Exhibit 99.21
SETTLEMENT AGREEMENT
This Settlement Agreement ("Settlement Agreement") is made by,
between, and among The Regents of the University of California, a
Constitutional Corporation under Art. IX, Sec. 9 of the California
Constitution, having an address at 0000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx
00000, ("The Regents") and Genentech, Inc., a Delaware Corporation, having an
address at 0 XXX Xxx, Xxxxx Xxx Xxxxxxxxx, Xxxxxxxxxx 00000 ("Genentech")
RECITALS
WHEREAS, Genentech and the Regents have commenced the following
civil actions (hereafter collectively "the Litigation") against each other:
on August 6, 1990, Genentech commenced a civil action in the United States
District Court for the Southern District of Indiana (No. IP 90 1679 C)
seeking, inter alia, a declaratory judgment of the invalidity and
noninfringement of U.S. Patent No. 4,363,877 ("the '877 Patent"), issued to
inventors Xxxxxx X. Xxxxxxx, Xxxx Xxxxx and Xxxxx X. Seeburg, and assigned to
The Regents; on August 7, 1990, The Regents commenced a civil action in the
United States District Court for the Northern District of California (No. C-
90-2232) alleging that Genentech's manufacture and sale of its Protropin,
registered trademark, recombinant human growth hormone product infringed the
'877 patent; on July 10, 1997, The Regents commenced a civil action in the
United States District Court for the Northern District of California (No. C-
97-2563) alleging that Genentech's manufacture and sale of its Nutropin,
registered trademark, recombinant human growth hormone product infringed the
'877 patent; (the latter two actions are collectively referred to hereafter
as "the California Actions")
WHEREAS, during the course of the Litigation, The Regents became
aware that in the marketing of Genentech's human growth hormone products that
Genentech may have injured The Regents under causes of action in antitrust
and unfair competition law and sought to commence actions ("Antitrust
Actions") in state and/or federal courts, and the right of The Regents to
bring the Antitrust Actions is the subject of a currently pending appeal
before the U.S. Court of Appeals for the Federal Circuit;
WHEREAS, The Regents and Genentech entered a Settlement Agreement
in 1980 (" '80 Settlement Agreement") regarding the transfer of biological
materials from the University of California at San Francisco in 1978, and
Genentech has claimed that The Regents breached this '80 Settlement
Agreement; and
WHEREAS, the parties deny all allegations against them and desire
to enter into this Settlement Agreement to avoid the further expense,
inconvenience, and distraction of litigation, and to put to rest all claims
as between and among them and their respective employees, agents, directors,
and representatives, that were or might have been alleged in the Litigation
or the Antitrust Action and all claims relating to the '80 Settlement
Agreement.
Now, therefore, for good and valuable consideration, including the
mutual covenants herein contained, the parties agree as follows:
TERMS
I. DISMISSAL OF ACTIONS. Genentech and The Regents agree to seek prompt
dismissal of all pending actions in the Litigation, with prejudice,
and all pending appeals relating to the Litigation and to the
Antitrust Actions, with prejudice. The parties shall direct their
attorneys to execute and file with the respective courts stipulations
for dismissal and order/approval in the forms attached hereto as
Exhibits A-C and shall submit these forms to the courts within five
(5) business days of the last date of signature indicated below.
II. CONSIDERATION. Genentech agrees to pay to The Regents one hundred and
fifty million dollars ($150,000,000) within ten days of dismissal of
all of the pending actions in the Litigation and the pending appeals
in the Litigation and the Antitrust Actions.
III. CONTRIBUTION. Genentech agrees to contribute to The Regents fifty
million dollars ($50,000,000) within ten days of dismissal of all of
the pending actions in the Litigation and the pending appeals in the
Litigation and the Antitrust Actions, which contribution shall be
applied by The Regents toward the cost of construction of the first
biological sciences research building at the University of California,
San Francisco Mission Bay Campus. The building will bear a name
proposed by Genentech and acceptable to The Regents. Genentech shall
suggest a name for the building within thirty (30) days of paying the
contribution to The Regents, and The Regents shall approve or
disapprove such name within thirty (30) days thereafter. In the event
there is no mutual agreement on a name, the process shall repeat with
thirty (30) days response times for each party until there is
agreement on a name.
IV. MUTUAL RELEASE. Genentech and The Regents each release the other and
the other party's directors, present and former employees, agents, and
representatives, including legal counsel, from all past and future
claims, known and unknown, that were or could have been asserted, or
arising out of, or in any way connected with, the Litigation, the
Antitrust Actions, the '80 Settlement Agreement, the '877 patent, and
any United States or foreign patent that claims priority to a patent
application which gave rise to the '877 patent.
V. SECTION 1542 ACKNOWLEDGEMENT. Genentech and The Regents each
acknowledge that they have been advised by legal counsel and are
familiar with Section 1542 of the California Civil Code, which
provides:
A general release does not extend to claims which the
creditor does not know or suspect to exist in his favor at
the time of executing the release, which if known by him
must have materially affected his settlement with the
debtor.
The parties acknowledge that they may have sustained damage, loss,
cost or expense that is presently unknown and unsuspected, and that
such damage, loss, cost, or expense as may have been sustained may
give rise to additional damage, loss, cost, or expense in the future.
Nevertheless, the parties acknowledge that this Settlement Agreement
has been negotiated and agreed upon in light of this situation and
expressly waive any and all rights which they may have under Section
1542 of the California Civil Code, or any other state or federal
statute or common law principle of similar effect.
VI. PUBLICITY. Genentech appoints its CEO and Chairman, Xxxxxx Xxxxxxxx,
as its point of contact for public comment on the Litigation and this
Settlement Agreement. The Regents appoint Vice Chancellor Xxxx Xxxx
of University of California, San Francisco, as its point of contact
for public comment on the Litigation and this Settlement Agreement.
These representatives shall authorize a joint press release to
announce the terms of this Settlement Agreement and shall serve in the
point of contact role for six months from the date of entry of the
orders dismissing the California Actions. In their point of contact
role, these representatives may be assisted by others of their
choosing within their respective organizations as necessary.
VII. NON DISPARAGEMENT. Each party will request its directors, present and
former employees, agents, and representatives to not engage in
disparaging remarks regarding the other party in connection with the
Litigation, the '80 Settlement Agreement, and the Antitrust Actions.
Consistent with ethical requirements of the practice of law such
as California Rule of Professional Conduct Rule 1-500, each party will
instruct its outside counsel to not engage in disparaging remarks
regarding the other party in connection with the Litigation, the '80
Settlement Agreement, and the Antitrust Actions.
This Article is not intended to limit factual statements
concerning these matters.
VIII. EFFECTIVE DATE. This Settlement Agreement shall become effective when
it has been executed by each party.
IX. COSTS. Each party shall be solely responsible for its own attorneys'
fees and costs in connection with the Litigation, the Antitrust
Actions, and the alleged breach of the '80 Settlement Agreement,
including the negotiation, execution, and performance of this
Settlement Agreement.
X. SETTLEMENT AGREEMENT ENTERED INTO WITH ADVICE OF COUNSEL. Each party
represents that it has received legal advice from attorneys with
respect to the advisability of making the Settlement provided for
herein and with respect to the advisability of executing this
Settlement Agreement, and warrants that it has, or its representatives
have, read this Settlement Agreement and discussed its provisions with
its attorneys. The parties have voluntarily entered into each and
every provision of this Settlement Agreement, and no party has
conditioned the grant of any right herein upon the undertaking of any
obligation which the other party considers unreasonable, the result of
any form of coercion or otherwise unlawful in any respect.
XI. AUTHORIZATION. Each party represents to the other that it is fully
authorized to enter into this Settlement Agreement and to carry out
the obligations provided herein.
XII. COUNTERPARTS. This Settlement Agreement may be executed in
counterparts with the same force and effect as if all signatures were
set forth in a single document.
XIII. INTERPRETATION AND ENFORCEMENT OF SETTLEMENT AGREEMENT.
A. This Settlement Agreement is to be interpreted and construed
under the laws of the State of California.
B. Nothing in this Settlement Agreement or in the Exhibits hereto
shall be construed as an acknowledgement, admission, concession,
or stipulation by either party regarding (i) the infringement,
validity, or enforceability of any patent, or (ii) the liability
or wrongdoing by either party or the truth or falsity of any
allegation made by either party in or relating to the
Litigation, the Antitrust Actions, or the '80 Settlement
Agreement.
C. In the event it is necessary for any party to this Settlement
Agreement, or its authorized representative, successor or
assign, to institute suit to compel performance of any of the
obligations contained in this Settlement Agreement or to
preclude a violation of the terms of this Settlement Agreement,
the prevailing party in such suit shall be entitled to
reasonable costs, expenses and attorneys' fees incurred by it or
him in the suit.
D. Each of the parties agree that any suit arising out of, or
relating to, this Settlement Agreement, shall be filed in the
Northern District of California if in Federal Court, or the
County of Alameda, California, if in State Court.
XIV. SEVERABILITY. If any provision of this Settlement Agreement or the
application hereof to any party or circumstance is held invalid or
unenforceable, the remaining provisions of this Settlement Agreement
shall not be affected thereby, the provisions of this Settlement
Agreement being severable in any such instance.
XV. OTHER AGREEMENTS. This Settlement Agreement and the stipulations for
dismissal and order/approval called for by it constitute the entire
agreement between the parties relating to the subject matter hereto
with the exception only of the protective order previously entered
into in the Litigation. There are no other understandings,
representations, or warranties of any kind. The protective order in
the Litigation will remain in full force according to its terms after
dismissal of the pending actions in the Litigation and the pending
appeals relating to the Litigation and to the Antitrust Actions. This
Settlement Agreement may not be waived, altered, extended, or modified
except by written agreement of the parties.
XVI. HEADINGS. Headings are used in this Settlement Agreement for
convenience only. The headings should play no part in the
interpretation of this Settlement Agreement.
XVII. NOTICES. Any notice or other communication concerning the
interpretation or performance of this Settlement Agreement shall be
sent to the parties at their respective address shown below or at such
other address either party may hereafter designate in writing:
TO THE REGENTS
Attn: General Counsel
The Regents of the University of California
0000 Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxxxxxx, XX 00000
TO GENENTECH
Attn: Corporate Secretary
Genentech, Inc.
0 XXX Xxx
Xxxxx Xxx Xxxxxxxxx, XX 00000
IN WITNESS HEREOF, the parties have caused this Settlement
Agreement to be executed by each of their respective representatives
thereunto duly authorized on the dates written below.
Dated: December 17, 0000
XXX XXXXXXX XX XXX XXXXXXXXXX XX
XXXXXXXXXX
By: /s/ XXXX X. XXXXXXXX
----------------------------
Xxxx X. Xxxxxxxx
Its: Deputy General Counsel
Dated: December 17, 1999
GENENTECH, INC.
By: /s/ XXXXXXX X. XXXXXXXXXX
----------------------------
Xxxxxxx X. Xxxxxxxxxx
Its: Senior Vice President-
General Counsel and
Secretary
Attachments: Exhibit A - STIPULATION OF DISMISSAL WITH PREJUDICE
Exhibit B - STIPULATED DISMISSAL (No. 96-1361)
Exhibit C - STIPULATED DISMISSAL (No. 97-1099)
EXHIBIT A
Xxxxxx X. Xxxxxx, State Bar No. 139602
Xxxxx X. Xxxxx, State Bar. No. 164147
Xxxxxxx X. Xxxxxxx, State Bar No. 145384
Xxxx X. Xxxxxxx, State Bar No. 151933
Xxxxx X. Xxxxxx, State Bar No. 161386
XXXXXXXX & XXXXXXXX LLP
000 Xxxxxx Xxxxxx
Xxx Xxxxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
Xxxxx X. Xxxxx, State Bar No. 00000
Xxxx X. Xxxxxxxx, Xxxxx Xxx Xx. 00000
P. Xxxxxx Xxxxxxx, Jr., State Bar No. 122867
UNIVERSITY OF CALIFORNIA
OFFICE OF THE PRESIDENT
Office of General Counsel
0000 Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
Attorneys for Plaintiff
THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
THE REGENTS OF THE UNIVERSITY OF Case Nos. C-90-2232-CAL and C-97-2563
CALIFORNIA, CAL
Plaintiff, STIPULATION OF DISMISSAL
WITH PREJUDICE
V.
GENENTECH, INC.,
Defendant.
------------------------------------
THE REGENTS OF THE UNIVERSITY OF
CALIFORNIA,
Plaintiff,
V.
GENENTECH, INC.,
Defendant.
====================================
Plaintiff The Regents of the University of California ("UC"), and
defendant Genentech, Inc. hereby stipulate as follows:
1. Pursuant to Fed. R. Civ. P. 41(a)(1)(ii), UC and Genentech hereby
dismiss with prejudice the claims, counterclaims and cross-claims brought
against each other in the above-entitled actions, each party to bear its or
his own costs and attorneys fees, and
2. Pursuant to Fed R. Civ. P. 41 (a)(1)(ii), the above-captioned
actions are hereby dismissed with prejudice, each party to bear its or his
own costs and attorneys fees.
IT IS SO STIPULATED.
Dated: December 23, 1999
XXXXXXXX & XXXXXXXX LLP
By: /s/ XXXXXX X. XXXXXX
---------------------------------------
Xxxxxx X. Xxxxxx
Attorneys for Plaintiff
The Regents of the
University of California
XXXXXX & XXXXX LLP
By: /s/ XXXXXX XXXXXXX
---------------------------------------
Xxxxxx Xxxxxxx
Attorneys for Defendant
Genentech, Inc.
IT IS SO ORDERED.
Dated: December 23, 1999
/s/ XXXXXXX X. XXXXX
---------------------------------------
Xxxxxxx X. Xxxxx
United States District Court Judge
EXHIBIT B
------------------
No. 96-1361
------------------
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
------------------
GENENTECH, INC.
Plaintiff-Appellee,
V.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Defendant-Appellant,
and
XXX LILLY AND COMPANY,
Defendant.
------------------
Appeal From a Decision of the United States District Court
For the Southern District of Indiana in 90-1679-C
Entered April 12, 1996, Judge S. Xxxx Xxxxxx
------------------
STIPULATED DISMISSAL
------------------
Of counsel:
P. Xxxxxx Xxxxxxx, Jr. Xxxxxxx X. Xxxxxx
Office of the General Counsel Attorney of Record
University of California Xxxxxxxxx & Xxxxxxx
1111 Xxxxxxxx Xxxxxx, 0xx Xxxxx 0000 Xxxxxxxxxxxx Xxx., X.X.
Xxxxxxx, Xxxxxxxxxx 00000-0000 Xxxxxxxxxx, X.X. 00000
(000) 000-0000 (000) 000-0000
Xxxxxxx X. Xxxxxxx Xxxxxx X. Xxxxxx
Xxxxxx, White & Xxxxxx Xxxxxxxx & Xxxxxxxx LLP
000 Xxxxxx Xxxxx, Xxxxx 000 000 Xxxx Xxxx Xxxx
Xxxxxxx, Xxxxx 00000 Xxxx Xxxx, Xxxxxxxxxx 00000-0000
(000) 000-0000 (000) 000-0000
Locke, Reynolds, Xxxx & Xxxxxxx Xxxx X. Xxxx
1000 Capital Center South Xxxxx Xxx-Xxx
000 Xxxxx Xxxxxxxx Xxxxxx Xxxxxx Xxxxxxx
Xxxxxxxxxxxx, Xxxxxxx 00000 Xxxxxx & Xxxxx LLP
(000) 000-0000 000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
Plaintiff-Appellee Genentech, Inc. ("Genentech") and Defendant-Appellant
The Regents of the University of California ("UC"), hereby stipulate and
agree as follows:
1. Pursuant to Fed. R. App. P. 42(b), Genentech and UC hereby
dismiss with prejudice the claims, counterclaims and/or cross claims against
one another, and UC dismisses with prejudice the appeal against Genentech in
the above-captioned action, and
2. Pursuant to Fed R. App. P. 42(b), the above-captioned action is
hereby dismissed with prejudice, each party to bear its or his own costs and
attorneys fees.
IT IS SO STIPULATED.
Dated: ___________, _____
XXXXXXXX & XXXXXXXX LLP
By: _______________________________________
Xxxxxx X. Xxxxxx
Attorneys for Defendant-Appellant
The Regents of the
University of California
Dated: ___________, ______
XXXXXX & XXXXX LLP
By: _______________________________________
Xxxxxx Xxxxxxx
Attorneys for Plaintiff-Appellee
Genentech, Inc.
DISMISSAL APPROVED.
___________________________________
Judge/Clerk of the Federal Circuit
EXHIBIT C
------------------
No. 97-1099
------------------
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
------------------
GENENTECH, INC.
Plaintiff-Appellant,
V.
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
Defendant-Appellee,
and
XXX XXXXX AND COMPANY,
Defendant.
and
UNITED STATES,
Intervenor.
------------------
Appeal From a Decision of the United States District Court For the
Southern District of Indiana in 90-1679
Entered September 27, 1996, Senior Judge S. Xxxx Xxxxxx and on
Remand from the United States Supreme Court on an Order Entered June 24, 1999
------------------
STIPULATED DISMISSAL
------------------
Of counsel.
P. Xxxxxx Xxxxxxx, Jr. Xxxxxxx X. Xxxxxx
Office of the General Counsel Attorney of Record
University of California Xxxxxxxxx & Xxxxxxx
1111 Xxxxxxxx Xxxxxx, 0xx Xxxxx 0000 Xxxxxxxxxxxx Xxx., X.X.
Xxxxxxx, Xxxxxxxxxx 00000-0000 Xxxxxxxxxx, X.X. 00000
(000) 000-0000 (000) 000-0000
Xxxxxxx X. Xxxxxxx Xxxxxx X. Xxxxxx
Xxxxxx, White & Xxxxxx Xxxxxxxx & Xxxxxxxx LLP
000 Xxxxxx Xxxxx, Xxxxx 000 000 Xxxx Xxxx Xxxx
Xxxxxxx, Xxxxx 00000 Xxxx Xxxx, Xxxxxxxxxx 00000-0000
(000) 000-0000 (000) 000-0000
Locke, Reynolds, Xxxx & Xxxxxxx Xxxx X. Xxxx
1000 Capital Center South Xxxxx Xxx-Xxx
000 Xxxxx Xxxxxxxx Xxxxxx Xxxxxx Xxxxxxx
Xxxxxxxxxxxx, Xxxxxxx 00000 Xxxxxx & Xxxxx LLP
(000) 000-0000 000 Xxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
(000) 000-0000
Plaintiff-Appellant Genentech, Inc. ("Genentech") and Defendant-Appellee
The Regents of the University of California ("UC"), hereby stipulate and
agree as follows:
1. Pursuant to Fed. R. App. P. 42(b), UC and Genentech hereby
dismiss with prejudice the claims, counterclaims and/or cross-claims brought
against each other, and Genentech dismisses with prejudice its appeal in the
above-captioned action, and
2. Pursuant to Fed R. App. P. 42(b), the above-captioned action is
hereby dismissed with prejudice, each party to bear its own costs and
attorneys fees.
IT IS SO STIPULATED.
Dated: ___________, _____
XXXXXXXX & XXXXXXXX LLP
By: _______________________________________
Xxxxxx X. Xxxxxx
Attorneys for Defendant-Appellee
The Regents of the
University of California
Dated: ___________, ______
XXXXXX & XXXXX LLP
By: _______________________________________
Xxxxxx Xxxxxxx
Attorneys for Plaintiff-Appellant
Genentech, Inc.
DISMISSAL APPROVED.
___________________________________
Judge/Clerk of the Federal Circuit
