Contract
Exhibit
10.91
Certain
confidential information contained in this document, marked by brackets
and the
word "REDACTED" ([REDACTED]),
has
been omitted and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
Amended.
FOR
REAL-TIME IN VIVO IMAGING TECHNOLOGY
This
Xenogen License Agreement For Real-Time In Vivo Imaging Technology
(the
“Agreement”) is made by and between Xenogen Corporation, with a principal place
of business at 000 Xxxxxxxx Xxxxxx, Xxxxxxx, XX 00000 (“Xenogen”) and Gene
Logic, Inc., a corporation with a principal place of business at 000
Xxxxxxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000 (“Licensee”) (each a “Party”
and collectively, the “Parties”), and is effective as of November 17, 2004 (the
“Effective Date”).
RECITALS
WHEREAS,
Xenogen
owns or Controls the Imaging System (as defined below) and the Xenogen
Imaging
Technology (as defined below);
WHEREAS,
Licensee wishes to obtain a non-exclusive license to use the Xenogen Imaging
Technology and the Imaging System (as defined below) in the Field (as defined
below) to image bioluminescent cells or organisms in
vivo
as a
method of drug discovery, and preclinical drug development and exogenous
agent
investigation and research; and
WHEREAS,
Xenogen
wishes to grant Licensee such a license on the terms and conditions contained
in
this Agreement.
NOW
THEREFORE,
in
consideration of the mutual promises and covenants herein, the Parties
hereby
agree as follows.
ARTICLE
I
DEFINITIONS
1.1 “Affiliate”
means
any corporation, firm, partnership or other legal entity which, directly
or
indirectly, is controlled by a Party. For the purposes of this definition
only,
“control” shall mean (i) the direct or indirect ownership of fifty percent (50%)
or more of the outstanding voting securities or capital stock of such entity,
or
(ii) such other relationship as in fact results in actual control over
the
management, business and affairs of such entity.
1.2 “BiowareÒ”
is
a
Xenogen trademark that identifies certain prokaryotic or eukaryotic cells,
bacteria and micro-organisms that are genetically engineered to produce
light,
and are owned or Controlled by Xenogen.
1.3 “Authorized
Site”
means
Licensee’s designated research facility where the Imaging System will be
installed and used, initially located at 00 Xxxxxx Xxxxxx, Xxxxxxxxx, XX.
During
the Term, Licensee may designate alternate/additional Authorized Sites
in
accordance with the terms of this Agreement.
1.4 “Collaboration”
means
an
agreement between Licensee or
an
Affiliate and
a
third party including, without limitation, an academic collaborator, that
establishes a collaboration, sponsored research program, joint venture,
corporate partnership or other similar type of strategic alliance between
Licensee or
an
Affiliate and
such
third party that: (a) involves research
or development in a specified field or
on
substance(s) of
interest to the parties; (b) includes access to and use of material and
proprietary technology and intellectual property of Licensee or
an
Affiliate other
than the Xenogen Imaging Technology; (c) in which Licensee or
an
Affiliate contributes
substantial research or development effort; and (d) under which Licensee
or
an
Affiliate has
been
granted or retains proprietary rights for significant intellectual property
(other than as relates to its own proprietary technologies or improvements
thereto), or success-based economic interests (e.g. milestone payments
or future
royalties from product sales) in the future of the therapeutic entity
or
other
substances or uses generated
under the work conducted. For clarity, Licensee acknowledges that the term
“Collaboration”
does
not cover Third Party Service or other arrangements between Licensee and
a third
party under which: (i) Licensee only performs contract services for such
third
party on a fee-for-service basis
without
the rights or interests such as those set forth in (iii) below;
(ii)
Licensee provides such third party the data or other information resulting
from
such service; and (iii) with respect to the
potential
results
of such service, Licensee retains no intellectual property rights (other
than as
relates to its own proprietary technologies or improvements thereto) or
success-based economic interests.
1.5 “Confidential
Information”
shall
have the meaning set forth in Section 4.1.
1.6 “Control”
or
“Controlled”
means
possession of the ability to grant a license or sublicense as provided
for
herein without violating the terms of any agreement or other arrangements
with
any third party or any intellectual property rights of any third
party.
1.7 “Equipment”
means
the specific hardware components included in the Imaging System and replacements
and substitutions therefor provided by or through Xenogen.
1.8 “Field”
means
pharmaceutical and biotechnological research and development and/or the
investigation of the effect of a chemical, biological, or other substance
or
energy applied to or into the body of an animal conducted by Licensee
or
an
Affiliate for
itself and/or
in
connection with a Collaboration,
which
includes, but is not limited to, use of the Imaging System, but excluding
Third
Party Service.
1.9 “Imaging
System”
means
Xenogen’s XXXX®
Imaging
System 200 Series (as well as XXX-000, XXX-0, XLS-4 and other accessories
on
Exhibit B other than the last 4 items), consisting of the Equipment and
Software.
1.10 “Installation
Date”
shall
have the meaning set forth in Section 2.1.
1.11 “Licensee”
shall
mean Gene Logic Inc. and its wholly owned subsidiaries
1.12 “LPTA®
Animal Models”
is
a
Xenogen trademark that identifies certain laboratory animals that are
genetically engineered to produce light, and are owned or Controlled by
Xenogen.
“LPTA” Models shall have the meaning defined in Section 3.4 and LPTA Materials
shall have the meaning defined in Section 1.1 of Exhibit C.
1.13 “Software”
means
the object code form of Xenogen’s Living Image®
image
processing and data analysis software, as well as updates and upgrades
provided
by Xenogen at its sole discretion, and documentation related
thereto.
1.14 “System”
means
any imaging system used in connection with the Xenogen Imaging
Technology.
1.15 “Term”
means
the term of this Agreement as set forth in Section 8.1.
1.16 “Third
Party Service”
means
research conducted by Licensee in support of any relationship or agreement
between Licensee and a third-party entity other than services performed
by
Licensee as part of a Collaboration.
1.17 “Xenogen
Imaging
Technology”
means
the technology claimed in U.S. Patent Nos. 5,650,135, 6,217,847 and 6,649,143
and all substitutions, continuations, continuations-in-part, divisionals,
reissues, extensions, confirmations, and re-examinations thereof.
ARTICLE
II
IMAGING
SYSTEM
2.1 Delivery
and Operation.
(a)
Imaging
System.
Within
sixty (60) days of the Effective Date, Xenogen shall ship the Imaging System
to
Licensee and install it at the Authorized Site. The Imaging System will
be
suitably packed for shipment in Xenogen’s standard containers, marked for
shipment to the Authorized Site, and shipped FOB Xenogen’s manufacturing
facility in Alameda, California, freight and freight insurance prepaid
and added
to the invoice. Upon proper installation of the Imaging System and completion
of
the Initial Training (as described in Section 2.2(a) below), Licensee shall
provide Xenogen with written acknowledgement of the foregoing, the date
of such
acknowledgement to be deemed the "System Installation Date". Upon payment
of the
purchase price for the initial Imaging System pursuant to Section 3.5(a),
the
Equipment provided as part of such Imaging System will become the sole
property
of Licensee.
(b) Additional
Systems.
During
the Term, Licensee may, but is under no obligation to, order, in writing,
from
Xenogen additional Imaging Systems (each, an “Additional System”) that Licensee
desires to use in accordance with the terms of this Agreement. Upon payment
of
the purchase price for each Additional System pursuant to Section 3.5(a),
the
Equipment provided as part of such Additional System will become the sole
property of Licensee. Each Additional System includes hardware and software
components providing the same or similar functionality as the Imaging
System.
Xenogen
will deliver and install any Additional Systems at the installation location
designated by Licensee at the Authorized Site in the manner described in
Section
2.1(a) and Section 2.2. The terms and conditions of Sections 2.2 through
2.3
shall apply to Additional Systems in the same manner as they apply to the
Imaging System. Unless otherwise agreed to in writing, Additional Systems
shall
be shipped to Licensee within sixty (60) days after receipt of Licensee’s
purchase order for such Additional System, and Xenogen will thereafter
install
it at the location designated by Licensee at the Authorized Site within
fourteen
(14) business days after delivery to the installation site. Upon installation
of
the Additional System and completion of Initial Training (as described
in
Section 2.2(a) below), Licensee shall provide Xenogen with written
acknowledgement of completion of all of the foregoing, the date of such
acknowledgement to be deemed the "Installation Date" for each such Additional
System.
2.2 Technical
Assistance.
(a) Initial
Training.
Xenogen
shall provide Licensee, without additional charge, reasonable assistance
and
training in the initial installation and introduction to use of the Imaging
System, including assistance and training at the Authorized Site, commencing
within fourteen (14) business days after receipt of the Imaging System,
unless
otherwise agreed by Licensee. Such initial training and assistance at the
Authorized Sites shall not exceed a total of three (3) days, in the aggregate,
by Xenogen without Xenogen’s further consent and payment to Xenogen for such
additional assistance and training. Xenogen anticipates making two technically
qualified personnel available at the Authorized Site for an aggregate amount
of
up to three (3) days in support of the foregoing training and assistance,
such
training and assistance referred to as the "Initial Training". Licensee
may
request, and Xenogen may provide in response to such request, additional
technical support to Licensee at Xenogen's then current rate for such support
(currently $1,250 per day per employee as of the Effective Date) plus associated
expenses.
(b) System
Movement.
Licensee acknowledges and agrees that Xenogen’s technical assistance may be
necessary for reinstallation and set-up in the event that the Imaging System
is
to be moved from its installed location to other locations within the Authorized
Site or from one Authorized Site to another. If Licensee desires to designate
an
alternate or additional Authorized Site, it may do so provided it notifies
Xenogen in writing of such Authorized Site and indicates the approximate
date
that such Authorized Site is to become effective and the dates on which
Xenogen
assistance may be required to install and test the system. Xenogen shall
acknowledge receipt of such notice and indicate whether it can provide
the
necessary support at the time requested or propose alternate dates. Except
in an
emergency, Licensee shall provide any such notice at least two (2) weeks
before
it intends to make the new Authorized Site active and, provided it has
given at
least two (2) weeks prior notice, Xenogen shall make commercially reasonable
efforts to provide the support requested at the time specified or as soon
thereafter as possible. In an emergency, the parties shall work together
to
schedule re-installation and testing as soon as possible. Licensee may
request,
and Xenogen may provide in response to such request, such technical assistance
to Licensee for such System moves at the fee specified in Exhibit D.
2.3 Software
(a) License.
In
consideration
for the license fees payable by Licensee hereunder, Xenogen hereby grants
to
Licensee and
its
Affiliates for
the
Term a
royalty-free, non-exclusive, non-transferable (except as provided in Section
9.2) license, without the right to sublicense, to use, store and display
the
Software solely in connection with the practice of the Xenogen Imaging
Technology in conjunction with the Imaging System at the Authorized Site
on
behalf of Licensee or in connection with a Collaboration. Use of the Software
and associated computer involves methods and products claimed under U.S.
Patent
No. 6,614,452 and all substitutions, continuations, continuations-in-part,
divisionals, reissues, extensions, confirmations and reexaminations thereof,
all
of which are covered by the license granted herein. Installation
and use of the Software shall be restricted for the Field and to the Equipment
and up to five (5) additional computer workstations at the Authorized Site.
During the Term, licenses for additional copies of the Software may be
requested
from Xenogen at its then-applicable retail price.
(b) Ownership
of Software.
The
Software (including any copyrights related thereto) is and shall remain
the sole
and exclusive property of Xenogen. Licensee agrees that it will not, without
Xenogen’s prior written consent, directly or indirectly, modify, make derivative
works, or make any additional copies of the Software, except for one (1)
backup
copy. Licensee further agrees that it shall not, directly or indirectly,
attempt
to reverse engineer or decompile the Software or otherwise derive source
code
from the Software.
(c) Software
Support.
Xenogen
shall provide maintenance and support of the Software as set forth in Section
2.4(b), except that Xenogen will also provide Licensee with updates to
the
Software at no additional charge during the term as soon as they become
commercially available.
2.4 Limited
Warranty and Maintenance and Support.
(a) Limited
Warranty.
Xenogen
represents and warrants to Licensee that for a period of one (1) year (the
“Warranty Period”) after the Installation Date: (i) the Equipment provided to
Licensee hereunder shall in all material respects conform to and perform
in
accordance with its published specifications existing at the time such
Equipment
is acquired or manufactured by Xenogen; and (ii) the Software will in all
material respects conform to and perform in conformance with Xenogen’s
then-current specifications for such Software. The foregoing warranty expressly
excludes failure to perform due to Misuse of all or any component of the
Imaging
System, whether Equipment or Software. As used in this Agreement, “Misuse”
means, without limitation, (i) any use that is, in any material respect,
inconsistent with or in contradiction to the instructions provided with
the
Imaging System, (ii) intentional damage to or misuse of the Imaging System,
and
(iii) damage due to negligence in connection with use of the Imaging System.
If,
Licensee so requests, Xenogen will service the System to repair such Misuse,
Xenogen reserves the right to charge the full cost of such service to Licensee,
including travel expenses. Xenogen does not warrant that the Software will
meet
all of Licensee’s requirements or that the use of the Software will be
uninterrupted or error-free. Except as expressly provided herein and in
the
exhibits hereto, Xenogen's sole obligation, and Licensee’s sole remedy, under
this Section 2.4 is to use reasonable efforts to promptly correct or replace
any
non-conforming Equipment and/or Software at Xenogen’s expense, including parts,
labor and travel expenses related to maintenance and corrective service
during
the Warranty Period.
(b) Maintenance
and Support of Imaging System.
During
the Warranty Period and for no additional consideration, Xenogen will also
provide Licensee with its “Standard” Service Program (pursuant to Section 3.1.2
of Xenogen’s XXXX® Imaging System Service and Support Agreement (the “Service
Agreement”), attached hereto as Exhibit D) for the Imaging System. Prior to
expiration of the foregoing warranty Licensee may purchase maintenance
and
support for its Imaging System in accordance with the terms set forth in
Exhibit
D.
2.5 Disclaimer
of All Other Warranties.
EXCEPT
AS EXPRESSLY SET FORTH IN SECTION 2.4(A) AND ELSEWHERE IN THIS AGREEMENT
AND IN
THE RELATED AGREEMENTS ATTACHED AS EXHIBITS HERETO, XENOGEN MAKES NO WARRANTIES
(EXPRESS, IMPLIED, STATUTORY OR OTHERWISE) WITH RESPECT TO THE IMAGING
SYSTEM
HEREUNDER AND SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, AND ALL WARRANTIES
OF
NONINFRINGEMENT OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS. XENOGEN DOES
NOT
REPRESENT OR WARRANT THAT THE EQUIPMENT OR SOFTWARE WILL BE FREE OF DEFECT,
UNINTERRUPTED, ACCURATE, COMPLETE, CURRENT, STABLE, BUG-FREE, ERROR-FREE,
OR
AVAILABLE AT ANY TIME.
ARTICLE
III
TECHNOLOGY
LICENSE
3.1 Technology
License.
In
consideration
of the license fees payable by Licensee hereunder, Xenogen hereby grants
to
Licensee and
its
Affiliates a
non-exclusive,
non-transferable license, without the right to sublicense, to practice
the
Xenogen Imaging Technology during the Term solely with the Imaging System
and
solely within the Field at the Authorized Sites on behalf of Licensee or
in
connection with a Collaboration. In consideration of the granting of the
foregoing license, Xenogen shall provide, without additional charge, not
more
than a total aggregate of [REDACTED] person hours per calendar year of
follow-on
technical support to Licensee at the Authorized Site. Licensee may request,
and
Xenogen will provide in response to such request, additional technical
support
to Licensee at Xenogen's then current rate for such support plus associated
expenses. Each Party will designate an individual to serve as a contact
point
for the other Party and to address and attempt to resolve technical issues
that
arise during the Term. Xenogen’s initial contact is Mr. Xxx Xxxxxx, and
Licensee’s initial contact is Dr. Xxxxxx Xxxxxxx. Each Party may change its
designated contact upon written notice to the other Party.
3.2 Limitations.
The
licenses granted in Sections 2.3(a) and 3.1 are only for use at the Authorized
Site. Licensee may not exercise the licenses granted herein to provide
Third
Party Service. No other license or rights shall be deemed granted or created
by
implication, estoppel or otherwise.
3.3 Bioware™
Cells and Microorganisms.
(a) Transfer
and Use.
Licensee may request during the Term, and subject to availability Xenogen
will
provide (and license for use), any of the Bioware identified in Exhibit
A, or
other models that are offered commercially by Xenogen, at the Authorized
Site
solely for use in the Field on behalf of Licensee or in connection with
a
Collaboration according to the terms and conditions herein. Xenogen will
deliver
such Bioware to Licensee as soon as practicable following receipt of Licensee’s
applicable request or purchase order. Licensee may propagate the Bioware
received hereunder, as well as Progeny and Derivatives thereof, solely
for the
purpose of creating additional quantities for Licensee’s use as permitted
hereunder. Licensee acknowledges that the Bioware, Bioware Progeny and
Bioware
Derivatives (collectively, “Bioware Materials”) are experimental in nature and
may have unknown characteristics. Xenogen will advise Licensee promptly
of any
hazards it determines may apply to any of the Bioware and appropriate
precautions to be taken in connection therewith. Licensee therefore agrees
to
use prudence and all reasonable care in the use, handling, storage,
transportation and disposition and containment of the Bioware Materials
and to
maintain them under suitable containment conditions in compliance with
all
applicable national, state and local laws, regulations, rules and
ordinances.
(b) Definitions.
The
term “Bioware Progeny” shall mean and refer to both unmodified descendents and
modified descendents of the Bioware received hereunder that occur as a
result of
a naturally occurring mutation or other spontaneous process. The term “Bioware
Derivative” shall mean a substance that is directly or indirectly derived from
the Bioware received hereunder or any Progeny thereof, including, without
limitation, a product expressed by or generated from the Bioware or
Progeny.
(c) Consideration.
During
the Term, Bioware cell lines will be priced at a non-refundable initial
fee of
[REDACTED] per cell line, with a non-refundable annual renewal fee of [REDACTED]
per cell line. During the Term, Bioware bacterial strains will be priced
at a
non-refundable initial fee of [REDACTED] per strain, with a non-refundable
annual renewal fee of [REDACTED] per strain. Except for Bioware covered
by the
payment made under Section 3.5(d) below, Xenogen will invoice Licensee
for
Bioware upon
shipment and annually thereafter.
(d) Ownership.
Licensee agrees that, as between the Parties, the Bioware Materials are
and
shall be owned and/or controlled exclusively by Xenogen, and that this
Agreement
creates a bailment by Licensee with respect to any and all such Bioware
Materials.
In the
event that Licensee does not pay the
annual
renewal
fee for any Bioware acquisition
when
due,
Licensee agrees to destroy all such Bioware
Materials, and to provide Xenogen with written certification of such destruction
executed by an authorized representative of Licensee.
(e) Limitations.
Licensee shall not use the Bioware Materials for any human in vivo use
whatsoever, or for any human in vitro diagnostic or therapeutic applications.
The Bioware Materials are provided to Licensee for use solely at the Authorized
Sites. Licensee shall not transfer the Bioware Materials to any person
who is
not under the immediate and direct employment of Licensee or to any place
other
than Licensee’s facilities at the Authorized Sites. Licensee shall not use the
Bioware Materials in the performance of or in conjunction with Third Party
Service. Except as provided in Section 3.3(a), Licensee shall not attempt
to
alter or modify the Bioware Materials in any way without the prior written
consent of Xenogen, or attempt, directly or indirectly, to re-engineer
the
Bioware Materials, or extract or transfer any genetic material from the
Bioware
Materials to another organism. Licensee agrees to maintain a valid license
to
the Xenogen Imaging Technology so long as the Bioware Materials are being
used
by Licensee for applications covered by one or more of the claims in the
Xenogen
Imaging Technology.
(f) Luciferase.
Licensee acknowledges that the mutant recombinant Coleoptera
luciferase nucleic acid and protein contained in Bioware cell lines and
the LPTA
Models is the subject of U.S. Patent Nos. 5,583,024, 5,674,713 and 5,700,673,
assigned to The Regents of The University of California and U.S. Patent
No.
5,670,356, assigned to Promega Corporation. That material, or any substance
that
contains or incorporates that material, may not be transferred or licensed
to
any other party except as expressly provided herein, or be used for commercial
purposes by any other party (including Licensee), without the express written
consent of The Regents of The University of California and Promega
Corporation.
(g) Limited
Replacement.
To the
extent the Bioware is not living or fails to exhibit sufficient luminescent
properties (as described in Xenogen’s technical descriptions of such Bioware)
upon delivery to Licensee, and Licensee notifies Xenogen thereof within
ten (10)
days after receipt, Xenogen shall, at Licensee’s option, either promptly provide
replacements to Licensee or refund the amount paid for such Bioware. The
foregoing constitutes Licensee’s sole remedy for dissatisfaction with the
Bioware Materials or failure of the Bioware to perform in accordance with
Xenogen's specifications existing at the time of delivery.
(h) Other
Sources.
Licensee
is not prohibited from developing or acquiring from any other source other
bioluminescent or fluorescent strains ("Other Strains") to be used in the
practice of the Xenogen Imaging Technology in accordance with the terms
of this
Agreement. Licensee agrees that it shall have the sole responsibility for
acquiring any third party intellectual property rights necessary to use
such
Other Strains, including rights to those patents described in Section 3.3(f)
above. Xenogen may also agree to develop new Bioware™ cells and/or
microorganisms to be provided to Licensee, for fees to be negotiated between
the
Parties in good faith.
3.4 LPTA®
Animal Models.
Upon
Licensee’s request during the Term, and subject to availability, Xenogen will
provide Licensee with quantities of specific lines of Xenogen’s LPTA Animal
Models identified in Exhibit A, or that otherwise are offered commercially
by
Xenogen, (“LPTA Models”) for use in the Field in connection with the Imaging
System, subject to the terms and conditions of this Agreement and those
standard
terms and conditions provided at Exhibit C. During the Term, LPTA Models
will be
priced at a non-refundable fee of [REDACTED] per animal (minimum quantity
of
twenty animals), or, for breeding pairs, a non-refundable initial fee of
[REDACTED] per line, with a non-refundable annual renewal fee of [REDACTED]
per
line. As long as Licensee maintains its access rights to at least one such
line
during the Term, then breeding pairs for subsequent lines will be priced
at a
non-refundable initial fee of [REDACTED] per line, with a non-refundable
annual
renewal fee of [REDACTED] per line. Licensee is not prohibited from developing
or acquiring from any other source other bioluminescent or fluorescent
transgenic animals ("Other Animals") to be used in the practice of the
Xenogen
Imaging Technology. Licensee agrees that it shall have the sole responsibility
for acquiring any third party intellectual property rights necessary to
use such
Other Animals. Xenogen may also agree to develop new LPTA Animal Models
to be
provided to Licensee, for fees to be negotiated between the
Parties in good faith. Xenogen acknowledges that a specific bioluminescent
mouse
model is to be transferred to Licensee from Millennium Pharmaceuticals,
Inc. and
that the terms of that transfer do not include any consideration to be
paid to
Xenogen,
and that
such mouse model is not covered by the terms of this Agreement.
3.5 Payments.
(a) System.
Licensee agrees to pay Xenogen [REDACTED] for purchase of the Imaging System.
Licensee may purchase Additional Systems at Xenogen’s then-current list price,
provided that for the first Additional System ordered within the first
twelve
(12) months of the Term, the price shall be the lesser of [REDACTED] or
Xenogen’s then current list price.
(b) Technology
License Fee.
In
addition to the purchase price set forth in Section 3.5(a), for each Imaging
System purchased by Licensee hereunder, Licensee shall pay a non-refundable,
non-creditable, annual technology license fee of [REDACTED] to practice
the
Xenogen Imaging Technology in the Field with each Imaging System or Additional
System for the first year of the Term, [REDACTED] for the second year of
the
Term and [REDACTED] to practice in the Field with each Imaging System or
Additional System for each subsequent year of the Term; provided however,
that
if the patents included in the Xenogen Imaging Technology are declared
invalid
or unenforceable as they relate to the Imaging System in a final judicial
or
administrative opinion from which no appeal can be taken, such fee shall
no
longer apply.
(c) Hardware
Accessories.
Licensee may purchase additional quantities of hardware accessories not
included
in the Imaging System from Xenogen as listed in Exhibit B (October 2004
prices
shown). Xenogen agrees that, for purposes of this Agreement, the prices
for
additional quantities of hardware accessories that it offers for sale for
use
with the Imaging System will not be changed more than once in any calendar
year
(with 30 days' prior written notice to Licensee) and the prices shown on
Exhibit
B will not be changed prior to October 1, 2005.
(d) Payments.
Payment
for the annual technology license fee is due upon the Effective Date and
subsequent anniversaries thereof. Unless otherwise specified in writing,
all
payments required according to this Agreement shall be made by transfer
to the
bank account nominated by the receiving Party upon timely receipt of an
invoice.
Invoices shall be sent to Licensee at:
000
Xxxxxxxxxxxx Xxxxx
Xxxxxxxxxxxx,
Xx. 00000
Attn:
Finance
With
a
copy to:
00
Xxxxxx
Xxxxxx
Xxxxxxxxx,
XX. 00000
Attn:
[REDACTED]
All
payments shall be made in U.S. Dollars, by direct bank transfer to an account
designated by Xenogen or by check, at Licensee’s discretion. Unless otherwise
stated herein, payments are due within thirty (30) days after receipt of
invoice
from Xenogen. Any payments hereunder that are not paid on the date such
payments
are due under this Agreement shall bear interest at a rate of [REDACTED]
percent
([REDACTED]%) annually, calculated on the number of days such payment is
delinquent. Any taxes or other governmental charges incident to the performance
of this Agreement (excluding taxes on Xenogen’s income but including any sales
tax, use tax, excise tax, customs duty (including any applicable V.A.T)
shall be
the sole responsibility of Licensee. Licensee shall pay or reimburse Xenogen
for
the foregoing, as applicable.
(e) Audits.
During
the Term of this Agreement and thereafter, Xenogen shall have the right
to have
audited, by an independent public accountant designated by Xenogen and
reasonably acceptable to Licensee, no more than once in each calendar year
during the term of this Agreement and no more than twice during the three
(3)
calendar years following the expiration or termination of this Agreement,
Licensee’s books and records relating to the use of the Imaging System, Xenogen
Imaging Technology and any LPTA Models and Bioware Materials transferred
hereunder with at least fifteen (15) business days prior written notice
and at
Licensee’s normal business hours for the purpose of verifying compliance with
the terms of this Agreement. Xenogen shall bear the cost of such audits.
All
information learned in the course of any such audit(s), excluding amounts
due to
Xenogen, shall be considered Confidential Information of Licensee (regardless
of
whether it is marked “Confidential”) and shall be subject to confidentiality
obligations of this Agreement.
(f) Imaging
System Service and Support.
Licensee may contract with Xenogen for a Service Program (as that term
is
defined in the Service Agreement) providing for maintenance and support
of the
Imaging System upon expiration of the Warranty Period. Terms and conditions
for
such support and for enrollment in a Service Program are provided in the
Service
Agreement at Exhibit D.
3.6 Additional
Patents.
Although
Licensee is not
obligated to purchase access to Bioware or LPTA Models for use with the
Imaging
System and
does
not make any admission of the validity of Xenogen's rights, certain
uses of light-emitting reporters embodied in bacteria, cell lines or transgenic
animal models are
covered
by one or more of the following issued U.S. patents or patent applications
owned
or controlled by Xenogen and a
license
may be necessary:.
|
5,824,468
|
Detection
of Listeria by Means of Recombinant
Bacteriophages
|
|
6,610,503
|
Animal
Models for Predicting Sepsis
Mortality
|
|
6,638,752
|
Biodetectors
Targeted to Specific Ligands
|
|
6,737,245
|
Luciferase
Expression Cassettes and Methods of
Use
|
|
Allowed
|
Methods
and Compositions for Screening for Angiogenesis Modulating
Compounds
|
|
09/888049
|
Compositions
and Methods for Use Thereof in Modifying the Genomes of
Microorganisms
|
|
10/126,912
|
Isolation
and Identification of Transcription Control Elements Associated
with Mouse
Eosinophil Peroxidase Expression
|
|
10/121960
|
Isolation
and Identification of Mouse and Human Transcription Control Elements
Associated with Cytochrome
Expression
|
|
10/094146
|
Methods
of Screening for Introduction of DNA Into a Target
Cell
|
ARTICLE
IV
CONFIDENTIAL
INFORMATION
4.1
Confidential
Information.
The
term “Confidential Information” means any proprietary technical or business
information or data related to, or generated in connection with, the performance
of this Agreement and which is provided by one Party (the “Disclosing Party”) to
the other Party (the “Receiving Party”) pursuant to this Agreement. Xenogen’s
Confidential Information will include, without limitation, any proprietary
know-how, data or other information relating to the Imaging System or the
use
thereof, which is provided by Xenogen to Licensee for use in performance
of this
Agreement. Licensee’s Confidential Information shall include, without
limitation, any proprietary know-how, data or other information relating
to any
of Licensee’s research programs or products that are used in connection with the
Xenogen Imaging Technology and disclosed under this Agreement.
4.2
Obligations.
Except
as expressly provided herein, the Parties agree that, during the term of
this
Agreement and for a period of five (5) years thereafter, the Receiving
Party
shall keep completely confidential and shall not publish or otherwise disclose
to any third party which is not an Affiliate (except under no less stringent
obligations of confidentiality and only for purposes expressly permitted
herein)
and shall not use for any purpose except for the purposes expressly contemplated
by this Agreement any Confidential Information furnished to it by the Disclosing
Party pursuant to this Agreement. Confidential Information, if disclosed
in
written form must be marked as “Confidential” at the time of disclosure, or if
disclosed orally, must be expressly identified as “Confidential” at the time of
oral disclosure, and be confirmed as “Confidential” in a written form that is
delivered to the Receiving Party within thirty (30) days of oral disclosure;
however, the failure to so xxxx or identify and confirm a disclosure as
confidential shall not cause it to be non-confidential if the receiving
party
knew or reasonably should have known that it was the type of information
which
is considered Confidential Information. To the extent it can be established
by
competent written proof, Confidential Information shall not include information
that:
(a) is
already known to the Receiving Party, other than under an obligation of
confidentiality, at the time of disclosure;
(b) is
generally available to the public or otherwise part of the public domain
at the
time of its disclosure to the Receiving Party;
(c) becomes
generally available to the public or otherwise part of the public domain
after
its disclosure to the Receiving Party and other than through any act or
omission
of the Receiving Party in breach of this Agreement;
(d) is
subsequently lawfully disclosed to the Receiving Party by a third party
having
no confidentiality obligations with respect thereto; or
(e) is
independently developed by the Receiving Party or its Affiliates without
the
aid, application or use of the Disclosing Party’s Confidential Information (and
such independent development is properly evidenced by documentation by
the
Receiving Party).
4.3 Permitted
Use and Disclosures.
The
Receiving Party may disclose the Disclosing Party’s Confidential Information to
the extent required by law, rule, regulation, act or order of any governmental
authority or agency; provided that Receiving Party promptly notifies the
Disclosing Party of such requirement in order to provide the Disclosing
Party an
opportunity to seek a protective order or other similar order with respect
to
such Confidential Information, and thereafter the Receiving Party discloses
only
the minimum information required to be disclosed in order to comply, whether
or
not a protective order or other similar order is obtained by the Disclosing
Party. Further, a Party may disclose the existence and terms of this Agreement
to existing or potential investors or acquirers or merger partners, or
to
professional advisors (e.g., attorneys, accountants and prospective investment
bankers) involved in such activities, for the limited purpose of evaluating
such
investment or transaction and under appropriate conditions of confidentiality,
only to the extent necessary and with the agreement by these permitted
individuals to maintain such Confidential Information in strict
confidence.
4.4 Confidential
Terms.
Neither
Party will issue a press release or otherwise publicize or disclose to
any third
party the terms and conditions hereof without the prior written consent
of the
other Party, except that each Party may disclose such information to its
attorneys, advisors or investors on a need to know basis under circumstances
that reasonably ensure the confidentiality thereof, or to the extent required
by
law (including under applicable federal or state securities laws and
regulations). Notwithstanding any other terms of this Agreement, subject
to
Section 9.8, the Parties agree that the existence of this Agreement does
not
constitute Confidential Information and may be disclosed without
restriction.
ARTICLE
V
INTELLECTUAL
PROPERTY RIGHTS
5.1 No
Implied Rights; Retained Rights.
Only
the licenses granted pursuant to the express terms of this Agreement shall
be of
any legal force or effect. No other license rights shall be granted or
created
by implication, estoppel or otherwise. Xenogen reserves the right to license
the
Xenogen Imaging Technology and Software to others, and to use Software
and
Xenogen Imaging Technology for its own purposes.
5.2 Ownership
of Inventions.
The
Parties acknowledge and agree that ownership of all inventions, discoveries
and
innovations (including any patent applications, patents or other intellectual
property rights arising directly from them) arising
hereunder by Licensee (hereinafter “Inventions”) shall be determined as
follows:
(a) Xenogen
Intellectual Property.
Xenogen
shall be the sole and exclusive owner of any Invention made by Licensee
during
the Term (as defined in Section 8.1) of this Agreement to the extent that
it is
a
derivative or a modification
of the Bioware Materials and LPTA Models developed using such Bioware or
LPTA
Models, or an improvement, enhancement or modification to the Imaging System
itself (collectively, “Improvements”). Licensee hereby assigns to Xenogen its
right, title, and interest in all such Improvements; provided however that
Licensee shall retain a royalty-free, fully paid, non-assessable,
nonexclusive,
transferable
only to
an Affiliate or as permitted in Section 9.2 below,
perpetual license to use the Improvements in the Field, and upon request
and at
Xenogen’s expense, agrees to reasonably cooperate with Xenogen to enable Xenogen
to perfect its interest in any and all such Xenogen Inventions.
(b) Licensee
Intellectual Property.
Licensee shall be the sole and exclusive owner of any Invention other than
a
Xenogen Invention. Xenogen hereby assigns all its title to and interest
in any
and all such Inventions to Licensee, and upon request and at Licensee’s expense,
agrees to reasonably cooperate with Licensee to enable Licensee to perfect
its
interest in any and all such Inventions.
(c) No
Blocking.
Licensee
agrees not to assert any patent or other proprietary right obtained as
a result
of any use,
while
this Agreement is in effect, of the Bioware Materials or LPTA Materials
that
would block the manufacture, offer for sale, sale or use of the Bioware
Materials or LPTA Materials by Xenogen or an Affiliate of Xenogen, or any
use of
Bioware Materials or LPTA Materials by any customer of Xenogen. Licensee
agrees
that such non-assertion of rights shall run with all licenses, sublicenses
and
assignments of Licensee’s rights in any invention covered by this subparagraph
(c) that would have such blocking effect.
For
purposes of clarification, this non-assertion right is not intended in
any way
to apply to information
and materials developed independently of the Bioware Materials or LPTA
Materials, including Licensee’s
GeneExpress System, any toxicity markers or biomarkers, or to
compounds and indications developed by or for Licensee and its Affiliates
or
resulting from Collaborations.
5.3 Patent
Prosecution.
Each
Party shall be responsible, at its own expense for the preparation, filing,
prosecution, maintenance, enforcement or defense of any patent applications
or
patents claiming Inventions owned by it pursuant to Section 5.2. Nothing
herein
shall be construed as granting to either Party any license or other rights
with
respect to any Inventions, or any patent applications or patents directed
thereto, which are owned by the other Party pursuant to Section 5.2.
Inventorship shall be determined in accordance with U.S. patent
law.
5.4 Publications.
In
accordance with scientific custom, the contribution of each Party will
be
expressly noted in all written or oral public scientific abstracts, papers
or
presentations (“Scientific Documents”), by acknowledgment or co-authorship, as
appropriate. In the event that either Party publishes such results in the
scientific literature, acknowledgment will be made to the other Party and
its
personnel in the accepted style consistent with customary scientific practices,
as appropriate.
ARTICLE
VI
REPRESENTATIONS
AND WARRANTIES
6.1 Representations
and Warranties by the Parties.
Each of
Licensee and Xenogen hereby represents and warrants to the other Party
that:
(a) it
is a
corporation duly organized and validly existing under the laws of the state
or
other jurisdiction of its incorporation;
(b) the
execution, delivery and performance of this Agreement by such Party has
been
duly authorized by all requisite corporate action;
(c) it
has
the power and authority to execute and deliver this Agreement and to perform
its
obligations hereunder;
(d) the
execution, delivery and performance by such Party of this Agreement and
its
compliance with the terms and provisions hereof does not and will not conflict
with or result in a breach of any of the terms and provisions of or constitute
a
default under (i) a loan agreement, guaranty, financing agreement, agreement
affecting a product or other agreement or instrument binding or affecting
it or
its property; (ii) the provisions of its corporate charter or other operative
documents or bylaws; or (iii) any order, writ, injunction or decree of
any court
or governmental authority entered against it or by which any of its property
is
bound;
(e) this
Agreement has been duly authorized, executed and delivered and constitutes
such
Party’s legal, valid and binding obligation enforceable against it in accordance
with its terms subject, as to enforcement, to bankruptcy, insolvency,
reorganization and other laws of general applicability relating to or affecting
creditors’ rights and to the availability of particular remedies under general
equity principles; and
(f) it
shall
comply with all applicable laws, rules and regulations relating to the
performance of its activities under this Agreement.
6.2 Representations
and Warranties by Xenogen.
Xenogen
hereby represents and warrants to Licensee as follows:
(a) the
Equipment will be transferred to Licensee free and clear of any liens,
encumbrances or other claims of third parties, and
(b) Xenogen
has the right to transfer the Equipment, Software, Bioware and LPTA Materials
to
Licensee, and
to
grant the licenses herein granted and to permit Licensee to use all such
items
upon the terms herein provided.
6.3 Representation
by Legal Counsel.
Each
Party represents that it has been represented by legal counsel in connection
with this Agreement and acknowledges that it has participated in the drafting
hereof. In interpreting and applying the terms and provisions of this Agreement,
the Parties agree that no presumption shall exist or be implied against
the
Party which drafted such terms and provisions.
6.4 No
Warranty.
LICENSEE ACKNOWLEDGES THAT, EXCEPT EXPRESSLY SET FORTH HEREIN INCLUDING
THE
EXHIBITS HERETO, XENOGEN DOES NOT MAKE ANY REPRESENTATIONS OR EXTEND ANY
WARRANTIES OF ANY KIND, WHETHER EXPRESS, IMPLIED, STATUTORY OR OTHERWISE,
WITH
RESPECT TO THE XENOGEN IMAGING TECHNOLOGY, INCLUDING WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE
XENOGEN IMAGING TECHNOLOGY WILL NOT INFRINGE THE INTELLECTUAL PROPERTY
RIGHTS OF
THIRD PARTIES. XENOGEN DOES NOT REPRESENT OR WARRANT THAT THE XENOGEN IMAGING
TECHNOLOGY WILL BE FREE OF DEFECT, UNINTERRUPTED, ACCURATE, COMPLETE, CURRENT,
STABLE, BUG-FREE, ERROR-FREE, OR AVAILABLE AT ANY TIME. XENOGEN ACKNOWLEDGES
THAT, EXCEPT EXPRESSLY SET FORTH HEREIN INCLUDING THE EXHIBITS HERETO,
LICENSEE
DOES NOT MAKE ANY REPRESENTATIONS OR EXTEND ANY WARRANTIES OF ANY KIND,
WHETHER
EXPRESS, IMPLIED, STATUTORY OR OTHERWISE.
ARTICLE
VII
INDEMNIFICATION;
LIABILITY
7.1 Indemnification
by Licensee.
Licensee shall indemnify, defend and hold Xenogen and its directors, officers,
employees and agents and the Trustees of Xxxxxx Xxxxxxxx Jr. University
(“Stanford”), Stanford Health Services and their respective trustees, officers,
employees, students and agents (collectively the “Xenogen Indemnitee(s)”)
harmless from and against any and all liabilities, claims, demands, expenses
(including, without limitation, reasonable attorneys’ fees), losses or causes of
action (each, a “Liability”) arising out of or relating to any third party claim
resulting from (i) Licensee’s use of the Xenogen Imaging Technology, Imaging
System, (except for third party claims of patent, trademark or copyright
infringement to the extent relating solely to the Xenogen Imaging Technology,
Imaging System, Bioware Materials or LPTA Models), and (ii) possession,
propagation or use of Bioware Materials or LPTA Materials, other than as
authorized by Xenogen herein. Notwithstanding the foregoing, Licensee shall
have
no indemnification obligation under this Section 7.1 to the extent that
such
Liability is caused by the negligence or willful misconduct of
Xenogen.
7.2 Indemnification
by Xenogen.
Xenogen
shall indemnify, defend and hold Licensee, its Affiliates and their respective
directors, officers, employees and agents (collectively the “Licensee
Indemnitee(s)”) harmless from and against any and all Liabilities arising out of
or relating to any third party claim of patent, trademark or copyright
infringement to the extent due solely to Licensee’s use of the Xenogen Imaging
Technology, Imaging System, Bioware Materials or LPTA Models (except to
the
extent such third party claim would not have arisen but for Licensee’s use of
the Imaging System with processes or materials not provided by Xenogen
hereunder). In addition, Xenogen shall indemnify and hold Licensee harmless
from
and against any Liabilities arising at any time in connection with Xenogen’s use
of any Licensee images (except that Xenogen shall have no indemnification
obligation under this Section 7.2 for Liabilities arising out of or relating
to
any third party claim of copyright infringement in connection with Xenogen’s use
of any Licensee images in the event that Licensee approves the use of such
images by Xenogen pursuant to Section 5.4 but fails to identify such images
as
being subject to a third party copyright known to Licensee). Notwithstanding
the
foregoing, Xenogen shall have no indemnification obligation under this
Section
7.2 to the extent that such Liability is caused by the negligence or willful
misconduct of Licensee.
7.3 Procedure.
A Party
(the “Indemnitee”) that intends to claim indemnification under this Article VII
shall promptly notify the other Party (the “Indemnitor”) in writing of any
claim, complaint, suit, proceeding, cause of action or other potential
Liability
in respect of which the Indemnitee intends to claim such indemnification
(for
purposes of this Section 7.3, each a “Claim”), and the Indemnitor shall have
sole control of the defense and/or settlement thereof; provided that the
Indemnitee shall have the right to participate, at its own expense, with
counsel
of its own choosing in the defense and/or settlement of such Claim. The
indemnification under this Article VII shall not apply to amounts paid
with
respect to settlement of any Claim if such settlement is effected without
the
consent of the Indemnitor, which consent will not be unreasonably withheld
or
delayed. The failure to deliver written notice to the Indemnitor within
a
reasonable period of time after the commencement of any such claim, suit
or
proceeding, if materially prejudicial to its ability to defend such action,
shall relieve such Indemnitor of any liability to the Indemnitee under
this
Article VII, but the omission to so deliver written notice to the Indemnitor
shall not relieve the Indemnitor of any liability to any Indemnitee otherwise
than under this Article VII. Without limiting the foregoing, the Indemnitee
shall keep the Indemnitor fully informed of the progress of any Claim for
which
it intends to claim indemnification under this Article VII. The Indemnitor
shall
not be responsible for any costs or expenses incurred by the Indemnitee
without
the Indemnitor’s prior written consent, which consent will not be unreasonably
withheld.
7.4 Limitation
on Liability.
EXCEPT
FOR THE PARTIES’ RESPECTIVE INDEMNIFICATION OBLIGATIONS UNDER ARTICLE VII OR
BREACH OF LICENSES GRANTED HEREUNDER, IN NO EVENT SHALL EITHER PARTY HAVE
ANY
LIABILITY TO THE OTHER FOR ANY CONSEQUENTIAL, INDIRECT, INCIDENTAL OR SPECIAL
DAMAGES (INCLUDING LOST PROFITS, LOSS OF DATA, OR COST OF SUBSTITUTE GOODS
OR
SERVICES), REGARDLESS OF THE THEORY OF LIABILITY, WHETHER BASED ON CONTRACT,
TORT (INCLUDING NEGLIGENCE), OR OTHERWISE, AND REGARDLESS OF WHETHER A
PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. EXCEPT FOR THE PARTIES’
INDEMNIFICATION OBLIGATIONS UNDER ARTICLE VII, XENOGEN’S AGGREGATE LIABILITY TO
LICENSEE ARISING UNDER THIS AGREEMENT SHALL NOT EXCEED THE TOTAL AMOUNTS
PAID OR
PAYABLE TO XENOGEN BY LICENSEE HEREUNDER.
ARTICLE
VIII
TERM
AND TERMINATION
8.1 Term.
This
Agreement will commence on the Effective Date and, unless terminated earlier
as
provided in this Article VIII, will expire three (3) years after the System
Installation Date (the “Term”), provided that Licensee shall have the right to
terminate this agreement at the end of the first two years after the System
Installation Date if License notifies Xenogen in writing at least thirty
(30)
days prior to the end of such two year period. No less than thirty (30)
days
prior to expiration of the Term, Licensee may renew this Agreement for
an
additional three (3) years upon written notice to Xenogen. The Technology
License Fee amount stated in Section 3.5(b) shall continue to apply for
such
renewal period (except that the initial credits will not apply to such
renewal).
8.2 Termination
for Cause.
Either
Party may terminate this Agreement in the event the other Party has materially
breached or defaulted in the performance of any of its obligations hereunder,
and such default has continued for thirty (30) days after written notice
thereof
was provided to the breaching Party by the nonbreaching Party. Termination
shall
become effective at the end of such thirty (30) day period unless the breaching
Party has cured any such breach or default prior to the expiration of such
period. Notwithstanding the above, in the case of a failure to pay any
amount
due hereunder the period for cure of any such default following notice
thereof
shall be ten (10) business days and, unless payment is made within such
period,
the termination shall become effective at the end of such ten (10) business
day
period.
8.3 Effect
of Termination.
(a) Accrued
Rights and Obligations.
Termination of this Agreement for any reason shall not release any Party
from
any liability which, at the time of such termination, has already accrued
to the
other Party or which is attributable to a period prior to such termination
nor
preclude either Party from pursuing any rights and remedies it may have
hereunder or at law or in equity with respect to any breach of this Agreement.
(b) Return
of Confidential Information and Software.
Upon
any termination or expiration of this Agreement, each of Licensee and Xenogen
shall promptly return to the other Party all Confidential Information received
from the other Party (except one copy which may be retained in a secure
location
solely for the purpose of determining the Receiving Party’s obligations under
this Agreement with respect thereto). The Software shall be shipped to
Xenogen’s
facility at the address set forth in Section 9.5.
(c) Licenses.
The
licenses granted hereunder shall terminate upon any expiration or termination
of
this Agreement (except the license in Section 5.2(a)).
(d) Bioware/LPTA
Destruction.
Upon
any termination or expiration of this Agreement, as well as upon termination
or
expiration of rights to LPTA Materials or Bioware Materials on a line-by-line
basis, Licensee agrees to destroy all of such Bioware Materials and LPTA
Materials, and to provide Xenogen with written certification of such destruction
executed by an officer of Licensee.
8.4 Survival.
Sections 2.5,
5.2(a), (b) and (c) (in accordance with their terms), 6.4,
8.3,
8.4, 9.1, 9.2, 9.5 and 9.10 and Articles I, IV (in accordance with its
terms),
VII of this Agreement
shall survive the expiration or termination of this Agreement for any
reason.
8.5 Bankruptcy.
All
rights to practice under the Xenogen Imaging Technology and to use, display
and
store Software granted to Licensee under this Agreement are deemed to be,
for
purposes of Section 365(n) of the U. S. Bankruptcy Code, licenses of rights
to
"intellectual property" as defined under the U. S. Bankruptcy Code. As
a
licensee of such rights, Licensee may retain and exercise all of its rights
and
elections under the U. S. Bankruptcy Code. In the event of a commencement
of
bankruptcy proceedings by or against Xenogen, Licensee
shall be entitled to continue to exercise the rights granted to it hereunder
and,
if the
proceedings are not terminated within 60 days after commencement,
to
access and obtain a copy of all embodiments of the intellectual property
embodied in the Software, solely for purposes of Licensee's on-going exercise
of
its rights in the Field hereunder, and if not already in the possession
of
Licensee, the same shall be promptly delivered to Licensee (i) upon written
request by Licensee, unless Xenogen elects to continue to perform all of
its
obligations under this Agreement, or (ii) if not delivered under (i) above,
upon
the rejection of this Agreement or any licenses to Software by or on behalf
of
Xenogen upon Licensee's written request. In any bankruptcy action by Xenogen,
failure by Licensee to assert its rights to retain its benefits to the
intellectual property encompassed by the Software, pursuant to Section
365(n)(1)(B) of the Bankruptcy Code, under an executory contract rejected
by the
trustee in bankruptcy, shall not be construed as a termination of the Agreement
by Licensee under Section 365(n)(1)(A) of the Bankruptcy Code.
ARTICLE
IX
GENERAL
9.1 Governing
Law; Venue.
This
Agreement and any dispute arising from the performance or breach hereof
shall be
governed by and construed and enforced in accordance with the laws of the
state
of California, without reference to conflicts of laws principles. The exclusive
venue of any dispute arising out of or in connection with the performance
or
breach of this Agreement shall be the California state courts located in
Alameda
County, California or the or U.S. district court for the Northern District
of
California, and the Parties hereby consent to the personal jurisdiction
of such
courts for the purposes of this Agreement and this Section 9.1.
9.2 Assignment.
Neither
this Agreement nor any or all of the rights and obligations of either Party
shall be assigned, delegated, sold, transferred or otherwise disposed of,
by
operation of law or otherwise, to any third party without the prior written
consent of the other Party; provided, however, that either Party may assign
the
Agreement and its rights and obligations hereunder in connection with the
transfer or sale of all or substantially all of its assets related to the
division or the subject business in which the technologies herein licensed
are
used, or in the event of its merger or consolidation or change in control
or
similar transaction. Except as specifically permitted herein, any attempted
transfer or assignment shall be void. This Agreement shall be binding upon
and
inure to the benefit of the Parties and their permitted successors and
assigns.
9.3 Waiver.
No
waiver of any rights, shall be effective unless consented to in writing
by the
Party to be charged and the waiver of any breach or default shall not constitute
a waiver of any other right hereunder or any subsequent breach or
default.
9.4 Severability.
In the
event that any provisions of this Agreement are determined to be invalid
or
unenforceable by a court of competent jurisdiction, the remainder of the
Agreement shall remain in full force and effect without said provision.
In such
event, the Parties shall in good faith negotiate a substitute clause for
any
provision declared invalid or unenforceable, which shall most nearly approximate
the intent of the Parties in entering this Agreement.
9.5 Notices.
All
notices, requests and other communications hereunder shall be in writing
and
shall be personally delivered or sent (i) by electronic facsimile transmission
(with confirmation of delivery and written confirmation by first class
mail),
(ii) by nationally recognized overnight delivery service, or (iii) by registered
or certified mail, return receipt requested, postage prepaid, in each case
to
the respective address specified below, or such other address as may be
specified in written notice to the other Party:
|
Licensee:
|
00
Xxxxxx Xxxxxx
Xxxxxxxxx,
XX 00000
Atn:
Senior Vice President
|
|
|
With
a copy to:
|
000
Xxxxxxxxxxxx Xxxxx Xxxxxxxxxxxx,
Xx. 00000
Attn:
General Counsel
|
|
|
Xenogen:
|
Xenogen
Corporation
000
Xxxxxxxx Xxxxxx
Xxxxxxx,
XX 00000
Attn:
V.P., Commercial Development
|
|
|
With
a copy to:
|
Xenogen
Corporation
000
Xxxxxxxx Xxxxxx
Xxxxxxx,
XX 00000
Attn:
Legal Department
|
Any
notice shall be deemed to have been given (i) when delivered in person,
(ii) one
business day after deposit with a nationally recognized overnight courier
service, (iii) five (5) business days after being deposited in the United
States
mail postage prepaid, first class, registered or certified mail or (iv)
the
business day on which it is sent and received by facsimile
transmission.
9.6 Independent
Contractors.
Both
Parties are independent contractors under this Agreement. Nothing contained
in
this Agreement is intended nor is to be construed so as to constitute Xenogen
or
Licensee as partners or joint venturers with respect to this Agreement.
Neither
Party shall have any express or implied right or authority to assume or
create
any obligations on behalf of or in the name of the other Party or to bind
the
other Party to any other contract, agreement, or undertaking with any third
party.
9.7 Use
of
Name.
Subject
to Section 9.8, neither Party shall use the name, logos or trademarks of
the
other Party or its Affiliates without the prior written consent of such
other
Party. Further, Licensee shall not use Stanford’s name with respect to the
technologies licensed hereunder without Stanford’s prior written consent.
9.8 Publicity.
The
Parties agree that the public announcement of the execution of this Agreement
and all subsequent announcements relating to this Agreement shall be in
the form
of a press release and that the Parties will confer on such press release,
to
review and comment and incorporate the other Party's reasonable comments
and
suggestions prior to issuance of such press release. Thereafter and
notwithstanding the foregoing, each Party shall be entitled to make or
publish
any public statement that is consistent with, and of no greater scope or
additional information regarding the other Party than the contents thereof
without the need for further approval by the other Party. Licensee agrees
that
Xenogen may include Licensee on any list of customers of Xenogen Imaging
Technology and Xenogen agrees that Licensee may include Xenogen and its
technologies in any description of technologies available for use by Licensee
in
the Field. Nothing in this Agreement shall prohibit a Party from making
any
disclosure required by law or regulation, including without limitation,
filings
required to be made by law with the Securities and Exchange Commission,
the New
York Stock Exchange, NASDAQ or any other similar stock exchange.
9.9 Force
Majeure.
Failure
of any Party to perform its obligations under this Agreement (except the
obligation to make payments when properly due) shall not subject such Party
to
any liability or place them in breach of any term or condition of this
Agreement
to the other Party if such failure is due to any cause beyond the reasonable
control of such non-performing Party ("force majeure"), unless conclusive
evidence to the contrary is provided. Causes of non-performance constituting
force majeure shall include, without limitation, acts of God, fire, explosion,
flood, drought, war, riot, sabotage, acts of terrorism, embargo, strikes
or
other labor trouble, failure in whole or in part of suppliers to deliver
on
schedule materials, equipment or machinery, interruption of or delay in
transportation, a national health emergency or compliance with any order
or
regulation of any government entity acting with color of right. The Party
affected shall promptly notify the other Party of the condition constituting
force majeure as defined herein and shall exert reasonable efforts to eliminate,
cure and overcome any such causes and to resume performance of its obligations
with all possible speed; provided that nothing herein shall obligate a
Party to
settle on terms unsatisfactory to such Party any strike, lockout or other
labor
difficulty, any investigation or other proceeding by any public authority
or any
litigation by any third party. If a condition constituting force majeure
as
defined herein exists for more than ninety (90) consecutive days, the Parties
shall meet to negotiate a mutually satisfactory resolution to the problem,
if
practicable.
9.10 Entire
Agreement; Amendment.
This
Agreement, together with its Exhibits, constitutes the entire and exclusive
Agreement between the Parties with respect to the subject matter hereof
and
supersedes and cancels all previous discussions, agreements, commitments
and
writings in respect thereof. No amendment or addition to this Agreement
shall be
effective unless reduced to writing and executed by the authorized
representatives of the Parties.
9.11 Headings.
The
captions to the several Sections and Articles hereof are not a part of
this
Agreement, but are included merely for convenience of reference only and
shall
not affect its meaning or interpretation.
9.12 Counterparts.
This
Agreement may be executed in two counterparts, each of which shall be deemed
an
original and which together shall constitute one instrument.
IN
WITNESS WHEREOF,
the
Parties hereby execute this Agreement by their respective duly authorized
representatives.
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Signature
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Signature
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Name
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Name
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Title
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Title
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Date
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