EXHIBIT 10.24
Confidential and Proprietary
NON-EXCLUSIVE LICENSE AGREEMENT
THIS NON-EXCLUSIVE LICENSE AGREEMENT (the "Agreement"), made on this
24th day of January 2002, is by and between Illumina, Inc., a Delaware
corporation having its principal place of business at 0000 Xxxxx Xxxxxx Xxxxx,
Xxx Xxxxx, XX 00000-0000 ("Illumina"), and Amersham Biosciences Corp, formerly
Amersham Pharmacia Biotech Inc., a Delaware corporation having its principal
place of business at 000 Xxxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000-0000
("Amersham"). Illumina and Amersham are hereinafter collectively referred to as
"Parties", or individually a "Party".
W-I-T-N-E-S-S-E-T-H
WHEREAS, Illumina is a company engaged in developing an array confocal
scanning instrument for use with its existing BeadArray(TM) technology; and
WHEREAS, Amersham owns or controls certain confocal scanning
instrumentation technology with potential application to Illumina's
BeadArray(TM) technology; and
WHEREAS, Amersham desires to grant, and Illumina desires to acquire, on
the terms and conditions set forth in this Agreement, a license to intellectual
property relating to the use of Amersham's confocal scanning instrumentation
technology in the development and commercialization of an instrument utilizing
Illumina's BeadArray(TM) technology;
NOW THEREFORE, in consideration of the above premises and the mutual
covenants herein contained and other good and sufficient consideration, the
receipt and sufficiency of which are hereby acknowledged, the Parties agree as
follows.
SECTION 1. DEFINITIONS
In this Agreement and in the licenses referred to herein, unless the
context otherwise requires, the following definitions shall apply:
1.1 "AFFILIATE" means any corporation or other business entity
controlled by, controlling, or under common control with a party, with "control"
meaning direct or indirect beneficial ownership of more than fifty percent (50%)
of the voting stock of, or more than a fifty percent (50%) interest in the
income of, or the right to receive more than fifty percent (50%) of the
distributed profits of such corporation or other business entity, or such other
relationship as, in fact, constitutes actual control.
1.2 "AMERSHAM PATENTS" means (i) all United States and foreign
patents and patent applications owned by Amersham or its Affiliates related to
confocal scanning instrumentation technology issued on or before the Effective
Date, known as the "Kain Patents" listed in Appendix A, attached hereto and
incorporated by reference, including all divisions, continuations,
continuations-in-part, re-issues, re-examinations and substitutes thereof. For
the avoidance of doubt, U.S. Patent No. 5,091,652 licensed by Amersham from the
University of California is not included in the Amersham Patents under this
Agreement.
1.3 "EFFECTIVE DATE" means the date first above written, which
shall be the date of execution of this Agreement.
1.4 "FIELD OF USE" means the internal development of the
Instrument solely by Illumina and its Affiliates, as well as the manufacture and
sale of the Instrument solely by Illumina, its Affiliates, and its authorized
subcontract manufacturers or distributors.
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1.5 "ILLUMINA BEADARRAY(TM) TECHNOLOGY" means Illumina's
technology covered by U.S. Patent Nos. 6,023,540, 6,210,910, 6,266,459 and
6,327,410, which combines a patterned substrate and specially prepared beads or
cells that self-assemble into an array for use in chemical or biochemical
detection.
1.6 "INSTRUMENT(S)" means Illumina's array confocal scanning
instrument covered by a Valid Claim and developed for the detection and imaging
of samples based on Illumina's BeadArray(TM) technologY.
1.7 "VALID CLAIM" means a claim of an unexpired Amersham Patent
that has not been declared invalid by a court or administrative agency from
which no appeal is or can be taken, and which has not been disclaimed, denied or
admitted to be invalid or unenforceable through reissue or disclaimer or
otherwise.
SECTION 2. GRANTS
2.1 Grant of License to Amersham Patents. Amersham hereby grants
to Illumina and its Affiliates, who accept the same, a worldwide, non-exclusive,
non-assignable license to the Amersham Patents, solely in the Field of Use, to
make, have made, use, sell, have sold or import Instruments. The rights and
licenses granted hereunder may not be sublicensed by Illumina to third parties,
other than as necessary in connection with Illumina's activities in the Field of
Use.
SECTION 3. LICENSE FEE
3.1 In consideration of the rights granted in Section 2 above,
Illumina shall pay to Amersham a non-refundable license fee in the amount of [*]
Dollars U.S. dollars (U.S. $[*]), payable within ninety (90) days of the
Effective Date. The license fee shall be paid by wire transfer to the bank
account specified by Amersham at the time the payment is to be made.
3.2 Any amount not paid by Illumina when due will accrue interest
at the lesser of the rate of one and one-half percent (1.5%) per month or the
highest rate permissible by law from the due date until paid in full.
SECTION 4. ROYALTIES
4.1 Illumina shall pay Amersham a recurring royalty of [*]Dollars
(US $[*]) for each Instrument sold by Illumina. Such royalties shall be payable
within thirty (30) days after the anniversary of the Effective Date.
4.2 Notwithstanding the pendency of any infringement (or other)
claim or action by or against Illumina, Illumina shall have no right to
terminate or suspend (or escrow) payment of any amounts required to be paid to
Amersham pursuant to this Agreement.
SECTION 5. OBLIGATIONS
5.1 Illumina shall advise Amersham promptly, and shall furnish
documentary proof which is reasonably acceptable to Amersham, upon its becoming
aware of substantial infringement by a third party or parties of an enforceable
intellectual property right included in the Amersham Patents. Upon receipt of
said written information, Amersham shall, at its sole discretion, take such
action as it deems appropriate to address such circumstances.
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*Certain information on this page has been omitted and filed separately with the
Securities and Exchange Commission. Confidential treatment has been requested
with respect to the omitted portions.
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Confidential and Proprietary
5.2 The Parties shall reasonably and mutually agree and identify
documentation or other information (e.g. laboratory notebooks and images) which
supports the conception and reduction to practice of the Amersham Patents and
which is reasonably required within the Field of Use, ("Patent Documentation and
Information"). The Parties shall mutually agree as to the form in which the
Patent Documentation and Information will be conveyed to Illumina, but in any
event, all Patent Documentation and Information shall be clearly marked as
"Confidential" or "Proprietary".
SECTION 6. INDEMNIFICATION
6.1 Illumina shall defend, indemnify and hold harmless Amersham
and its directors, officers, shareholders, agents, consultants and employees
(the "Indemnitees") from and against any and all liability, loss, damages and
expenses (including reasonable attorneys' fees) as the result of claims,
demands, costs or judgments which may be made or instituted against Amersham
arising out of the use or sale by Illumina and/or its customers, Affiliates,
agents, consultants, and employees of any Instrument or the Amersham Patents in
a manner that infringes any intellectual property right of a third party.
6.2 Amersham shall promptly notify Illumina of any claim by a
third party against Amersham related to Illumina's use or that of its customers,
Affiliates, agents consultants, or employees, of the Instrument, and/or Amersham
Patents as used with any Instrument and shall provide full details of the claim.
Illumina shall have its choice of representation and complete control and
discretion in any action for which it indemnifies Amersham. Amersham will
cooperate in the defense of any such claim and will not settle the same without
Illumina's written consent, unless Amersham releases Illumina from all of
Illumina's obligations under this Section 6 with respect to the claim.
SECTION 7. TERM AND TERMINATION
7.1 Term. The term of this Agreement with respect to the Amersham
Patents shall be from the Effective Date and shall continue unless terminated
earlier as provided in Section 7.2 below. The term of the license granted
hereunder to the Amersham Patents shall commence on the Effective Date and shall
continue in perpetuity with respect to any Instrument sold prior to any such
termination of this Agreement.
7.2 Termination. Notwithstanding Section 7.1 hereof, a Party may
at its sole option and upon giving written notice to the other Party,
immediately terminate this Agreement upon any one or more of the following
events occurring in relation to the other Party (the "Defaulting Party"):
(a) if the Defaulting Party shall commit any material or
substantial breach of any of its obligations herein or of any of the
provisions of this Agreement, and such Defaulting Party shall fail
within thirty (30) days of being notified thereof in writing by the
aggrieved Party to take all reasonable and diligent steps to remedy
such breach or default; or
(b) the Defaulting Party makes a general assignment for
the benefit of creditors, or if a petition in bankruptcy or under any
insolvency law is filed by or against the Defaulting Party and such
petition is not dismissed within sixty (60) days after it has been
filed; or
7.3 Surrender of Rights by Illumina. Illumina shall have the right
to surrender its rights under this Agreement at any time, for Illumina's
convenience, upon sixty (60) days' prior written notice to Amersham. In any
event, there shall be no refund to Illumina of any consideration paid hereunder.
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7.4 Return of Patent Documentation and Information. In the event
this Agreement is terminated or Illumina surrenders its rights hereunder,
Illumina shall immediately return any and all copies of any Patent Documentation
and Information, except to the extent embodied in a shipped Instrument, and any
other confidential or proprietary information provided to it, in any form
whatsoever.
7.5 Claims. In the event this Agreement is terminated by an
aggrieved Party in accordance with the foregoing provisions of either Sections
7.2 or 7.3, neither Party shall have any claim against the other for
compensation or indemnity of any kind as a consequence of such termination,
provided, however, that such termination shall not affect any of the obligations
hereunder having arisen prior to the effective date of termination.
7.6 Limit of Liability. EXCEPT AS EXPRESSLY STATED HEREIN, IN NO
EVENT SHALL EITHER PARTY, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES OR
AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST PROFITS.
SECTION 8. SUCCESSORS AND ASSIGNS
8.1 Successors. This Agreement, and each and every one of the
terms and conditions thereof, shall inure to the benefit of and be binding upon
the permitted successors and assignees of both Parties.
8.2 Assignment. This Agreement and the license granted hereunder
shall not be assigned or sold or in any way transferred by Illumina, except as
expressly set forth in this Agreement, without the prior written consent of
Amersham provided, however, that Illumina may assign its rights under this
Agreement to the purchaser of the portion of its business to which the licenses
granted under this Agreement relate.
SECTION 9. CONFIDENTIALITY
9.1 The Parties entered into a prior "Confidentiality Agreement"
effective on June 30, 1999, which remains in force and effect as of the
Effective Date.
9.2 "Confidential Information" shall mean any confidential
technical data, trade secret, know-how or other confidential information
disclosed by any party hereunder in writing, orally, or by drawing or other
form. From and after the Effective Date, disclosures or delivery of Confidential
Information or material hereunder by any Party will be made in writing and will
be marked "CONFIDENTIAL" or "PROPRIETARY". Any such Confidential Information or
material in oral form will be confirmed in writing within thirty (30) days and
will also be marked "CONFIDENTIAL" or "PROPRIETARY".
9.3 Such Confidential Information will be safeguarded by the
recipient in the same manner and with at least the same protection as such Party
maintains for its own confidential information (but in any event with reasonable
care) and will not be disclosed to third parties and will be made available only
to the receiving Party's Affiliates, and their employees or agents (including
attorneys) who need to know such information.
9.4 These mutual obligations of confidentiality shall apply with
respect to each item of Confidential Information until five years after
disclosure of such item to the other Party, but the mutual obligations of
confidentiality will not apply to any information to the extent that such
information:
(a) is or hereafter becomes part of the public domain
through no action or inaction on the part of the recipient of the
information which constitutes a default under this Section 9;
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(b) was already known to the recipient as evidenced by
prior written documents in its possession which were not furnished by
the other Party;
(c) is disclosed to the recipient by a third party who is
not in default under any confidentiality obligation to the disclosing
Party;
(d) is required by law to be disclosed, including without
limitation in connection with the registration or filing with, or
approval or certification from, any governmental agency or body such as
but not limited to the United States Food and Drug Administration
provided that the information is not the inventive subject matter of an
unpublished patent application and, provided further, that each Party
undertakes its best efforts to maintain, to the maximum extent
reasonably possible, the confidentiality of such information.
(e) can be proven to have been independently developed by
the recipient, without the aid, application or use in any way of
information received by the recipient from the other Party to this
Agreement.
9.5 Upon the expiration or termination of this Agreement, or
surrender by Illumina of its rights hereunder, each Party shall immediately
return any and all copies of any Confidential Information or material provided
to it by the other Party, in any form whatsoever.
9.6 Notwithstanding any provision of this Agreement to the
contrary, the provisions of this Section 9 shall survive any expiration or
termination of this Agreement.
SECTION 10. PUBLICITY
10.1 A Party shall not, without prior review and written approval
by the other Party, issue any public announcement or press release relating to
the existence and/or subject matter of this Agreement. Not withstanding the
foregoing, the Parties will work together to issue a press release relating to
the existence of this Agreement. To the extent required under applicable law and
subject to a Party using commercially reasonable effort to obtain confidential
treatment of the terms of this Agreement to the maximum extent provided by law,
a Party shall have the right to disclose the existence and terms of this
Agreement in its filings to the SEC. In connection with any such disclosure in
its filings to the SEC, a Party shall provide written notice to the other Party
of its proposed disclosure in advance of any such disclosure and provide the
other Party with a reasonable opportunity to comment on such proposed
disclosure.
SECTION 11. REPRESENTATIONS, WARRANTIES AND DISCLAIMERS
11.1 Amersham Warranties. Amersham makes the following warranties
and representations:
(a) Amersham warrants that except as otherwise set forth
herein, to the best of its knowledge, it owns the
Amersham Patents free and clear of all liens,
encumbrances, and claims or demands of third parties.
11.2 Illumina Warranties. Illumina makes the following warranties
and representations:
(a) Illumina warrants that it will not practice or use
the Amersham Technology outside the Field of Use.
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11.3 Mutual Warranties. Each Party hereby represents to the other
Party on the Effective Date and thereafter throughout the Term that, to the best
of its knowledge, this Agreement is a legal and valid obligation binding upon
its execution and enforceable in accordance with its terms and conditions. The
execution, delivery and performance of this Agreement by such Party have been
duly authorized by all necessary corporate action, and the person executing this
Agreement on behalf of such Party has been duly authorized to do so by all
requisite corporate actions and do not and will not (a) require any consent of
approval of its stockholders or any Third Party or (b) conflict with, or
constitute a material breach or violation of, any agreement, instrument,
understanding, oral or written, to which it is a party or by which it may be
bound, and any judgment of any court or governmental body applicable to such a
Party or (c) violate any law, decree, order, rule or regulation of any court,
governmental body or administrative or other agency having authority over it.
11.4 Disclaimers. Except as expressly set forth in this Agreement,
nothing in this Agreement shall be construed as:
(a) A warranty or representation by Amersham, either
express or implied, as to the validity,
enforceability, or scope of the claims of any
Amersham Patents; or
(b) A warranty or representation by Amersham, either
express or implied, that any use under the license
granted in this Agreement, is or will be free from
infringement of patents or other rights of third
parties; or
(c) A requirement that Amersham shall file any patent
application or secure any patent; or
(d) An obligation of either Party to bring or prosecute
actions or suits against third parties for
infringement of any patents; or
(e) Conferring any right to use in advertising,
publicity, or the like any name, tradename, or
trademark of either Party or any of its Affiliates;
or
(f) Granting by implication, estoppel or otherwise any
licenses or rights under any patents and applications
for patents other than under the Amersham Patents.
SECTION 12 MISCELLANEOUS
12.1 Governing Law and Jurisdiction. This Agreement shall be
governed by and construed in accordance with the law of the State of New Jersey.
The Parties agree that any legal action or proceeding under or with respect to
this Agreement may be brought in the courts of the State of New York and for the
purpose of any such legal action or proceeding the parties hereby submit to the
exclusive jurisdiction of such courts.
12.2 Force Majeure. Any delays in or failure of performance by
either Party under this Agreement shall not be considered a breach thereof if
such delay or failure is occasioned by events beyond the reasonable control of
the Party affected ("Force Majeure"). Force Majeure in this context shall mean
and include but not be limited to acts of government or failure of government to
act where such action is required, acts of God, strikes or other concerted acts
of workmen including workmen of the Parties, fires, floods, explosions, riots,
civil disturbances, insurrections, earthquakes, wars rebellions, epidemics and
sabotage. The Party claiming Force Majeure shall notify the other Party of the
occurrence of the Force Majeure and shall use commercially reasonable efforts to
resolve the Force Majeure as soon as possible. The time for that Party's
performance shall be extended by the duration of the Force Majeure.
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12.3 Severability; Waiver. Should any provision of this Agreement
be held by a court to be illegal or in conflict of any law, rule of law, statute
or regulation, (a) the validity of the remaining provisions will not be affected
thereby and (b) the illegal or unenforceable provision will be ineffective only
to the extent of such prohibition or invalidity, and the Parties shall
negotiate, in good faith, a new provision which will, as closely as possible,
carry out the intentions of the Parties provided for in the invalidated
provision. Any waiver by one Party of any rights arising from any breach by the
other Party will not be construed as a waiver of other breaches of the same or
other terms of this Agreement.
12.4 Entirety of Agreement. This Agreement constitutes the entire
agreement between the Parties concerning the subject matter of this Agreement
and the rights granted thereunder. Any representations, warranties, terms,
conditions or covenants to amend, modify or otherwise alter this Agreement shall
be of no force and effect unless made in writing and signed by authorized
representatives of both Parties.
12.5 Notices. Any notice to be given pursuant to this Agreement may
be delivered (i) personally to the place of business of the Party to whom it is
addressed, (ii) by prepaid, registered mail, return receipt requested, or (iii)
via Federal Express or other internationally-known and reputable overnight
delivery service, and addressed as follows:
(a) If to ILLUMINA:
Illumina, Inc.
0000 Xxxxx Xxxxxx Xxxxx
Xxx Xxxxx, XX 00000-0000
Attention: Chief Patent Counsel
(b) If to AMERSHAM:
Amersham Biosciences Corp
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxx Xxxxxx 00000-0000
Attention: General Counsel
IN WITNESS WHEREOF, the Parties hereto have affixed their names and
seals by their duly authorized executive officers on the day and year first
above written.
ATTEST: ILLUMINA, INC
By: /s/ XXXX X. XXXXXXXXXXX
Title: Vice President, Business Development
ATTEST: AMERSHAM BIOSCIENCES CORP
By: /s/ XXXX X. XXXXX
Title: Vice President, Genomics
Business Development
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APPENDIX A
TO
LICENSE AGREEMENT
AMERSHAM PATENTS AND PATENT APPLICATIONS
(also known as the "Kain Patents")
US [*]
US [*]
US [*]
US [*]
US [*]
All divisions, continuations, continuation-in-part, reexaminations, reissues,
renewals, and foreign counterparts of the above US patents.
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*Certain information on this page has been omitted and filed separately with the
Securities and Exchange Commission. Confidential treatment has been requested
with respect to the omitted portions.
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