CONFIDENTIAL
LICENSE AGREEMENT
BETWEEN
XENOMETRIX, INC.
AND
ROSETTA INPHARMATICS INC.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
LICENSE AGREEMENT
This Agreement (this "AGREEMENT") is made this 12th day of November, 1998 (the
"EFFECTIVE Date"), by and between Xenometrix, Inc. ("XENO"), a Delaware
corporation with principal offices at 0000 Xxxxx 00xx Xxxxxx, Xxxxxxx, XX
00000-0000 and Rosetta Inpharmatics, Inc. ("ROSETTA"), a Delaware corporation
with principal offices at 00000 000xx Xxxxxx X.X., Xxxxxxxx, XX 00000, to
license certain technology according to the terms and conditions, but subject
to the limitations, set forth in this Agreement.
RECITALS
WHEREAS, XENO is the owner or exclusive licensee of the XENO Patents (as defined
below) and the Harvard Patents (as defined below) relating to certain assays,
technology and intellectual property further described herein, and desires to
non-exclusively license the same to ROSETTA; and
WHEREAS, ROSETTA seeks to obtain certain non-exclusive license rights and
sublicensing rights under the XENO Patents and the Harvard Patents, according to
the terms contained herein;
Now, therefore, in consideration of the foregoing and the covenants and promises
contained herein, the parties agree as follows:
1. DEFINITIONS
1.1. "AFFILIATE" means any corporation or other business entity controlled
by, or in common control of an entity. Control, as used in the context
of a business entity, means the ownership directly or indirectly of
greater than fifty percent (5 0%) of the voting securities of the
person, corporation, or other entity.
1.2. "CONFIDENTIAL INFORMATION" means all information, compounds, data, and
Materials received by either party from the other party pursuant to
this Agreement including, without limitation, technology of each
party, subject to the exceptions set forth in Section 5.1.
1.3. "FIELD" means gene expression profiling and protein expression
profiling, including but not limited to, identifying disturbances of
cell homeostasis and related identified chemicals.
1.4. "HARVARD LICENSE AGREEMENT" means the license agreement between the
President and Fellows of Harvard College ("Harvard") and Venmark
Ltd., now XENO, executed on January 17, 1992, as amended to date,
attached hereto as Exhibit C.
1.5. "HARVARD PATENTS" means all patents and patent, applications listed on
Exhibit A (Mammalian) and Exhibit B (Bacterial) hereto, including but
not limited to any reissues, extensions, substitutions, confirmations,
re-registrations, re-examinations, continuations, divisionals or
continuations-in-part of the foregoing patents and patent
applications, as well as all foreign counterparts or equivalents
thereof.
1.6. "MATERIALS" means any biological or chemical entity for screening or
assays, including reagents, cells, promoters, enhancers, vectors,
plasmids, proteins and fragments thereof, peptides, antigens,
antibodies, antagonists, agonists, inhibitors, and chemicals.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
1.7. "XENO PATENTS" means all the patents and patent applications listed on
Exhibits A and B hereto, any patent applications filed prior or
subsequent to the Effective Date that claim the benefit of an early
filing date to any of the patent applications listed in Exhibit A and
Exhibit B, and any reissues, extensions, substitutions, confirmations,
re-registrations, reexaminations, continuations, divisionals or
continuations-in-part of the foregoing patents and patent
applications, as well as all foreign counterparts or equivalents
thereof.
1.8. "THIRD PARTY" means any entity other than (i) ROSETTA and any of its
Affiliates, and (ii) XENO and any of its Affiliates.
2. LICENSES
2.1. GRANT OF LICENSES UNDER THE XENO PATENTS AND THE HARVARD PATENTS FROM
XENO TO ROSETTA.
2.1.1. NON-EXCLUSIVE LICENSE TO XENO PATENTS. XENO hereby grants to
ROSETTA and its Affiliates a non-exclusive, world-wide license
in the Field under XENO's ownership interest in the XENO
Patents [***].
2.1.2. NON-EXCLUSIVE SUBLICENSE TO HARVARD PATENTS UNDER THE HARVARD
LICENSE AGREEMENT. XENO hereby grants to ROSETTA and its
Affiliates a non-exclusive, world-wide sublicense in the Field
under XENO's right to sublicense the Harvard Patents in the
Harvard License Agreement [***].
3. COMPENSATION
3.1. COMPENSATION FOR THE XENO PATENTS LICENSE AND HARVARD PATENTS
SUBLICENSE.
3.1.1. LICENSES AND RIGHTS. As consideration for the licenses and
rights granted to ROSETTA herein, ROSETTA will pay to XENO:
a) [***] upon signing of the Agreement, of
which [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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[***]
b) [***]
4. REPRESENTATIONS AND WARRANTIES; COVENANTS
4.1. REPRESENTATIONS AND WARRANTIES OF ROSETTA AND XENO.
Each party hereby represents and warrants:
CORPORATE POWER. Such party is duly organized and validly
existing and in good standing under the laws of the state
and/or country of its incorporation and has all requisite
corporate power and authority to enter into this Agreement and
to carry out the provisions hereof.
DUE AUTHORIZATION. Such party is duly authorized and has all
corporate power necessary to execute and deliver this
Agreement and to perform its obligations hereunder.
BINDING AGREEMENT. This Agreement is a legal and valid
obligation binding upon such party and enforceable in
accordance with its terms. The execution, delivery and
performance of this Agreement by such party does not conflict
with any agreement, instrument or understanding, oral or
written, to which it is a party or by which it may be bound,
nor violate any law or regulation of any court, governmental
body or administrative or other agency having jurisdiction
over it.
4.2. TITLE; NO INFRINGEMENT. XENO has full title and ownership of the XENO
Patents and XENO has all rights to the XENO Patents and the Harvard
Patents necessary to allow it to perform its obligations as
contemplated in thiso Agreement. The licenses and sublicenses granted
by XENO to ROSETTA under this Agreement will in no way constitute an
infringement or other violation of any copyright, trade secret,
trademark, patent or other proprietary right of any third party.
4.3. NEGATION OF WARRANTIES
EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT, XENO MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESSED OR IMPLIED. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, THERE ARE NO (a) EXPRESSED OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR TO
XENO'S KNOWLEDGE THAT THE USE OF THE XENO PATENTS AND HARVARD
PATENTS AS CONTEMPLATED IN THIS AGREEMENT WILL NOT INFRINGE
ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR (b) ANY
OTHER EXPRESSED OR IMPLIED WARRANTIES.
4.4. HARVARD LICENSE AGREEMENT. XENO hereby represents and warrants that
(a) [***], the Harvard License Agreement has not at the date hereof
expired or been terminated by either XENO or Harvard and that XENO
has not at the date hereof received nor given notice of breach or
termination for breach of the Harvard License Agreement [***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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neither XENO nor Harvard is in default under the Harvard
License Agreement. XENO covenants to use best efforts to maintain the
Harvard License Agreement from the date of this Agreement through the
term of the Harvard License Agreement, including, but not limited to
(c) complying with its obligations to pay the compensation due for the
Harvard License Agreement and (d) refraining from entering into any
modification or termination of the Harvard License Agreement that
would in anyway affect ROSETTA's rights to the Harvard Patents under
this Agreement. In the event that the Harvard License Agreement is
terminated, the sublicense granted to ROSETTA by XENO pursuant to
Section 2.1.2 with respect to [***] will survive and any further
sublicenses granted by ROSETTA to its sublicensee with respect to
[***] shall survive.
4.5. INFRINGEMENT. ROSETTA hereby agrees to notify XENO immediately of any
claim it receives for alleged patent infringement through use of XENO
Patents Licenses and Rights.
4.6. LICENSE AGREEMENT TO A THIRD PARTY. XENO hereby warrants that during
the term of this Agreement XENO will not license XENO patents and/or
sublicense Harvard License Agreement to a Third Party under financial
and legal conditions substantially more favorable than the terms of
the present Agreement.
5. CONFIDENTIALITY
5.1. CONFIDENTIAL INFORMATION. Except as expressly provided herein, the
parties agree that, for the Term and [***] thereafter, the receiving
party shall keep completely confidential and shall not publish or
otherwise disclose to another party and shall not use for any purpose
other than to perform the purposes contemplated by this Agreement any
Confidential Information furnished to it by the disclosing party
hereto pursuant to this Agreement, except that to the extent that it
can be established by the receiving party by competent proof that
such Confidential Information:
(a) was already known to the receiving party, other than under
an obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the
receiving party;
(c) became generally available to the public or otherwise part
of the public domain after its disclosure and other than
through any act or omission of the receiving party in breach
of this Agreement;
(d) was lawfully disclosed to the receiving party by a person
other than a party hereto; or
(e) was independently developed by the receiving party.
5.2. PERMITTED USE AND DISCLOSURES. Each party hereto may use or disclose
Confidential Information disclosed to it by the other party to the
extent such use or disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation,
complying with applicable law, governmental regulation or court order,
submitting information to tax or other governmental authorities,
making a permitted sublicense or otherwise exercising its rights
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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hereunder, provided that if a party is required to make any such
disclosure of another party's Confidential Information, other than
pursuant to a confidentiality agreement, it will give reasonable
advance notice to the latter party of such disclosure and, save to the
extent inappropriate in the case of patent applications, will use
reasonable efforts to secure confidential treatment of such
information prior to its disclosure (whether through protective orders
or otherwise).
5.3. CONFIDENTIAL TERMS. Except as expressly provided herein, each party
agrees not to disclose any material or financial terms of this
Agreement to another party without the consent of the other party, not
to be unreasonably withheld; PROVIDED, HOWEVER, each party reserves
the right to make reasonable disclosures (including the redaction of
material or financial terms) as required by securities or other
applicable laws, or to actual or prospective investors or corporate
partners (including licensees and acquirers), or to accountants,
attorneys and other professional advisors on a need-to-know basis
under circumstances that ensure the confidentiality thereof, or to the
extent required by law. If such Confidential Information is to become
public information by such disclosure the disclosing party must obtain
the written consent of the non-disclosing party in order to obtain
protection of the Confidential Information if necessary.
5.4. PRESS RELEASE. Notwithstanding the foregoing, the parties shall agree
upon a press release to announce the execution of this Agreement.
Thereafter, XENO and ROSETTA may each disclose to Third Parties the
information contained in such press release without the need for
further approval by the other.
6. TERMINATION
6.1.1. This Agreement shall continue until the last expiration date of all
patents licensed under this Agreement and shall survive the
bankruptcy, insolvency or similar event related to either party.
6.1.2. Either party shall have the right to terminate this Agreement at any
time for a material breach of this Agreement by the other party,
provided that the non-breaching party shall have first given [***]
prior written notice ([***] in the event of non-payment of any
amounts due under this Agreement) to the breaching party describing
such breach and stating the non-breaching party's intention to
terminate this Agreement if such breach remains uncured, and the
breaching party thereafter fails to cure same within [***].
6.1.3. ROSETTA may terminate this Agreement without cause at any time by
providing written notice to XENO of such termination and such
termination will be effective [***] thereafter. Any termination
pursuant to this Section 6.1.3 shall not relieve ROSETTA of any
obligation or liability accrued hereunder prior to such termination,
including ROSETTA's obligation to pay royalties accrued or accruable.
The licenses granted hereunder and all sublicenses granted by
ROSETTA under this agreement shall terminate in the event the
Agreement is terminated by ROSETTA or termination by an arbitrator
for an uncured breach by ROSETTA.
7. MISCELLANEOUS
7.1. BINDING EFFECT; ASSIGNMENT. This Agreement shall be binding upon the
parties' respective successors and permitted assigns. Neither party
may assign this Agreement or any of its rights or
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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obligations hereunder without the prior written consent of the other
party (not to be unreasonably withheld), and any such attempted
assignment shall be void; PROVIDED, HOWEVER, that ROSETTA and XENO may
assign this Agreement as part of a merger or consolidation in which
the surviving entity assumes all of ROSETTA's and XENO's rights and
obligations hereunder or a sale of substantially all of the assets or
stock of such party to which this Agreement relates. The parties
acknowledge and agree that until the Section 8.4 Amendment is executed
and delivered, in the event that the Harvard License Agreement is
terminated, Harvard shall have the option of having this Agreement
assigned to it or terminating the licenses granted herein.
7.2. EFFECT OF WAIVER. No waiver of any default, condition, provisions or
breach of this Agreement shall be deemed to imply or constitute a
waiver of any other like default, condition, provision or breach of
this Agreement.
7.3. LIMITATION OF LIABILITY. NEITHER PARTY SHALL BE LIABLE TO THE OTHER
FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES
ARISING OUT OF THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF
LIABILITY.
7.4. INDEMNIFICATION. ROSETTA will defend, indemnify and hold XENO, its
officers, directors, employees, Affiliates and agents harmless against
any and all liability, loss, damage, claim or expense (including
attorneys' fees) arising out of (a) a breach of any representation or
warranty or covenant made by ROSETTA in this Agreement or (b) a suit
by a Third Party directly relating to the negligence of ROSETTA in the
performance under this Agreement by ROSETTA; except to the extent such
claim is caused by the negligence or willful misconduct of XENO or a
breach of a representation or warranty of XENO. XENO will defend,
indemnify and hold ROSETTA, its officers, directors, employees,
Affiliates and agents harmless against any and all liability, loss,
damage, claim or expense (including attorneys' fees) arising out of
(x) a breach of any representation or warranty or covenant made by
XENQ in this Agreement or (y) a suit against ROSETTA, its officers,
directors, employees, Affiliates or agents by a Third Party related to
ROSETTA's performance under this Agreement. ROSETTA may, at its
option, conduct the defense in any such suit by a Third Party and XENO
agrees to cooperate fully with such defense.
7.5. LIABILITY INSURANCE. ROSETTA agrees that it shall indemnify, defend,
and hold XENO harmless from any claim, demand or action by any Third
Party arising out of ROSETTA's gross negligence or intentional
misconduct relating to ROSETTA's performance under this Agreement.
ROSETTA agrees to maintain at its expense general liability coverage
at a minimum level of [***] per occurrence, to name XENO as an
additional insured on ROSETTA's general liability policy at all
times during the term of this Agreement and to furnish XENO, upon
reasonable request, certificates evidencing such coverage and
copies of the applicable policies.
7.6. PATENT DEFENSE COSTS. XENO will use reasonable efforts, at its
discretion to defend XENO Patents and Harvard Patents at its own
expense against any infringement by a Third Party, and XENO will
notify ROSETTA promptly in writing of any such infringement by a Third
Party known by XENO; PROVIDED, HOWEVER, that (a) ROSETTA, at its
option, may elect to join any such prosecution of a Third Party
infringer initiated by XENO at ROSETTA's expense and (b) XENO will
conduct such prosecution upon the advice and consent of ROSETTA with
respect to material decisions (including litigation strategy
decisions) relating to such prosecution. If XENO
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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does not initiate such a prosecution with respect to any individual
instance of Third Party infringement, ROSETTA may, at its own expense,
upon the advice and with the consent of XENO, initiate and control
such prosecution. In the event that ROSETTA is sued by a Third Party
for infringement of a Third Party's patent, XENO hereby agrees, if
ROSETTA so requests, to provide ROSETTA with all reasonable advice or
technical support that ROSETTA may reasonably request at ROSETTA's
expense.
7.7. DILIGENCE. ROSETTA agrees to use reasonable commercial efforts to
fulfill the obligations of the express due diligence provision of the
Harvard License Agreement as it applies to a sublicense under the
Harvard License Agreement.
7.8. FORCE MAJEURE. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment
obligations) on account of failure of performance by the defaulting
party if the failure is occasioned by war, strike, fire, act of God,
earthquake, flood, lockout, embargo, governmental acts or orders or
restrictions, failure of suppliers, or any other reason where failure
to perform is beyond the reasonable control and not caused by the
negligence or intentional conduct or misconduct of the nonperforming
party, and such party has exerted all reasonable efforts to avoid or
remedy such force majeure; PROVIDED HOWEVER, that in no event shall a
party be required to settle any labor dispute or disturbance. -
7.9. AMENDMENT. No modification, supplement to or waiver of this Agreement
or any Addendum hereto or any of their provisions shall be binding
upon a party hereto unless made in writing and duly signed by an
authorized representative of both XENO and ROSETTA. In no event may
the terms of this Agreement be changed, deleted, supplemented or
waived by any notice, purchase order, receipt, acceptance, xxxx of
lading or other similar form of document. A failure of either party to
exercise any right or remedy hereunder, in whole or in part, or on one
or more occasions, shall not be deemed either a waiver of such right
or remedy to the extent not exercised, or of any other right or
remedy, on such occasion or a waiver of any right or remedy on any
succeeding occasion.
7.10. ENTIRE AGREEMENT. This Agreement, and each Exhibit attached hereto,
and each supplemental written agreement contemplated hereunder, sets
forth the entire understanding and agreement of the parties as to the
subject matter thereof, and there are no other understandings,
representations or promises, written or verbal, not set forth herein
or on which either party has relied. If any provisions of any such
Addendum or supplemental written agreement conflict with any
provisions set forth in this Agreement, the provisions of this
Agreement shall take precedence, unless such Addendum or supplemental
written agreement expressly refers to the specific provision(s) of
this Agreement that it is intended to replace or modify (and which
shall be limited in force and effect to such Addendum or supplemental
written agreement only).
7.11. NOTICES. All Notices under this Agreement shall be given in writing
and shall be addressed to the parties at the following addresses:
FOR XENO:
Xxxxxxx X. Xxxxxxxx
CEO, President and Director
Xenometrix, Inc.
0000 Xxxxx 00xx Xxxxxx
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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Boulder, Colorado 8030 1-5700
FOR ROSETTA:
President
Rosetta Inpharmatics
00000 000xx Xxxxxx XX
Xxxxxxxx, XX 00000
Notices shall be in writing and shall be deemed delivered when
received, if delivered by a courier, overnight mail service or the
like, or a week following mailing, if sent by first-class certified or
registered mail, postage prepaid.
7.12. ARBITRATION. The parties recognize that disputes as to certain
matters may from time to time arise during the term of this Agreement
which relate to either party's rights and/or obligations hereunder. It
is the objective of the parties to establish procedures to facilitate
the resolution of disputes arising under this Agreement in an
expedient manner by mutual cooperation and without resort to
arbitration. The parties agree that prior to any arbitration
concerning this Agreement, XENO's CEO and ROSETTA's CEO or COO will
meet in person or by video-conferencing in a good faith effort to
resolve any disputes concerning this Agreement. Within [***]
of a formal request by either party to the other, any party may,
by written notice to the other, have such dispute referred to their
respective officers designated or their successors, for attempted
resolution by good faith negotiations, such good faith negotiations to
begin [***] after such notice is received. Except as otherwise
provided specifically herein, any controversy or claim under
this Agreement shall be solely settled by arbitration by one
arbitrator pursuant to the Commercial Arbitration Rules of the
American Arbitration Association (the "Association"); provided that
the parties shall first use their best efforts to resolve such dispute
by negotiation. The arbitration shall be conducted in Boulder,
Colorado. The arbitrator shall be selected by the joint agreement of
the parties, but if they do not so agree within twenty (20) days of
the date of a request for arbitration, the selection shall be made
pursuant to the rules of the Association. The decision reached by the
arbitrator shall be conclusive and binding upon the parties hereto and
may be filed with the clerk of any court of competent jurisdiction,
and a judgment confirming such decision may, if desired by any party
to the arbitration, be entered in such court. Each of the parties
shall pay its own expenses of arbitration and the expenses of the
arbitrator(s) shall be equally shared; PROVIDED, HOWEVER, that if in
the opinion of the arbitrator(s) any claim hereunder or any defense or
objection thereto was unreasonable, the arbitrator(s) may assess, as
part of the award, all or any part of the arbitration expenses
(including reasonable attorneys' fees) against the party raising such
unreasonable claim, defense or objection. Nothing herein set forth
shall prevent the parties from settling any dispute by mutual
agreement at any time.
7.13. GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of Colorado, without regard or
giving effect to its principles of conflict of laws.
7.14. SEVERABILITY AND SURVIVAL. This Agreement is intended to be
severable. If any provision(s) of this Agreement are or become
invalid, are ruled illegal by a court of competent jurisdiction or are
deemed unenforceable under the current applicable law from time to
time in effect during the term hereof, it is the intention of the
parties that the remainder of the Agreement shall not be affected
thereby and shall continue to be construed to the maximum extent
permitted by law at
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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such time. It is further the intention of the parties that in lieu of
each such provision which is invalid, illegal, or unenforceable, there
shall be substituted or added as part of this .Agreement by such court
of competent jurisdiction a provision which shall be as similar as
possible, in economic and business objectives as intended by the
parties to such invalid, illegal or unenforceable provision, but shall
be valid, legal and enforceable. Unless expressly stated otherwise,
any provision intended by its meaning to survive, will survive the
expiration or any other termination of this Agreement.
7.15. INDEPENDENT CONTRACTORS. The parties hereto are acting as independent
contractors and shall not be considered partners, joint venturers or
agents of the other. Neither shall have the right to act on behalf of,
or to bind, the other.
7.16. HEADINGS. Captions and paragraph headings are for convenience only
and shall not form an interpretative part of this Agreement. Unless
otherwise specifically provided, all references to an Article
incorporate all Articles or subsections thereunder. This Agreement
shall not be strictly construed against either party hereto and maybe
executed in two or more counterparts, each of which will be deemed an
original and the same instrument.
(Signature Page Follows]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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IN WITNESS WHEREOF, the parties have executed this Agreement
as of the date first written above.
By: /s/ Xxxxxxx X. Xxxxxxxx Date: 11/12/98
------------------------------------- ---------------------
Xxxxxxx X. Xxxxxxxx
CEO and President
For Xenometrix, Inc.
By: /s/ Xxxxxxx X. Friend, M.D., Ph.D. Date: 11/12/98
------------------------------------- ---------------------
Xxxxxxx X. Friend, M.D., Ph.D.
President, Chief Scientific Officer
for ROSETTA INPHARMATICS, Inc.
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
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EXHIBIT A
PATENT/ FILING DATE COUNTY ISSUE DATE TITLE
APPLICATION #
[ * * *]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
EXHIBIT B
PATENT/ FILING DATE COUNTY ISSUE DATE TITLE
APPLICATION #
[ * * *]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
EXHIBIT C
HARVARD LICENSE AGREEMENT
[***]
* Material has been omitted pursuant to a request for confidential treatment,
and such material has been filed separately with the SEC.
