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* TEXT OMITTED AND FILED SEPARATELY
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4),
200.83 AND 240.24b-2
EXHIBIT 10.39
LICENSE AGREEMENT
BETWEEN
XENOMETRIX, INC.
AND
AURORA BIOSCIENCES CORPORATION
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LICENSE AGREEMENT
This Agreement is made this 17th day of April 1998 (the "Effective Date"), by
and between Xenometrix, Inc. ("Xeno"), a Delaware corporation with principal
offices at 0000 Xxxxx 00xx Xxxxxx, Xxxxxxx, XX 00000-0000 and Aurora Biosciences
Corporation ("ABSC"), a Delaware corporation with principal offices at 00000
Xxxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx to license certain technology.
RECITALS
WHEREAS, XENO is the owner or exclusive licensee of the XENO Patents relating to
certain assays, technology and intellectual property further described herein,
and desires to license the same to ABSC; and
WHEREAS, ABSC seeks to obtain certain license rights and licensing rights under
the XENO Patents, according to the terms contained herein (the "Agreement");
Now, therefore, in consideration of the foregoing and the covenants and premises
contained herein the parties agree as follows:
1. DEFINITIONS
1.1. "Affiliate" means any corporation or other business entity controlled
by or in common control of an entity. Control, as used in the context
of a business entity, means the ownership directly or indirectly of
fifty percent (50%) or the maximum interest permitted by local law of
the voting securities of the person, corporation, or other entity or a
fifty percent (50%) or greater interest in the income of such
corporation or other entity or the ability otherwise of the entity to
secure that the affairs of such person, corporation or other entity
are managed in accordance with the such entity's wishes.
1.2. "Aurora Technology" means all Technology owned or Controlled by
Aurora.
1.3. "Confidential Information" means all information, compounds, data, and
materials received by either party from the other party pursuant to
this Agreement including, without limitation, Technology of each
party, subject to the exceptions set forth in Section 6.1.
1.4. "Consideration" shall mean money, revenue, or Equity Premium.
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1.5. "Control" or "Controlled" means, in the context of intellectual
property, possession by a party of the ability to grant a license or
sublicense in accordance with the terms of this Agreement, and
without violating the terms of any agreement by such party with any
Third Party.
1.6. "Equity Premium" shall mean Consideration received by ABSC
attributable to the sale of a security, in excess of the fair market
value of the security, such fair market value to be measured by the
average closing price of the security on the principal U.S. stock
exchange upon which it trades, for the 10 trading days immediately
prior to the sale.
1.7. "Field" means [ * ]
1.8. "Harvard License Agreement" means the license agreement between the
President and Fellows of Harvard College and Venmark Ltd., now XENO,
executed on January 17, 1992.
1.9. "Intellectual Property" means any information and data which is not
generally known to the public, comprising: any new and useful
process, machine, manufacture, or composition of matter, or
improvement thereto, whether or not patentable, designs, concepts,
algorithms, formulae, software, techniques, practices, processes,
methods, knowledge, skill, experience, expertise and technical
information; copyrights; trade secrets; or patent rights (including
pending and issued any where in the world).
1.10. "Materials" means any biological or chemical entity for screening or
assays, including reagents, cells, promoters, enhancers, vectors,
plasmids, proteins and fragments thereof, peptides, antigens,
antibodies, antagonists, agonists, inhibitors, and chemicals.
1.11. "XENO Patents" means the U.S. patents and patent applications listed
on Exhibit A hereto, any patent applications filed prior or
subsequent to the Effective Date that claim the benefit of an early
filing date to any of the patent applications listed in Exhibit A,
and any reissues, extensions, substitutions, confirmations,
re-registrations, re-examinations, continuations, divisionals or
continuations-in-part of the foregoing patents and patent
applications, as well as all foreign counterparts or equivalents
thereof.
1.12. "Sublicensee" means a Third Party and its Affiliates (if any) that
have a sublicense from ABSC under the XENO Patents.
* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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1.13. "Technology" means Materials, Intellectual Property or both.
1.14. "Third Party" means any entity other than (i) ABSC and any of its
Affiliates, and (ii) XENO and any of its Affiliates.
1.15. "Valid Claim" means: (a) an enforceable claim under an issued patent
within the XENO Patents, which has not (i) expired or been canceled,
(ii) been declared invalid by an unreversed and unappealable decision
of a court or other appropriate body of competent jurisdiction, (iii)
been admitted to be invalid or unenforceable through reissue,
disclaimer or otherwise, and/or (iv) been abandoned.
2. LICENSES
2.1. Grant of Licenses Under the XENO Patents from XENO to ABSC.
2.1.1. Non-Exclusive License to XENO Patents. XENO hereby grants to
ABSC and its Affiliates a non-exclusive, worldwide license in the
Field under XENO's ownership interest in the XENO Patents to
make, use, have made, sell, have sold, offer for sale, import,
export or otherwise exploit any process, composition of matter or
other invention claimed in the XENO Patents.
2.1.2. Non-Exclusive Sublicense to XENO Patents under the Harvard
License Agreement. XENO hereby grants to ABSC and its Affiliates
a non-exclusive, worldwide sublicense in the Field under XENO's
right to sublicense the XENO Patents in the Harvard License
Agreement to make, use, have made, sell, have sold, offer for
sale, import, export or otherwise exploit any process,
composition of matter or other invention claimed in the XENO
Patents. ABSC acknowledges the Harvard License Agreement and
XENO's duties and obligations thereunder.
2.1.3. Right to Sublicense the XENO Patents.
2.1.3.1. XENO hereby grants ABSC the right to grant
non-exclusive, worldwide sublicenses in the Field to a Third
Party and its Affiliate(s) under XENO's ownership interest
in the XENO Patents to make, use, have made, sell, offer for
sale, import, export or otherwise exploit any process,
composition of matter or other invention claimed in the XENO
Patents.
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2.1.3.2. XENO hereby grants ABSC the right to grant
non-exclusive, worldwide sublicenses in the Field to a Third
Party and its Affiliate(s) under XENO's right to sublicense
the XENO Patents in the Harvard License Agreement to make,
use, have made, sell, offer for sale, import, export or
otherwise exploit any process, composition of matter or
other invention claimed in the XENO Patents.
2.1.3.3. Sublicenses under Section 2.1.3 may be granted only to
licensees of Aurora Technology for use in conjunction with
Aurora Technology. The consideration for such sublicenses is
set forth in Section 3. The sublicense rights in this
Section 2.1.3 do not include the right to sub-sublicense.
2.1.3.4. The parties agree that ABSC hereby has the exclusive
right to negotiate with [ * ] for any sublicense in the
Field under either XENO's ownership interest in the XENO
Patents or XENO's right to sublicense the XENO Patents in
the Harvard License Agreement. If the scope of such a
potential license is broader than ABSC's rights of
sublicense herein, ABSC and XENO agree to negotiate in good
faith the terms of a broader sublicensing right for ABSC,
consistent with XENO's Third Party obligations at the time.
2.2. Miscellaneous Licensing Provisions.
2.2.1. Any sublicenses granted hereunder by ABSC and granted prior to
termination, shall terminate in accordance with such sublicensing
agreement. XENO covenants not to xxx ABSC or its Affiliates or
Sublicensees for causes of action relating to the infringement of
XENO's intellectual property rights (including, patent,
copyright, trademark and trade secret rights) arising out of the
use or practice of any invention to which ABSC and its Affiliates
and Sublicensees have a license pursuant to Article 2 for so long
as such license is in force as effect.
3. COMPENSATION
3.1. Compensation for the XENO Patents License.
3.1.1. XENO Patent Licenses and Rights. As consideration for the
licenses and rights granted to ABSC pursuant to Sections 2.1.1
and 2.1.2 and otherwise herein, ABSC will pay to XENO:
* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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a) [ * ] upon signing of the Agreement;
b) [ * ] per calendar year license fee payable on
January 1, 1999 and annually thereafter and such
fees paid in any calendar year are creditable
against the annual royalty for the same calendar
year to be paid by ABSC under Section 3.1.1(c),
and
c) An annual royalty calculated by multiplying a
[ * ] percent [ * ] royalty rate to the
Consideration received by ABSC for the sale of
products and services that are covered by a Valid
Claim of the Xeno Patents within the Field on a
country-by-country basis; provided however, that
the following are not subject to such a royalty:
[ * ].
d) No other royalties or milestones or additional
fees will be due pursuant to the license under
Sections 2.1.1 and 2.1.2. Royalty obligations of
Section 3.1.1 (c) will terminate on a
country-by-country basis.
3.1.2. Consideration to be paid by Third Parties for XENO Patents
sublicenses.
3.1.2.1. For each sublicense granted by ABSC under Sections
2.1.3, ABSC will pay to XENO per year the greater of [ * ]
dollars [ * ] or [ * ] percent [ * ] of the sublicense fees
agreed to by ABSC and the Third Party for a given sublicense
per year. XENO agrees and acknowledges that ABSC may retain
the remainder of the sublicense fee, and ABSC shall not be
obligated to pay to XENO any other compensation for such
sublicense. Notwithstanding the foregoing, ABSC will pay to
XENO [ * ] per year per excluded company to which ABSC has
not granted a sublicense if ABSC desires to maintain the
exclusive rights under Section 2.1.3.4 with respect to such
company.
3.1.3. Most Favored Nation for Sections 3.1.1, and 3.1.2. If prior to
the issuance of U.S. patent application 08/374,641 XENO has or
shall have entered into an agreement for a license of
substantially similar scope as the license granted in Sections
2.1.1 or 2.1.2 with a Third Party under the XENO Patents, XENO
shall promptly notify ABSC in writing if such license is valued
less than [ * ]. If such a license exists, ABSC shall have the
option of substituting such terms for those set forth herein.
Upon written notification by ABSC to XENO, ABSC will select a
* CERTAIN CONFIDENTIAL MATERIAL CONTAINED IN THIS DOCUMENT HAS BEEN OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE
24B-2 OF THE SECURITIES AND EXCHANGE COMMISSION ACT OF 1934, AS AMENDED.
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consultant reasonably acceptable to XENO who will perform a confidential review
of the value of the terms of such Third Party agreement. If ABSC chooses to
substitute such terms and such substituted terms would require payments from
ABSC that have not then been made by ABSC, then ABSC shall promptly pay the same
to XENO. If ABSC chooses to substitute such terms and such substituted terms
exceed the amount owed to XENO, XENO shall credit the difference of such
overpayments to ABSC, as appropriate.
3.1.4. Royalty Reports, and Payments. Beginning on the Effective Date,
ABSC shall make written reports (even if there are no sales) and
earned royalty payments to within sixty (60) days after the end
of the each calendar quarter. This report shall state the number,
description, and aggregate profits according to product(s) and
service(s) during such completed calendar quarter, and resulting
calculation pursuant to Section 3.1.1(c) of earned royalty
payment due XENO for such completed calendar quarter. Concurrent
with the making of each such report, ABSC shall include payment
due XENO of royalties for the calendar quarter covered by such
report. All such reports, payments and the like shall be kept
confidential by XENO in accordance with provisions herein.
3.1.5. Accounting. ABSC agrees to keep and maintain records for a
period of three (3) years showing the manufacture, sale, use, and
other profits according to Section 3.1.1(c). Such records will
include general ledger records showing cash receipts and
expenses, and records which include sufficient detail to enable
the royalties payable hereunder by ABSC to be determined. ABSC
further agrees to permit its relevant books and records to be
examined by XENO confidentially pursuant to the provisions herein
and upon reasonable written request by XENO, from time to time
from three (3) years from the date of a transaction to the extent
necessary to verify reports provided for in the above section
titled royalty, reports, and payments. Such examination is to be
made by XENO or its designee, at the expense of XENO except in
the event that the results of the audit reveal an underreporting
of royalties due XENO of ten percent (10%) or more in any
calendar year, then the audit costs shall be paid by ABSC.
4. PROTECTION AND MAINTENANCE OF PATENT RIGHTS
XENO shall use reasonable efforts to continue to prosecute the XENO Patents to
obtain the broadest claims reasonably possible and to defend and maintain the
validity and enforceability of any issued claims. XENO shall control, at its
expense, the prosecution of all XENO Patents. XENO will provide ABSC with
written updates on the status of the prosecution of the XENO Patents at least
once per year. With the consent of XENO, not to be unreasonably withheld,
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ABSC shall have the right, but not the obligation, to bring proceedings against
the excluded companies set forth in Section 2.1.3.4 for patent infringement of
the XENO Patents or otherwise enter into a license with such excluded companies
as set forth herein. ABSC will do so at its own risk and expense. At the request
of ABSC, XENO shall give ABSC, at ABSC's expense, all reasonable assistance
required or reasonably necessary to file suit against such excluded company and
conduct any such proceeding.
5. REPRESENTATIONS AND WARRANTIES
5.1. Representations and Warranties of ABSC and XENO.
Each party hereby represents and warrants:
Corporate Power. Such party is duly organized and validly
existing and in good standing under the laws of the state of
its incorporation and has all requisite corporate power and
authority to enter into this Agreement and to carry out the
provisions hereof.
Due Authorization. Such party is duly authorized to execute
and deliver this Agreement and to perform its obligations
hereunder.
Binding Agreement. This Agreement is a legal and valid
obligation binding upon it and enforceable in accordance with
its terms. The execution, delivery and performance of this
Agreement by such party does not conflict with any agreement,
instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative
or other agency having jurisdiction over it.
5.2. Representations and Warranties of XENO.
XENO further represents and warrants to ABSC:
Right to License or Sublicense. It owns or Controls under
valid licenses, and will use best efforts to continue to own
or Control under valid licenses all right, title and interest
in and to the XENO Patents licensed or to be licensed or
sublicensed hereunder, except as otherwise provided or
disclosed herein.
Patents. It has provided to ABSC a copy of each of the XENO
Patents issued, pending or in preparation as of the Effective
Date, as listed on Exhibit A and as
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requested by ABSC. To the best of XENO's knowledge, there
are no threatened or pending actions, suits, investigations,
claims, or proceedings in any way relating to the XENO
Patents, other than prosecution proceedings not relating to
interference or opposition proceedings. It does not own or
hold license rights to any patent or patent application not
listed in the applicable exhibit attached hereto which, if
issued, would be infringed by the ABSC or its Affiliates or
Sublicensee's activities pursuant to the licenses granted
herein. To the best of XENO's knowledge, no additional
patent rights that claim substantially the same patentable
gene expression profiling subject matter as the XENO Patents
licensed to ABSC herein exist or would prevent ABSC from
practicing the patentable methods and other patentable
subject matter claimed in the XENO Patents as contemplated
by this Agreement.
5.3 Negation of Warranties
Except as expressly set forth in this Agreement, XENO MAKES NO
REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER
EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES
OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR
THAT THE USE OF THE LICENSED PRODUCTS OR SERVICES WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS OR
ANY OTHER EXPRESS OR IMPLED WARRANTIES.
6. CONFIDENTIALITY
6.1. Confidential Information. Except as expressly provided herein, the
parties agree that, for the Term and five (5) years thereafter, the
receiving party shall keep completely confidential and shall not
publish or otherwise disclose to another party and shall not use for
any purpose other than to perform the purposes contemplated by this
Agreement any Confidential Information furnished to it by the
disclosing party hereto pursuant to this Agreement, except that to the
extent that it can be established by the receiving party by competent
proof that such Confidential Information:
was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving
party;
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became generally available to the public or otherwise part
of the public domain after its disclosure and other than
through any act or omission of the receiving party in breach
of this Agreement; or
was lawfully disclosed to the receiving party by a person
other than a party hereto,
or
was independently developed by the receiving party.
6.2. Permitted Use and Disclosures. Each party hereto may use or disclose
Confidential Information disclosed to it by the other party to the
extent such use or disclosure is reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation,
complying with applicable law, governmental regulation or court order,
submitting information to tax or other governmental authorities,
making a permitted sublicense or otherwise exercising its rights
hereunder, provided that if a party is required to make any such
disclosure of another party's Confidential Information, other than
pursuant to a confidentiality agreement, it will give reasonable
advance notice to the latter party of such disclosure and, save to the
extent inappropriate in the case of patent applications, will use
reasonable efforts to secure confidential treatment of such
information prior to its disclosure (whether through protective orders
or otherwise).
6.3. Confidential Terms. Except as expressly provided herein, each party
agrees not to disclose any material or financial terms of this
Agreement to another party without the consent of the other party, not
to be unreasonably withheld; provided, however, each party reserves
the right to make reasonable disclosures (including the redaction of
material or financial terms) as required by securities or other
applicable laws, or to actual or prospective investors or corporate
partners (including licensees and acquirers), or to accountants,
attorneys and other professional advisors on a need-to-know basis
under circumstances that reasonably ensure the confidentiality
thereof, or to the extent required by law. If such Confidential
Information is to become public information by such disclosure the
disclosing party must obtain the written consent of the non-disclosing
party in order to obtain protection of the Confidential Information if
necessary.
6.4. Press Release. Notwithstanding the foregoing, the parties shall agree
in writing upon a press release to announce the execution of this
Agreement. Thereafter, XENO and ABSC may each disclose to Third
Parties the information contained in such press release without the
need for further approval by the other.
7. TERMINATION
7.1.1 This Agreement shall continue until the last expiration date of all
patents licensed under this Agreement.
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7.1.2 Either party shall have the right to terminate this Agreement at any
time for a material breach of this Agreement by the other party,
provided that the non-breaching party shall have first given ninety
(90) days prior written notice (sixty (60) days in the event of
non-payment of any amounts due under this Agreement) to the breaching
party describing such breach and stating the non-breaching party's
intention to terminate this Agreement if such breach remains uncured,
and the breaching party thereafter fails to cure same within a
reasonable time.
7.1.3 ABSC may terminate this Agreement without cause at any time by
providing written notice to XENO of such termination and such
termination will be effective ninety (90) days thereafter. Any
termination pursuant to Section 7.1.3 shall not relieve ABSC of any
obligation or liability accrued hereunder prior to such termination,
including ABSC's obligation to pay royalties accrued or accruable.
The licenses granted hereunder and all sublicenses granted by ABSC
under this agreement shall terminate in the event the Agreement is
terminated by ABSC or termination by an arbitrator for an uncured
breach by ABSC.
7.1.4 XENO and ABSC acknowledge that this Agreement is an "executory
contract" as provided in Section 365(n) of Xxxxx 00, Xxxxxx Xxxxxx
Code (the "Bankruptcy Code"). XENO acknowledges that if XENO as a
debtor in possession or a trustee in bankruptcy in a case under the
Bankruptcy Code rejects the Agreement, ABSC may elect to retain its
rights under this Agreement as provided in Section 365(n) of the
Bankruptcy Code, including a right to any embodiments of any
technology licensed hereunder to the fullest extent permitted by law.
XENO or such bankruptcy trustee shall not interfere with the rights
of ABSC as provided in this Agreement, except as otherwise permitted
by law or equity.
8. MISCELLANEOUS
8.1. Binding Effect; Assignment. This Agreement shall be binding upon the
parties' respective successors and permitted assigns. Neither party
may assign this Agreement or any of its rights or obligations
hereunder without the prior written consent of the other party (not
to be unreasonably withheld), and any such attempted assignment shall
be void; provided, that ABSC and XENO may assign this Agreement as
part of a merger or consolidation in which the surviving entity
assumes all of ABSC's and XENO's rights and obligations hereunder or
a sale of substantially all of the assets of such party to which this
Agreement relates. The parties agree that in the event of the
termination of the Harvard License Agreement, the President and
Fellows of Harvard College shall have the option of assigning this
Agreement to it or terminating the licenses in Sections 2.1.2 and
2.1.3.2 together with the related obligations of ABSC under Sections
3.1.1 and 3.1.2.
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8.2. Effect of Waiver. No waiver of any default, condition, provisions or
breach of this Agreement shall be deemed to imply or constitute a
waiver of any other like default, condition, provision or breach of
this Agreement.
8.3. Limitation of Liability. NEITHER PARTY SHALL BE LIABLE TO THE OTHER
FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTIAL, OR INDIRECT DAMAGES
ARISING OUT OF THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF
LIABILITY.
8.4. Indemnification. ABSC will defend, indemnify and hold XENO, its
officers, directors, employees, Affiliates and agents harmless against
any and all liability, loss, damage, claim or expense (including
attorney's fees) arising out of a suit by a Third Party from the
performance under this Agreement by ABSC; except to the extent such
claim is caused by the negligence or willful misconduct of XENO or a
breach of a representation of XENO. XENO will defend, indemnify and
hold ABSC, its officers, directors, employees, Affiliates and agents
harmless against any and all liability, loss, damage, claim or expense
(including attorney's fees) arising out of a suit by a Third Party
from the performance under this Agreement by XENO; except to the
extent such claim is caused by the negligence or willful misconduct of
ABSC or a breach of a representation of ABSC.
8.5. Diligence. ABSC agrees to use reasonable efforts to fulfill the
obligations of the express due diligence provision of the Harvard
License Agreement as it applies to a sublicense under the Harvard
License Agreement.
8.6. Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment
obligations) on account of failure of performance by the defaulting
party if the failure is occasioned by war, strike, fire, act of
God(s), earthquake, flood , lockout, embargo, governmental acts or
orders or restrictions, failure of suppliers, or any other reason
where failure to perform is beyond the reasonable control and not
caused by the negligence or intentional conduct or misconduct of the
nonperforming party, and such party has exerted all reasonable efforts
to avoid or remedy such force majeure; provided, however, that in no
event shall a party be required to settle any labor dispute or
disturbance.
8.7. Amendment. No modification, supplement to or waiver of this Agreement
or any Addendum hereto or any of their provisions shall be binding
upon a party hereto unless made in writing and duly signed by an
authorized representative of both XENO and
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ABSC. In no event may the terms of this Agreement be changed, deleted,
supplemented or waived by any notice, purchase order, receipt,
acceptance, xxxx of lading or other similar form of document. A
failure of either party to exercise any right or remedy hereunder, in
whole or in part, or on one or more occasions, shall not be deemed
either a waiver of such right or remedy to the extent not exercised,
or of any other right or remedy, on such occasion or a waiver of any
right or remedy on any succeeding occasion.
8.8. Entire Agreement. This Agreement, and each Exhibit attached hereto,
and each supplemental written agreement contemplated hereunder, sets
forth the entire understanding and agreement of the parties as to the
subject matter thereof, and there are no other understandings,
representations or promises, written or verbal, not set forth herein
or on which either party has relied. If any provisions of any such
Addendum or supplemental written agreement conflict with any
provisions set forth in this Agreement, the provisions of this
Agreement shall take precedence, unless such Addendum or supplemental
written agreement expressly refers to the specific provision(s) of
this Agreement that it is intended to replace or modify (and which
shall be limited in force and effect to such Addendum or supplemental
written agreement only).
8.9. Notices. All Notices under this Agreement shall be given in writing
and shall be addressed to the parties at the following addresses:
For XENO:
Xxxxxxx X. Xxxxxxxx
CEO, President and Director
Xenometrix, Inc.
0000 Xxxxx 00xx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
Copies to:
Xxxx X. Xxxxxxxxxx
Vice President, Legal Affairs and Corporate Secretary
Xenometrix, Inc.
0000 Xxxxx 00xx Xxxxxx
Xxxxxxx, Xxxxxxxx 00000-0000
For ABSC:
Xxxx X. Xxxxxxx
Senior Vice President, Corporate Development
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
Copies to:
Xxxx X. Xxxxxxxx, Ph.D., X.X.
Vice President, Intellectual Property and Senior Legal Counsel
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
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Notices shall be in writing and shall be deemed delivered when
received, if delivered by a courier, or on the second business day
following mailing, if sent by first-class certified or registered mail,
postage prepaid.
8.10. Arbitration. The parties recognize that disputes as to certain
matters may from time to time arise during the term of this Agreement
which relate to either party's rights and/or obligations hereunder. It
is the objective of the parties to establish procedures to facilitate
the resolution of disputes arising under this Agreement in an
expedient manner by mutual cooperation and without resort to
arbitration. The parties agree that prior to any arbitration
concerning this Agreement, XENO's CEO and ABSC's president will meet
in person or by video-conferencing in a good faith effort to resolve
any disputes concerning this Agreement. Within thirty (30) days of a
formal request by either party to the other, any party may, by written
notice to the other, have such dispute referred to their respective
officers designated or their successors, for attempted resolution by
good faith negotiations, such good faith negotiations to begin within
thirty (30) days after such notice is received. Except as otherwise
provided specifically herein, any controversy or claim under this
Agreement shall be solely settled by arbitration by one arbitrator
pursuant to the Commercial Arbitration Rules of the American
Arbitration Association (the "Association"); provided that the parties
shall first use their best efforts to resolve such dispute by
negotiation. The arbitration shall be conducted in San Diego,
California, if requested by XENO or in Boulder, Colorado if requested
by ABSC. The arbitrator shall be selected by the joint agreement of
the parties, but if they do not so agree within twenty (20) days of
the date of a request for arbitration, the selection shall be made
pursuant to the rules of the Association. The decision reached by the
arbitrator shall be conclusive and binding upon the parties hereto and
may be filed with the clerk of any court of competent jurisdiction,
and a judgment confirming such decision may, if desired by any party
to the arbitration, be entered in such court. Each of the parties
shall pay its own expenses of arbitration and the expenses of the
arbitrator(s) shall be equally shared; provided, however, that if in
the opinion of the arbitrator(s) any claim hereunder or any
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defense or objection thereto was unreasonable, the arbitrator(s) may
assess, as part of the award, all or any part of the arbitration
expenses (including reasonable attorneys' fees) against the party
raising such unreasonable claim, defense or objection. Nothing herein
set forth shall prevent the parties from settling any dispute by
mutual agreement at any time.
8.11. Governing Law. If an arbitration is requested by XENO this Agreement
shall be governed by and construed in accordance with the laws of the
State of California, without regard or giving effect to its principles
of conflict of laws. If an arbitration is requested by ABSC this
Agreement shall be governed by and construed in accordance with the
laws of the State of Colorado, without regard or giving effect to its
principles of conflict of laws.
8.12. Severability and Survival. This Agreement is intended to be
severable. If any provision(s) of this Agreement are or become
invalid, are ruled illegal by a court of competent jurisdiction or are
deemed unenforceable under the current applicable law from time to
time in effect during the term hereof, it is the intention of the
parties that the remainder of the Agreement shall not be affected
thereby and shall continue to be construed to the maximum extent
permitted by law at such time. It is further the intention of the
parties that in lieu of each such provision which is invalid, illegal,
or unenforceable, there shall be substituted or added as part of this
Agreement by such court of competent jurisdiction a provision which
shall be as similar as possible, in economic and business objectives
as intended by the parties to such invalid, illegal or unenforceable
provision, but shall be valid, legal and enforceable. Unless expressly
stated otherwise, the provision of Sections 1, 2, 4, 5, 6, 7 and 8 and
any other provision intended by its meaning to survive, will survive
the expiration or any other termination of this Agreement.
8.13. Independent Contractors. The parties hereto are acting as independent
contractors and shall not be considered partners, joint venturers or
agents of the other. Neither shall have the right to act on behalf of,
or to bind, the other.
8.14. Headings. Captions and paragraph headings are for convenience only
and shall not form an interpretative part of this Agreement. Unless
otherwise specifically provided, all references to an Article
incorporate all Articles or subsections thereunder. This Agreement
shall not be strictly construed against either party hereto and maybe
executed in two or more counterparts, each of which will be deemed an
original and the same instrument. This Agreement will not be
enforceable and shall have no effect if this Agreement is not executed
by XENO on or before April 17, 1998.
15
16
IN WITNESS WHEREOF, the parties have executed this Agreement.
By: /s/ Xxxxxxx X. Xxxxxxxx Date: 4/17/98
------------------------------------ -------
Xxxxxxx X. Xxxxxxxx, M.B.A.
CEO and President
For Xenometrix, Inc.
By: /s/ Xxxxxxx X. Xxxx Date: 4/16/98
------------------------------------ -------
Xxxxxxx X. Xxxx M.D., Sc.D.
President, CEO and Chairman
For Aurora Biosciences Corporation
16
17
EXHIBIT A
===========================================================================================================
EUKARYOTIC GENE PROFILING
===========================================================================================================
PATENT/
APPLICATION # FILING DATE COUNTRY ISSUE DATE TITLE
------------------- ----------- --------- ---------- -------------------------------------
08/008,896 1/21/93 US
------------------- ----------- --------- ---------- -------------------------------------
08/374,641 7/21/95 US (Allowed). Methods and Diagnostic Kits Utilizing
Mammalian Stress Promoters to
Determine Toxicity of a Compound
------------------- ----------- --------- ---------- -------------------------------------
61243/94 1/21/94 Australia
------------------- ----------- --------- ---------- -------------------------------------
2154265 1/21/94 Canada
------------------- ----------- --------- ---------- -------------------------------------
0 680 517 1/21/94 EPC 11/12/97
------------------- ----------- --------- ---------- -------------------------------------
6-517147 1/21/94 Japan
------------------- ----------- --------- ---------- -------------------------------------
9601405-5 2/13/96 Singapore
------------------- ----------- --------- ---------- -------------------------------------
US94/00583 1/21/94 PCT
------------------- ----------- --------- ---------- -------------------------------------
694 06 772.5-08 Germany 11/25/97
===========================================================================================================
=============================================================================================================
BACTERIAL GENE PROFILING
=============================================================================================================
PATENT/
APPLICATION # FILING DATE COUNTRY ISSUE DATE TITLE
------------------- ----------- --------- ---------- ----------------------------------------
5,589,337 1/6/95 US 12/31/96 Methods and Diagnostic Kits for
Determining Toxicity Utilizing Bacterial
Stress Promoters Fused to Report Genes
------------------- ----------- --------- ---------- ----------------------------------------
651825 7/6/93 EPO 1/14/98
------------------- ----------- --------- ---------- ----------------------------------------
5,585,232 4/21/94 US 12/17/96 Methods and Diagnostics Kits for
Determining Toxicity Utilizing E. coli
Stress Promoters Fused to Reporter Genes
------------------- ----------- --------- ---------- ----------------------------------------
9601688-6 2/14/96 Singapore
------------------- ----------- --------- ---------- ----------------------------------------
2,139,667 7/9/93 Canada
------------------- ----------- --------- ---------- ----------------------------------------
6-503562 7/6/93 Japan
------------------- ----------- --------- ---------- ----------------------------------------
95-700038 7/6/93 Korea
------------------- ----------- --------- ---------- ----------------------------------------
07/910793 7/6/92 US
------------------- ----------- --------- ---------- ----------------------------------------
45884/93 7/6/93 Australia
------------------- ----------- --------- ---------- ----------------------------------------
95.004 7/6/93 Norway
=============================================================================================================
17
