EXHIBIT 10.32
EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement (the "Agreement") is entered into as of
November 26, 2002 (the "Effective Date") by and between Matrix Technologies
Corporation, d/b/a Apogent Discoveries, a Delaware corporation, having a
principal place of business at 00 Xxxxxx Xxxxx, Xxxxxx, Xxx Xxxxxxxxx, 00000
("APOGENT"), and EXACT Sciences Corporation, a Delaware corporation having a
principal place of business at 00 Xxxxx Xxxx, Xxxxxxx, Xxxxxxxxxxxxx 00000
("EXACT").
In consideration of the mutual promises and conditions contained in this
Agreement, APOGENT and EXACT agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 "Affiliate" shall mean any company, corporation or other business entity
that is controlled by, controlling, or under common control with the
subject company, corporation or other business. For this purpose
"control" means direct or indirect beneficial ownership of at least
fifty percent (50%) interest in the voting stock (or the equivalent) of
the company, corporation or other business or having the right to
direct, appoint or remove a majority of members of its board of
directors (or their equivalents) or having the power to control the
general management of the company, corporation or other business, by law
or contract.
1.2 "APOGENT Technology" shall mean APOGENT's proprietary acrydite chemistry
technology described and claimed in the Licensed Patents. APOGENT
Technology expressly includes the Licensed Patents, Licensed Products,
and the Licensed Process.
1.3 "EXACT Inventions" shall mean (a) all inventions, and all modifications,
enhancements, changes, or improvements to APOGENT Technology that are
conceived or reduced to practice solely by EXACT in the course of
performing under this Agreement.
1.4 "EXACT Net Revenues" shall mean [CONFIDENTIAL TREATMENT REQUESTED]/*/
other than revenues received by EXACT from a Sublicensee, from
[CONFIDENTIAL TREATMENT REQUESTED]/*/
1.5 "Exclusive Field" shall mean [CONFIDENTIAL TREATMENT REQUESTED]/*/
1.6 "Non-Exclusive Field" shall mean any field, other than the Exclusive
Field, in which [CONFIDENTIAL TREATMENT REQUESTED]/*/ is employed.
1.7 [CONFIDENTIAL TREATMENT REQUESTED]/*/ shall mean EXACT's proprietary
[CONFIDENTIAL TREATMENT REQUESTED]/*/ technology [CONFIDENTIAL
TREATMENT REQUESTED]/*/as disclosed in the U.S. patents
and applications identified in Exhibit 1, all extensions thereof, and
all reissue, reexamination, continuation, continuation-in-part,
divisional, and foreign patents relating thereto.
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1.8 "Licensed Patents" shall mean, individually and collectively, (i) the
U.S. patent(s) identified on Exhibit 2, attached hereto, and any
reissues, reexaminations, and extensions thereof, and all foreign
patents or applications corresponding to any of the foregoing; (ii) the
U.S. patent applications identified on Exhibit 2, and all foreign
patents or applications corresponding thereto; (iii) all
non-provisional, continuation, continuation-in part, divisional and
foreign applications that claim the priority, either directly or
indirectly, to any Licensed Patents described in subsection (i) or (ii)
above; and (iv) all United States and foreign patents issued on the
Licensed Patents described in subsection (ii) or (iii) above, and all
reissues, reexaminations and extensions thereof.
1.9 "Licensed Process" shall mean a process that, but for this license
Agreement, would infringe a valid and enforceable claim in the Licensed
Patents.
1.10 "Licensed Product" shall mean any product that is manufactured in
reliance on the Licensed Process and that, but for this license
Agreement, would infringe a valid and enforceable claim in the Licensed
Patents.
1.11 "Party" or "Parties" shall mean APOGENT and/or EXACT, as the context
requires.
1.12 "Result" means a test result per single patient derived from the use of
a Licensed Product or the application of a Licensed Process. In
determining the number of "Results" that are comprised in a kit that
includes one or more Licensed Products or is to be used as part of a
Licensed Process, the Results for purposes of this Agreement shall be
that number of results or patient applications specified in the product
labeling or inserts for such kit.
1.13 "Sublicensee" shall mean any entity to which EXACT has granted a
sublicense of some or all of the rights conveyed to EXACT under this
Agreement.
1.14 "Sublicensee Net Revenues" shall mean [CONFIDENTIAL TREATMENT
REQUESTED]/*/
ARTICLE 2 - GRANT OF LICENSES; OWNERSHIP
2.1 EXCLUSIVE LICENSE GRANT. Subject to the terms and conditions of this
Agreement, APOGENT grants to EXACT an exclusive, worldwide,
royalty-bearing license under the Licensed Patents in the Exclusive
Field, for use , to make, have made, use, offer to sell, sell and import
Licensed Products and Licensed Processes. This license granted hereunder
shall be exclusive, even as to APOGENT, within the Exclusive Field
during the Term of this Agreement and shall include the right to
sublicense as herein provided. This exclusive license may be converted
to a non-exclusive license in accordance with Section 9.1 hereof.
2.2 NON-EXCLUSIVE LICENSE GRANT. Subject to the terms and conditions of this
Agreement, APOGENT grants to EXACT a non-exclusive, worldwide,
royalty-bearing license under the Licensed Patents in the Non-Exclusive
Field, with the
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right to sublicense as herein provided to make, have made, use, offer to
sell, sell and import Licensed Products or Licensed Processes..
2.3 SUBLICENSING. EXACT shall have the right to sublicense the rights
granted in Paragraph 2.1 and Paragraph 2.2 above solely for use with
EXACT's [CONFIDENTIAL TREATMENT REQUESTED]/*/ to a Sublicensee, provided
however, that no such sublicense shall be effective until the
Sublicensee executes a written agreement with respect to which APOGENT
is a named third-party beneficiary whereby the Sublicensee is bound,
with respect to the license of the Licensed Process and the manufacture
and sale of the Licensed Products, to terms that do not materially
differ from the terms of this Agreement.
2.4 OWNERSHIP.
2.4.1 EXACT OWNERSHIP. The Parties hereby acknowledge and agree that
EXACT shall own and retain all right, title and interest in and
to all EXACT Inventions.
2.4.2 PRE-EXISTING TECHNOLOGY. All technology and intellectual
property rights owned by a Party as of the Effective Date shall
remain the property of such Party. Without limiting the
foregoing, APOGENT shall be the sole owner of the APOGENT
Technology, subject to the license granted hereby and such other
licenses as APOGENT may, in its discretion, grant from time to
time, and EXACT shall be the sole owner of the [CONFIDENTIAL
TREATMENT REQUESTED]/*/ subject to the such licenses as EXACT
may, in its discretion, grant from time to time. Neither party
shall reverse engineer, copy or use the technology or inventions
of the other party except as expressly contemplated by and
permitted under this Agreement.
2.4.3 NO IMPLIED LICENSES. Nothing in this Agreement shall be
construed as granting any Party any right or license under any
intellectual property rights, trademarks, or service marks of
any other Party by implication, estoppel or otherwise, except as
expressly provided otherwise in this Agreement.
ARTICLE 3 - ROYALTIES
3.1 ROYALTIES. During the Term, EXACT shall pay APOGENT royalties on the
sale of the Licensed Process or a Licensed Product on a quarterly basis
as follows:
3.1.1 [CONFIDENTIAL TREATMENT REQUESTED]/*/ of EXACT Net Revenues
received by EXACT during the applicable quarter, however, such
royalty shall never be less than [CONFIDENTIAL TREATMENT
REQUESTED]/*/
3.1.2 [CONFIDENTIAL TREATMENT REQUESTED]/*/ of each Sublicensee Net
Revenues, with respect to which royalties are payable to, and
received by EXACT during the applicable quarter, however, such
royalty shall never be less than [CONFIDENTIAL TREATMENT
REQUESTED]/*/.
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EXACT shall pay royalties due with respect to each calendar quarter
hereunder within [CONFIDENTIAL TREATMENT REQUESTED]/*/
3.2 [CONFIDENTIAL TREATMENT REQUESTED]/*/ EXACT shall not be required to
[CONFIDENTIAL TREATMENT REQUESTED]/*/. EXACT shall have primary
obligation to [CONFIDENTIAL TREATMENT REQUESTED]/*/ however, APOGENT
shall have the right to [CONFIDENTIAL TREATMENT REQUESTED]/*/. APOGENT's
right to [CONFIDENTIAL TREATMENT REQUESTED]/*/ under this Section 3.2
shall only apply in instances where [CONFIDENTIAL TREATMENT
REQUESTED]/*/.
ARTICLE 4 - ROYALTY REPORTS; RECORDS
4.1 ROYALTY REPORTS. Within [CONFIDENTIAL TREATMENT REQUESTED]/*/ during the
Term, EXACT shall deliver to APOGENT the royalty payment due pursuant to
Section 3.1 hereof and a corresponding royalty report relating to the
preceding calendar quarter. Each report shall include the following:
(a) Deductions applicable to determining Net Revenues and
Sublicensee Net Revenues during the relevant calendar quarter;
and
(b) Total royalties due to APOGENT for the calendar quarter.
With each report, EXACT shall pay to APOGENT the royalties due
and payable for such calendar quarter.
4.2 RECORD KEEPING.
4.2.1 BOOKS AND RECORDS. EXACT shall keep true books of account in
accordance with EXACT's own document retention policies relating
to Net Revenues, Sublicensee Net Revenues and Licensed Product
use manufacture and sale by EXACT and each Sublicensee. Such
books and records shall be in accordance with generally accepted
accounting principles consistently applied. EXACT shall keep
such records at its principal place of business.
4.2.2 INSPECTIONS. Upon ten (10) business days' prior written notice
to EXACT, APOGENT may, at APOGENT's own expense, have EXACT's
books and records inspected by a certified public accountant
selected by APOGENT and reasonably acceptable to EXACT. Such
inspections shall be during regular business hours and shall not
be made more than once each calendar year, except in the case of
misreported royalties, Net Revenues or Sublicensee Net Revenues.
In conducting inspections under this paragraph 4.2.2, APOGENT's
accountant may have access to only those records which are
reasonably relevant to calculating royalties owed to APOGENT
under Article 3. APOGENT shall bear the cost of any inspection
under this Article 4.2.2, unless the inspection shows an
underreporting or underpayment by any entity in excess of five
percent
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(5%) for any twelve month period, in which case EXACT shall pay
the cost of the inspection as well as any additional sum due to
APOGENT.
4.3 FORM OF PAYMENTS. EXACT shall make all payments due under this Agreement
by check or wire transfer in United States funds.
4.4 CURRENCY CONVERSION. If any currency conversion is required in
connection with any payment to APOGENT under this Agreement (for
example, with respect to Sublicensee Net Revenues), the conversion will
be made at the buying rate for the transfer of such other currency as
quoted by THE WALL STREET JOURNAL, Eastern Edition, on the last business
day of each calendar quarter in which such payments are accrued.
4.5 INTEREST. Any payment due to APOGENT under this Agreement that is not
made when due will accrue interest beginning on the first day following
the due date. The interest shall be compounded at the rate of one and
one-half percent (1 1/2%) per month, compounded monthly until such
overdue payment is received by APOGENT.
ARTICLE 5 - CONFIDENTIALITY
5.1 CONFIDENTIAL INFORMATION. During the Term, the Parties may exchange
information from time to time that they consider to be confidential.
"Confidential Information" hereunder shall, subject to Article 5.3, mean
the substance of this Agreement and any information or materials that
are disclosed by one Party (the "Discloser") to another Party (the
"Recipient") whether orally, visually, or in tangible form, and all
copies thereof. Tangible materials that disclose or embody Confidential
Information shall be marked by Discloser as "Confidential,"
"Proprietary" or the substantial equivalent thereof. Confidential
Information that is disclosed orally or visually shall be identified by
Discloser as confidential at the time of disclosure and reduced to a
written summary by Discloser, which shall xxxx such summary as
"Confidential," "Proprietary" or the substantial equivalent thereof, and
deliver it to Recipient by the end of the month following the month in
which disclosure occurs. Such information shall be treated as
Confidential Information pending receipt of such summary.
5.2 TREATMENT OF CONFIDENTIAL INFORMATION. The Recipient of Confidential
Information shall employ all reasonable efforts to maintain the secrecy
and confidentiality of such Confidential Information, such efforts to be
no less than the degree of care employed by the Recipient to preserve
and safeguard its own Confidential Information. The information shall
not be disclosed or revealed to anyone except employees of the Recipient
who have a need to know the information and who have entered into a
secrecy agreement with the Recipient under which such employees are
required to maintain confidential the proprietary information of the
Recipient and such employees shall be advised by the Recipient of the
confidential nature of the Confidential Information and that the
Confidential Information shall be treated accordingly. Each Sublicensee
shall be bound, as a Recipient, not to disclose the Confidential
Information of APOGENT, whether such Confidential Information is
provided by APOGENT or by EXACT;
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and both the Sublicensee and EXACT shall be jointly and severally liable
for any breach of such obligation by the Sublicensee.
5.3 EXCEPTIONS. The Recipient's obligations under this Article 5 shall not
extend to any part of the information that:
(i) can be demonstrated to have been in the public domain or
publicly known prior to the date of the disclosure; or
(ii) can be demonstrated from written records to have been in
the Recipient's possession or readily available to the
Recipient from another source not under obligation of
secrecy to the Discloser prior to the disclosure; or
(iii) becomes part of the public domain or publicly known other
than as a result of any unauthorized act by the Recipient;
or
(iv) is demonstrated from contemporaneous written records to
have been developed by or for the Recipient without
reference to confidential information disclosed by the
Discloser; or
(v) is required to be disclosed by law, government regulation
or court order.
However, the exception set forth in Section 5.3(v) shall only apply if,
prior to making any legally required disclosure of the Discloser's
Confidential Information, the Recipient notifies the Discloser and
affords the Discloser a reasonable opportunity to defend against or
limit such required disclosure.
5.4 INJUNCTION. In view of the difficulties of placing a monetary value on
the Confidential Information, the Discloser shall be entitled to a
preliminary and final injunction without the necessity of posting any
bond or undertaking in connection therewith to prevent further breach of
this Article 5 or further unauthorized use of its Confidential
Information. This remedy is separate from any other remedy the Discloser
may have.
5.5 TREATMENT UPON TERMINATION OF THE AGREEMENT. Upon the expiration or
termination, for any reason, of this Agreement, or upon the demand of
the Discloser at any time, Recipient shall return promptly to Discloser
or destroy, at Discloser's option, all tangible materials that disclose
or embody Confidential Information of the Discloser.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.1 APOGENT REPRESENTATIONS AND WARRANTIES. APOGENT hereby represents and
warrants to EXACT that:
6.1.1 APOGENT is a corporation duly organized and validly existing
under the name "Matrix Technologies Corporation" in the State of
Delaware, and has all requisite power and authority to execute,
deliver and perform its
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obligations under this Agreement and to consummate the
transactions contemplated hereby;
6.1.2 This Agreement does not contravene or constitute a default under
or violation of any provision of applicable law binding upon
APOGENT or any agreement, commitment, instrument or other
arrangement to which APOGENT is a party;
6.1.3 To the knowledge of APOGENT, all necessary consents, approvals
and authorizations of all governmental authorities and other
persons required to be obtained in connection with entry into
this Agreement have been obtained;
6.1.4 APOGENT is in possession of and has conveyed in this Agreement
all rights necessary for EXACT to practice and obtain the full
benefit of the licenses granted to EXACT hereunder;
6.1.5 To the knowledge of APOGENT, the use contemplated by this
Agreement of the Licensed Process licensed hereby neither
infringes nor violates any patent, copyright, trade secret,
trademark or other proprietary right of any third party; and
6.1.6 To the knowledge of APOGENT, there is no reason that the
Licensed Patents are invalid or unenforceable
6.2 EXACT REPRESENTATIONS AND WARRANTIES. EXACT hereby represents and
warrants to APOGENT that:
6.2.1 EXACT is a corporation duly organized and validly existing under
the laws of the State of Delaware and has all requisite
corporate power and authority to execute, deliver and perform
its obligations under this Agreement and to consummate the
transactions contemplated hereby; and
6.2.2 This Agreement does not contravene or constitute a default or
violation of any provision of applicable law binding upon EXACT
or any agreement, commitment or instrument to which EXACT is a
party.
ARTICLE 7 - INDEMNIFICATION
7.1 INDEMNITY BY APOGENT. APOGENT shall indemnify, hold harmless and defend
EXACT from and against any and all liability, damage, loss, cost or
expense (including reasonable attorney's fees) incurred by or imposed
upon EXACT in connection with any claims, suits, actions, demands,
proceedings, causes of action or judgments resulting from or arising out
of [CONFIDENTIAL TREATMENT REQUESTED]/*/. EXACT shall promptly notify
APOGENT of any such claim(s) of which EXACT is aware. APOGENT
[CONFIDENTIAL TREATMENT REQUESTED]/*/ shall [CONFIDENTIAL TREATMENT
REQUESTED]/*/ provided, however, that EXACT shall have the right to
[CONFIDENTIAL TREATMENT REQUESTED]/*/. In addition, EXACT shall have the
right to [CONFIDENTIAL TREATMENT REQUESTED]/*/. EXACT agrees to provide
APOGENT with [CONFIDENTIAL TREATMENT
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REQUESTED]/*/. In the event a third-party asserts a claim for which
EXACT may seek indemnification under this Section 7.1, APOGENT shall
have the right to [CONFIDENTIAL TREATMENT REQUESTED]/*/. Further,
APOGENT shall have no obligation to [CONFIDENTIAL TREATMENT
REQUESTED]/*/. The obligation of APOGENT to [CONFIDENTIAL TREATMENT
REQUESTED]/*/.
7.2 INDEMNITY BY EXACT. EXACT shall indemnify, hold harmless and defend
APOGENT from and against any and all liability, damage, loss, cost or
expense (including reasonable attorney's fees) incurred by or imposed
upon APOGENT in connection with any claims, suits, actions, demands,
proceedings, causes of action or judgments resulting from or arising out
of [CONFIDENTIAL TREATMENT REQUESTED]/*/. APOGENT shall promptly notify
EXACT of any such claim(s) of which APOGENT is aware. EXACT
[CONFIDENTIAL TREATMENT REQUESTED]/*/ shall [CONFIDENTIAL TREATMENT
REQUESTED]/*/ provided, however, that APOGENT shall have the right to
[CONFIDENTIAL TREATMENT REQUESTED]/*/. In addition, APOGENT shall have
the right to [CONFIDENTIAL TREATMENT REQUESTED]/*/ APOGENT agrees to
provide EXACT with [CONFIDENTIAL TREATMENT REQUESTED]/*/.
ARTICLE 8 - DISCLAIMER OF WARRANTIES
8.1 NO OTHER WARRANTIES. EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER PARTY
MAKES ANY WARRANTIES WITH RESPECT TO THE LICENSED PRODUCTS AND DISCLAIMS
ALL OTHER WARRANTIES AND CONDITIONS, EXPRESS OR IMPLIED, INCLUDING THOSE
OF MERCHANTABILITY, AND FITNESS FOR A PARTICULAR PURPOSE, OR ARISING
FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICE, TO THE EXTENT
PERMITTED BY APPLICABLE LAW.
8.2 LIMITATION OF LIABILITY. EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER
PARTY SHALL BE LIABLE TO THE OTHER PARTY WITH RESPECT TO MATTERS ARISING
UNDER OR CONTEMPLATED BY THIS AGREEMENT FOR ANY INDIRECT, SPECIAL,
CONSEQUENTIAL, PUNITIVE, EXEMPLARY OR INCIDENTAL DAMAGES OF WHATEVER
KIND AND HOWEVER CAUSED (INCLUDING WITHOUT LIMITATION, DAMAGES FOR
INTERRUPTION OF BUSINESS, PROCUREMENT OF SUBSTITUTE GOODS, LOSS OF
PROFITS, OR THE LIKE) REGARDLESS OF THE FORM OF ACTION WHETHER IN
CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT PRODUCT LIABILITY OR ANY
OTHER LEGAL OR EQUITABLE THEORY EVEN IF SUCH PARTY HAS BEEN ADVISED OF
THE POSSIBILITY OF SUCH DAMAGES.
ARTICLE 9 - TECHNOLOGY EXCLUSIVITY
9.1 USE AND SUBLICENSING IN CONNECTION WITH [CONFIDENTIAL TREATMENT
REQUESTED]/*/ Commencing on the date on which any Result is first
obtained for cash consideration and continuing throughout the Term ,
EXACT shall not
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[CONFIDENTIAL TREATMENT REQUESTED]/*/ without relying on the Licensed
Process. However, if EXACT [CONFIDENTIAL TREATMENT REQUESTED]/*/ then
the exclusive license granted pursuant to Section 2.1 shall be converted
to a non-exclusive license. Similarly, commencing on the date on which
any Result is first obtained for cash consideration and continuing
throughout the Term, EXACT shall not [CONFIDENTIAL TREATMENT
REQUESTED]/*/ without also requiring such third-party to become a
Sublicensee hereunder and license the Licensed Process on terms that do
not materially differ from the terms of this Agreement.
ARTICLE 10 - TERM AND TERMINATION
10.1 TERM. This Agreement shall commence on the Effective Date and shall
remain effective for a period of [CONFIDENTIAL TREATMENT REQUESTED]/*/
unless earlier terminated as provided by this Agreement (the "Term").
This Agreement shall automatically be renewed for two successive periods
of five years each (such renewal period also part of the "Term"), unless
at least six months prior to the expiration of the then current Term or
renewal Term, EXACT notifies APOGENT in writing of its desire to
terminate this Agreement at the end of the then current Term or renewal
Term. Thereafter, this Agreement shall automatically be renewed for a
successive periods of one year each (each such renewal period also part
of the "Term"), unless at least six months prior to the expiration of
the then current renewal Term, one party notifies the other in writing
of its desire to terminate this Agreement at the end of the then current
Term.
10.2 TERMINATION FOR BREACH. Either Party may terminate this Agreement if the
other Party materially breaches its obligations hereunder, and such
breach is not cured within sixty (60) days after written noticed thereof
to such other Party.
10.3 EFFECT OF TERMINATION. Upon early termination of this Agreement for any
reason, EXACT shall notify each Sublicensee of the termination and
APOGENT shall have the right, upon the Sublicensee's delivery to APOGENT
no later than thirty days after the termination date of a written
request for continuation of the Sublicensee's sublicense. Upon receipt
of such request and receipt of proof from the Sublicensee, if reasonably
requested by APOGENT, of the Sublicensee's ability to pay APOGENT
royalties when due, Apogent will continue the Sublicensee's sublicense
for the period equal to the shorter of the unexpired term of this
Agreement or the unexpired term of the Sublicensee's sublicense from
EXACT on condition that such Sublicensee remains in compliance with the
terms and conditions of its sublicense agreement, and continues its
payment obligations directly to APOGENT.
10.4 SURVIVAL. The following Articles shall survive the termination of this
Agreement for any reason: Articles 1, 2.4, 5-8, 10.3, 10.4, 11 and 12.
ARTICLE 11 - DISPUTE RESOLUTION
11.1 DISPUTE RESOLUTION. If a dispute arises between the Parties relating to
(i) the interpretation or performance of the Agreement; or (ii) the
grounds for the
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termination of the Agreement, the Parties agree to convene a Dispute
Resolution Committee (the "Committee"), consisting of two EXACT
representatives with decision-making authority and two APOGENT
representatives with decision-making authority to attempt in good faith
to negotiate a resolution of the dispute prior to pursuing other
available remedies. Either Party may request the convening of a
Committee by written notice to the other Party. A Committee shall
convene for an initial meeting within forty-five (45) days of such
written notice. If the Parties have not succeeded in negotiating a
resolution of the dispute, within thirty (30) days after the initial
meeting of the Committee, the dispute shall be submitted for binding
arbitration under the then current Commercial Rules of the American
Arbitration Association ("AAA").
11.2 Any arbitration under this Article 11 shall be held in Boston,
Massachusetts. The Parties shall select three (3) arbitrators from a
list of seven (7) arbitrators provided by the AAA. The Parties shall
bear the costs of the arbitration equally unless the arbitrators,
pursuant to their right, but not their obligation, require the
non-prevailing Party to bear all or any unequal portion of the
prevailing Party's costs. The arbitrators shall make decisions in
accordance with applicable Federal and Massachusetts law and the factual
evidence presented. The decision of the arbitrators shall be final and
may be sued on or enforced by the Party in whose favor it runs in any
court of competent jurisdiction at the option of the successful Party.
The arbitrators will be instructed to prepare and deliver a written,
reasoned opinion conferring their decision. The rights and obligations
of the Parties to arbitrate any dispute relating to the interpretation
or performance of this Agreement or the grounds for the termination
thereof shall survive the expiration or termination of this Agreement
for any reason. Nothing in this Agreement prevents either Party from
seeking equitable relief at any time to prevent irreparable harm or for
specific enforcement of the terms of this Agreement, except that no
equitable relief shall be sought to prevent or avoid arbitration under
the terms of this Agreement.
ARTICLE 12 - MISCELLANEOUS
12.1 NOTICES TO APOGENT. Unless otherwise specified in this Agreement,
reports, notices and other communications from EXACT to APOGENT as
provided hereunder must be sent to:
Apogent Discoveries
00 Xxxxxx Xxxxx
Xxxxxx, Xxx Xxxxxxxxx 00000
Attention: President
WITH A COPY TO:
Apogent Technologies Inc.
Office of General Counsel
00 Xxxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxxxxxxx 00000
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or other individuals or addresses as APOGENT subsequently furnish by
written notice to EXACT.
12.2 NOTICES TO EXACT. Unless otherwise specified in this Agreement, reports,
notices and other communications from APOGENT to EXACT as provided
hereunder must be sent to:
EXACT Sciences Corporation
00 Xxxxx Xxxx
Xxxxxxx, XX 00000
With a copy to:
Xxxxxx X. Xxxxxx
Xxxxx, Xxxxxxx & Xxxxxxxxx, LLP
000 Xxxx Xxxxxx
Xxxxxx, XX 00000
or other individuals or addresses as EXACT subsequently furnish by
written notice to APOGENT.
12.3 INDEPENDENT CONTRACTORS. The Parties agree that, in the performance of
this Agreement, they are and shall be independent contractors. Nothing
herein shall be construed to constitute a partnership or joint venture
between the Parties nor shall any Party be construed as the agent of any
other Party for any purpose whatsoever, and no Party shall bind or
attempt to bind any other Party to any contract or the performance of
any obligation, or represent to any third party that it has any right to
enter into any binding obligation on the other Party's behalf.
12.4 SEVERABILITY. If any one or more of the provisions of this Agreement is
held to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this Agreement will not in
any way be affected or impaired thereby.
12.5 NON-ASSIGNABILITY. Neither this Agreement nor any part of the Agreement
is assignable by either Party without the express written consent of the
other Party, which shall not be unreasonably withheld, delayed or
conditioned. Notwithstanding any of the foregoing, either Party may
assign this Agreement and its rights and obligations hereunder, without
the consent of the other Party, to an acquirer of all or substantially
all of such Party's business or assets, whether by merger, sale,
acquisition or other change of control transaction. This Agreement shall
be binding upon and inure to the benefit of the Parties hereto and their
respective successors and assigns.
12.6 ENTIRE AGREEMENT. This instrument contains the entire Agreement between
the Parties. No verbal agreement, conversation or representation between
any officers, agents, or employees of the Parties either before or after
the execution of
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this Agreement may affect or modify any of the terms or obligations
herein contained.
12.7 MODIFICATIONS IN WRITING. No change, modification, extension, or waiver
of this Agreement, or any of the provisions herein contained is valid
unless made in writing and signed by a duly authorized representative of
each Party.
12.8 GOVERNING LAW. The validity and interpretation of this Agreement and the
legal relations of the Parties to it are governed by the laws of the
Commonwealth of Massachusetts without regard to any choice of law
principal that would dictate the application of the law of another
jurisdiction. The Parties agree that any legal action arising out of or
in connection with this Agreement shall be brought in the federal or
state courts of Massachusetts, and the Parties irrevocably submit for
all purposes to the jurisdiction of each such court.
12.9 CAPTIONS. The captions are provided for convenience and are not to be
used in construing this Agreement.
12.10 COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall be deemed an original and all of which when taken together
shall be deemed but one instrument.
12.11 FORCE MAJEURE. If either Party fails to fulfill its obligations
hereunder (other than an obligation for the payment of money), when such
failure is due to an act of God, or other circumstances beyond its
reasonable control, including but not limited to fire, flood, civil
commotion, riot, war (declared and undeclared), acts of terrorism,
revolution, or embargoes, then said failure shall be excused for the
duration of such event and for such a time thereafter as is reasonable
to enable the Parties to resume performance under this Agreement.
IN WITNESS WHEREOF, the Parties hereto have caused this agreement to be executed
in quadruplicate by their duly authorized representatives as of the date first
above written.
APOGENT DISCOVERIES EXACT SCIENCES CORPORATION
By: /s/ R. Xxxxxxxx Xxxxx By: /s/ Xxxxxxx X. Xxxxx
----------------------------------- -------------------------------
Name: R. Xxxxxxxx Xxxxx Name: Xxxxxxx X. Xxxxx
Title: Executive Vice President - Sales Title: Vice President, Business
Development
Date: November 26, 2002 Date: November 26, 2002
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EXHIBIT 1
[CONFIDENTIAL TREATMENT REQUESTED]/*/ PATENTS
United States Patent Application Serial Number [CONFIDENTIAL TREATMENT
REQUESTED]/*/
United States Patent Application Serial Number [CONFIDENTIAL TREATMENT
REQUESTED]/*/
United States Patent No.[CONFIDENTIAL TREATMENT REQUESTED]/*/ United States
Patent Application Serial Number [CONFIDENTIAL TREATMENT REQUESTED]/*/
United States Patent No[CONFIDENTIAL TREATMENT REQUESTED]/*/
United States Patent Application Serial Number [CONFIDENTIAL TREATMENT
REQUESTED]/*/
United States Patent Application Serial Number [CONFIDENTIAL TREATMENT
REQUESTED]/*/
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EXHIBIT 2
LICENSED PATENTS
UNITED STATES PATENTS:
---------------------
[CONFIDENTIAL TREATMENT REQUESTED]/*/
and all divisionals, continuations in part, or foreign counter parts thereto,
and any and all future patents owned or controlled Apogent, under which Company
would require a license to manufacture or use [CONFIDENTIAL TREATMENT
REQUESTED]/*/
FOREIGN PATENTS/APPLICATIONS:
[CONFIDENTIAL TREATMENT REQUESTED]/*/
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