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EXHIBIT 10.20
[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.]
SETTLEMENT AND LICENSE AGREEMENT &
AGREEMENT OF DISMISSAL WITH PREJUDICE
THIS SETTLEMENT AND LICENSE AGREEMENT & AGREEMENT OF DISMISSAL WITH
PREJUDICE ("Agreement") is made as of September 6, 1996 ("Effective Date"), by
and between Biosite Diagnostics, Inc., a Delaware corporation, having an office
and principal place of business at 00000 Xxxxxxx Xxxxxx, Xxx Xxxxx, Xxxxxxxxxx
00000 ("Biosite") and Xxxxxx Laboratories, an Illinois corporation, having an
office and principal place of business at 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx,
Xxxxxxxx 00000 ("Abbott").
WHEREAS, on May 5, 1994, Abbott filed a patent infringement suit
against Biosite in the United States District Court for the Northern District of
Illinois, with respect to United States Patent No. 5,073,484 (Case No. 94 C
2808);
WHEREAS, Biosite and Abbott wish to resolve the issues relating to such
action.
NOW, THEREFORE, in consideration of the mutual promises and obligations
set forth herein, Abbott and Biosite agree as follows;
ARTICLE I - DEFINITIONS
For purposes of this Agreement, the following definitions shall apply:
1.01 The term "Action" means the action presently pending in the
United States District Court for the Northern District of Illinois, Xxxxxx
Laboratories v. Biosite Diagnostics, Inc., bearing the Case Number 94 C 2808.
1.02 The term "Affiliate" means with respect to a party, any other
business entity which directly or indirectly controls, is controlled by, or is
under common control with, such party. A business entity or party shall be
regarded as in control of another business entity if it owns, or directly or
indirectly controls, more than fifty percent (50%) of the voting stock or other
ownership interest of the other business entity.
1.03 The term "Combination Product" means a Product that is sold in
combination with one or more other products which have commercial utility other
than use in combination with a Product.
1.04 The term "DOA Diagnostics Field" means the following field:
the detection and measurement of drugs of abuse in human source materials.
1.05 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Diagnostics Field" means the following field: the
detection and measurement of substances in materials not included in the
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Diagnostics Field, the DOA Diagnostics Field, the Non-DOA Human Diagnostics
Field or the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] Diagnostics Field.
1.06 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Diagnostics Field" means the following field: the detection
and measurement of substances in [CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION], including but not limited to [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] and the like.
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1.07 The term "Net Sales" means:
(A) the gross invoiced price for all Products sold or otherwise
transferred for tangible value by Biosite or its Affiliates or its sublicensees
(to the extent authorized under this Agreement) in arm's length transactions to
unrelated third parties for monetary or other valuable consideration, less
deductions for:
(i) quantity, trade and cash discounts or rebates, credits
or allowances and adjustments separately and actually credited to customers for
rejections and returns of Products;
(ii) charges for freight, postage, transportation, import
or export taxes, excise taxes and other similar taxes, insurance and other
delivery costs not otherwise charged to the customer; and
(iii) any tax or other government charges imposed on the
sale or use of Products (other than income tax) levied on its sale,
transportation or delivery and borne by Biosite or its Affiliates or its
sublicensees (to the extent authorized under this Agreement).
(B) With respect to Combination Products, the gross invoiced
price of such Combination Products billed to customers by Biosite or its
Affiliates or its sublicensees (to the extent authorized under this Agreement),
less: the allowances and adjustment referred to in subparagraph (A) above,
multiplied by a fraction the numerator of which shall be the gross selling price
of the Product as sold separately and the denominator of which shall be the sum
of the gross selling price(s) of each of the other products having commercial
utility in the Combination Product including the Product. If there is no
established current gross selling price for the Product or for other products
having commercial utility, then for purposes of calculating Net Sales the
standard costs in accordance with Generally Accepted Accounting Principles
("GAAP") of manufacturing of the Product with the other products having
commercial utility shall be used to determine the percentage of sales
attributable to Product.
(C) In the event that a Product sold by Biosite or its
Affiliates or its sublicensees (to the extent authorized under this Agreement)
is increased in price to include an amount to cover the amortized cost of an
instrument system and/or other equipment supplied to a customer by Biosite or
its Affiliates under a Reagent Agreement Plan, Reagent Rental Plan, or other
successor or similar plan (collectively referred to herein as "RAP"), the
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Net Sales for such Product on which royalty shall be calculated shall be
determined by reducing the total Net Sales of such Product (including the total
of sale of Product and instrument system RAP) by the amount of the price
increase attributable to RAP, in accordance with accounting procedures
consistent with GAAP, provided the minimum amount attributable to the Net Sales
of the Product shall be no less than the per unit current retail selling price
of the Product as sold alone to non-RAP customers.
1.08 The term "Non-DOA Human Diagnostics Field" means the following
field: the detection and measurement of substances in human source materials,
excluding the DOA Diagnostics Field.
1.09 The term "Patents" means (A) U.S. Patent No. 5,073,484 and
equivalent foreign patents or patent applications, as set forth in the attached
Exhibit A, and (B) all divisions, continuations, continuations-in-part,
reexaminations, reissues, additions, renewals and extensions of such patents.
1.10 The term "Product" means any rapid immunoassay devices (including
but not limited to those using the Triage(R) platform) which are manufactured
and sold by Biosite or its Affiliates or its sublicensees (to the extent
authorized under this Agreement) on the Effective Date or thereafter, and which
fall within the scope of the claims of any of the Patents or would infringe the
claims of any of the Patents but for the licenses granted under Section 3.01.
1.11 The term "Valid Claim" shall mean a claim of an issued and
unexpired Patent which neither has been held unenforceable or invalid by a
decision of a court or governmental agency of competent jurisdiction,
unappealable or unappealed within the time allowed for appeal, nor has been
admitted by the holder of the Patent to be invalid or unenforceable through
reissue, reexamination, disclaimer, abandonment or otherwise.
1.12 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Diagnostics Field" means the following field: the detection
and measurement of substances in [CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION].
ARTICLE II - RELEASE AND CONCLUSION OF CONTROVERSIES
2.01 As of the Effective Date, Abbott releases and forever discharges
Biosite and its Affiliates, and their respective agents, attorneys, directors,
officers and employees, from any and all claims and demands whatsoever in law
and equity, whether now known or unknown, arising from any infringement or
alleged infringement of one or more claim of any Patents by Biosite or its
Affiliates occurring prior to the Effective Date or arising out of or relating
to the Action or any claims or allegations asserted in the Action, except to the
extent any such claims and demands relate to the manufacture, sale or use of
Products in the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] Diagnostics Field after the Effective Date.
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2.02 As of the Effective Date, Biosite releases and forever discharges
Abbott and its Affiliates, and their respective agents, attorneys, directors,
officers and employees, from any and all claims and demands whatsoever in law
and equity, whether now known or unknown, arising out of or relating to the
Action or any claims or allegations asserted in the Action.
2.03 The parties shall enter into and promptly submit to the United
States District Court for the Northern District of Illinois ("Court") a Joint
Stipulation and Order of Dismissal in the form attached as Exhibit B. The
parties shall take all necessary steps to secure the entry of the Joint
Stipulation and Order of Dismissal. The Action will be finally terminated by the
entry of the Joint Stipulation and Order of Dismissal and no appeal shall be
taken by any party from such Order. This Agreement shall not be filed with the
Court.
2.04 Abbott and Biosite each expressly waives any right or claim it may
have to recover from the other party court costs or attorneys' fees arising from
or in connection with the Action.
2.05 The Protective Order entered in the Action, a copy of which is
attached as Exhibit C, shall remain in full force and effect indefinitely, and
Biosite and Abbott each shall continue to comply with its terms upon the
termination of the Action.
ARTICLE III - LICENSE GRANT
3.01 (A) Upon the date of receipt by Abbott of the sum set forth in
Section 4.01 hereof, Abbott, as of the Effective Date, grants to Biosite and
its Affiliates a fully paid-up, worldwide, non-exclusive license under the
Patents, to make, have made, use, import, offer to sell, sell and have sold
Products in the DOA Diagnostics Field, subject to the terms of Articles VI
and VII hereof.
(B) As of the Effective Date, Abbott also grants to Biosite and
its Affiliates a royalty-bearing (at the rate specified in Section 4.03),
worldwide, non-exclusive license under the Patents to make, have made, use,
import, offer to sell, sell and have sold Products in the Non-DOA Human
Diagnostics Field, subject to the terms of Articles VI and VII hereof.
(C) As of the Effective Date, Abbott also grants to Biosite and
its Affiliates a royalty-bearing (at the rate specified in Section 4.04),
worldwide, non-exclusive license under the Patents to make, have made, use,
import, offer to sell, sell and have sold Products in the [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Diagnostic Field and the
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Diagnostics Field, subject to the terms of Articles VI and VII hereof.
(D) Biosite and its Affiliates shall not have the right to grant
sublicenses to any third party under the licenses granted pursuant to Section
3.01(A), (B) or (C), except as provided in Section 3.01(E) and (F) below.
(E) Biosite and its Affiliates shall have the right to grant
sublicenses (without the right to grant further sublicenses) to one or more
third parties under the licenses granted pursuant to Section 3.01(A), (B) and
(C), only if all of the following requirements are met for each such sublicense:
(I) Such sublicense shall be granted only to a third party
collaborator of Biosite in conjunction with a collaborative research and
development relationship between Biosite and such party in which Biosite
retains primary responsibility for either development or manufacturing or
distribution of Products developed under such collaborative relationship
("Collaborative Products") and such sublicense shall only apply to
Collaborative Products.
(II) Such sublicense shall be in writing, shall be
consistent with the terms of this Agreement, and shall provide Abbott with
audit rights for the sublicensee's books of account to the same extent as
Abbott has audit rights for Biosite's books of account pursuant to Section 4.07.
(III) Such sublicense shall be royalty-bearing in all
fields, with the following royalties being payable to Abbott based on the
sublicensee's Net Sales to end-users of Collaborative Products at the following
rates: (a) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] of Net Sales in the DOA Diagnostics Field and the Non-DOA Human
Diagnostics Field, and (b) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] of Net Sales in the [CONFIDENTIAL MATERIAL REDACTED AND
FILED SEPARATELY WITH THE COMMISSION] Diagnostics Field and the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Diagnostics Field.
Such royalty shall be payable in such countries in the world in which a Valid
Claim exists for as long as a Valid Claim exists in such countries.
(F) Under the scope of the licenses granted pursuant to Section
3.01(A), (B) and (C) (and without the necessity of granting sublicenses to any
third party), Biosite, its Affiliates and its sublicensees (to the extent
authorized under this Agreement) may, at their discretion, use third party
contractors to (i) manufacture Biosite-labelled (or co-labelled) Products (or
components thereof) for sale by Biosite or its Affiliates or its sublicensees
(to the extent authorized under this Agreement) or their respective
distributors and/or (ii) distribute Biosite-labelled (or co-labelled) Products
for Biosite or its Affiliates or its sublicensees (to the extent authorized
under this Agreement), provided that Biosite, its Affiliates and its
sublicensees (to the extent authorized under this Agreement) may not use the
same third party contractor (or an Affiliate of such contractor) to both
manufacture and distribute Biosite-labelled (or co-labelled) Products.
3.02 Biosite and its Affiliates shall not, except as may be required
by law or an order of a court or governmental agency, file, permit to be filed
on their behalf, cooperate with or assist any other party in the filing or
taking of any action before any court or governmental agency to further any
claim, charge, allegation, complaint, lawsuit, legal action, challenge,
opposition, protest, nullity proceeding, reexamination request, or the like
challenging the validity or enforceability of or issuance of any of the
Patents, or seeking the invalidation, revocation, or denial of any of them.
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3.03 Abbott hereby covenants that it will not, and it will cause its
Affiliates not to, file, permit to be filed on their behalf, or take any action
to [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
3.04 No license or any other right is granted by implication or
otherwise with respect to any patent application or patent except as
specifically set forth herein. For the avoidance of doubt, no license is being
granted hereunder in the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Diagnostics Field.
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ARTICLE IV - PAYMENTS RECORD KEEPING AND REPORTS
4.01 Biosite shall pay to Abbott the amount of Five Million Five
Hundred Thousand U.S. Dollars ($5,500,000) within three (3) business days
following the date of the entry of the Dismissal With Prejudice, by
electronically transferring such funds to the following Abbott bank account:
City Bank of New York
(for Xxxxxx Laboratories)
ABA #[CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION]
Account #[CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION]
Such payment shall be allocated as follows: (A) Two Million U.S. Dollars
($2,000,000) shall be a payment for Xxxxxx'x settlement of the Action and (B)
Three Million Five Hundred Thousand U.S. Dollars ($3,500,000) shall be a payment
for Xxxxxx'x license grant pursuant to Section 3.01(A).
4.02 If any of the Patents are held invalid or unenforceable by a court
of competent jurisdiction or any other governmental agency, bureau, commission,
authority or body. In no instance shall Biosite seek or obtain return of the
payment set forth in Section 4.01.
4.03 In consideration of Xxxxxx'x license grant pursuant to Section
3.01(B), Biosite shall pay Abbott a royalty of [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] of Biosite's Net Sales of Products in
the Non-DOA Human Diagnostics Field. Such royalty shall be payable in such
countries in the world in which a Valid Claim exists for as long as a Valid
Claim exists in such countries.
4.04 In consideration of Xxxxxx'x license grant pursuant to Section
3.01(C), Biosite shall pay Abbott a royalty of [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] of Biosite's Net Sales of Products in
the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Diagnostics Field and [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION] Diagnostics Field. Such royalty shall be payable in such
countries in the world in which a Valid Claim exists for as long as a Valid
Claim exists in such countries.
4.05 Royalty shall be payable only once with respect to the same unit
of Product irrespective of the number of Valid Claims covering such unit of
Product.
4.06 All royalties due to Abbott hereunder shall be paid in United
States Dollars. Biosite shall be responsible for making the payment to Abbott
which payment shall be made by check or wire transfer, at Biosite's discretion.
In the event that any Product is sold in a
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currency other than United States Dollars, the Net Sales of such Product for the
reporting period shall be converted (for the purpose of calculation of such
royalty) into its equivalent dollar value using standard Biosite financial
report procedures and conversion methodology, which shall be consistent with
GAAP. The royalty shall be paid in United States Dollars based on local sales
converted to United States Dollars. The Biosite conversion methodology for sales
shall be based on monthly averages (end of prior month spot rate plus end of
current month spot rate divided by two) using central bank fixing rates (such as
that in effect at the Chase Manhattan Bank) in countries where available and
open market rates otherwise.
4.07 Biosite shall keep and maintain full, true and accurate books of
account containing all particulars that may be necessary, for the purpose of
showing the amounts payable hereunder to Abbott. The books of account shall be
kept at Biosite's principal place of business. The books of account and the
supporting data shall be open once per year during the term of this Agreement at
reasonable times during normal business hours, for two (2) years following the
end of the calendar year to which they pertain, to the inspection of Abbott or
its representatives for the sole purpose of verifying Biosite royalty statement
or compliance in other respects with this Agreement. The costs and expenses
relating to such inspection shall be borne by Abbott. In the event that Biosite
royalties calculated for any semi-annual period are in error by greater than
minus five percent (5%) for the period of time covered by the inspection,
Biosite shall bear the reasonable costs of any audit and review initiated by
Abbott.
4.08 Biosite, within sixty (60) days after June 30 and December 31 of
each year, shall deliver to Abbott true and accurate reports, giving such
particulars of the business conducted by Biosite during the preceding six-month
period under this Agreement as shall be pertinent to a royalty accounting
hereunder. These shall include at least the following:
(A) number of Products manufactured and sold;
(B) total xxxxxxxx for Products manufactured, used and sold;
(C) deductions applicable as provided in Section 1.07 (Net Sales);
and
(D) total royalty due.
4.09 With each such report set forth in Section 4.08 submitted to
Abbott, Biosite shall pay to Abbott royalty due and payable under this
Agreement. If no royalty shall be due, Biosite shall so report.
4.10 The royalty payments set forth in this Agreement shall, if
overdue, bear interest until payment at a per annum rate of One Percent (1%)
above the prime rate in effect at Chase Manhattan Bank (N.A.) from the due date.
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ARTICLE V - ALTERNATE DISPUTE RESOLUTION
The parties recognize that a bona fide dispute as to certain matters
relating to either party's or their Affiliates' rights and obligations under
this Agreement may from time to time arise. In the event of the occurrence of
such a dispute, either party may, by written notice to the other party, have
such dispute referred to their respective officers designated below or their
successors, for attempted resolution by good faith negotiations within
twenty-eight (28) days after such notice is made as provided under Article X of
this Agreement. Said designated officers are as follows:
FOR ABBOTT: President, Diagnostics Division, or his designee.
FOR BIOSITE: President and Chief Executive Officer, or his designee.
In the event the designated officers are not able to resolve such
dispute within such twenty-eight (28) day period, or any agreed extension
thereof, either party may invoke binding Alternative Dispute Resolution (ADR) in
accordance with the attached Exhibit D.
ARTICLE VI - TERMINATION
6.01 This Agreement, unless earlier terminated as hereinafter provided,
shall expire upon the expiration or lapse of the last of the Patents subject to
the licenses granted under Section 3.01(A), (B) and (C) or the last patent right
of Abbott subject to [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION], whichever occurs later.
6.02 In the event Biosite fails to pay the amount due Abbott under
Section 4.01 within the period of time provided therein, Abbott may terminate
this Agreement if such amount is not paid within ten (10) days following written
notice thereof to Biosite.
6.03 In the event Biosite breaches its obligations under Section 3.02,
Abbott may terminate this Agreement immediately upon written notice to Biosite.
6.04 In the event either party files or otherwise becomes subject to
bankruptcy or insolvency proceedings, the other party may terminate this
Agreement immediately upon written notice to the party filing or otherwise
becoming subject to bankruptcy or insolvency proceedings.
6.05 In the event Biosite has not made at least one commercial sale to
an unaffiliated third party of a Product in the [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] Diagnostics Field and/or the
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Diagnostics Field on or before April 19, 2000, Biosite's license under Section
3.01(C) in any such fields shall automatically terminate.
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6.06 The following provisions shall survive termination or expiration
of this Agreement: Sections 2.01, 2.02, 2.03, 2.04, 2.05, 3.04, 14.01 and 14.02.
ARTICLE VII - ASSIGNABILITY
Neither this Agreement nor the license herein granted to Biosite shall
be assignable or otherwise transferable by Biosite without the prior written
consent of Abbott, except as expressly provided in this Article VII, in the
event Biosite is acquired by (whether as a result of a sale of a controlling
interest in Biosite's stock or a sale of all or substantially all of Biosite's
assets) or merged with or into a third party during the term of this Agreement,
the licensees granted hereunder may be assigned by Biosite to the third party
which acquires or is merged into Biosite, as follows:
(A) The licenses granted under Section 3.01(A), (B) and (C) may
be assigned with respect to Biosite-labelled (or co-labelled) Products in
existence as of the effective date of such acquisition or merger or under
development by Biosite on the effective date of such acquisition or merger on
the same terms as provided in this Agreement.
(B) The licenses granted under Section 3.01(A) (B) and (C) may be
assigned with respect to Products developed by the acquiring party prior to the
effective date of such acquisition or merger or by the acquiring party and/or
Biosite after the effective date of such acquisition or merger, provided that
royalties shall be payable to Abbott for Net Sales of such Products to
end-users at the following rates:
(i) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] of Net Sales in the DOA Diagnostics Field and the Non-DOA
Human Diagnostics Field; and
(ii) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] of Net Sales in the [CONFIDENTIAL MATERIAL REDACTED AND
FILED SEPARATELY WITH THE COMMISSION] Diagnostics Field and the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Diagnostics Field.
ARTICLE VIII - WARRANTIES
8.01 Abbott represents and warrants to Biosite that:
(A) Abbott has the full right, power and authority to grant the
licenses to Biosite as set forth in Section 3.01 of this Agreement;
(B) this Agreement has been duly authorized, executed and
delivered by Abbott and constitutes a valid, binding and legally enforceable
agreement of Abbott;
(C) the execution and delivery of this Agreement and the
performance by Abbott of its covenants and agreements herein contained,
including the grant of the license to Biosite, are not restricted by and are not
in conflict with, any agreement binding on Abbott or any of its Affiliates;
(D) to the best of Xxxxxx'x knowledge, no claim in the Patents has
been held invalid; and
(E) other than the Action and the proceedings referenced in the
attached Exhibit E, to the best of Xxxxxx'x knowledge, there are not any legal
proceedings pending challenging the validity or enforceability of any Patents.
8.02 Biosite represents and warrants to Abbott that:
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(A) this Agreement has been duly authorized, executed and
delivered by Biosite and constitutes a valid, binding and legally enforceable
agreement of Biosite; and
(B) the execution and delivery of this Agreement and the
performance by Biosite of its covenants and agreements herein contained are not
restricted by and are not in conflict with, any agreement binding on Biosite or
any of its Affiliates.
ARTICLE IX - APPLICABLE LAW
This Agreement is acknowledged to have been made in and shall be
construed in accordance with the laws of the State of New York, U.S.A.; provided
that all questions concerning the construction or effect of the Patents shall be
decided in accordance with the laws of the country in which the particular
Patents have been filed or granted, as the case may be.
ARTICLE X - NOTICES
Services of all notices hereunder shall be in writing and shall be made
by courier, U.S. Mail, or by facsimile transmission (followed by courier or U.S.
Mail delivery), to the addresses below, and the effective date of giving of such
notices shall be the date on which such notice is actually received by the
recipient. Notices shall be addressed as follows:
If to Abbott:
Director, Technology Acquisition
Xxxxxx Laboratories
D-9RK, AP6C
000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
With a copy to:
General Counsel
Xxxxxx Xxxxxxxxxxxx
X-000, XX0X
000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
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If to Biosite:
Xx. Xxx Xxxxxxxxxxxx
President and CEO
Biosite Diagnostics, Inc.
00000 Xxxxxxx Xxxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
With a copy to:
Xxxxxx X. Xxxxxx, Xx., Esq.
Xxxxxxxxx Madison & Sutro LLP
000 Xxxxxxxxxx Xxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
or to any other such address as may from time to time be designated by the
receiving party.
ARTICLE XI - ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties
concerning the subject matter hereof and supersedes any written or oral prior
agreements or understandings with respect thereto.
ARTICLE XII - WAIVER AND MODIFICATION
No variation or modifications of any of the terms or provisions of this
Agreement shall be valid unless in writing and signed by an authorized
representative of both parties hereto. Failure by either party to enforce any
rights under this Agreement shall not be construed as a waiver of such rights
nor shall a waiver by either party in one or more instances be construed as
constituting a continuing waiver or as a waiver in other instances.
ARTICLE XIII - HEADINGS
The headings contained in this Agreement are for convenience and
reference purposes only and shall not affect the meaning or interpretation of
this Agreement
ARTICLE XIV - CONFIDENTIALITY AND PUBLICITY
14.01 The existence of this Agreement and the terms thereof shall
remain confidential. None of the parties shall disclose to or discuss in any
manner with any third party the terms of this Agreement, or any other aspect of
the Action or their respective claims therein, except as provided in Section
14.02.
14.02 Unless mutually agreed upon by the parties, no party, including
its agents, attorneys, directors, officers, employees and Affiliates, shall
originate nor participate in any publicity, news release or other public
statement or announcement, written or oral, whether to
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the public, press, to stockholders or otherwise, relating to the subject matter
of this Action or issues raised during the Action or this Agreement, to any
amendment hereto or to performance hereunder, save only such announcement as in
the opinion of legal counsel to the party making such announcement is required
by applicable laws or regulations to be made. At least fifteen (15) business
days prior to such announcement, to the maximum extent practicable, the party
making such announcement shall give the other party an opportunity to review and
comment on the form of the announcement, and the party making such announcement
shall give due consideration to the other party's comments. To the extent giving
fifteen (15) business days notice is not practicable, the party making such
announcement shall use its best efforts to give the other party as much time as
possible in advance of such announcement to review and comment on the form of
the announcement.
ARTICLE XV - SEVERABILITY
If any provision of this Agreement shall hereafter be held to be
invalid or unenforceable for any reason, that provision shall be reformed to the
maximum extent permitted to preserve the parties' original intent, failing
which, it shall be severed from this Agreement with the balance of the Agreement
continuing in full force and effect, unless a party would thereby be deprived of
a substantial portion of its consideration. Such occurrence shall not have the
effect of rendering the provision in question invalid in any other jurisdiction
or in any other case or circumstance, or of rendering invalid any other
provisions contained herein to the extent that such other provisions are not
themselves actually in conflict with any applicable law.
ARTICLE XVI - COUNTERPARTS
This Agreement may be executed in counterparts, each of which shall be
deemed an original.
IN WITNESS WHEREOF, the parties have executed this Agreement to be
effective as of the Effective Date.
XXXXXX LABORATORIES BIOSITE DIAGNOSTICS, INC.
By: /s/ Miles X. Xxxxx By: /s/ Xxx X. Xxxxxxxxxxxx
---------------------------------- -----------------------------------
Title: SVP - President ADD Title: President & CEO
------------------------------- --------------------------------
Date: 9/6/96 Date: September 6, 1996
-------------------------------- ---------------------------------
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EXHIBIT A
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]PATENTS
COUNTRY PATENT/APPLICATION STATUS
NUMBER
Australia 560,552 Issued 4/9/87
Brazil 8,301,191 Issued 11/22/83
Canada 1,206,878 Issued 7/1/86
EPO Pub. No. 088,636 Granted 8/28/91
(Nationalized in:
Belgium, Germany,
France, United
Kingdom, Italy,
Luxembourg,
Netherlands, Sweden)
India 157,435 Issued 3/29/86
Israel 68,082 Issued 12/31/86
[CONFIDENTIAL [CONFIDENTIAL [CONFIDENTIAL
MATERIAL REDACTED MATERIAL REDACTED MATERIAL REDACTED
AND FILED AND FILED AND FILED
SEPARATELY WITH THE SEPARATELY WITH SEPARATELY WITH THE
COMMISSION] THE COMMISSION] COMMISSION]
South Africa 83/1617 Issued 3/28/84
United States 5,073,484 Issued 12/17/91
00
XXXXXXX X
XX XXX XXXXXX XXXXXX DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
XXXXXX LABORATORIES, )
)
Plaintiff, )
) No. 94 C 2808
v. )
) Xxx. Xxxx X. Xxxxxxxx
BIOSITE DIAGNOSTICS, INC. )
)
Defendant. )
JOINT STIPULATION AND ORDER OF DISMISSAL
Pursuant to Rule 41 of the Federal Rules of Civil Procedure, the
parties hereto, by their respective counsel, hereby stipulate and agree that
this action and all claims contained therein are hereby dismissed with
prejudice, each party to bear its own costs.
Dated: September ___, 1996
Respectfully submitted,
------------------------------------
Xxxx Xxxxx
Xxxx X. Xxxxxx
Xxxx Xxx XxXxxxx Xxxxxxx
Xxxxxxx & Xxxxxx
Three First Xxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000
(000) 000-0000
------------------------------------
Xxxx X. Xxxxx, Xx.
Xxxxxxxx X'Xxxxx Xxxxxxxx Xxxxxx
& Borun
000 X. Xxxxxx Xxxxx
Xxxxx 0000
Xxxxxxx, Xxxxxxxx 00000
(000) 000-0000
Attorneys for Abbot Laboratories
1
15
------------------------------------
Xxxxxx Xxxxx
Xxxxxxx X. Xxxxx
Xxxx, Scholer, Fierman, Xxxx &
Handler, LLP
000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
------------------------------------
Xxxx X. Xxxxx
Xxxxxxxxxxx X. Xxxxxxx
Xxxxx, Xxxxxx & Xxxxx
00 Xxxx Xxxxxx Xxxxxx
Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000
(000) 000-0000
Attorneys for Biosite
Diagnostics, Inc.
SO ORDERED:
_______________________________________
United States District Judge
2
16
EXHIBIT X
XXXXXX XXXXXX XXXXXXXX XXXXX
XXXXXXXX XXXXXXXX XX XXXXXXXX
EASTERN DIVISION
XXXXXX LABORATORIES, )
)
Plaintiff, ) Civil Action No.
) 94 C 2808
v. )
) Magistrate Judge Bobrick
BIOSITE DIAGNOSTICS, INC. )
)
Defendant. )
PROTECTIVE ORDER
This matter coming on to be heard on the cross motions of plaintiff
Xxxxxx Laboratories ("Abbott") and defendant Biosite Diagnostics, Inc.
("Biosite") for entry of a protective order, the Court having reviewed the
pleadings filed by the parties, having heard the arguments of counsel
concerning the need for entry of a protective order and the appropriate terms
of a protective order, good cause having been shown for the entry of such an
order.
IT IS HEREBY ORDERED that good cause exists for the entry of a
protective order in this matter. IT IS FURTHER ORDERED that the terms of the
protective order are as follows:
1. Definitions
(a) The term "Confidential Information" as used in this
order is to include any information or thing that the designating party in good
faith believes constitutes or discloses or relates to trade secrets, processes,
operations, research, technical or developmental
17
information, personnel information or apparatus, production, marketing, sales,
shipments or other proprietary data or information of commercial value. It may
include, without limitation, documents produced in this action, during formal
discovery or otherwise; information produced by non-parties which the producing
or designating party is under an obligation to maintain in confidence; answers
to interrogatories and responses to requests for admission or other discovery
requests; deposition, hearing or trial transcripts; and tangible things or
objects that are designated confidential. The information contained therein
and all copies, abstracts, excerpts, analyses or other writings that contain,
reflect, reveal, suggest or otherwise disclose such information shall also be
deemed "Confidential Information". Information originally designated as
"Confidential Information" shall not retain that status after any ruling by any
Court denying in this action such status to it.
(b) The term "Attorneys Eyes' Only" shall mean
Confidential Information which the designating party in good faith believes is
of an especially sensitive nature and which relates to its business or was
disclosed to it in confidence by any third party.
(c) The term "designating party" means the party
producing or designation documents or information as "Confidential" or
"Attorney' Eyes Only" under this Order.
(d) The term "receiving party" shall mean the party to
whom "Confidential" or "Attorneys' Eyes Only" information is produced.
(e) Notwithstanding anything to the contrary herein, the
description "Confidential" or "Attorneys' Eyes Only" shall apply to all that
information so designated by the designating party absent an order of the Court
or subsequent written agreement of the designating party providing otherwise.
2
18
DESIGNATION OF CONFIDENTIAL AND ATTORNEYS' EYES ONLY INFORMATION
2. The designation of information as "Confidential" or
"Attorneys' Eyes Only" shall be made by placing a legend on each page of the
document so designated stating "Confidential" or "Attorneys' Eyes Only"
respectively. All documents to be so designated shall be marked prior to the
provision of a physical copy thereof to the receiving party. The designation
of any thing as to which inspection or sampling has been requested shall be
made by placing the designation "Confidential" or "Attorneys' Eyes Only" on the
thing or container within which it is stored.
3. When documents or things are produced for inspection, the
documents or things may be collectively designated as "Confidential" or
"Attorneys' Eyes Only" for purposes of the inspection, by letter or otherwise
without marking each document or thing "Confidential" or "Attorneys' Eyes
Only," and such documents or things will be treated as "Confidential" or
"Attorneys' Eyes Only" information under this Order.
4. If any "Confidential" or "Attorneys' Eye Only" information is
produced by a non-party to this litigation, such a non-party shall be
considered a "designation party" within the meaning of that term as it is used
in the context of this Order and both parties to this order should be treated
as receiving parties. The parties recognize that, during the course of this
litigation, "Confidential" and "Attorneys' Eyes Only" information that
originated with a non-party and for which there exists an obligation of
confidentiality may be produced. Such information that the designating party
believes originated with a non-party, but is subject to a confidentiality
obligation may be designated as "Confidential" or "Attorneys' Eyes Only" and
shall be subject to the restrictions of this protective order.
3
19
5. In the event any designating party discovers, after it has
produced information, that it has inadvertently produced "Confidential" or
"Attorneys Eyes Only" information that has not been correctly designated, the
designating party may redesignate the information by a subsequent notice in
writing specifically identifying the redesignated information, in which event
the parties shall henceforth treat such information in accord with this
Protective Order, and shall undertake a best effort to correct any disclosure
of such information contrary to the redesignation.
6. Any inadvertent production of a document or thing which is
subject to the attorney-client or joint defense privilege or the work product
doctrine shall not constitute a waiver of the privilege or work product
doctrine. In the event any designating party or third party discovers that it
has inadvertently produced a document or thing which is subject to the
above-referenced privileges or work product doctrine, the designating party
must redesignate the information by subsequent notice in writing specifically
identifying the redesignated information, in which event the parties shall
henceforth treat the information as privileged. In addition, the receiving
party shall destroy any copies of the document or thing in its possession,
custody or control, and make its best efforts to correct any disclosure of such
information.
DISCLOSURE OF CONFIDENTIAL AND ATTORNEYS' EYES ONLY INFORMATION
7. Information designated "Confidential" may be disclosed only to
the following:
(a) Outside litigation counsel for the parties, their
partners (shareholders) and associates, and regularly
employed office staffs;
(b) In-house Abbott litigation counsel Xxxxxxxxx X.
Xxxxxxx;
(c) Independent consultants or experts and their staff
not employed by or having a prior or existing
relationship with the receiving party or affiliated
with the receiving party or with a receiving party's
licensee or
4
20
licensor, retained by the attorneys for the parties
either as technical consultants or expert witnesses
for the purposes of this litigation, pursuant to
paragraph 19(c);
(d) Three employees of each corporate party who are
assisting counsel with this litigation, to be
designated in writing by name, title, and job
description within ten days of the entry of this
Order; and
(e) The Court, Court personnel and Official Court Reports
to the extent that "Confidential Information" is
disclosed at a deposition or court session which they
are transcribing.
8. Information designated as "Attorneys' Eyes Only" may be
disclosed only to the following:
(a) Outside litigation counsel, their partners
(shareholders) and associates, and regularly employed
office staffs;
(b) Xxxxxx'x in-house litigation counsel Xxxxxxxxx X.
Xxxxxxx;
(c) Independent consultants or experts and their staff
not employed by or having a prior or existing
relationship with the receiving party or affiliated
with the receiving party or with a receiving party's
licensee or licensor, retained by the attorneys for
the parties either as technical consultants or expert
witnesses for the purposes of this litigation,
pursuant to paragraph 19(c); and
(d) The Court, Court personnel and Official Court Reports
to the extent that "Attorneys' Eyes Only" information
is disclosed at a deposition or court session which
they are transcribing.
9. The designation of any document or thing as "Confidential" or
"Attorneys' Eyes Only" shall not preclude any party from showing the document
or thing to any person who appears as the author or as an addressee on the face
of the document, or who has been identified by the designating party as having
been provided with the document or the information therein by the designating
party prior to the initiation of the litigation.
10. Documents and other information designated as Attorneys' Eyes
Only by Biosite may not be brought onto the premises of any office or facility
of Abbott, and
5
21
documents and other information designated as Attorneys' Eye Only by Abbott may
not be brought onto the premises of any office or facility of Biosite.
USE AND CONTROL OF CONFIDENTIAL AND ATTORNEYS' EYES ONLY INFORMATION
11. All information designated "Confidential" or "Attorneys Eyes
Only" disclosed pursuant to this Order shall be used by a recipient thereof
solely for the purposes of this litigation and not for any business or
competitive purposes. It shall be the duty of each party and each individual
having notice of this Protective Order to comply with this Order from the time
of such notice.
12. If such "Confidential" or "Attorneys Eyes Only" information is
contained in deposition, trial or other testimony, the transcript may be
designated as containing "Confidential" or "Attorneys' Eyes Only" information
in accordance with this Order by notifying the other party on the record, at
the time of the testimony, or in writing, within twenty (20) days of receipt of
the transcript of the specific pages and lines of the transcript which contain
"Confidential" or "Attorneys' Eyes Only" information. All depositions,
regardless of whether a designation of confidentiality was made on the record,
shall be treated as containing "Confidential Information" and subject to this
Protective Order until a time twenty (20) days after a transcript of the
deposition is received. All Court proceedings during which "Confidential" or
"Attorneys' Eyes Only" information is likely to be revealed shall be held in
camera unless the Court orders otherwise.
13. All information subject to confidential treatment in
accordance with the terms of this Order that is filed with the Court, and any
pleading, motions or other papers filed with the Court disclosing any
"Confidential" or "Attorneys Eyes Only" information, shall be filed
6
22
under seal and kept under seal until further order of the Court. Where
possible only confidential portions of filings with the Court shall be filed
under seal.
MISCELLANEOUS
14. This Protective Order is intended to provide a mechanism for
handling the disclosure or production of "Confidential" and "Attorneys' Eyes
Only" information to which there is no objection other than confidentiality.
Each party reserves the right to object to any disclosure of information or
production of any documents it deems to contain "Confidential" or "Attorneys'
Eyes Only" on any other ground it may deem appropriate, and any party may move
for relief from, or general or particular modification of, the mechanism herein
set forth or the application of this Order in any particular circumstance.
15. This Protective Order may only be amended with respect to
specific documents or items of "Confidential" or "Attorneys' Eyes Only"
information by Court order, which may be entered pursuant to the agreement of
the parties hereto. This Protective Order shall remain in force and effect
indefinitely until modified, superseded or terminated by Order of this Court,
which may be entered pursuant to agreement of the parties hereto.
16. Upon final termination of this action (including all appeals)
with respect to any party receiving any "Confidential" or "Attorneys' Eyes
Only" information and at the option of the designating party, the receiving
party shall, within thirty (30) days of such termination, either return to the
designating party or destroy all "Confidential" or "Attorneys' Eyes Only"
information in its possession. In either event, the receiving party shall
specifically describe the materials returned or destroyed and certify their
return or destruction, with the exception that outside counsel may retain one
copy of the pleading or other papers filed with the Court or served in the
course of the litigation, depositions, deposition exhibits and the trial
record.
7
23
17. No party or person shall disclose or cause to be disclosed to
anyone not specified in Paragraphs 7, 8 or 9 as being entitled to receive it,
any information designated as "Confidential" or "Attorneys' Eyes Only" under
this Protective Order without prior written consent of the designating party or
further order of this Court. If the receiving party learns that "Confidential"
or "Attorneys' Eyes Only" information produced to it is disclosed to or comes
into the possession of any person other than in the manner authorized by this
Order, the receiving party responsible for the disclosure must immediately
inform the designating party of all pertinent facts relating to such disclosure
and shall make every effort to prevent disclosure by each unauthorized person
who received such information.
18. (a) No person other than in-house or retained counsel
representing the parties in this action designated in accordance with
Paragraphs 7, 8, or 9 above shall have access to "Confidential" or "Attorneys'
Eyes Only" information without first signing an Affidavit of Compliance with
the Protective Order (in the form attached as Exhibit 1 hereto) or a
Declaration of Compliance with the Protective Order (in the form attached as
Exhibit 2 hereto). A file of all such original written Affidavits or
Declarations shall be maintained by counsel for the party obtaining them.
(b) Before any non-lawyer employee of a party may be
given access to "Confidential" information under paragraph 7 above, the party
seeking to provide such access must give a copy of the Affidavit or Declaration
referred to in paragraph 18(a) to the attorneys for the designating party.
(c) Before any independent consultant or expert may be
given access to "Confidential" or "Attorney's Eyes Only" information under
paragraphs 7 or 8 above, the party seeking to provide such access must give a
copy of the Affidavit or Declaration referred
8
24
to in paragraph 18(a) and written notice to the attorneys for the designating
party of the intention to make such disclosure, stating the name, address and a
resume of the background and qualifications of the person to whom disclosure is
proposed. Within ten (10) days from the service of such written notice, the
designating party may object to such disclosure by service of a written notice
of objection on the attorneys for the party seeking to make the disclosure,
stating the reasons for the objection. No disclosure of "Confidential" or
"Attorneys' Eye Only" information may occur prior to the expiration of ten (10)
days from the date of service of the written notice of intent to disclose. If
the designating party serves notice of objection, the party seeking to make the
disclosure must move for leave of Court to do so, and may not make such
disclosure without an Order of the Court authorizing such disclosure.
19. Nothing herein shall prevent any party or non-party from
seeking additional or different relief from the Court not specified in this
Order.
20. Nothing herein shall prevent any party or third party from
disclosing its own "Confidential" or "Attorneys' Eyes Only" information so
designated by itself in any manner that it considers appropriate, nor shall
counsel for either party be precluded from showing or using "Confidential" or
"Attorneys' Eyes Only" information obtained from the opposing party during
examination, at deposition or trial, of any officer, employee or retained
expert of the party who designated the information confidential.
21. Nothing in this Order shall prevent a receiving party from
contending (for the purposes of securing an Order so providing from the Court)
that any or all "Confidential" or "Attorneys' Eyes Only" information is not
confidential. Any receiving party may at any time request that the designating
party cancel the "Confidential" or "Attorneys Eyes Only"
9
25
designation with respect to any document, object or information. Such request
shall be written, shall be served on counsel for the designating party, and
shall particularly identify the designated "Confidential" or "Attorneys Eyes
Only" information that the receiving party contends is not confidential and the
reasons supporting its contention. If the designating party does not agree to
remove the "Confidential" or "Attorneys' Eyes Only" designation, then the party
contending that such documents or information are not confidential shall file a
motion to be relieved from the restrictions of this Order with respect to the
document or information in question.
22. The restrictions set forth in any of the preceding paragraphs
shall not apply to information or material that: (a) was, is or becomes public
knowledge in a manner other than by violation of this Order; (b) is acquired by
the non-designating party from a third party
10
26
having the right to disclose such information or material; or (c) was lawfully
possessed by the non-designating party prior to the entry by the Court of this
Order.
APPROVED:
KAYE, SCHOLDER, XXXXXXX,
XXXXX & HANDLER
DATE: By
----------------------------------- ----------------------------------
Xxxxxxx X. Xxxxx (RGG 5152)
Attorneys for BIOSITE
DIAGNOSTICS, INC.
DATE: Xxxxxxx & Xxxxxx
-----------------------------------
By
----------------------------------
Xxxx Xxx XxXxxxx
Attorneys for Xxxxxx
Laboratories, Inc.
SO ORDERED:
----------------------------------
U.S.M.J.
11
27
EXHIBIT 0
XXXXXX XXXXXX XXXXXXXX XXXXX
XXXXXXXX XXXXXXXX XX XXXXXXXX
EASTERN DIVISION
XXXXXX LABORATORIES, )
)
Plaintiff, )
)
v. ) Civil Action No.
) 94 C 2808
BIOSITE DIAGNOSTICS, INC. )
) Judge Xxxxxxxx
Defendant. )
AFFIDAVIT OF COMPLIANCE
State of __________________________)
) ss
County of _________________________)
I, _____________________________, on Oath, do depose and state as
follows:
1. I live at __________________. I am employed as (state
position) __________________ by (state name and address of employer)
_______________________.
2. I have read the Protective Order entered in this case, a copy
of which has been given to me.
3. I understand and agree to comply with and be bound by the
provisions of this Order, including that upon receipt of any Confidential
Information, I will be personally subject to it, and to all of its requirements
and procedures.
Executed this ____ day of ____, 1994, at __________.
Subscribed and sworn to before me this ____ day of ___________, 1994.
__________________________________
Notary Public
28
EXHIBIT 0
XXXXXX XXXXXX XXXXXXXX XXXXX
XXXXXXXX XXXXXXXX XX XXXXXXXX
EASTERN DIVISION
XXXXXX LABORATORIES, )
)
Plaintiff, )
)
v. ) Civil Action No.
) 94 C 2808
BIOSITE DIAGNOSTICS, INC. )
) Judge Xxxxxxxx
Defendant. )
DECLARATION OF COMPLIANCE
I, _____________________________ do declare and state as
follows:
1. I live at __________________. I am employed as (state
position) __________________ by (state name and address of employer)
_______________________.
2. I have read the Protective Order entered in this case, a copy
of which has been given to me.
3. I understand and agree to comply with and be bound by the
provisions of this Order, including that upon receipt of any Confidential
Information, I will be personally subject to it, and to all of its requirements
and procedures.
4. Further, I declare, as provided by 28 U.S.C. Section 1746,
under penalty of perjury under the laws of the United States of America, that
the foregoing is true and correct.
Executed this ____ day of ____, 1994, at __________.
___________________________________________
Signature
29
EXHIBIT D
ALTERNATIVE DISPUTE RESOLUTION
The parties recognize that a bona fide dispute as to certain matters may arise
from time to time during the term of this Agreement which relates to either
party's rights and/or obligations. To have such a dispute resolved by this
Alterative Dispute Resolution ("ADR") provision, a party first must send
written notice of the dispute to the other party for attempted resolution by
good faith negotiations between their respective presidents (or their
equivalents) of the affected subsidiaries, divisions, or business units within
twenty-eight (28) days after such notice is received (all references to "days"
in this ADR provision are to calendar days).
If the matter has not been resolved within twenty-eight (28) days of the notice
of dispute, or if the parties fail to meet within such twenty-eight (28) days,
either party may initiate an ADR proceeding as provided herein. The parties
shall have the right to be represented by counsel in such a proceeding.
1. To begin an ADR proceeding, a party shall provide written notice to
the other party of the issues to be resolved by ADR. Within fourteen
(14) days after its receipt of such notice, the other party may, by
written notice to the party initiating the ADR, add additional issues
to be resolved within the same ADR.
2. Within twenty-one (21) days following receipt of the original ADR
notice, the parties shall select a mutually acceptable neutral to
preside in the resolution of any disputes in this ADR proceeding. If
the parties are unable to agree on a mutually acceptable neutral
within such period, either party may request the President of the CPR
Institute for Dispute Resolution ("CPR"), 000 Xxxxxxx Xxxxxx, 00xx
Xxxxx, Xxx Xxxx, Xxx Xxxx 00000, to select a neutral pursuant to the
following procedures:
(a) The CPR shall submit to the parties a list of not
less than five (5) candidates within fourteen (14)
days after receipt of the request, along with a
Curriculum Vitae for each candidate. No candidate
shall be an employee, director, or shareholder of
either party or any of their subsidiaries or
affiliates.
(b) Such list shall include a statement of disclosure by
each candidate of any circumstances likely to affect
his or her impartiality.
(c) Each party shall number the candidates in order of
preference (with the number one (1) signifying the
greatest preference) and shall deliver the list to
the CPR within seven (7) days following receipt of
the list of candidates. If a party believes a
conflict of interest exists regarding any of the
candidates, that party shall provide a written
explanation of the conflict to the CPR along with its
list showing its order of preference
1
30
for the candidates. Any party failing to return a
list of preferences on time shall be deemed to have no
order of preference.
(d) If the parties collectively have identified fewer
than three (3) candidates deemed to have conflicts,
the CPR immediately shall designate as the neutral
the candidate for whom the parties collectively have
indicated the greatest preference. If a tie should
result between two candidates, the CPR may designate
either candidate. If the parties collectively have
identified three (3) or more candidates deemed to
have conflicts, the CPR shall review the explanations
regarding conflicts and, in its sole discretion, may
either (i) immediately designate as the neutral the
candidate for whom the parties collectively have
indicated the greatest preference, or (ii) issue a
new list of not less than five (5) candidates, in
which ease the procedures set forth in subparagraphs
2(a) - 2(d) shall be repeated.
3. No earlier than twenty-eight (28) days or later than fifty-six (56)
days after selection, the neutral shall hold a hearing to resolve each
of the issues identified by the parties. The ADR proceeding shall
take place at a location agreed upon by the parties. If the parties
cannot agree, the neutral shall designate a location other than the
principal place of business of either party or any of their
subsidiaries or affiliates.
4. At least seven (7) days prior to the hearing, each party shall submit
the following to the other party and the neutral;
(a) a copy of all exhibits on which such party intends to
rely in any oral or written presentation to the
neutral;
(b) a list of any witnesses such party intends to call at
the hearing, and a short summary of the anticipated
testimony of each witness;
(c) a proposed ruling on each issue to be resolved,
together with a request for a specific damage award
or other remedy for each issue. The proposed rulings
and remedies shall not contain any recitation of the
facts or any legal arguments and shall not exceed one
(1) page per issue.
(d) a brief in support of such party's proposed rulings
and remedies, provided that the brief shall not
exceed twenty (20) pages. This page limitation shall
apply regardless of the number of issues raised in
the ADR proceeding.
Pre-hearing discovery shall be allowed, but shall be limited to
narrowly-focused document production and not more than five (5) days
of depositions per party. No other discovery shall be required or
permitted by any means, including depositions, interrogatories,
requests for admissions, or production of documents.
2
31
5. The hearing shall be conducted on two (2) consecutive days and shall
be governed by the following rules:
(a) Each party shall be entitled to five (5) hours of
hearing time to present its case. The neutral shall
determine whether each party has had the five (5)
hours to which it is entitled.
(b) Each party shall be entitled, but not required, to
make an opening statement, to present regular and
rebuttal testimony, documents or other evidence, to
cross-examine witnesses, and to make a closing
argument. Cross-examination of witnesses shall occur
immediately after their direct testimony, and
cross-examination time shall be charged against tho
party conducting the cross-examination.
(c) The party initiating the ADR shall begin the hearing
and, if it chooses to make an opening statement,
shall address not only issues it raised but also any
issues raised by the responding party. The
responding party, if it chooses to make an opening
statement, also shall address all issues raised in
the ADR. Thereafter, the presentation of regular and
rebuttal testimony and documents, other evidence, and
closing arguments shall proceed in the same sequence.
(d) Except when testifying, witnesses shall be excluded
from the hearing until closing arguments.
(e) Settlement negotiations, including any statements
made therein, shall not be admissible under any
circumstances. Affidavits prepared for purposes of
the ADR hearing also shall not be admissible. As to
all other matters, the neutral shall have sole
discretion regarding the admissability of any
evidence.
6. Within seven (7) days following completion of the hearing, each party
may submit to the other party and the neutral a post-hearing brief in
support of its proposed rulings and remedies, provided that such brief
shall not contain or discuss any new evidence and shall not exceed ten
(10) pages. This page limitation shall apply regardless of the number
of issues raised in the ADR proceeding.
7. The neutral shall rule on each disputed issue within fourteen (14)
days following completion of the hearing. Such ruling shall adopt in
its entirety the proposed ruling and remedy of one of the parties on
each disputed issue but may adopt one party's proposed rulings and
remedies on some issues and the other party's proposed rulings and
remedies on other issues. The neutral shall not issue any written
opinion or otherwise explain the basis of the ruling.
8. The neutral shall be paid a reasonable fee plus expenses. These fees
and expenses, along with the reasonable legal fees and expenses of
the prevailing party
3
32
(including all expert witness fees and expenses), the fees and
expenses of a court reporter, and any expenses for a hearing room,
shall be paid as follows:
(a) If the neutral rules in favor of one party on all
disputed issues in the ADR, the losing party shall
pay 100% of such fees and expenses.
(b) If the neutral rules in favor of one party on some
issues and the other party on other issues, the
neutral shall issue with the rulings a written
determination as to how such fees and expenses shall
be allocated between the parties. The neutral shall
allocate fees and expenses in a way that bears a
reasonable relationship to the outcome of the ADD,
with the party prevailing on more issues, or on
issues of greater value or gravity, recovering a
relatively larger share of its legal fees and
expenses.
9. The rulings of the neutral and the allocation of fees and expenses
shall be binding, non-reviewable, and non-appealable, and may be
entered as a final judgment in any court having jurisdiction.
10. Except as provided in paragraph 9 or as required by law, the existence
of the dispute, any settlement negotiations, the ADR hearing, any
submissions (including exhibits, testimony, proposed rulings, and
briefs), and the rulings shall be deemed Confidential Information.
The neutral shall have the authority to impose sanctions for
unauthorized disclosure of Confidential Information.
4
33
EXHIBIT E
PENDING LEGAL PROCEEDINGS INVOLVING
PATENT NO. 5,073,484
1. [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION] is involved in an interference with [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION] assigned to
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION].
2. [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION] has been opposed by two parties. At this time, Xxxxxx has not
received any documents relating to the opposition.
