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Exhibit 10.1.40
OPTION AGREEMENT
THIS AGREEMENT entered into this 1st day of February 2000 between
Neoprobe Corporation, a Delaware corporation with principal offices at 000 Xxxxx
Xxxxx Xxxxx, Xxxxx 000, Xxxxxx, Xxxx 00000-0000 (hereinafter "Neoprobe"), and
Reico Ltd. (acting as trustee for NuRIGS, Ltd.), Ramat Aviv Tower, 00 Xxxxxxxx
Xxxxxx, 0xx Xxxxx, Xxx Xxxx 00000, Xxxxxx (hereinafter "Reico").
WHEREAS, Neoprobe has developed or has rights to certain proprietary
technology relating to radiotargeted surgery or radioimmunoguided surgery using
a radioactive monoclonal antibody or antibody fragment (the "RIGS(R)
technology");
WHEREAS, Neoprobe has determined that it will not commercialize the
RIGS Technology without a development partner or through a licensee;
WHEREAS, Reico is trustee for NuRIGS. Ltd. a company that will be
organized to develop products useful for radioimmunoguided surgical procedures;
WHEREAS, Reico acting on behalf of NuRIGS is interested in evaluating
the RIGS technology to determine if Reico has an interest in acquiring exclusive
rights to such technology; and
WHEREAS, Neoprobe is willing to allow Reico to evaluate the technology
with an option to acquire exclusive rights.
NOW, THEREFORE, in consideration of the mutual covenants exchanged
herein, the parties agree as follows:
ARTICLE I. DEFINITIONS
1.01 Effective Date. The term "Effective Date" of this Agreement shall mean
the date first written hereinabove.
1.02 Licensed Product. As used herein, the term "Licensed Product" means any
composition or product that uses the Technology, is covered by Patent
Rights, or the use of which would constitute, but for rights granted to
Reico pursuant to a License Agreement, an infringement of a pending or
issued claim within Patent Rights.
1.03 Patent Rights. As used herein, the term "Patent Rights" shall mean any
United States or foreign patents or patent applications owned or
controlled by Neoprobe relating to the "Technology" as well as
renewals, reissues, reexaminations, extensions, and patents of addition
and patents of importation relating thereto, including any and all
other intellectual property rights in and to the Technology (except the
Trademarks); the extent Patent Rights as of the Effective Date are
listed in Schedule 1.03 attached hereto.
1.04 Schedules. The Schedules to this Agreement are listed below and are an
integral part of this Agreement and are incorporated herein.
SCHEDULE NO. DESCRIPTION
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1.03 List of Patent Rights
1.06 List of Trademarks
2.03 Letter Of Instructions
1.05 Technology. As used herein, the term "Technology" shall mean all
information and data owned and/or controlled by Neoprobe relating to
radioguided surgery using a tissue specific radiolabeled monoclonal
antibody (MAb), antibody fragment (FAb) or protein targeting agent,
whether patentable or unpatentable, including but not limited to all
development, preclinical, clinical and manufacturing data and
information relating to CC49 MAb or HuCC49DCH2 FAb.
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1.06 Trademarks. As used herein, the term "Trademark" or "Trademarks" means
the U.S. and foreign marks listed in Schedule 1.06 attached hereto.
ARTICLE II. OPTION GRANT AND PILOT STUDY
2.01 Option. Neoprobe hereby agrees to grant to Reico and does hereby grant
to Reico, and Reico hereby accepts such grant, an "Option" to acquire
an exclusive, irrevocable, perpetual (unless terminated for material
breach) worldwide, royalty-bearing license to the Technology, Patent
Rights, and Trademarks. The continuation of the validity of the Option
granted in this Section 2.01 is contingent upon Reico making the
payment specified by Section 3.01.
2.02 Option Period. Unless otherwise agreed to by the parties in writing,
the term of the Option granted pursuant to Section 2.01 (the "Option
Period") shall be the period running from the Effective Date to
December 31, 2000.
2.03 Pilot Study. Immediately following signature hereof, Neoprobe shall
instruct BioInvent AB, Sweden, by sending them a letter in the form of
Schedule 2.03, to transfer the HuCC49DCH2 antibody fragment,
manufacturing and testing files to The Ohio State University to the
attention of Xx. Xxxxxx Xxxxxx and Dr. Xxxxxx Xxxxxx. It is recorded
and agreed that such transfer is made for the purposes of a physician
Investigated New Drug Pilot Study (the "Pilot Study") to be sponsored,
managed and monitored by Reico. Reico shall incur all expenses related
to the Pilot Study and shall be the sole owner of all data and
intellectual property rights relating and deriving from the Pilot
Study.
ARTICLE III. CONSIDERATION
3.01 Consideration. In consideration of the continuance validity of the
Option granted herein, Reico shall pay Neoprobe a non-refundable
payment of Fifty Thousand Dollars $50,000) due in two (2) equal
payments, the first payment due on or before May 31, 2000 and the
second payment due on or before August 31,2000. For the avoidance of
doubt if Reico shall elect not to pay such non refundable payment the
option shall expire, this Agreement shall terminate and Reico shall
instruct The Ohio State University to return to Neoprobe all remaining
HuCC49DCH2 antibody fragment, and in such event no party shall
have any claims, contentions or demands against the other party in
connection with this Agreement.
ARTICLE IV. DUE DILIGENCE
4.01 Completion of Due Diligence. Reico shall have until the end of the
Option Period to complete its due diligence activities relating to the
Technology, Patent Rights and Trademarks.
4.02 Exercise of Option. Reico shall have until December 31, 2000 to
exercise the option granted to it pursuant to Section 2.01. Reico must
notify Neoprobe in writing on or before December 31, 2000 if it will
exercise the Option granted in Section 2.01. The exercise of the Option
shall also be deemed as execution by the parties of the definitive
license agreement referred to in Section 4.03 bellow as of the date of
such exercise.
4.03 License Agreement. As soon as possible following signature, Neoprobe
and Reico shall negotiate in good faith to arrive at the terms of a
definitive written license agreement within sixty (60) days. The
definitive license agreement shall contain, inter alia, the following
terms:
(a) the license grant shall be an exclusive, worldwide,
irrevocable, perpetual (unless terminated for material breach)
license to the Patent Rights, Trademarks, and Technology for
use in radioimmunoguided surgical procedures;
(b) Reico shall have the right to sublicense;
(c) Reico shall make an upfront payment of nine hundred thousand
dollars ($900,000) upon execution of the license agreement by
the last of the parties to sign; this upfront payment shall be
nonrefundable and shall not be creditable against future
royalties;
(d) the license shall be royalty bearing for the period specified
in the definitive license agreement and the royalty rate shall
be the greater of five percent (5%) of the net ex-factory
price of Licensed Product to a distributor or thirty dollars
(US$30) per unit dose (as shall be determined in the
definitive license agreement) of Licensed Product;
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(e) Reico shall be responsible for all commercial development
costs for a Licensed Product and all payment of royalties to
National Cancer Institute and such other third parties (if at
all) specified in the definitive agreement and to the extent
so specified;
(f) Neoprobe agrees to take all steps necessary to transfer to
Reico any of Neoprobe's rights relating to the Technology or
Patent Rights including such rights which flow from third
party licenses to Neoprobe, including the assignment or other
transfer of license agreements with such third parties; and
(g) Reico shall be responsible for managing and maintaining the
Patent Rights and for all payments and fees associated
therewith.
4.04 Escrow. During the period of the option granted in this Agreement, in
order to assure that Reico shall have access to the CC49 master
cellbank, CC49 and HuCC49DCH2 cell lines (the "Materials"),
Neoprobe shall enter into an agreement with BioInvent wherein BioInvent
agrees to release to Reico the Materials in the event that Neoprobe
shall suffer an "Insolvency Event" or otherwise be ordered by the
arbitrator nominated pursuant to section 8.04 below or by a competent
court. As used in this Section 4.04, the term "Insolvency Event" shall
mean the occurrence of any of the following events:
(a) Neoprobe shall admit in writing its inability, or be generally
unable, to pay its debts as such debts become due; or
(b) Neoprobe shall (1) apply for or consent to the appointment of,
or the taking of possession by, a receiver, custodian, trustee
or liquidator of itself or of all or a substantial part of its
property, (2) make a general assignment for the benefit of its
creditors, (3) commence a voluntary case under the United
States Bankruptcy Code, as now or hereafter in effect (the
"Bankruptcy Code"), (4) file a petition seeking to take
advantage of any other law relating to bankruptcy, insolvency,
reorganization, winding-up, or composition or readjustment of
debts, (5) fail to controvert in a timely and appropriate
manner, or acquiesce in writing to, any petition filed against
it in any involuntary case under the Bankruptcy Code, or (6)
take any corporate action for the purpose of effecting any of
the foregoing; or
(c) A proceeding or case shall be commenced by or against Neoprobe
in any court of competent jurisdiction, seeking (1) its
liquidation, reorganization, dissolution or winding-up, or the
composition or readjustment of its debts, (2) the appointment
of a trustee, receiver, custodian, liquidator or the like of
Neoprobe or of all or any substantial part of its assets, or
(3) similar relief in respect of Neoprobe under any law
relating to bankruptcy, insolvency, reorganization,
winding-up, or composition or adjustment of debts, or an
order, judgment or decree approving or ordering any of the
foregoing shall be entered and continue unstayed and in effect
for a period of ninety (90) days; or an order for relief
against Neoprobe shall be entered in a case under the
Bankruptcy Code. The agreement with BioInvent shall require
Reico's prior written approval, and Reico shall have the right
to review and comment on the terms of the agreement with
BioInvent prior to its execution. All costs associated with
setting up and maintaining the escrow during the term of the
Option Agreement (up to $1,500) shall be the responsibility of
Reico. Reico shall have the right to inspect all Material
placed into escrow by Neoprobe prior to placement in escrow
and shall further be entitled to use such Material for the
purposes of the Pilot Study only. The escrow agreement shall
terminate upon the earlier of the expiration or termination of
the Option period, or the execution of a definitive license
agreement by Reico and Neoprobe pursuant to Section 4.03
herein.
ARTICLE V. TERM & TERMINATION
5.01 Term. This Agreement shall remain in effect from the Effective Date
until December 31, 2000, or until the parties enter into a written
license agreement pursuant to Section 4.03 covering the Technology,
Patent Rights, and Trademarks, at which time it shall terminate.
5.02 Termination Does Not Affect Accrued Rights. Termination of this
Agreement, pursuant to Section 4.02 or to any other provisions of this
Agreement, shall not affect any rights or obligations which may have
accrued to either party prior to the effective date of such termination
or expiration.
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ARTICLE VI. CONFIDENTIALITY
6.01 Confidential Information. Except for the proper exercise of any rights
granted or reserved under other provisions of this Agreement, each
party agrees that it will take such precautions as it normally takes
with its own confidential or proprietary information to keep
confidential and not to publish or otherwise disclose to a third party
except as permitted or anticipated herein, any information of a
confidential or proprietary nature furnished by the other party to it
in connection with this Agreement, including, without limitation,
technology, marketing strategy, specifications, product information,
preclinical and clinical data, inventions, processes, know-how, plans,
trade secrets, and adverse reaction reports (together called
"Confidential Information") without the prior written consent of the
other party, except to the extent that such Confidential Information is
required to be disclosed for the purpose of complying with law or
government regulations.
6.02 Period of Confidentiality. The obligation of confidentiality hereunder
shall remain in effect for three (3) years from the expiration or
termination of this Agreement; provided, however, that nothing in this
Article VI shall prevent disclosure or use by the receiving party of
any part of the Confidential Information of the other party which:
(a) was known or used by the receiving party prior to disclosure,
as evidenced by its written records made prior to the time of
disclosure hereunder;
(b) either before or after the time of disclosure becomes known to
the public other than by an unauthorized act or omission of
the receiving party;
(c) is lawfully disclosed to the receiving party by a third party
having the right to disclose said Confidential Information; or
(d) is developed by the receiving party independently from the
Confidential Information provided by the other party hereto,
as evidenced by the receiving party's written records.
6.03 Right to Use Confidential Information. Notwithstanding the restrictions
set forth in this Article VI, each party shall be entitled at all times
to use all Confidential Information provided by the other party in
order to perform its obligations or exercise its rights under this
Agreement.
6.04 Public Announcement. No press releases or other public announcements
concerning this Agreement shall be made by a party without the prior
review and consent of the other party; such consent not to be
unreasonably withheld.
6.05 Specific Terms Not To Be Disclosed. Neither Neoprobe nor Reico shall
publicly disclose the specific terms of this Agreement other than what
may be required by the Securities and Exchange Commission (SEC). Except
as required by SEC filings, the transactions contemplated hereby or
performance hereunder shall not be disclosed without first obtaining
the written consent of the other party unless there has been a prior
public disclosure of the information being disclosed by the other party
or with the other party's consent. Disclosure of the specific terms of
this Agreement to a third party must be under a written confidentiality
agreement, the terms of which are equal in scope with this Article VI.
6.06 Notwithstanding anything to the contrary above Reico shall be entitled
to make all statements and disclosure required in relation to this
Agreement and the Technology for the purposes of fund raising from
third parties including enabling such third parties to conduct due
diligence relating to the Technology, Patent Rights and Trademarks.
Disclosure of Confidential Information to a third party in connection
with due diligence activities, fund raising or other investment
activities must be made pursuant to a written confidentiality
agreement, the terms of which are equal in scope with this Article VI.
ARTICLE VII. REPRESENTATIONS & WARRANTIES
7.01 Neoprobe Authorization. Neoprobe hereby represents and warrants that it
is a corporation duly organized, validly existing and in good standing
under the laws of the State of Delaware, and that the execution,
delivery and performance of this Agreement have been fully authorized
by the Board of Directors of Neoprobe and that there is no hindrance,
by law, agreement or otherwise, preventing it from entering into this
agreement and timely and fully fulfilling all its undertakings
hereunder.
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7.02 Reico Authorization. Reico hereby represents and warrants that it is a
corporation duly organized, validly existing and in good standing under
the laws of the State of Israel, and that the execution, delivery and
performance of this Agreement have been fully authorized by the Board
of Directors of Reico and that there is no hindrance, by law, agreement
or otherwise, preventing it from entering into this agreement and
timely and fully fulfilling all its undertakings hereunder.
7.03 Neoprobe Representation. Neoprobe hereby represents that as of the
Effective Date and at all times throughout the option period, to the
best of its knowledge and belief, it owns or has rights to all Patent
Rights necessary for implementation of this Agreement, including,
without limitation, all items set forth in Schedule 1.03. Neoprobe
further represents that upon exercise of the option granted herein by
Reico, Neoprobe will take all steps necessary to transfer all of
Neoprobe's rights to such Patent Rights to Reico. As part of the
measures taken by Neoprobe to protect its intellectual property, each
of Neoprobe's employees was required to sign a confidentiality
undertaking towards Neoprobe relating to its intellectual property. All
of Neoprobe's intellectual property rights in and to the Technology are
free and clear from any encumbrances. In addition, to the best of
Neoprobe's knowledge and belief, such intellectual property rights are
valid and in full force and effect, and they do not interfere with,
infringe upon, misappropriate, or otherwise come into conflict with any
intellectual property rights of third parties. Neoprobe has not
received any charge, complaint, claim, demand, or notice alleging any
such interference, infringement, misappropriation, or violation
(including any claim that Neoprobe must license or refrain from using
any rights of any third party). To the best knowledge of Neoprobe, no
third party has interfered with, infringed upon, misappropriated, or
otherwise comes into conflict with any Intellectual Property rights of
Neoprobe.
ARTICLE VIII. MISCELLANEOUS
8.01 Force Majeure. Except as specifically set forth herein, neither
Neoprobe nor Reico shall be in default under this Agreement nor liable
for any failure to perform or for delay in performance resulting from
any cause beyond its reasonable control or due to compliance with any
regulations, orders, or act of any federal, provincial, state or
municipal government, or any department or agency thereof, civil or
military authority; acts of God, acts or omissions of the other party,
fires, floods or weather; strikes or lockouts; factory shutdowns,
embargoes, wars, hostilities or riots; delays or shortages in
transportation; or inability to obtain labor, manufacturing facilities
or material, provided that it shall promptly notify the other party in
writing with reasonable details of the force majeure circumstances and
their expected duration.
8.02 Taxes. Each of the parties shall bear all taxes imposed on it as a
result of its performance or receipt of funds under this Agreement
including, but not restricted to, any sales tax, any tax on or measured
by any royalty or other payment required to be made by it hereunder,
any registration tax, any tax imposed with respect to the granting of
or transfer of licenses or other rights hereunder or the payment or
receipt of royalties hereunder. The parties shall cooperate fully with
each other in obtaining and filing all requisite certificates and
documents with the appropriate authorities and shall take such further
action as may reasonably be necessary to avoid the deduction of any
withholding or similar taxes from any remittance of funds by Neoprobe
to Neoprobe hereunder.
8.03 Notice. All notices, proposals, submissions, offers, approvals,
agreements, elections, consents, acceptances, waivers, reports, plans,
requests, instructions and other communications required or permitted
to be made or given hereunder (all of the foregoing hereinafter
collectively referred to as "Communications") shall be in writing, and
shall be deemed to have been duly made or given when: (i) delivered
personally with receipt acknowledged; (ii) sent by registered or
certified mail or equivalent, return receipt requested, or (iii) sent
by facsimile or telex (which shall promptly be confirmed by a writing
sent by regular mail), or (iv) sent by recognized overnight courier for
delivery within twenty-four (24) hours, in each case addressed or sent
to the parties at the following addresses and facsimile numbers or to
such other or additional address or facsimile as any party shall
hereafter specify by Communication to the other parties:
To: Neoprobe Corporation To: Reico Ltd. (Acting as
Trustee for NuRIGS Ltd.)
Xxxxx X. Xxxx, President & CEO Xxx Xxxxxx, President
Neoprobe Corporation Ramat Aviv Tower
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000 Xxxxx Xxxxx Xxxxx, Xxxxx 000 00 Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxxxxx, XX 00000 XXX Xxx Xxxx 00000, XXXXXX
Fax No: 000-000-0000 Fax No: 000-0-000-0000
Notice of change of address shall be deemed given when actually
received, all other Communications shall be deemed to have been given,
received and dated on the earlier of: (i) when actually received, or on
the date when delivered personally; (ii) two (2) days after being sent
by facsimile, cable, telex (each promptly confirmed by a writing as
aforesaid) or (iii) three (3) days after sent by overnight courier; or
(iv) five (5) business days after mailing.
8.04 Arbitration. In the event of a dispute between Neoprobe and Reico
relating to a party's performance under this Agreement or a
disagreement as to the meaning of any of the terms of this Agreement,
the parties agree to hold good faith discussions to resolve such
dispute. If the parties can not resolve such dispute within sixty (60)
days after beginning good faith negotiations, the parties agree to
submit the dispute to arbitration for final resolution. The arbitration
shall be conducted by one (1) arbitrator in accordance with the
commercial rules of the American Arbitration Association, which shall
administer the arbitration and act as appointing authority. The
arbitration, including the rendering of the award, shall take place in
New York City, New York and such location shall be the exclusive forum
for resolving such dispute, controversy or claim. The decision of the
arbitrator shall be binding upon the parties hereto, and the expense of
the arbitration shall be paid as the arbitrator determines. The
decision of the arbitrator shall be executory, and judgment thereon may
be entered by any court of competent jurisdiction. The arbitrator shall
award attorneys' fees to the prevailing party.
8.05 Governing Law. This Agreement shall be construed and governed by the
laws of the State of Ohio and subject to the provisions of Section
8.04, adjudicated within the exclusive jurisdiction of the courts of
the State of Ohio, Franklin County. If any provision of this Agreement
including, but not limited to, the waiver of claims under any
particular statute, should be deemed unenforceable, the remaining
provisions shall, to the extent possible, be carried into effect,
taking into account the general purpose and spirit of this Agreement.
8.06 Other Instruments. The parties hereto covenant and agree that they will
execute such other and further instruments and documents as are or may
become reasonably necessary or convenient to effectuate and carry out
the provisions of this Agreement or may be reasonably requested by the
other party.
8.07 Legal Construction. In case any one or more of the provisions contained
in this Agreement shall be invalid or unenforceable in any respect, the
validity and enforceability of the remaining provisions contained
herein shall not in any way be affected or impaired thereby and the
parties will attempt to agree upon a valid and enforceable provision
which shall be a reasonable substitute for such invalid and
unenforceable provision in light of the tenor of this Agreement, and,
upon so agreeing, shall incorporate such substitute provision in this
Agreement.
8.08 Agreement, Modification, Consents and Waivers. This Agreement
supersedes all prior agreements, written or oral, between the parties
whether with respect to the subject matter herein, and contains the
entire agreement of the parties with respect to the subject matter
hereof and, except as provided herein, no interpretation, change,
termination or waiver of or extension of time for performance under any
provision of this Agreement shall be binding upon any party unless in
writing and signed by the party intended to be bound thereby. Receipt
by any party of money or other consideration due under this Agreement,
with or without knowledge of breach, shall not constitute a waiver of
such breach or any provision of this Agreement. Except as otherwise
provided in this Agreement, no waiver of or other failure to exercise
any right under, or default or extension of time for performance under,
any provision of this Agreement shall affect the right of any party to
exercise any subsequent right under or otherwise enforce said provision
or any other provision hereof or to exercise any right or remedy in the
event of any other default, whether or not similar.
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8.09 Relationship. Nothing contained in this Agreement shall be deemed to
create a partnership or joint venture between the parties, and each of
the parties shall in all matters connected herewith be independent
contractors. Neither of the parties hereto shall hold itself out as the
agent of the other, nor shall either of the parties incur any
indebtedness or obligation in the name of, or which shall be binding on
the other, without the prior written consent of the other. No
employees, agents, or sales representatives of either party shall be
deemed employees, agents or sales representatives of the other party.
8.10 Section Headings; Construction. The section headings and titles
contained herein are each for reference only and shall not be deemed to
affect the meaning or interpretation of this Agreement. The words
"hereby", "herein", "hereinabove", "hereinafter", "hereof" and
"hereunder, when used anywhere in this Agreement, refer to this
Agreement as a whole and not merely to a subdivision in which such
words appear, unless the context otherwise requires. The singular shall
include the plural, the conjunctive shall include the disjunctive and
the masculine gender shall include the feminine and neuter, and vice
versa, unless the context otherwise requires.
8.11 Execution Counterparts. This Agreement may be executed in any number of
counterparts and each duplicate counterpart shall constitute an
original, any one of which may be introduced in evidence or used for
any other purpose without the production of its duplicate counterpart.
Moreover, notwithstanding that any of the parties did not execute the
same counterpart, each counterpart shall be deemed for all purposes to
be an original, and all such counterparts shall constitute one and the
same instrument, binding on all of the parties hereto.
8.12 Consents and Approval. Unless otherwise expressly provided herein and
subject to the provisions of Section 6.04 above, whenever in this
Agreement a consent or approval is to be given by any party hereto,
such consent or approval may be given or withheld, as the case may be,
in the sole and absolute discretion of such party.
ARTICLE IX. BINDING EFFECT, ASSIGNMENT
9.01 Binding Effect, Assignment. This Agreement shall inure to the benefit
and be binding upon each of the parties hereto and their respective
successors and assigns. Neither this Agreement, nor any of the rights
and obligations under this Agreement, may be assigned, transferred or
otherwise disposed of by either party without the prior consent of the
other party, unless such assignment, transfer or disposition is to a
successor to all the business and assets of the transferor; provided
that, such successor shall in any event agree in writing with the other
party to assume all obligations of the transferor under this Agreement
in a manner satisfactory to the other party. Subject to the foregoing
limitations, the Agreement shall be binding upon and to the benefit of
the respective successors and assigns of the parties. Notwithstanding
the above, Reico may at all times and at its sole discretion transfer
and assign this Agreement and its rights and obligations thereunder to
NuRIGS.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their respective officer hereunto duly authorized as of the date first
written hereinabove.
NEOPROBE CORPORATION Reico LTD.
By: /s/ Xxxxx X. Xxxx /s/ Xxx Xxxxxx
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Xxxxx X. Xxxx, President & CEO Xxx Xxxxxx, President
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