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EXHIBIT 10.11
LICENSE AGREEMENT
THIS License Agreement ("Agreement") is made as of 6/22/95 (the
"Effective Date") by and between the Xxxxxxxx Berkeley Laboratory ("LBL"), on
behalf of The Regents of the University of California ("The Regents"), an agency
of the State of California, located in Berkeley, California, and Symyx
Technologies, Inc., a corporation duly organized and existing under the laws of
California, whose address is 0000 Xxxxxxx Xxx., Xxxxx 000, Xxxx Xxxx, Xxxxxxxxxx
00000 ("Licensee").
RECITALS
WHEREAS, certain inventions, generally characterized as "the
Combinatorial Synthesis of Novel Materials" hereinafter collectively referred to
as "the Invention," were made in the course of research at LBL by Xx. Xxxxx X.
Xxxxxxx and Xx. Xxxxxxxx Xxxxx, jointly with Xx. Xxx Xxxxxxxxxx of Symyx
Technologies, Inc., and are covered by the Patent Rights as defined below;
WHEREAS, Drs. Xxxxxxx and Xiang have assigned their rights in the
Invention and the Patent Rights to The Regents and Xx. Xxxxxxxxxx has assigned
his rights to Licensee, and as a result the Patent Rights are owned jointly by
The Regents and Licensee;
WHEREAS, the development of the Invention was sponsored in part by the
United States Department of Energy ("U.S. DOE") and as a consequence this
license is subject to certain obligations to the federal government as set forth
in Public Law 96-517, as amended;
WHEREAS, the Licensee is a "small business firm" as defined at Section 2
of Public Law 85-536 (15 U.S.C. 632);
WHEREAS, The Regents desire that the Invention be developed and utilized
to the fullest extent so that the benefits can be enjoyed by the general public;
WHEREAS, the Licensee desires to obtain certain rights from The Regents
for the commercial development, use, and exploitation of the Invention, and The
Regents are willing to grant such rights.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
I. DEFINITIONS
As used in this Agreement, the following terms shall have the meaning
indicated:
1.1 "Affiliate" shall mean any corporation or other entity that is
directly or indirectly controlling, controlled by or under common control with
Licensee. For the purpose of this definition, "control" shall mean the direct or
indirect ownership of more than fifty percent (50%) of the capital stock of the
subject entity entitled to vote in the election of directors (or, in the case of
an entity that is not a corporation, interests entitled to vote in the election
of the corresponding managing authority).
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1.2 "Licensed Subject Matter" shall mean inventions, discoveries,
information and other subject matter within the Patent Rights or Technology.
1.3 "Licensed Products" shall mean (i) any product whose sale would
infringe a Valid Claim within the Patent Rights in the country for which the
product is made or sold; or (ii) a composition of matter that is first invented
by Licensee, or by a Sublicensee pursuant to a sublicense granted hereunder,
using a method covered at the time of such use by a Valid Claim within the
Patent Rights in the country in which such use occurred.
1.4 "Net Sales" shall mean the gross sales price actually received by
Licensee upon its sales of Licensed Products to a third party, less (a) normal
and customary rebates, and cash and trade discounts actually given, (b) amounts
allowed or credited due to returns (not to exceed the original billing or
invoice amount), and (c) to the extent billed separately on the invoice and paid
by the buyer: (i) sales, use and/or other excise taxes or duties actually paid,
(ii) the cost of any packages and packing, (iii) insurance costs and outbound
transportation charges prepaid or allowed, and (iv) import and/or export duties
actually paid. In the event that Licensee sells or otherwise transfers a
Licensed Product to an Affiliate for resale, the amount received by Licensee
from such Affiliate shall not be included in Net Sales, but Net Sales shall
include amounts received by such Affiliate on resale of such Licensed Product,
calculated on the same basis as Net Sales by Licensee. In addition, in the event
that Licensee exchanges Licensed Products for goods or services in a commercial
barter transaction with a third party, Net Sales shall include the fair market
value of such Licensed Products. For such purposes, fair market value shall be
determined by: (a) the selling price at which products of similar kind and
quality, sold in similar quantities, are then currently being offered for sale
by Symyx; (b) when such products are not then currently being offered for sale
by Symyx, the average selling price at which products of similar kind and
quality, sold in similar quantities, are then currently being offered for sale
by other like manufacturers; (c) when such products are not currently being
offered for sale by Symyx or other like manufacturers, Symyx' cost of
manufacture, determined by generally accepted accounting principles, plus Symyx'
standard xxxx-up on similar products.
1.5 "Patent Rights" shall mean any and all rights in and to: the patents
and patent applications listed in Exhibit A; any foreign counterparts of such
patents or applications; any divisions, substitutions, re-examinations, and
continuations thereof; any patents issuing on any of the foregoing; and all
reissues, renewals and extensions thereof. Continuations-in-part of any of the
foregoing applications and patents issuing on such continuations-in-part,
patents of addition, and all reissues, renewals and extensions of such patents
and patents of addition, shall also be within the Patent Rights, to the extent
the same claim subject matter that was disclosed in an application listed in
Exhibit A or any foreign counterparts thereof. To the extent The Regents own
jointly with Licensee any of the foregoing patent rights, it is understood that
the Patent Rights include only The Regents' rights as a joint owner of such
patents and patent applications.
1.6 "Sublicensee" shall mean a third party to whom Licensee has granted
the right to make (or have made) and sell Licensed Products, or to whom Licensee
has granted the right to practice any method that would infringe a Valid Claim
within the Patent Rights, in each case with
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respect to Licensed Products made by such third party (or by another entity
pursuant to such third party's "have made" rights).
1.7 "Technology" shall mean any and all rights owned by The Regents and
administered by LBL under the Regent's intellectual property policy, in any
technical information, know-how, process, procedure, composition, device,
method, formula, protocol, technique, software, design, drawing or data, which
were conceived or reduced to practice by Xx. Xxxxx X. Xxxxxxx or Xx. Xxxxxxxx
Xxxxx or other LBL personnel arising out of or in connection with work in Xx.
Xxxxxxx'x and/or Dr. Xiang's laboratories or under either of their direction,
prior to the Effective Date, which are not covered by Patent Rights, but which
are reasonably necessary to practice inventions covered by the Patent Rights.
1.8 "Valid Claim" shall mean either (a) a claim of an issued and
unexpired patent, which has not been held unenforceable, unpatentable or invalid
by a court or other governmental agency of competent jurisdiction, and which has
not been admitted to be invalid or unenforceable through reissue, disclaimer or
otherwise, or (b) a claim in a pending patent application, provided that if such
pending claim has not issued as a claim of an issued patent within five (5)
years after the date from which such claim takes priority, such pending claim
shall not be a Valid Claim for purposes of this Agreement unless and until,
subsequent to such five (5) year period, such pending claim is issued as a claim
of an issued and unexpired patent as set forth in (a) above. In the event that a
claim of an issued and unexpired patent is held by a court or other governmental
agency of competent jurisdiction to be unenforceable, unpatentable or invalid,
and such holding is reversed on appeal by a higher court or agency of competent
jurisdiction, such claim shall be reinstated thereafter as a Valid Claim
hereunder.
1.9 "Highly Inflationary Currency" shall mean the currency of any
economy with a cumulative inflation rate of 100% or more over the most recent
three calendar years, as measured by consumer price indices published by the
International Monetary Fund (International Financial Statistics), Washington,
D.C.
II. LICENSE
2.1 Grant.
(a) The Regents and LBL hereby grant to Licensee an exclusive,
worldwide right and license, including the right to grant and authorize
sublicenses, under the Patent Rights to make, use, sell, import, export and
otherwise distribute Licensed Products, practice any method, process or
procedure, and otherwise exploit the Patent Rights; and to have any of the
foregoing performed on its behalf by a third party.
(b) The Regents and LBL hereby also grant to Licensee a
nonexclusive, worldwide right and license, including the right to grant and
authorize sublicenses, with respect to the Technology, to make, use, sell,
import, export and otherwise distribute Licensed Products, practice any method,
process or procedure, and to otherwise exploit such Technology; and to have
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any of the foregoing performed on its behalf by a third party. It is understood,
however, that no license is granted under this Section 2.1(b) with respect to
any patent or patent application that is not within the Patent Rights.
(c) The licenses granted to Licensee under this Section 2.1 are
subject to any rights of the United States Government, as provided to Section
8.2 below. In addition, it is understood that any sublicense granted by Licensee
in accordance with this Section 2.1 shall be subordinate to this Agreement.
License shall provide to LBL copies of any such sublicenses, as provided under
Section 5.2 below.
2.2 Reservation. Notwithstanding Section 2.1, The Regents expressly
reserve the right to use the Licensed Subject Matter for educational and
academic, noncommercial research purposes.
2.3 Future Inventions. Licensee will have an option to acquire a license
to certain inventions, as follows:
(a) LBL will promptly provide Licensee with a written Invention
Disclosure Report with respect to any Option Invention conceived or reduced to
practice, alone or jointly with others, by Xx. Xxxxxxx, Xx. Xxxxx or by other
LBL personnel, which in each case arises out of or in connection with work in
the laboratory, or under the direction, of Xx. Xxxxxxx or Dr. Xiang, and that
are owned by The Regents or LBL, to the extent such Option Invention is
conceived or first reduced to practice at LBL. As used herein, an "Option
Invention" shall mean any invention or discovery that comprises any method or
apparatus the practice, manufacture, sale or use of which would infringe a Valid
Claim within the Patent Rights, or any novel material discovered using a method
covered by a Valid Claim within the Patent Rights.
(b) Licensee shall have the option to acquire an exclusive,
worldwide license for all purposes, including the right to grant and authorize
sublicenses, with respect to each such Option Invention (including all worldwide
patent rights therein) on reasonable and customary terms. To exercise such
option with respect to any particular Option Invention, Licensee shall notify
LBL within six (6) months after receiving an Invention Disclosure Report and a
written request from LBL, referencing this Section 2.3, as to whether Licensee
wishes to acquire a license to such Option Invention (the "Option Period").
However, for an Invention Disclosure Report to operate to commence the Option
Period, such Invention Disclosure Report must describe an Option Invention that
has been reduced to practice and is sufficiently developed to evaluate, in
conjunction with discussions with the inventors, the scope and patentability of
such Option Invention. In any event, upon request by Licensee, LBL agrees to
provide to Licensee promptly a copy of any patent applications prepared or filed
by or on behalf of LBL or The Regents with respect to the Option Invention.
(c) Licensee may extend the time period for exercising its
option once with respect to each particular Option Invention for an additional
six (6) months by so notifying LBL prior to the expiration of the initial Option
Period for such Option Invention and paying LBL an option fee of $20,000. It is
understood that, for purposes of determining the amount due to LBL upon an
extension of the Option Period, the Option Invention shall be deemed to include
all subject matter that would normally be covered in a single U.S. patent
application in accordance with reasonable and customary U.S. patent prosecution
practice (i.e. only one extension fee shall be due with respect to all such
subject matter, even if technically a patent application may include more than
one invention or a series of related inventions is divided into separate
applications).
III. LICENSE ISSUE FEE
3.1 Stock. In partial consideration of the rights and license granted to
Licensee under this Agreement, Licensee agrees to issue to The Regents, One
Hundred and Twenty Thousand (120,000) shares of Symyx Common Stock, pursuant to
the Stock Issuance Agreement attached hereto as Exhibit B. Licensee represents
and warrants that such Stock Issuance Agreement is substantially the same in
form to stock issuance agreements under which Licensee sold its currently issued
and outstanding stock, except that such other agreements contain provisions
under which the shares issued thereunder are subject to repurchase by Licensee
in certain events.
3.2 Initial Fee. In further consideration of the rights and license
granted to Licensee under this Agreement, Licensee shall pay to The Regents upon
execution of this Agreement a license issue fee of Forty-Five Thousand Dollars
($45,000), less the Twenty Thousand Dollar ($20,000) fee previously paid to LBL
pursuant to that certain Option Agreement dated January 26, 1995 between LBL and
Symyx.
3.3 Maintenance Fees. Licensee shall also pay to The Regents License
Maintenance Fees on the anniversaries of the Effective Date of this Agreement in
accordance with the following schedule:
Date Amount
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First Anniversary $15,000
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Second Anniversary $20,000
Third Anniversary $30,000
Fourth Anniversary $40,000
Fifth Anniversary $50,000
3.4 Amounts Non-refundable. The amounts paid to The Regents under 3.2
and 3.3 above are not refundable or creditable against future royalties.
IV. ROYALTIES
4.1 Royalties. In further consideration of the rights and license
granted to Licensee under this Agreement, Licensee agrees to pay to The Regents
the following amounts:
(a) Licensee agrees to pay The Regents running royalties equal
to one percent (1%) of Net Sales of Licensed Products sold by Licensee; and
(b) Licensee agrees to pay The Regents five percent (5%) of any
running royalties that Licensee receives from its Sublicensees upon such
Sublicensee's sales of Licensed Products ("Sublicense Royalties"). As used
herein, Sublicense Royalties shall not include amounts paid to Licensee as
development funds, equity investments, scientific or development benchmark
payments, payments for research expenditures, payment for goods or any other
amount that does not become payable as a running royalty upon a Sublicensee's
sale of a Licensed Product; provided that if Licensee (i) grants to
non-Affiliate third party a license, under patent rights owned or controlled by
Licensee, to make and sell a Licensed Product for Sublicense Royalties that are
both less than one percent (1%) of the Sublicensee's net sales of Licensed
Products and below the normal range of royalties for products of that type in
the particular industry, and (ii) receives in consideration of such license a
cash issuance fee upon the grant of such license, such license issuance fee
shall be included within Sublicense Royalties for purposes of this Section
4.1(b), to the extent the same is not attributable to reimbursement of expenses,
equity, benchmark payments, payments for research expenditures, payments for
goods or the like. It is understood that the preceding sentence (beginning with
"provided that") shall not apply, however, in the event that the license so
granted by Licensee is contingent upon future events, such as a failure by
Licensee to supply Licensed Products, or otherwise not immediately exercisable.
It is further understood and agreed that Sublicense Royalties received by
Licensee shall be determined net of withholding taxes; provided, however, to the
extent that Licensee recoups any such withholding tax, as a result of actually
reducing its United States income tax liability as a result of a credit for such
withholding tax, the amount so recouped shall be included in Sublicense
Royalties for the quarter in which such amounts were so recouped.
(c) Royalties shall continue under paragraphs (a) and (b) of this
Section 4.1 with respect to each Licensed Product, on a country-by-country
basis, for so long as a Valid Claim within the Patent Rights exists in such
country covering the sale of such Licensed Product or the method used to invent
such Licensed Product. However, if the sale of a Licensed Product would not
infringe a Valid Claim within the Patent Rights, and would not infringe any
other Valid Claim owned or controlled by Licensee, in the country for which such
Licensed Product is sold, then no royalty shall be due under Section 4.1(a)
above with respect to such sales.
4.2 Minimum Royalties. Beginning with calendar year 2001, if the amounts
owed to The Regents under Section 4.1 above for such calendar year, or any
subsequent calendar year, are less than Fifty Thousand Dollars ($50,000), then
with the third payment under Section 5.1 below for such calendar year (i.e. the
payment due by November 30 of that year) shall include an amount that will bring
the total amounts paid to The Regents for such year up to Fifty Thousand Dollars
($50,000). Any amounts paid to The Regents under this Section 4.2 may be carried
forward and offset against amounts due under Section 4.1 in subsequent periods
(it being understood, however, that the amounts so carried forward will not be
counted in determining whether Licensee has satisfied the minimum payment
required under this Section 4.2 for any such subsequent period).
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4.3 Allocation.
(a) In the event that a Licensed Product is sold in combination
with a product, service or component that would not alone be a Licensed Product,
then Net Sales from such combination sales, and Sublicense Royalties received by
Licensee with respect to such sales, for purposes of calculating the amounts due
under Section 4.1 shall be as reasonably allocated by Licensee between such
Licensed Product and such other product, components, and/or services based upon
their relative value.
(b) In the event that a Licensed Product or the Patent Rights are
licensed or sublicensed to a Sublicensee in combination with other patents or
subject matter not within the Licensed Subject Matter and/or not consisting of a
Licensed Product, then Sublicense Royalties and any license issuance fees
resulting from such license for purposes of determining the amounts due under
Section 4.1(b) shall be as reasonably allocated by Licensee between the Licensed
Subject Matter and/or Licensed Product, and such other patents and/or subject
matter, based upon their relative value.
(c) For the purposes of determining relative value, the value of
components of a sale or product shall be determined by: (a) the selling price at
which components of the sale or product, of similar kind and quality, sold in
similar quantities, are then currently being offered for sale by the party
making the combination sale or selling the combination product; (b) when such
products are not then currently being offered for sale by such party, the
average selling price at which products of similar kind and quality, sold in
similar quantities, are then currently being offered for sale by other like
manufacturers; and (c) when such products are not currently being offered for
sale by the selling party or other like manufacturers, the cost of manufacture
for the party making the sale or, determined by generally accepted accounting
principles, plus such party's standard xxxx-up for such similar products.
4.4 Third Party Payments. In the event that Licensee is required to pay
to a third party amounts in respect of a patent or patent application the claims
of which would be infringed by the practice of an invention within the Patent
Rights, or the manufacture, sale or use of a Licensed Product, then fifty
percent (50%) of such amounts may be offset against amounts owed to The Regents
under this Agreement.
4.5 Annual Amount. Notwithstanding anything to the contrary, at such
time as the total amounts paid and payable by Licensee to The Regents hereunder
with respect to any calendar year exceeds One Million Dollars ($1,000,000), any
further amounts due hereunder with respect to such calendar year prior to any
other adjustments hereunder shall be reduced by fifty percent (50%).
4.6 Non-Royalty Sales. In the event that more than one Valid Claim
within the Patent Rights is applicable to any Licensed Product, it is understood
that only one royalty shall be due under Section 4.1 above, and in no event
shall more than one payment be due under Section 4.1 with respect to any
particular Licensed Product unit.
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V. PAYMENTS AND RECORDS
5.1 Royalty Reports. In each calendar year during the term of this
Agreement beginning after the first sale of a Licensed Product or receipt by
Licensee of Sublicensee Royalties, within sixty (60) days after March 31, June
30, September 30 and December 31, Licensee shall deliver to The Regents a true
and accurate report, giving such particulars of the business conducted by
Licensee during the preceding three (3) calendar months under this Agreement as
are pertinent to an account for payments hereunder. Such report shall include,
with respect to such calendar quarter, at least (a) the total of Net Sales; (b)
the total amount of Sublicense Royalties received by Licensee; and (c) the
calculation of amounts due The Regents pursuant to Article IV. Simultaneously
with the delivery of each such report, Licensee shall pay to The Regents the
total amount, if any, due to The Regents for the period of such report. If no
amounts are due, Licensee shall so report, and if amounts are due for such
quarter, the payment shall accompany such report. For purposes of calculating
Net Sales hereunder, a Licensed Product shall be considered sold when invoiced,
or if not invoiced, when delivered to the third party. But when the last patent
owned or controlled by Licensee covering a Licensed Product expires, or when
this Agreement terminates, any shipment made on or before the day of that
expiration or termination that has not been invoiced shall be considered sold
(and therefore subject to the royalties specified herein); provided that The
Regents shall credit amounts that Licensee so pays with respect to Licensed
Products that the customer does not accept.
5.2 Sublicenses. Licensee shall provide to LBL redacted copies of
sublicenses granted by Licensee hereunder. Such redacted sublicense agreements
may exclude only such information as is not reasonably necessary for LBL to
determine the Sublicense Royalties payable to Licensee pursuant to such
agreements.
5.3 Payments. Licensee shall make checks payable to "The Regents of the
University of California (LBL/L-95-1167)." All amounts payable hereunder by
Licensee shall be payable in United States Dollars. If any currency conversion
shall be required in connection with the payment of royalties hereunder, such
conversion shall be made by using the exchange rates used by Licensee in
calculating Licensee's own revenues for financial reporting purposes in
accordance with generally accepted accounting principles; provided, however, if
a Licensed Product is sold for a Highly Inflationary Currency, Licensee shall
convert the sales subject to royalties into equivalent U.S. dollars using the
closing exchange rates in effect on the date of invoicing (or if no invoicing,
of delivery) as published by The Wall Street Journal. If legal restrictions
prevent the prompt remittance of any payments by Licensee with respect to any
country where a Licensed Product is sold, Licensee may make such payments by
depositing the amount thereof in local currency to The Regents, or if not
permitted to deposit such amounts in U.S. dollars under the laws of that
country, then in the local currency, to The Regents' account in a bank or other
depository in that country. Except as otherwise provided in Section 4.1,
Licensee shall not reduce amounts payable to The Regents by any taxes, fees or
other charges imposed on the remittance of royalty income, including but not
limited to, bank transfer charges. If Licensee does not make payments when due,
Licensee shall pay to LBL reasonable administrative fees and interest charges
LBL generally collects from third parties on overdue accounts.
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5.4 Records. Licensee shall keep complete and accurate records of Net
Sales of Licensed Products by Licensee, and Sublicense Royalties received by
Licensee from any Sublicensee, in sufficient detail to enable the amounts
payable hereunder to be determined. Upon The Regents' written request, but not
more frequently than once per calendar year, Licensee shall permit
representatives or agents of The Regents to examine such records during
Licensee's regular business hours for the purpose of and to the extent necessary
to verify any report required under this Agreement with respect to Net Sales
made by Licensee and Sublicense Royalties received from Sublicensees not more
than five (5) years prior to the date of The Regents' request. In the event that
the amounts due to The Regents are determined to have been underpaid, Licensee
shall pay to The Regents any amount due and unpaid, together with interest on
such amount at the prime rate in effect at Bank of America NT&SA, San Francisco,
California, or at the maximum rate permitted by law, whichever is lower. The
Regents shall bear the fees and expenses of The Regents' representatives
performing the examination of the books and records. But if the representatives
establish an underpayment of royalties of more than 7.5% of the total
royalties due for the period audited, then Licensee shall bear the reasonable
out of pocket fees and expenses paid by The Regents to such representatives.
VI. PATENTS AND INVENTIONS
6.1 Applications. Applying for, seeking prompt issuance of, and
maintaining during the term of this Agreement, the Patent Rights, shall be
undertaken by The Regents. The Regents shall promptly notify Licensee if The
Regents elect not to pursue any application for Patent Rights, or pay any fee
required to maintain a patent within the Patent Rights, in any country and in
any event shall so notify Licensee at least sixty (60) days before the
application or payment is due. In such event, Licensee shall have the right to
file and prosecute such application, and/or maintain such patent, in that
country. The Regents and LBL agree to use the law firm of Xxxxxxxx & Xxxxxxxx,
Xxxxxxx & Crew or such other firm as the parties agree, for the prosection of
the Patent Rights.
6.2 Expenses. Licensee shall reimburse The Regents for reasonable
out-of-pocket fees and expenses incurred by The Regents or LBL after the
Effective Date in prosecuting applications and maintaining patents within the
Patent Rights. In the event that Licensee fails to reimburse The Regents for
such costs with respect to a patent or application in any country listed on
Exhibit C hereto, the subject patent application or patent (as the case may be)
shall cease to be within the Patent Rights in such country for purposes of this
Agreement; in the event that Licensee fails to reimburse The Regents for such
costs with respect to such a patent or application in any country other than
those listed on Exhibit C hereto, the license granted to Licensee under such
application or patent (as the case may be) shall become nonexclusive in such
country. Licensee shall not be entitled to exercise its rights under Section 6.1
with respect to any countries in which Licensee has lost its rights pursuant to
this Section 6.2. Licensee may deduct against amounts owing under Section 4.1
above, one-half of the amounts reimbursed to The Regents under this Section 6.2
for prosecuting and maintaining U.S. patents within the Patents Rights.
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6.3 Consultation. The Regents agree to consult with Licensee with
respect to the Patent Rights in a timely manner concerning (i) scope and content
of patent applications within the Patent Rights prior to filing such patent
applications, and (ii) content of and proposed responses to official actions of
the United States Patent and Trademark Office and foreign patent offices during
prosecution of such patent applications, and to include in such application and
responses reasonable changes requested by Licensee, to the extent not
inconsistent with the interests of The Regents. For purposes of this Section
6.3, "timely" shall mean sufficiently in advance of any deadline imposed upon
written response so as to allow Licensee to meaningfully review such written
response and also provide comments to The Regents in advance of such decision or
deadline to allow comments of Licensee to be considered and incorporated into
The Regents' decision or written response. If License has not commented before
the deadline for filing a response with the relevant government patent offices,
The Regents may always take action to prevent the loss of patent rights.
VII. INFRINGEMENT
7.1 Notice of Infringement. If Symyx learns of the substantial
infringement of any of LBL's Patent Rights, Symyx shall so inform LBL in writing
and shall provide LBL with reasonable evidence of the infringement. During the
period and in a jurisdiction where Symyx has exclusive rights under this
Agreement, neither party may notify a third party of the infringement of any of
LBL's Patent Rights without first obtaining written consent of the other party,
which consent shall not be unreasonably denied. Both parties shall use good
faith efforts in cooperation with each other to terminate such infringement
without litigation.
7.2 Legal Action. Symyx may request that LBL take legal action against
the infringement of LBL's Patent Rights. Symyx shall make that request in
writing and include reasonable evidence of the infringement and damages to
Symyx. If the infringing activity has not been abated within ninety (90) days of
that request, LBL may elect to: (a) commence suit on its own account; or (b)
refuse to participate in the suit. LBL shall give written notice of its election
to Symyx by the end of the one hundredth (100th) day after receiving notice of
the request from Symyx. Symyx may thereafter bring suit for patent infringement
only if LBL elects not to commence suit within such ninety (90) day period and
if the infringement occurred during the period and in a jurisdiction where Symyx
has exclusive rights under this Agreement. If, however, one party elects to
bring suit in accordance with this paragraph, the other party may thereafter
join such suit at its own expense. All recoveries in such suit (whether
initiated by Licensee or its designee, or brought as a counterclaim in a suit
commenced by a third party) will inure to the benefit of Licensee or its
designee, less a one time payment to The Regents equal to five percent (5%) of
the amount recovered by Licensee, net of all legal and other out of pocket
expenses incurred by either party in commencing and conducting a legal action
under this Section 7.2 (for which the party incurring such expenses shall be
reimbursed), to the extent that the amount recovered represents damages awarded
for infringement of the Patent Rights. Such legal action as is undertaken
pursuant to this Article 7 must be at the expense of the party by whom such suit
is brought.
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7.3 Withholding Royalties. In the event that Licensee commences an
action to enforce the Patent Rights, Licensee shall have the right during the
pendency of the action to withhold up to, but no more than fifty percent (50%)
of the amounts payable to The Regents hereunder to offset Licensee's out of
pocket legal expenses incurred in connection with such action or proceeding. Any
portion of such withheld amounts that is not so applied shall be promptly paid
to The Regents after such action or proceeding is resolved or abandoned. Any
amounts recovered from third parties by Licensee with respect to the Patent
Rights in such action or proceeding shall be applied to reimburse any
outstanding legal expenses of the action or proceeding incurred by Licensee or
The Regents, and to reimburse The Regents for any amount withheld under this
Section 7.3 with respect to such action or proceeding in proportion to the total
of the expense incurred by Licensee and The Regents. Any amounts remaining shall
be disbursed as provided in 7.2 above.
7.4 Cooperation. Each party shall cooperate with the other in litigation
proceedings instituted under this Agreement (including without limitation by
joining as a nominal party) but, except for attorney's fees, at the expense of
the party by whom suit is brought. The party bringing the suit will control that
litigation, except that the other party may elect to be represented at its own
expense by counsel of its choice. Upon the request and at the expense of the
requesting party, the other party shall make available at reasonable times and
under appropriate conditions all relevant personnel, records, papers,
information, samples, specimens and other similar materials in its possession.
7.5 Rights As Joint Owner. Notwithstanding any of the foregoing, nothing
in this Article VII shall prevent Symyx from enforcing, without restriction, its
rights under the Patent Rights to the same as extent that it would be entitled
to enforce such rights as a joint owner of a patent within the Patent Rights in
the absence of this Agreement.
7.6 Defense. If Licensee or a Sublicensee, distributor or other customer
is sued by a third party charging infringement of patent rights that dominate a
claim of the Patent Rights, or that cover Technology, with respect to the
manufacture, use, distribution or sale of a Licensed Product or practice of the
Patent Rights, Licensee will promptly notify The Regents. As between the parties
to this Agreement, Licensee will be entitled to control the defense in any such
action(s) and withhold one-half of the amounts otherwise payable to The Regents
hereunder and use the withheld amounts to reimburse the defense costs,
attorneys' fees and liability incurred in such infringement suit(s).
Notwithstanding, Licensee agrees to withhold only that portion of such royalties
as may reasonably be necessary to reimburse amounts in accordance with this
Section 7.3. If Licensee is required to pay a royalty or other amount to a third
party as a result of a final judgment or settlement, the amounts payable to The
Regents hereunder will be reduced as provided in Section 4.4 above, provided
that LBL consents in writing to the settlement or other disposition (other than
final judgment) of the claim or suit, which consent shall not be unreasonably
withheld or delayed.
VIII. REPRESENTATIONS AND WARRANTIES
8.1 Warranties. Except for the rights, if any, of the Government of the
United States of America, as set forth in Section 8.2 below, The Regents and LBL
represent and warrant that: (a)
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Subject to Licensee's rights as a joint owner, The Regents are the owner of the
entire right, title, and interest in and to the Patent Rights, (b) The Regents
have the right and authority to enter into this Agreement and grant the rights
and licenses hereunder, (c) Neither The Regents nor LBL have previously granted,
and neither will grant in the future, any rights in the Patent Rights or the
Option Inventions that are inconsistent with the rights and licenses granted to
Licensee herein, (d) to the best knowledge of LBL, as of the Effective Date, but
without research into the matter, practice of inventions within the Patent
Rights does not infringe any patent rights, trade secrets or other proprietary
rights of any third party, and (e) to the best present knowledge of LBL but
without research into the matter, neither The Regents nor LBL own any rights in
any other patent or patent application, the claims of which would dominate the
claims of a patent or patent application within the Patent Rights or that claim
subject matter within the Technology or its use.
8.2 Governmental Rights. The parties understand that the Licensed
Subject Matter may have been developed under a funding agreement with the U.S.
DOE and, if so, that the U.S. DOE may have certain rights relative thereto under
35 U.S.C. Sections 201-207 and regulations thereunder, including without
limitation (i) Department of Energy nonexclusive, nontransferable, irrevocable,
paid-up, worldwide licenses to practice or have practiced, for or on behalf of
the U.S. Government, the Licensed Subject Matter; (ii) certain march-in rights
in accordance with 48 CFR 27.304-1(g), and (iii) the provisions of 35 U.S.C.
204, which requires exclusive licensees to manufacture substantially in the
United States products embodying Licensed Products that such licensee produces
for sale in the United States. The Regents and LBL represent and warrant that
they (i) have complied and agree to continue to comply during the term of this
Agreement with all laws and regulations applicable to such U.S. DOE funding
agreement and (ii) have done and will continue to do all acts necessary or
convenient for the protection of The Regent's rights to retain ownership of all
inventions within the Licensed Subject Matter, including disclosing subject
inventions to the U.S. DOE and electing to retain title in subject inventions.
8.3 Disclaimer. NEITHER PARTY MAKES ANY REPRESENTATIONS OR WARRANTIES
OTHER THAN THOSE EXPRESSLY STATED IN THIS AGREEMENT, AND SPECIFICALLY, LBL AND
THE REGENTS MAKE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE. WITHOUT LIMITING THE FOREGOING PROVISIONS OF THIS
SECTION 8.3, NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS:
(a) a warranty or representation by The Regents or LBL as to the
validity or scope of any Patent Rights; or
(b) a warranty or representation that anything made, used, sold
or otherwise disposed of under any license granted in this Agreement is or will
be free from infringement of patents of third parties, except as provided under
8.1(d) above; or
(c) an obligation to bring or prosecute actions or suits against
third parties for patent infringement; or
(d) conferring by implication, estoppel or otherwise any license
or rights under any patents of The Regents other than the Patent Rights as
defined herein, regardless of whether such patents are dominant or subordinate
to the Patent Rights; or
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(e) an obligation to furnish any know-how not provided in the
Patent Rights or the Technology.
IX. INDEMNIFICATION AND INSURANCE
9.1 Indemnification. Licensee shall hold harmless and indemnify The
Regents, LBL, sponsors of the research that led to the Licensed Subject Matter,
and their officers, employees, and agents, from and against amounts paid to
third parties as a result of any claims, demands, or causes of action
whatsoever, including without limitation those arising on account of any injury
or death of persons or damage to property caused by, or arising out of, or
resulting from, the exercise or practice of the rights and license granted under
this Agreement by Licensee or its officers, employees, agents or
representatives; provided that (a) Licensee receives prompt notice of any such
claim, demand or cause of action, (b) Licensee shall not be obligated to
indemnify any party in connection with any settlement for any claim, demand or
cause of action unless Licensee consents in writing to such settlement, which
consent shall not be unreasonably withheld or delayed, and (c) upon request of
Licensee, the exclusive right to control the defense thereof.
9.2 Clinical Trials. Before Licensee or any Sublicensee initiates
clinical trials of a Licensed Product(s) in humans, Licensee shall obtain such
insurance (or alternative indemnification) as is reasonable and customary to
insure against the risks of such trials.
9.3 Insurance. From and after the first commercial sale or transfer of a
Licensed Product pursuant to the license granted hereunder, and in any event
prior to the initiation of any human clinical trials by Licensee of a Licensed
Product, Licensee at its sole cost and expense, shall obtain, keep in force and
maintain insurance as follows, or an equivalent program of self insurance:
Comprehensive or Commercial Form General Liability Insurance with limits
as follows:
(a) Each Occurrence: $1,000,000
(b) Products/Completed Operations Aggregate: $5,000,000
(c) Personal and Advertising Injury: $1,000,000
(d) General Aggregate (commercial form only): $5,000,000
It should be expressly understood, however, that the coverages and limits
referred to above shall not in any way limit the liability of Licensee. Upon
request, Licensee shall furnish LBL with certificates of insurance evidencing
compliance with all requirements. Such certificates shall:
(1) Provide for thirty (30) days advance written notice to The
Regents of any modification.
(2) Indicate that The Regents, LBL, the U.S. DOE and their
officers, employees, and agents, have been endorsed as an additional Insured
under the coverages referred to above.
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(3) Include a provision that the coverages will be primary and
will not participate with nor will be excess over any valid and collectable
insurance or program of self-insurance carried or maintained by The Regents.
X. USE OF NAMES AND NONDISCLOSURE OF AGREEMENT
10.1 Use of Names. In accordance with California Education Code Section
92000; nothing contained in this Agreement may be construed as conferring any
right to use in advertising, publicity or other promotional activities any name,
trade name, trademark, or other designation of LBL or The Regents (including any
contraction, abbreviation or simulation of any of the foregoing). Unless
otherwise required by law, Licensee may not use the name "Xxxxxxxx Berkeley
Laboratory," "LBL," "The Regents of the University of California" or the name of
any University of California campus in a manner that suggests an endorsement by
them.
10.2 Nondisclosure. Neither party may disclose the terms of this
Agreement to a third party without express written permission of the other
party, except where required under either the California Public Records Act or
other applicable law. Notwithstanding the foregoing, (i) the parties may
disclose the existence of this Agreement and the extent of the grant in Article
2; (ii) Licensee may disclose the terms of this Agreement to bona fide
prospective investors and professional advisors to Licensee, and to other
parties with whom Licensee has or is evaluating a business relationship, under
reasonable conditions of confidentiality; and (iii) LBL may disclose the terms
of this Agreement to the U.S. DOE.
XI. CONFIDENTIAL INFORMATION
11.1 General. The parties may, from time to time, in connection with
this Agreement, disclose to each other Confidential Information. "Confidential
Information" shall mean any information disclosed in writing by a party to this
Agreement to any of the other parties to this Agreement, and marked by the
disclosing party with the legend "CONFIDENTIAL" or other similar legend
sufficient to identify such information as confidential proprietary information
of the disclosing party. Neither party shall use any Confidential Information of
the other party except as expressly authorized under this Agreement, and each
party will use best efforts to prevent the disclosure of the other party's
Confidential Information to third parties; provided that Licensee may disclose
Confidential Information of LBL and The Regents, with similar protections in
place, to the extent reasonably necessary to exploit the rights and license
granted to Licensee hereunder (including the rights to grant and authorize
sublicenses); and provided further that the recipient party's obligations under
this Article XI shall not apply to Confidential Information that:
(a) is disclosed orally; provided, however, that the recipient
party's obligations under this Article XI shall apply to information disclosed
orally if such information is confirmed in writing as "CONFIDENTIAL" by the
disclosing party within thirty (30) days after disclosure thereof;
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(b) is in the recipient party's possession at the time of
disclosure thereof;
(c) is or later becomes part of the public domain through no
fault of the recipient party;
(d) is received from a third party having no obligations of
confidentiality to the disclosing party;
(e) is developed independently by the recipient party without
reliance upon or use of the disclosing party's Confidential Information; or
(f) is required by law or regulation to be disclosed; provided,
however, that the party subject to such disclosure requirement has provided
written notice to the other party promptly to enable such other party to seek a
protective order or otherwise prevent disclosure of such Confidential
Information.
11.2 Disclosure to DOE. In the event that LBL determines that disclosure
of Confidential Information to the U.S. DOE is reasonably necessary or required
by law, LBL may disclose such Confidential Information of Licensee to the U.S.
D.O.E., provided that it shall not disclose Confidential Information to the U.S.
DOE unless either the U.S. DOE has executed a confidentiality agreement with LBL
containing terms and conditions substantially similar to this Article XI, or,
has put into place other usual and customary procedures that are utilized by the
U.S. DOE to protect such Confidential Information.
11.3 Period. The obligations of the parties pursuant to this Article XI
with respect to Confidential Information of the other party shall continue in
full force and effect for a period or five (5) years after the disclosure of
that Confidential Information to a party hereunder; provided that if either
party requests an additional five (5) year period for maintaining the
confidentiality of any specified Confidential Information disclosed prior to the
expiration of such initial five (5) year period, the obligations under this
Article XI shall continue with respect to such Confidential Information for an
additional five (5) years. Notwithstanding any other provisions of this
Agreement, Licensee shall not be obligated to disclose to LBL or The Regents
information for which Licensee reasonably needs protection for more than ten
(10) years.
XII. DUE DILIGENCE
12.1 Obligation to Exploit. Licensee shall use commercially reasonable
efforts to bring one or more Licensed Products to market and to meet the market
demand therefor. Beginning November 30, 1995 and semi-annually thereafter,
Licensee shall deliver to The Regents a progress report covering Licensee's
activities related to the development and testing of Licensed Products and the
obtaining of any applicable governmental approvals necessary for marketing
Licensed Products. Licensee shall make these progress reports until the first
commercial sale of a Licensed Product occurs anywhere in the world. Progress
reports submitted by Licensee pursuant to this Section 12.1 shall include, but
not be limited to, the following topics: (a) summary of work completed, (b)
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summary of work in progress, (c) current schedule of anticipated milestones, and
(d) market plans for introduction of Licensed Products, and (e) number of
full-time equivalent (FTEs) employees or agents working on the development of
Licensed Products.
12.2 Development Funding. In satisfaction of its obligations under
Section 12.1 above, Licensee agrees to expend (itself or through Sublicensees or
others) an aggregate of not less than One Million Dollars ($1,000,000) toward
the development of Licensed Products and/or inventions within the Patent Rights
during the first three (3) years of this Agreement, and for the next three (3)
years, the Licensee shall at least spend One Million Dollars ($1,000,000) per
year for such purposes. Compliance with this Section 12.2 shall satisfy, with
the exception of the obligation to provide progress reports, all obligations of
Licensee under this Article XII for the full term of this Agreement.
12.3 Remedy. In the event that Licensee fails to fulfill its obligations
under Section 12.1 or 12.2 above, The Regents shall have a right to terminate
this Agreement or reduce this exclusive limited license to a nonexclusive
license for such lack of diligence. In order to terminate this Agreement or
reduce this exclusive limited license to a nonexclusive license, The Regents
must provide written notice to Licensee of the Licensee's deficiency in
fulfilling the performance requirements of this Article XII. The Regents may
then terminate this Agreement or reduce this exclusive limited license to a
nonexclusive license only if Licensee fails to provide written evidence, within
sixty (60) days after receiving written notice from The Regents of The Regents'
intention to so terminate this Agreement or reduce the exclusive limited license
to a nonexclusive license, that Licensee is fulfilling such obligations;
provided if Licensee disputes an assertion by The Regents of such failure,
termination of this Agreement or reduction of the exclusive limited license
shall not occur unless and until it has been determined in an arbitration
proceeding under Section 14.3 below that Licensee has not satisfied such
obligations, and Licensee has failed to undertake such efforts within sixty (60)
days thereafter. Licensee's compliance with Section 12.2 above shall be deemed
conclusive evidence that Licensee has commercialized or is using commercially
reasonable efforts to commercialize a Licensed Product and to meet the market
demand therefor worldwide, and that Licensee has satisfied all of its
obligations under this Article XII. This Section 12.3 sets forth The Regents'
sole remedy for a failure by Licensee to meet Licensee's obligations, other than
the obligation to provide progress reports, under this Article XII.
12.4 Non-Exclusive License. If LBL or The Regents grant a non-exclusive
license to any other party upon royalty rates more favorable than those of this
Agreement after reducing this license to a non-exclusive license, then Licensee
shall also be entitled to the benefit of the more favorable rates, provided that
Licensee agrees in writing to accept all financial terms of that license
(mutatis mutandis) in whole and not in part in order to enjoy the benefit of the
more favorable rates.
XIII. TERM AND TERMINATION
13.1 Term. The term of this Agreement shall commence on the Effective
Date and continue in full force and effect until expiration, revocation,
invalidation or abandonment of the last patent or application within the Patent
Rights, unless terminated earlier pursuant to this Article XIII.
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Upon the expiration, but not an earlier termination of this Agreement, the
license granted to Licensee under 2.1 above shall continue on a non-exclusive
basis.
13.2 Termination By Notice. This Agreement will terminate:
(a) Upon The Regents' written notice to Licensee after sixty (60)
days written notice to Licensee if Licensee breaches or defaults on any material
obligation under this Agreement; provided that such sixty (60) day notice
specifies the nature of the breach; and provided further that Licensee may avoid
such termination if before the end of such sixty (60) day period Licensee cures
such breach or default. However. other than for breaches or defaults under
Article III or Section 4.2, if Licensee disputes an asserted breach in writing
within such sixty (60) day period, The Regents shall not have the right to
terminate this Agreement unless and until it has been determined in an
arbitration proceeding under Section 14.3 below that this Agreement was
materially breached, and Licensee fails to cure such breach within sixty (60)
days after such determination. This Section 13.2(a) shall not, however, suspend
any obligation of Licensee to compensate The Regents for any undisputed amount,
as provided for under any term of this Agreement, during the pendency of any
determination of breach; or
(b) in its entirety, or as to any particular patent application
or patent within the Patent Rights, upon Licensee's sixty (60) days written
notice to The Regents. From and after the effective date of a termination under
this Section 13.2(b) with respect to a particular patent application or patent,
such patent application and patent in the particular country shall cease to be
within the Patent Rights for all purposes of this Agreement. Upon a termination
of this Agreement in its entirety under this Section 13.2(b), all rights and
obligations of the parties shall terminate, except as provided in this Article
XIII.
13.3 Sale of Stock On Hand. In the event that this Agreement is
terminated for any reason, Licensee, Sublicensees and customers of either
Licensee or a Sublicensee may, within six months after the effective date of
such termination, sell or otherwise dispose of all Licensed Products that
Licensee, Sublicensees and customers of either Licensee or a Sublicensee may
have on hand on the effective date of such termination, subject to Licensee's
payment of amounts due to The Regents pursuant to Article IV of this Agreement,
provided that Licensee or its Sublicensee provides to The Regents within sixty
(60) of the effective date of such termination, an inventory of Licensed
Products on hand on the effective date of such termination. Upon termination of
this Agreement for any reason, any sublicense or other rights granted by
Licensee pursuant to this Agreement and in compliance with the terms and
conditions hereof, shall survive upon request by the party to whom such
sublicense or rights were granted, provided that upon request by LBL such third
party promptly agrees in writing to be bound by the applicable terms of this
Agreement.
13.4 Survival. Articles I, V, VIII, IX, X, XI, XIII, and XIV shall
survive the expiration and any termination of this Agreement. Except as
otherwise provided in this Article XIII, all rights and obligations of the
parties under this Agreement shall terminate upon the expiration or termination
of this Agreement.
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13.5 Rights as Joint Owners. In the event this Agreement is terminated
for any reason with respect to any Patent Rights of which The Regents (including
LBL) and Licensee are joint owners, it is understood that neither The Regents
nor Licensee shall have any obligation to account to the other for profits, or
to obtain the consent of the other, with respect to any license or other
exploitation of such Patent Rights by reason of such joint ownership. Any rights
to an accounting from, and any requirement to obtain the consent of, the other
joint ownership under the laws of any jurisdiction are hereby waived.
XIV. GENERAL
14.1 Assignment. This Agreement may not be assigned by Licensee without
the prior written consent of The Regents, except to a party that succeeds to all
or substantially all of Licensee's business or assets relating to this Agreement
whether by sale, merger, operation of law or otherwise; provided that such
assignee or transferee promptly agrees in writing to be bound by the terms and
conditions of this Agreement.
14.2 Patent Marking. Licensee agrees to xxxx permanently and legibly all
products and documentation manufactured, used or sold by Licensee under this
Agreement with such patent notice as may be permitted or required under Xxxxx
00, Xxxxxx Xxxxxx Code.
14.3 Arbitration. At the request of either party, the parties shall
settle any controversy or claim arising out of or relating to this Agreement,
excluding any dispute relating to patent validity or infringement, by
arbitration conducted in San Francisco, California under the then current
Licensing Agreement Arbitration Rules of the American Arbitration Association.
Judgment upon the arbitral award is binding on the parties. Either party may
enter that judgment in any court having jurisdiction.
14.4 References to LRL and The Regents. It is understood that this
Agreement is entered into by and between Licensee and The Regents, and that The
Regents are acting through LBL. Accordingly, notwithstanding that an obligation
of Licensee hereunder is expressly stated as being to either LBL or The Regents,
the satisfaction or performance by Licensee of any such obligations to either
LBL or The Regents shall be deemed to satisfy all obligations of Licensee to
both LBL and The Regents; i.e. The Regents and LBL shall be deemed to be one and
the same party for purposes of this Agreement.
14.5 Complete Agreement. This Agreement and the exhibits attached
hereto, constitute the entire understanding and only agreement between the
parties with respect to the subject matter hereof and supersedes any and all
prior negotiations, representations, agreements, and understandings, written or
oral, that the parties may have reached with respect to the subject matter
hereof. No agreements altering or supplementing the terms hereof may be made
except by means of a written document signed by the duly authorized
representatives of each of the parties hereto.
14.6 No Implied Obligations. Licensee's sole obligation to bring
pLicensed Products to market and meet the market demand thereof is as set forth
in Article XII. Nothing in this Agreement
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shall be deemed to require Licensee to otherwise exploit the Licensed Subject
Matter for commercial purposes, or prevent Licensee from commercializing
products similar to or competitive with a Licensed Product.
14.7 Force Majeure. In the event either party hereto is prevented from
or delayed in the performance of any of its obligations hereunder by reason of
acts of God, war, strikes, riots, storms, fires, or any other cause whatsoever
beyond the reasonable control of the party, the party so prevented or delayed
shall be excused from the performance of any such obligation to the extent and
during the period of such prevention or delay.
14.8 Notices. Any payment, notice or other communication this Agreement
requires or permits either party to give must be in writing to the appropriate
address given below, or to such other address as one party designates by written
notice to the other party. The parties deem payment, notice or other
communication to have been properly given and to be effective (a) on the date of
delivery if delivered in person; (b) on the fourth day after mailing if mailed
by first-class mail, postage paid; (c) on the second day after delivery to an
overnight courier service such as Federal Express, if sent by such a service; or
(d) upon confirmed transmission by facsimile. The parties' addresses are as
follows:
For Payments to LBL or The Regents: For all other notices to LBL or The Regents:
Xxxxxxxx Berkeley Laboratory Xxxxxxxx Berkeley Laboratory
Accounting/Financial Management Technology Transfer Department
P.O. Box 528 Mailstop 90-1070
Xxxxxxxx, Xxxxxxxxxx 00000 One Cyclotron Road
Attention: Licensing Accountant Xxxxxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000 Attention: Licensing Manager
Telephone: (000) 000-0000 Fax: (000) 000-0000
Telephone: (000) 000-0000
To SYMYX:
SYMYX Technologies
0000 Xx Xxxxxx Xxxx, Xxxxx 000
Xxxx Xxxx, Xxxxxxxxxx 00000
Attention: Xxx Xxxxxxxxxx
Fax: (000) 000-0000
Telephone: (000) 000-0000
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14.9 Compliance with Law. Licensee shall comply with all applicable
federal, state and local laws and regulations in connection with its activities
pursuant to this Agreement. If the law of any nation requires that any
governmental agency either approve or register this Agreement or any associated
transaction, Licensee shall assume all legal obligation to do so. Licensee shall
notify LBL if it becomes aware that this Agreement is subject to a U.S. or
foreign government reporting or approval requirement. Licensee shall make all
necessary filings and pay all costs, including fees, penalties, and all other
costs associated with such reporting or approval process. Licensee shall observe
all applicable United States and foreign laws and regulations with respect to
the transfer of Licensed Products and related technical data, including, without
limitation, the International Traffic in Arms Regulation (ITAR) and the Export
Administration Regulations.
14.10 Governing Law. This Agreement shall be governed by, and construed
and interpreted in accordance with, the laws of the State of California;
provided, however, that all questions with respect to validity of any patents or
patent applications within the Patent Rights shall be determined in accordance
with the laws of the respective country in which such patents or patent
applications shall have been granted or filed, as applicable.
14.11 No Waiver. A waiver, express or implied, by either LBL, The
Regents or Licensee of any right under this Agreement or of any failure to
perform or breach hereof by the other party hereto shall not constitute or be
deemed to be a waiver of any other right hereunder or of any other failure to
perform or breach hereof by such other party, whether of a similar or dissimilar
nature thereto.
14.12 Headings. Headings included herein are for convenience only, do
not form a part of this Agreement and shall not be used in any way to construe
or interpret this Agreement.
14.13 No Consequential Damages. IN NO EVENT SHALL EITHER PARTY BE LIABLE
FOR ANY INCIDENTAL, CONSEQUENTIAL, OR SPECIAL DAMAGES, HOWEVER CAUSED AND UNDER
ANY THEORY OF LIABILITY, REGARDLESS OF WHETHER THE PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
14.14 Severability. If any provision of this Agreement shall be found by
a court of competent jurisdiction to be void, invalid or unenforceable, the same
shall be reformed to comply with applicable law or stricken if not so
reformable, so as not to affect the validity or enforceability of the remainder
of this Agreement, provided that the reformation complies with the intent of the
parties.
14.15 Counterparts. This Agreement may be executed in counterparts, each
of which shall be deemed an original, but which together shall constitute one
and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused their duly authorized
representatives to execute this Agreement.
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THE REGENTS OF THE UNIVERSITY SYMYX CORPORATION
OF CALIFORNIA ("The Regents") ("Licensee")
through THE XXXXXXXX BERKELEY
LABORATORY ("LBL")
By: /s/ X.X. XXXXXXXXXX By: /s/ XXX XXXXXXXXXX
---------------------------------- --------------------------------
Name: X.X. Xxxxxxxxxx Name: Xxx Xxxxxxxxxx
-------------------------------- ------------------------------
Title: Associate Laboratory Director Title: Chief Financial Officer
------------------------------- -----------------------------
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EXHIBIT A
U.S. patent application, serial number 08/327,513, entitled The Combinatorial
Synthesis Of Novel Materials, by Xxxxx Xxxxxxx, Xxxxxxxx Xxxxx, and Xxx
Xxxxxxxxxx.
U.S. patent application, serial number 08/438043, filed May 8, 1995, entitled
The Combinatorial Synthesis of Novel Materials, by Xxxxx Xxxxxxx, Xxxxxxxx
Xxxxx, and Xxx Xxxxxxxxxx.
22
EXHIBIT B
23
SYMYX TECHNOLOGIES
STOCK PURCHASE AGREEMENT
THIS AGREEMENT is made this ____th day of ______, 1995, between Symyx
Technologies, a California corporation (the "Company") and The Regents of the
University of California (the "Purchaser").
1. Sale of Stock. The Company hereby agrees to sell to the Purchaser and
the Purchaser hereby agrees to purchase an aggregate of 120,000 shares of the
Company's Common Stock (the "Shares") in consideration for the licenses granted
under that certain License Agreement of an even date herewith between the
Company and the Purchaser (the "License Agreement"). The Shares are valued at
$.001 per share for an aggregate valuation of $120.00.
2. Closing. The closing for the issuance of the Shares shall be held at
the offices of Xxxxxx Xxxxxxx Xxxxxxxx & Xxxxxx on _________, 1995, or at such
other time and place as the Company and Purchaser may agree upon (the
"Closing"). Upon receipt by the Company of an executed License Agreement, the
Company shall issue and deliver to the Purchaser a duly executed certificate
evidencing the Shares in the name of the Purchaser.
3. Representations and Warranties of the Company.
The Company hereby represents and warrants to Purchaser as
follows:
a. Organization, Good Standing and Qualification. The Company is
a corporation duly organized, validly existing and in good standing under the
laws of the State of California. The Company has all requisite corporate power
and authority to own and operate its properties and assets, to execute and
deliver this Agreement and sell the Shares and to carry out the provisions of
this Agreement.
b. Capitalization, Voting Rights. The authorized capital stock of
the Company, immediately prior to the Closing, will consist of 10,000,000 shares
of Common Stock, 2,110,000 shares of which are issued and outstanding. All
issued and outstanding shares of the Company's Common Stock (i) have been duly
authorized and validly issued, (ii) are fully paid and nonassessable and (iii)
were issued in compliance with all applicable state and federal laws concerning
the issuance of securities. There are no outstanding options, warrants, rights
(including conversion or preemptive rights and rights of first refusal), proxy
or shareholder agreements, or agreements of any kind for the purchase or
acquisition from the Company of any of its securities. When issued in compliance
with the provisions of this Agreement, the shares will be validly issued, fully
paid and nonassessable, and will be free of any liens or encumbrances; provided,
however, that the Shares may be subject to restrictions on transfer under state
and/or federal securities laws as set forth herein or as otherwise required by
such laws at the time a transfer is proposed.
24
4. Investment Representations.
a. In connection with the purchase of the Shares, the Purchaser
represents to the Company the following:
(i) Purchaser is aware of the Company's business
affairs and financial condition and has acquired sufficient information about
the Company to reach an informed and knowledgeable decision to acquire the
securities. Purchaser is purchasing these securities for investment for its own
account only and not with a view to, or for resale in connection with, any
"distribution" thereof within the meaning of the Securities Act of 1933 (the
"Securities Act").
(ii) Purchaser understands that the securities have
not been registered under the Securities Act by reason of a specific exemption
therefrom, which exemption depends upon, among other things, the bona fide
nature of Purchaser's investment intent as expressed herein. In this connection,
the Purchaser understands that, in view of the Securities and Exchange
Commission ("Commission"), the statutory basis for such exemption may not be
present if Purchaser's representations meant that its present intention was to
hold these securities for a minimum capital gains period under the tax statutes,
for a deferred sale, for a market rise, for a sale if the market does not rise,
or for a year or any other fixed period in the future.
(iii) Purchaser further acknowledges and understands
that the securities must be held indefinitely unless they are subsequently
registered under the Securities Act or an exemption from such registration is
available. Purchaser further acknowledges and understands that the Company is
under no obligation to register the securities. Purchaser understands that the
certificate evidencing the securities will be imprinted with a legend which
prohibits the transfer of the securities unless they are registered or such
registration is not required in the opinion of counsel for the Company.
(iv) Purchaser is aware of the adoption of Rule 144 by
the Commission, promulgated under the Securities Act, which permits limited
public resale of securities acquired in a non-public offering subject to the
satisfaction of certain conditions.
(v) Purchaser further acknowledges that in the event
all of the requirements of Rule 144 are not met, compliance with Regulation A or
some other registration exemption will be required; and that although Rule 144
is not exclusive, the staff of the Commission has expressed its opinion that
persons proposing to sell private placement securities other than in a
registered offering and other than pursuant to Rule 144 will have a substantial
burden of proof in establishing that an exemption from registration is available
for such offers or sales and that such persons and the brokers who participate
in the transactions do so at their own risk.
b. The Purchaser agrees, in connection with the Company's initial
public offering of the Company's securities, (i) not to sell, make short sales
of, loan, grant any options for the purchase of, or otherwise dispose of any
shares of Common Stock of the Company held by the Purchaser (other than those
shares included in the registration) without the prior written consent of
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the Company or the underwriters managing such initial underwritten public
offering of the Company's securities for one hundred eighty (180) days from the
effective date of such registration and (ii) further agrees to execute any
agreement reflecting (i) above as may be requested by the underwriters at the
time of the public offering.
5. Legends. The share certificate evidencing the Shares issued hereunder
shall be endorsed with the following legends:
a. "THE SHARES REPRESENTED BY THIS CERTIFICATE HAVE BEEN ACQUIRED
FOR INVESTMENT AND NOT WITH A VIEW TO, OR IN CONNECTION WITH, THE SALE OR
DISTRIBUTION THEREOF. NO SUCH SALE OR DISPOSITION MAY BE EFFECTED WITHOUT AN
EFFECTIVE REGISTRATION STATEMENT RELATED THERETO OR AN OPINION OF COUNSEL
SATISFACTORY TO THE COMPANY THAT SUCH REGISTRATION IS NOT REQUIRED UNDER THE
SECURITIES ACT OF 1933".
b. Any legend required to be placed thereon by the California
Commissioner of Corporations or any other applicable state securities laws.
6. Adjustment for Stock Split. All references to the number of Shares
and the purchase price of the Shares in this Agreement shall be appropriately
adjusted to reflect any stock split, stock dividend or other change in the
Shares which may be made by the Company after the date of this Agreement.
7. General Provisions.
a. This Agreement shall be governed by the internal laws of the
State of California. This Agreement represents the entire agreement between the
parties with respect to the purchase of Common Stock by the Purchaser, may only
be modified or amended in writing signed by both parties and satisfies all of
the Company's obligations to the Purchaser with regard to the issuance or sale
of securities.
b. Any notice, demand or request required or permitted to be
given by either the Company or the Purchaser pursuant to the terms of this
Agreement shall be in writing and shall be deemed given when delivered
personally or deposited in the U.S. mail, First Class with postage prepaid, and
addressed to the parties at the addresses of the parties set forth at the end of
this Agreement or such other address as a party may request by notifying the
other in writing.
c. The rights and benefits of the Company under this Agreement
shall be transferable to any one or more persons or entities, and all covenants
and agreements hereunder shall inure to the benefit of, and be enforceable by
the Company's successors and assigns. The rights and obligations of the
Purchaser under this Agreement may only be assigned with the prior written
consent of the Company.
d. Either party's failure to enforce any provision or provisions
of this Agreement shall not in any way be construed as a waiver of any such
provision or provisions, nor prevent that
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26
party thereafter from enforcing each and every other provision of this
Agreement. The rights granted both parties herein are cumulative and shall not
constitute a waiver of either party's right to assert all other legal remedies
available to it under the circumstances.
e. The Purchaser agrees upon request to execute any further
documents or instruments necessary or desirable to carry out the purposes or
intent of this Agreement.
f. SALE OF THE SECURITIES WHICH ARE THE SUBJECT OF THIS AGREEMENT
HAS NOT BEEN QUALIFIED WITH THE COMMISSIONER OF CORPORATIONS OF THE STATE OF
CALIFORNIA AND THE ISSUANCE OF SUCH SECURITIES OR THE PAYMENT OR RECEIPT OF ANY
PART OF THE CONSIDERATION THEREFOR PRIOR TO SUCH QUALIFICATION IS UNLAWFUL,
UNLESS THE SALE OF SECURITIES IS EXEMPT FROM THE QUALIFICATION BY SECTION 25100,
25102, OR 25105 OF THE CALIFORNIA CORPORATIONS CODE. THE RIGHTS OF ALL PARTIES
TO THIS AGREEMENT ARE EXPRESSLY CONDITIONED UPON SUCH QUALIFICATION BEING
OBTAINED, UNLESS THE SALE IS SO EXEMPT.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of
the day and year first set forth above.
COMPANY: PURCHASER:
SYMYX TECHNOLOGIES, THE REGENTS OF THE UNIVERSITY
a California corporation OF CALIFORNIA
By:________________________________ _____________________________
Title:_____________________________ _____________________________
0000 Xxxxxxx Xxx., Xxxxx 000 _____________________________
Xxxx Xxxx, XX 00000 _____________________________
(address)
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XXXXXXX X
Xxxxxx Xxxxxx
Xxxxx
Xxxxxx Xxxxxxx
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