EXHIBIT 10.6
(REDACTED)
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
ASSIGNMENT AND ASSUMPTION AGREEMENT
AND XXXX OF SALE
This Agreement and Xxxx of Sale, dated as of July 15, 1999, is
made by and between Agritope, Inc., a Delaware corporation ("Agritope"), and
ACTTAG, Inc., a Delaware corporation ("ACTTAG"). ACTTAG is the wholly-owned
subsidiary of Agritope. Agritope and ACTTAG hereby agree as follows:
1. ASSIGNMENT. As a contribution to the capital of ACTTAG and
in consideration for the issuance to Agritope of all of the issued and
outstanding shares of the the common capital stock of ACTTAG, Agritope hereby:
(i) assigns to ACTTAG, and ACTTAG hereby accepts, all of Agritope's right, title
and interest in the contracts listed in the attached Schedule 1 (the
"Contracts"); (ii) assigns, transfers, conveys and delivers to ACTTAG, all of
Agritope's right, title and interest in and to the biological materials
described in the attached Schedule 2 hereto (the "Existing Agritope
Collection"); and (iii) assigns, transfers, conveys and delivers to ACTTAG, as
the successor to that portion of Agritope's business to which the trademarks
"AGRINOMICS" and "ACTTAG" (the "Marks") pertain, all of Agritope's right, title
and interest in and to such trademarks and any goodwill associated therewith and
all pending trademark applications with respect thereto. Schedule 1 and Schedule
2 are incorporated herein by this reference.
2. ASSUMPTION. ACTTAG hereby assumes all of the obligations to
be performed by Agritope under the Contracts after the date of this Agreement
and Xxxx of Sale (the "Assumed Obligations"). ACTTAG shall fully and timely
perform all of the Assumed Obligations in accordance with the applicable
Contracts, it being understood, however, that the parties contemplate that
ACTTAG will assign the Contracts to Agrinomics LLC ("Agrinomics") and obtain the
agreement of Agrinomics to fully and timely perform all of the Assumed
Obligations in accordance with the applicable Contracts.
3. DELIVERY. Agritope shall deliver to ACTTAG the Existing
Agritope Collection and a copy of Agritope's records pertaining to any of the
Contracts or any of the Marks (including, without limitation, copies of the
Contracts, any amendments to the Contracts, any reports and other documentation
delivered under the Contracts, and any correspondence with the other party to
the Contracts to the extent relating to the Contracts).
4. WARRANTY. Agritope warrants that all of its right, title
and interest in the Existing Agritope Collection, the Contracts, and the Marks
are assigned to ACTTAG pursuant to this Agreement and Xxxx of Sale free and
clear of any and all mortgages, deeds of trust, security interests and other
liens arising by, through or under Agritope. Agritope shall defend ACTTAG's
right, title and interest in the Existing Agritope Collection, the Contracts,
and the Marks against any such mortgage, deed of trust, security interest or
other lien.
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5. DISCLAIMER. Except as may be explicitly stated in the LLC
Agreement establishing Agrinomics, and in that certain Research and Management
Contract between Agritope and Agrinomics dated as of July 1, 1999, AGRITOPE DOES
NOT MAKE ANY WARRANTY (WHETHER OF MERCHANTABILITY, FITNESS, NON-INFRINGEMENT OR
OTHERWISE) WITH REGARD TO THE CONDITION, NATURE, PERFORMANCE, CAPACITY,
RESPONSIVENESS, QUALITY, SUITABILITY, FITNESS, SOURCE OR CHARACTERISTICS OF THE
EXISTING AGRITOPE COLLECTION, THE MARKS, OR OF ANY FACILITY, COLLECTIONS,
EQUIPMENT, SOFTWARE, SERVICES, GOODS OR OTHER ITEMS SUBJECT TO ANY OF THE
CONTRACTS. ACTTAG acknowledges that it has reviewed, understands and agrees to
all of the provisions of each Contract.
6. INDEMNITY BY AGRITOPE. Agritope shall defend and indemnify
ACTTAG and Agrinomics and its Members and their affiliates (other than Agritope)
and their officers, directors, shareholders, employees representatives, and
agents, from and against any and all claims that may arise out of any breach of
or default under any of the Contracts by Agritope prior to the date of this
Agreement and Xxxx of Sale. Further, Agritope shall pay or reimburse any and all
costs, expenses and attorneys' fees reasonably incurred by ACTTAG or Agrinomics
and its Members and their affiliates (other than Agritope) and their officers,
directors, shareholders, employees representatives, and agents, in connection
with the defense, settlement or satisfaction of any such claim. However,
Agritope's obligations under this paragraph are conditioned upon ACTTAG's and
Agrinomics' or such parties': giving Agritope prompt written notice of the
claim; cooperating with Agritope in connection with Agritope's defense,
compromise, settlement and satisfaction of the claim; and not compromising,
settling or satisfying the claim without the prior written consent of Agritope,
which consent shall not be unreasonably withheld.
7. INDEMNITY BY ACTTAG. ACTTAG shall defend and indemnify
Agritope and its affiliates and their officers, directors, shareholders,
employees representatives, and agents from and against any and all claims that
may arise out of any breach of or default under any of the Contracts by ACTTAG
or Agrinomics after the date of this Agreement and Xxxx of Sale. Further, ACTTAG
shall pay or reimburse any and all costs, expenses and attorneys' fees
reasonably incurred by Agritope in connection with the defense, settlement or
satisfaction of any such claim. However, ACTTAG's obligations under this
paragraph are conditioned upon Agritope's or such parties': giving ACTTAG prompt
written notice of the claim; cooperating with ACTTAG in connection with ACTTAG's
defense, compromise, settlement and satisfaction of the claim; and not
compromising, settling or satisfying the claim without the prior written consent
of ACTTAG, which consent shall not be unreasonably withheld.
8. GOVERNING LAW; DISPUTES. This Agreement shall be governed
by and construed in accordance with the laws of the State of Delaware, without
regard to the choice of law provisions of the State of Delaware or any other
jurisdiction to the contrary. If the parties fail to reach agreement with
respect to a dispute or difference (other than as to a question relating to
patent validity, which the parties intend will be decided in litigation and not
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in arbitration), between the parties arising out of or in connection with this
Agreement, the dispute or difference will, to the fullest extent permitted by
law, be determined by arbitration in New York City, in accordance with the
Commercial Arbitration Rules of the American Arbitration Association by an
independent and impartial arbitrator, who (unless the parties agree otherwise)
shall have had both training and experience as an arbitrator of agricultural
technology licensing matters, including biotechnology, and who shall be, and for
at least ten years shall have been, a partner, shareholder or member in a highly
respected law firm headquartered in the United States. The arbitrator may decide
any issue as to whether, or as to the extent to which, any dispute is subject to
the arbitration and other dispute resolution provisions in this Agreement. The
arbitrator must base the award on the provisions of this Agreement and must
render the award in a writing which must include an explanation of the reasons
for such award. Any arbitration pursuant to this section will be governed by the
substantive laws of Delaware applicable to contracts made and to be performed in
that state, without regard to conflicts of law rules, and by the arbitration law
of the Federal Arbitration Act (9 U.S.C. ss.1 et seq.). Judgment upon the award
rendered by the arbitrator may be entered by any court having jurisdiction
thereof. The statute of limitations of Delaware applicable to the commencement
of a lawsuit will apply to the commencement of an arbitration under this
Section. All fees, costs and expenses of the arbitrator, and all other costs and
expenses of the arbitration, will be shared equally by the parties to this
Agreement unless such parties agree otherwise or unless the arbitrator in the
award assesses such costs and expenses against one of such parties or allocates
such costs and expenses other than equally between such parties. Notwithstanding
the foregoing, either party may, on good cause shown, seek a temporary
restraining order and/or a preliminary injunction from a court of competent
jurisdiction, to be effective pending the institution of the arbitration process
and the deliberation and award of the arbitrator.
9. ENTIRE AGREEMENT. This Agreement and Xxxx of Sale is made
pursuant to that certain Limited Liability Company Agreement among Agritope,
ACTTAG and Xxxxx-Xxxxxxx Ag Company dated as of July 1, 1999 (the "LLC
Agreement") and that certain Stock Subscription between Agritope and ACTTAG,
dated as of July 12, 1999 (the "Subscription"). This Agreement and Xxxx of Sale,
together with the Subscription and the LLC Agreement, and the agreements
referenced therein, constitutes the entire agreement, and supersedes any and all
prior agreements, between the parties with respect to the Existing Agritope
Collection, the Contracts, and the Marks.
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IN WITNESS WHEREOF, the parties have entered into this
Agreement and Xxxx of Sale as of the date first set forth above.
AGRITOPE, INC.: ACTTAG, INC.:
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By: /s/Xxxxxx X. Xxxxx By: /s/Xxxxxx X. Xxxxx
Title: Xxxxxx X. Xxxxx, CEO Title: Xxxxxx X. Xxxxx, President
SCHEDULE 1: ASSIGNED CONTRACTS
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1. That certain Research, License and Option Agreement dated as of
October 23, 1998, by and between The Salk Institute for Biological Sciences and
Agritope, as amended.
2. That certain Research and Option to License Agreement dated as of
January 21, 1999, by and between the University Court of the University of
Edinburgh and Agritope.
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SCHEDULE 2: DESCRIPTION OF EXISTING AGRITOPE COLLECTION
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[ * ]
[ * ] = Confidential materials omitted and filed separately with the
Securities and Exchange Commission.
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