1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Xxxx"). This Exhibit has been filed separately with the
Secretary of the Commission without the Xxxx pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.18
LICENSE AGREEMENT
This AGREEMENT (the "Agreement") is effective as of the 2nd day of
August, 1996 (the "Effective Date"), between California Institute of
Technology, 0000 Xxxx Xxxxxxxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000
("CALTECH") and Aurora Biosciences Corporation, a Delaware corporation, having
a principal place of business at 00000 Xxxxx Xxxxxx Xxxxx Xxxx, Xx Xxxxx,
Xxxxxxxxxx 00000 (hereinafter called "LICENSEE").
WHEREAS, CALTECH has been engaged in basic research in biotechnology
conducted for the National Institutes of Health ("NIH") under Grant No. GM
34236 between CALTECH and NIH;
WHEREAS, that research led to that United States provisional patent
application described in Paragraph 1.6.2, which is owned by CALTECH;
WHEREAS, LICENSEE is desirous of obtaining, and CALTECH wishes to
grant to LICENSEE, an exclusive license to the Licensed Patent Rights (as
defined in Paragraph 1.6); and
WHEREAS, on an even date herewith LICENSEE and CALTECH have entered
into a Stock Transfer Agreement pursuant to which CALTECH shall receive shares
of LICENSEE's common stock.
2
NOW, THEREFORE, the parties agree as follows:
ARTICLE I
DEFINITIONS
I.1 "Confidential Information" means (i) any proprietary or
confidential nformation or material in tangible form disclosed hereunder that
is marked as "Confidential" at the time it is delivered to the receiving party,
or (ii) proprietary or confidential information disclosed orally hereunder
which is identified as confidential or proprietary when disclosed and such
disclosure of confidential information is confirmed in writing within thirty
(30) days by the disclosing party. To protect the confidentiality of such
information, LICENSEE may request the Principal Investigator, who has the right
to refuse to accept such information, to sign a confidentiality agreement with
LICENSEE in the form of Exhibit B hereto.
I.2 "Dominating Patent" means an unexpired patent that has not
been invalidated by a court or governmental agency which is owned by a third
party under circumstances such that the LICENSEE or its sublicensee has no
commercially reasonable alternative to obtaining a royalty-bearing license
under such patent in order to practice the Licensed Methods or make, use, sell
or otherwise commercialize Licensed Products.
I.3 "Field" means ***
*** CONFIDENTIAL TREATMENT REQUESTED
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candidates.
I.4 "Licensed Method" means any method, procedure, or process, the
use of which is covered by any Valid Claim.
I.5 "Licensed Product" means *** .
I.6 "Licensed Technology" means Licensed Know-How and Licensed
Patent Rights.
I.6.1 "Licensed Know-How" means all information and data,
processes, formulas, and materials, including but not limited to those which
relate to nucleic acid constructions, genes, DNA or RNA fragments, gene
sequences, bacterial or yeast strains, mammalian cell lines, biological
material, chemical compounds, proteins, products, substances, experimental
plans, formulations, techniques, methods, designs, and drawings which are
conceived, reduced to practice, or otherwise developed (i) in the laboratory of
Xx. Xxxxxx X. Xxxxx ("Xx. Xxxxx"), a faculty member CALTECH, or by Xx. Xxxxx or
another person employed by or affiliated with CALTECH who is working under Xx.
Xxxxx'x supervision, or (ii) jointly by any of the foregoing and any person
employed by or affiliated with LICENSEE, and which are specifically and
directly related to experiments or embodiments of inventions covered by or
within the scope of a Valid Claim of the Licensed Patent Rights.
***CONFIDENTIAL TREATMENT REQUESTED
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I.6.2 "Licensed Patent Rights" means (i) U.S. provisional
patent application ***, filed ***, and entitled ***; (ii) any patent application
claiming an invention useful in the Field which is conceived, reduced to
practice, or otherwise developed on or before *** in Xx. Xxxxx'x laboratory or
by Xx. Xxxxx and/or another person employed by or affiliated with CALTECH who is
working under Xx. Xxxxx'x supervision; (iii) any patent application claiming an
invention useful in the Field which is conceived, reduced to practice, or
otherwise developed on or before *** in jointly by Xx. Xxxxx and/or another
person employed by or affiliated with CALTECH who is working under Xx. Xxxxx'x
supervision and any person employed by or affiliated with LICENSEE; (iv) any
substitution, provisional, regular utility application, division, or
continuation (in whole or in part) claiming priority to any patent application
in (i), (ii), or (iii); (v) any patent issuing on any of the preceding,
including without limitation any reissue, re-examination, or extension; and (vi)
any foreign patent application or patent claiming priority to any of the
foregoing, including any confirmation, registration, revalidation, or addition.
I.7 "Related Company" means any corporation or other entity which
is directly or indirectly controlling, controlled by, or under the common
control with LICENSEE. For the purpose of this Agreement, "control" shall mean
the direct or indirect ownership of at least fifty percent (50%) of the
outstanding shares or other voting rights of the subject entity to elect
*** CONFIDENTIAL TREATMENT REQUESTED
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directors, or if not meeting the preceding, any entity owned or controlled by
or owning or controlling at the maximum control or ownership right permitted in
the country where such entity exists.
I.8 "Stock Transfer Agreement" means that certain Stock Transfer
Agreement entered into by the parties on an even date herewith, a copy of which
is appended hereto as Exhibit A.
I.9 "Valid Claim" means a claim of (i) a pending patent
application within the Licensed Patent Rights, or (ii) an issued and unexpired
patent included within the Licensed Patent Rights.
ARTICLE II
PATENT LICENSE XXXXX
XX.1 CALTECH hereby grants to LICENSEE an exclusive license under
the Licensed Technology throughout the world to (i) practice the Licensed
Methods and provide services entailing the practice thereof, and (ii) make, have
made, use, have used, import, have imported, sell, offer for sale, and have sold
and otherwise exploit Licensed Products in the field. This license is subject
to:
II.1.1 the reservation of CALTECH's right, on the part of
itself and the Jet
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Propulsion Laboratory ("JPL"), to make, have made, and use Licensed Methods for
noncommercial educational and research purposes, but not for sale, licensure,
or other distribution to third parties;
II.1.2 the rights of the U.S. Government under Xxxxx 00,
Xxxxxx Xxxxxx Code, Sections 203-204, including but not limited to the grant to
the U.S. Government of a nonexclusive, nontransferable, irrevocable, paid-up
license to practice or have practiced any invention conceived or first actually
reduced to practice in the performance of work under NIH Xxxxx XX 34236 for or
on behalf of the U.S. Government throughout the world; and
II.1.3 with respect to any technology developed after the
effective date, the right of any third party which sponsors research in Xx.
Xxxxx'x laboratory at CALTECH. It is understood and agreed that CALTECH will
use all reasonable efforts to assist LICENSEE in obtaining an exclusive license
or other transfer of such third party rights in and to the results and related
intellectual property which arise from or in connection with the research
sponsored by such third party.
II.2 This license is not transferable by LICENSEE except as
provided in Paragraph 13.2, but LICENSEE shall have the right to grant and
authorize nonexclusive and/or exclusive sublicenses hereunder, provided that
LICENSEE shall furnish CALTECH within thirty (30) days of the execution thereof
a true and complete copy of each sublicense and any changes or additions
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thereto. Any such sublicense (including, without limitation, any non-exclusive
sublicense) shall remain in effect in the event of any termination of this
Agreement.
II.3 The license granted herein, and the term of this Agreement,
shall commence on the Effective Date and continue, unless terminated in
accordance with the provisions of this Agreement, until the last of the patents
within the Licensed Patent Rights expires.
II.4 LICENSEE shall have a paid-up option to acquire, upon mutually
agreeable terms, a royalty bearing, exclusive or non-exclusive, world-wide
license, including the right to sublicense, to make, have made, use, lease, and
sell products and services embodying or produced through the use of any
inventions, discoveries, or improvements in the Field conceived, reduced to
practice or otherwise developed in Xx. Xxxxx'x laboratory at CALTECH in the
period from the third anniversary of the Effective Date until the sixth
anniversary of the Effective Date, subject to the rights of any third party
which sponsors research in Xx. Xxxxx'x laboratory at CALTECH. Said option must
be exercised by written notice to CALTECH within six (6) months after receiving
from CALTECH written notice of the filing of a patent application with respect
thereto. If LICENSEE elects to exercise its option to acquire a license on
mutually agreeable terms within the prescribed time period, both parties agree
to negotiate license terms in good faith. All such negotiations, including the
execution of a license agreement, shall be completed within six (6) months of
written notice to CALTECH of LICENSEE's exercise of said option. If LICENSEE
fails to agree to terms and conditions within the six (6) month time period,
LICENSEE shall be
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deemed to have waived said option, and CALTECH shall be free to license a third
party; provided, however, that for a period of three (3) years after written
notice of LICENSEE's exercise of its option to any such invention, discovery, or
improvement, CALTECH shall not agree to license a third party on more favorable
terms than were last offered to LICENSEE without first offering LICENSEE a
license on those more favorable terms and providing LICENSEE with ninety (90)
days in which to accept such offer. If LICENSEE fails to notify CALTECH within
the ninety (90) days that it has accepted such terms, LICENSEE shall be deemed
to have rejected the offer, and CALTECH shall, thereafter, be free to license
its rights in such invention, discovery, or improvement to other parties. If
LICENSEE notifies CALTECH within the ninety (90) days that it accepts such an
offer, CALTECH shall be deemed to have entered into a binding license agreement
with LICENSEE with respect to such terms.
ARTICLE III
USE OF NAME
III.1 LICENSEE agrees that it shall not use the name of CALTECH, the
California Institute of Technology, the Jet Propulsion Laboratory, or JPL in
any advertising or publicity material, or make any form of representation or
statement which would constitute an express or implied endorsement by CALTECH
of any Licensed Product, and that it shall not authorize others to do so,
without first having obtained written approval from CALTECH. LICENSEE may make
further disclosures containing information previously approved for release by
CALTECH without
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any need for further approvals by CALTECH.
III.2 Notwithstanding Paragraph 3.1, LICENSEE may make such
disclosures as may be required by law or court order, and disclose to its
professional advisors and actual and prospective investors that it has entered
into this Agreement with CALTECH.
ARTICLE IV
DUE DILIGENCE
IV.1 LICENSEE shall have discretion over the commercialization of
Licensed Methods and Licensed Products. LICENSEE shall be deemed to have
satisfied its obligations under this Paragraph if LICENSEE has an ongoing and
active research program or marketing program, as appropriate, directed toward
the use of Licensed Methods in the Field. Any efforts of LICENSEE's
sublicensees shall be considered efforts of LICENSEE for the purpose of
determining LICENSEE's compliance with its obligation under this Paragraph.
IV.2 ***, CALTECH shall have the right, exercisable no more often
than ***, to require LICENSEE to report to CALTECH in writing on its progress in
using Licensed Methods in the United States.
ARTICLE V
*** CONFIDENTIAL TREATMENT REQUESTED
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INFRINGEMENT BY THIRD PARTY
V.1 CALTECH shall, at its expense, have the initial right, but not
the obligation, to protect Licensed Technology solely owned by CALTECH from
infringement or misappropriation and prosecute infringers or others when, in
its sole judgment, such action may be reasonably necessary, proper, and
justified. Notwithstanding the foregoing, LICENSEE shall have the right to
sublicense any alleged infringer pursuant to Paragraph 2.2. LICENSEE shall, at
its expense, have the initial right, but not the obligation, to protect
Licensed Technology jointly owned by CALTECH and LICENSEE from infringement or
misappropriation and prosecute infringers or others when, in its sole judgment,
such action may be reasonably necessary, proper, and justified.
V.2 If LICENSEE shall have supplied CALTECH with evidence of
infringement or misappropriation by a third party of Licensed Technology solely
owned by CALTECH, LICENSEE may by notice request CALTECH to take steps to
enforce such Licensed Technology. If LICENSEE does so, and CALTECH does not,
within three (3) months of the receipt of such notice, either (i) cause the
infringement or misappropriation to terminate or (ii) initiate a legal action
against the infringer or misappropriating third party, LICENSEE may, upon
notice to CALTECH, initiate an action against the infringer or misappropriating
third party at LICENSEE's expense, either in LICENSEE's name or in CALTECH's
name if so required by law. If LICENSEE does so for infringement or
misappropriation within the Field, LICENSEE shall have sole control of the
action.
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V.3 If a declaratory judgment action alleging invalidity,
unenforceability, or noninfringement of any of the Licensed Patent Rights is
brought against LICENSEE and/or CALTECH, LICENSEE shall have sole control of
the action if LICENSEE agrees to bear all the costs of the action.
V.4 In the event one party shall carry on a legal action pursuant
to Paragraph 5.2 or 5.3, the other party shall fully cooperate with and supply
all assistance reasonably requested by the party carrying on such action,
including by using its best efforts to have its employees testify when
requested and to make available relevant records, papers, information, samples,
specimens, and the like. A party controlling an action pursuant to Paragraph
5.2 or 5.3 shall bear the reasonable expenses incurred by said other party in
providing such assistance and cooperation as is requested pursuant to this
Paragraph. A party controlling such an action shall keep the other party
informed of the progress of such action, and said other party shall be entitled
to be represented by counsel in connection with such action at its own expense.
V.5 The party controlling any action referred to in this Article V
shall have the right to settle any claim, but only upon terms and conditions
that are reasonably acceptable to the other party. Should either party elect
to abandon such an action other than pursuant to a settlement with the alleged
infringer that is reasonably acceptable to the other party, the party
controlling the action shall give timely notice to the other party who, if it
so desires, may continue the action; provided, however, that the sharing of
expenses and any recovery in such suit shall be as agreed
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upon between the parties.
V.6 Any amounts paid to a party hereto by a third party as the
result of such an action (such as in satisfaction of a judgment or pursuant to
a settlement) shall first be applied to reimbursement of the unreimbursed
expenses (including, without limitation, attorneys' and expert fees) incurred
by either party. Any remainder shall be divided between the parties as follows:
V.6.1 *** and
V.6.2 ***
ARTICLE VI
ALLEGATION OF INFRINGEMENT AGAINST LICENSEE
VI.1 If the practice by LICENSEE of the license granted herein
results in any allegation or claim of infringement of an intellectual property
right of third party against LICENSEE, LICENSEE shall have the exclusive right
to defend any such claim, suit, or proceeding, at its own expense, by counsel
of its own choice, and shall have the sole right and authority to settle any
such suit; provided, however, that CALTECH shall cooperate with
*** CONFIDENTIAL TREATMENT REQUESTED
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LICENSEE, at LICENSEE's reasonable request, in connection with the defense of
such claim.
ARTICLE VII
PAYMENT OF PATENT COSTS
VII.1 Starting from the Effective Date, LICENSEE shall, in
connection with the preparation, filing, prosecution, issuance, and maintenance
of the Licensed Patent Rights both in the United States and foreign
jurisdictions:
VII.1.1 pay all reasonable attorneys fees for services
performed to obtain the issuance of the Licensed Patent Rights, and all patent
and government fees for services performed after the issuance of Licensed
Patent Rights, and
VII.1.2 pay all domestic and foreign patent office
maintenance fees.
VII.2 Payment shall be made to CALTECH within thirty (30) days
following receipt by LICENSEE from CALTECH of (i) an invoice covering such fees
and (ii) evidence reasonably satisfactory to LICENSEE that such fees were paid.
To the extent that LICENSEE terminates this Agreement pursuant to Paragraph
9.1, LICENSEE shall have no further liability under Paragraph 7.1 for fees
relating to applications or patents affected by the termination.
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VII.3 CALTECH shall apply for, prosecute, and maintain during the
term of this Agreement the Licensed Patent Rights; provided, however, that
LICENSEE shall have reasonable opportunity to advise and consult with CALTECH
on such matters and may instruct CALTECH to take such action as LICENSEE
reasonably believes necessary to protect the Licensed Patent Rights. The
preparation, filing, prosecution, maintenance, and payment of all fees and
expenses, including legal fees, relating to such Licensed Patent Rights shall
be the responsibility of CALTECH, provided that LICENSEE shall reimburse
CALTECH for all reasonable fees and expenses, including reasonable legal fees,
incurred by CALTECH in such application preparation filing, prosecution, and
maintenance preparation, as provided in Paragraph 7.1. Patent attorneys chosen
by CALTECH and acceptable to LICENSEE shall handle all patent preparation,
filing, prosecution, and maintenance on behalf of CALTECH; provided, however,
that LICENSEE shall be entitled to review and comment upon and approve all
actions undertaken in the prosecution of all patents and applications. Patent
counsel shall concurrently provide CALTECH and LICENSEE with copies of all
material correspondence related to the prosecution and maintenance of the
patent applications and patents within the Licensed Patent Rights. In the
event CALTECH declines to apply for, prosecute, or maintain any Licensed Patent
Rights as requested by LICENSEE, LICENSEE shall have the right to pursue the
same in CALTECH's name and at LICENSEE's expense, and CALTECH shall give
sufficient and timely notice to LICENSEE so as to permit LICENSEE to apply for,
prosecute, and/or maintain such Licensed Patent Rights.
ARTICLE VIII
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CONFIDENTIALITY
VIII.1 Xx. Xxxxx shall provide to LICENSEE copies of any proposed
publication or abstract relating to Licensed Technology prior to the submission
of such documents. Proposed publications and abstracts shall be supplied at
least thirty (30) days in advance of submission to a journal, editor, or third
party. In addition, if Xx. Xxxxx submits a copy of the proposed publication to
LICENSEE less than thirty (30) days prior to submission for publication, then
LICENSEE can request CALTECH to file, at CALTECH's expense, a provisisonal
patent application enabling the technology disclosed in the proposed
publication at the United States Patent and Trademark Office, and shall provide
LICENSEE with evidence of the filing of such provisional patent application.
All such documents are to be forwarded to the address given in Paragraph 13.8.
LICENSEE may request reasonable changes and/or deletions be made in any
proposed publication. The Principal Investigator will consider such changes
but retains the sole right to determine whether such changes or deletions will
be made. Xx. Xxxxx agrees that he will honor LICENSEE's reasonable requests to
remove Confidential Information of LICENSEE included in any such public
disclosure. If LICENSEE believes that the subject matter to be published
warrants patent protection, it will identify the subject matter requiring
protection and notify CALTECH. CALTECH agrees to use its best efforts to file
a U.S. patent application prior to any date that would result in preventing the
obtaining of valid patent rights throughout the world when LICENSEE so
identifies subject matter requiring patent protection from a review of the
planned publication. Notwithstanding any other provision of this Paragraph
8.1, if CALTECH is unable to
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file a U.S. patent application in accordance with the preceding sentence,
CALTECH shall file a U.S. provisional patent application prior to the date
that would result in preventing the obtaining of valid patent rights throughout
the world when LICENSEE so identifies subject matter requiring patent
protection from a review of a planned publication.
VIII.2 Except as expressly provided herein, each party agrees not to
disclose any terms of this Agreement to any third party without the consent of
the other party; provided, however, that disclosures may be made as required by
securities or other applicable laws, or to actual or prospective investors or
corporate partners, or to a party's accountants, attorneys, and other
professional advisors.
ARTICLE IX
TERMINATION
IX.1 If either party materially breaches this Agreement, the other
party may elect to give the breaching party written notice describing the
alleged breach. If the breaching party has not cured such breach within sixty
(60) days after receipt of such notice, the notifying party will be entitled,
in addition to any other rights it may have under this Agreement, to terminate
this Agreement effective immediately; provided, however, that if either party
receives notification from the other of a material breach and if the party
alleged to be in default notifies the other party in writing within thirty (30)
days of receipt of such default notice that it disputes the asserted
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default, the matter will be submitted to arbitration as provided in Article XI
of this Agreement. In such event, the nonbreaching party shall not have the
right to terminate this Agreement until it has been determined in such
arbitration proceeding that the other party materially breached this Agreement,
and the breaching party fails to cure such breach within ninety (90) days after
the conclusion of such arbitration proceeding.
IX.2 LICENSEE shall have the right to terminate this Agreement
either in its entirety or as to any jurisdiction or any part of the Licensed
Technology upon sixty (60) days written notice.
IX.3 Termination of this Agreement for any reason shall not release
any party hereto from any liability which, at the time of such termination, has
already accrued to the other party or which is attributable to a period prior
to such termination, nor preclude either party from pursuing any rights and
remedies it may have hereunder or at law or in equity which accrued or are
based upon any event occurring prior to such termination.
IX.4 In the event of any termination of this Agreement, it is
understood that LICENSEE shall retain its ownership interest in any jointly
owned intellectual property within the Licensed Technology and shall have the
right to exploit the same for any purpose without having to account to CALTECH
therefor.
IX.5 The last sentence of Paragraph 2.2, Paragraphs 9.3, 9.4, and 9.5, and
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Articles III, VIII, XI, XII, and XIII of this Agreement shall survive
termination of this Agreement for any reason.
ARTICLE X
WARRANTIES AND NEGATION OF
WARRANTIES, IMPLIED LICENSES AND AGENCY
X.1 CALTECH represents and warrants that: (i) it owns all right,
title, and interest in and to the Licensed Technology, subject to the license
and march-in rights of the United States Government under Xxxxx 00, Xxxxxx
Xxxxxx Code, Sections 203-204, and ARPA Grant No. MDA972-93-1-0009, except as
for such right, title, and interest as may be owned by LICENSEE; (ii) it has
complied with all of its obligations under NIH Grant No. GM 34236, such as
those described in Xxxxx 00, Xxxxxx Xxxxxx Code, Section 202, with respect to
all of the Licensed Patent Rights; (iii) it has not granted and during the term
of this Agreement will not grant any right or interest in any of the Licensed
Technology that is inconsistent with the rights granted to LICENSEE herein;
(iv) the execution, delivery, and performance of this Agreement have been duly
authorized by all necessary corporate action on the part of CALTECH; (v) it is
the sole and exclusive owner of all right, title, and interest in the Licensed
Technology, except for such right, title, and interest therein as may be owned
by LICENSEE; (vi) it has the right to grant the rights and licenses granted
herein, and the Licensed Technology is free and clear of any lien, encumbrance,
security interest, or restriction on license; and (vii) there are no threatened
or pending actions, suits, investigations, claims, or proceedings in any way
relating to the Licensed
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Technology.
X.2 Nothing in this Agreement shall be construed as:
X.2.1 a representation or warranty of CALTECH as to the
validity or scope of Licensed Patent Rights or any claim thereof; or
X.2.2 a representation or warranty that any Licensed
Product is or will be free from infringement of rights of third parties; or
X.2.3 an obligation to bring or prosecute actions or suits
against third parties for infringement; or
X.2.4 conferring by implication, estoppel, or otherwise any
license or rights under any patents of CALTECH other than Licensed Patent
Rights, regardless of whether such other patents are dominant or subordinate to
the Licensed Patent Rights.
X.3 CALTECH MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, AND ASSUMES NO
RESPONSIBILITIES WHATEVER WITH RESPECT TO THE USE, SALE, OR OTHER DISPOSITION
BY LICENSEE OF LICENSED PRODUCT(S).
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ARTICLE XI
ARBITRATION
XI.1 CALTECH and LICENSEE agree that any dispute or controversy
arising out of, in relation to, or in connection with this Agreement, or the
validity, enforceability, construction, performance or breach hereof, shall be
settled by binding arbitration in Los Angeles, California, United States of
America, under the then-current Commercial Arbitration Agreement Rules of the
American Arbitration Association by one (1) arbitrator appointed in accordance
with such Rules. The arbitrators shall determine what discovery will be
permitted, based on the principle of limiting the cost and time which the
parties must expend on discovery; provided, however, that the arbitrator shall
permit such discovery as he/she deems necessary to achieve an equitable
resolution of the dispute. The decision and/or award rendered by the
arbitrator shall be written, final, and non-appealable and may be entered in
any court of competent jurisdiction. The parties agree that, any provision of
applicable law notwithstanding, they will not request, and the arbitrator shall
have no authority to award, punitive or exemplary damages against any party.
The costs of any arbitration, including administrative fees and fees of the
arbitrator, shall be shared equally by the parties. Each party shall bear the
cost of its own attorneys' fees and expert fees.
ARTICLE XII
PRODUCT LIABILITY
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XII.1 LICENSEE agrees that CALTECH shall have no liability to
LICENSEE or to any purchasers or users of Licensed Products made or sold by
LICENSEE or its sublicensees for any claims, demands, losses, costs, or damages
suffered by LICENSEE, or purchasers or users of Licensed Products, or any other
party, which may result from personal injury, death, or property damage related
to the manufacture, use, or sale of such Licensed Products ("Claims").
LICENSEE agrees to defend, indemnify, and hold harmless CALTECH, its trustees,
officers, agents, and employees from any such Claims, provided that (i)
LICENSEE is notified promptly of any Claims, (ii) LICENSEE has the sole right
to control and defend or settle any litigation within the scope of this
indemnity, and (iii) all indemnified parties cooperate fully in the defense of
any Claims. No indemnified party shall voluntarily make any payment or incur
any expense with respect to any claims without the prior written consent of
LICENSEE.
XII.2 At such time as LICENSEE begins to sell or distribute or
sublicense Licensed Products (other than for the purpose of obtaining
regulatory approvals) based upon use of Licensed Methods, LICENSEE shall, at
its sole expense, procure and maintain policies of comprehensive general
liability insurance in amounts not less than $2,000,000 per incident and
$2,000,000 in annual aggregate and naming those indemnified under Paragraph
12.1 as additional insureds. Such comprehensive general liability insurance
shall provide (i) product liability coverage and (ii) broad form contractual
liability coverage for LICENSEE's indemnification under Paragraph 12.1. In the
event the aforesaid product liability coverage does not provide for
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occurrence liability, LICENSEE shall maintain such comprehensive general
liability insurance for a reasonable period of not more than seven (7) years
after it has ceased commercial distribution or use of any Licensed Product or
Licensed Method.
XII.3 LICENSEE shall provide CALTECH with written evidence of such
insurance upon request of CALTECH. LICENSEE shall provide CALTECH with notice
at least fifteen (15) days prior to any cancellation, non-renewal, or material
change in such insurance, to the extent LICENSEE receives advance notice of
such matters from its insurer. If LICENSEE does not obtain replacement
insurance providing comparable coverage within sixty (60) days following the
date of such cancellation, non-renewal, or material change, CALTECH shall have
the right to terminate this Agreement effective at the end of such sixty (60)
day period without any additional waiting period; provided, however, that if
LICENSEE uses reasonable efforts but is unable to obtain the required insurance
at commercially reasonable rates, CALTECH shall not have the right to terminate
this Agreement, and CALTECH instead shall cooperate with LICENSEE to either
grant a waiver of LICENSEE's obligations under this Article XII, assist
LICENSEE in identifying a carrier to provide such insurance, or in developing a
program for self-insurance or other alternative measures.
ARTICLE XIII
MISCELLANEOUS
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XIII.1 This Agreement sets forth the complete agreement of the
parties concerning the subject matter hereof. No claimed oral agreement in
respect thereto shall be considered as any part hereof. No waiver of or change
in any of the terms hereof subsequent to the execution hereof claimed to have
been made by any representative of either party shall have any force or effect
unless in writing, signed by duly authorized representatives of the parties.
XIII.2 This Agreement shall be binding upon and inure to the benefit
of any successor or assignee of CALTECH. This Agreement is not assignable by
LICENSEE without the prior written consent of CALTECH, except that LICENSEE may
assign this Agreement without the prior written consent of CALTECH to (i) any
Related Company, or (ii) any successor or purchaser of a substantial part of
the assets of the business to which this Agreement pertains. Any permitted
assignee shall succeed to all of the rights and obligations of LICENSEE under
this Agreement.
XIII.3 CALTECH and LICENSEE are independent parties in this
Agreement. Accordingly, there is no agency relationship between CALTECH and
LICENSEE under this Agreement with respect to any products made or sold, or any
methods used, by LICENSEE under this Agreement.
XIII.4 Nothing in this Agreement will impair LICENSEE's right to
independently acquire, license, develop for itself, or have others develop for
it, intellectual property and technology performing similar functions as the
Licensed Technology or to market and distribute
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products other than Licensed Products based on such other intellectual property
and technology.
XIII.5 NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT,
HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
XIII.6 This Agreement is subject in all respects to the laws and
regulations of the United States of America, including the Export
Administration Act of 1979, as amended, and any regulations thereunder.
XIII.7 This Agreement shall be deemed to have been entered into in
California and shall be construed and enforced in accordance with California
law.
XIII.8 Any notice or communication required or permitted to be given
or made under this Agreement shall be addressed as follows:
CALTECH: Office of Technology Transfer
California Institute of Technology
0000 Xxxx Xxxxxxxxxx Xxxxxxxxx (XX 000-0)
Xxxxxxxx, Xxxxxxxxxx 00000
FAX No.: (000) 000-0000
LICENSEE: Aurora Biosciences Corporation
00000 Xxxxxx Xxxxx Xxxx
Xx Xxxxx, XX 00000
Phone No.: (000) 000-0000
FAX No.: (000) 000-0000
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Either party may notify the other in writing of a change of address or FAX
number, in which event any subsequent communication relative to this Agreement
shall be sent to the last said notified address or number. All notices and
communications relating to this Agreement shall be deemed to have been given
when received.
XIII.9 Neither party shall lose any rights hereunder or be liable to
the other party for damages or losses (except for payment obligations) on
account of failure of performance by the defaulting party if the failure is
occasioned by war, strike, fire, Act of God, earthquake, flood, lockout,
embargo, 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 or intentional conduct or misconduct of the
nonperforming party, and such party has exerted all reasonable efforts to avoid
or remedy such force majeure; provided, however, that in no event shall a party
be required to settle any labor dispute or disturbance.
XIII.10 In the event that any provisions of this Agreement are
determined to be invalid or unenforceable by a court of competent jurisdiction,
the remainder of the Agreement shall remain in full force and effect without
said provision. The parties shall in good faith negotiate a substitute clause
for any provision declared invalid or unenforceable, which shall most nearly
approximate the intent of the parties in entering this Agreement.
XIII.11 This Agreement may not be altered, amended, or modified in any
way except by a writing signed by both parties. The failure of a party to
enforce any provision of
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26
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.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed:
CALIFORNIA INSTITUTE OF TECHNOLOGY
(CALTECH)
Date: _______________ By:
------------------------------------
Name: Xxxxxxxx Xxxxxxx
Title: Director, Office of Technology
Transfer
AURORA BIOSCIENCES CORPORATION
Date: _______________ By:
------------------------------------
Name: Xxx Xxxx
Title: President and CEO
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EXHIBIT A
STOCK TRANSFER AGREEMENT
28
AURORA BIOSCIENCES CORPORATION
STOCK TRANSFER AGREEMENT
THIS AGREEMENT is made as of August , 1996 in San Diego, California,
between AURORA BIOSCIENCES CORPORATION, a Delaware corporation (the "Company"),
and the California Institute of Technology (the "Purchaser").
WHEREAS, The Company and Purchaser have entered into a license
agreement of even date herewith regarding the use of certain Promiscuous
G-protein technology (the "License Agreement"); and
WHEREAS, as partial consideration for Purchaser's execution of the
License Agreement, the Company has agreed to issue shares of the Company's
Common Stock to Purchaser according to the terms and conditions contained
herein.
NOW, THEREFORE, the parties agree as follows:
1. ISSUANCE OF STOCK. As partial consideration for Purchaser's
execution of the License Agreement and the Company's rights thereunder, the
Company hereby agrees to issue to Purchaser an aggregate of 35,000 shares of the
Company's Common Stock (the "Shares"). Upon execution of this Agreement, the
Company shall promptly issue and deliver to Purchaser a share certificate
evidencing the Shares in accordance with the terms of this Agreement.
2. RESTRICTIONS ON TRANSFER.
(a) The Shares may not be sold, offered for sale, pledged,
hypothecated or otherwise transferred in the absence of an effective
registration Statement under the Securities Act of 1933, as amended (the
"Securities Act"), with respect to such Shares or an opinion of counsel
reasonably acceptable to the Company that such registration is not required. The
Company shall not be required to transfer on its books any portion of such
Shares purchased hereunder which shall have been sold or transferred in
violation of any of the provisions set forth in this Agreement, or to treat as
the owner of such shares or to accord the right to vote as such owner or to pay
dividends to any transferee to whom such shares shall have been so transferred.
(b) The Purchaser hereby agrees that if so requested by the
Company or any representative of the underwriters in connection with any
registration of the offering of any securities of the Company under Section 7 of
the Securities Act, the Purchaser shall not sell, transfer or otherwise dispose
of any Shares or other securities of the Company during a period of up to 180
days (as specified by such representative) following the effective date of a
registration statement of the Company filed under the Securities Act; provided,
however, that such restriction shall only apply to the first two registration
statements of the Company to become effective
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29
under the Securities Act which include securities to be sold on behalf of the
Company to the public in an underwritten public offering under the Securities
Act. The Company may impose stop-transfer instructions with respect to
securities subject to the foregoing restrictions until the end of such 180-day
period.
(c) The Shares are subject to a Right of First Refusal as set
forth in Article XIV of the Company's Bylaws.
3. ADJUSTMENT FOR STOCK SPLIT. All references to the number of Shares
and the purchase price of the Shares in this Agreement shall be appropriately
adjusted to reflect any stock split, stock dividend or other change in the
Shares which may be made by the Company after the date of this Agreement.
4. GENERAL PROVISIONS.
(a) Purchaser acknowledges that it is aware that the Shares
have not been registered under the Securities Act of 1933, as amended (the
"Act") and that the Shares are deemed to constitute "restricted securities"
under Rule 144 and Rule 701 promulgated under the Act. In this connection,
Purchaser warrants and represents to the Company that Purchaser is purchasing
the Shares for Purchaser's own account and Purchaser has no present intention of
distributing or selling said Shares except as permitted under the Act and
Section 25102(f) of the California Corporations Code. Purchaser further warrants
and represents that Purchaser has either (i) preexisting personal or business
relationships with the Company or any of its officers, directors or controlling
persons, or (ii) the capacity to protect its own interests in connection with
the purchase of the Shares by virtue of the business or financial expertise of
Purchaser or of any professional advisors to Purchaser who are unaffiliated with
and who are not compensated by the Company or any of its affiliates, directly or
indirectly. Purchaser further acknowledges that the exemption from registration
under Rule 144 will not be available for at least three years from the date of
sale of the Shares unless at least two years from the date of sale (i) a public
trading market then exists for the Common Stock of the Company, (ii) adequate
information concerning the Company is then available to the public, and (iii)
other terms and conditions of Rule 144 are complied with; and that any sale of
the Shares may be made only in limited amounts in accordance with such terms and
conditions.
(b) All certificates representing any shares of Common Stock
of the Company subject to the provisions of this Agreement shall have endorsed
thereon legends in substantially the following form:
(i) The securities represented by this certificate
have not been registered under the Act. They may not be sold or offered for sale
or otherwise distributed unless the securities are registered under the Act or
an exemption therefrom is available.
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30
(ii) Any other legend required to be placed thereon
by the Company's Bylaws or applicable state, federal or foreign securities laws.
(c) This Agreement shall inure to the benefit of, and be
enforceable by, the successors and assigns of the Company, and, subject to the
restrictions on transfer herein set forth, shall be binding upon Purchaser, its
successors and assigns.
(d) Any notice, demand or request required or permitted to be
given by either the Company or the Purchaser pursuant to the terms of this
Agreement shall be in writing and shall be deemed given when delivered
personally or deposited in the U.S. Mail, First Class with postage prepaid, and
addressed to the parties at the addresses of the parties set forth at the end of
this Agreement or such other address as a party may request by notifying the
other in writing.
(e) The Purchaser agrees to execute upon request any further
documents or instruments necessary or desirable to carry out the purposes or
intent of this Agreement.
(f) This Agreement shall be governed by and determined and
interpreted in accordance with the laws of the State of California as such laws
are applied by California courts to contracts made and to be performed entirely
in California by residents of that state.
(g) This Agreement sets forth the entire understanding between
the Company and Purchaser regarding shares of the Company's securities, and
supersedes all prior agreements and/or understandings regarding the same.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of
the day and year first set forth above.
AURORA BIOSCIENCES CORPORATION CALIFORNIA INSTITUTE OF TECHNOLOGY
By:___________________________________ By:_________________________
Xxxxxxx X. Xxxx
President Name:_______________________
00000 Xxxxx Xxxxxx Xxxxx Xxxx Address:____________________
Xx Xxxxx, XX 00000 ____________________________
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31
EXHIBIT B
CONFIDENTIALITY AGREEMENT
32
CONFIDENTIAL
MUTUAL NONDISCLOSURE AGREEMENT
This MUTUAL NONDISCLOSURE AGREEMENT ("Agreement") is made effective as
of the ______________, 1997, by and between AURORA BIOSCIENCES CORPORATION AND
XXXXXX X. XXXXX, PH.D., to assure the protection and preservation of the
confidential and/or proprietary nature of information to be disclosed or made
available between the parties in connection with certain negotiations or
discussions in contemplation or furtherance of a business or scientific
relationship between the parties.
WHEREAS, in order to pursue these negotiations or discussions, the
parties have agreed to mutual disclosures of certain data and other information
which are of a proprietary and confidential nature (as defined in paragraph 1
below and referred to herein as "Confidential Information").
NOW, THEREFORE, in reliance upon and in consideration of the following
undertakings, and for other good and valuable consideration, the receipt of
which is hereby acknowledged, the parties to this Agreement hereby agree as
follows:
1. Subject to the limitations set forth in Paragraph 2, Confidential
Information shall mean any information, process, technique, compound, library,
bioreagents, chemical probes, instrumentation, imaging technology, software,
biological assays, high throughput and ultra-high throughput synthesis and
screening, method of synthesis, program, design, drawing, formula or test data
relating to any research project, work in process, development, engineering,
manufacturing, marketing, servicing, financing or personnel matter relating to
the disclosing party, its present or future products, suppliers, employees,
investors, or business. In order to be deemed Confidential Information
hereunder, all information disclosed shall be in some type of written form,
including graphic or electronic, and marked "Confidential" or; if disclosed
orally, visually and/or in another tangible form, shall be identified as
confidential prior to, or within a reasonable time of, disclosure and summarized
in a writing marked "Confidential" and provided by the disclosing party to the
recipient within forty-five (45) days of the initial disclosure.
2. The term "Confidential Information" shall not be deemed to include
information which, to the extent that the recipient can establish by competent
written proof:
a. at the time of disclosure is in the public domain;
b. after disclosure, becomes part of the public domain by
publication or otherwise, except by (i) breach of this
Agreement by the recipient or (ii) disclosure by any person or
affiliate company to whom Confidential Information was
disclosed under this Agreement.
33
CONFIDENTIAL
c. was (i) in recipient's possession in documentary form at the
time of disclosure by the disclosing party or (ii)
independently developed by or for recipient by people who had
no knowledge of or access to the Confidential Information.
d. recipient received from a third party who had the lawful right
to disclose the Confidential Information and who did not
obtain the Confidential Information either directly or
indirectly from the disclosing party; or
e. is required by law or regulation to be disclosed.
In the event that Confidential Information is required to be disclosed
pursuant to subsection (e), the party required to make disclosure shall notify
the other party to allow that other party to assess whatever exclusions or
exemptions may be available to the other party under such law or regulation.
3. Each party shall maintain in trust and confidence and not disclose
to any third party or use for any unauthorized purpose any Confidential
Information received from the other party. Each party may use such Confidential
Information only to the extent required for the purposes described herein.
Confidential Information shall not be used for any purpose or in any manner that
would constitute a violation of any laws or regulations, including, without
limitation, the export control laws of the United States. No other rights or
licenses to trademarks, inventions, copyrights, or patents are implied or
granted under this Agreement and no Confidential Information disclosed by Aurora
Biosciences Corporation will be used by Xxxxxx X. Xxxxx, Ph.D. to file a patent
application.
4. Confidential Information supplied shall not be reproduced in any
form, except as required to continue discussions or to accomplish the purposes
described herein.
5. The responsibilities of the parties are limited to using their
reasonable and best efforts to protect the Confidential Information from
unauthorized use or disclosure. Both parties shall advise their employees or
agents who might have access to such Confidential Information of the
confidential nature thereof. No Confidential Information shall be disclosed to
any officer, employee or agent of either party who does not have a need to know
such information for the purposes described herein and who is not bound by a
written agreement with that party to maintain Confidential Information in
confidence.
6. All Confidential Information (including copies thereof) shall remain
the property of the disclosing party, and shall be returned to the disclosing
party after the recipient's need for it to accomplish the purposes of this
Agreement has expired, or within twenty (20) days of a written request by the
disclosing party. However, the recipient may retain one complete copy of the
Confidential Information in a secure location for recipient's archival purposes
to assure compliance with this Agreement.
2.
34
CONFIDENTIAL
7. This Agreement may be terminated at any time upon ten (10) days
written notice to the other party. The termination of this Agreement shall not
relieve either party of the obligations imposed by this Agreement with respect
to Confidential Information disclosed prior to the effective date of such
termination and the provisions hereof shall survive for a period of seven (7)
years from the date hereof.
8. This Agreement shall be governed by the laws of the State of
California as those laws are applied to contracts entered into and to be
performed in California.
9. Neither party shall reveal the fact that Confidential Information
has been disclosed pursuant to this Agreement, nor that either party is
conducting, or has conducted, discussions or negotiations in contemplation or
furtherance of a business relationship. It is understood that disclosure
pursuant to this Agreement is not a public disclosure or sale or offer for sale
of any product, but is made for the limited purposes relating to potential joint
business activities stated herein.
10. This Agreement contains the entire agreement of the parties and may
not be changed, modified, amended or supplemented, except by a written
instrument signed by both parties. The unenforceability of any provision on this
Agreement shall not affect the enforceability of any provision of this
Agreement. Neither this Agreement nor the disclosure of any Confidential
Information pursuant to this Agreement by any party shall restrict such party
from disclosing any of its Confidential Information to any third party.
11. Each party hereby acknowledges and agrees that in the event of any
breach of this Agreement, including, without limitation, the actual or
threatened disclosure of a disclosing party's Confidential Information without
the prior express written consent of the disclosing party, the disclosing party
will suffer an irreparable injury, such that no remedy at law will afford it
adequate protection against, or appropriate compensation for, such injury.
Accordingly, each party hereby agrees that the other party shall be entitled to
specified performance of recipient's obligations under this Agreement, as well
as such further injunctive relief as may be granted by a court of competent
jurisdiction.
AGREED TO AS OF THE FIRST DATE ABOVE:
AURORA BIOSCIENCES CORPORATION XXXXXX X. XXXXX, PH.D.
00000 X. Xxxxxx Xxxxx Xxxx
Xx Xxxxx, XX 00000
By: __________________________ By: __________________________
Print Name: __________________ Print Name: __________________
Title: _______________________ Title: _______________________
Initial if authorized to bind the Company:
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