EXECUTION COPY
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
LICENSE AGREEMENT
This LICENSE AGREEMENT (this "Agreement"), effective December 31, 1999
(the "Effective Date") is made by and between ABGENIX, INC., a Delaware
corporation ("ABX") and JAPAN TOBACCO INC., a Japanese corporation ("JTI"), with
reference to the following facts and circumstances. ABX and JTI may be referred
to herein each individually as a "Party" and jointly as the "Parties."
RECITALS
A. WHEREAS, ABX possesses certain patent rights and know-how
useful for the creation, development, use and other exploitation of [*] (as
defined below);
B. WHEREAS, JTI wishes to acquire certain rights with respect
to the creation, development, use and other exploitation of [*] and ABX is
willing to grant such rights pursuant to the terms and conditions of this
Agreement; and
NOW THEREFORE, for and in consideration of the covenants, conditions,
and undertakings hereinafter set forth, the Parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, capitalized terms set forth in this
Agreement and not otherwise defined herein shall have the meaning set forth
below.
1.1 "ABX KNOW-HOW" shall mean all materials listed on Exhibit A,
and any information, materials, discoveries, inventions, technology, results
and data relating thereto (but excluding any patents or patent applications),
to the extent Controlled by ABX. "ABX Know-How" shall exclude ABX Patent Rights.
1.2 "ABX PATENT RIGHTS" shall mean (a) the U.S. patents and
patent applications listed on Exhibit B, and patents issuing on such patent
applications; (b) continuations, divisionals, reexaminations, reissues or
extensions of any of (a); (c) any foreign counterparts of the applications and
patents in (a) and (b); in each case to the extent Controlled by ABX.
1.3 "AFFILIATE" shall mean any entity which controls, is
controlled by or is under common control with either ABX or JTI. An entity
shall be regarded as in control of another entity if it owns or controls at
least fifty percent (50%) of the shares of the subject entity entitled to vote
in the election of directors (or, in the case of an entity that is not a
corporation, for the election of the corresponding managing authority);
provided that the government of Japan shall not be considered an Affiliate of
JTI.
1.4 "CONTROLLED" shall mean the ability to grant licenses or
sublicenses with respect to a technology or material as provided in this
Agreement without breaching any agreement or other arrangement with a Third
Party. ABX shall be deemed to "Control" rights held by its
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
1.
Affiliates Xenotech, Inc. and Xenotech, L.P., to the extent that such
Affiliates have the ability to grant licenses or sublicenses under such rights
as provided in the preceding sentence.
1.5 "GENETIC MATERIAL" shall mean a nucleotide sequence,
including DNA, RNA and complementary and reverse complementary nucleotide
sequences thereto, whether coding or non-coding and whether intact or a
fragment.
1.6 [*] shall mean [*] from which a [*] of such [*] has been [*]
PROVIDED THAT [*] shall not include any [*] for which [*] one or more [*] or
portion thereof have been [*]
1.7 "LICENSED TECHNOLOGY" shall mean ABX' rights in the ABX
Patent Rights and ABX Know-How.
1.8 "MAJORITY-OWNED AFFILIATE OF JTI" shall mean an entity of
which JTI owns, directly or indirectly, more than [*] of the shares of such
entity entitled to vote in the election of directors or corresponding
managing authority.
2. LICENSE GRANT
2.1 BY ABX TO JTI. Subject to the terms and conditions of this
Agreement, ABX hereby grants to JTI a co-exclusive (with ABX), royalty-free,
world-wide, sublicensable, perpetual license to practice the Licensed
Technology solely in connection with the creation, development, use or other
exploitation of [*] provided, however, that the foregoing license grant shall
not include the right to sell, lease, offer to sell or lease, or otherwise
transfer title in or to the [*] to any third party.
2.2 LIMITATIONS; RESERVATION OF RIGHTS.
2.2.1 ABX grants no licenses under this Agreement to JTI
under the Licensed Technology or any other intellectual property rights
Controlled by ABX except as expressly stated in Section 2.1.
2.2.2 ABX reserves all rights in the Licensed Technology,
except as expressly set forth in Section 2.1 or any other written Agreement
between the Parties, including without limitation the right to grant one or
more sublicenses thereunder.
3. CONSIDERATION
3.1.1 In consideration of the license granted pursuant to
Section 2.1, JTI shall pay to ABX Six Million U.S. Dollars (US$6,000,000) on
December 31, 1999. With respect to amounts due by JTI pursuant to this Section
3.1.1, (i) all [*] made by [*] hereunder
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
2.
[*] shall be the sole responsibility of [*] shall [*] such [*] from any [*]
to [*] as [*] and shall [*] to the relevant [*] shall timely provide to [*]
of any [*] hereunder; and (iv) [*] shall reasonably cooperate and assist [*]
it is entitled so to elect.
4. CONFIDENTIALITY.
4.1 CONFIDENTIALITY. Except as expressly provided herein, JTI and
ABX each agree that, for the term of this Agreement and for five (5) years
thereafter, the receiving Party shall keep completely confidential and shall
not publish or otherwise disclose and shall not use for any purpose other than
as expressly permitted under this Agreement, any information furnished to it by
the other Party pursuant to this Agreement ("Confidential Information") or any
other information designated the other Party's "Confidential Information" under
any other provision of this Agreement. The ABX Know-How and ABX Patent Rights
shall be deemed to be ABX' Confidential Information. Notwithstanding the
foregoing, "Confidential Information" shall not include any such information
that the receiving Party can establish by competent written proof:
4.1.1 was already known to the receiving Party, other than
under an obligation of confidentiality, at the time of disclosure;
4.1.2 was generally available to the public or otherwise
part of the public domain at the time of its disclosure to the receiving Party;
4.1.3 became generally available to the public or
otherwise part of the public domain after its disclosure and other than through
any act or omission of the receiving Party in breach of this Agreement; or
4.1.4 was subsequently lawfully disclosed to the receiving
Party by a person other than the disclosing Party or developed by the receiving
Party without reference to any information or materials disclosed by the
disclosing Party.
4.2 PERMITTED DISCLOSURE. Notwithstanding Sections 4.1 above and
4.3 below, each Party may nevertheless disclose the other Party's Confidential
Information to the extent such disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation, complying
with applicable governmental regulations or otherwise submitting information to
tax or other governmental authorities, making a permitted sublicense or other
exercise of its rights hereunder or conducting clinical trials, provided that
if a Party is required to make any such disclosure of the other Party's
Confidential Information, other than pursuant to a confidentiality agreement
consistent with this Agreement, it will give reasonable advance notice to such
Party of such disclosure requirement and, save to the extent inappropriate in
the case of patent applications, will use efforts consistent with prudent
business judgment to secure confidential treatment of such information prior to
its disclosure (whether through protective orders or confidentiality agreements
or otherwise).
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
3.
4.3 TERMS OF AGREEMENT. Except as expressly provided in this
Article 4, neither Party shall disclose to any Third Party the material terms
of this Agreement without the prior written consent of the other Party hereto,
except to Affiliates, advisors, investors, licensees, sublicensees and others
on a need-to-know basis under circumstances that reasonably ensure the
confidentiality thereof, or to the extent required by law. Without limitation
upon any provision of this Agreement, each Party shall be responsible for the
observance by its employees, consultants and contractors of the foregoing
confidentiality obligations.
5. INDEMNIFICATION
5.1 BY JTI. Subject to ABX' compliance with Section 5.3, JTI
agrees to indemnify, defend and hold ABX and its Affiliates and their
directors, officers, employees and agents harmless from and against any
losses, claims, damages, liabilities, or actions resulting directly from any
Third Party claims (collectively, "Liabilities") arising from the creation,
development, manufacture, use or transfer of [*] by JTI, its Affiliates and
sublicensees or the breach of any representations, warranties, covenants or
other obligations of JTI under this Agreement, except to the extent that such
Liabilities arise from ABX' negligence or willful misconduct or its breach of
any of its representations, warranties, covenants or other obligations under
this Agreement.
5.2 BY ABX. Subject to JTI's compliance with Section 5.3, ABX
agrees to indemnify, defend and hold JTI and its Affiliates and their
directors, officers, employees and agents harmless from and against any
Liabilities arising from the breach of any representations, warranties,
covenants or other obligations of ABX under this Agreement, except to the
extent that such Liabilities arise from JTI's negligence or willful misconduct
or its breach of any of its representations, warranties, covenants or other
obligations under this Agreement.
5.3 INDEMNIFICATION PROCEDURES. If a Party (the "Indemnitee")
intends to claim indemnification under this Article 5, it shall promptly notify
the indemnifying Party (the "Indemnitor") in writing of any Liability in
respect of which the Indemnitee or its directors, officers, employees or agents
intend to claim such indemnification, and the Indemnitor shall have the right
to participate in, and, to the extent the Indemnitor so desires, to assume the
defense thereof with counsel mutually satisfactory to the Parties. The
indemnity obligation of this Article 5 shall not apply to amounts paid in
settlement of any loss, claim, damage, liability or action if such settlement
is effected without the consent of the Indemnitor, which consent shall not be
withheld or delayed unreasonably. The failure to deliver written notice to the
Indemnitor within a reasonable time after the commencement of any such action
shall not relieve such Indemnitor of any liability to the Indemnitee under this
Article 5, except to the extent that such failure is prejudicial to its ability
to defend such action. The Party claiming indemnification under this Article 5
and its directors, officers, employees and agents, shall cooperate fully with
the Indemnitor and its legal representatives in the investigation of any
action, claim or liability covered by this Article 5.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
4.
6. REPRESENTATIONS, WARRANTIES AND COVENANTS
6.1 REPRESENTATIONS, WARRANTIES AND COVENANTS OF ABX. ABX
represents and warrants to JTI that (i) it has the full right and authority to
enter into this Agreement; (ii) it has taken all necessary action on its part
to authorize the execution and delivery of this Agreement and the performance
of its obligations hereunder; (iii) to the knowledge of ABX as of the Effective
Date, there are no existing or threatened actions, suits or claims pending with
respect to the subject matter hereof or the right of ABX to enter into and
perform its obligations under this Agreement; and (iv) it has not entered and
during the term of this Agreement will not enter any other agreement
inconsistent or in conflict with this Agreement.
6.2 REPRESENTATIONS, WARRANTIES AND COVENANTS OF JTI. JTI
represents and warrants to ABX that (i) it has the full right and authority to
enter into this Agreement; (ii) it has taken all necessary action on its part
to authorize the execution and delivery of this Agreement and the performance
of its obligations hereunder; (iii) to the knowledge of JTI as of the Effective
Date, there are no existing or threatened actions, suits or claims pending with
respect to the subject matter hereof or the right of JTI to enter into and
perform its obligations under this Agreement; and (iv) it has not entered and
during the term of this Agreement will not enter any other agreement
inconsistent or in conflict with this Agreement.
7. MISCELLANEOUS PROVISIONS
7.1 GOVERNING LAWS. This Agreement shall be interpreted and
construed in accordance with the laws of the State of California, USA, without
regard to conflict of laws principles.
7.2 WAIVER. It is agreed that no waiver by a Party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
7.3 ASSIGNMENT. Neither this Agreement nor any right or
obligation hereunder may be assigned or delegated, in whole or part, by a Party
without the prior written consent of the other Parties; provided that such
written consent shall not be required where: (i) either Party assigns this
Agreement to any entity that acquires substantially all of the assets to which
this Agreement relates, (ii) JTI assigns this Agreement to a Majority-Owned
Affiliate of JTI or (iii) ABX assigns this Agreement to an Affiliate. The terms
and conditions of this Agreement shall be binding on and inure to the benefit
of the permitted successors and assigns of the Parties. Any assignment not in
conformance with this Section 7.3 shall be null, void and of no legal effect.
7.4 INDEPENDENT CONTRACTORS. The relationship of the Parties is
that of independent contractors. The Parties shall not be deemed to be agents,
partners or joint venturers of the others for any purpose as a result of this
Agreement or the transactions contemplated thereby.
7.5 COMPLIANCE WITH LAWS. In exercising their rights under this
Agreement, the Parties shall fully comply with the requirements of any and all
applicable laws, regulations, rules
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
5.
and orders of any governmental body having jurisdiction over the exercise of
rights under this Agreement.
7.6 FURTHER ACTIONS. Each Party agrees to execute, acknowledge
and deliver such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
7.7 NOTICES. Any notice, request, approval or consent required or
permitted to be given between the Parties hereto shall be given in writing, and
shall be deemed to have been properly given if delivered in person, transmitted
by telecopy (with machine confirmation of transmission and confirmation by
personal delivery, first class certified mail or courier), or mailed by first
class certified mail to the other Party at the appropriate address set forth
below, or to such other address as may be designated in writing by a Party from
time to time in accordance with this Agreement.
Japan Tobacco Inc.: Japan Tobacco Inc.
JT Xxxxxxxx
0-0 Xxxxxxxxx 0-xxxxx
Xxxxxx-Xx, Xxxxx 000
Xxxxx
Fax: 000-00-0-0-000-0000
Attn: Vice President
Pharmaceutical Division
With copies to: Xxxxxxx, Xxxxxx and Xxxxx LLP
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Fax: (000) 000-0000
Attn: Xxxx X. Xxxxxx, Esq.
Akros Pharma Inc.
0000 Xxxxxxx Xxxxxx Xxxx.
Xxxxx 000
Xxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
6.
Abgenix, Inc.: Abgenix, Inc.
0000 Xxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
With a copy to: Xxxxxx Godward LLP
3000 El Camino Real
Five Xxxx Xxxx Xxxxxx
Xxxx Xxxx, XX 00000-0000
Fax: (000) 000-0000
Attn: Xxxxxx X. Xxxxx, Esq.
7.8 SEVERABILITY. In the event that any provision of this
Agreement becomes or is declared by a court of competent jurisdiction to be
illegal, unenforceable or void, this Agreement shall continue in full force and
effect without said provision and the parties shall discuss in good faith
appropriate revised arrangements.
7.9 FORCE MAJEURE. Nonperformance of any Party shall be excused
to the extent that performance is rendered impossible by strike, fire,
earthquake, flood, governmental acts or orders or restrictions, failure of
suppliers, or any other reason where failure to perform is beyond the
reasonable control, and not caused by the negligence, intentional conduct or
misconduct of the non-performing Party.
7.10 NO CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL ANY PARTY HERETO
BE LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS
AGREEMENT OR THE EXERCISE OF ITS RIGHTS HEREUNDER.
7.11 DISPUTE RESOLUTION; ARBITRATION. The Parties will attempt to
resolve any dispute under this Agreement by mutual agreement, and, if required,
there shall be a face-to-face meeting between the Chief Executive Officer of
ABX and the Vice President of the Pharmaceutical Division of JTI. Any dispute
under this Agreement which is not settled after such meeting shall be finally
settled by binding arbitration, conducted in accordance with the Commercial
Arbitration Rules of the American Arbitration Association by three (3)
arbitrators appointed in accordance with said rules. The arbitration
proceedings and all pleadings and written evidence shall be in the English
language. Any written evidence originally in a language other than English
shall be submitted in English translation accompanied by the original or a true
copy thereof. The costs of the arbitration, including administrative and
arbitrators' fees, shall be shared equally by the parties to the arbitration.
Each Party shall bear its own costs and attorneys' and witness' fees; PROVIDED
THAT the prevailing party in any arbitration, as determined by the arbitration
panel, shall be entitled to an award against the other party in the amount of
the prevailing party's costs and reasonable attorneys' fees. A disputed
performance or suspended performances pending the resolution of the arbitration
must be completed within thirty (30) days following the final decision of the
arbitrators. Any arbitration subject to this Section 7.11 shall be completed
within six (6) months from the filing of notice of a request for such
arbitration.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
7.
7.12 COMPLETE AGREEMENT. It is understood and agreed between ABX
and JTI that this Agreement constitutes the entire agreement, both written and
oral, between the Parties with respect to the subject matter hereof, and
supersedes and cancels all prior agreements respecting the subject matter
hereof, either written or oral, expressed or implied. No amendment or change
hereof or addition hereto shall be effective or binding on either of the
Parties unless reduced to writing and executed by the respective duly
authorized representatives of ABX and JTI.
7.13 COUNTERPARTS. This Agreement may be executed in
counterparts, each of which shall be deemed to be an original and both together
shall be deemed to be one and the same agreement.
7.14 HEADINGS. The captions to the several Articles and Sections
hereof are not a part of this Agreement, but are included merely for
convenience of reference only and shall not affect its meaning or
interpretation.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their respective duly authorized officers as of the day and year
first above written.
ABGENIX, INC.
By: /s/ R. Xxxxx Xxxxx
-------------------------------------
R. Xxxxx Xxxxx
President and Chief Executive Officer
JAPAN TOBACCO INC.
By: /s/ Xxxxxxx Xxxx
------------------------------------------
Xxxxxxx Xxxx
Managing Director, Pharmaceutical Division
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
8.
EXHIBIT A
ABX KNOW-HOW
[*]
[*]
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[*]
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[*]
[*]
[*]
[*]
[*]
[*]
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
EXHIBIT B
ABX PATENT RIGHTS
[*]
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
