EXHIBIT 10.20
SETTLEMENT AGREEMENT
between
HYSEQ, INC.
and
AFFYMETRIX, INC.
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
SETTLEMENT AGREEMENT
This Settlement Agreement (this "AGREEMENT") is entered into this 24th
day of October, 2001 (the "Effective Date") by and between Hyseq, Inc., a Nevada
corporation ("HYSEQ") and Affymetrix, Inc., a Delaware corporation
("AFFYMETRIX") (each a "PARTY," collectively the "PARTIES").
W I T N E S S E T H:
WHEREAS, Hyseq and Affymetrix have had various disputes which in part
have led to the commencement of certain litigation matters, including but not
limited to Hyseq, Inc., Plaintiff/Counterdefendant v. Affymetrix, Inc.,
Defendant/Counterclaimant, Case No. C 97-20188 RMW (ENE), United States District
Court, Northern District of California, San Xxxx Division; Affymetrix, Inc.,
Plaintiff v. Hyseq, Inc., Defendant, Xxxx Xx X 00-00000 XX, Xxxxxx Xxxxxx
District Court, Northern District of California, San Xxxx Division; and Hyseq,
Inc., Plaintiff/Counterdefendant v. Affymetrix, Inc., Defendant/Counterclaimant,
Case No. C 00-20050 RMW, United States District Court, Northern District of
California, San Xxxx Division (collectively, the "MATTERS"); and
WHEREAS, the Parties desire to reach an amicable resolution of the
Matters in an efficient and expeditious manner; and
WHEREAS, contemporaneously with the execution and delivery of this
Agreement, Hyseq and Affymetrix have entered into the [***] and certain Related
Agreements (as such term is defined in the [***]) (collectively the "RELATED
AGREEMENTS");
NOW THEREFORE, for and in consideration of the promises contained herein
and in the Related Agreements, and for other good and valuable consideration,
the sufficiency of which is hereby acknowledged, the Parties agree as follows:
1. Definitions. For purposes of this Agreement, the following terms have the
meanings hereinafter indicated:
"AFFYMETRIX PATENTS" means the Affymetrix Patents-In-Suit, all patents
and/or patent applications claiming priority to or common priority with the
Patents-In-Suit; all foreign counterparts of such Patents-In-Suit, patents, and
/or patent applications; all continuations, continuations-in-part and
divisionals of such patents-in-suit, patents, and/or patent applications; and
all reissues and re-examinations of any of the foregoing; and all patents
issuing from such patent applications.
"AFFYMETRIX PATENTS-IN-SUIT" means U.S. Patent Nos. 5,795,716, 5,744,305
and 5,800,992.
"AFFILIATES" means any present or former company, partnership,
corporation or like entity, in any country, which, directly or indirectly (i)
wholly or substantially owns or controls an entity, directly or indirectly, or
(ii) is wholly or substantially owned or controlled by that entity, directly or
indirectly. As used herein, substantial ownership or control includes, but is
not limited to, ownership or control of more than fifty percent (50%) of 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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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voting stock or equity of an entity or effective management control by contract
or otherwise. Affiliates that may become affiliated in the future are explicitly
excluded from this definition.
"CLAIMS" means any and all causes of action, demands, agreements,
contracts, covenants, representations, warranties, promises, undertakings,
actions, obligations, controversies, debts, costs, expenses, attorneys' fees,
expert witness fees, court costs, accounts, damages, losses, injuries and
liabilities, of whatever kind or nature, in law, equity, administrative
proceeding, or otherwise, present and future, whether known or unknown,
suspected or unsuspected, for or by reason of any matter, cause or thing
whatsoever from the beginning of time through and including the date hereof,
whether sounding in contract, tort or otherwise.
"HYSEQ PATENTS" means the Hyseq Patents-In-Suit, all patents and/or
patent applications claiming priority to or common priority with the
Patents-In-Suit; all foreign counterparts of such Patents-In-Suit, patents, and
/or patent applications; all continuations, continuations-in-part and
divisionals of such patents-in-suit, patents, and/or patent applications; and
all reissues and re-examinations of any of the foregoing; and all patents
issuing from such patent applications.
"HYSEQ PATENTS-IN-SUIT" means U.S. Patent Nos. 5,202,231, 5,525,464,
5,695,940, 6,018,041 and 5,972,619.
"MATTERS" has the meaning specified in the Recitals, above.
"PTO" means the United States Patent and Trademark Office.
2. Representations, Warranties, and Indemnities.
2.1 Each of Hyseq and Affymetrix represents and warrants to the other
that, as of the date hereof, it is a corporation, duly organized, validly
existing and in good standing under the laws of the jurisdiction of its
incorporation and has all requisite power and authority, corporate or otherwise,
to execute, deliver and perform this Agreement. This Agreement is a legal, valid
and binding obligation enforceable against each of Affymetrix and Hyseq in
accordance with its terms and conditions, except as such enforceability may be
limited by applicable bankruptcy, insolvency, moratorium, reorganization or
similar laws, from time to time in effect, affecting creditors rights generally.
2.2 Hyseq represents and warrants to Affymetrix that it is the exclusive
owner of the Hyseq Patents and has the sole and exclusive right to assert each
of the Hyseq Patents without limitation, free and clear of any and all claims,
rights, liens or encumbrances of any nature whatsoever, including any claims of
any university or other educational institution or any governmental agency, and
has the full right and authority to license or assign such Patents.
2.3 Affymetrix represents and warrants to Hyseq that it is the exclusive
owner of the Affymetrix Patents and has the sole and exclusive right to assert
each of the Affymetrix
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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Patents without limitation, free and clear of any and all claims, rights, liens
or encumbrances of any nature whatsoever, including any claims of any university
or other educational institution or any governmental agency, and has the full
right and authority to license or assign such Patents.
2.4 Except for the representations and covenants expressly set forth in
this Agreement and the Related Agreements, no Party has made any statement or
representation to any other Party regarding a fact relied upon by the other
Party in entering into this Agreement or the Related Agreements and no Party has
relied upon any statement, representation, or promise of any other Party, or of
any representative or attorney for any other Party, in executing this Agreement
or in making the settlement provided for in this Agreement and the Related
Agreements.
2.5 Each Party to this Agreement represents and warrants that it has not
assigned or transferred any portion of the Claims being released hereunder to
any other person, individual, firm, corporation or entity, and that no other
person, individual, firm, corporation or entity has any lien, right, claim or
interest in any such Claims. Furthermore, each Party represents and warrants
that this Agreement and the Related Agreements do not and shall not conflict
with or constitute a default under the terms, conditions or provisions of its
charter documents or any other agreement, understanding or commitment of such
Party nor is the authorization, consent or approval of any other person or
entity required for the execution and performance hereof. Without limiting the
generality of the foregoing, Hyseq represents and warrants that nothing
contained in this Settlement Agreement or the Related Agreements conflicts with
or constitutes a default under the terms, conditions, or provisions of [***].
Each Party to this Agreement shall indemnify, defend, and hold harmless any
other Party to [***] this Agreement from and against any and all of such Claims
arising out of, related to, or connected with any prior assignment or transfer,
or any purported assignment or transfer, of any of such Claims or the breach of
any other representation in this Section 2.
3. Mutual Release of Claims.
3.1 Release by Hyseq. Hyseq, on behalf of itself and its present and
former officers, directors, employees, agents, attorneys, assigns, predecessors,
subsidiaries, Affiliates, divisions and successors-in-interest (collectively,
the "HYSEQ RELEASING PARTIES"), does hereby forever and irrevocably release,
acquit, and discharge, and covenant not to xxx or bring or maintain any Claim,
action or proceeding against, Affymetrix, its present and former officers,
directors, employees, predecessors, subsidiaries, Affiliates and divisions (the
"AFFYMETRIX RELEASED PARTIES") and/or any of them, from or regarding any and all
Claims that the Hyseq Releasing Parties have, had, or may have against any of
the Affymetrix Released Parties arising up to the Effective Date. This release
includes, without limitation, any Claims asserted in the Matters, any Claims
relating to the filing or prosecution of the Matters, and any other Claims
whatsoever, whether arising from negligent or intentional acts or omissions or
otherwise. Hyseq, for itself and the other Hyseq Releasing Parties, also hereby
forever and irrevocably releases, acquits, and discharges, and covenants not to
xxx or bring or maintain any Claim, action or proceeding against, any [***] of
the Affymetrix Released Parties and/or any of them, from or regarding any and
all Claims
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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that the Hyseq Releasing Parties have, had, or may have against any of them
exclusively arising out of their making, using, importing, selling, or offering
to sell any Affymetrix [***] product up to the Effective Date.
3.2 Release by Affymetrix. Affymetrix, on behalf of itself and its
present and former officers, directors, employees, agents, attorneys, assigns,
predecessors, subsidiaries, Affiliates, divisions and successors-in-interest
(collectively, the "AFFYMETRIX RELEASING PARTIES"), does hereby forever and
irrevocably release, acquit, and discharge, and covenant not to xxx or bring or
maintain any Claim, action or proceeding against, Hyseq, its present and former
officers, directors, employees, predecessors, subsidiaries, Affiliates and
divisions (the "HYSEQ RELEASED PARTIES") and/or any of them, from or regarding
any and all Claims that the Affymetrix Releasing Parties have, had, or may have
against any of the Hyseq Released Parties arising up to the Effective Date. For
purposes of this release provision, [***]. This release includes, without
limitation, any Claims asserted in the Matters, any Claims relating to the
filing or prosecution of the Matters, and any other Claims whatsoever, whether
arising from negligent or intentional acts or omissions or otherwise.
Affymetrix, for itself and the other Affymetrix Releasing Parties, also hereby
forever and irrevocably releases, acquits, and discharges, and covenants not to
xxx or bring or maintain any Claim, action or proceeding against, any [***] of
the Hyseq Released Parties and/or any of them, from or regarding any and all
Claims that the Affymetrix Releasing Parties have, had, or may have against any
of them exclusively arising out of their making, using, importing, selling, or
offering to sell any Hyseq [***] product up to the Effective Date.
3.3 Section 1542 Waiver. Affymetrix and Hyseq have each been fully
advised by its respective attorneys of the contents and meaning of Section 1542
of the Civil Code of the State of California, which reads as follows:
"SECTION 1542. (GENERAL RELEASE- CLAIMS EXTINGUISHED.) A GENERAL
RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT
KNOW OR SUSPECT TO EXIST IN HIS FAVOR AT THE TIME OF EXECUTING
THE RELEASE, WHICH IF KNOWN BY HIM MUST HAVE MATERIALLY AFFECTED
HIS SETTLEMENT WITH THE DEBTOR."
Affymetrix and Hyseq each expressly waive and relinquish all rights and
benefits under Section 1542, and any similar law or common law principle of
similar effect of any state or territory of the United States and any foreign
jurisdiction, with respect to the Claims released hereby, and expressly consent
that this Agreement will be given full force and effect according to each and
all of its express terms and provisions, including with respect to the release
of any claims that are unknown or unsuspected that Affymetrix or Hyseq may have
against each other.
3.4 Finality of Waiver. The Parties hereby expressly and knowingly
acknowledge that each may, after execution of this Agreement, discover facts
different from or in addition to those which each knows or believes to be true
with respect to the claims released in this Agreement. Nonetheless, each Party
agrees that this Agreement shall be and remain in full force and effect in all
respects, notwithstanding such different or additional
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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facts. It is the intention hereby fully, finally, and forever to settle all such
matters, and release any and all Claims relating to those matters, which do now
exist or previously have existed by and among the Parties. In furtherance of
such intention, the releases given in this Agreement shall be and remain in
effect as full and completed releases of such Matters, notwithstanding the
discovery by any of the Parties of the existence of any additional or different
Claims or facts relating to the Claims. Similarly, in entering into this
Agreement, each Party assumes the risk of mistake, and if any Party should
subsequently discover that any fact it relied upon in entering into this
Agreement was untrue, or that its understanding of the facts or law was
incorrect, such Party shall not be entitled to set aside this Agreement or be
entitled to recover any damages on that account unless the mistake was due to an
intentional misrepresentation by the other Party. This Agreement, and the
Releases it contains, is intended, pursuant to the advice of independently
selected legal counsel, to be final and binding between and among the Parties to
this Agreement regardless of any claims of mistake of fact or law or of any
other circumstances whatsoever.
3.5 The Releases provided for in this Section 3 shall survive the
termination of this Agreement and the termination of any or all of the Related
Agreements. No dispute or claimed breach of any of such Agreements nor failure
of consideration nor the inadequacy of the remedies therefor shall in any way
affect the full enforceability of such releases which the parties acknowledge
and agree are final, binding and not subject to termination or modification
after the Effective Date.
4. Dismissal with Prejudice/Withdrawal.
4.1 Each of Affymetrix and Hyseq acknowledges and agrees that the
Patents-In-Suit asserted by the other Party are valid and enforceable, except as
otherwise determined by the Court or the PTO.
4.2 The Parties agree that they jointly will within two days of the
Effective Date sign and file with the United States District Court for the
Northern District of California, (i) a Stipulation and Proposed Order of
Dismissal and Final Judgment substantially in the form attached hereto as
Exhibit A in Cases No. 97-20188 and 00-20050 and (ii) a Stipulation and Proposed
Order of Dismissal and Final Judgment substantially in the form attached hereto
as Exhibit B in Case No. 99-21163.
4.3 Affymetrix and Hyseq mutually agree to settle the interference
proceedings titled Xxxx x. Xxxxxxx, Interference No. 104,552 in the form
attached hereto as Exhibit C.
4.4 In the event that the Court declines to enter the Final Judgments in
substantially the forms set forth in Exhibits A and B, each Party shall have the
right for a period of seven (7) days to terminate this Agreement and the Related
Agreements.
4.5 The Parties represent and warrant that there are no adverse
proceedings between them that are filed, pending or planned other than the
Matters and Interference No. 104,552. It is the intention of the Parties to
settle all outstanding disputes between them. If any pending adverse proceeding
was omitted from the Matters, the parties intend to settle
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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any such litigation, proceeding or action and therefore agree to take all
necessary steps to withdraw from, discontinue, terminate or dismiss such omitted
adverse proceeding.
4.6 (a) Hyseq has reviewed and analyzed the Affymetrix Patents-In Suit,
and agrees that it will not in the future, directly or indirectly, oppose,
contest, or dispute the priority, validity or enforceability of any Affymetrix
Patents in any United States or foreign court, agency, or other tribunal, now or
in the future, and that it will not seek reexamination or modification of any
Affymetrix Patents. Hyseq agrees not to actively seek [***] interferences with
[***]. Hyseq further agrees that it [***].
(a) Affymetrix has reviewed and analyzed the Hyseq
Patents-In-Suit, and agrees that it will not in the future, directly or
indirectly, oppose, contest, or dispute the priority, validity or enforceability
of any Hyseq Patents in any United States or foreign court, agency, or other
tribunal, now or in the future, and that it will not seek reexamination or
modification of any Hyseq Patents. Affymetrix agrees not to actively seek [***]
interferences with [***]. Affymetrix further agrees that it [***].
5. Miscellaneous.
5.1 The Parties agree to keep the terms of this Agreement confidential,
and agree not to disclose the terms of this Agreement, except pursuant to a
mutually-agreed press release, and except as may be (i) necessary for the
purpose of enforcing any provision of this Agreement, or (ii) lawfully required
by any governmental agency. Notwithstanding the foregoing, both Parties may
agree to inform any court with jurisdiction over a Matter of the existence of a
settlement and the Parties may file this Agreement and any other related
agreements in the PTO as required under 35 U.S.C. Section 135(c). If this
Agreement or any of the Related Agreements is sought in discovery, the Party
responding to discovery shall promptly notify all Parties and shall do
everything possible to maintain the confidentiality of the Agreement.
5.2 Each Party represents and acknowledges that it has read this
Agreement and fully understands and agrees to its terms, and that each Party has
been represented by counsel in connection with the negotiation and execution of
this Agreement.
5.3 This Agreement may be executed in counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument.
5.4 The Parties agree that this Agreement will be governed by and
construed in accordance with the internal laws of the State of California
applicable to agreements made and to be performed entirely within such State,
without regard to the conflicts of laws principles of such State.
5.5 This Agreement and the Related Agreements contain the entire set of
agreements among the Parties with respect to the matters contained herein, and
may be amended only by written agreement signed by the Parties to the Agreement.
The provisions of all of such agreements shall be construed together so as to
give effect to the provisions of each of the agreements to the greatest extent
possible, except that under no circumstances
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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will the releases granted to the Parties in Section 3 above be terminated or
modified in any manner whatsoever.
5.6 This Agreement is intended only for the benefit of the Parties
hereto, the Hyseq Released Parties and the Affymetrix Released Parties, and the
beneficiaries expressly referenced in this Agreement. No other person or entity
is entitled to any rights or benefits hereunder.
5.7 Each Party shall perform any further acts, and sign and deliver any
further instruments and documents, as may be required to accomplish the purposes
of this Agreement; provided, however, that nothing in this provision shall be
interpreted to modify any of the specific terms of this Agreement.
5.8 Any notice, requests, delivery, approval or consent required or
permitted to be given under this Agreement shall be in writing and shall be
deemed to have been sufficiently given if delivered in person, transmitted by
commercial overnight courier, or transmitted by telex telegram or telecopy
(facsimile, with confirmed receipt) to the Party to whom it is directed at its
address shown below or such other address as such Party shall have last given by
notice to the other Party (referred to herein as "NOTICE"). All notices shall be
effective upon receipt.
If to Hyseq, addressed to:
Hyseq, Inc.
000 Xxxxxxx Xxx.
Xxxxxxxxx, XX 00000
Attn: General Counsel
Fax: (000) 000-0000
If to Affymetrix, addressed to:
Affymetrix, Inc.
0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Fax: (000) 000-0000
5.9 Neither Party shall assign any of its rights or obligations
hereunder without the prior, written consent of the other Party, which other
Party may [***], except that no such consent shall be required with respect to a
merger, consolidation, reorganization, sale of stock or sale or transfer of
substantially all of the business and assets of a Party related to the Matters,
provided that [***]. This Agreement shall be binding upon the permitted
successors and permitted assigns of the Parties. Any assignment not in
accordance with the above shall be void.
5.10 The prevailing Party in any action to enforce this Agreement will
be entitled to recover its attorneys fees and costs in connection with such
action.
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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5.11 In the event that one or more of the provisions of this Agreement
is held to be invalid, illegal or unenforceable in any respect, such provision
will nevertheless remain valid, legal and enforceable in all other respects and
to such extent as may be permissible. In addition, any such invalidity,
illegality or unenforceability will not affect any other provision hereof, and
this Agreement will be construed as if such invalid, illegal or unenforceable
provision had never been contained herein.
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed in counterparts as of the date first written above.
AFFYMETRIX, INC.
By: /s/ Xxxxxxx X. Xxxxxxxxx
------------------------------------
Name: Xxxxxxx X. Xxxxxxxxx
-----------------------------
Title: Executive Vice President and
General Counsel
-----------------------------
HYSEQ, INC.
By: /s/ Xxx Love
------------------------------------
Name: Xxx Love
-----------------------------
Title: President and Chief Executive
Officer
-----------------------------
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
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Exhibit A
XXXXXXXX, O'TOOLE, GERSTEIN, XXXXXX & BORUN
Xxxxx X. Xxxxxxx, Ph.D. (Ill. Bar No. 06242895)
Xxxxxxx X. Xxxxxx, Ph.D. (Ill. Bar No. 06225636)
6300 Sears Tower
000 Xxxxx Xxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
Attorneys for Plaintiff/Counterdefendant Hyseq, Inc.
IRELL & XXXXXXX LLP
Xxxxxx Xxx (SBN 70446)
Xxxxxxx xx Xxxx (SBN 128199)
Xxxxxxx X. Xxxxxxxxx (SBN 139435)
1800 Avenue of the Stars
Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000
Attorneys for Defendant/Counterclaimant Affymetrix, Inc.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN XXXX DIVISION
HYSEQ, INC., Case No. C 97-20188 RMW (ENE)
Plaintiff/Counterdefendant, Case No. C 00-20050 RMW
v. STIPULATION AND PROPOSED ORDER OF
AFFYMETRIX, INC., DISMISSAL AND FINAL JUDGMENT
Defendant/Counterclaimant.
Xxxxxxxxx Xxxxxx X. Xxxxx
STIPULATION OF DISMISSAL AND JUDGMENT
CASE NOS. C 97-20188 RMW (ENE) AND C 00 20050 RMW
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
Plaintiff and Counterdefendant Hyseq, Inc. ("Hyseq") and
Defendant and Counterclaimant Affymetrix, Inc. ("Affymetrix") have entered into
a confidential settlement which provides a basis for settlement and judgment of
the claims and counterclaims in these actions. Pursuant to this settlement,
Hyseq and Affymetrix, by and through their respective counsel, hereby stipulate
to the dismissal with prejudice and conclusion of all claims and counterclaims
in these actions.
The Court having duly deliberated thereon,
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that final judgment is
hereby entered as follows:
1. The parties admit that all claims of the asserted patents are
valid and enforceable.
2. This Court shall retain jurisdiction over the implementation
of or disputes arising out of the parties' settlement, including the
jurisdiction to order any appropriate remedy under law or equity. The settlement
also encompasses another case involving the parties, Affymetrix, Inc. v. Hyseq,
Inc., Case No. C 99-21163 JF.
3. Case Nos. C 97-20188 RMW and C 00-20050 are dismissed with
prejudice.
4. Each party shall bear its own attorneys' fees and costs of
suit.
Dated: XXXXXXXX, O'TOOLE, GERSTEIN, XXXXXX & BORUN
--------------------
By:
------------------------------------------
Xxxxx X. Xxxxxxx Ph.D.
Attorneys for Plaintiff/Counterdefendant
Hyseq, Inc.
Dated: IRELL & XXXXXXX LLP
--------------------
By:
------------------------------------------
Xxxxxxx xx Xxxx
Attorneys for Defendant/Counterclaimant
Affymetrix, Inc.
IT IS SO ORDERED.
DATED:
--------------------
---------------------------------------------
Xxxxxxxxx Xxxxxx X. Xxxxx
United States District Judge
STIPULATION OF DISMISSAL AND JUDGMENT
CASE NOS. C 97-20188 RMW (ENE) AND C 00 20050 RMW
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
Exhibit B
IRELL & XXXXXXX LLP
Xxxxxx Xxx (SBN 70446)
Xxxxxxx xx Xxxx (SBN 128199)
Xxxxxxx X. Xxxxxxxxx (SBN 139435)
1800 Avenue of the Stars
Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000
Attorneys for Plaintiff Affymetrix, Inc.
XXXXXXXX, O'TOOLE, GERSTEIN, XXXXXX & BORUN
Xxxxx X. Xxxxxxx, Ph.D. (Ill. Bar No. 06242895)
Xxxxxxx X. Xxxxxx, Ph.D. (Ill. Bar No. 06225636)
6300 Sears Tower
000 Xxxxx Xxxxxx Xxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
Attorneys for Defendant Hyseq, Inc.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
SAN XXXX DIVISION
AFFYMETRIX, INC., Case No. C 99-21163 JF
Plaintiff, STIPULATION AND PROPOSED ORDER OF
v. DISMISSAL AND FINAL JUDGMENT
HYSEQ, INC.,
Defendant. Xxxxxxxxx Xxxxxx Xxxxx
STIPULATION OF DISMISSAL AND JUDGMENT
CASE NO. C 99-21163 JF
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
Plaintiff Affymetrix, Inc. ("Affymetrix") and Defendant Hyseq,
Inc. ("Hyseq") have entered into a confidential settlement which provides a
basis for settlement and judgment of the claims in this action. Pursuant to the
settlement, Affymetrix and Hyseq, by and through their respective counsel,
hereby stipulate to the dismissal with prejudice and conclusion of all claims in
this action, with each party to bear its own attorneys' fees and costs of suit.
The Court having duly deliberated thereon,
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that final judgment is
hereby entered as follows:
1. The parties admit that all claims of the asserted patents are
valid and enforceable.
2. The Court, Xxxxxxxxx Xxxxxx X. Xxxxx, shall retain
jurisdiction over the implementation of or disputes arising out of the parties'
settlement, including the jurisdiction to order any appropriate remedy under law
or equity. The settlement also encompasses two other cases involving the
parties, Hyseq, Inc. v. Affymetrix, Inc., Case No. C 97-20188 RMW (ENE) and
Hyseq, Inc. v. Affymetrix, Inc., Case No. C 00-20050 RMW.
3. Case No. C 99-20163 is dismissed with prejudice.
4. Each party shall bear its own attorneys' fees and costs of
suit.
Dated: IRELL & XXXXXXX LLP
--------------------
By:
------------------------------------------
Xxxxxxx xx Xxxx
Attorneys for Plaintiff Affymetrix, Inc.
Dated: XXXXXXXX, O'TOOLE,GERSTEIN, XXXXXX & BORUN
--------------------
By:
------------------------------------------
Xxxxx X. Xxxxxxx Ph.D.
Attorneys for Defendant Hyseq, Inc.
IT IS SO ORDERED.
Dated:
--------------------
---------------------------------------------
Xxxxxxxxx Xxxxxx Xxxxx
United States District Judge
STIPULATION OF DISMISSAL AND JUDGMENT
CASE NO. C 99-21163 JF
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
Exhibit C
INTERFERENCE SETTLEMENT AGREEMENT
(BETWEEN HYSEQ, INC. AND AFFYMETRIX, INC.)
This Settlement of Interference Agreement is made as of this 24th day of
October, 2001 (the "Effective Date") by and among Hyseq, Inc., a Nevada
corporation (herein "Hyseq"), having a place of business in Sunnyvale, CA, and
Affymetrix, Inc., a Delaware corporation (herein "Affymetrix"), having a place
of business in Santa Clara, California.
WHEREAS, the United States Patent and Trademark Office ("PTO") has
declared Interference No. 104,552 between US Patent Nos. 5,795,716 and
5,974,164 of Affymetrix, and Application No. 09/358,875 of Hyseq, in
order to determine priority between the parties with respect to
inventions; and
WHEREAS, Hyseq and Affymetrix have been involved in litigation,
opposition, interference, attempted interference and other adverse
proceedings involving their respective patents and patent applications
in various countries; referred to herein as "Litigation Proceedings";
and
WHEREAS, Hyseq and Affymetrix have resolved and settled the Litigation
Proceedings on an amicable basis and have entered into a Settlement
Agreement, which agreement includes a provision that the parties will
enter into a Interference Settlement Agreement to resolve Interference
No. 104,552.
Hyseq and Affymetrix do hereby agree as follows:
1. PRELIMINARY MOTIONS
1.1 The parties agree that no preliminary motions or
preliminary statements will be filed in this interference.
2. TERMINATION OF INTERFERENCE
2.1 On or before November 15, 2001 Hyseq, through its
attorneys, shall file an abandonment of contest in
Interference No. 104,552.
3. FUTURE INTERFERENCES
3.1 Affymetrix agrees not to actively seek [***] interferences
with [***].
3.2 Hyseq agrees not to actively seek [***] interferences with
[***].
3.3 The parties are [***].
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
4. FILING OF AGREEMENT
4.1 Promptly after this agreement is executed by both parties
Affymetrix will file a copy of this Interference
Settlement Agreement and all collateral agreements with
the PTO as required by 35 U.S.C. Section 135(c) and 37
C.F.R. Section 1.666(b), requesting that the copies of
this Interference Settlement Agreement and any collateral
agreement filed therewith be held separate from the file
of the interference, and made available only to Government
agencies upon written request, or to any person upon
petition and showing of good cause. In the event that such
a written request is made or such a petition is filed, it
is respectfully requested that the persons identified
below be notified before such request or petition is
granted:
Xxxxxx X. Xxxxxxx, Esq. Xxxxxxx X. Xxxxxx
Xxxxxxxx and Xxxxxxxx and Crew LLP Xxxxxxxx, Gerstein & Borun
Two Embarcadero Center, 8th Floor 6300 Sears Tower
8th Floor 000 Xxxxx Xxxxxx Xxxxx
Xxx Xxxxxxxxx, XX 00000-0000 Xxxxxxx, XX 00000-0000
Phone: (000) 000-0000 Phone: (000) 000-0000
Fax: (000) 000-0000 Fax: (000) 000-0000
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
2
IN WITNESS WHEREOF, the parties have caused this Interference
Settlement Agreement to be executed by their authorized officials.
AGREED TO:
Hyseq, Inc.
By:
-------------------------------------
----------------------------------------
Printed Name
----------------------------------------
Title
----------------------------------------
Date
Affymetrix, Inc.
By:
-------------------------------------
----------------------------------------
Printed Name
----------------------------------------
Title
----------------------------------------
Date
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 24b-2 OF THE SECURITIES EXCHANGE ACT
OF 1934, AS AMENDED.
3
