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.
AMENDED AND RESTATED FIELD LICENSE
THIS AMENDED AND RESTATED FIELD LICENSE (the "Agreement"), effective
December 31, 1999 (the "Effective Date"), is made by and among ABGENIX, INC., a
Delaware corporation ("ABX"), JT AMERICA INC., a New York corporation ("JTA")
and XENOTECH L.P., a California partnership ("XT"), with reference to the
following facts and circumstances. ABX, JTA and XT may be referred to herein
each individually as a "Party" and jointly as the "Parties."
A. WHEREAS, in 1991, Cell Genesys, Inc. ("CGI") and JT
Immunotech USA Inc. ("Immunotech"), a wholly-owned subsidiary of JTA, which is
itself a wholly owned subsidiary of Japan Tobacco Inc. ("JTI"), formed XT;
B. WHEREAS, CGI, Immunotech and XT entered into that certain
Collaboration Agreement effective June 12, 1991, as amended (the "Collaboration
Agreement"), pursuant to which those parties conducted a sponsored research
project for the development of transgenic animals capable of producing human
monoclonal antibodies;
C. WHEREAS, CGI, Immunotech and XT entered into that certain
Field License effective June 12, 1991, as amended on March 22, 1996 and June
28, 1996 (the "Prior Field License"), to govern those parties' rights with
respect to the use of technology created pursuant to or practiced in the
context of the Collaboration Agreement ("Project Technology") in the Field (as
defined below);
D. WHEREAS, CGI, Immunotech and XT entered into that certain
Expanded Field License effective June 12, 1991, as amended on June 28, 1996
(the "Expanded Field License"), to govern those parties' rights with respect to
the use of Project Technology in the Expanded Field (as defined in the Expanded
Field License);
E. WHEREAS, CGI assigned to ABX (its wholly-owned subsidiary at
such time), its interest in XT and in the Collaboration Agreement, the Prior
Field License and the Expanded Field License, and in 1997, Immunotech merged
into JTA and its interest in XT and in the Collaboration Agreement, the Prior
Field License and the Expanded Field License was assigned to JTA by operation
of law;
F. WHEREAS, XT, JTA and ABX have agreed to terminate the
Collaboration Agreement pursuant to the terms of that certain Agreement to
Terminate the Collaboration Agreement of even date herewith (the "Collaboration
Termination Agreement"), and to further amend the Expanded Field License
pursuant to that certain Amendment to the Expanded Field License of even date
herewith (the "Expanded Field Amendment"); and
G. WHEREAS, XT, JTA and ABX now desire to amend and restate the
terms of the Prior Field License pursuant to the terms of this Agreement and
that certain Amended and Restated Field License entered into between XT and ABX
of even date herewith;
NOW, THEREFORE, the Parties hereby agree as follows:
[*] 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.
ARTICLE I
DEFINITIONS
The following definitions shall apply to capitalized terms used herein, which
are modified from those provided in the Prior Field License as appropriate to
reflect the change in identities of the Parties hereto.
1.1 "ABX AMENDED LICENSE" shall mean the Amended and Restated
Field License entered into by and between ABX and XT as of even date herewith.
1.2 "AFFILIATE" shall mean any entity which controls, is
controlled by or is under common control with any one of the Parties. 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 deemed an Affiliate of JTA.
1.3 "CONTROLLED" OR "CONTROL" 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.
1.4 "FIELD" shall mean the [*] and the [*] or in [*]
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 "INDEPENDENT TECHNOLOGY" shall mean Patent Rights and
Know-How developed by JTA with respect to Monoclonal Antibodies during the term
of the Sponsored Research, independently of the Sponsored Research.
1.7 "KNOW-HOW" shall mean all information in the possession and
Control of JTA constituting methods, prototypes, techniques, materials
(including mice) and data for the discovery, development and creation of a
Monoclonal Antibody producing mouse.
1.8 "LICENSED PRODUCT" shall mean Monoclonal Antibodies, Genetic
Material encoding such Monoclonal Antibodies or any fragment of such Monoclonal
Antibodies, the Monoclonal Antibody-producing mouse, and any discrete product
incorporating a Monoclonal Antibody or Genetic Material encoding a Monoclonal
Antibody or any fragment of a Monoclonal Antibody.
1.9 "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.
[*] 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.
1.10 "MONOCLONAL ANTIBODIES" shall mean antibodies at least
containing [*] to those [*] which are derived from [*] Such [*] may include,
without limitation, the [*] and the introduction of [*]
1.11 "PATENT RIGHTS" shall mean (a) all patent applications and
patents Controlled by JTA; (b) any continuations, divisionals, reexaminations,
reissues or extensions of any of (a) above; and (c) any foreign counterparts
issued or issuing on any of (a) or (b) above.
1.12 "PROJECT TECHNOLOGY" shall mean all Patent Rights and
Know-How which resulted from the Sponsored Research.
1.13 "SPONSORED RESEARCH" shall mean research funded by XT and
conducted pursuant to the Collaboration Agreement.
ARTICLE II
FIELD LICENSE SUPERSEDED
The Field License is hereby superseded and replaced in its entirety by
this Agreement and by the ABX Amended License.
ARTICLE III
GRANT OF RIGHTS
3.1 RIGHTS OF XT.
(a) JTA hereby grants to XT an exclusive worldwide
license under the Project Technology and the Independent Technology. The
foregoing grant of rights with respect to the Independent Technology is to
develop, use, modify, make, have made and sell or otherwise dispose of any
product or technology which results from the Sponsored Research, within the
Field. The remainder of the foregoing grant of rights is to develop, use,
modify, make, have made and sell or otherwise dispose of any product or
technology within the Field, regardless of whether such product or technology
resulted from the Sponsored Research.
(b) The rights granted in this Article 3 shall be
irrevocable, perpetual, royalty-free and fully assignable and sublicenseable.
[*] 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.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.1 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.
4.2 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.
4.3 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 Party; provided that such
written consent shall not be required where: (a) either Party assigns this
Agreement to any entity that acquires substantially all of the assets to which
this Agreement relates, (b) JTA assigns this Agreement to a Majority-Owned
Affiliate of JTI or (c) 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 4.3 shall be null, void and of no legal effect.
For clarification, this Agreement shall survive any dissolution of XT, provided
that XT assigns this Agreement as permitted hereunder prior to or upon such
dissolution.
4.4 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.
4.5 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 and orders of any governmental body having
jurisdiction over the exercise of rights under this Agreement.
4.6 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.
4.7 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.
[*] 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.
JT America Inc.: JT America Inc.
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Fax: (000) 000-0000
Attn: President
With a copy 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 Xxxxxxxxx
Xxxxx 000
Xxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
Abgenix, Inc. or Abgenix, Inc.
Xenotech L.P.: 0000 Xxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
With a copy to: Cooley Godward LLP
3000 El Camino Real
Five Xxxx Xxxx Xxxxxx
Xxxx Xxxx, XX 00000-0000
Fax: (000) 000-0000
Attn: Xxxxxx X. Xxxxx, Esq.
4.8 EXPORT LAWS. Notwithstanding anything to the contrary
contained herein, all obligations of the Parties hereunder are subject to prior
compliance with the export regulations and such other laws and regulations as
may be applicable, and to obtaining all necessary approvals required by the
applicable governmental.
4.9 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.
4.10 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.
[*] 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.
4.11 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.
4.12 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 President of Xenotech, Inc.
and the President of JTA. 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. 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 4.12 shall be completed
within six (6) months from the filing of notice of a request for such
arbitration.
4.13 COMPLETE AGREEMENT. It is understood and agreed between the
Parties that this Agreement, the ABX Amended License, the Collaboration
Termination Agreement and the Expanded Field License (as amended by the
"Expanded Field Amendment") constitute the entire agreement, both written and
oral, between the Parties with respect to the subject matter hereof, and
supersede and cancel 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 each Party.
4.14 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.
4.15 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.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
6.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their respective duly authorized officers as of the date first set
forth above.
JT AMERICA INC. XENOTECH, INC. AS
GENERAL PARTNER OF
XENOTECH, L.P.
By: /s/ Xxxxx Xxxxx /s/ Xxxxxxx X. Xxxxx
--------------- --------------------
Xxxxx Xxxxx Xxxxxxx X. Xxxxx
President Chairman
ABGENIX, INC.
By: /s/ R. Xxxxx Xxxxx
-------------------------------------
R. Xxxxx Xxxxx
President and Chief Executive Officer
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TO THE OMITTED PORTIONS.
7.
