Lilly's right to use such Screening
Products pursuant to Section 6.4 below.
6.2 INDEMNIFICATION BY LILLY. Lilly shall defend, indemnify and hold
harmless Caliper and its Affiliates and all of their officers,
directors, employees and agents (collectively, the "Caliper
Indemnitees") from any damages, awards, costs and expenses
(including court and arbitration costs, witness fees and
reasonable attorneys' fees) incurred by any Caliper Indemnitee
in connection with any claim, demand, lawsuit or other legal
action by any third party against such Caliper Indemnitee
arising out of:
(a) any breach by Lilly of any representation or warranty
contained in this Agreement; or
(b) any breach by Lilly of any covenant or obligation
contained in this Agreement; or
(c) Caliper's possession or use of Lilly's Targets
or Materials; provided, however, that Lilly shall not
defend, indemnify and hold harmless any Caliper
Indemnitee under this Section 6.2(c) to the extent
Caliper or any Caliper Indemnitee that is the subject of
such claim, demand, lawsuit or other legal action
possessed or used the Target and/or Materials that are
the subject of such claim, demand, lawsuit or other
legal action in a negligent manner or in a manner
inconsistent with any instructions pertaining to such
possession or use given by Lilly or any of its
Affiliates to Caliper.
6.3 INDEMNIFICATION PROCEDURE. Promptly after receipt by a Lilly
Indemnitee or Caliper Indemnitee (in either case, the
"Indemnified Party") of notice of any pending or threatened
third-party claim against it (a "Third-Party Claim") with
respect to which it asserts a claim for indemnification under
this Article 6, such Indemnified Party shall give written notice
to the Person against whom it asserts its claim for
indemnification (the "Indemnifying Party") of the existence and
nature of the Third-Party Claim; provided, however, that failure
to give such notice in a timely manner shall not relieve the
Indemnifying Party of any liability that it may have to the
Indemnified Party hereunder except to the extent the
Indemnifying Party is prejudiced by such failure.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
14
15
Thereafter, the Indemnified Party shall deliver to the
Indemnifying Party, within five (5) business days after the
Indemnified Party's receipt thereof, copies of all notices and
documents (including court papers) received by the Indemnified
Party relating to the Third-Party Claim. The Indemnifying Party
will be entitled to participate in the defense of such
Third-Party Claim and, if it chooses, to assume the defense
thereof with counsel selected by the Indemnifying Party. Should
the Indemnifying Party so elect to assume the defense of a
Third-Party Claim, the Indemnifying Party will not be liable to
the Indemnified Party for any legal expenses subsequently
incurred by the Indemnified Party in connection with the defense
thereof, except as stated below. If the Indemnifying Party
assumes such defense, the Indemnified Party shall have the right
to participate in the defense thereof and to employ counsel, at
its own expense, separate from the counsel employed by the
Indemnifying Party, it being understood that the Indemnifying
Party shall control such defense. The Indemnifying Party shall
be liable for the fees and expenses of counsel employed by the
Indemnified Party for any period during which the Indemnifying
Party has not assumed the defense thereof (other than any period
during which the Indemnified Party shall have failed to give
notice of the Third-Party Claim). Notwithstanding an
Indemnifying Party's election to assume the defense of any such
Third-Party Claim, the Indemnified Party shall have the right to
employ separate counsel and to participate in the defense of
such Third-Party Claim, and the Indemnifying Party shall bear
the reasonable fees, costs and expenses of such separate counsel
if: (i) the use of counsel chosen by the Indemnifying Party to
represent the Indemnified Party would present such counsel with
a conflict of interest; (ii) the actual or potential defendants
in, or targets of, any such Third-Party Claim include both the
Indemnifying Party and the Indemnified Party, and the
Indemnified Party shall have reasonably concluded that there may
be legal defenses available to it that are different from or in
addition to those available to the Indemnifying Party (in which
case the Indemnifying Party shall not have the right to assume
the defense of such Third-Party Claim on the Indemnified Party's
behalf); (iii) the Indemnifying Party shall not have employed
counsel reasonably satisfactory to the Indemnified Party to
represent the Indemnified Party within a reasonable time after
notice of the institution of such Third-Party Claim; or (iv) the
Indemnifying Party shall authorize the Indemnified Party to
employ separate counsel at the Indemnifying Party's expense. If
the Indemnifying Party chooses to defend or prosecute a
Third-Party Claim, all the parties thereto shall cooperate in
the defense or prosecution thereof. Such cooperation shall
include the retention and (upon the Indemnifying Party's
request) the provision to the Indemnifying Party of records and
information that are reasonably relevant to such Third-Party
Claim, and making employees available on a mutually convenient
basis to provide additional
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
15
16
information and explanation of any material provided hereunder.
If the Indemnifying Party chooses to defend or prosecute any
Third-Party Claim, the Indemnified Party will consent to any
settlement, compromise or discharge of such Third-Party Claim
that the Indemnifying Party may recommend and that, by its
terms, obligates the Indemnifying Party to pay the full amount
of the liability in connection with such Third-Party Claim and
otherwise holds the Indemnified Party harmless from any
damages, awards, costs and expenses in connection therewith.
If the Indemnifying Party shall have assumed the defense of a
Third-Party Claim, the Indemnified Party shall not admit any
liability with respect to, or settle, compromise or discharge
such Third-Party Claim without the Indemnifying Party's prior
written consent, which consent shall not be unreasonably
withheld or delayed. If the Indemnifying Party does not assume
the defense of the Third-Party Claim, then the Indemnified Party
may investigate and defend such Third-Party Claim without the
assistance of the Indemnifying Party; provided that the
Indemnifying Party shall have no liability for indemnification
under this Article 6 with respect to the settlement of such
Third-Party Claim unless the Indemnifying Party shall have
consented in writing to such settlement, which consent shall not
be unreasonably withheld or delayed.
6.4 INTELLECTUAL PROPERTY. Caliper shall determine which Screening
Products to offer and when they will be offered. Caliper may
impose, in writing, reasonable restrictions upon the use of any
Screening Product for intellectual property reasons, provided it
notifies Lilly of such restriction at the time of sale.
Following sale of any product, if Caliper determines that third
party intellectual property concerns warrant, Caliper may, in
its sole discretion, (i) obtain for Lilly a license to continue
to use the relevant Screening Product, (ii) replace or modify
the relevant Screening Product so as to make the Screening
Product non-infringing or (iii) terminate Lilly's rights to use
the relevant Screening Product or restrict Lilly from using it
in a manner Caliper believes my be infringing. Caliper will use
all commercially reasonable efforts to take the actions
described in clauses (i) or (ii) above as opposed to the actions
described in clause (iii) above. However, if in spite of such
efforts, Caliper determines to proceed under clause (iii) above,
Lilly may elect to have the purchase price paid by Lilly for
such Screening Product refunded, and Lilly will return the
relevant Screening Product. Such a refund shall be Lilly's sole
remedy against Caliper for the loss of use of such Screening
Product.
6.5 CALIPER DISCLAIMER. EXCEPT AS SET FORTH IN ARTICLE 8, THE
PROVISIONS OF THIS AGREEMENT SHALL NOT BE CONSTRUED AS A PRODUCT
WARRANTY BY CALIPER OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, WITH RESPECT TO ANY CALIPER TECHNOLOGY,
SCREENING PRODUCT OR OTHER PRODUCTS DEVELOPED OR PROVIDED
PURSUANT TO THIS AGREEMENT. Lilly acknowledges that some of the
Screening Products to be provided to Lilly pursuant to this
Agreement are prototype units, and as such are neither equipped
with standard safety features nor completely tested for defects.
Lilly acknowledges that such products require a greater degree
of caution than other standard laboratory equipment. Caliper
shall not be liable to Lilly for any personal injury or property
damage resulting from use of such equipment in a manner other
than that recommended by Caliper, except in the case of
negligence by Caliper.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
16
17
6.6 LILLY DISCLAIMER. EXCEPT AS SET FORTH IN ARTICLE 8, THE
PROVISIONS OF THIS AGREEMENT SHALL NOT BE CONSTRUED AS A
WARRANTY BY LILLY OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, WITH RESPECT TO ANY LILLY TARGETS OR OTHER
MATERIALS OR TECHNOLOGY DEVELOPED OR PROVIDED PURSUANT TO THIS
AGREEMENT. Caliper acknowledges that some of the Targets and/or
Materials to be provided to Caliper pursuant to this Agreement
are for research purposes. Caliper acknowledges that such
Targets and/or Materials can carry risks and must be handled
appropriately. Lilly shall not be liable to Caliper for any
personal injury or property damage resulting from the improper
handling of such Targets and/or Materials, except in the case of
negligence by Lilly.
6.7 LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE
LIABLE TO THE OTHER FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES
(INCLUDING WITHOUT LIMITATION, LOST PROFITS), EVEN IF SUCH PARTY
HAS BEEN ADVISED OF THE POSSIBILITY THEREOF. Each party
acknowledges that the foregoing limitations are an essential
element of the Agreement between the parties and that in the
absence of such limitations the pricing and other terms set
forth in this Agreement would be substantially different.
7. TERM AND TERMINATION; SUSPENSION
7.1 TERM. The Term of this Agreement shall commence on the Effective
Date and, unless extended or terminated earlier pursuant to this
Section 7, shall expire on the third anniversary of the
Effective Date. The Term also may be modified by mutual written
agreement of the parties pursuant to Section 9.4.
7.2 TERMINATION BY LILLY. Lilly may terminate this Agreement, with
or without cause, effective on any anniversary of the Effective
Date, with at least [ * ] prior written notice to Caliper. All
rights and obligations applicable under this Agreement through
the date of termination shall continue to apply until such date
irrespective of any delivery of notice of termination.
7.3 TERMINATION BY EITHER PARTY. Either party may terminate this
Agreement prior to the expiration of the Term in accordance with
one of the following paragraphs:
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
17
18
(a) Either party may terminate this Agreement upon written
notice to the other party in the event of a material
breach of this Agreement by such other party; provided,
however, that prior to any such termination the
terminating party shall have provided the breaching
party with written notice of the circumstances
constituting such breach and the breaching party shall
have failed to cure such breach within a period [ * ]
days thereafter.
(b) Either party may terminate this Agreement immediately
upon written notice to the other party if the other
party:
(1) is dissolved;
(2) fails or is unable to pay its debts generally as
they become due;
(3) commences a voluntary case in bankruptcy or any
other action or proceeding for any other relief
under any law affecting creditors' rights that
is similar to a bankruptcy law (collectively, a
"Bankruptcy Proceeding") or makes an assignment
for the benefit of creditors;
(4) consents by answer or otherwise to the
commencement against it of any involuntary
Bankruptcy Proceeding; or
(5) a court having jurisdiction in the premises
enters an order for relief or a decree in
respect of such party in any involuntary
Bankruptcy Proceeding, or a receiver, trustee or
similar official is appointed in respect of such
party or any of its property, and that order or
decree is not dismissed or stayed, or that
appointment is not terminated, on or before the
sixtieth (60th) day after the entry of the order
or decree or after the appointment (as the case
may be), or any such dismissal or stay ceases to
remain in effect.
7.4 SURVIVING OBLIGATIONS. No expiration or termination of this
Agreement shall relieve either party of any obligation accruing
prior to such expiration or termination. The provisions of
Sections 2.4, 2.6, 7.4, 7.5, 9.3 and Articles 4, 5, 6 and 8,
together with any provisions required for their interpretation
or enforcement, shall survive the expiration or termination of
this Agreement.
7.5 POST-TERM LICENSE. Following expiration or termination of this
Agreement, the License shall continue with respect to the
Screening Products for which the License has been fully-paid
pursuant to Section 3.1. Lilly shall be entitled to
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
18
19
continue to purchase such Instruments, LabChips and other
Screening Products for so long as Caliper continues to offer
such items for sale to third parties. Caliper will notify Lilly
in writing at least [ * ] before ceasing production of any
Screening Product which Lilly has purchased in the [ * ] period
before production is due to cease.
7.6 OPTION TO SUSPEND PARTICIPATION. Notwithstanding any other
provision of this Agreement, Lilly shall be entitled, in its
sole discretion, to suspend its participation in the TAP during
the [ * ] Contract Year of the Term (a "Suspension") by giving
written notice to Caliper of its election to do so no later than
[ * ] to which the suspension applies (the "Suspension Year"). A
Suspension shall not constitute a termination of this Agreement
or an interruption of the Term, and, except as expressly
provided in this Section 7.6, all of the terms and provisions of
this Agreement shall continue to apply during the period from
the first day of the Suspension Year until Lilly exercises its
Reinstatement Election or such Suspension Year ends, whichever
comes first (the "Suspension Period"). Lilly shall be permitted
a maximum of [ * ] Suspension.
7.6.1. ANNUAL SUBSCRIPTION FEE. Lilly shall not be required to
pay an Annual Subscription Fee for the Suspension Year
unless and until Lilly exercises its Reinstatement
Election.
7.6.2. STATUS OF LICENSE DURING SUSPENSION PERIOD. During the
Suspension Period, the License shall continue in effect
as to all Screening Products offered for sale by Caliper
in prior Contract Years but shall not extend to
Screening Products first offered for sale by Caliper
during the Suspension Year unless and until Lilly
exercises its Reinstatement Election. Caliper shall
disclose to Lilly during the Suspension Year all new
Screening Products offered by Caliper during such year.
Such disclosure shall be made to Lilly at the same time
it is made to other Participants and shall include the
same information provided to the other Participants with
respect to such Screening Products.
7.6.3. STATUS OF LILLY SUPPORT DURING SUSPENSION PERIOD. During
the Suspension Period, Caliper shall not be obligated to
provide to Lilly assistance and support as contemplated
by Section 2.3.
7.6.4. REINSTATEMENT ELECTION. If Lilly shall have initiated a
Suspension, it shall be entitled, in its sole
discretion, to elect to reinstate its participation in
the TAP by giving written notice to Caliper of such
election (a "Reinstatement Election") no later than
[ * ]. If Lilly exercises the Reinstatement Election:
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
19
20
(a) Lilly shall pay to Caliper, concurrent with
delivery of the Reinstatement Election, [ * ]
(the "Reinstatement Payment").
(b) Upon payment of the Reinstatement Payment, the
License shall become fully-paid, irrevocable and
perpetual with respect to all Screening Products
offered for sale by Caliper in the Suspension
Year.
(c) If Lilly exercises the Reinstatement Election
during the [ * ] Contract Year, the Term
automatically shall be extended by [ * ] on the
same terms applicable to the [ * ] Contract
Years, subject to earlier termination as
provided for in this Section 7.
(d) If Lilly exercises the Reinstatement Election,
Caliper shall resume providing to Lilly
assistance and support as contemplated by
Section 2.3 effective as of the date of the
Reinstatement Election; provided, however, that
Lilly recognizes that Caliper may require a
reasonable period of time, not to exceed [ * ]
days, to reassign FTEs to work on Lilly
assistance and support activities pursuant to
this Agreement. Caliper agrees to use
commercially reasonable efforts to minimize this
period of time.
If Lilly does not exercise the Reinstatement Election,
then the Term shall expire as of the last day of the
Suspension Year.
8. REPRESENTATIONS AND WARRANTIES
8.1 MUTUAL REPRESENTATIONS. Each of the parties represents and
warrants to the other as follows:
8.1.1. DUE ORGANIZATION, GOOD STANDING AND POWER. It is a
corporation duly organized, validly existing and, if
relevant in its jurisdiction of incorporation, in good
standing under the laws of its jurisdiction of
incorporation, and has the power and authority to own,
lease and operate its assets and to conduct the business
now being conducted by it. It has all requisite power
and authority to enter into this Agreement and to
perform its obligations hereunder.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
20
21
8.1.2. AUTHORIZATION AND VALIDITY OF AGREEMENT. The execution,
delivery and performance by it of this Agreement, and
the consummation by it of the transactions contemplated
hereby, have been duly authorized and approved by all
necessary corporate action on its part. This Agreement
has been duly executed and delivered by it and
constitutes its legal, valid and binding obligation,
enforceable against it in accordance with its terms,
except as enforceability may be limited by applicable
bankruptcy, insolvency, reorganization, moratorium or
other laws relating to or affecting creditors' rights
generally and by general equity principles.
8.1.3. ABSENCE OF CONFLICTS. The execution, delivery and
performance by it of this Agreement and the consummation
by it of the transactions contemplated hereby do not and
will not (i) violate any federal, state or local laws,
ordinances, rules, regulations or requirements or any
judgments, orders, writs, rulings, decrees, awards or
similar directives of any arbitrator or any governmental
or regulatory agency or authority, (ii) conflict with,
or result in the breach of any provision of, its charter
or bylaws or (iii) violate, conflict with or result in
the breach or termination of, or otherwise give any
third party the right to terminate, or constitute a
default under the terms of, any license, permit,
contract or agreement to which it is party or by which
its properties or businesses are bound.
8.1.4. NO MISSTATEMENTS OR OMISSIONS. No representation or
warranty by it set forth herein contains any untrue
statement of a material fact, or omits to state a
material fact necessary to make the statements or facts
contained therein not misleading.
8.1.5. CONSENTS. No authorization, consent or approval of, or
notice to or filing by it with, any governmental
authority is required for the execution, delivery and
performance by it of this Agreement.
8.2 CALIPER REPRESENTATIONS. Caliper hereby represents and warrants
to Lilly that, as of the Effective Date:
8.2.1. NO PROCEEDINGS. Caliper is not aware of any third-party
intellectual property that is reasonably likely to have
a material adverse effect on (a) Caliper's ability to
fulfill its obligations under this Agreement with
respect to the Screening Products identified on Exhibits
B-1 and B-2 or (b) the purchase, possession or use by
Lilly of the Screening Products. This representation and
warranty includes, without limitation, the intellectual
property at issue in the litigation pending as of the
Effective Date between Caliper and Aclara Biosciences
(the "Aclara Litigation").
8.2.2. OWNERSHIP OF CALIPER TECHNOLOGY. Caliper owns all of the
Caliper Technology, free and clear of all liens or
encumbrances, subject to existing license grants. The
consummation of the transactions contemplated by this
Agreement will not result in the loss or impairment of
Caliper's rights
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
21
22
to own or use any of the Caliper Technology, nor will it
require the consent of any third party in respect of any
Caliper Technology.
8.2.3. NO CLAIM OF INFRINGEMENT. Except in connection with the
Aclara Litigation, neither Caliper nor any of its
Affiliates has received written notice from any third
party regarding any actual or potential infringement by
Caliper or any of its Affiliates of any intellectual
property of such third party.
8.2.4. NO CHALLENGE TO VALIDITY OF CALIPER TECHNOLOGY. Neither
Caliper nor any of its Affiliates has received written
notice from any third party regarding any assertion or
claim challenging the validity of any issued Caliper
Patent, except for an opposition to European Patent
Number 637998. The opposition was denied and is
currently on appeal.
8.2.5. RIGHT TO GRANT LICENSES. Caliper has all requisite right
and authority to grant to Lilly the License.
9. MISCELLANEOUS
9.1 NOTICES. Any consent, notice or report required or permitted to
be given or made under this Agreement by one party to the other
party shall be in writing, delivered personally or by confirmed
facsimile, first class mail postage prepaid, courier, or
nationally-recognized delivery service, and addressed to the
other party at its address indicated below, or to such other
address as the addressee shall have last furnished in writing to
the addresser. Such consent, notice or report shall be effective
upon delivery to the addressee.
If to Caliper: Caliper Technologies Corp.
000 Xxxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Chief Executive Officer
If to Lilly: Xxx Xxxxx and Company
Lilly Xxxxxxxxx Xxxxxx
Xxxxxxxxxxxx, Xxxxxxx 00000
Attention: General Counsel
9.2 GOVERNING LAW. The Agreement shall be governed by and construed
in accordance with the laws of the State of Indiana, without
regard to the conflicts of law principles thereof.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
22
23
9.3 ASSIGNMENT. This Agreement is personal in its character, and
neither party shall assign its rights or obligations under this
Agreement, in whole or in part, without the prior written
consent of the other party; provided, however, that either
party, without the consent of the other, may assign this
Agreement to any Affiliate of such party so long as such
Affiliate expressly agrees to be bound by the terms of this
Agreement and the assigning party continues to be obligated to
perform all of its duties and obligations hereunder. If either
party merges into another Person or sells to another Person all
or substantially all of its assets comprising the line of
business to which this Agreement relates, then such party shall
seek the consent of the other party to the assignment of this
Agreement to the successor Person. The party whose consent was
requested shall not unreasonably withhold or delay such consent
but shall be permitted to deny such consent if it concludes, in
the exercise of its reasonable business judgment, that the
proposed successor Person is not an appropriate technology
collaborator for such party for purposes of this Agreement. This
Agreement shall be binding on and inure to the benefit of the
successors or permitted assigns of the parties hereto, and all
entities controlled by them.
9.4 WAIVERS AND AMENDMENTS. No waiver shall be deemed to have been
made by any party hereto of any of its rights under this
Agreement unless such waiver is in writing and is signed on
behalf of such party by its duly authorized officer. Any such
waiver shall constitute a waiver only with respect to the
specific matter described in such writing and shall in no way
impair the rights of the waiving party in any other respect or
at any other time. No change or modification of this Agreement,
or any of the provisions herein contained, shall be valid unless
made in writing and signed by duly authorized representatives of
the parties hereto.
9.5 ENTIRE AGREEMENT. This Agreement embodies the entire
understanding between the parties, and supersedes any prior
understanding or agreement between them, with respect to the
subject matter of this Agreement.
9.6 SEVERABILITY. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any
government or other agency having jurisdiction over either party
deems any provision to be contrary to any laws, then that
provision shall be severed and the remainder of this Agreement
shall continue in full force and effect. To the extent possible,
the parties shall revise such invalidated provision in a manner
that will render such provision valid without impairing the
parties' original intent.
9.7 NO WAIVER. The failure of a party in any one or more instances
to insist upon strict performance of any of the terms or
conditions of this Agreement shall not
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
23
24
constitute a waiver or relinquishment, to any extent, of the
right to assert or rely upon any such terms or conditions on any
future occasion.
9.8 DISCLAIMER OF AGENCY. The relationship between Caliper and Lilly
is that of independent contractors. Caliper and Lilly are not
joint venturers, partners, principal and agent, master and
servant, or employer and employee, and have no relationship
other than independent contracting parties. Neither party shall
have the right or authority to assume, create, or incur any
third party liability or obligation of any kind, express or
implied, against or in the name of or on behalf of the other
party except as expressly set forth in this Agreement.
9.9 NON-SOLICITATION. Neither party may actively solicit or induce
any employee of the other party to leave the employ of that
party during the Term. If either party receives an unsolicited
employment inquiry from an employee of the other party, it shall
not make any written offer of employment to such individual
without notifying the other party in writing at least five (5)
days before making such an offer.
9.10 COUNTERPARTS. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all
of which together shall constitute one and the same instrument.
9.11 LABELS AND HEADINGS. The labels and headings contained in this
Agreement are for the convenience of the parties only and shall
in no way affect the meaning or interpretation of this
Agreement.
9.12 THIRD-PARTY RIGHTS. This Agreement is not intended to confer any
benefit upon, or create any right in favor of, any Person other
than the parties hereto and, where expressly provided, their
Affiliates and the respective Indemnified Parties.
9.13 CONSTRUCTION OF AGREEMENT. This Agreement was prepared as a
result of negotiation and mutual agreement between the parties.
Accordingly, no provision of this Agreement shall be construed
against any party on the basis that such party drafted this
Agreement or such provision.
9.14 FURTHER ASSURANCES. The parties covenant and agree that,
subsequent to the execution and delivery of this Agreement, and
without any additional consideration therefor, each party shall
execute and deliver any further legal instruments and perform
any further acts that are or may become necessary to effectuate
the purposes of this Agreement.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
24
25
IN WITNESS WHEREOF, the parties have executed the Agreement as of the
date first set forth above.
CALIPER TECHNOLOGIES CORP. XXX XXXXX AND COMPANY
By: /s/ Xxxxxx Xxxx By: /s/ August Watanabe
----------------------------- ------------------------------
Name: Xxxxxx Xxxx Name: August X. Xxxxxxxx M.D.
--------------------------- ----------------------------
Title: Chief Operating Officer Title: Executive Vice President
-------------------------- ---------------------------
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
25
26
EXHIBIT A
WORK PLAN FOR YEAR ONE
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
26
27
EXHIBIT B-1
SCREENING PRODUCTS OFFERED
AS OF THE EFFECTIVE DATE
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
27
28
EXHIBIT B-2
SCREENING PRODUCTS IN DEVELOPMENT
FOR CONTRACT YEAR ONE
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
28
