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CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
EXHIBIT 10.12
TECHNOLOGY ACCESS
AGREEMENT
THIS TECHNOLOGY ACCESS AGREEMENT ("Agreement") dated as of December 21,
1998 (the "Effective Date") is entered into by and between AMGEN INC. having an
address at Xxx Xxxxx Xxxxxx Xxxxx, Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000
("Amgen") and CALIPER TECHNOLOGIES CORP. ("Caliper") having offices at 0000
Xxxxxxxxxx Xxxxxx, Xxxx Xxxx, Xxxxxxxxxx 00000.
RECITALS:
WHEREAS, Caliper has developed proprietary microfluidics and
miniaturization technology applicable to high throughput screening;
WHEREAS, Caliper and Amgen desire to establish a technology access
program to implement high throughput screening capabilities utilizing Caliper
technology at Amgen's facilities;
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1 "AFFILIATE" shall mean (i) any corporation or other entity
which directly or indirectly owns or controls at least fifty percent (50%) of
the outstanding voting securities of a party (a "Parent"), (ii) any corporation
or other entity in which a party directly or indirectly owns or controls at
least fifty percent (50%) of the outstanding voting securities, and (iii) any
corporation or other entity in which a Parent of a party owns or controls at
least fifty percent (50%) of the outstanding voting securities.
1.1 "AMGEN COLLABORATOR" shall mean any third party with which Amgen
or its Affiliates is collaborating to develop a pharmaceutical product as part
of Amgen's in-house drug discovery programs.
1.2 "AMGEN TECHNOLOGY" shall mean any and all (i) assays, compounds,
substrates, reagents and materials provided by Amgen to Caliper pursuant to this
Agreement (together with all processes, ideas, data, techniques, information,
know-how, technology, trade secrets and the like, provided by Amgen to Caliper
(except to the extent such
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information is not confidential under Section 5.2) and any and all other
intellectual property rights with respect to any or all of the foregoing), (ii)
Targets, and (iii) any and all [ * ] developed solely by either party or
jointly by the parties with respect to any and all of the foregoing in
connection with the TAP and any and all other activities contemplated by this
Agreement.
1.4 "CALIPER KNOW-HOW" shall mean all discoveries, materials,
techniques, procedures, data, trade secrets and other technical information
which Caliper owns, controls or has any interest capable of being licensed (with
rights to license to Amgen hereunder) and treats as confidential or proprietary
as of the Effective Date or during the Term. Caliper Know-How does not include
Caliper Patents.
1.5 "CALIPER PATENTS" shall mean any and all Patents which Caliper
owns, controls or has any interest capable of being licensed (with rights to
license to Amgen hereunder) as of the Effective Date or during the Term.
1.6 "CALIPER TECHNOLOGY" shall mean, collectively, the Caliper
Patents and the Caliper Know-How.
1.7 "CONFIDENTIAL INFORMATION" shall mean this Agreement and the
contents hereof and any and all information owned and provided by one party to
the other party pursuant to this Agreement, including, without limitation,
Materials (as defined in Section 4.3), data, knowledge, practices, processes,
ideas, Amgen know-how, Caliper Know-How, research plans, engineering designs and
drawings, research data, manufacturing processes and techniques, scientific,
manufacturing, marketing, and business plans, financial or personnel matters
relating to the party, its present or future products, sales, suppliers,
customers, employees, investors or business.
1.8 "FTE" or full-time equivalent, shall mean one or more Caliper
person(s), whether employees, contractors or consultants, working on activities
under this Agreement for the equivalent of one full-time employee's time
(assuming a 40 hour work week) over the course of one year.
1.9 "INSTRUMENT" shall mean the hardware component(s) of a system
offered for sale by Caliper to develop or use LabChips, including but not
limited to [ * ].
1.10 "LABCHIP" shall mean a chip offered for sale by Caliper to
perform microfluidic or miniaturization experimentation.
1.11 "LABCHIP ASSAY" shall mean a Screening assay for a particular
Target
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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designed to run on a Caliper Screening Product system, consisting of a
particular Caliper LabChip, a set of reagents and software, one or more
instruments on which such chip, reagents and software are designed to run and a
protocol for performing such assay.
1.12 "LABCHIP IMPROVEMENTS" shall mean [ * ] developed solely by
either party or jointly by the parties with respect to (i) any and all Screening
Products and [ * ] provided by Caliper to Amgen pursuant to this Agreement, and
(ii) all processes, ideas, data, techniques, information, know-how, technology,
trade secrets and the like provided by Caliper to Amgen with respect to the
foregoing (except to the extent such information is not confidential under
Section 5.2) in connection with the TAP and any and all other activities
contemplated by this Agreement. By way of example, such technologies include but
are not limited to the world-to-chip interface or chip-to-world interface, chip
construction, composition or design, on-chip assay strategies or reagent
conditions, electrical or other means of controlling fluids or molecules on a
chip, detection of results produced by chips, or software techniques for
extracting or processing data from chips.
1.13 "PATENTS" shall mean any and all patents and patent applications
and any substitutions, extensions, reissues, and renewals thereof, any
supplementary protection certificates relating thereto, and any inventors'
certificates, which have not been held invalid or unenforceable by a
non-appealable or non-appealed decision of a court of competent jurisdiction,
issuing from patent applications or patents filed in any jurisdiction and any
provisionals, divisionals, continuations, and continuations-in-part of such
applications or patents.
1.14 "SCREENING" shall mean the process of screening potential
pharmaceutical agents or compounds against a pharmaceutically-relevant target
(e.g., an enzyme, receptor or cell type) to determine each agent's potential
safety or efficacy as a human pharmaceutical. For purposes of this Agreement,
Screening shall include, but not be limited to, primary, high throughout
screening against potential therapeutic targets, secondary screening of
analogues and derivatives against such targets, and screens of potential
pharmaceutical compounds for specificity, toxicity and other parameters relevant
to safety or efficacy.
1.15 "SCREENING PRODUCTS" shall mean all Instruments, LabChips and
other hardware, software or reagents that Caliper offers during the Term for
general commercial sale to third parties or for sale to TAP members for use in
Screening.
1.16 "TARGETS" shall mean the pharmaceutically relevant molecules,
complexes or cell lines (such as enzymes, binding proteins, receptors,
transporters, or ion channels) nominated by Amgen for LabChip Assay development
in accordance with Section 2.3.
1.17 "TECHNOLOGY ACCESS PROGRAM" OR "TAP" shall mean
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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the program described in this Agreement for developing Screening Products and
implementing them at Amgen.
1.18 "TERM" shall mean the period of three (3) years commencing on the
Effective Date, unless earlier terminated pursuant to Section 8 or modified by
mutual written agreement of the parties.
2. TECHNOLOGY ACCESS PROGRAM.
2.1 LICENSE GRANT.
(a) Caliper hereby grants to Amgen and its Affiliates a
non-exclusive, non-transferable (except as provided in Section 9.3),
royalty-free license, with no right to sublicense, under Caliper Technology to
use Screening Products provided by Caliper to Amgen pursuant to this Agreement
for any purpose in Amgen's in-house drug discovery programs (the "product
license"). (Throughout this Agreement, references to Amgen's in-house drug
discovery programs shall include collaborations with Amgen Collaborators). With
respect to each of the Screening Products described on Exhibit A, the product
license shall immediately become fully-paid, irrevocable and perpetual upon
Caliper's receipt of the up-front license fee described in Section 3.1(a), the
first installment of the 1999 subscription fee under Section 3.1(b)(i) and the
milestone payment under Section 3.1(b) corresponding to each product. With
respect to Screening Products offered in 2000 and beyond, the product license
shall immediately become fully-paid, irrevocable and perpetual upon Caliper's
receipt of the total amount of the annual subscription fee for such year as
provided in Section 3.1(b)(ii).
(b) Caliper also hereby grants to Amgen a non-exclusive,
non-transferable (except as provided in Section 9.3), royalty-free, irrevocable,
perpetual license, with no right to sublicense, to use Caliper Know-How provided
pursuant to this Agreement for any purpose in Amgen's in-house drug discovery
programs (the "know-how license").
(c) Caliper specifically permits Amgen under the licenses
granted above to develop novel applications for the Screening Products
purchased hereunder, including uses outside Screening, and to use such products
in such applications. Caliper agrees to supply chips for such applications on
commercially reasonable terms, conditions and prices to be mutually agreed, and
such terms, conditions and prices shall be subject to Section 3.3(c). If Caliper
and its licensee are not ready, willing and able to supply to Amgen, then
Caliper will promptly so notify Amgen and Amgen may be supplied by a third
party. In such event, the third party's manufacture and sale, and Amgen's use,
of such products shall be covered by the licenses under Caliper Technology
granted above. Otherwise, the licenses granted hereunder shall not include
rights to use third party chips, if the manufacture, use or sale of such chips
would infringe any Caliper Patent. Should Caliper develop products for
applications outside Screening and offer such products through other technology
access programs or other commercial arrangements, Amgen shall not be deemed to
have rights to such products solely by reason of this section.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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(d) Each of these licenses is subject to the terms and
conditions set forth in this Agreement and other reasonable terms and
conditions, if any, mutually agreed upon at the time each Screening Product is
sold to Amgen. Following expiration or termination of this Agreement, such
licenses shall continue as further provided in Section 8.5.
2.2 PROGRAM LEADERS AND PLAN. Caliper and Amgen shall each designate
a program leader. The program leaders shall jointly coordinate the activities
carried out under this Agreement and monitor the progress of such activities on
a periodic BASIS. From time to time, the program leaders shall mutually prepare
and update a program plan describing (i) goals in terms of milestones and
deliverables, (ii) the tasks and budget for Amgen support to be provided by
Caliper personnel under Section 2.3, and (iii) such other matters as the program
leaders may agree upon. The plan for 1999 is attached as Exhibit A (which shall
be amended or modified only by mutual agreement of the parties). Plans for each
subsequent year shall be mutually agreed by the parties not later than thirty
(30) days prior to each such year (and thereafter shall be amended or modified
only by mutual agreement of the parties). The dates set forth on the program
plan for completion of tasks shall be good faith projections provided by Caliper
and agreed to by Amgen. Caliper shall apply commercially reasonable efforts to
achieve such objectives by such date and at all times thereafter until the
objectives are achieved.
[ * ] days prior to the end of each quarter, Caliper shall
notify Amgen of its ability or inability to achieve that quarter's objectives
within [ * ] days of the end of the quarter. If Caliper notifies Amgen that it
is unable to satisfy that quarter's objectives within [ * ] days after the end
of the quarter, or Caliper otherwise fails to satisfy such objectives within
[ * ] days after the end of the quarter, then [ * ]. If Caliper fails to deliver
within [ * ] days after the end of the [ * ] quarter of [ * ] the Multi Sipper
Instrument scheduled to be delivered that quarter, then, in addition to the
foregoing, Amgen's subscription under the TAP for 1999 shall automatically
extend until [ * ] days following Amgen's purchase and receipt of the same or
its written notice to Caliper of its election not to purchase the same (which
purchase or notice shall occur not later than [ * ] days after Caliper notifies
Amgen that such Multi Sipper Instrument is available for purchase). If Amgen
elects to renew its subscription for 2000 (which election must be made prior to
the expiration of the extended term of the 1999 subscription described in the
foregoing sentence), then it must pay to Caliper the full year 2000 subscription
fee of [ * ] prior to the expiration of the extended term of the 1999
subscription.
2.3 AMGEN SUPPORT.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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(a) GENERAL. In addition to describing milestones and
deliverables, the program plan prepared by the program leaders shall also plan
and budget for activities of Caliper personnel specifically directed to
supporting Amgen's implementation of Screening Products. Such activities may
include (i) assay development for Amgen Targets, (ii) training and support for
Amgen personnel developing LabChip Assays or using Screening Products, and (iii)
custom development projects requested by Amgen (each discussed further below).
Funding for such Caliper personnel shall be provided pursuant to Section 3.2
below. Amgen's program leader shall propose priorities and tasks for Caliper to
support Amgen. Caliper's program leader will determine the necessary personnel
resources, provide estimates of the projected time needed to perform relevant
tasks and provide estimates of the technical feasibility of various tasks. Based
on this information, the project leaders will mutually agree on an appropriate
plan and budget for Amgen support activities utilizing up to the number of FTEs
of Caliper time agreed upon at the beginning of the year as provided in Section
3.2 [ * ]. Requests for more than [ * ] FTEs of support at any time shall be
subject to mutual agreement.
(b) ASSAY DEVELOPMENT. LabChip Assays for Amgen's Targets will
be developed collaboratively by the parties or by Amgen independently, as
determined by Amgen. In general, Amgen will develop the appropriate biochemical
and/or cellular reagents for the assay and provide necessary quantities of
reagents to Caliper. Initially, Caliper will be primarily responsible for
adapting the assay to the LabChip format. Over time, the parties expect that
Amgen will assume an increasing role in LabChip-specific development tasks and
eventually conduct such activities independently.
(c) TRAINING AND SUPPORT. At Amgen's request, some of the
Caliper FTEs shall provide training and support for Amgen employees in
development of LapChip Assays and use of Screening Products. This training will
be in addition to customary introductory set-up and training provided when new
Screening Products are purchased for the first time (which will be included with
the purchase price). Amgen personnel will have access to information concerning
all Caliper Technology relevant to Screening throughout the Term and may
regularly or periodically communicate (by telephone, e mail, fax, etc.) or visit
Caliper's facilities for such purposes at mutually arranged times.
(d) CORE SCREENING PRODUCT OFFERINGS; CUSTOM DEVELOPMENT.
Caliper intends to consult all of its TAP participants as it decides on core
Screening Product offerings, and Caliper will include Amgen in such discussions.
From time to time, Caliper will notify Amgen of the particular Screening
Products that Caliper has decided to develop for general commercial sale. Such
products will be based upon the technical suggestions and
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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contributions and the funding anticipated to be provided by all TAP
participants. Upon Amgen's request (but in no event more frequently than
quarterly, Caliper will provide Amgen with written reports summarizing the
progress of the TAP and the development of the Screening Products. If Amgen is
interested in having Caliper develop additional products, or accessories to core
products, then Amgen may elect to apply a portion of the Amgen support FTEs to
such custom development efforts. If such projects would cause the aggregate
Amgen support to exceed [ * ] FTEs at any time, then Caliper's agreement to the
project will be required.
2.4 NON-EXCLUSIVE PROGRAM. The TAP is a mutually non-exclusive
collaboration anticipated to involve Caliper and multiple pharmaceutical
companies. Amgen and Caliper are each free to work with any other company in any
area. Amgen acknowledges that other customers, independently or together with
Caliper, may develop LabChip Assays for the same or similar targets as those
pursued by Amgen or pursue development of drugs that may compete with drugs
Amgen is developing or commercializing; subject in all cases to Sections 5.1
and 5.2 and the other terms of this Agreement. Similarly, Caliper acknowledges
that Amgen will continue to perform Screening on non-Caliper systems and may
collaborate with third parties on microfluidics and miniaturization
technologies; subject in all cases to Sections 5.1 and 5.2 and the other terms
of this Agreement.
2.5 RESTRICTIONS ON USE OF SCREENING PRODUCTS. Amgen agrees that it
will use all Screening Products only in its and its Affiliate's in-house drug
discovery programs. Specifically, Amgen shall not (i) transfer for valuable
consideration or resell any Screening Products or screening data generated
therefrom to any third party other than Affiliates or Amgen Collaborators, (ii)
use any Screening Products to provide services on behalf of any third party,
except that Amgen can provide services for its Affiliates or an Amgen
Collaborator, or (iii) allow a third party other than an Affiliate or an Amgen
Collaborator to use any Screening Products. Caliper agrees to supply Instruments
and replacement parts for use with LabChips purchased by Amgen, and LabChips for
use with Instruments and replacement parts purchased by Amgen, on commercially
reasonable terms, conditions and prices to be mutually agreed, and such terms,
conditions and prices shall be subject to Section 3.3(c). If Caliper
and its licensees are not ready, willing and able to supply Amgen with such
products, then Caliper will promptly so notify Amgen [ * ]. In such event, [ * ]
such products shall be covered by the licenses under Caliper Technology granted
in Section 2. Otherwise, the licenses granted hereunder shall not include rights
to [ * ], if the [ * ] would infringe any Caliper Patent.
2.6 COMMERCIALIZATION OF SCREENING PRODUCTS. Caliper acknowledges
that a portion of the value of this Agreement to Amgen comes from early access
to Screening Products that are not yet, or may never be, generally available
outside the TAP. Caliper represents to Amgen that as of the Effective Date it
does not have present plans to commence sales outside the TAP of Screening
Products listed on Exhibit A for Screening against therapeutic targets within
[ * ] of the date they are projected on Exhibit A for delivery to Amgen. If
Caliper should commence sales of any such Screening Products outside the TAP
within such [ * ] period, then the parties shall mutually agree in good faith
on an appropriate repayment in the form of a refund or credit (but in any event
in the form of a refund if Amgen determines not to renew the subscription for
the next then applicable year) of a portion of the up-front license fee paid to
Caliper hereunder (not to exceed [ * ]).
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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2.7 NO CALIPER RIGHTS. Caliper, its employees, agents and/or
consultants shall have no rights, claims or interests whatsoever (including but
not limited to any intellectual property rights) with respect to any [ * ]
developed in connection with, relating to, or resulting from the Screening
Products provided to Amgen hereunder or otherwise in connection with the
technology access provided to Amgen by this Agreement.
3. FINANCIAL TERMS.
3.1 TECHNOLOGY ACCESS FEES.
(a) UP-FRONT LICENSE FEE. Amgen shall pay to Caliper a
non-refundable up-front license fee of [ * ] on or prior to December 31, 1998.
(b) ANNUAL SUBSCRIPTION FEES. Amgen shall pay to Caliper a
non-refundable annual subscription fee of [ * ] for each year of the TAP, as
follows:
(i) The subscription fee for the year 1999 shall be
paid as follows. Amgen shall pay Caliper [ * ] on or prior to December 31, 1998.
The balance of [ * ] shall be paid in installments based upon Caliper's
achievement of the milestones and deliverables set forth on Exhibit A, in the
amounts set forth in Exhibit A, without regard to (a) the date when such
milestone or deliverable is achieved (provided that Amgen's obligation to pay
each such installment shall be accelerated or suspended until the date such
milestone or deliverable is achieved), (b) any decision by Amgen not to purchase
any Screening Product, or (c) any termination of this Agreement other than under
Section 8.3. Each installment payment shall be invoiced by Caliper to Amgen and
due within thirty (30) days of the receipt of invoice.
(ii) Unless Amgen terminates this Agreement early under
Section 8.2, or except as otherwise provided in Section 2.2, Amgen shall pay
Caliper the annual subscription fee for 2000 and 2001 on or before January 15th
of each such year.
3.2 AMGEN SUPPORT FUNDING.
(a) Amgen shall provide funding for Amgen support activities
provided by Caliper under Section 2.3 at the rate of [ * ] per FTE per year. For
1999, Caliper agrees to provide, and Amgen agrees to fund, [ * ] FTEs for Amgen
support activities. Prior to the beginning of each subsequent year, the parties
shall mutually agree on a schedule for Amgen support personnel to be provided by
Caliper and funded by Amgen; provided, however that this shall be
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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determined quarterly for the period of time, if any, that the Multi Sipper
Instrument scheduled to be delivered in the [ * ] quarter of [ * ] has not yet
been delivered. [ * ] of FTEs shall apply after 1999 unless the parties mutually
agree otherwise, and Caliper shall not be obliged to provide more than [ * ]
FTEs in any such year unless the parties mutually agree otherwise.
(b) Amgen support funding shall be paid in advance in
quarterly installments due fifteen (15) days after the beginning of each quarter
(i.e., January 15th, April 15th, July 15th, or October 15th). The funding for
each quarter shall be based on the number of Amgen support FTEs scheduled in the
program plan for such quarter. Caliper shall deliver quarterly reports to Amgen
describing the actual time applied to Amgen support tasks. The project leaders
may adjust the Amgen support FTEs scheduled for subsequent quarters based on
such reports. In any event, the parties will reconcile any discrepancy between
funding and actual FTE time provided once per year, after the last quarter's
report has been delivered to Amgen. If actual FTE time is less than the funding
provided, Caliper shall refund the difference or credit it towards the next
year's funding, at Amgen's option. If actual FTE time exceeds the funding
provided, Caliper may invoice Amgen for the difference but Amgen shall not be
obligated to pay such amount unless such time was previously authorized by
Amgen.
3.3 SCREENING PRODUCTS.
(a) Caliper will notify Amgen when Caliper is prepared to
offer each Screening Product for sale to Amgen, together with standard
commercial terms to be established by Caliper including price, warranty, set-up
and training, et cetera. The parties agree, however, that the purchase price
(excluding tax and shipping) for the following initial deliverables set forth in
the program plan shall be as set forth below:
[ * ] [ * ]
[ * ] [ * ]
[ * ] [ * ]
[ * ] [ * ]
(b) Amgen hereby agrees to take delivery of and to pay for the
Instruments listed under [ * ] on Exhibit A. The purchase price of [ * ] for the
[ * ] and [ * ] shall be paid on or before [ * ]; provided that [ * ]. Orders
for the Screening Products for 1999 described in Exhibit A shall be considered
firm unless and until otherwise provided in Section 2.2. Amgen shall pay the
purchase price for the other deliverables within thirty (30) days of receipt by
Amgen of the invoice for the deliverable, which will be sent at the time the
product is shipped. Amgen shall pay standard sales taxes applicable to each
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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sale of Screening Products.
(c) The prices charged to Amgen for sales of Screening Products
[*], including but not limited to terms such as volume purchases, minimum
purchase commitments, warranties and service contracts.
4. INTELLECTUAL PROPERTY.
4.1 AMGEN TECHNOLOGY. Amgen shall have all right, title and interest
in and to the Amgen Technology. Caliper hereby assigns to Amgen all of its
right, title and interest, if any, in and to all Amgen Technology discovered,
invented (inventions conceived or reduced to practice) or developed in
connection with the TAP and any and all other activities contemplated by this
Agreement. Caliper agrees to cooperate with Amgen to execute any documents or
take any other actions necessary or desirable to effect such assignment and
perfect such ownership rights in Amgen, at Amgen's expense. Caliper shall use
reasonable efforts to notify Amgen of any new Amgen Technology (Amgen Technology
not specifically provided by Amgen to Caliper under this Agreement). Any such
new Amgen Technology for which no patent application is filed shall be treated
as Amgen's Confidential Information. The intent of this Section 4.1 is to vest
in Amgen all intellectual property rights, if any, resulting from or in
connection with the working relationship created by this Agreement which relate
to its business - research, development and commercialization of pharmaceutical
products and in the event of question or issue regarding intellectual property
rights this principle shall be followed.
4.2 CALIPER TECHNOLOGY. Caliper shall have all right, title and
interest in and to the Caliper Technology and LabChip Improvements. Amgen hereby
assigns to Caliper all of its right, title and interest (except the licenses
granted to Amgen under this Agreement), if any, in and to all Caliper Technology
and LabChip Improvement discovered, invented (inventions conceived or reduced to
practice) or developed in connection with the TAP and any and all other
activities contemplated by this Agreement; provided, however, that Amgen shall
have a non-exclusive, royalty-free, irrevocable and perpetual license to such
Caliper Technology and LabChip Improvements for the use by it, its Affiliates
and Amgen Collaborators for any purpose in Amgen's in-house drug discovery
program. Amgen agrees to cooperate with Caliper to execute any documents or take
any other actions necessary or desirable to effect such assignment and perfect
such ownership rights in Caliper, at Caliper's expense. Amgen shall use
reasonable efforts to notify Caliper of any new Caliper Technology or LabChip
Improvements (Caliper Technology or LabChip Improvements not specifically
provided by Caliper to Amgen under this Agreement). Any such new Caliper
Technology or LabChip Improvements for which no patent application is filed
shall be treated as Caliper's Confidential Information. The intent of this
Section 4.2 is to vest in Caliper all intellectual property rights, if any,
resulting from or in
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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connection with the working relationship created by this Agreement which relate
to its business - research, development, manufacture and commercialization of
chip-based microfluidic systems, and in the event of question or issue regarding
intellectual property rights this principle shall be followed.
4.3 AMGEN MATERIALS. Amgen may provide to Caliper pursuant to this
Agreement certain assays, compounds, substrates, reagents and other materials
(collectively, the "Materials"), which are and shall be the sole property of
Amgen. The provision of Materials to Caliper under this Agreement does not grant
Caliper any license or other right to Amgen Technology, except the limited right
to use the Materials for the sole purpose of satisfying its obligations to Amgen
under this Agreement and for no other purpose, including without limitation
other research purposes. Caliper understands that some Materials may have
unpredictable or unknown biological and/or chemical properties and that they
should be used with caution. Upon termination of this Agreement, Caliper shall
promptly return the Materials to Amgen.
5. CONFIDENTIALITY; PUBLICITY; USE OF NAME.
5.1 CONFIDENTIAL INFORMATION. During the term of this Agreement, and
for a period of five (5) years following the expiration or termination of this
Agreement, each party shall maintain in confidence any and all Confidential
Information. Each party further agrees that it shall not use for any purpose not
authorized under this Agreement or disclose the Confidential Information to any
third party, except that either party may disclose Confidential Information
under a similar obligation of confidentiality and non-use on a need-to-know
basis to its directors, officers, employees, consultants, agents and Affiliates.
Notwithstanding the foregoing, this Agreement and the contents hereof may be
disclosed under a similar obligation of confidentiality and non-use on a
need-to-know basis to investors and their representatives in a private financing
transaction, potential acquirers or targets and their representatives in an
acquisition transaction, or as required by law (including but not limited to as
an exhibit to a registration statement filed with the Securities and Exchange
Commission), order or regulation of a governmental agency. The disclosing party
shall provide written notice to the other party of any such disclosure required
by law, order or regulation of a governmental agency, reasonably in advance if
practical. If Caliper intends to file this Agreement with the Securities and
Exchange Commission, Caliper agrees to provide Amgen with a copy of the proposed
filing for review and comment reasonably in advance of the filing date. Upon
termination of this Agreement, each party shall return to the other party
Confidential Information received from the other in tangible form.
5.2 RELIEF. Each party shall be relieved of any and all obligations
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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under Section 5 regarding Confidential Information which:
(a) was already known to the receiving party or its
Affiliates, other than under an obligation of confidentiality, at the time of
disclosure by the other party;
(b) was generally available or known to the public or
otherwise part of the public domain at the time of its disclosure to the
receiving party;
(c) became generally available or known to the public or
otherwise part of the public domain after its disclosure through no fault
attributable to the receiving party;
(d) was disclosed to the receiving party or its Affiliates,
other than under an obligation of confidentiality to a third party, by a third
party who had no obligation to the disclosing party not to disclose such
information to others; or
(e) was independently discovered or developed by the receiving
party or its Affiliates without the use of Confidential Information belonging to
the disclosing party.
5.3 PUBLICITY. Neither party shall originate any news release or
other public announcement relating to this Agreement or the contents hereof
without the prior written approval of the other party, which approval shall not
be unreasonably withheld or delayed for longer than five (5) working days.
5.4 USE OF NAME. Except as otherwise provided in Section 5.1, neither
party shall use the name or logo of the other party without the prior written
consent of such other party.
6. REPRESENTATIONS AND WARRANTIES AND COVENANTS.
6.1 CORPORATE POWER. Each party represents and warrants to the other
that as of the Effective Date it is duly organized and validly existing under
the laws of its state of incorporation, and has full corporate power and
authority to enter into this Agreement and to carry out the provisions hereof.
6.2 DUE AUTHORIZATION. Each party represents and warrants to the
other that as of the Effective Date it is duly authorized to execute and deliver
this Agreement and to perform its obligations hereunder, and the person
executing this Agreement on its behalf has been duly authorized to do so by all
requisite corporate action.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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6.3 BINDING AGREEMENT. This Agreement is legally binding upon it and
enforceable in accordance with its terms. The execution, delivery and
performance of this Agreement by it does not breach any agreement to which it is
a party, nor violate any law or regulation of any court, governmental body or
administrative or other agency having jurisdiction over it, in each case in any
material respect. The parties agree that this covenant shall be applicable on
the Effective Date and throughout the Term.
7. INDEMNIFICATION; DISCLAIMER; LIMITATION OF LIABILITY.
7.1 INDEMNIFICATION BY CALIPER. Amgen shall be entitled to the quiet
enjoyment of the Screening Products and therefore, subject to Section 7.4 below,
Caliper shall defend, indemnify and hold harmless Amgen and its Affiliates and
all their officers, directors, employees and agents from and against any and all
damages, awards, costs and expenses (including court and arbitration costs,
witness fees and reasonable attorneys' fees) incurred by Amgen or any such
person or entity arising from or in connection with any claim, demand, law
suits or other legal actions by any third party against any such person or
entity alleging infringement of any patent claim or other intellectual property
right of a third party with respect to the possession, development,
manufacture, use or sale of, or otherwise relating to any Screening Product.
7.2 INDEMNIFICATION BY AMGEN. Amgen shall defend, indemnify and hold
harmless Caliper, its Affiliates and sublicensees, and all their officers,
directors, employees and agents from any damages, awards, costs and expenses
(including court and arbitration costs, witness fees and reasonable attorneys'
fees) incurred by Caliper and/or any such person or entity arising from or in
connection with any claim, demand law suits or other legal actions by any third
party against any such person or entity arising from the possession,
development, manufacture, use, sale or administration of Amgen's Targets or
Materials by Caliper or by Amgen, its Affiliates or sublicensees.
7.3 INDEMNIFICATION PROCEDURE. The party seeking indemnification
under this Article 7 (the "Indemnified Party") shall (i) give the other party
(the "Indemnifying Party") notice of the relevant claim and the related facts
with reasonable promptness after becoming aware of same, (ii) reasonably
cooperate with the Indemnifying Party, at the Indemnifying Party's expense, in
the defense of such claim, and (iii) give the Indemnifying Party the ability to
control the defense and settlement of any such claim, except that the
Indemnifying Party shall not enter into any settlement that materially adversely
affects the Indemnified Party without the Indemnified Party's prior written
approval. The Indemnified Party shall have no authority to settle any claim on
behalf of the Indemnifying Party.
7.4 INTELLECTUAL PROPERTY. Caliper' obligation to indemnify Amgen for
claims under Section 7.1 above shall be subject to the following conditions.
Caliper shall determine which Screening Products to offer and when
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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they will be offered. Caliper may impose reasonable restrictions upon the use of
any Screening Product for intellectual property reasons, provided it notifies
Amgen of such restriction at the time of sale. Following sale of any product, if
Caliper determines that third party intellectual property concerns warrant,
Caliper may, in its sole discretion, (i) obtain for Amgen a license to continue
to use the relevant Screening Product, (ii) replace or modify the relevant
Screening Product so as to make the Screening Product non-infringing, or (iii)
if (i) and (ii) are not commercially and technically reasonable, in Caliper's
sole discretion, terminate Amgen's rights to use the relevant Screening Product
or restrict Amgen from using it in a manner Caliper believes may be infringing.
In the event of (iii), Amgen may elect to have the purchase price paid by Amgen
for such Screening Product refunded, and Amgen will return the relevant
Screening Product. Such a refund shall be Amgen's sole remedy against Caliper
for the loss of use of such Screening Product. Caliper shall not be obligated to
indemnify Amgen for claims arising out of any Screening Product's infringement
of any intellectual property right of a third party resulting from Amgen's
combination of such Screening Product with technology other than the Caliper
Technology, Amgen's use of such Screening Product in a manner not authorized by
Caliper at the time of sale, Amgen's misuse or mishandling of such Screening
Product, Amgen's unauthorized modification of such Screening Product or Amgen's
continued use of such Screening Product notwithstanding termination of Amgen's
right to use such Screening Product pursuant to this Section 7.4.
7.5 CALIPER DISCLAIMER. Caliper makes no representation and extends
no warranties of any kind, either express or implied, including warranties of
merchantability or fitness for a particular purpose, with respect to any caliper
technology, screening product or other products developed or provided pursuant
to this agreement. Amgen acknowledges that the Screening Products to be provided
to Amgen pursuant to this Agreement are prototype units, and as such are neither
equipped with standard safety features nor completely tested for defects. Amgen
acknowledges that such products require a greater degree of caution than other
standard laboratory equipment. Caliper shall not be liable to Amgen for any
personal injury or property damage resulting from use of such equipment in a
manner other than that recommended by Caliper at the time of sale.
7.6 AMGEN DISCLAIMER. AMGEN MAKES NO REPRESENTATION AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO ANY AMGEN
TARGETS OR OTHER MATERIALS OR TECHNOLOGY DEVELOPED OR PROVIDED PURSUANT TO THIS
AGREEMENT.
7.7 LIMITATION OF LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE
TO THE OTHER FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES (INCLUDING WITHOUT
LIMITATION, LOST PROFITS), EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY THEREOF. Each party acknowledges that the foregoing limitations are
an essential element of the Agreement between the parties and that in the
absence of such limitations the pricing and other terms set forth in this
Agreement would be substantially different.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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8. TERM AND TERMINATION.
8.1 TERM. The term of this Agreement shall commence on the Effective
Date and, unless terminated earlier pursuant to this Section 8, shall expire
December 31, 2001. The Agreement may be extended by mutual written agreement of
the parties hereto.
8.2 TERMINATION BY AMGEN. Amgen may terminate this Agreement, with or
without cause, effective on January 1 of any year after January 1, 1999, with at
least [ * ] days prior written notice; provided, however, that Amgen may also
terminate this Agreement if Caliper has not delivered within [ * ] days of the
end of the [ * ] quarter of [ * ] the Multi Sipper Instrument scheduled to be
delivered that quarter by providing Caliper with written notice at any time
prior to the expiration of the extended term of the 1999 subscription described
in Section 2.2. All rights and obligations applicable under this Agreement
through the effective date of termination shall continue to apply until such
date irrespective of any delivery of notice of termination, including but not
limited to [ * ].
8.3 TERMINATION FOR MATERIAL BREACH. Either party may terminate this
Agreement upon any material breach of this Agreement by the other party if the
other party has not cured such breach within sixty (60) days after written
notice thereof by the non-breaching party.
8.4 SURVIVING OBLIGATIONS. No expiration or termination of this
Agreement shall relieve either party of any obligation accruing prior to such
expiration or termination. The provisions of Sections 2.1(a) (third and fourth
sentences), 2.1(b), 2.1(c), 2.1(d), 2.4, 2.5, 2.7, 3.1(b)(i), 3.3(c ), 4, 5, 7,
8.4, 8.5 and 9 shall survive the expiration or termination of this Agreement.
8.5 POST-TERM LICENSE. Following expiration or termination of this
Agreement, the product license granted to Amgen under Section 2.1 shall continue
to be fully-paid, irrevocable and perpetual and, in addition, Amgen shall be
entitled to continue to purchase such Instruments, LabChips and other Screening
Products for so long as Caliper continues to offer such items for sale to third
parties. Caliper will notify Amgen before ceasing production of any Screening
Product which Amgen has purchased in the [ * ] period before production is due
to cease. The know-how license granted under Section 2.1 shall continue to be
fully-paid, irrevocable and perpetual with respect to Caliper Know-How provided
to Amgen during the Term. The non-exclusive license granted to Amgen under
Section 4.2 shall continue to be royalty-free, irrevocable and perpetual with
respect to Caliper Technology and LabChip Improvements covered thereby.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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9. MISCELLANEOUS
9.1 NOTICES. Any consent, notice or report required or permitted to
be given or made under the Agreement by one party to the other party shall be in
writing, delivered personally or by confirmed facsimile, first class mail
postage prepaid, courier, or nationally-recognized delivery service, and
addressed to the other party at its address indicated below, or to such other
address as the addressee shall have last furnished in writing to the addresser.
Such consent, notice or report shall be effective upon delivery to the
addressee.
If to Caliper: Caliper Technologies Corp.
000 Xxxxxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000
ATTENTION: CHIEF OPERATING OFFICER
If to Amgen: Amgen Inc.
Xxx Xxxxx Xxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Senior Vice President, General Counsel and
Secretary
Copy to: Senior Vice President, Research
Facsimile: (000) 000-0000
9.2 GOVERNING LAW. The Agreement shall be governed by and construed
in accordance with the laws of the State of California, without regard to the
conflicts of law principles thereof. With respect to any dispute under this
Agreement, the parties submit to the exclusive jurisdiction of the courts of the
State of California (both state and federal).
9.3 ASSIGNMENT. This Agreement is personal in its character, and
neither party shall assign its rights or obligations under this Agreement, in
whole or in part, without the prior written consent of the other party;
provided, however, that either party may assign this Agreement (i) to any
successor by merger or sale of substantially all of the business assets of the
party or (ii) to any Affiliate so long as such Affiliate expressly agrees to be
bound by the terms of this Agreement. This Agreement shall be binding on and
inure to the benefit of the successors or permitted assigns of the parties
hereto, and all entities controlled by them.
9.4 WAIVERS AND AMENDMENTS. No change, modification, extension or
waiver of this Agreement, or any of the provisions herein contained, shall be
valid unless made in writing and signed by duly authorized representatives of
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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the parties hereto.
9.5 ENTIRE AGREEMENT. This Agreement embodies the entire
understanding between the parties and supersedes any prior understanding and
agreements between and among Caliper and Amgen with respect to the subject
matter of this Agreement.
9.6 SEVERABILITY. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any government or
other agency having jurisdiction over either party deems any provision to be
contrary to any laws, then that provision shall be severed and the remainder of
the Agreement shall continue in full force and effect. To the extent possible,
the parties shall revise such invalidated provision in a manner that will render
such provision valid without impairing the parties' original intent.
9.7 NO WAIVER. The failure of a party in any one or more instances to
insist upon strict performance of any of the terms and conditions of this
Agreement shall not constitute a waiver or relinquishment, to any extent, of the
right to assert or rely upon any such terms or conditions on any future
occasion.
9.8 DISCLAIMER OF AGENCY. The relationship between Caliper and Amgen
is that of independent contractors. Caliper and Amgen are not joint venturers,
partners, principal and agent, master and servant, employer or employee, and
have no other relationship other than independent contracting parties. Neither
party shall have the right or authority to assume, create, or incur any third
party liability or obligation of any kind, express or implied, against or in the
name of or on behalf of another except as expressly set forth in this Agreement.
9.9 COUNTERPARTS. The Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
9.10 USE OF TERMS. As used in Sections 1.3, 1.12, 2.7 and 4, the terms
"Amgen", "Caliper", "party" or "parties" shall also include it and their
employees, consultants, agents and Affiliates.
9.11 MISCELLANEOUS. In order for each party to fulfill its obligations
hereunder with respect to intellectual property and Confidential Information,
each party has or will have each of its relevant employees, consultants, agents
or Affiliates to execute agreements providing for the assignment of intellectual
property rights and for the protection of Confidential Information.
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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IN WITNESS WHEREOF, the parties have executed the Agreement as of the
date first set forth above.
CALIPER TECHNOLOGIES CORP. AMGEN INC.
By: /s/ Xxxxxx Xxxx By: /s/ Xxxxxx X. Xxxxxx
-------------------------- ---------------------------------------
Title: Chief Operating Officer Title: Chairman and Chief Executive Officer
----------------------- ------------------------------------
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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EXHIBIT A
1999 PROGRAM PLAN
The following program plan describes the experimental systems scheduled for
delivery and the technology developments scheduled to be demonstrated during
1999. [ * ].
[ * ]
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 133, AS AMENDED.
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