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Exhibit 10.24
LICENSE AND SUPPLY AGREEMENT
This LICENSE AND SUPPLY AGREEMENT (this "Agreement"), effective as of
August 6, 1999(the "Effective Date"), is by and between Symyx Technologies,
Inc., a Delaware corporation with offices at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx 00000 ("Symyx"), and Argonaut Technologies, Inc., a Delaware
corporation with offices at 000 Xxxxxxxxxx Xx., Xxx. X, Xxx Xxxxxx, Xxxxxxxxxx
00000 ("Argonaut")(each, a "Party"; together, the "Parties").
BACKGROUND
A. Symyx is engaged in research and development activities in the field of
catalyst research, polymer research and the use of process/reaction
optimization chemistry reactors and screening tools, and has created equipment
and software for use in the discovery and optimization of catalysts, polymers,
electronic and other materials;
B. Symyx has acquired considerable experience and know-how with regard to
the Product (as hereinafter defined) and owns certain patent rights relating
thereto;
C. Argonaut has expertise in the development, manufacture and distribution
of instrumentation and consumables;
D. Symyx is willing to provide Argonaut with a licence under the Patent
Rights and Know-How (as hereinafter defined) in order that Argonaut may develop,
produce, market and sell the Products, and Argonaut wishes to acquire such a
license, on the terms and conditions herein; and
E. Argonaut desires to supply Symyx with certain requirements of Product,
and Symyx desires to purchase such Product from Argonaut.
NOW, THEREFORE, in consideration of the foregoing and mutual promises and
covenants contained herein, the parties agree as follows:
1. CONSTRUCTION AND DEFINITIONS
1.1 Construction.
(a) All references in this Agreement to "Articles," "Sections"
and "Exhibits" refer to the articles, sections and exhibits of this Agreement.
(b) As used in this Agreement, neutral pronouns and any
variations thereof include the feminine and masculine and all terms used in the
singular include the plural, and vice versa, as the context may require.
(c) The words "hereof," "herein" and "hereunder" and other words
of similar
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import refer to this Agreement as a whole, as the same may from time to time be
amended or supplemented, and not to any subdivision contained in this Agreement.
(d) The word "including" when used herein is not intended to be
exclusive and means "including, without limitation."
1.2 Definitions. As used herein:
(a) "Accessories" means items that are (i) sold for Two Thousand
Five Hundred Dollars ($2,500) or more; (ii) not Consumables; and (iii) provide
enhanced functionality to the Device, but are not required to operate the
Device.
(b) "Affiliate" means, with respect to a Party hereto, a
corporation, company or other entity that is owned and controlled by such Party
by virtue of such Party's direct or indirect ownership or control of more than
fifty percent (50%) of the outstanding shares or securities (representing the
right to vote for the election of directors or other managing authority) of such
corporation, company or other entity, but such corporation, company or other
entity shall be deemed to be an Affiliate only so long as such ownership or
control exists.
(c) "Confidential Information" means any information: (i)
disclosed by one Party (the "Disclosing Party") to the other (the "Receiving
Party"), which, if in written, graphic, machine-readable or other tangible form
is marked as "Confidential" or "Proprietary", or which, if disclosed orally or
by demonstration, is identified at the time of initial disclosure as
confidential and reduced to writing and marked "Confidential" within thirty (30)
days of such disclosure; or (ii) which is otherwise deemed to be confidential
by the terms of this Agreement.
(d) "Cost of Goods" means the sum of materials, labor, overhead,
warranty reserve and installation reserve.
(e) "Consumables" means those items that are consumed or
commonly replaced as a result of the routine operation of the Device (e.g.,
stir paddles, glass inserts and O-Rings).
(f) "Device" means an eight (8) cell parallel pressure reactor
that conforms to the Specifications.
(g) "Gross Margin" means Net Sales minus Cost of Goods.
(h) "Know-How" means certain component drawings, data sheets,
cost estimates, assembly criteria, test data and prototypes and other
information which are owned, controlled or licensable by Symyx and are
reasonably necessary for the development, testing, use, manufacture or sale of
Products. Know-How does not include any inventions included in the Patent.
(i) "Improvements" means any and all improvements, additions,
enhancements, changes or modifications to the Product or any component thereof
which Argonaut, (whether by invention, assignment, license or otherwise)
develops, conceives, reduces to practice or
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otherwise develops during the term of the Agreement, and all intellectual
property rights relating thereto, including any patent applications and patents
worldwide.
(j) "Net Sales" means that the gross revenues actually received
by Argonaut or its Affiliates from sales of Products to bona fide independent
third parties or sublicensee less sales, use and excise taxes and less returns,
insurance and shipping charges included in those revenues. If Argonaut or its
Affiliates should offer a discount to a third party on an order that includes
the Device and other Argonaut products, the discount shall be applied evenly to
the entire order. All sales of Products between Argonaut and any of its
Affiliates shall be disregarded for purposes of computing Net Sales.
(k) "Patent Rights" means (i) all US patent applications
claiming inventions that are infringed by the manufacture, use or sale
of the Products, including without limitation, those set forth on Exhibit D,
(ii) all divisions, substitutions, continuations, continuations-in-part
applications and re-issues, re-examinations and extensions of (i) above,
(iii) any foreign counterparts of any of the preceding, and (iv) any patents
issuing on any of the preceding.
(l) "Product" means: (i) Devices; (ii) Accessories; and (iii)
Consumables, each as more fully described on Exhibit B attached hereto.
(m) "Specification" means the specification for the Product set
forth in Exhibit B, as may be amended by written agreement of the Parties.
(n) "Sublicensee" means any third party to whom Argonaut has
granted the right to distribute the Product.
(o) "Term" has the meaning given to it pursuant to Section 11.1.
(p) "Territory" means all countries in the world.
(q) "Trademark" has the meaning given to it in Section 5.5.
2. LICENSE
2.1 Licenses to Argonaut.
(a) Patent Rights and Know-How.
(i) Subject to the terms and conditions of this Agreement,
Symyx hereby grants Argonaut an exclusive (except as provided in this Section
2.1), non-transferable, worldwide, royalty-bearing, revocable, non-sublicensable
license during the Term, under the Patent Rights and Know-How, solely to make,
use, sell, offer for sale, import and export Products in the Territory.
(ii) Notwithstanding Section 2.1(a)(i), above, nothing in
this Agreement shall restrict or prevent Symyx from making, having made, or
using Products or any of the components thereof for internal use by Symyx for
itself or on behalf of third parties.
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(b) Trademark. Subject to the terms and conditions of this
Agreement, including those set forth in Section 5.5. Symyx hereby grants
Argonaut a non-exclusive, non-transferable, worldwide, royalty-bearing,
revocable, non-sublicensable license, under the Trademarks, solely to reproduce
the Trademarks for use in connection with the marketing, sale and offer for sale
of Products in the Territory.
(c) All rights in the Patent Rights and Know-How not expressly
granted to Argonaut above are reserved to Symyx.
(d) Enforcement. Symyx shall have the first opportunity in its
sole discretion and without obligation, for initiating contact with, providing
notice to, asserting claims or causes of action against, or initiating
proceedings or lawsuits against a third party known or suspected of infringing
or misappropriating the Patent Rights, Know-How or Trademarks. In the event that
either Party becomes aware of or suspects third-party activities that could
constitute an infringement or misappropriation of the Patent Rights, Know-How or
Trademarks, then such Party shall promptly notify the other Party of such
third-party activities, including identification of the third party and
delineation of the facts relating to such third-party activities. In the event
Symyx fails to take commercially appropriate steps with respect to an
infringement that is likely to have a material adverse effect on the sale of
Products within six (6) months following notice of such infringement, Argonaut
shall have the right to do so at its expense; provided that if Symyx has
commenced negotiations with an alleged infringer of the patent for
discontinuance of such infringement within such six-month period. Symyx shall
have an additional three (3) months to conclude its negotiations before Argonaut
may bring suit for such infringement. The party not enforcing the applicable
Patent Rights shall provide reasonable assistance to the other Party, including
providing access to relevant documents and other evidence and making its
employees available, subject to the enforcing Party's reimbursement of any
out-of-pocket expenses incurred by the non-enforcing Party. Any amounts
recovered by either Party pursuant to this subsection, whether by settlement or
judgement, shall be allocated in the following order: (i) to reimburse the
Parties for their reasonable out-of-pocket expenses in making such recovery
(which amounts shall be allocated pro rata if insufficient to cover the totality
of such expenses); and (ii) the remainder shall be retained by Argonaut, with
such remainder being deemed "Net Sales" of Products for which Argonaut shall pay
Symyx, a royalty under Section 6.1.
2.2 Delivery.
(a) Know-How. Following the Effective Date, Symyx shall deliver
to Argonaut one (1) copy of the documents embodying the Know-How.
(b) Disclaimer of Liability. THE KNOW-HOW PROVIDED HEREUNDER IS
PROVIDED "AS IS" AND SYMYX MAKES NO, AND HEREBY DISCLAIMS EACH AND EVERY,
WARRANTY WITH RESPECT TO THE KNOW-HOW, INCLUDING ANY AND ALL WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT.
2.3 Restrictions on Material Improvements. All material Improvements
shall be reviewed and approved by the Joint Development Committee as outlined in
Exhibit A.
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2.4 License to Improvements and Rights to First Negotiation. Argonaut
hereby grants to Symyx a nonexclusive, worldwide, royalty-free, fully paid,
non-transferable, non-sublicensable license, under all improvements, to make,
and use any product and practice any process utilizing the Improvements for
internal purposes. If Argonaut wishes to grant a license to sell products under
the Improvements to a third party or Symyx wishes to receive such a license,
then following written notice of this fact Argonaut shall offer Symyx a ninety
(90) day period starting from the date of such notice to negotiate with
Argonaut for the right to enter into such an agreement with Argonaut on terms
and conditions approved by Argonaut in its sole discretion. Neither Party shall
have any liability to the other for any failure to reach any agreement;
provided, in the event the parties do not enter into such an agreement.
Argonaut shall not offer to enter into an agreement with any third party on
terms more favorable to such third party than those last offered to Symyx.
2.5 Improvement of Symyx. Any Symyx modification or improvement to
the Patent Rights or Know-How licensed to Argonaut made before termination of
this Agreement shall be included in the license without additional charge to
Argonaut. The parties agree to promptly disclose modifications and improvements.
2.6 Right of First Negotiation. If Symyx wishes to enter into a
distribution agreement with a third party for the distribution of new equipment
incorporating the Know-How or Patent Rights used in the Device, then Symyx shall
notify Argonaut of this fact before it notifies any other third party and offer
Argonaut a ninety (90) day period starting from the date of such notice to
negotiate with Symyx for the right to enter into such an agreement with Symyx on
terms and conditions approved by Symyx in its sole discretion. Neither Party
shall have any liability to the other for any failure to reach any agreement;
provided, in the event the parties do not enter into such an agreement, Symyx
shall not offer to enter into a distribution agreement with any third party on
terms more favorable to such third party than those last offered to Argonaut.
3. OWNERSHIP
3.1 Patent Rights, Know-How & Trademarks. Argonaut acknowledges that,
as between the Parties, Symyx owns all right, title and interest in and to the
Specifications, Patent Rights, Know-How and Trademarks.
3.2 Improvements. Symyx acknowledges that, as between the Parties,
Argonaut owns all right, title and interest in and to the Improvements.
4. PRODUCT DEVELOPMENT
4.1 Efforts. Argonaut shall use reasonable efforts to develop the
Product in accordance with the Product Development Plan established by the Joint
Development Committee pursuant to Section 4.2 and the time schedules
contemplated therein. Except as otherwise expressly agreed in writing,
Argonaut shall bear its own costs incurred in connection with the development of
the Product.
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4.2 Joint Development Committee ("JDC"). The parties shall establish a
joint development committee which shall be responsible for reviewing the Product
Development Plan. The JDC shall prepare an initial Product Development Plan by
September 17, 1999.
4.3 Delivery and Testing. Argonaut will deliver to Symyx one (1) unit
of the Product by the date set forth in the Product Development Plan, as
determined by the JDC in writing (the "Prototype"). Following the receipt of the
Prototype, Symyx shall evaluate the Prototype for conformity with the
Specifications as set forth in Product Development Plan. Within (20) business
days after the receipt of the Prototype, Symyx shall provide Argonaut with a
written evaluation of the Prototype.
4.4 Product Specifications and Schedule. The JDC will define the Final
Specifications and Development Schedule as part of the Product Development Plan.
Symyx may terminate the Agreement based on non-conformity of the Prototype of
either the Final Specifications or Development Schedule as set forth in the
Product Development Plan.
5. SALES
5.1 Purchase and Sale to Symyx. Argonaut shall manufacture and sell to
Symyx Products for Symyx's internal research purposes (including research on
behalf of third parties) at a cost of Six Thousand Dollars ($6,000.00) per
Product plus Cost of Goods. All such sales shall be pursuant to Argonaut's
standard terms and conditions of sales as set forth in Exhibit E.
5.2 Payment for Product Purchases. Symyx shall pay each invoice for
Products purchased by Symyx within sixty (60) days of the date of such invoice
or the delivery date, whichever is later. All payments due hereunder shall be
made by check or by wire transfer to an account specified by the receiving
party.
5.3 Overdue Payments. Any payments due hereunder which are not paid
within five (5) days of the date such payments are due in accordance with
Section 5.2 shall bear interest at the lesser of one and one-half percent (1.5%)
per month or the maximum rate permitted by law, calculated on the number of days
such payment is delinquent. This Section 5.3 shall in no way limit any other
remedies available to either party.
5.4 Marketing Efforts to Third Parties.
(a) Performance. Argonaut shall use its commercially reasonable
efforts to maximize Product sales in the Territory. For purposes of this Section
5.4, "reasonable efforts" shall mean at least those efforts made by Argonaut
with respect to its own internally developed products, including those mutually
agreeable equivalent, distribution marketing activities and resources set forth
in Exhibit C.
(b) Training. Argonaut, its Affiliates and Sublicensees shall
maintain knowledgeable sales and marketing personnel to provide instructions to
customers in the use of the Products.
(c) Service and Support. Argonaut, its Affiliates and Sublicensees
shall be
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solely responsible for all support and service with respect to the Product and
shall at all times during the Term maintain an adequate number of trained
service technicians to assist its customers with respect to use and maintenance
of the Product.
(d) Advertising and Promotions. Argonaut shall be responsible for
all Product marketing commitments and procedures but upon launch of commercial
sale of the Product, or earlier upon mutual agreement of the Parties. Argonaut
and Symyx shall issue a joint press release regarding the Product and the
Parties' relationship. Argonaut shall list the Products in its catalogs and make
such Products available to its customers. Argonaut shall engage actively in
advertising and promotion of the Products which may take the form of, but shall
not be limited to, magazine advertising, direct mail promotion, trade show
displays, educational seminars and other activities related to promoting
Products and shall present the Product at scientific and commercial conferences
as more fully described in Exhibit C.
(e) Use of Symyx Name and Logo. In furtherance of Argonaut's
marketing obligations hereunder, Symyx grants to Argonaut, during the term of
this Agreement, the non-exclusive, non-transferable, limited right to use
Symyx's name and logo (the "Logo") in connection with marketing and sales of the
Product; provided, however, Argonaut shall comply with Symyx's guidelines for
use of the Logo in every use of the Logo on any product advertising or other
marketing material, or, if any such proposed use does not comply with such
guidelines, Argonaut shall, prior to using the Logo, obtain Symyx's written
consent, which consent Symyx may withhold in its sole discretion. The Logos and
all good will associated therewith, including any intellectual property rights
therein, are the exclusive property of Symyx and all use thereof by Argonaut
shall inure exclusively to the benefit of Symyx. In all events, Symyx may at any
time terminate the right granted in this Section 5.4(e) in its sole discretion.
(f) Net Sales Reports. If requested by Symyx, Argonaut shall
provide to Symyx monthly, Net Sales reports (to be delivered to Symyx no later
than the fifteen (15) days following the end of such month in which the report
is due) setting forth Argonaut's sales of the Devices, Accessories and
Consumables.
(g) Business Obligations. Any and all obligations associated with
Argonaut's business shall remain the sole responsibility of Argonaut. Any and
all sales and other agreements between Argonaut and its customers are and shall
remain Argonaut's exclusive responsibility and shall have no effect on
Argonaut's obligations pursuant to this Agreement.
(h) Foreign Corrupt Practices Act. Argonaut shall comply with the
United States Foreign Corrupt Practices Act.
5.5 Trademarks. Argonaut shall select the trademarks, trade names and
trade dresses to be used in connection with the Product, subject to Symyx's
prior approval, such approval not to be unreasonably withheld. All such
trademarks, trade names and trade dresses (the "Trademarks") and all good will
associated therewith shall be and become the exclusive property of Symyx. Symyx
shall bear the reasonable costs of registering and maintaining the Trademarks,
using counsel reasonably acceptable to Symyx. Argonaut shall not adopt any
Trademarks, or other trademark, trade name or trade dress that may be
confusingly similar with the Trademarks.
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Argonaut shall xxxx all Products with the Trademarks. Except as set forth in
Section 2.1(b), Argonaut shall acquire no interest or rights in and to any
Trademarks. Argonaut shall not remove, modify or obscure any Trademarks
incorporated in, marked on, or fixed to the Product.
6. ROYALTIES TO SYMYX
6.1 Running Royalties. In consideration of the licenses and other
rights granted herein, Argonaut shall pay to Symyx royalties in an amount set
equal to (i) twenty percent (20%) of Net Sales for each Device and Accessory
sold by Argonaut and (ii) fifty percent (50%) of the Gross Margin earned on all
Consumables sold by Argonaut. Amounts paid by Symyx to Argonaut for the
purchase of any products hereunder shall not be included in Net Sales. Royalties
on sales by Argonaut or its Affiliates to Argonaut's sublicensees shall be
calculated using Argonaut's international list price.
6.2 Royalty Reports. Argonaut shall deliver to Symyx, within fifteen
(15) days after the end of each calendar month during which any Product is sold,
a report setting forth in reasonable detail the calculation of the royalties
payable to Symyx for such calendar quarter, including the Product sold, the Net
Sales thereof.
6.3 Royalty Payments. All royalties earned for the relevant month due
pursuant to Section 6.1 shall be paid to Symyx due Net (sixty) 60 days after the
end of the relevant month.
6.4 Overdue Payments. Any payments due hereunder which are not paid
within five (5) days of the date such payments are due in accordance with
Section 6.3 shall bear interest at the lesser of one and one-half percent (1.5%)
per month or the maximum rate permitted by law, calculated on the number of days
such payment is delinquent. This Section 6.4 shall in no way limit any other
remedies available to either party.
6.5 Books and Records. Argonaut shall maintain accurate books and
records which enable the calculation of royalties payable hereunder to be
verified. Argonaut shall retain the books and records for each calendar month
for one (1) year after the submission of the corresponding report under Section
6.2 hereof. Upon prior notice to Argonaut, independent accountants selected by
Symyx, reasonably acceptable to Argonaut, after entering into a confidentiality
agreement with Argonaut, may have access to Argonaut's books and records during
Argonaut's normal business hours at mutually agreed times to conduct a review or
audit once per calendar quarter, for the purpose of verifying the accuracy of
Argonaut's payments and compliance with this Agreement. Any such inspection or
audit shall be at Symyx's expense, however, in the event an inspection reveals
underpayment of ten percent (10%) or more in any audit period, Argonaut shall
pay the costs of the inspection. Argonaut shall promptly pay to Symyx any
underpayment identified in such an audit which amount is undisputed by Argonaut,
with interest from the date such amount(s) were due at an annual percentage rate
of fifteen percent (15%).
6.6 Possible Readjustment of Royalty. In the event Argonaut reasonably
determines that it is commercially impracticable to sell Products anywhere in
the Territory because, for example and without limitation: (i) Argonaut's
operating profit margins on Products are lower than expected, (ii) the number of
Products sold per year is lower than expected, (iii) a material investment is
needed
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to provide a competitive and successful Device, (iv) Argonaut desires to lower
prices to increase market penetration, (v) no patent licensed hereunder with
claims covering the Products has issued, or (vi) payments in royalties, license
fees, or otherwise for third party technology are excessive, then Argonaut will
notify Symyx and the parties agree to discuss for a period not to exceed thirty
(30) days the possibility of adjusting the royalty rates for Products. It is
understood that neither party is obligated to accept or agree to terms of such
royalty readjustment.
7. PRODUCT QUALITY
7.1 Quality Assurance. Argonaut agrees to assure the quality level of
Product through the use of Argonaut's standard quality assurance program
currently maintained for Argonaut's other commercially manufactured products.
During the term of the Agreement, Symyx shall have the right to audit such
quality assurance program, at its expense, during regular business hours.
7.2 Presence at Facility. During the first six (6) months during which
each Product is commercially manufactured for Symyx and thereafter upon
reasonable written notice to Argonaut, Symyx shall have the right to have its
representatives visit, from time to time, each facility at which such Product is
being manufactured, to verify Argonaut's compliance with the Quality Assurance
program outlined in Section 7.1.
8. CONFIDENTIALITY
8.1 Confidential Information and Exclusions. Notwithstanding Section
1.2(c), Confidential Information shall exclude information that the Receiving
Party can demonstrate: (i) was independently developed by the Receiving Party
without any use of the Disclosing Party's Confidential Information or by the
Receiving Party's employees or other agents (or independent contractors hired by
the Receiving Party) who have not been exposed to the Disclosing Party's
Confidential Information; (ii) becomes known to the Receiving Party, without
restriction, from a source other than the Disclosing Party without breach of
this Agreement and that had a right to disclose it; (iii) was in the public
domain at the time it was disclosed or becomes in the public domain through no
act or omission of the Receiving Party; or (iv) was rightfully known to the
Receiving Party, without restriction, at the time of disclosure.
8.2 Confidentiality Obligations. The Receiving Party shall treat as
confidential all of the Disclosing Party's Confidential Information and shall
not use such Confidential Information except as expressly permitted under this
Agreement. Without limiting the foregoing, the Receiving Party shall use at
least the same degree of care which it uses to prevent the disclosure of its
own confidential information of like importance, but in no event with less than
reasonable care, to prevent the disclosure of the Disclosing Party's
Confidential Information.
8.3 Confidentiality of Agreement. Each Party agrees that the terms and
conditions, but not the existence, of this Agreement shall be treated as the
other's Confidential Information and that no reference to the terms and
conditions of this Agreement or to activities pertaining thereto can be made in
any form of public or commercial advertising without the prior written consent
of the other Party; provided however, that each party may disclose the terms
and conditions of this
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Agreement: (i) as required by any court or other governmental body; (ii) as
otherwise required by law; (iii) to legal counsel of the parties; (iv) in
connection with the requirements of an initial public offering or securities
filing; (v) in confidence, to accountants, banks, and financing sources and
their advisors; (vi) in confidence, in connection with the enforcement of this
Agreement or rights under this Agreement; (vii) or in confidence, in connection
with a merger or acquisition or proposed merger or acquisition, or the like.
8.4 Compelled Disclosure. If a Receiving Party believes that it will
be compelled by a court or other authority to disclose Confidential Information
of the Disclosing Party, it shall give the Disclosing Party prompt notice so
that the Disclosing Party may take steps to oppose such disclosure.
8.5 Remedies. Unauthorized use by a Party of the other Party's
Confidential Information will diminish the value of such information.
Therefore, if a Party breaches any of its obligations with respect to
confidentiality or use of Confidential Information hereunder, the other Party
shall be entitled to seek equitable relief to protect its interest therein,
including but not limited to injunctive relief, as well as money damages.
9. INDEMNITY
9.1 Argonaut. Argonaut shall indemnify, defend and hold harmless Symyx
and its directors, officers and employees (each an "Indemnitee") from and
against any and all liabilities, damages, losses, costs or expenses (including
reasonable attorneys' and professional fees and other expenses of litigation
and/or arbitration) (a "Liability") resulting from a claim, suit or proceeding
brought against an Indemnitee, arising from or occurring as a result of (a)
Argonaut's material breach of any representation, warranty or covenant
contained in this Agreement; (b) the design, development, manufacture, sales or
other commercialization of the Products(s) except, in each case, any liability
as set forth in Section 9.2(c); (c) any action arising from or related to
Argonaut's negligence in the manufacture, storage, or handling of the
Product(s); and (d) any non-conformance with the Specifications, except in each
case, to the extent caused by the negligence or willful misconduct of Symyx.
9.2 Symyx. Symyx shall indemnify, defend and hold harmless Argonaut
and its directors, officers and employees (each an "indemnitee") from and
against any and all liabilities, damages, losses, costs or expenses (including
reasonable attorneys' and professional fees and other expenses of litigation
and/or arbitration) (a "Liability") resulting from a claim, suit or proceeding
brought against an Indemnitee, arising from or occurring as a result of (a)
Symyx's material breach of any representation, warranty or covenant contained
in this Agreement; (b) Symyx's use of the Products purchased hereunder; except,
in each case, to the extent caused by the negligence or willful misconduct of
Argonaut, or (c) a third party claim that the uses permitted hereunder of the
Specification or Know-How infringes any intellectual property rights of a third
party.
9.3 Procedure. In the event that any Indemnitee intends to claim
indemnification under this Article 11, it shall promptly notify the
indemnifying party in writing of such alleged Liability. The indemnifying party
shall have the sole right to control the defense and settlement thereof. The
Indemnitees shall cooperate with the indemnifying party and its legal
representatives in
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the investigation of any action, claim or liability covered by this Article 10.
The Indemnitee shall not, except at its own cost, voluntarily make any payment
or incur any expense with respect to any claim or suit without the prior
written consent of the indemnifying party, which the indemnifying party shall
not be required to give.
10. REPRESENTATIONS AND WARRANTIES
10.1 Symyx. Symyx represents and warrants on a continuing basis that
it: (i) has the right to enter this Agreement, is a corporation duly organized,
validly existing, and in good standing under the laws of the State of Delaware,
(ii) has the right to grant the rights hereunder, in the manner set forth in
this Agreement, (iii) has the power and authority to execute and deliver this
Agreement and to perform its obligations hereunder, (iv) has by all necessary
corporate action duly and validly authorized the execution and delivery of this
Agreement and the performance of its obligations hereunder, and (v) has not and
will not during the term of this Agreement enter into any agreement which
conflicts with or which will result in any breach of, or constitute a default
under this Agreement, any note, security agreement, commitment, contract or
other agreement, instrument or undertaking to which Symyx is a party.
10.2 Argonaut. Argonaut represents and warrants on a continuing basis
that it: (i) has the right to enter this Agreement, is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware, (ii) has the power and authority, to execute and deliver this
Agreement and to perform its obligations hereunder, (iii) has by all necessary
corporate action duly and validly authorized the execution and delivery of this
Agreement and the performance of its obligations hereunder, and (iv) has not
and will not during the term of this Agreement enter into any agreement which
conflicts with or which will result in any breach of, or constitute a default
under this Agreement, any note, security agreement, commitment, contract or
other agreement, instrument or undertaking to which Argonaut is a party.
10.3 Effect of Representations and Warranties. It is understood that
if the representations and warranties under this Article 10 are not true and
accurate at any time during the term of the Agreement and the nonbreaching
party (i.e., Argonaut or Symyx, as the case may be) incurs any liabilities,
costs or other expenses as a result of such falsity, the breaching party shall
indemnify and hold harmless the other party and its affiliates for any such
liabilities, costs or expenses incurred.
10.4 Disclaimer of Liability. NEITHER PARTY MAKES AND BOTH PARTIES
HEREBY DISCLAIM ALL WARRANTIES, EXPRESS, IMPLIED, OR STATUTORY, REGARDING THE
PATENT RIGHTS, KNOW-HOW, TRADEMARKS, AND PRODUCTS, INCLUDING ANY AND ALL
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON-INFRINGEMENT.
10.5 Limitation of Liability. IN NO EVENT SHALL EITHER PARTY BE LIABLE
TO THE OTHER PARTY FOR ANY INCIDENTAL, CONSEQUENTIAL, INDIRECT, OR SPECIAL
DAMAGES ARISING OUT OF OR IN RELATION TO THIS AGREEMENT, EVEN IF SUCH PARTY HAS
BEEN INFORMED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL EITHER
PARTY'S ENTIRE LIABILITY ARISING OUT
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OF OR IN RELATION TO THIS AGREEMENT OR THE RIGHTS GRANTED HEREUNDER (EXCEPT
LIABILITY UNDER ARTICLES 8 AND 9) EXCEED THE SUMS PAID BY ARGONAUT TO SYMYX
PURSUANT TO SECTION 6 IN THE TWELVE (12) MONTHS PRECEDING THE EVENT GIVING RISE
TO SUCH LIABILITY.
11. TERM AND TERMINATION
11.1 Term. This Agreement shall commence on the Effective Date be in
full force in effect until the five (5) year anniversary of the Effective Date,
unless terminated earlier as provided in this Article 11 (such period, the
"Term"). Upon written agreement of the parties prior to the end of the
then-current Term, the Agreement may be extended for additional periods of one
(1) year each; provided, however, that either party may terminate this
Agreement after December 31, 2000, upon six (6) months written notice but not
before such date except as expressly provided for herein.
11.2 Termination for Cause. Either party may, without penalty,
terminate this Agreement or cancel any purchase order or portion thereof
effective upon written notice to the other party in the event the other party
materially breaches this Agreement, including without limitation, by failing to
deliver conforming Product on the requested delivery dates set forth on Symyx's
purchase orders, and such breach remains uncured for thirty (30) days following
written notice of breach by the nonbreaching party, unless such breach is
incurable in which event termination shall be immediate upon receipt of written
notice.
11.3 Insolvency. Either party may terminate this Agreement, effective
upon written notice to the other party in the event the other party (i) becomes
insolvent, (ii) enters into any composition or arrangement with its creditors,
(iii) resolves to wind up its business, dissolve or liquidate, (iv) is placed
in provisional or final liquidation, (v) is placed in provisional or final
judicial management, or (vi) otherwise ceases to conduct business generally.
11.4 Effect of Termination or Expiration.
(a) Any right or obligation of a party that has accrued as of the
effective date of any termination or expiration, including without limitation,
obligations to deliver Product and pay amounts owed, shall survive such
termination or expiration.
(b) In the event of a termination or expiration of this
Agreement, the provisions of this Agreement shall continue to apply to all
purchase orders accepted by Argonaut prior to the effective date of such
termination or expiration.
(c) In the event of default by Argonaut, Symyx may take any
reasonable steps which Symyx deems appropriate and which are authorized by law
or this Agreement to obtain the benefit of its bargain pursuant to this
Agreement in addition to or in lieu of the termination procedure set forth in
this Paragraph.
(d) In the event of any termination of this Agreement by Symyx
under Section 11.2 or, the licenses granted in Section 2.1 shall terminate.
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(e) In the event of a termination or expiration of the Agreement,
Argonaut will provide Symyx with all necessary technical, supply, economic, and
marketing information regarding Products during the six months prior to the
termination date so that Symyx may continue to provide its partners and
customers with Products.
11.5 Survival. Sections 2.2(b), and 12.5 and Articles 9, 10, 13, and
14 shall survive the termination of this Agreement for any reason.
12. DISPUTE RESOLUTION
12.1 Arbitration. If a dispute arises between the parties relating to
the interpretation or performances of this Agreement or the grounds for the
termination thereof, representatives of the parties with decision-making
authority shall meet to attempt in good faith to negotiate a resolution of the
dispute prior to pursuing other available remedies. If within thirty (30) days
after such meeting the parties have not succeeded in negotiating a resolution
of the dispute, such dispute shall be submitted to final and binding
arbitration under the then current Commercial Arbitration Rules of the American
Arbitration Association ("AAA") by one (1) arbitrator in San Francisco,
California. Such arbitrator shall be selected by the mutual agreement of the
parties or, failing such agreement, shall be selected according to the
aforesaid AAA rules. The arbitrator will be instructed to prepare and deliver a
written, reasoned opinion stating his decision within thirty (30) days of the
completion of the arbitration. Such arbitration shall be concluded within nine
(9) months following the filing of the initial request for arbitration. The
parties shall bear the costs of arbitration equally and shall bear their own
expenses, including professional fees. The decision of the arbitrator shall be
final and non-appealable and may be enforced in any court of competent
jurisdiction.
13. MISCELLANEOUS
13.1 Governing Law. THIS AGREEMENT AND ALL ACTS AND TRANSACTIONS
PURSUANT HERETO AND THE RIGHTS AND OBLIGATIONS OF THE PARTIES HERETO SHALL BE
GOVERNED, CONSTRUED AND INTERPRETED IN ACCORDANCE WITH THE LAWS OF THE STATE OF
CALIFORNIA, WITHOUT REFERENCE TO RULES OF CONFLICTS OR CHOICE OF LAWS.
13.2 Independent Contractors. The relationship of Argonaut and Symyx
established by this Agreement is that of independent contractors, and nothing
contained in the Agreement shall be construed to (i) give either party the
power to direct and control the day-to-day activities of the other, (ii)
constitute the parties as partners, joint venturers, co-owners or otherwise as
participants in a joint or common undertaking, or (iii) allow either party to
create or assume any obligation on behalf of the other party for any purpose
whatsoever.
13.3 Compliance with Laws. Argonaut shall perform this Agreement in
compliance with all applicable federal, state and local laws, rules and
regulations. Argonaut shall indemnify Symyx and its distributor and customers
for loss or damage sustained because of Argonaut's noncompliance with any such
law, rule or regulation. Argonaut shall furnish to Symyx any information
requested or required by Symyx during the term of this Agreement or any
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extensions hereof to enable Symyx to comply with the requirements of any U.S. or
foreign federal, state and/or government agency.
13.4 No Use of Names. Except as expressly provided herein, neither
party will use the name of the other in its advertising or promotional
materials without the prior written consent of such other party.
13.5 Confidentiality of Agreement. Except as required by law,
Argonaut shall not disclose the contents or any term of this Agreement to any
person or entity without the prior written consent of Symyx.
13.6 No Conflicting Obligations. Argonaut agrees not to engage in any
work or services on its behalf or for any other party which would conflict with
its obligations under this Agreement.
13.7 Patent Marking. Argonaut shall xxxx and have its Affiliates xxxx
all Products they sell or distribute pursuant to this Agreement to provide
notice of issued and pending patent applications having claims that cover the
Product. The form of such marking shall be in accordance with the applicable
statute or regulations in the country or countries of manufacture and sale
thereof.
13.8 Interpretation. The parties hereto acknowledge and agree that:
(i) each party and its counsel reviewed and negotiated the terms and
provisions of this Agreement and have contributed to its revision; (ii) the
rule of construction to the effect that any ambiguities are resolved against
the drafting party shall not be employed in the interpretation of this
Agreement; and (ii) the terms and provisions of this Agreement shall be
construed fairly as to all parties hereto and not in a favor of or against any
party, regardless of which party was generally responsible for the preparation
of this Agreement.
13.9 Force Majeure. Neither party shall be held responsible for any
delay or failure in performance hereunder (except for failure to make any
payment due hereunder) caused by strikes, embargoes, unexpected government
requirements, civil or military authorities, acts of God, or by the public
enemy or other similar causes reasonably beyond such party's control and
without such party's fault or negligence.
13.10 Further Assurances. At any time or from time to time on and
after the Effective Date, a Party shall at the request of the other Party (i)
deliver to such other Party such records, data or other documents consistent
with the provisions of this Agreement, and (ii) execute, and deliver or cause
to be delivered, all such assignments, consents, documents or further
instruments of transfers or license, and (iii) take or cause to be taken all
such other actions, as such other Party may reasonably deem necessary or
desirable in order for such other Party to obtain the full benefits of this
Agreement and the transactions contemplated hereby.
13.11 Notices. Any notice required or permitted by this Agreement
shall be in writing and shall be sent by prepaid registered or certified mail,
return receipt requested, internationally recognized courier or personal
delivery, or by fax with confirming letter mailed under
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the conditions described above in each case addressed to the other party at the
address shown below or at such other address for which such party give notice
hereunder. Such notice shall be deemed to have been given when delivered:
If to Symyx: 0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attn:
------------------------
If to Argonaut: 000 Xxxxxxxxxx Xx., Xxx. X
Xxx Xxxxxx, Xxxxxxxxxx 00000
Attn: Xxx X. Xxxxxx
13.2 Assignment. Argonaut shall not assign this Agreement or any
rights hereunder, directly or indirectly, by operation of law, change of control
or otherwise, without the prior written consent of Symyx. Notwithstanding the
foregoing, Argonaut may assign this Agreement without the consent of Symyx to
an acquirer of all or substantially all of the stock or assets of Argonaut
pertaining to the Agreement. Symyx may assign this Agreement without
restriction. Any permitted assigns or successors hereof shall be bound by all
terms and conditions of this Agreement.
13.3 Severability: Waiver. If any provision(s) of this Agreement shall
be held invalid, illegal or unenforceable by a court of competent jurisdiction,
this Agreement shall continue in full force and effect without said provision.
The failure of a party to enforce any provision of the Agreement shall not be
construed to be a waiver of the right of such party to thereafter enforce that
provision or any other provision or right.
13.14 Entire Agreement. This Agreement together with the Exhibits
hereto represent and constitute the entire agreement between the parties and
supersede all prior agreements and understandings with respect to the matters
covered by this Agreement. This Agreement may only be amended in writing signed
by both parties.
SYMYX TECHNOLOGIES, INC. ARGONAUT TECHNOLOGIES, INC.
By: By: /s/ Xxxxx X. Xxxxxxx
----------------------------- --------------------------------
Print Name: Xxxxxx Xxxxxx Print Name: Xxxxx X. Xxxxxxx, Ph.D.
Title: CEO Title: President and CEO
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Exhibits: A: Development Plan (Joint Development Committee Plan)
B: Product Description and Specifications
C: Marketing Plan
D: Intellectual Property Rights
E: Argonaut's Standard Terms and Conditions of Sale
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EXHIBIT A
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JOINT DEVELOPMENT COMMITTEE
1. A committee will be established as outlined in Section 4.2 of the Agreement
for the purpose of reviewing the development of the product. The committee
will be called the Joint Development Committee and the operating points are
outlined below.
(a) Participants: Argonaut (Xxx Xxxxxx, Xxx Xxxxxx)
Symyx (Xxxxxxx Xxxxx, Xxxx xxx Xxxxx)
(b) Duration of the Committee: The Committee will continue to meet until
three months after commercial shipment of the Product, and then on an
as-needed basis to discuss Improvements and Know-how.
2. Meetings: Bi-weekly, held at Argonaut or Symyx to be determined by the JDC.
3. Product Development Plan.
The Product Development Plan is targeted for completion on
September 17, 1999.
4. Meeting Agenda:
(a) Development Schedule Review. The development schedule will be reviewed
at the meetings and any changes will be noted during the meetings.
(b) Product Specification Review. The Product Specification and performance
testing will be reviewed at the meetings and any changes will be noted
during the meetings.
(c) Material Improvements. Material Improvements will be reviewed at the
meetings and approved by the committee as outlined in Section 2.3 of the
Agreement.
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Depth: 16-inches
(h) Power Requirements
100 - 240 VAC, 750 Xxxxx
(i) Certifications
Laboratory Product Safety EN61010
Electromagnetic Compliance to European 89/336/EEC EMC Directive
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Providing instrument service support through both corporate and field
service organizations worldwide, providing documentation for both
customers and worldwide service organizations to support maintenance
and usage of instrument, and monitoring customer usage and satisfaction
to ensure success.
3. The initial strategy in 1999 will be to:
(a) Quickly get the product launched to ensure market awareness.
(b) Focus on key accounts already identified by both companies for
immediate sales.
(c) Train and build the sales/marketing organizations so we are
prepared for much greater market penetration in the year 2000
and beyond.
4. Our preliminary budget expectations, which includes only those
resources dedicated to the PPR-8 product such as personnel, advertising,
marketing collateral, tradeshows and documentation are:
(a) $225,000 for 1999
(b) $625,000 for the year 2000.
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EXHIBIT D
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PATENT RIGHTS
1. Following is a list of filed, pending patent applications:
(a) "Parallel Reactor with Internal Sensing and Method of Using Same" as
directed toward the parallel polymerization reactor and the internal
property/reaction sensing methods.
(b) "Improved Parallel Reactor with Internal Sensing" as directed toward
improvements made in the Parallel Polymerization Reactor, including the
magnetic feed through and the removable stirrer.
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EXHIBIT E
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STANDARD TERMS AND CONDITIONS OF SALE
1. PRICE: Quoted prices are valid for 30 days from the date of the quote
unless canceled in writing by Seller. Shipping charges, insurance, duties
and taxes are not included in prices and will be invoiced, if applicable,
as separate items.
2. PACKING AND LOSS OR DAMAGE IN TRANSIT: Equipment will be packed for
shipment in a manner suitable to air or truck. Unless otherwise indicated
on the sales order acknowledgement, all sales are F.O.B. shipping point
and, subject to Paragraph 5, all risk of loss or damage to equipment in
transit is upon Buyer. Payment will be made in accordance with Paragraph 4
below.
3. TAXES: Buyer is responsible for the ultimate payment of all taxes which may
be assessed or levied on or on the account of materials sold hereunder to
the Buyer whether termed a gross receipts tax, use tax, property tax, sales
tax or otherwise. Where Buyer claims that this transaction is not subject to
any such tax; that Buyer is exempt or that Seller is not required to collect
such tax. Buyer agrees to provide Seller with any documentation necessary to
support such a claim, to allow Seller to document its decision not to
collect such tax(es), and to indemnify Seller from any subsequent claims
that such tax(es) were due.
4. TERMS OF PAYMENT: Payment terms are net 30 from day of invoicing, not
installation. Seller reserves the right in its sole discretion to require
alternative payment terms, including, without limitation, sight draft,
letter of credit or full or partial payment in advance.
5. INSTALLATION AND SITE PREPARATION: Installation services are included in the
purchase price of the equipment sold hereunder only if expressly so stated
on the face of the seller's quote or in Seller's most current price list.
For equipment requiring installation by Seller's service personnel, it is
the responsibility of the Buyer to prepare the site environmentally and
provide the required services, power, water, drain, air, bottled and
compressed gases, permits, licenses, approvals, etc. as well as whatever is
required to uncrate and move the equipment to its location. The tasks that
must be completed by the Buyer prior to Seller installation are outlined in
the Seller's pre-installation manual.
6. DELIVERY DATES: The scheduled shipping date shown on the sales order
acknowledgement is our best estimate of the time the order will be shipped.
Seller may make, and invoice, partial shipments. Seller assumes no liability
for loss, general damages, or special or consequential damages due to
delays.
7. RETURNED GOODS: Credit will not be issued for goods returned without prior
approval. Please call Order Administration for required approval and return
procedures. Returns
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may be subject to a restocking fee. Termination: Upon any termination or
cancellation of this sales order by Buyer, either in whole or in part, Buyer
agrees to promptly pay appropriate termination or cancellation charges
invoiced by Seller.
8. WARRANTY: Seller makes the following warranties with respect to the
equipment sold hereunder:
(a) Hardware products against defects in materials and workmanship for one
year from the original date of invoicing. Seller will use reasonable efforts
to repair or replace in its sole discretion, such defective hardware at no
charge provided that Seller is notified of defects within the warranty
period.
(b) Software has a limited warranty to the original purchaser that the media
on which the program is distributed and the documentation will be free from
defects in materials and workmanship.
(c) Seller makes and Buyer receives no other warranty express or implied and
all warranties of merchantability and fitness for a particular purpose are
expressly excluded. Neither party shall have any liability with respect to
its obligations under this agreement for consequential, exemplary, or
incidental damages even if it has been advised of the possibility of such
damages.
(d) Consumable products or the like are only warranted to conform to the
quantity and content stated on the label at the time of delivery.
9. EXCLUSIONS: This warranty covers normal use. Seller does not warrant and
will not be held responsible for loss or damages resulting from a cause
other than defects in material or workmanship, including damage or loss
caused by:
(a) neglect, accident, servicing or modification by anyone other than a
qualified service engineer;
(b) any natural disaster, including earthquake, lightning, flood, or fire;
electrical surges or use of improper power sources;
(c) failure to perform routine preventative maintenance as specified in the
user operation manual; or
(d) non-conformance to recommended instrument operation procedure.
10. SOFTWARE LICENSES AND COPYRIGHTED MATERIAL: Seller provides certain software
products by license only. The terms of the license are available from Seller
and are accepted by Buyer on delivery of the licensed software. Unless
otherwise specified, Seller's copyrighted material (software, firmware and
printed documentation) may not be copied except for archive purposes, to
replace a defective copy, or for program error verification by Buyer.
11. AUTHORITY TO EXPORT: All orders accepted for export (and/or re-export) are
subject to: a) issuance of an export (re-export) license by the United
States Government, and b) the Buyer providing Seller with all documentation
necessary for shipment to the destination country.
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12. INDEMNITY: Seller agrees to defend, at its own expense, any suit or legal
proceeding which may be brought against Buyer alleging infringement by Buyer
of any third party's intellectual property rights, by Buyer's use of the
Product sold hereunder for its intended purpose, provided that Buyer shall
give Seller prompt written notice of any claim, threat, or institution of
suit or legal proceeding and provided that Seller shall then have the sole
right to control and conduct the defense and/or settlement of such claim,
threat, suit or legal proceeding, either in the name of Seller or Buyer or
both, and Buyer shall, at Seller's request and expense, provide relevant
information and reasonable cooperation. Seller shall pay final judgment and
all costs and attorney's fees assessed against Buyer in any such suit or
legal proceeding, provided Buyer has complied with the conditions hereof
with respect to prompt notice and cooperation in connection with such suit
or legal proceeding and given exclusive control thereof to Seller, but
Seller shall not be liable for any attorney's fees or other legal expenses
incurred by Buyer without the knowledge and prior written consent of Seller.
Seller shall also have the right, at its own expense, to replace the
equipment claimed to infringe with equally satisfactory non-infringing
equipment, modify said Product so that it becomes non-infringing, or remove
such equipment and refund the price thereof.
The foregoing indemnity fully defines Seller's obligations for patent
infringement. Such obligations to defend and make payment shall specifically
not apply to:
(a) An infringement claim resulting from additions or changes in or to the
product made by Buyer or any third party or from use in combination with
other equipment, where such claim would not have occurred but for such
addition or combination, or
(b) An infringement claim which is settled without the consent of Seller, or
(c) The total amount of Seller's obligation and liability under this Section
shall not exceed the price paid by Buyer to Seller for the product held to
infringe and in no event will Seller be accountable for special or
consequential damages under this indemnity, such as, for example, loss of
business profits or goodwill.
13. SPECIFICATIONS: Weights and dimension set forth in sales literature are not
guaranteed unless previously certified in writing. Seller may without
affecting the obligations under this sales order, make insignificant changes
to the specification of the product or products delivered under this sales
order from those contained in sales literature.
14. MISCELLANEOUS: This sales order is made and entered into and shall be
governed by the laws of the State of California.
