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EXHIBIT - 10.11
COLLABORATION AGREEMENT
This Collaboration Agreement ("Agreement") dated as of the 19 day of March,
1999 is by and between ACLARA BIOSCIENCES, INC., 0000 Xxxxx Xxx, Xxxxxxx,
Xxxxxxxxxx 00000-0000 ("ACLARA") and THE XXXXXX-XXXXX CORPORATION, having its PE
Biosystems Division at 000 Xxxxxxx Xxxxxx Xxxxx, Xxxxxx Xxxx, XX 00000
("XXXXXX-XXXXX").
A. WHEREAS, ACLARA has proprietary technology and know-how with respect
to microfluidic electrophoresis devices;
B. WHEREAS, ACLARA has certain skills and know-how related to the
manufacture, design and use of such devices;
C. WHEREAS, XXXXXX-XXXXX has certain skills and know-how related to high
throughput screening systems utilizing electrophoresis, and the manufacture,
marketing, sales and support of products incorporating such systems;
D. WHEREAS, PERKING-XXXXX and Soane Biosciences, Inc. (the predecessor to
ACLARA) entered into a previous Collaboration Agreement dated as of April 25,
1998, with the objective of developing genetic analysis systems incorporating
microfluidic electrophoresis devices;
E. WHEREAS, ACLARA and XXXXXX-XXXXX desire to enter into an additional
collaboration with the objective of developing high throughput screening systems
incorporating microfluidic electrophoresis devices;
F. WHEREAS, both Parties recognize that each has rights to pre-existing
intellectual properties which may directly or indirectly contribute to the
commercialization of such high throughput screening systems and understand that
in the process of developing the high throughput screening systems contemplated
by the collaboration, both parties will reveal to each other relevant
intellectual property that existed prior to the effective date of the
collaboration under appropriate confidentiality and nondisclosure provisions,
irrespective of whether the intellectual property is an issued patent, a pending
patent application, a trade secret, know-how or otherwise;
G. WHEREAS, ACLARA desires to manufacture such microfluidic
electrophoresis devices and supply PERKIN-ELMER'S requirements therefor;
H. WHEREAS, XXXXXX-XXXXX and Soane Biosciences, Inc. (the predecessor to
ACLARA) have entered into a certain Series E Redeemable Preferred Stock Purchase
Agreement dated on or about April 27, 1998;
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I. WHEREAS, the Parties will enter into a Series G Redeemable Preferred
Stock Purchase Agreement within thirty (30) days of the Effective Date, under
substantially the same terms as those of the Series E offering, whereby
XXXXXX-XXXXX will invest Three Million Dollars ($3,000,000) in ACLARA at a share
price of Four Dollars and Two Cents ($4.02) (the "Equity Agreement");
NOW THEREFORE, in considerations of the mutual covenants and promises
contained in this Agreement, the Parties agree as follows:
1. DEFINITIONS.
1.1. "Affiliates" means any corporation, firm, partnership or other entity,
whether de jure or de facto, which directly or indirectly owns, is
owned by or is under common ownership with a Party to this Agreement
to the extent of at least fifty percent (50%) of the equity (or such
lesser percentage which is the maximum allowed to be owned by a
foreign corporation in a particular jurisdiction) having the power to
vote on or direct the affairs of the entity.
1.2. "Intellectual Property Rights" means all intellectual property rights
worldwide arising under statutory or common law, and whether or not
perfected, including, without limitation, all (1) patents, patent
applications and patent rights; (2) rights associated with the works
of authorship including copyrights, copyright applications, copyright
registrations, mask works, mask work applications, mask work
registrations; (3) rights relating to the protection of trade secrets
and confidential information; (4) any right analogous to those set
forth in this definition and any other proprietary rights relating to
intangible property (other than trademark, trade dress, or service
xxxx rights); (5) divisions, continuations, renewals, reissues,
continuing prosecution, and extensions of the foregoing (as and to the
extent applicable) now existing, hereafter filed, issued or acquired;
and (6) know-how.
1.3. "Pre-Collaboration ACLARA Intellectual Property" means all
Intellectual Property Rights relating to Microfluidic Electrophoresis
Devices that are owned by, either partially or wholly, or licensed to,
ACLARA as of the Effective Date, including without limitation [*]
and any Related Patents.
1.4. "Collaboration ACLARA Intellectual Property" means all Intellectual
Property Rights arising out of work performed pursuant to this
Agreement, conceived during the Collaboration Period solely by one or
more employees or agents of ACLARA.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.5. "Collaboration Joint Intellectual Property" means all Intellectual
Property Rights arising out of work performed pursuant to this
Agreement, which is jointly conceived during the Collaboration Period by
one or more employees or agents of ACLARA, and by one or more employees
or agents of XXXXXX-XXXXX.
1.6. "Collaboration XXXXXX-XXXXX Intellectual Property" means all
Intellectual Property arising out of work performed pursuant to this
Agreement, conceived during the Collaboration Period solely by one or
more employees or agents of XXXXXX-XXXXX.
1.7. "Collaboration Period" means the term beginning on the Effective Date
and ending [*] thereafter.
1.8. "Exclusive Period" means the term beginning on the Effective Date and
ending [*] thereafter.
1.9. "Effective Date" means the date of this Agreement first written above
or such later date as the Parties will determine by mutual agreement.
1.10. "Net Sales" means (1) with respect to sales by a Party, or an Affiliate
of a Party, to non-affiliated third party purchasers, the actual amount
of gross sales of Collaboration Product to a third party, less: trade,
cash and quantity discounts, if any, actually allowed, amounts refunded
for faulty or defective product, returns, rejections, freight, insurance
and other transportation costs, tariffs, duties and similar governmental
charges paid (except income taxes); (2) with respect to sales by a Party
made to any Affiliate or to any entity enjoying a special course of
dealing with a Party, the Net Sales will be determined based on the
first resale in a bona fide arms-length transaction of Collaboration
Product by such Affiliate, person, firm or corporation to third parties;
and (3) with respect to Collaboration Product which are used by a Party,
or an Affiliate of a Party, to supply services or information to a third
party for commercial purposes, or are otherwise disposed of, excluding
demonstration or other marketing activities performed for no or de
minimis compensation, the Net Sales will be determined as if such
Collaboration Product had been sold to a non-affiliated third party
purchaser at the average Net Sales for such Collaboration Product during
the immediately preceding one hundred and twenty (120) days.
1.11. "Residual Net Sales" means Net Sales minus Manufacturing Cost.
1.12. "Party" means ACLARA or XXXXXX-XXXXX and, when used in the plural,
means ACLARA and XXXXXX-XXXXX.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.13. "Subject Patent" means any patent or patent application claiming or
disclosing Pre-Collaboration ACLARA Intellectual Property, Collaboration
ACLARA Intellectual Property, Collaboration Joint Intellectual Property,
and/or Collaboration XXXXXX-XXXXX Intellectual Property, including any
Related Patents.
1.14. "Collaboration Product" means any product for use in the Collaboration
Field which, but for the licenses granted hereunder, manufacture, use
or sale thereof would infringe a Valid Claim of a Subject Patent.
1.15. "Valid Claim" means a claim of a patent or patent application that has
not been held invalid or otherwise unenforceable by a court of
competent jurisdiction or has not otherwise finally been held
unpatentable by an appropriate administrative agency.
1.16. "Prosecute" means, in the context of prosecuting pending patent
applications, taking necessary actions, including conducting
oppositions and interferences, to perfect patent rights to an invention.
1.17. "High Throughput Screening" means methods utilizing Microfluidic
Electrophoresis Devices in which [*] candidate compounds are contacted
with [*], and an extent of [*] interaction is determined based on [*].
For avoidance of doubt, the definition of High Throughput Screening
expressly excludes methods not employing an electrophoretic separation
step.
1.18. "Assay Development System" means an HTS System useful for optimizing
conditions for carrying out High Throughput Screening assays, and having
a throughput of approximately [*] assays per
day.
1.19. "Secondary Screening System" means an HTS System capable of performing
multiple candidate-versus-target concentration titration assays, e.g.,
IC50 titration assays, and having a throughput of approximately [*]
assays per day.
1.20. "Collaboration Field" means the field of High Throughput Screening.
1.21. "Microfluidic Electrophoresis Device" means a device comprising
intersecting electrophoresis channels formed in a monolithic solid
substrate, e.g., glass or plastic, which may comprise one or more
layers, which manufacture, use or sale thereof would infringe at least
one Valid Claim of a Subject Patent.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.22. "HTS Systems" means instruments or instrument systems for performing
High Throughput Screening which are adapted to utilize one or more
Microfluidic Electrophoresis Devices.
1.23. "Related Patent" means any patent or patent application owned, held, or
otherwise controlled, in whole or in part by ACLARA that (1) claims
substantially the same subject matter as a Subject Patent, (2) claims
improvements to inventions disclosed or claimed in a Subject Patent and
requires rights under the Subject Patent to exploit such improvements,
(3) claims priority to, a Subject Patent, including but not limited to
continuation applications and patents, continuation-in-part
applications and patents, divisional applications and patents,
reexamination applications and patents, reissue applications and
patents, and continuing prosecution applications and patents, (4) is a
parent of a Subject Patent, and/or (5) any foreign equivalents of a
Subject Patent or any patent or patent application in (1), (2), (3) or
(4) above.
1.24. "Start Development Checkpoint" means a point in a project at which a
report is produced which documents that the following parameters have
been established with respect to a Collaboration Product: [*].
1.25. "Technology Access Partner" means a third party who receives early
access to HTS Systems and Microfluidic Electrophoresis Devices
developed pursuant to this Agreement.
1.26. "Technology Access Agreement" means an agreement between one or both
Parties and a Technology Access Partner defining the terms and
conditions under which the Technology Access Partner provides funding in
return for receiving early access to HTS Systems and Microfluidic
Electrophoresis Devices.
1.27. "Manufacturing Cost" means the fully-burdened manufacturing cost of a
product including the direct material costs and material overhead cost,
direct labor costs, and fixed, variable and semi-variable manufacturing
overhead costs, as determined using a Party's customary practices and
procedures in accordance with United States generally accepted
accounting procedures (GAAP).
1.28. "Quarter" means a three month period beginning on the first day of
January, April, July or October next following the Effective Date, and
each three month period thereafter, except that the first Quarter will
include the
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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period from the Effective Date to the first day of the nearest three
month period after the Effective Date.
1.29. "Confidential Information" means confidential knowledge, know-how,
practices, processes, equipment or information that a receiving party
has a reasonable basis to believe is confidential to the disclosing
party or is treated by the disclosing party as confidential.
Notwithstanding the above, Confidential Information will not include,
and nothing in Section 6 will in any way restrict the rights of either
ACLARA or XXXXXX-XXXXX to use, disclose or otherwise deal with any
information which:
(a) can be demonstrated to have been in the public domain as of the
Effective Date or comes into the public domain during the term of
this Agreement through no act of the receiving party; or
(b) can be demonstrated to have been independently known to the
receiving party prior to the receipt thereof, or made available to
the receiving party as a matter of lawful right by a third party;
or
(c) can be demonstrated to have been rightfully received by the
receiving party from a third party who did not require the
receiving party to hold it in confidence or limit its use, or on
the basis of a restriction that has lapsed, and who did not
acquire it, directly or indirectly, from the other Party to this
Agreement under a continuing obligation of confidentiality; or
(d) will be required for disclosure to any governmental regulatory
agencies pursuant to approval for use; or
(e) is independently conceived, invented or acquired by researches of
the receiving party who have not been personally exposed to the
information provided to the receiving party hereunder.
2. Feasibility Phase.
2.1. Purpose. During the feasibility phase the Parties will work both
jointly and independently to establish technical and commercial
feasibility of all Collaboration Product. All jointly developed
Collaboration Product must be approved by the Joint Steering
Committee per Section 4. The feasibility phase of a project will
continue until a Start Development Checkpoint has been achieved
for that project.
2.2. Responsibilities. XXXXXX-XXXXX will have primary responsibility
for system development and integration, including software,
optical, mechanical and fluidic subsystems. ACLARA will have
primary
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responsibility for development of Microfluidic Electrophoresis
Devices, and ACLARA and XXXXXX-XXXXX will share responsibilities for
assay development; provided, however, that such primary
responsibilities may be reallocated by the Joint Steering Committee.
2.3 Work Plan. Feasibility and commercial development of Collaboration
Product will be established by the Parties in accordance with a Work
Plan. The Work Plan will set forth at least a plan of action to
achieve a Start Development Checkpoint. The Work Plan will be
defined and modified as required from time to time by the Joint
Steering Committee. An initial Work Plan is set forth in Exhibit 1
attached hereto.
2.4 [*] System. Within four (4) months after the Effective Date, the
Parties will develop a Work Plan to achieve a Start Development
Checkpoint for an [*] System within [*] after the Effective Date.
If, [*] after the Effective Date, a Party (the "Proposing Party")
desires to commercially develop an [*] System, then the Proposing
Party will so notify the other Party (the "Reviewing Party") of such
desire in writing, such notice to include a reasonable description
of the proposed [*] System sufficient for the Reviewing Party to
meaningfully evaluate the technical and commercial merits of such
[*] System. Thereafter, the Reviewing Party will have a period of
[*] to evaluate the [*] System and to notify the Proposing Party in
writing that the Reviewing Party has elected to commercially develop
such [*] System jointly with the Proposing Party pursuant to this
Agreement, in which case the Parties will promptly amend the Work
Plan to include such commercial development plans. Alternatively, if
the Reviewing Party declines to develop such [*] System, or fails to
notify the proposing Party of its election to develop such [*]
System, within the [*] period, the development of such [*] System
will be excluded from the exclusivity provisions of Section 3.3.1,
and the Reviewing Party will grant a non-exclusive license under
Subject Patents, as necessary to effect commercialization of such
[*] System, as such non-exclusive licenses are set forth in Sections
5.4.1, 5.4.4, and 5.4.5.
2.5 Secondary Screening System. Within [*] after the Effective Date, the
Parties will develop a Work Plan to achieve a Start Development
Checkpoint for a Secondary Screening System within [*] after the
Effective Date; except that, if the Work Plan requires four (4) or
more persons beyond those persons already committed to any Work
Plans then in place, then the Work Plan will achieve a Start
Development Checkpoint for a Secondary Screening System within [*]
after the Effective Date. If, [*] after the Effective
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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Date, depending upon when the Work Plan calls for achieving a Start
Development Checkpoint, a Party (the "Proposing Party") desires to
commercially develop a Secondary Screening System, then the Proposing
Party will so notify the other Party (the "Reviewing Party") of such
desire in writing, such notice to include a reasonable description of
the proposed Secondary Screening System sufficient for the Reviewing
Party to meaningfully evaluate the technical and commercial merits of
such Secondary Screening System. Thereafter, the Reviewing Party will
have a period of [*] to evaluate the Secondary Screening System and to
notify the Proposing Party in writing that the Reviewing Party has
elected to commercially develop such Secondary Screening System
jointly with the Proposing Party pursuant to this Agreement, in which
case the Parties will promptly amend the Work Plan to include such
commercial development plans. Alternatively, if the Reviewing Party
declines to develop such Secondary Screening System, or fails to
notify the proposing Party of its election to develop such Secondary
Screening System, within the [*] period, the development of such
Secondary Screening System will be excluded from the exclusivity
provisions of Section 3.3.1, and the Reviewing Party will grant a
non-exclusive license under Subject Patents, as necessary to effect
commercialization of such Assay Development System, as such
non-exclusive licenses are set forth in Sections 5.4.1, 5.4.4, and
5.4.5.
2.6 Feasibility Teams. Each Party will assign personnel to its feasibility
team with the appropriate skills and experience to accomplish the work
established in the Work Plan. It is expected that such teams will work
together to accomplish the objective of the collaboration including,
if appropriate, conducting efforts at the same facility.
2.7 Provision of HTS Systems to ACLARA. XXXXXX-XXXXX will provide
prototype HTS Systems to ACLARA at PERKIN-ELMER's internal transfer
cost, as such systems become available to XXXXXX-XXXXX, for ACLARA's
use and not for resale, subject to any prior commitments to a
Technology Access Partner. The number of systems so provided will be
determined by the Joint Steering Committee.
2.8 Technology Access Program (TAP). Funding for the Work Plan may be
obtained through a TAP between one or both Parties and a Technology
Access Partner. Terms governing a TAP must be mutually agreed to by
the Parties through the Joint Steering Committee. Neither Party will
enter into a TAP without the prior written consent of the other Party.
However, terms and conditions relating directly to the purchase of
equity in ACLARA will be at the sole discretion of ACLARA.
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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3. COMMERCIALIZATION PHASE.
3.1 Purpose. The purpose of the commercialization phase of the
collaboration is the facilitation of a cost effective manufacturing,
marketing, sales and support program for a Collaboration Product. The
commercialization phase of a project will commence upon reaching a
Start Development Checkpoint for that project.
3.2 Marketing, Sales and Support. In order to effectively market a
Collaboration Product the Parties agree that:
3.2.1. a Collaboration Product will be exclusively marketed, sold
and supported (including customer training and application
support of customers) through the sales and service
organization of XXXXXX-XXXXX, its Affiliates and
distributors, in accordance with a marketing plan to be
developed by XXXXXX-XXXXX;
3.2.2. XXXXXX-XXXXX will be responsible for all expenses for the
marketing, sales and support of a Collaboration Product; and
3.2.3. Microfluidic Electrophoresis Devices, HTS Systems, and
related marketing literature will be marked so as to
indicate that such devices are a product of both
XXXXXX-XXXXX and ACLARA.
3.3 Sale and Purchase of Microfluidic Electrophoresis Devices. Subject to
the terms and conditions of this Agreement, ACLARA will sell to
XXXXXX-XXXXX and XXXXXX-XXXXX will purchase from ACLARA Microfluidic
Electrophoresis Devices.
3.3.1. During the Exclusive Period. Within the Collaboration Field,
and during the Exclusive Period, ACLARA will sell
Microfluidic Electrophoresis Devices solely to XXXXXX-XXXXX
and XXXXXX-XXXXX will purchase Microfluidic Electrophoresis
Devices solely from ACLARA.
3.3.2. After Expiration of the Exclusive Period. After the
expiration of the Exclusive Period, if XXXXXX-XXXXX desires
to develop a Microfluidic Electrophoresis Device for use in
the Collaboration Field, then XXXXXX-XXXXX will so notify
ACLARA in writing. Thereafter, ACLARA will have a period of
three (3) months to evaluate PERKIN-ELMER's proposed
Microfluidic Electrophoresis Device and to notify
XXXXXX-XXXXX in writing that ACLARA has elected to develop
and supply such Microfluidic Electrophoresis Device jointly
with XXXXXX-XXXXX pursuant to terms to be negotiated in good
faith, such terms to be in accordance
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with Section 3, in which case the Parties will promptly
enter into a collaboration and supply agreement with respect
to such Microfluidic Electrophoresis Device. If the Parties
cannot agree to the terms of such agreement within ninety
(90) days after ACLARA's election to develop and supply such
Microfluidic Electrophoresis Device, the Parties will
resolve the outstanding issues pursuant to the procedures
set forth in Section 4.4. Conversely, if, after the
expiration of the Exclusive Period, ACLARA declines to
develop and supply such Microfluidic Electrophoresis Device,
or fails to notify XXXXXX-XXXXX of its election to develop
and supply such Microfluidic Electrophoresis Device, within
the three (3) month period, the development and manufacture
of such Microfluidic Electrophoresis Device may be performed
by XXXXXX-XXXXX or its designate pursuant to the
non-exclusive license set forth in Section 5.4.1.
3.3.3. Supply Agreement. Prior to ninety (90) days before a first
commercial sale of a Microfluidic Electrophoresis Device,
the Parties will enter into a supply agreement which,
consistent with this Agreement, will govern the purchase and
sale of Microfluidic Electrophoresis Devices. Such supply
agreement will contain provisions which, in addition to
customary warranty, representations and indemnification
provisions, will (1) set forth a commercially reasonable
plan for ACLARA to supply Microfluidic Electrophoresis
Devices to XXXXXX-XXXXX in satisfaction of PERKIN-ELMER's
requirements as to volume, cost, physical specifications,
regulatory requirements and schedule, and (2) obligate
ACLARA to provide technical support to XXXXXX-XXXXX (but not
directly to PERKIN-ELMER's customers). Reasonable minimum
purchase quantities will be negotiated between the Parties
in good faith. With respect to the supply of a Microfluidic
Electrophoresis Device jointly developed pursuant to this
Agreement, the supply agreement will also include
exclusivity provisions stating that ACLARA will supply such
Microfluidic Electrophoresis Device solely to XXXXXX-XXXXX
and that XXXXXX-XXXXX will purchase such Microfluidic
Electrophoresis Device solely from ACLARA during the term of
this Agreement, subject to the provisions of Section 3.3.7
and Section 3.3.6.
3.3.4. Purchase Orders. XXXXXX-XXXXX will purchase Microfluidic
Electrophoresis Devices from ACLARA by issuing a written
purchase order identifying the quantity, shipping
instructions, delivery dates, and any other special
information. To the extent the terms of any such purchase
order differ from or conflict with the
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terms of this Agreement, the terms of this Agreement will
govern. Within forty-five (45) days prior to the date of
commercial introduction, and prior to the end of each
calendar month thereafter, XXXXXX-XXXXX will submit a
six-month rolling forecast of estimated requirements of
Microfluidic Electrophoresis Devices. The forecast for the
first three (3) months of the six (6) month period will
constitute a binding purchase order and the balance of such
forecast will be non-binding. The Joint Steering Committee
will determine a maximum rate of increase for forecast orders.
3.3.5. Transfer Price. ACLARA will supply Microfluidic
Electrophoresis Devices to XXXXXX-XXXXX at a transfer price
equal to [*] for such Microfluidic Electrophoresis Devices.
[*].
3.3.5.[SIC] Label License. Microfluidic Electrophoresis Devices
supplied to XXXXXX-XXXXX pursuant to this Section 3.3 will
include a label license as set forth in Section 5.4.3.
3.3.6. ACLARA Unable to Supply Microfluidic Electrophoresis Devices
to XXXXXX-XXXXX. If, during the Exclusive Period, ACLARA is
unable to supply Microfluidic Electrophoresis Devices to
XXXXXX-XXXXX in accordance with this Section 3, such
Microfluidic Electrophoresis Devices may be made by
XXXXXX-XXXXX or its designate, pursuant to the conditional
non-exclusive license set forth in Section 5.4.1; provided,
however, that ACLARA will have sixty (60) days following
notice by XXXXXX-XXXXX to remedy any cause for non-compliance
with the requirements of this Section 3.
3.3.7. Minimum Net Sales and Early Termination of Exclusive Period.
If, after a first commercial sale of a Microfluidic
Electrophoresis Device that is subject to the exclusivity
obligations of Sections 3.3.1 or 3.3.3, the Net Sales of such
Microfluidic Electrophoresis Device does not meet or exceed a
minimum value ("Minimum Net Sales"), ACLARA's obligation to
exclusively supply that particular Microfluidic
Electrophoresis Device to XXXXXX-XXXXX will immediately
terminate, but PERKIN-ELMER's obligation to exclusively
purchase such Microfluidic Electrophoresis Device from ACLARA
will remain in effect. Such Minimum Net Sales will be
determined as follows. For the first year after a first
commercial sale of a Microfluidic Electrophoresis Device,
there will be no Minimum Net Sales. For the second year after
a first commercial sale of a Microfluidic Electrophoresis
Device, the Minimum Net Sales will
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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equal [*] of the actual Net Sales for that Microfluidic
Electrophoresis Device in the first year after a first commercial
sale. For the third year after a first commercial sale of a
Microfluidic Electrophoresis Device, and each year thereafter, the
Minimum Net Sales will equal [*] of the average actual annual Net
Sales realized for that Microfluidic Electrophoresis Device in the
preceeding [*] years. For the purpose of this Section 3.3.8, a sale
of a Microfluidic Electrophoresis Device to a Technology Access
Partner under a Technology Access Agreement will not constitute a
commercial sale.
3.4. Sales Price. The sales price of Microfluidic Electrophoresis Devices
to third party purchasers will be determined by the Joint Steering
Committee. In the event a price change of a Microfluidic
Electrophoresis Device becomes necessary for any reason, such as a
model change, a major change of a competitive situation with respect
to price performance or any other reasonable cause, the Parties
will, in good faith, negotiate, primarily through the Joint Steering
Committee, to establish a reasonable sales price.
3.5. Value Sharing. With respect to the sale of Microfluidic
Electrophoresis Devices supplied to XXXXXX-XXXXX by ACLARA pursuant
to Section 3.3.1, XXXXXX-XXXXX will pay ACLARA [*] of such
Microfluidic Electrophoresis Devices sold by XXXXXX-XXXXX, its
Affiliates, distributors and sublicensees, and the balance of Net
Sales will be retained by XXXXXX-XXXXX, as determined at the end of
each Quarter.
4. Joint Steering Committee.
4.1. Purpose. A Joint Steering Committee will be established to oversee
the collaboration established by this Agreement throughout the term
of this Agreement. The purpose of the Joint Steering Committee will
be:
(a) to oversee all aspects of the collaboration, including
development and implementation of the Work Plan, manufacturing
(supply), marketing, sales, and support of a Collaboration
Product;
(b) to review and evaluate progress under the Work Plan with
respect to the development of a Collaboration Product,
including annual budgets;
(c) to recommend and ensure implementation of changes to the Work
Plan as appropriate;
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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(d) to approve any Technology Access Partner and to
negotiate and approve any Technology Access Agreement;
(e) to organize the Feasibility Team(s) and oversee and
direct their activities; and
(f) to resolve disputes arising under this Agreement.
4.2. Membership. The Joint Steering Committee will be comprised of
three employees each from ACLARA and XXXXXXX-XXXXX, appointed
at the sole direction of the respective Parties. Substitute
employees may be appointed at any time. The Joint Steering
Committee will be chaired in the first year by a senior
representative from ACLARA, and thereafter on a rotating
annual basis, by a senior representative from ACLARA or
XXXXXX-XXXXX.
4.3. Meetings. The Joint Steering Committee will meet as often as
is reasonably necessary to accomplish its purpose but at least
quarterly, on a mutually agreeable date and at a place
selected initially by ACLARA and then by each party in turn
thereafter, such place to be located in the San Francisco bay
area. Representatives of ACLARA or XXXXXX-XXXXX, or both, in
addition to members of the Joint Steering Committee, may
attend such meetings at the invitation of either Party.
4.4. Joint Steering Committee Decisions and Dispute Resolution.
Decisions by the Joint Steering Committee will be made by
consensus. If the Joint Steering Committee is unable to reach
agreement, within ten (10) days the matter will be submitted
for resolution to the President of ACLARA and the President of
the PE Biosystems Division of XXXXXX-XXXXX. In the event that
the Presidents for each Party cannot reach agreement within
ten (10) days after receiving notice from the Joint Steering
Committee, which period may be extended by mutual agreement of
the Parties, then either Party may initiate arbitration in
accordance with this section under the rules of the American
Arbitration Association then in effect. A Party will notify
the other in writing should it intend to arbitrate. The
Parties will select, by mutual agreement, a neutral expert
from the National Panel of Arbitrators of the AAA, within
thirty (30) days after receipt of such notice. Should no
arbitrator be chosen within the above period, the AAA will
appoint the arbitrator within thirty (30) days after the end
of such period. The Laws of the State of California will apply
to the arbitration proceedings. The decision of the
arbitrators with respect to this Agreement will be final and
binding on the Parties and their legal successors.
4.5. Expenses. The Parties shall each bear all expenses of their
respective members related to their participation on the Joint
Steering Committee.
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5. INTELLECTUAL PROPERTY; PATENT PROSECUTION AND LITIGATION; LICENSES;
TRADEMARKS.
5.1. Ownership of Intellectual Property
5.1.1. Pre-Collaboration ACLARA Intellectual Property and
Collaboration ACLARA Intellectual Property. All rights
and title to Pre-Collaboration ACLARA Intellectual
Property and Collaboration ACLARA Intellectual
Property, whether patentable or copyrightable or not,
will belong to ACLARA and will be subject the terms
and conditions of this Agreement.
5.1.2. Collaboration Joint Intellectual Property. All rights
and title to Collaboration Joint Intellectual
Property, whether patentable or copyrightable or not,
will belong jointly to XXXXXX-XXXXX and will be
subject to the terms and conditions of this Agreement.
5.1.3. Collaboration XXXXXX-XXXXX Intellectual Property. All
rights and title to Collaboration XXXXXX-XXXXX
Intellectual Property, whether patentable or
copyrightable or not, will belong to XXXXXX-XXXXX and
will be subject to the terms and conditions of this
Agreement.
5.2. Invention Disclosures. ACLARA and XXXXXX-XXXXX agree to use
reasonable efforts to report inventions conceived and/or
reduced to practice that are within the scope of the
collaboration intellectual property described in Sections
1.4, 1.5 and 1.6 within thirty (30) days of their
identification thereof.
5.3. Filing of Patent Applications.
5.3.1 Collaboration ACLARA Intellectual Property. ACLARA
will have the first right, using in-house or outside
legal counsel selected at ACLARA's sole discretion, to
prepare, file, Prosecute, maintain and extend patent
applications for Collaboration ACLARA Intellectual
Property in countries of ACLARA's choosing, and ACLARA
will bear all costs relating to such activities which
occur at ACLARA's request or direction. ACLARA will
solicit PERKIN-ELMER's advice and review of ACLARA's
patent applications and other official communications
concerning the protection of Collaboration ACLARA
Intellectual Property relating to a Collaboration
Product, and take into consideration PERKIN-ELMER's
advice thereon. If ACLARA elects not to prepare, file,
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Prosecute or maintain certain of such patent applications or certain
claims encompassed within such applications, in one or more countries,
ACLARA will give XXXXXX-XXXXX notice thereof within a reasonable period
prior to allowing such patents or claims to lapse or become abandoned
or unenforceable, and XXXXXX-XXXXX will thereafter have the right, at
its sole expense, to prepare, file, Prosecute, and maintain such
applications in its own name in such one or more countries. ACLARA
will, at PERKIN-ELMER's expense, provide reasonable assistance to
XXXXXX-XXXXX to facilitate the filing and prosecution of all such
applications and will execute all documents deemed necessary or
desirable therefor. XXXXXX-XXXXX and ACLARA will each hold all
information it presently knows or acquires under this Section 5.3.1 as
Confidential Information in accordance with Section 6.
5.3.2 Collaboration XXXXXX-XXXXX Intellectual Property. XXXXXX-XXXXX will have
the first right, using in-house or outside legal counsel selected at
PERKIN-ELMER's sole discretion, to prepare, file, Prosecute, maintain
and extend patent applications for Collaboration XXXXXX-XXXXX
Intellectual Property in countries of PERKIN-ELMER's choosing, and
XXXXXX-XXXXX will bear all costs relating to such activities which occur
at PERKIN-ELMER's request or direction. XXXXXX-XXXXX will solicit
ACLARA's advice and review of PERKIN-ELMER's applications relating to
Collaboration Product and take into consideration ACLARA's advice
thereon. If XXXXXX-XXXXX elects not to prepare, file, Prosecute or
maintain certain of such patent applications or certain claims
encompassed within such applications, in one or more countries,
XXXXXX-XXXXX will give ACLARA notice thereof within a reasonable period
prior to allowing such patents or claims to lapse or become abandoned or
unenforceable, and ACLARA will thereafter have the right, at its sole
expense, to prepare, file, Prosecute, and maintain such applications in
its own name in such one or more countries. XXXXXX-XXXXX will, at
PERKIN-ELMER's expense, provide reasonable assistance to ACLARA to
facilitate the filing and prosecution of all such applications and will
execute all documents deemed necessary or desirable therefor.
XXXXXX-XXXXX and ACLARA will each hold all information it presently
knows or acquires under this Section 5.3.2 as Confidential Information
in accordance with Section 6.
5.3.3 Collaboration Joint Intellectual Property. With respect to
Collaboration Joint Intellectual Property, XXXXXX-XXXXX and
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ACLARA will jointly determine the advisability of filing a
patent application for other intellectual property thereon. The
Joint Steering Committee, as appropriate, will appoint one of the
Parties the responsibility to prepare, file, Prosecute diligently
and maintain such application(s). The Parties will share equally
all reasonable costs incurred in connection with such activities
(the non-prosecuting Party will promptly reimburse the
prosecuting Party); provided, however, that either Party may
avoid its responsibility for such costs by assigning its rights
in such Collaboration Joint Intellectual Property to the other
Party. If either Party assigns to the other its rights in such
Collaboration Joint Intellectual Property as set forth above, the
assignee Party will be free to decide, in it sole discretion,
whether or not to file or continue prosecution or maintain any
such application(s), and whether or not to maintain any
protection issuing thereon in the U.S. and in any foreign
country. Any such filing, prosecution or maintenance will then be
at the assignee Party's sole expense. The assigning Party will,
at its own expense, provide reasonable assistance to the assignee
Party to facilitate the filing and prosecution of all such
application(s) and will execute all documents deemed necessary or
desirable therefor. Both Parties will hold all information it
presently knows or acquires under this Section 5.3.3 as
Confidential Information in accordance with Section 6.
5.4. Licenses of Intellectual Property.
5.4.1. Conditional Non-Exclusive License to XXXXXX-XXXXX for
Microfluidic Electrophoresis Devices. If, after the expiration of
the Exclusive Period, ACLARA declines to supply Microfluidic
Electrophoreses Devices to XXXXXX-XXXXX pursuant to Section
3.3.2, or, if during the Exclusive Period, ACLARA is unable to
supply Microfluidic Electrophoreses Devices to XXXXXX-XXXXX
pursuant to Section 3.3.6, or, as a Reviewing Party, ACLARA
elects not to commercially develop an Assay Development System
pursuant to Section 2.4 or a Secondary Screening System pursuant
to Section 2.5, ACLARA grants to XXXXXX-XXXXX a non-exclusive
royalty-bearing world-wide license under ACLARA's interest in
Subject Patents to make, have made, use, import, offer to sell,
and sell Microfluidic Electrophoreses Devices in the
Collaboration Field, subject to the exclusion of Section 5.4.2,
and the royalty obligation of Section 5.4.7.
5.4.2. [*] Exclusion From License to XXXXXX-XXXXX. The conditional
non-exclusive license granted in Section 5.4.1, the
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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label license granted in Section 5.4.3, and the non-exclusive license
granted in Section 5.4.4, each expressly excludes the sale of
Collaboration Product [*].
5.4.3. Label License for Microfluidic Electrophoresis Devices. Microfluidic
Electrophoresis Devices supplied to XXXXXX-XXXXX pursuant to Section 3.3
will include a label license granting XXXXXX-XXXXX a license under
ACLARA's interest in Subject Patents to use, offer to sell, and sell
Microfluidic Electrophoresis Devices in the Collaboration Field,
including the right to grant sublicenses to customers to use such
Microfluidic Electrophoresis Devices, subject to the exclusion of
Section 5.4.2.
5.4.4. Non-Exclusive License to XXXXXX-XXXXX for HTS Systems. ACLARA grants to
XXXXXX-XXXXX a non-exclusive royalty-bearing world-wide license under
ACLARA's interest in Subject Patents to make, have made, use, import,
offer to sell, and sell HTS Systems in the Collaboration Field, subject
to the exclusion of Section 5.4.2.
5.4.5. Conditional Non-Exclusive License to ACLARA for Collaboration Product.
If, as a Reviewing Party, XXXXXX-XXXXX elects not to commercially
develop an [*] System pursuant to Section 2.4 or a Secondary Screening
System pursuant to Section 2.5, XXXXXX-XXXXX grants to ACLARA a
non-exclusive royalty-bearing world-wide license under PERKIN-ELMER's
interest in Subject Patents to make, have made, use, import, offer to
sell, and sell Collaboration Product in the Collaboration Field, subject
to the royalty obligation of Section 5.4.7. In addition, if ACLARA
desires rights under any other Intellectual Property Rights owned or
controlled by XXXXXX-XXXXX for the purpose of commercializing such [*]
System or Secondary Screening System, XXXXXX-XXXXX will consider, in
good faith, granting a royalty-bearing non-exclusive license under such
rights to ACLARA for the limited purpose of commercializing such
systems, the decision to grant such license being solely at the
discretion of XXXXXX-XXXXX.
5.4.6. Restriction on Sale and Licensing of Collaboration Intellectual
Property. During the Exclusive Period and within the Collaboration
Field, except as required for effecting the purposes of this Agreement,
(1) XXXXXX-XXXXX is prohibited from granting a license or otherwise
transferring to any third party any portion of its interest in Subject
Patents, and (2) ACLARA is prohibited from
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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granting a license or otherwise transferring to any third
party any portion of its interest in Subject Patents.
5.4.7. Royalties. XXXXXX-XXXXX will pay to ACLARA a royalty of [*] on
Net Sales of Microfluidic Electrophoresis Devices sold or
otherwise disposed of under the conditional non-exclusive
license granted under Section 5.4.1. XXXXXX-XXXXX will pay to
ACLARA a royalty of [*] on Net Sales of HTS Systems sold or
otherwise disposed of under the non-exclusive license granted
under Section 5.4.4. ACLARA will pay to XXXXXX-XXXXX a royalty
of [*] on Net Sales of Collaboration Product sold or otherwise
disposed of under the conditional non-exclusive license
granted under Section 5.4.5.
5.4.8. Most Favored Licensee. If a Party grants a license under
Subject Patents at a royalty rate lower then the applicable
royalty rate set forth in Section 5.4.7, that Party will (1)
promptly notify the other Party in writing of such license,
and (2) extend to the other Party the lower royalty rate,
effective as of the date on which the lower royalty rate
became effective in such license. This Section 5.4.8 will not
apply to a license granted by a Party for which the
consideration consists in whole or in part of patent rights or
other rights of such substantial value as, in the judgement of
the licensing Party, to warrant a reduction in royalty rates
below the rates provided in this Agreement, or the acceptance
of such rights in lieu of royalties.
5.5. Patent Litigation.
5.5.1. In the event of the institution of any suit by a third party
against ACLARA or XXXXXX-XXXXX alleging that the manufacture,
use, sale, distribution or marketing of Collaboration Product
infringes a third party patent, the Party sued will promptly
notify the other Party in writing. The other Party will have
the right but not the obligation to defend or participate in
the defense of such suit at its own expense. ACLARA and
XXXXXX-XXXXX will assist one another and cooperate in any such
litigation at the other's reasonable request without expense
to the requesting Party. The Party conducting such action will
have full control over its conduct, including settlement
thereof; except that, if the allegedly infringing
Collaboration Product consists solely of a Microfluidic
Electrophoresis Device, ACLARA will have full control over the
conduct of the action. However, no settlement of an action
will be made without the prior written consent of the other
Party if such
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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settlement would adversely affect the rights of the other Party,
such consent not to be unreasonably withheld or delayed.
5.5.2. In the event that ACLARA or XXXXXX-XXXXX becomes aware of actual or
threatened infringement of a patent resulting from Collaboration
ACLARA Intellectual Property, Collaboration XXXXXX-XXXXX
Intellectual Property, or Collaboration Joint Intellectual Property,
that Party will promptly notify the other Party in writing. Either
owner of a patent resulting from such intellectual property will
have the first right but not the obligation to bring, at its own
expense, an infringement action against any third party and to use
the other Party's name in connection therewith. If an owner of the
patent does not commence a particular infringement action within [*]
the other Party, after notifying the owner in writing, will be
entitled to bring such infringement action at its own expense. The
Party conducting such action will have full control over its
conduct, including settlement thereof provided such settlement will
not be made without the prior written consent of the other Party if
it would adversely affect the rights of the other Party; such
consent not to be unreasonably withheld or delayed. In any event,
ACLARA and XXXXXX-XXXXX will assist one another and cooperate in any
such litigation at the other's reasonable request without expense to
the requesting Party, and, if a Party is necessary in order to
institute and maintain an infringement suit by the other Party as
defined by law, that Party will join such suit, represented by its
own counsel.
5.5.3. ACLARA and XXXXXX-XXXXX have the right to recover their respective
actual out-of-pocket expenses, or proportionate share thereof, in
connection with any litigation or settlement thereof from any
recovery made by any Party. Any excess amount will be shared
between XXXXXX-XXXXX and ACLARA in an amount proportional to their
respective lost revenues.
5.5.4. The Parties will keep one another reasonably informed of the status
of their respective activities regarding any such litigation or
settlement thereof.
5.6. Effect of Bankruptcy. All rights and licenses granted under or pursuant to
this Agreement by one Party to the other Party are, and will irrevocably
be deemed to be, "intellectual property" as defined in Section 101(56) of
Title 11, U.S. Code ("Bankruptcy Code"). In the event of the commencement
of a case by or against either Party under any Chapter of the Bankruptcy
Code, this Agreement will be deemed an executory contract and all rights
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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and obligations hereunder will be determined in accordance with
Section 365(n) thereof.
5.7. Trademarks and Non-Proprietary Names
5.7.1. XXXXXX-XXXXX, at its expense, will be responsible for the
selection, registration and maintenance of all trademarks
which it employs in connection with Collaboration Product,
except for Microfluidic Electrophoresis Devices, and will own
and control such trademarks. Nothing in this Agreement will be
construed as a grant of rights, by license or otherwise, to
ACLARA to use such trademarks for any purpose other than
co-promotion as provided in this Agreement.
5.7.2. XXXXXX-XXXXX, at its expense, will be responsible for the
selection of non-proprietary names for Collaboration Product
sold by XXXXXX-XXXXX.
5.7.3. ACLARA, at its expense, will be responsible for the selection,
registration and maintenance of all trademarks that it
employs in connection with Microfluidic Electrophoresis
Devices, and will own and control such trademarks. Nothing in
this agreement will be construed as a grant of rights, by
license or otherwise, to XXXXXX-XXXXX to use such trademarks
for any purpose other than co-promotion as provided in this
Agreement.
6. CONFIDENTIALITY
6.1 Non-Disclosure. Because ACLARA and XXXXXX-XXXXX will be cooperating
with each other pursuant to this Agreement, each may reveal
Confidential Information to the other. The Parties agree, by using
the same degree of care as each uses for information of like
importance, but not less than a reasonable degree of care (1) to
hold in confidence any Confidential Information disclosed by the other
Party hereunder and (2) not to disclose any Confidential Information
to any third party without the express written consent of the other
Party, except to the extent that may be required for purposes of
advancing the developing, manufacturing or marketing of Collaboration
Product, or to conduct any litigation concerning the same, provided
that each such third party is informed of the confidentiality of such
information and that each said third party agrees to be bound to at
least the same degree of confidentiality as the Parties are bound
under this Agreement. With respect to any Confidential Information
that is revealed by a Party to the other Party, this confidentiality
requirement will remain in force for a period of five (5) years
following the date such Confidential Information is revealed.
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6.2 Responsibility over Employees and Agents. Each of the Parties agrees
to assume individual responsibility for the actions and omissions of
its respective employees, agents and assigns, and to inform same of
the responsibilities for confidentiality and disclosure under this
Agreement, and to obtain their agreement to be bound in the same
manner that the Party is bound.
6.3 Affiliates. Nothing herein will be construed as preventing either
Party from disclosing any information to an Affiliate of XXXXXX-XXXXX
or ACLARA or to a sub-licensee, distributor or joint venture or other
associated company of either Party for the purpose of developing or
commercializing Collaboration Product, provided such Affiliate,
sub-licensee, distributor or joint venture or other associated
company has undertaken a similar obligation of confidentiality with
respect to the Confidential Information.
6.4 Bankruptcy. All Confidential Information disclosed by one Party to
the other will remain the intellectual property of the disclosing
Party. In the event that a court or other legal or administrative
tribunal, directly or through an appointed master, trustee or
receiver, assumes partial or complete control over the assets of a
Party to this Agreement based on the insolvency or bankruptcy of such
Party, the bankrupt or insolvent Party will promptly notify the court
or other tribunal (1) that Confidential Information received from the
other Party under this Agreement remains the property of the other
Party and (2) of the confidentiality obligations under this
Agreement. In addition, the bankrupt or insolvent Party will, to the
extent permitted by law, take all steps necessary or desirable to
maintain the confidentiality of the other Party's Confidential
Information and to ensure that the court or other tribunal such
information in confidence in accordance with the terms of this
Agreement.
6.5 Publication. Neither XXXXXX-XXXXX nor ACLARA will submit for written
or oral publication any manuscript, abstract or the like which
includes data or other information generated and provided by the
other Party or otherwise developed by either Party in the performance
of activities in furtherance of this Agreement without first
obtaining the prior written consent of the other Party, which consent
will not be unreasonably withheld or delayed, except that the
foregoing will not apply to customary non-confidential literature
which is prepared for marketing and sales purposes.
6.6 Publicity. Within thirty (30) days following the Effective Date, the
Parties will make reasonable efforts to agree on the form and
language of a joint press release related to this agreement. However,
neither Party nor any of
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its Affiliates will originate any news relating to this Agreement
without the prior written approval of the other Party, which approval
will not be unreasonably withheld or delayed.
6.7 Compliance with Statutory Requirements. Nothing in this Agreement will
be construed as preventing or in any way inhibiting either Party from
complying with statutory and regulatory requirements governing the
development, manufacture, use and sale or other distribution of
Collaboration Product in any manner which it reasonably deems
appropriate, including, for example, by disclosing to regulatory
authorities Confidential Information or other information received
from a Party or third parties. The Parties will take reasonable
measures to assure that no unauthorized use or disclosure is made by
others to whom access to such information is granted.
7. REPRESENTATIONS, WARRANTIES AND COVENANTS
Each Party represents, warrants and covenants to the other Party that:
(a) it has the corporate power and authority and legal right to enter into
this Agreement and to perform its obligations hereunder;
(b) the execution and delivery of this Agreement and the performance of
the transactions contemplated thereby have been duly authorized by all
necessary corporate action of such Party;
(c) the execution and delivery of this Agreement and the performance by
such Party of any of its obligations under this Agreement do not and
will not (1) conflict with, or constitute a breach or violation of,
any other contractual obligation to which it is a party, any judgment
of any court or governmental body applicable to such Party or its
properties or, to such Party's knowledge, any statute, decree, order,
rule or regulation of any court or governmental agency or body
applicable to such Party or its properties, and (2) require any
consent or approval of any governmental authority or other person;
(d) each Party will to the best of its knowledge without undertaking a
special investigation, disclose to the other Party any material
adverse proceedings, claims or actions that arise that would
materially interfere with that party's performance of its obligations
under this Agreement; and
(e) each Party's employees have executed or will execute agreements
whereby all right, title and interest in any technology and
invention(s) will be assigned to their respective employers.
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8. INDEMNIFICATION.
8.1. XXXXXX-XXXXX Indemnification of ACLARA. XXXXXX-XXXXX will defend,
indemnify and hold harmless ACLARA, Affiliates of ACLARA, and their
respective directors, officers, shareholders in their capacity as
shareholders, agents and employees, from and against any and all loss,
damage, liability, or expenses (including attorney's fees) resulting
from claims, demands, costs or judgments which may be made or
instituted against any of them by a third party arising out of (1) the
untruth, inaccuracy, breach, or nonfulfillment of any representation
or warranty or any covenant or agreement of XXXXXX-XXXXX contained in
or made pursuant to this Agreement or (2) the manufacture,
distribution, sale or other disposition by or through XXXXXX-XXXXX or
its Affiliates of Collaboration Product or part thereof.
PERKIN-ELMER's obligation to defend, indemnify and hold harmless will
include claims, demands, or judgments, whether for money damages or
equitable relief by reason of alleged personal injury (including
death) to any person or alleged property damage, provided, however,
the indemnity will not extend to any claims against ACLARA to the
extent resulting from (i) the negligence or willful misconduct of
ACLARA, (ii) a claim of patent infringement, or (iii) where such
claims result from a modification of Collaboration Product by ACLARA
which was not approved by XXXXXX-XXXXX. XXXXXX-XXXXX will have the
exclusive right to control the defense of any action which is to be
indemnified in whole by XXXXXX-XXXXX hereunder, including the right to
select counsel acceptable to ACLARA to defend ACLARA and to settle
any claim, provided that, without the written consent of ACLARA (which
will not be unreasonably withheld or delayed), XXXXXX-XXXXX will not
agree to settle any claim against ACLARA to the extent such claim has
a material adverse effect on ACLARA. The provisions of this Section
8.1 will survive and remain in full force and effect after any
termination, expiration or cancellation of this Agreement and
PERKIN-ELMER'S obligation hereunder will apply whether or not such
claims are rightfully brought.
8.2. ACLARA Indemnification of XXXXXX-XXXXX. ACLARA will defend, indemnify
and hold harmless XXXXXX-XXXXX, Affiliates of XXXXXX-XXXXX and their
respective directors, officers, shareholders in their capacity as
shareholders, agents and employees, from and against any and all loss,
damage, liability, or expenses (including attorney's fees) resulting
from claims, demands, or judgments which may be made or instituted
against any of them by a third party arising out of (1) the untruth,
inaccuracy, breach, or nonfulfillment of any representation or
warranty or any covenant or agreement of ACLARA contained in or made
pursuant to this Agreement or (2) the manufacture by or through
ACLARA or its Affiliates of any Collaboration Product or part
thereof. ACLARA'S
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obligation to defend, indemnify and hold harmless will include
claims, demands, or judgments, whether for money damages or
equitable relief by reason of alleged personal injury (including
death) to any person or alleged property damage, provided, however,
the indemnity will not extend to any claims against XXXXXX-XXXXX
that results (i) from the negligence or willful misconduct of
XXXXXX-XXXXX, or (ii) a claim of patent infringement, or (iii) where
such claims result from a modification of Collaboration Product by
XXXXXX-XXXXX which was not approved by ACLARA. ACLARA will have the
exclusive right to control the defense of any action which is to be
indemnified in whole by ACLARA hereunder, including the right to
select counsel acceptable to XXXXXX-XXXXX to defend XXXXXX-XXXXX and
to settle any claim, provided that, with the written consent of
XXXXXX-XXXXX (which will not be unreasonably withheld or delayed),
ACLARA will not agree to settle any claim against XXXXXX-XXXXX to
the extent such claim has a material adverse effect on XXXXXX-XXXXX.
The provisions of this Section 8.2 will survive and remain in full
force and effect after any termination, expiration or cancellation
of this Agreement and ACLARA's obligations hereunder will apply
whether or not such claims are rightfully brought.
8.3. Notice; Choice of Attorney. A Party that intends to claim
indemnification under this Section 8 (the "indemnitee") will
promptly notify the other Party (the "Indemnitor") of any loss,
claim, damage, liability, action, expenses (including attorney's
fees), claims, demands, or judgments in respect of which the
Indemnitee intends to claim such indemnification, and the
Indemnitor, after it determines that indemnification is required of
it, will assume the defense thereof with counsel mutually
satisfactory to the Parties; provided, however, that an Indemnitee
will have the right to retain its own counsel, with the fees and
expenses to be paid by the Indemnitor if Indemnitor does not assume
the defense; or, if representation of such Indemnitee by the counsel
retained by the Indemnitor would be inappropriate due to actual or
potential differing interests between such Indemnitee and any other
Party represented by such counsel in such proceedings. The failure
to deliver notice to the Indemnitor within a reasonable time after
the commencement of any such action, if prejudicial to its ability
to defend such action, will relieve such Indemnitor of any liability
to the Indemnitee under this Section 8, but the omission to deliver
notice to the Indemnitor will not relieve it of any liability that
it may have to any Indemnitee otherwise than under this Section 8.
8.4. Consent Required. The indemnity agreement in this Section 8 will 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 will not be unreasonably
withheld or delayed.
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8.5. Cooperation. The Indemnitee under this Section 8, its employees and
agents, will cooperate fully with the Indemnitor and its legal
representatives in the investigations of any action, claim or
liability covered by this indemnification. In the event that each
Party claims indemnity from the other and one Party is finally held
liable to indemnify the other, the Indemnitor will additionally be
liable to pay the reasonable legal costs and attorneys' fees incurred
by the Indemnitee in establishing its claim for indemnity.
9. TERM AND TERMINATION
9.1 Term. Unless terminated earlier as provided herein, this Agreement
will commence on the Effective Date and will remain in full force
until the expiration of the last to expire Subject Patent.
9.2. Termination.
9.2.1. This Agreement may be terminated without cause by mutual
written agreement of the Parties, effective as of the time
specified in such written agreement.
9.2.2. This Agreement may be terminated by either Party.
(a) in the event the other Party will file in any court or
agency pursuant to any statute or regulation of any
state or country, a petition in bankruptcy or
insolvency or for reorganization or for the appointment
of a receiver or trustee of the other Party or of its
assets, or if the other Party proposes a written
agreement of composition or extension of its debts, or
if the other Party will be served with an involuntary
petition against it, filed in any insolvency
proceeding, and such petition will not be dismissed
within sixty (60) days after the filing thereof, or if
the other Party will propose or be a Party to any
dissolution or liquidation, or if the other Party will
make an assignment for the benefit of creditors; or
(b) upon any material breach of this Agreement by the other
Party; provided, however, that the Party alleging such
breach must first give the other Party written notice
thereof, which notice must state the nature of the
breach in reasonable detail and the Party receiving
such notice must have failed to cure such alleged
breach within sixty (60) days after receipt of such
notice.
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9.3 Survival of Obligations. Upon any termination of this Agreement, by
expiration of the term or otherwise, neither Party will be relieved of
any obligations incurred prior to such termination. Despite any
termination of this Agreement, the obligations of the Parties under
Sections 3, 5, 6, 8, 9.3, 10 and 11, as well as any other provisions
which by their nature are intended to survive any such termination,
will survive and continue to be enforceable. With respect to the
survival of licenses granted in Section 5.4, if termination of this
Agreement is a result of a material breach of this Agreement by a
Party under Section 9.2.2.(b), such licenses will survive the
termination of this Agreement only to the extent that such licenses
relate to Collaboration Product that have been commercialized; except
that, if termination of this Agreement is a result of a Party's
failure to pay royalties under Section 5.4.7, or failure to payment of
a share of Residual net sales under Section 3.5, such licenses will
not survive termination of this Agreement.
10. OBSERVATION RIGHTS
So long as XXXXXX-XXXXX (or an affiliate of XXXXXX-XXXXX) continues to hold
at lease fifty percent 50% of the total number of shares of Series E Stock
originally purchased by XXXXXX-XXXXX pursuant to the Series E Redeemable
Preferred Stock Purchase Agreement dated March 26, 1998, and shares of Series G
Stock pursuant to the Equity Agreement entered into in conjunction with this
Agreement, XXXXXX-XXXXX will be entitled to appoint a representative (the
"XXXXXX-XXXXX Representative") to attend all meetings of the Board of Directors
of ACLARA, and ACLARA will provide XXXXXX-XXXXX with copies of all notices of
such meetings and all other written materials provided to the Directors of
ACLARA at the same time as such notices and written materials are provided to
the Directors of ACLARA. XXXXXX-XXXXX acknowledges and agrees that ACLARA's
management will have the right to exclude the XXXXXX-XXXXX Representative from
all or portions of meetings of the Board of Directors, or omit to provide the
XXXXXX-XXXXX Representative with certain information, if ACLARA's management
believes it is necessary in order to preserve the attorney-client privilege, or
fulfill ACLARA's obligations with respect to confidential or proprietary
information of third parties, or if such meeting or information involves matters
concerning ACLARA's relationship or prospective relationship with XXXXXX-XXXXX
or its affiliates or competitors of XXXXXX-XXXXX or its affiliates, or other
situations where a director would customarily not participate in a meeting or be
provided such information. In addition, XXXXXX-XXXXX and the XXXXXX-XXXXX
Representative will maintain the confidentiality of all information obtained
through the XXXXXX-XXXXX Representative's position, except to the extent that
(1) such information is already in PERKIN-ELMER's possession, (2) such
information becomes public knowledge other than as a result of PERKIN-ELMER's
actions or inactions, (3) XXXXXX-XXXXX rightfully obtains such information
subsequently from a third
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party, (4) XXXXXX-XXXXX develops such information independently and without
use of the information provided by ACLARA, or (5) such information is
approved in writing for release by ACLARA.
11. MISCELLANEOUS
11.1 Force Majeure. If the performance of any part of this Agreement by
either Party, or of any obligation under this Agreement, is prevented,
restricted, interfered with or delayed by reason of any cause beyond
the reasonable control of the Party liable to perform, unless
conclusive evidence to the contrary is provided, the Party so affected
will, upon giving written notice to the other Party, be excused from
such performance to the extent of such prevention, restriction,
interference or delay; provided, however, the affected Party will use
its reasonable best efforts to avoid or remove such causes of
non-performance and will continue performance with the utmost dispatch
whenever such causes are removed. When such circumstances arise, the
Parties will discuss what, if any, modification of the terms of this
Agreement may be required in order to arrive at an equitable solution.
11.2 Governing Law. This Agreement will be deemed to have been made in the
State of California and its form, execution, validity, construction
and effect will be determined in accordance with the laws of the State
of California.
11.3 Books and Records. Each Party will keep and maintain proper and
complete records and books of account sufficient in detail to enable
the verification of Actual Profit, Manufacturing Cost and Net Sales.
Such books and records shall be retained for a period of at least six
(6) years. Each Party will have the right from time to time (not to
exceed once during each calendar year) during normal business hours
and upon reasonable notice to inspect in confidence, or have an agent,
accountant or other representative inspect in confidence, such books
and records. The Party initiating such inspection will bear the costs
thereof unless the inspection reveals a discrepancy unfavorable to
that Party of at least ten percent (10%), in which case the other
Party will pay the costs of such inspection; provided, however, if the
amount of such discrepancy is greater than or equal to Fifty Thousand
Dollars ($50,000), the other Party will pay the costs of such
inspection regardless of percentage. If such inspection results in a
final determination that amounts have been overstated or understated,
the applicable amount will be refunded or paid promptly by the
appropriate Party.
11.4 Payments. All payments under this Agreement will be made in United
States dollars by wire transfer to a bank account designated by the
party receiving the payment, without deduction of taxes charges and
any other
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duties that may be imposed. For converting payments due on sales made in
currencies other than United States dollars into United States dollars,
such payments will be converted at the closing commercial sell rate of
exchange for United States dollars and each currency involved as quoted by
Citibank, N.A., or any successor thereto, in New York on the last business
day of the relevant period.
11.5 Severability. In the event any portion of this Agreement will be held
illegal, void or ineffective, the remaining portions hereof will be
interpreted to maintain the intent of the Parties. If any of the terms or
provisions of this Agreement are in conflict with any applicable statute or
rule of law, then such terms or provisions will be deemed inoperative to
the extent that they may conflict therewith and will be deemed to be
modified to conform with such statute or rule of law.
11.6 Entire Agreement. The Agreement and the Equity Agreement constitute the
sole agreements between the Parties relating to the subject matter hereof
and supersede all previous writings and understandings. This Section 11.6
does not relate to or affect the previously executed Collaboration
Agreement between the Parties dated April 25, 1998, or the previously
executed Series E Redeemable Preferred Stock Purchase Agreement between the
Parties dated March 26, 1998. Confidential disclosures made pursuant to
previously executed Confidentiality Agreements between ACLARA and
XXXXXX-XXXXX will remain subject to the terms of those Confidentiality
Agreements. No terms or provisions of this Agreement will be varied or
modified by any prior or subsequent statement, conduct or act of either of
the Parties, except that the Parties may amend this Agreement by written
instruments specifically referring to and executed in the same manner as
this Agreement.
11.7 Assignment. This Agreement and the licenses herein granted will be binding
upon and inure to the benefit of the successors in interest of the
respective Parties. Neither Party has the power to assign this Agreement
nor any interest hereunder without the written consent of the other Party;
provided, however, that either Party may assign this Agreement or any of
its rights or obligations to any Affiliate or to any third party with which
it may merge or consolidate, or to which it may transfer all or
substantially all of its assets to which this Agreement relates, without
obtaining the consent of the other Party, subject to the other Party
assuming all liabilities and obligations under the Agreement.
11.8 Counterparts. This Agreement may be executed in any number of
counterparts, and each such counterpart will be deemed an original instrument,
but all such counterparts together will constitute but one agreement.
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11.9. Notices. Any notice required or permitted under this Agreement
will be sent by air mail, postage pre-paid, or Federal
Express, to the following addresses of the Parties:
If to ACLARA:
ACLARA BioSciences, with copy to ACLARA BioSciences,
Inc. Inc.
0000 Xxxxx Xxx 0000 Xxxxx Xxx
Xxxxxxx, XX 00000-0000 Xxxxxxx, XX 00000-0000
Attn.: President Attn.: General Counsel
If to XXXXXX-XXXXX:
The XXXXXX-XXXXX with copy to The XXXXXX-XXXXX
Corp. Corp.
000 Xxxxxxx Xxxxxx Xxxxx 000 Xxxxxxx Xxxxxx Xxxxx
Xxxxxx Xxxx, XX 00000 Xxxxxx Xxxx, XX 00000
Attn.: Xxxxxxx Xxxxx Attn: Legal Department
and
PerSeptive Biosystems
000 Xxx Xxxxxxxxxxx Xxxx
Xxxxxxxxxx, XX 00000
Attn: Legal Department
[Signature Page Follows]
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IN WITNESS WHEREOF, the Parties, through their authorized officers, have
executed this Agreement as of the date first written above.
ACLARA BIOSCIENCES, INC. THE XXXXXX-XXXXX CORPORATION,
THROUGH ITS PE BIOSYSTEMS
DIVISION
By: /s/ XXXXXX X. XXXXXX By: /s/ XXXXXXX XXXXXXXXXXX
---------------------------------- ---------------------------------
Name: Xxxxxx X. Xxxxxx Name: Xxxxxxx Xxxxxxxxxxx
------------------------------ -------------------------------
Title: President, CEO Title: Executive Vice President
------------------------------- -------------------------------
Date: March 19, 1999 Date: 3/19/99
------------------------------- -------------------------------
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EXHIBIT 1
WORK PLAN
[*]
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
1
32
[*]
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
2
33
[*]
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
3
