1
AN "XXXXX" INDICATES THAT CONFIDENTIAL MATERIAL HAS BEEN OMITTED AND FILED
SEPARATELY IN A REQUEST FOR CONFIDENTIAL TREATMENT WITH THE SECURITIES AND
EXCHANGE COMMISSION
EXHIBIT 10.39
TECHNOLOGY DEVELOPMENT
AND
PURCHASE AGREEMENT
BETWEEN
SMITHKLINE XXXXXXX
AND
MOLECULAR DYNAMICS
DATED AS OF NOVEMBER 18, 1996
2
TABLE OF CONTENTS
PAGE NUMBER
1. DEFINITIONS 4
2. PAYMENTS 8
3. DEVELOPMENT AND DELIVERY OF 11
ARRAY SPOTTERS AND ARRAY SCANNERS
4. PURCHASE OF ADDITIONAL ARRAY SPOTTERS 14
AND ARRAY SCANNERS
5. TECHNICAL TRAINING AND SUPPORT 14
6. TECHNOLOGY DEVELOPMENT PERIOD 18
7. CONFIDENTIALITY 20
8. INTELLECTUAL PROPERTY 22
9. REPRESENTATIONS, WARRANTIES, 23
COVENANTS AND LIMITATION OF LIABILITY
10. INDEMNITY 25
11. TERM AND XXXXXXXXXXX 00
00. EFFECT OF TERMINATION OR EXPIRATION 29
13. NOTICES 30
14. ASSIGNMENT 31
15. ADDITIONAL TERMS AND CONDITIONS 32
APPENDIX A 35
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TECHNOLOGY DEVELOPMENT AND
PURCHASE AGREEMENT
This Technology Development and Purchase Agreement ("AGREEMENT"), made
as of the 18th day of November, 1996, by and among SmithKline Xxxxxxx
Corporation, a Pennsylvania corporation with its principal offices at Xxx
Xxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxxxxxx 00000, U.S.A, SmithKline Xxxxxxx
p.l.c., a corporation organized under the laws of England and having a place of
business at Xxxxx Xxxx Xxxx, Xxxxxxxxx, Xxxxxxxxx, Xxxxxxx ("SB") and Molecular
Dynamics, Inc. (a Delaware corporation) 000 Xxxx Xxxxxx Xxxxxx, Xxxxxxxxx, XX
00000-0000 ("MD");
WHEREAS, there is mutual interest in accelerating development of array
making and detecting instrumentation at MD and array-based applications at SB;
and
WHEREAS, MD wishes to have a close technical and business collaboration
with SB, including feedback on the use and performance of such array making and
detecting instrumentation for an actual end-user; and
WHEREAS, MD expects to use SB's input to advance the design and
performance of the commercial versions of such array making and detecting
instrumentation; and
WHEREAS, SB expects to gain access to a high level of training and
technical support services from MD for a period of time and a time advantage in
SB's access to MD's instrumentation for its own research and development
activities.
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NOW, THEREFORE, in consideration of the premises and the
mutual covenants herein contained, the parties hereto intending to be legally
bound agree as follows:
1. DEFINITIONS
"AFFILIATE", with respect to a party hereto, means any corporation,
firm, partnership or other entity, whether de jure or de facto, which directly
or indirectly owns, is owned by or is under common ownership with such party to
the extent of at least fifty percent (50%) of the equity (or such lesser
percentage which is the maximum allowed to be owned by a foreign corporation in
a particular jurisdiction) having the power to vote on or direct the affairs of
the entity, and any person, firm, partnership, corporation or other entity
actually controlled by, controlling or under common control with such party.
SB AFFILIATES (defined above) which are any corporation, firm, partnership or
other entity, whether de jure or de facto, which directly or indirectly owns,
is owned by or is under common ownership with such party to the extent of at
least fifty percent (50%) of the equity (or such lesser percentage which is the
maximum allowed to be owned by a foreign corporation in a particular
jurisdiction) but not greater than eighty percent (80%) having the power to
vote on or direct the affairs of the entity, and any person, firm, partnership,
corporation or other entity actually controlled by, controlling or under common
control with such party shall exclude those AFFILIATES whose primary business
is instrumentation for research.
"ARRAY SCANNER" shall mean the XXXXXXXXXXXXXXXXXX instrument and
associated software known by MD as XXXXXXXXXXXXX GENERATION X, GENERATION XX,
GENERATION XXX, having the ability to rapidly and accurately identify and
quantify fluorescent labeled probes hybridized or bound to the DNA
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and/or other biological materials spotted in an array by an ARRAY SPOTTER as
detailed in Appendix A.
"ARRAY SPOTTER" shall mean the XXXXXXXXXXXXXXXXXXXXXXX instrument and
associated chemistry and software known by MD as XXXXXXXXXXX GENERATION X,
GENERATION XX, GENERATION XXX, having the ability to spot DNA and other
biological materials on a substrate as detailed in Appendix A.
"CAPILLARY SEQUENCER" shall mean the pre-commercial instrument and
associated chemistry and software known by MD as XXXXXXXXX, having the ability
to sequence DNA as detailed in Appendix A.
"EFFECTIVE DATE" shall mean the date first written above.
"FUNCTIONALLY INSTALL(ED) (or FUNCTIONAL INSTALLATION)"
shall mean a qualified representative of MD will unpack the Array SCANNERs and
Array SPOTTERS and install them in a laboratory setting that has been
previously confirmed to meet each of the specifications outlined in the
Customer Planning Guide to be supplied in writing from MD to Customer at least
one (1) month prior to shipment of their first Array Spotter and Array Scanner.
The MD representative shall then confirm the basic functionality of the system
by using the Array Spotter to spot dye-labeled DNA samples provided by MD from
XXXX microplates onto XXXXXXX glass slides. All XXXXXXXXXX slides shall then
be scanned using the Array Scanner to confirm that at XXXXXXXXXXXXXXXX of the
samples have been successfully deposited and detected. FUNCTIONAL INSTALLATION
of the ARRAY SPOTTER shall also mean verifying the relevant sample carryover
specification listed in Appendix A using MD's standard procedure with
32P-labeled samples provided by SB. FUNCTIONAL INSTALLATION specifically
excludes
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meeting specific hybridization levels or using Customer's own samples to assess
performance.
"GENERATION X" shall mean ARRAY SPOTTERS and/or ARRAY SCANNERS meeting
the specifications set forth in Appendix A and FUNCTIONALLY INSTALLED at SB.
"GENERATION XX" shall mean ARRAY SPOTTERS and/or ARRAY SCANNERS
meeting the specifications set forth in Appendix A and FUNCTIONALLY INSTALLED
at SB and which have been materially modified and/or materially improved as
compared to GENERATION I ARRAY SPOTTERS and/or ARRAY SCANNERS.
"GENERATION XXX" shall mean ARRAY SPOTTERS and/or ARRAY SCANNERS
meeting the specifications set forth in Appendix A and FUNCTIONALLY INSTALLED
at SB and which have been materially modified and/or materially improved as
compared to GENERATION XX ARRAY SPOTTERS and/or ARRAY SCANNERS.
"MD" shall mean, collectively, Molecular Dynamics Inc., and any of its
respective AFFILIATE(S) to which any rights and/or obligations of either of
them shall be assigned and/or delegated pursuant to this AGREEMENT.
"MD DEVELOPED TECHNOLOGY" means any and all inventions and discoveries
made by MD during the TECHNOLOGY DEVELOPMENT PERIOD and TECHNOLOGY ACCESS
PERIOD using SB Confidential Information other than inventions and discoveries
to the hardware, instrument control and analysis
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software, binding and deposition chemistry each relating to the ARRAY SPOTTER
or ARRAY SCANNER.
"PROOF OF CONCEPT" shall mean experiments relating to ARRAY SPOTTERS
and ARRAY SCANNERS not exceeding running XXXXXXXX individual samples in a
XXXXXXXXXX well plate and which demonstrate the satisfactory performance of the
ARRAY SCANNER and ARRAY SPOTTER
"SB" shall mean, collectively, SmithKline Xxxxxxx Corporation,
SmithKline Xxxxxxx p.l.c, and any of their respective AFFILIATE(S) to which any
rights and/or obligations of either of them shall be assigned and/or delegated
pursuant to this AGREEMENT.
"SB DEVELOPED TECHNOLOGY" means any and all modifications or
improvements to the hardware, instrument control and analysis software, binding
and deposition chemistry each relating to the ARRAY SPOTTER or ARRAY SCANNER
made by SB during the TECHNOLOGY DEVELOPMENT PERIOD and the TECHNOLOGY ACCESS
PERIOD.
"STRATEGIC COLLABORATOR" shall mean (1) during the TECHNOLOGY
DEVELOPMENT PERIOD, any THIRD PARTY MD and SB mutually agree to in writing and
(2) after the TECHNOLOGY DEVELOPMENT PERIOD and during the TECHNOLOGY ACCESS
PERIOD, shall mean a) any THIRD PARTY engaged in XXXXXXXXXXXXXX or XXXXXXXXXX
research or development whom MD and SB mutually agree to in writing or b) any
other THIRD PARTY not engaged in such XXXXXXXXXXXXXX or XXXXXXXXXX research or
development.
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"TECHNOLOGY ACCESS CUSTOMER" shall mean any THIRD PARTY other than a
STRATEGIC COLLABORATOR who is granted access by MD to an ARRAY SPOTTER and/or
ARRAY SCANNER pursuant to Section 6.
"TECHNOLOGY ACCESS PERIOD" shall mean (1) for ARRAY SCANNERS a period
beginning XXXXX after the date of FUNCTIONAL INSTALLATION of the first ARRAY
SCANNER and ARRAY SPOTTER at SB and ending XXXXXXXXX after FUNCTIONAL
INSTALLATION of the first ARRAY SCANNER and ARRAY SPOTTER at SB and (2) for
ARRAY SPOTTERS a period beginning XXXXXX after the date of FUNCTIONAL
INSTALLATION of the first ARRAY SCANNER and ARRAY SPOTTER at SB and ending
XXXXXXXXX after FUNCTIONAL INSTALLATION of the first ARRAY SCANNER and ARRAY
SPOTTER at SB.
"TECHNOLOGY DEVELOPMENT PERIOD" shall mean the period beginning upon
the EFFECTIVE DATE and ending XXXXXXX after FUNCTIONAL INSTALLATION of the
first ARRAY SPOTTER and ARRAY SCANNER at SB.
"THIRD PARTY(IES)" shall mean any individual or entity other than SB
and MD.
2. PAYMENTS
2.1 SB shall make payments to MD of XXXX US Dollars (US $XXXXXX)
as follows:
(a) In consideration for the XXXXX access to ARRAY SPOTTERS and
ARRAY SCANNERS and the XXXXXXXXXXX periods set forth herein, XXX
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XXXX US Dollars (US $XXXXX) no later than XXXXXX days following the
EFFECTIVE DATE of this AGREEMENT; and, to support ongoing research and
development for ARRAY SPOTTERS and ARRAY SCANNERS to produce the
instruments required herein,
(b) XXXXX US Dollars (US $XXXXXXX) no later than XXXXXXX days
following the FUNCTIONAL INSTALLATION of the first ARRAY SPOTTER and
ARRAY SCANNER to SB; and
(c) XXXXXX US Dollars (US $XXXXXXX) no later than XXXXXX days
following the last to occur of the FUNCTIONAL INSTALLATION of the
XXXXXX and XXXXX ARRAY SPOTTER and XXXXXX and XXXXX ARRAY SCANNER at
SB.
2.2 In addition to the XXXX ARRAY SPOTTERS and ARRAY SCANNERS due
SB under this AGREEMENT pursuant to Paragraph 3.1, the purchase price for
additional ARRAY SPOTTERS and ARRAY SCANNERS which may be purchased by SB from
MD pursuant to Paragraph 4.1 shall be as follows:
(a) For the TECHNOLOGY DEVELOPMENT PERIOD and the TECHNOLOGY
ACCESS PERIOD, the XXXX of (i) the XXXXXXX offered any THIRD PARTY
(excluding STRATEGIC COLLABORATORS) for each such ARRAY SPOTTER and
ARRAY SCANNER; (ii) XXXXXX XXXX US Dollars (US $XXXXX) per ARRAY
SPOTTER or ARRAY SCANNER; or (iii) XXXXXXXXXXXXXX for such ARRAY
SPOTTER or ARRAY SCANNER.
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(b) For the first XXXXXXXXXXX following the first commercial sale of
each of an ARRAY SPOTTER and ARRAY SCANNER to a THIRD PARTY, the
XXXXXX of (i) XXXXXXX US Dollars (US $XXXXXX) per ARRAY SPOTTER or
ARRAY SCANNER or (ii) XXXXXXXXXXX for such ARRAY SPOTTER or ARRAY
SCANNER or (iii) the XXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX for each such ARRAY
SPOTTER and ARRAY SCANNER. The parties agree that the price minimums
set forth in this subparagraph 2(b) shall not apply to (a) transfers
of ARRAY SPOTTERS and ARRAY SCANNERS to distributors, Value Added
Resalers (VARS), systems integrators of MD at standard discounts; (b)
strategic placements to non-profit and academic institutions; and (c)
sale of used or refurbished ARRAY SPOTTERS and ARRAY SCANNERS.
2.3 SB agrees that payments made to MD pursuant to this Agreement
shall be made from a United States bank account.
2.4 SB agrees that sales, use or other similar taxes, or VAT,
customs charges and duties or other similar charges that may be imposed
pursuant to this Agreement associated with the transfer of ARRAY SPOTTERS,
ARRAY SCANNERS and CAPILLARY SEQUENCERS and associated miscellaneous products
pursuant to this Agreement shall be the responsibility of SB. SB agrees that
it will self-assess such taxes and/or charges, if any. The parties agree to
cooperate in good faith in the preparation of any relevant shipping documents
associated with such transfer. Nothing in this Agreement shall be deemed to
mean that SB shall be responsible for income taxes or similar taxes that may be
imposed on MD.
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3. DEVELOPMENT AND DELIVERY OF ARRAY SPOTTERS AND ARRAY SCANNERS
3.1 MD shall use commercially reasonable efforts to (a) develop
and make ARRAY SPOTTERS and ARRAY SCANNERS and (b) provide them on the
following target dates, without consideration except as set forth in Section
2.1 above, to SB as follows:
(a) XXXXX GENERATION XX ARRAY SPOTTER and XXXXX GENERATION XX
ARRAY SCANNER by XXXXXXXXXX.
(b) XXXXXXXX GENERATION XX ARRAY SPOTTER and XXXXX GENERATION XX
ARRAY SCANNER by XXXXXXX and before FUNCTIONAL INSTALLATION of either
an GENERATION XX ARRAY SPOTTER or GENERATION XX ARRAY SCANNER for any
TECHNOLOGY ACCESS CUSTOMER or STRATEGIC COLLABORATOR.
(c) XXXXXXX GENERATION XX ARRAY SPOTTERS and XXXXX GENERATION XX
ARRAY SCANNERS by XXXXXXX.
(d) XXXXX GENERATION XXX ARRAY SPOTTERS and XXXX GENERATION XXX
ARRAY SCANNERS by XXXXXXX.
3.2 SB and MD may mutually agree in writing to change the
distribution of the number of GENERATION XX and XXX ARRAY SPOTTERS and ARRAY
SCANNERS to be delivered to SB pursuant to Paragraph 3.1 provided XXXX XXXX
written notice is provided by SB to MD of any requested change. Since SB
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and MD agree that the anticipated delivery dates of the GENERATION X and the
first and second GENERATION XX units are all within the XXXXX TECHNOLOGY
DEVELOPMENT PERIOD, and since the required six XXXXX notice of change request
can not be given, these units may not be substituted or rescheduled by SB.
3.3 SB may in its sole discretion substitute up to XXX XXX XXXXX
of ARRAY SPOTTERS and ARRAY SCANNERS to be delivered to SB pursuant to
Paragraph 3.1 (d), for a number of XXXXXXXXX XXXXXXXXXX equal to the number of
pairs to be substituted.
3.4 The target dates in Paragraph 3.1 above are dependent upon the
performance by SB of its obligations in this AGREEMENT, including but not
limited to providing necessary samples and test data to MD on a timely basis,
as provided in Paragraph 5.9. It is agreed that XXXXXXXXXXXX XXXXXXXXXXXXXX for
the ARRAY SPOTTER and ARRAY SCANNER have not yet been established and that
determining their XXXXXXXXXXX XXXXXX is part of the TECHNOLOGY DEVELOPMENT
PERIOD. Therefore, FUNCTIONAL INSTALLATION shall not include XXXXXXX
XXXXXXXXXXX XXXXXX not specifically detailed in this Agreement nor include
demonstrating XXXXXXXXXXX of the ARRAY SCANNER or the ARRAY SPOTTER in XXXX XXX
XXXXXXXXXXXXXX XX XXXXX XXXX XXX XXXXXXX.
3.5 For FUNCTIONAL INSTALLATION, a qualified representative of MD
will unpack the ARRAY SCANNERS and ARRAY SPOTTERS and install them in a
laboratory setting, selected by SB, that has been previously confirmed to meet
each of the specifications outlined in the Customer Planning Guide to be
supplied in writing by MD to SB at least one (1) month prior to shipment of
the first GENERATION XX ARRAY SPOTTER and GENERATION XX ARRAY SCANNER. For the
first GENERATION X ARRAY SPOTTER and GENERATION X ARRAY
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SCANNER specifically, the parties agree that MD shall be required only to
complete the FUNCTIONAL INSTALLATION at SB in order to begin the XXXXXXXXXX XXX
XXXXXXXXXXX periods detailed in Paragraph 6. To further the collaboration, MD
agrees to place, XXXXXXXXXXX at least one Technical Support Specialist on site
at SB for XXXXXX to XXXXXX working days in the period directly following the
FUNCTIONAL INSTALLATION of the first GENERATION X ARRAY SPOTTER and GENERATION
I ARRAY SCANNER to assist with characterization and technical support on the
products.
3.6 ARRAY SPOTTERS and ARRAY SCANNERS delivered pursuant to
Paragraph 3.1.(a) shall be FUNCTIONALLY INSTALLED at SB within XX XXXXXXXXX of
such delivery.
3.7 The GENERATION X ARRAY SCANNER and ARRAY SPOTTER in paragraph
3.1(a) at SB shall be either (i) XXXXXXXX or (ii) XXXXXXXXX to GENERATION XX no
later than XXXXXXXXX with the choice between either (i) or (ii) at MD's sole
discretion. MD shall make commercially reasonable efforts to provide in-process
enhancements in each generation to further the collaboration. MD makes no
commitment to XXXXXXX or XXXXXXXX GENERATION XX or GENERATION XXX units
installed at SB to the next generation or to the commercially available
product.
3.8 At XXXXXX and with XXXXXX notice and if commercial versions of
MD's array SPOTTERS and array SCANNERs are available, SB may XXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX pursuant to Paragraph
XXXXXXXXXXXXXXXXXXXX XXXXXXXXXXXXX of MD's array SPOTTERS and array SCANNERs.
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4. PURCHASE OF ADDITIONAL ARRAY SPOTTERS AND ARRAY
4.1 Following delivery of the XXXXX ARRAY SPOTTERS AND ARRAY
SCANNERS due under Paragraph 3.1 of this AGREEMENT and during the TECHNOLOGY
ACCESS PERIOD SB and SB AFFILIATES, in their sole discretion, may purchase
additional ARRAY SPOTTERS and ARRAY SCANNERS from MD, and MD shall provide such
additional ARRAY SPOTTER and ARRAY SCANNERS provided:
(a) SB forecasts its demand for such additional ARRAY SPOTTERS
and/or ARRAY SCANNERS XXXXXXXX in advance of required delivery;
(b) SB places confirmed and binding orders with MD for such
additional ARRAY SPOTTERS and/or ARRAY SCANNERS XXXXXXXXXX in advance
of required delivery; and
(c) The price for such additional ARRAY SPOTTERS and/or ARRAY
SCANNERS is determined pursuant to Paragraph 2.2.
4.2 MD agrees to XXXXXX notify SB of any significant delays
expected in connections with SB's forecast in Paragraph 4.1(a) and to work in
good faith to offer SB one or more options for lessening the impact of any such
delays.
5. TECHNICAL TRAINING AND SUPPORT
5.1 For XXXXXXXXXXXXXXX MD shall supply reasonable technical
support and support staff sufficient to assure installation and operation of
the first
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FUNCTIONALLY INSTALLED GENERATION X ARRAY SPOTTER and GENERATION X ARRAY
SCANNER and to enable XXXX SB scientists, selected by SB at its sole
discretion, to use such FUNCTIONALLY INSTALLED ARRAY SPOTTER and ARRAY SCANNER.
Such support by MD shall be made available at SB at the site of the
installation for at least XXXX working days promptly after the delivery of such
ARRAY SPOTTER and ARRAY SCANNER. The SB site of installation of the first
ARRAY SPOTTER and ARRAY SCANNER shall be XXX XXXXX.
5.2 For XXXXXXXXXXXX during the TECHNOLOGY DEVELOPMENT PERIOD, SB
shall have reasonable access to MD personnel for technical support following
the support provided on-site in Paragraph 5.1, provided MD personnel shall not
be required to make on-site visits to SB other than as provided in Paragraph
5.3. Such reasonable access to MD for personnel may include visits by SB to
MD.
5.3 For XXXXXXXXXXXXXX during the TECHNOLOGY DEVELOPMENT PERIOD,
MD shall make XXXX additional on-site visits to SB at the XX XXXX having a
GENERATION X ARRAY SPOTTER and ARRAY SCANNER to assure installation and
operation of such ARRAY SPOTTERS and ARRAY SCANNERS at times to be mutually
agreed on by the parties.
5.4 For XXXXXXXXXXXX MD shall supply reasonable technical support
and support staff sufficient to assure installation and operation of the first
GENERATION XX FUNCTIONALLY INSTALLED ARRAY SPOTTER and ARRAY SCANNER and to
enable XXXX XXX scientists, selected by SB at its sole discretion, to use such
FUNCTIONALLY INSTALLED ARRAY SPOTTER and ARRAY SCANNER. Such support by MD
shall be made available at SB at the site
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of the installation for at least two XXXXXXXXXX promptly after the delivery of
such ARRAY SPOTTER and ARRAY SCANNER. The SB site of installation shall be one
or more of the XXXXXXX or XXXXXX. SB shall make reasonable efforts to
consolidate training and installation requirements.
5.5 For XXXXXXXXXXXX MD shall supply reasonable technical support
and support staff sufficient to assure installation and operation of the first
GENERATION XXX FUNCTIONALLY INSTALLED ARRAY SPOTTER and ARRAY SCANNER and to
enable XXXXX SB scientists, selected by SB at its sole discretion, to use such
FUNCTIONALLY INSTALLED ARRAY SPOTTER and ARRAY SCANNER. Such support by MD
shall be made available at SB at the site of the installation for at least
XXXXXXXXX days promptly after the delivery of such ARRAY SPOTTER and ARRAY
SCANNER. The SB site of installation shall be one or more of the XXX XX XX
XXXXXXX. SB shall make reasonable efforts to consolidate training and
installation requirements.
5.6. Any additional technical training and support provided to SB
by MD and not specifically provided for in this AGREEMENT shall be at XXXXXXXX
XXXXXXX XXXXXXXX, provided such training and support is agreed to in writing in
advance.
5.7 MD agrees to collaborate closely with SB during the TECHNOLOGY
DEVELOPMENT PERIOD and the TECHNOLOGY ACCESS PERIOD and MD agrees to inform SB
of material improvements during the TECHNOLOGY DEVELOPMENT PERIOD and
TECHNOLOGY ACCESS PERIOD.
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5.8 SB shall have reasonable access at MD's site to prototype
ARRAY SPOTTERS and ARRAY SCANNERS prior to delivery of the GENERATION X ARRAY
SPOTTER and ARRAY SCANNER at SB.
5.9 SB agrees to collaborate closely with MD during the
TECHNOLOGY DEVELOPMENT PERIOD and SB agrees to inform MD of all SB DEVELOPED
TECHNOLOGY during the TECHNOLOGY DEVELOPMENT PERIOD and TECHNOLOGY ACCESS
PERIOD.
5.10 MD responsibilities under this agreement shall not include,
the supply of reagents or consumables required for the operation of ARRAY
SCANNERS or ARRAY SPOTTERS. However, MD shall use its commercially reasonable
efforts to assure that SB has access to the consumables required for operation
of the ARRAY SPOTTERS and ARRAY SCANNERS. MD shall supply SB, at no charge to
SB, with up to XXXXXXXXXXX XXXXXXX XXXXXXXXXXXXXXXXXX glass slides per month,
at SB's request, during each of XXXXXXXXXXXXXXXXXXX. In addition, MD will
train a SB employee to prepare such glass to the MD specification to ensure a
secondary supply of XXXXXXX XXXXXXXXXX XXXXXXX glass slides during the
TECHNOLOGY DEVELOPMENT PERIOD. No license is hereby granted to SB for
manufacture or sale of such XXXXXXX glass slides using the MD chemistry. Also,
MD shall maintain XXXXX full sets of quality controlled XXX replacements (per
spotter delivered to SB by MD under this Agreement) to be used by SB as needed
in the event of failure of the XXXX supplied with the ARRAY SPOTTERS. MD shall
acquire and store a reasonable supply of Cy3 and Cy5 reagents from Amersham
International p.l.c. for the purpose of offering a second source for these
reagents to SB should they become unavailable from Amersham International p.l.c
at any point during the TECHNOLOGY DEVELOPMENT PERIOD. Should these reagents
be unavailable from Amersham International p.l.c for a period exceeding XXXXXX
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XXXX days, SB may elect to purchase these reagents directly from MD at a price
equal to the price in effect from Amersham International p.l.c. to SB at the
time this election is exercised.
5.11 Promptly after the EFFECTIVE DATE MD and SB shall form a
working party. The working party shall comprise XXXXXX scientists from MD and
XXXX scientists from SB. The working party shall meet at least monthly by
phone or in person during the TECHNOLOGY DEVELOPMENT PERIOD and the TECHNOLOGY
ACCESS PERIOD. The working party will discuss, amongst other matters related
to the collaboration, approaches for the development and improvement of the
ARRAY SPOTTERS and ARRAY SCANNERS, for example (1) modification of the glass
XXXXXXX XXXXXXXXX XX XXXXXX XXXXXXXXXX when complex probes are used and (2)
equalization of XXXXXXXXXXXXX XXXXXXXXXX over the slide surface.
6. TECHNOLOGY DEVELOPMENT PERIOD
6.1 During the TECHNOLOGY DEVELOPMENT PERIOD, SB shall have
XXXXXXXX to ARRAY SPOTTERS and ARRAY SCANNERS provided that MD may enter into
agreements regarding ARRAY SPOTTERS and ARRAY SCANNERS only with STRATEGIC
COLLABORATORS and the XXXX TECHNOLOGY ACCESS CUSTOMER pursuant to Paragraph
6.2. The parties agree the first XXXX STRATEGIC COLLABORATORS shall be XXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX
provided all such STRATEGIC COLLABORATORS other than XXXXXXXXXXXXXXXXX shall
only have access to ARRAY SCANNERS during the TECHNOLOGY DEVELOPMENT PERIOD and
not ARRAY SPOTTERS. During the
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TECHNOLOGY ACCESS PERIOD, STRATEGIC COLLABORATORS shall have access to both
ARRAY SCANNERS and ARRAY SPOTTERS.
6.2 Only XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX XXXXXX may gain access
to only a GENERATION II ARRAY SCANNER and ARRAY SPOTTER at the earliest XXXXXX
following the FUNCTIONAL INSTALLATION at SB of one (1) GENERATION X ARRAY
SPOTTER and ARRAY SCANNER, provided the TECHNOLOGY ACCESS CUSTOMER pays MD at
least XXXXXXXX US Dollars ($US XXXX) inclusive of costs paid for the ARRAY
SPOTTER and ARRAY SCANNER and agrees to provisions substantially the same as
those in Paragraph 8.2. Prior to the delivery of such ARRAY SPOTTER and ARRAY
SCANNER, such TECHNOLOGY ACCESS CUSTOMER may request MD to demonstrate PROOF OF
CONCEPT. MD agrees it XXXXX XXX XXXXX TECHNOLOGY ACCESS CUSTOMER other access
to the ARRAY SPOTTERS and ARRAY SCANNERS during the above XXXXXXXXXX and SB
shall be the first to have access to a GENERATION XX ARRAY SPOTTER and ARRAY
SCANNER.
6.3 After the TECHNOLOGY DEVELOPMENT PERIOD, and during the first
XXXXXXXXXX of the TECHNOLOGY ACCESS PERIOD, TECHNOLOGY ACCESS CUSTOMERs may
gain access to ARRAY SCANNERs and ARRAY SPOTTERS, provided each TECHNOLOGY
ACCESS CUSTOMER pays MD at least XXXXXXX US Dollars ($US XXXXXXXXX) each for
access to the ARRAY SPOTTER and/or ARRAY SCANNER exclusive of costs paid for
the ARRAY SPOTTER and/or ARRAY SCANNER and agrees to provisions substantially
the same as those in Paragraph 8.2. After the TECHNOLOGY DEVELOPMENT PERIOD,
and after the first XXXXXXXXXX of the TECHNOLOGY ACCESS PERIOD, TECHNOLOGY
ACCESS CUSTOMERs may gain access to ARRAY
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SCANNERS and ARRAY SPOTTERS, provided each TECHNOLOGY ACCESS CUSTOMER pays MD
at least XXXXXXXXXXXX US Dollars ($US XXXXX) each for access to the ARRAY
SPOTTER and/or ARRAY SCANNER exclusive of costs paid for the ARRAY SPOTTER
and/or ARRAY SCANNER and agrees to provisions substantially the same as those
in Paragraph 8.2. Notwithstanding the foregoing, prior to the delivery of such
ARRAY SPOTTER and ARRAY SCANNER, such TECHNOLOGY ACCESS CUSTOMER may have MD
demonstrate PROOF OF CONCEPT. Except as provided above for PROOF OF CONCEPT,
MD agrees that during the TECHNOLOGY ACCESS PERIOD it XXXXX XXX XXXXX such
TECHNOLOGY ACCESS CUSTOMER other access to the ARRAY SPOTTERS and ARRAY
SCANNERs prior to delivery of their ARRAY SCANNER OR ARRAY SPOTTER.
6.4 MD agrees that it XXXX XXX XXXX XX XXXXX XX XX XXXX ARRAY
SPOTTERS or ARRAY SCANNERs to any THIRD PARTY, other than STRATEGIC
COLLABORATORS, TECHNOLOGY ACCESS CUSTOMERs or SB as permitted under this
AGREEMENT, during the TECHNOLOGY DEVELOPMENT PERIOD and TECHNOLOGY ACCESS
PERIOD.
7. CONFIDENTIALITY
7.1 Each party hereto (the "Receiving Party") agrees that it will
not, without the prior written consent of the other party hereto (the
"Disclosing Party") disclose to any THIRD PARTY any information disclosed to it
by the Disclosing Party, including without limitation, biological materials,
technology documents, software products, specifications, customer lists,
technical information or know-how, financial information, marketing or business
plans, and is marked "Confidential" or would reasonably be regarded in the
industry as confidential or proprietary
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(collectively, the "Confidential Information"). Furthermore, each party agrees
and will obtain or has obtained agreement from its employees and agents that
any Confidential Information obtained by the other pursuant to the terms of
this AGREEMENT will be retained as confidential and used only for the purposes
contemplated by this AGREEMENT.
7.2 The term "Confidential Information" does not include
information which (i) becomes generally available to the public other than as a
result of disclosure by the Receiving Party, (ii) was available to the
Receiving Party on a non-confidential basis prior to its disclosure by the
Disclosing Party, (iii) becomes available to the Receiving Party on a
non-confidential basis from a source other than the Disclosing Party, provided
that such disclosure did not violate any confidentiality obligations to the
Disclosing Party or its representatives, or (iv) was known to the Receiving
Party, as shown by its written records, prior to its disclosure to the
Receiving Party pursuant to this AGREEMENT.
7.3 The Receiving Party agrees to protect the Confidential
Information by not using it for any purpose, for itself or any THIRD PARTY,
other than those purposes contemplated by this AGREEMENT. Further, the
Receiving Party agrees to exercise at least that degree of care in protecting
the Confidential Information of the Disclosing Party as it exercises with
respect to its own confidential information which, in any event, shall not be
less than reasonable care.
7.4 No public announcement or other disclosure of non-public
information to any third party concerning the existence of or terms of this
AGREEMENT shall be made, either directly or indirectly, by any party hereto,
except as may be legally required (including pursuant to the rules and
regulations of the SEC) or as may be required for recording purposes, without
first obtaining the
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approval of the other party hereto and agreement upon the nature and text of
such announcement or disclosure. The party desiring to make any such public
announcement or other disclosure shall inform the other party of the proposed
announcement or disclosure in reasonably sufficient time prior to public
release, and shall provide the other party with a written copy thereof, in
order to allow such other party to comment upon such announcement or
disclosure.
7.5 After the end of the TECHNOLOGY ACCESS PERIOD or termination
of this Agreement, whichever is earlier, MD will cease all use of any SB
Confidential Information which are biological materials and Confidential
Information associated with such biological materials each which were
transferred to MD under this Agreement and marked as confidential.
8. INTELLECTUAL PROPERTY
8.1 MD shall have and retain sole and exclusive title to all
inventions, discoveries, designs, works of authorship and other know-how which
are made, conceived, reduced to practice or generated solely by its employees,
agents, or other persons acting under authority of MD. SB shall have and
retain sole and exclusive title to all inventions, discoveries, designs, works
of authorship and other know-how which are made, conceived, reduced to practice
or generated solely by employees, agents or other persons acting under
authority of SB. In the case of all inventions, discoveries, designs, works of
authorship and other know-how made, conceived, reduced to practice or generated
jointly by employees, agents, or other persons acting under the authority of
both parties hereto, each party shall own a fifty percent (50%) undivided
interest therein.
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8.2 Subject to SB's rights in and to ARRAY SPOTTERS and ARRAY
SCANNERs as provided in this AGREEMENT, SB hereby grants to MD an exclusive
worldwide right and license under SB DEVELOPED TECHNOLOGY to make, have made,
use, offer to sell, sell and have sold any and all products, processes,
apparatuses and compositions of matter (collectively hereinafter "Product"),
including the right to grant sublicenses.
8.3 MD hereby grants to SB an exclusive, except as to MD,
worldwide right and license under MD DEVELOPED TECHNOLOGY to make, have made,
use, offer to sell, sell and have sold any and all products, processes,
apparatuses and compositions of matter (collectively hereinafter "Product"),
including the right to grant sublicenses.
9. REPRESENTATIONS, WARRANTIES, COVENANTS AND LIMITATION OF
LIABILITY
9.1 MD hereby represents and warrants to SB, to the best of its
knowledge, that:
(a) it has, or will have as of the time of delivery of each ARRAY
SPOTTER and ARRAY SCANNER to SB, the full right, power and authority
to grant the rights, title and interest in the ARRAY SPOTTER and ARRAY
SCANNER that it has granted as the case may be, under this AGREEMENT;
(b) that it has not assigned, transferred or otherwise encumbered,
and will not assign, transfer or otherwise encumber such rights, title
and interest;
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(c) that no other person or entity has any claim of ownership
whatsoever with respect to ARRAY SPOTTERS and ARRAY SCANNERs to be
transferred to SB; that;
(d) that the technology embodied in the ARRAY SPOTTERS and ARRAY
SCANNERs XXXX XXX XXXXXXXX XXX XXXX XX XXXXXX XXXXXXX XXXXXXX;
provided, that the parties are aware that XXXXXXXXX XXXXXXXXXXXX of
the ARRAY SPOTTER and the ARRAY SCANNER XXX XXXXXXXX XXXX XXX
XXXXXXXXXXXX XXXXXXXX XXXXXX XX XXXXXX; XXX
(e) that there are no pending claims or litigation against MD
relating to ARRAY SPOTTERS and ARRAY SCANNERs.
9.2 As of the time of delivery of any portion of the SB DEVELOPED
TECHNOLOGY to MD, SB will notify MD if SB has knowledge that such transferred
SB DEVELOPED TECHNOLOGY may infringe any U.S. or United Kingdom patents or if
there are pending claims or litigation against SB relating to the SB DEVELOPED
TECHNOLOGY.
9.3 Each party hereto hereby represents and warrants to the other
parties hereto that it has full power and authority to execute and deliver this
AGREEMENT and to perform its obligations hereunder, and that its execution and
delivery of, and performance of the terms and conditions of this AGREEMENT will
not contravene, result in any breach of, or constitute a default under, any
order, judgment, decree or award of any court or other governmental body, or
any agreement or instrument by which it is bound.
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9.4 EXCEPT FOR THE FOREGOING EXPRESS WARRANTIES, NEITHER PARTY
MAKES ANY WARRANTIES AS TO ANY OTHER MATTER, INCLUDING WITHOUT LIMITATION ANY
WARRANTY AS TO MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
9.5 IN NO EVENT SHALL MD's LIABILITY TO SB UNDER THIS AGREEMENT
EXCEED AMOUNTS PAID BY SB TO MD UNDER THIS AGREEMENT.
10. INDEMNITY
10.1 MD agrees to indemnify, defend and hold SB and its officers,
directors, employees and agents harmless at MD's sole expense against any and
all damages, losses, and liabilities arising out of or resulting from any claim
that the technology embodied in the GENERATION X, XX XX XXX ARRAY SPOTTERS
and/or ARRAY SCANNERs infringe any U.S. or United Kingdom patent of a THIRD
PARTY ("Third Party Patent"). SB shall notify MD promptly in writing of any
notice, suit, or proceeding in which any claim is alleged for which SB intends
to seek indemnification hereunder, and MD shall have sole control to defend
and/or settle any such claim. MD shall incur no liability to SB under this
AGREEMENT to the extent that such infringement results from SB's modification
of the GENERATION XX XX XX XXX ARRAY SPOTTERS and/or ARRAY SCANNERs. If the
technology embodied in the GENERATION XX XX XX XXX ARRAY SPOTTERS and/or ARRAY
SCANNERs are determined to infringe any THIRD PARTY U.S. or United Kingdom
Patent, MD shall, at MD's expense in the following order of priority: (i)
provided that it is commercially reasonable to do so, procure for SB the right
to use such infringing GENERATION XX XX XX XXX ARRAY SPOTTERS and/or ARRAY
SCANNERs free of any liability for such infringement or (ii) shall use
reasonable
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best efforts to replace the GENERATION XX XX XX XXX ARRAY SPOTTERS and/or ARRAY
SCANNERs with a non-infringing substitute otherwise complying with the
requirements of this AGREEMENT. Nothing in this Agreement shall impose any
obligations of indemnity upon MD for any damages, losses, and liabilities
arising out of or resulting from any claim that applications of the technology
embodied in the GENERATION XX XX XX XXX ARRAY SPOTTERS and/or ARRAY SCANNERs
infringe any Third Party Patent.
10.2 Each party shall indemnify and hold harmless the other party,
its officers, directors, shareholders, employees, successors and assigns from
any loss, damage, or liability, including attorney's fees, resulting from any
claim, complaint, suit, proceeding or cause of action against any of them
alleging physical or other injury, including death, brought by or on behalf of
an injured party; loss of service or consortium or a similar such claim,
complaint, suit, proceeding or cause of action brought by a friend, spouse,
relative or companion of an injured party due to such physical injury or death
and rising out of its use of the ARRAY SPOTTERS and ARRAY SCANNERs, except to
the extent such damages, claims, costs, losses, liabilities or expenses are
caused by the other party's negligent or wrongful actions and provided:
a. The indemnifying party shall not be obligated under this
Paragraph if it is shown by evidence acceptable in a court of law
having jurisdiction over the subject matter and meeting the
appropriate degree of proof for such action, that the injury was the
result of the negligence or willful misconduct of any employee or
agent of the other party;
b. The indemnifying party shall have no obligation under this
Paragraph unless the other party (i) gives it prompt written notice
of any claim or
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lawsuit or other action for which it seeks to be indemnified under
this AGREEMENT, (ii) the indemnifying party is granted full authority
and control over the defense, including settlement, against such claim
or lawsuit or other action, and (iii) the other party cooperates fully
with the indemnifying party and its agents in defense of the claims or
lawsuit or other action; and
c. The indemnified party shall have the right to participate in
the defense of any such claim, complaint, suit, proceeding or cause of
action referred to in this paragraph utilizing attorneys of its
choice, provided, however, that the indemnifying party shall have full
authority and control to handle any such claim, complaint, suit,
proceeding or cause of action, including any settlement or other
disposition thereof, for which the other party seeks indemnification
under this Paragraph.
11. TERM AND TERMINATION
11.1 Unless earlier terminated pursuant to this Article 11, this
AGREEMENT shall take effect as of the EFFECTIVE DATE and shall continue in
force until MD has FUNCTIONALLY INSTALLED ALL GENERATION XXX ARRAY SPOTTERS and
ARRAY SCANNERs due pursuant to Section 3 and provided technical training and
support to SB in accordance with Section 5. Subject to Paragraph 12.2, the
obligations of MD in this agreement terminate upon the functional installation
of the last GENERATION XXX unit or the end of the TECHNOLOGY ACCESS PERIOD,
whichever occurs last provided where Paragraphs 3.3 and 3.8 are invoked, the
obligations of MD under this Agreement shall not terminate until the
obligations of such Paragraphs are satisfied except in the event of termination
pursuant to any of Paragraphs 11.2, 11.3, 11.4, or 11.5.
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11.2 SB may terminate this AGREEMENT, in its sole discretion and
without penalty to either party, in the event that MD shall fail to deliver the
GENERATION X ARRAY SCANNER or ARRAY SPOTTER and FUNCTIONALLY INSTALL them at
SB by XXXXXXXXXXXX provided, where MD fails to FUNCTIONALLY INSTALL such first
GENERATION X ARRAY SCANNER or ARRAY SPOTTER, then MD XXXXX XXXXXX XX XX XXX
XXXXXX XX XXXX pursuant to Paragraph 2.1(a).
11.3 SB shall have the right to terminate this AGREEMENT by written
notice to MD in the event of (i) a material breach by MD (or an MD AFFILIATE)
of this AGREEMENT, which breach shall remain unremedied for thirty (30) days
after receipt of notice thereof; or (ii) the filing by MD in any court or
agency pursuant to any statute or regulation of any state or country, a
petition in bankruptcy or insolvency or for reorganization or for an
arrangement or for the appointment of a receiver or trustee of the party or of
its assets, or its proposal of a written agreement of composition or extension
of its debts, or the filing of an involuntary petition against it, filed in any
insolvency proceeding, and such petition shall not be dismissed within sixty
(60) days after the filing thereof, or its proposal of or becoming a party to
any dissolution or liquidation, or its making an assignment for the benefit of
creditors.
11.4 MD shall have the right to terminate this AGREEMENT by written
notice to SB in the event of any (i) material breach by SB (or and SB
AFFILIATE) of this AGREEMENT, which breach shall remain unremedied for thirty
(30) days after receipt of notice thereof; or (ii) , as permitted by law, the
filing by SB in any court or agency pursuant to any statute or regulation of
any state or country, a petition in bankruptcy or insolvency or for
reorganization or for an arrangement or
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for the appointment of a receiver or trustee of the party or of its assets, or
its proposal of a written agreement of composition or extension of its debts,
or the filing of the involuntary petition against it, filed in any insolvency
proceeding, and such petition shall not be dismissed within sixty (60) days
after the filing thereof, or its proposal of or becoming a party to any
dissolution or liquidation, or its making an assignment for the benefit of
creditors.
11.5 SB may terminate this AGREEMENT, in its sole discretion and
without penalty to either party, in the event (1) the technology embodied in
the GENERATION X, GENERATION XX, or GENERATION XXX ARRAY SPOTTERS and ARRAY
SCANNERs due SB pursuant to Section 3.1 are determined by an industry expert in
the field of bioanalytical instrumentation mutually and reasonably acceptable
to both parties to infringe any US or United Kingdom patent of a THIRD PARTY;
and (2) where MD either (i) fails to use commercially reasonable efforts to
procure for SB the right to use such infringing ARRAY SPOTTERS and/or ARRAY
SCANNER free of any liability for such infringement or (ii) if MD does not
comply with (i), fails to use reasonable best efforts to replace the ARRAY
SPOTTERS and/or ARRAY SCANNERs with a non-infringing substitute otherwise
complying with the requirements of this AGREEMENT.
12. EFFECT OF TERMINATION OR EXPIRATION
12.1 Expiration or termination of this AGREEMENT for any reason
whatsoever shall be without prejudice to the right of any party hereto to
receive all performance due in favor of such party under this AGREEMENT prior
to the effective date of such expiration or termination and any other rights
and remedies which such party may then or thereafter have hereunder or under
applicable law.
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12.2 Termination or expiration of this AGREEMENT shall not deprive
the parties of any rights provided hereunder or relieve the parties of any
obligations that may have accrued hereunder prior to such termination or
expiration, and those portions of this AGREEMENT which define rights,
obligations or liabilities that extend beyond the term of this AGREEMENT,
including but not limited to the obligations set forth in Sections 7, 8, 9, 10,
13, 14, 15 and any other such portions clearly meant to survive, shall survive
the expiration or termination of this AGREEMENT in accordance with their terms;
provided, that the obligations set forth in Section 10 shall not survive
termination of this AGREEMENT pursuant to Section 11.2.
13. NOTICES
13.1 Any notice required or permitted under this AGREEMENT shall be
sent by air mail, postage pre-paid, by commercial courier service, or by
facsimile to the parties at the addresses and numbers below, or such other
addresses and numbers as each party may hereafter subsequently notify the other
parties hereto:
SB: SMITHKLINE XXXXXXX CORPORATION
709 Swedeland Road
X.X. Xxx 0000
Xxxx xx Xxxxxxx, Xxxxxxxxxxxx 00000
ATTENTION: Xxxxx Xxxxxxxxxx, Xxxxxxxxx
Xxxxxxx, Xxxx Xxxxxxx and Xxxx Xxxxxx
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MD: MOLECULAR DYNAMICS, INC.
000 Xxxx Xxxxxx Xxxxxx,
Xxxxxxxxx, XX 00000-0000
ATTENTION: Xxx Xxxxxxx, President and CEO
13.2 Any notice required or permitted to be given concerning this
AGREEMENT shall be effective upon receipt by the party to whom it is addressed.
14. ASSIGNMENT
14.1 This AGREEMENT and the licenses herein granted shall be
binding upon and inure to the benefit of the successors in interest of the
respective party. Neither this AGREEMENT nor any interest hereunder shall be
assignable by any party without the written consent of the other party;
provided, however, that SB or MD respectively may assign this AGREEMENT to any
corporation with which it may merge or consolidate, or to which it may transfer
all or substantially all of its assets to which this AGREEMENT relates, without
obtaining the consent of the other party hereto, provided the assigning party
remains liable under this AGREEMENT or the THIRD PARTY assignee or surviving
entity assumes in writing all of the assigning parties obligations under this
AGREEMENT.
14.2 The parties hereto agree that in the event of any assignment
or delegation to an AFFILIATE of Molecular Dynamics, Inc. on the one hand, and
SmithKline Xxxxxxx Corporation or SmithKline Xxxxxxx p.l.c. on the other hand,
the applicable party as to which such assignment or delegation applies
guarantees the performance of such AFFILIATE under this AGREEMENT and the
compliance with the terms of this AGREEMENT by such AFFILIATE. Any such
assignment or
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delegation must bind such AFFILIATE to the terms and conditions of this
AGREEMENT, or it is void ab initio.
15. ADDITIONAL TERMS AND CONDITIONS
15.1 Headings: The headings of the Articles of this AGREEMENT are
inserted for convenience of reference only and shall not be interpreted to
affect the interpretation of this AGREEMENT.
15.2 Force Majeure: If the performance of any part of this
AGREEMENT by any party hereto, or of any obligation under this AGREEMENT, is
prevented, restricted, interfered with or delayed by reason of any cause beyond
the reasonable control of the party liable to perform, unless conclusive
evidence to the contrary is provided, the party so affected shall, upon giving
prompt written notice to the other parties, be excused from such performance to
the extent of such prevention, restriction, interference or delay, provided
that the affected party shall use its reasonable best efforts to avoid or
remove such causes of non-performance and shall continue performance with the
utmost dispatch whenever such causes are removed. When such circumstances
arise, the parties shall discuss what, if any, modification of the terms of
this AGREEMENT may be required in order to arrive at an equitable solution.
15.3 Governing Law: This AGREEMENT and its form, execution,
validity, construction and effect shall be determined in accordance with the
laws of the State of New York, U.S.A. (without reference to the conflicts laws
thereof).
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15.4 Separability:
(a) In the event any portion of this AGREEMENT shall be held illegal, void
or ineffective, the remaining portions hereof shall remain in full force and
effect.
(b) If any of the terms or provisions of this AGREEMENT are in conflict with
any applicable statute or rule of law, then such terms or provisions shall be
deemed inoperative to the extent that they may conflict therewith and shall be
deemed to be modified to conform with such statute or rule of law.
(c) In the event that the terms and conditions of this AGREEMENT shall be
materially altered as a result of a final judicial determination that any
portion of this AGREEMENT is illegal, void or ineffective, or as a result of the
operation of subparagraph (b) above, the parties shall renegotiate the terms and
conditions of this AGREEMENT to resolve any inequities and accomplish their
intended purpose insofar as possible.
15.5 Entire Agreement:
(a) This AGREEMENT constitutes the entire agreement among the parties
relating to the subject matter hereof and supersedes all previous writings and
understandings.
(b) No terms of this AGREEMENT shall be varied or modified by any prior or
subsequent statement, conduct or act of either of the parties, except that the
parties may amend this AGREEMENT by written instruments
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specifically referring to and executed in the same manner as this
AGREEMENT.
15.6 Independent Contractors: The status of the parties under this
AGREEMENT shall be that of independent contractors. No party shall have the
right to enter into any agreements on behalf of another party nor shall it
represent to any person that it has such right or authority nor shall any
partnership or joint venture be created hereby.
IN WITNESS WHEREOF, the parties, through their authorized officers,
have executed this AGREEMENT as of the EFFECTIVE DATE.
SMITHKLINE XXXXXXX CORPORATION
SMITHKLINE XXXXXXX P.L.C.
By: /s/ Xxxxxx Xxxxxx
Name: ________________________
Title: _______________________
MOLECULAR DYNAMICS, INC.
By: /s/ Xxx Xxxxxxx
Name: ________________________
Title: _______________________
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APPENDIX A
ARRAY SPOTTER:
Shall mean the family of XXXXXXXXXXXX instruments, and associated instrument
control software, currently under development at Molecular Dynamics as part of
the XXXXXXX Development Program. Specifically, these products shall have the
ability to sample XXXXXXXXX of DNA-containing liquids from microwell plates and
deposit them in ordered micro-arrays in duplicate on specially-prepared glass
microscope slides. This definition of ARRAY SPOTTER specifically includes the
XXXXXXX versions of the XXXXXXXXX product further defined as GENERATION XX
ARRAY SPOTTER, GENERATION XX ARRAY SPOTTER, and GENERATION XXX ARRAY SPOTTER
below.
ARRAY SCANNER:
Shall mean the family of XXXXXXXXXXXX instruments, and associated instrument
control software, currently under development at Molecular Dynamics as part of
the XXXXXXX Development Program. Specifically, these products shall have the
ability to scan and detect XXXXX amounts of dye-labeled DNA molecules which have
been deposited onto specially-prepared glass microscope slides. This definition
of ARRAY SCANNER specifically XXXXXX the XXXXXXX versions of the XXXXX product
further defined as GENERATION XX ARRAY SCANNER, GENERATION XXX ARRAY SCANNER and
GENERATION XXX ARRAY SCANNER below. This definition specifically XXX the
commercially available MD Confocal Laser Scanning Microscope product line, the
XXXXXXXXXX product, and direct improvements thereto, previously supplied to XX
and the
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XXXXXXXXXXXXX product, and direct improvements thereto, previously supplied to
XXXXXXXXXXXX
CAPILLARY SEQUENCER:
Shall mean the automated DNA sequencing system currently under development at
Molecular Dynamics known as XXXXX Specifically, this product is a high
throughput genome analysis system whose design goal is both higher productivity
and higher cost efficiency than the XXXXXXXXXX sequencing system. The system
is based on detection of XXXXXXX fluorescent dyes that emit light in separate
"color" regions of the spectrum. DNA fragments labeled with these dyes are
detected in real-time after electrophoretic separation in an array of 96
capillary columns. Emission data are analyzed by application and database
software for DNA sequence information. Design goals for the system include
sequencing read length greater than XXX bases with an accuracy greater than
XXXXXXX bases and XXXXX operation for 96 samples per run. There are many
additional design goals and specifications and the product is XXXXXXXX
However, this definition of CAPILLARY SEQUENCER specifically XXXXX the
pre-commercial versions of the XXXXX product. There can be no guarantee that
these design goals will be met, nor that the product will be commercially
available. Molecular Dynamics is applying substantial resources to bring a
XXXXX product to market.
GENERATION XX ARRAY SPOTTER AND SCANNER
Shall mean the XXX version of the XXXXX ARRAY SPOTTER and ARRAY SCANNER, under
development at MD to be delivered to SB and which essentially XXXXXX the
function and performance of the XXXXXX MD XXXXX system. The design goal of the
GENERATION XX ARRAY SPOTTER and ARRAY
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SCANNER is to XXXXXXXXXX to SB and therefore SB agrees the GENERATION XX system
will be XXXXX before shipment but is performance will be XXXXXXXXXX following
FUNCTIONAL INSTALLATION. Specifically, the GENERATION XX ARRAY SCANNER shall
use the XXXXX and optical design to scan an area of XXXXXXX with XXXXXXX at
both XXXXXXX and will include no XXX from the existing XXXXXXXX Specifically,
the GENERATION X ARRAY SPOTTER shall handle at least X XXXXXXXX with
XXXXXXXXXXXXXX shall use at least XXXXXXX, and shall accommodate at least
XXXXXXXX on which the micro- arrays shall be deposited. As initially
delivered, the GENERATION X ARRAY SPOTTER shall be able to spot XXX unique
samples, each in duplicate, for a total of XX spots per slide. MD shall use
commercially reasonable efforts to modify the existing instrument control
software by XXXXXXXX to allow for the contents of XXXXXX of XXXXXXXX plates to
be spotted onto a previously spotted slide set, thereby XXXXX the capacity to
XXXXX samples, for a total of XXXXXXXX per slide. MD shall use commercially
reasonable efforts to modify the existing instrument control software by XXXXXX
to allow for the contents of XXXXXXXXXXXXXX XXXXX plates to be spotted onto a
XXXXXX set, thereby XXXXXXX the capacity to XXXXX samples, for a total of XXXXX
per slide. XXXXXXXXXXXX to remove and reload each set of four XXXXXX plates
will be required. In the GENERATION XX ARRAY SPOTTER, the carryover from one
sample to the next when spotter with the same XXX XXX shall be XXXXXXXXXXXX
when using the MD-recommended washing protocols.
The spot-to-spot variability both from i) a XXXX XXXXXX making a
reasonable number of repetitive depositions and ii) within a XXXX XXXXXXX, each
XXXXXX making a reasonable number of repetitive depositions, shall be equal to
or less than plus or minus XXXXXXXXXXXXXXXX when using the GENERATION XX ARRAY
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SPOTTER to spot XXXXXXXXXXXXXXXX sample provided by MD and the GENERATION XX
ARRAY SCANNER for detection and quantitation. The verification of these
performance criteria shall be made XXXXXXXX XXXXXXXXXXXXXXXXXXXXXXX that
directly XXXXX the FUNCTIONAL INSTALLATION of the first GENERATION XX ARRAY
SPOTTER AND SCANNER.
GENERATION XX ARRAY SPOTTER AND SCANNER:
Shall mean the XXXXX version of the XXXXX ARRAY SPOTTER and ARRAY SCANNER under
development at MD to be delivered to SB and which shall contain XXXXXXX as
compared to GENERATION XX above. The design goal of GENERATION XX is increased
XXX as compared to GENERATION X. The design specifications of GENERATION XX
are XXXXXXXXX and can be expected to change slightly. Specifically, the
GENERATION XXX ARRAY SCANNER shall use an XXXXXXXXX to scan XXXXX regions of XX
XXXXXXXXXXXXX pixels at both XXXX and XXXX and will include XXXXXXXX
electronics. Specifically, the GENERATION XX ARRAY SPOTTER shall handle at
least XXXXXXX plates with XX positions each, shall use at least XXXXXXX and
shall accommodate at least XXXXXXXXXXXXXX on which the micro-arrays shall be
deposited. As currently defined, the GENERATION XX ARRAY SPOTTER shall be able
to spot XXX XXX samples, each in duplicate, for a total of XXXXXXX per slide.
MD shall use commercially reasonable efforts to modify the existing instrument
control software by XXXXXXX to allow for the contents of XXXXXXXXXXXXXX plates
to be spotted onto a single slide set, thereby increasing the capacity to
XXXXXXXX samples, for a total of XXXXX per slide. XXXXXXXXXXXXX to remove and
XXXXX each set of XXXXXXXX plates will be required. MD agrees to inform SB
promptly if these specifications
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change materially. In the GENERATION X ARRAY SPOTTER, the carryover from one
sample to the next when spotter with the XXXX XXX XXX shall be less than XXX
XXXXXXXX when using the MD-recommended washing protocols.
MD shall use reasonable best efforts to reduce the spot-to-spot
variability both from i) a XXXXX XXXXXX making a reasonable number of
repetitive depositions and ii) within a XXXXXX XXXX each XXXXXX making a
reasonable number of repetitive depositions, to be equal to or less than plus
or minus XXXXXXXXXX when using the GENERATION X ARRAY SPOTTER to spot
XXXXXXXXXX sample provided by MD and the GENERATION XX ARRAY SCANNER for
detection and quantitation. The verification of these performance criteria
shall be made XXXXX XXXXXXXXXXXXXXXXXXXXXX that directly XXXXXXXXXX the
FUNCTIONAL INSTALLATION of the first GENERATION XX ARRAY SPOTTER AND SCANNER.
GENERATION XXX ARRAY SPOTTER AND SCANNER:
Shall mean the XXXXX version of the XXXXXX ARRAY SPOTTER and ARRAY SCANNER
under development at MD at be developed to SB and which shall contain XXXXXXXX
as compared to GENERATION XXX above. The design goal of GENERATION XXX is to
XXXXX the XXXXXX and XXXXX as compared to GENERATION XX. The design
specifications of GENERATION XXX are XXXX XXXXXXXXX and can be expected to
change XXXXXX. The current plan for the GENERATION XXX ARRAY SCANNER is to
include XXXXXXXXXXXXXXX XXXXX to XXXXXXXXXX. The GENERATION XXX ARRAY SPOTTER
is expected to handle XXXXXXXX plates with XXXXXX each, is expected to include
up to XXXXXXXXXX and is expected to accommodate up to XXXXXXXXXXXX XXXXX on
which the micro-arrays shall be deposited. As currently defined, the
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GENERATION XXX ARRAY SPOTTER shall be able to spot XXXXXX samples, each in
duplicate, for a total of XXXXXXXX per slide. MD shall use commercially
reasonable efforts to modify the existing instrument control software by the
time of delivery of the first GENERATION XXX ARRAY SPOTTER to SB to allow for
the contents of XXXXXXXXXXX to be spotted onto a single slide set, thereby
increasing the capacity to XXXXXXXX samples, for a total of XXXXXXX per slide
when the contents of XXXXXXXXX have been fully arrayed. XXXXXXXXXXX XXXX to
remove and XXXXXX each set XXXXXX plates will most likely be required. MD
agrees to inform SB promptly if these expectations change materially and will
provide confirmed specifications for GENERATION XX at least X months prior to
the availability of the first GENERATION XX systems.
The parties agree to meet during the month of XXXXXXXXX to both i)
review the current levels of XXXXXXXXXXXX XXXXXXXXXXX in the GENERATION XXX
ARRAY SPOTTER and ii) to assess the level of XXXXXXXXXXXX XXXXXXXXXXX that is
required for the intended biological application(s). Based on these
discussions, the parties will jointly develop a mutually acceptable, firm
specification for XXXXXXXXXXXX XXXXXXXXXXX in the GENERATION XXXX ARRAY
SPOTTER.
FIRST TECHNOLOGY ACCESS CUSTOMER NAME:
XXXXXXXXXXXXXX.
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