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EXHIBIT 10.20
[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.]
SETTLEMENT AND LICENSE AGREEMENT &
AGREEMENT OF DISMISSAL WITH PREJUDICE
THIS SETTLEMENT AND LICENSE AGREEMENT & AGREEMENT OF DISMISSAL WITH
PREJUDICE ("Agreement") is made as of September 6, 1996 ("Effective Date"), by
and between Biosite Diagnostics, Inc., a Delaware corporation, having an office
and principal place of business at 00000 Xxxxxxx Xxxxxx, Xxx Xxxxx, Xxxxxxxxxx
00000 ("Biosite") and Xxxxxx Laboratories, an Illinois corporation, having an
office and principal place of business at 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx,
Xxxxxxxx 00000 ("Abbott").
WHEREAS, on May 5, 1994, Abbott filed a patent infringement suit
against Biosite in the United States District Court for the Northern District of
Illinois, with respect to United States Patent No. 5,073,484 (Case No. 94 C
2808);
WHEREAS, Biosite and Abbott wish to resolve the issues relating to such
action.
NOW, THEREFORE, in consideration of the mutual promises and obligations
set forth herein, Abbott and Biosite agree as follows;
ARTICLE I - DEFINITIONS
For purposes of this Agreement, the following definitions shall apply:
1.01 The term "Action" means the action presently pending in the
United States District Court for the Northern District of Illinois, Xxxxxx
Laboratories v. Biosite Diagnostics, Inc., bearing the Case Number 94 C 2808.
1.02 The term "Affiliate" means with respect to a party, any other
business entity which directly or indirectly controls, is controlled by, or is
under common control with, such party. A business entity or party shall be
regarded as in control of another business entity if it owns, or directly or
indirectly controls, more than fifty percent (50%) of the voting stock or other
ownership interest of the other business entity.
1.03 The term "Combination Product" means a Product that is sold in
combination with one or more other products which have commercial utility other
than use in combination with a Product.
1.04 The term "DOA Diagnostics Field" means the following field:
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
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1.05 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field" means the following field: [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
1.06 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field" means the following field: [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
1.07 The term "Net Sales" means:
(A) the gross invoiced price for all Products sold or otherwise
transferred for tangible value by Biosite or its Affiliates or its sublicensees
(to the extent authorized under this Agreement) in arm's length transactions to
unrelated third parties for monetary or other valuable consideration, less
deductions for:
(i) quantity, trade and cash discounts or rebates, credits
or allowances and adjustments separately and actually credited to customers for
rejections and returns of Products;
(ii) charges for freight, postage, transportation, import
or export taxes, excise taxes and other similar taxes, insurance and other
delivery costs not otherwise charged to the customer; and
(iii) any tax or other government charges imposed on the
sale or use of Products (other than income tax) levied on its sale,
transportation or delivery and borne by Biosite or its Affiliates or its
sublicensees (to the extent authorized under this Agreement).
(B) With respect to Combination Products, the gross invoiced
price of such Combination Products billed to customers by Biosite or its
Affiliates or its sublicensees (to the extent authorized under this Agreement),
less: the allowances and adjustment referred to in subparagraph (A) above,
multiplied by a fraction the numerator of which shall be the gross selling price
of the Product as sold separately and the denominator of which shall be the sum
of the gross selling price(s) of each of the other products having commercial
utility in the Combination Product including the Product. If there is no
established current gross selling price for the Product or for other products
having commercial utility, then for purposes of calculating Net Sales the
standard costs in accordance with Generally Accepted Accounting Principles
("GAAP") of manufacturing of the Product with the other products having
commercial utility shall be used to determine the percentage of sales
attributable to Product.
(C) In the event that a Product sold by Biosite or its
Affiliates or its sublicensees (to the extent authorized under this Agreement)
is increased in price to include an amount to cover the amortized cost of an
instrument system and/or other equipment supplied to a customer by Biosite or
its Affiliates under a Reagent Agreement Plan, Reagent Rental Plan, or other
successor or similar plan (collectively referred to herein as "RAP"), the
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Net Sales for such Product on which royalty shall be calculated shall be
determined by reducing the total Net Sales of such Product (including the total
of sale of Product and instrument system RAP) by the amount of the price
increase attributable to RAP, in accordance with accounting procedures
consistent with GAAP, provided the minimum amount attributable to the Net Sales
of the Product shall be no less than the per unit current retail selling price
of the Product as sold alone to non-RAP customers.
1.08 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field" means the following field: [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION], excluding the DOA
Diagnostics Field.
1.09 The term "Patents" means (A) U.S. Patent No. 5,073,484 and
equivalent foreign patents or patent applications, as set forth in the attached
Exhibit A, and (B) all divisions, continuations, continuations-in-part,
reexaminations, reissues, additions, renewals and extensions of such patents.
1.10 The term "Product" means any rapid immunoassay devices (including
but not limited to those using the Triage(R) platform) which are manufactured
and sold by Biosite or its Affiliates or its sublicensees (to the extent
authorized under this Agreement) on the Effective Date or thereafter, and which
fall within the scope of the claims of any of the Patents or would infringe the
claims of any of the Patents but for the licenses granted under Section 3.01.
1.11 The term "Valid Claim" shall mean a claim of an issued and
unexpired Patent which neither has been held unenforceable or invalid by a
decision of a court or governmental agency of competent jurisdiction,
unappealable or unappealed within the time allowed for appeal, nor has been
admitted by the holder of the Patent to be invalid or unenforceable through
reissue, reexamination, disclaimer, abandonment or otherwise.
1.12 The term "[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field" means the following field: [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
ARTICLE II - RELEASE AND CONCLUSION OF CONTROVERSIES
2.01 As of the Effective Date, Abbott releases and forever discharges
Biosite and its Affiliates, and their respective agents, attorneys, directors,
officers and employees, from any and all claims and demands whatsoever in law
and equity, whether now known or unknown, arising from any infringement or
alleged infringement of one or more claim of any Patents by Biosite or its
Affiliates occurring prior to the Effective Date or arising out of or relating
to the Action or any claims or allegations asserted in the Action, except to the
extent any such claims and demands relate to the manufacture, sale or use of
Products in the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] Field after the Effective Date.
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2.02 As of the Effective Date, Biosite releases and forever discharges
Abbott and its Affiliates, and their respective agents, attorneys, directors,
officers and employees, from any and all claims and demands whatsoever in law
and equity, whether now known or unknown, arising out of or relating to the
Action or any claims or allegations asserted in the Action.
2.03 The parties shall enter into and promptly submit to the United
States District Court for the Northern District of Illinois ("Court") a Joint
Stipulation and Order of Dismissal in the form attached as Exhibit B. The
parties shall take all necessary steps to secure the entry of the Joint
Stipulation and Order of Dismissal. The Action will be finally terminated by the
entry of the Joint Stipulation and Order of Dismissal and no appeal shall be
taken by any party from such Order. This Agreement shall not be filed with the
Court.
2.04 Abbott and Biosite each expressly waives any right or claim it may
have to recover from the other party court costs or attorneys' fees arising from
or in connection with the Action.
2.05 The Protective Order entered in the Action, a copy of which is
attached as Exhibit C, shall remain in full force and effect indefinitely, and
Biosite and Abbott each shall continue to comply with its terms upon the
termination of the Action.
ARTICLE III - LICENSE GRANT
3.01 (A) Upon the date of receipt by Abbott of the sum set forth in
Section 4.01 hereof, Abbott, as of the Effective Date, grants to Biosite and its
Affiliates a fully paid-up, worldwide, non-exclusive license under the Patents,
to make, have made, use, import, offer to sell, sell and have sold Products in
the DOA Diagnostics Field, subject to the terms of Articles VI and VII hereof.
(B) As of the Effective Date, Abbott also grants to Biosite and
its Affiliates a royalty-bearing (at the rate specified in Section 4.03),
worldwide, non-exclusive license under the Patents to make, have made, use,
import, offer to sell, sell and have sold Products in the [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Field, subject to the terms
of Articles VI and VII hereof,
(C) As of the Effective Date, Abbott also grants to Biosite and
its Affiliates a royalty-bearing (at the rate specified in Section 4.04),
worldwide, non-exclusive license under the Patents to make, have made, use,
import, offer to sell, sell and have sold Products in the [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Field and the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Field, subject to
the terms of Articles VI and VII hereof.
(D) Biosite and its Affiliates [CONFIDENTIAL MATERIAL REDACTED AND
FILED SEPARATELY WITH THE COMMISSION] under the licenses granted pursuant to
Section 3.01(A), (B) or (C), except as provided in Section 3.01(E) and (F)
below.
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(E) Biosite and its Affiliates shall have the right to grant
sublicenses [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] to one or more third parties under the licenses granted pursuant to
Section 3.01(A), (B) and (C), only if all of the following requirements are met
for each such sublicense:
(i) Such sublicense shall be granted [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
(ii) Such sublicense shall be [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION]
(iii) Such sublicense shall be royalty-bearing in all fields,
with the following royalties being payable to Abbott based on the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] at the following
rates: (a) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] of Net Sales in the DOA Diagnostics Field and the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Field, and (b)
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] of Net
Sales in the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] Field and the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field. Such royalty shall be payable in such countries in
the world in which a Valid Claim exists for as long as a Valid Claim exists in
such countries.
(F) Under the scope of the licenses granted pursuant to Section
3.01 (A), (B) and (C) (and without the necessity of granting sublicenses to any
third party), Biosite, its Affiliates and its sublicensees (to the extent
authorized under this Agreement) [CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION].
3.02 Biosite and its Affiliates shall not, except as may be required by
law or an order of a court or governmental agency, file, permit to be filed on
their behalf, cooperate with or assist any other party in the filing or taking
of any action before any court or governmental agency to [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
3.03 Abbott hereby covenants that it will not, and it will cause its
Affiliates not to, file, permit to be filed on their behalf, or take any action
to [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
3.04 No license or any other right is granted by implication or
otherwise with respect to any patent application or patent except as
specifically set forth herein. For the avoidance of doubt, no license is being
granted hereunder in the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION] Field.
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ARTICLE IV - PAYMENTS RECORD KEEPING AND REPORTS
4.01 Biosite shall pay to Abbott the amount of Five Million Five
Hundred Thousand U.S. Dollars ($5,500,000) within three (3) business days
following the date of the entry of the Dismissal With Prejudice, by
electronically transferring such funds to the following Abbott bank account:
City Bank of New York
(for Xxxxxx Laboratories)
ABA #[CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION]
Account #[CONFIDENTIAL MATERIAL REDACTED AND FILED
SEPARATELY WITH THE COMMISSION]
Such payment shall be allocated as follows: (A) Two Million U.S. Dollars
($2,000,000) shall be a payment for Xxxxxx'x settlement of the Action and (B)
Three Million Five Hundred Thousand U.S. Dollars ($3,500,000) shall be a payment
for Xxxxxx'x license grant pursuant to Section 3.01(A).
4.02 If any of the Patents are held invalid or unenforceable by a court
of competent jurisdiction or any other governmental agency, bureau, commission,
authority or body, [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]
4.03 In consideration of Xxxxxx'x license grant pursuant to Section
3.01(B), Biosite shall pay Abbott a royalty of [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] of Biosite's Net Sales of Products in
the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Field. Such royalty shall be payable in such countries in the world in which a
Valid Claim exists for as long as a Valid Claim exists in such countries.
4.04 In consideration of Xxxxxx'x license grant pursuant to Section
3.01(C), Biosite shall pay Abbott a royalty of [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] of Biosite's Net Sales of Products in
the [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
Field and [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION] Field. Such royalty shall be payable in such countries in the world
in which a Valid Claim exists for as long as a Valid Claim exists in such
countries.
4.05 Royalty shall be payable only once with respect to the same unit
of Product irrespective of the number of Valid Claims covering such unit of
Product.
4.06 All royalties due to Abbott hereunder shall be paid in United
States Dollars. Biosite shall be responsible for making the payment to Abbott
which payment shall be made by check or wire transfer, at Biosite's discretion.
In the event that any Product is sold in a
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currency other than United States Dollars, the Net Sales of such Product for the
reporting period shall be converted (for the purpose of calculation of such
royalty) into its equivalent dollar value using standard Biosite financial
report procedures and conversion methodology, which shall be consistent with
GAAP. The royalty shall be paid in United States Dollars based on local sales
converted to United States Dollars. The Biosite conversion methodology for sales
shall be based on monthly averages (end of prior month spot rate plus end of
current month spot rate divided by two) using central bank fixing rates (such as
that in effect at the Chase Manhattan Bank) in countries where available and
open market rates otherwise.
4.07 Biosite shall keep and maintain full, true and accurate books of
account containing all particulars that may be necessary, for the purpose of
showing the amounts payable hereunder to Abbott. The books of account shall be
kept at Biosite's principal place of business. The books of account and the
supporting data shall be open once per year during the term of this Agreement at
reasonable times during normal business hours, for two (2) years following the
end of the calendar year to which they pertain, to the inspection of Abbott or
its representatives for the sole purpose of verifying Biosite royalty statement
or compliance in other respects with this Agreement. The costs and expenses
relating to such inspection shall be borne by Abbott. In the event that Biosite
royalties calculated for any semi-annual period are in error by greater than
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] for
the period of time covered by the inspection, Biosite shall bear the reasonable
costs of any audit and review initiated by Abbott.
4.08 Biosite, [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION], shall deliver to Abbott true and accurate reports, giving such
particulars of the business conducted by Biosite during the preceding six-month
period under this Agreement as shall be pertinent to a royalty accounting
hereunder. These shall include at least the following:
(A) number of Products manufactured and sold;
(B) total xxxxxxxx for Products manufactured, used and sold;
(C) deductions applicable as provided in Section 1.07 (Net Sales);
and
(D) total royalty due.
4.09 With each such report set forth in Section 4.08 submitted to
Abbott, Biosite shall pay to Abbott royalty due and payable under this
Agreement. If no royalty shall be due, Biosite shall so report.
4.10 The royalty payments set forth in this Agreement shall, if
overdue, bear interest until payment at a per annum rate of One Percent (1%)
above the prime rate in effect at Chase Manhattan Bank (N.A.) from the due date.
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ARTICLE V - ALTERNATE DISPUTE RESOLUTION
The parties recognize that a bona fide dispute as to certain matters
relating to either party's or their Affiliates' rights and obligations under
this Agreement may from time to time arise. In the event of the occurrence of
such a dispute, either party may, by written notice to the other party, have
such dispute referred to their respective officers designated below or their
successors, for attempted resolution by good faith negotiations within
twenty-eight (28) days after such notice is made as provided under Article X of
this Agreement. Said designated officers are as follows:
FOR ABBOTT: President, Diagnostics Division, or his designee.
FOR BIOSITE: President and Chief Executive Officer, or his designee.
In the event the designated officers are not able to resolve such
dispute within such twenty-eight (28) day period, or any agreed extension
thereof, either party may invoke binding Alterative Dispute Resolution (ADR) in
accordance with the attached Exhibit D.
ARTICLE VI - TERMINATION
6.01 This Agreement, unless earlier terminated as hereinafter provided,
shall expire upon [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]
6.02 In the event Biosite fails to pay the amount due Abbott under
Section 4.01 within the period of time provided therein, Abbott may terminate
this Agreement if such amount is not paid within ten (10) days following written
notice thereof to Biosite.
6.03 In the event Biosite breaches its obligations under Section 3.02,
Abbott may terminate this Agreement immediately upon written notice to Biosite.
6.04 In the event either party files or otherwise becomes subject to
bankruptcy or insolvency proceedings, the other party may terminate this
Agreement immediately upon written notice to the party filing or otherwise
becoming subject to bankruptcy or insolvency proceedings.
6.05 In the event Biosite has not made at least one commercial sale to
an unaffiliated third party of a Product in the [CONFIDENTIAL MATERIAL REDACTED
AND FILED SEPARATELY WITH THE COMMISSION] Field and/or the [CONFIDENTIAL
MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION] Field on or before
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE COMMISSION],
Biosite's license under Section 3.01(C) in any such fields shall automatically
terminate.
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6.06 The following provisions shall survive termination or expiration
of this Agreement: Sections 2.01, 2.02, 2.03, 2.04, 2.05, 3.04, 14.01 and 14.02.
ARTICLE VII - ASSIGNABILITY
Neither this Agreement nor the license herein granted to Biosite shall
be assignable or otherwise transferable by Biosite [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION]
(A) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]
(B) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]
(i) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION]; and
(ii) [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY
WITH THE COMMISSION].
ARTICLE VIII - WARRANTIES
8.01 Abbott represents and warrants to Biosite that:
(A) Abbott has the full right, power and authority to grant the
licenses to Biosite as set forth in Section 3.01 of this Agreement;
(B) this Agreement has been duly authorized, executed and
delivered by Abbott and constitutes a valid, binding and legally enforceable
agreement of Abbott;
(C) the execution and delivery of this Agreement and the
performance by Abbott of its covenants and agreements herein contained,
including the grant of the license to Biosite, are not restricted by and are not
in conflict with, any agreement binding on Abbott or any of its Affiliates;
(D) to the best of Xxxxxx'x knowledge, no claim in the Patents has
been held invalid; and
(E) other than the Action and the proceedings referenced in the
attached Exhibit E, to the best of Xxxxxx'x knowledge, there are not any legal
proceedings pending challenging the validity or enforceability of any Patents.
8.02 Biosite represents and warrants to Abbott that:
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(A) this Agreement has been duly authorized, executed and
delivered by Biosite and constitutes a valid, binding and legally enforceable
agreement of Biosite; and
(B) the execution and delivery of this Agreement and the
performance by Biosite of its covenants and agreements herein contained are not
restricted by and are not in conflict with, any agreement binding on Biosite or
any of its Affiliates.
ARTICLE IX - APPLICABLE LAW
This Agreement is acknowledged to have been made in and shall be
construed in accordance with the laws of the State of New York, U.S.A.; provided
that all questions concerning the construction or effect of the Patents shall be
decided in accordance with the laws of the country in which the particular
Patents have been filed or granted, as the case may be.
ARTICLE X - NOTICES
Services of all notices hereunder shall be in writing and shall be made
by courier, U.S. Mail, or by facsimile transmission (followed by courier or U.S.
Mail delivery), to the addresses below, and the effective date of giving of such
notices shall be the date on which such notice is actually received by the
recipient. Notices shall be addressed as follows:
If to Abbott:
Director, Technology Acquisition
Xxxxxx Laboratories
D-9RK, AP6C
000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
With a copy to:
General Counsel
Xxxxxx Xxxxxxxxxxxx
X-000, XX0X
000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, Xxxxxxxx 00000-0000
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If to Biosite:
Xx. Xxx Xxxxxxxxxxxx
President and CEO
Biosite Diagnostics, Inc.
00000 Xxxxxxx Xxxxxx
Xxx Xxxxx, Xxxxxxxxxx 00000
With a copy to:
Xxxxxx X. Xxxxxx, Xx., Esq.
Xxxxxxxxx Madison & Sutro LLP
000 Xxxxxxxxxx Xxxxxx
Xxx Xxxxxxxxx, Xxxxxxxxxx 00000
or to any other such address as may from time to time be designated by the
receiving party.
ARTICLE XI - ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties
concerning the subject matter hereof and supersedes any written or oral prior
agreements or understandings with respect thereto.
ARTICLE XII - WAIVER AND MODIFICATION
No variation or modifications of any of the terms or provisions of this
Agreement shall be valid unless in writing and signed by an authorized
representative of both parties hereto. Failure by either party to enforce any
rights under this Agreement shall not be construed as a waiver of such rights
nor shall a waiver by either party in one or more instances be construed as
constituting a continuing waiver or as a waiver in other instances.
ARTICLE XIII - HEADINGS
The headings contained in this Agreement are for convenience and
reference purposes only and shall not affect the meaning or interpretation of
this Agreement
ARTICLE XIV - CONFIDENTIALITY AND PUBLICITY
14.01 The existence of this Agreement and the terms thereof shall
remain confidential. None of the parties shall disclose to or discuss in any
manner with any third party the terms of this Agreement, or any other aspect of
the Action or their respective claims therein, except as provided in Section
14.02.
14.02 Unless mutually agreed upon by the parties, no party, including
its agents, attorneys, directors, officers, employees and Affiliates, shall
originate nor participate in any publicity, news release or other public
statement or announcement, written or oral, whether to
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the public, press, to stockholders or otherwise, relating to the subject matter
of this Action or issues raised during the Action or this Agreement, to any
amendment hereto or to performance hereunder, save only such announcement as in
the opinion of legal counsel to the party making such announcement is required
by applicable laws or regulations to be made. At least fifteen (15) business
days prior to such announcement, to the maximum extent practicable, the party
making such announcement shall give the other party an opportunity to review and
comment on the form of the announcement, and the party making such announcement
shall give due consideration to the other party's comments. To the extent giving
fifteen (15) business days notice is not practicable, the party making such
announcement shall use its best efforts to give the other party as much time as
possible in advance of such announcement to review and comment on the form of
the announcement.
ARTICLE XV - SEVERABILITY
If any provision of this Agreement shall hereafter be held to be
invalid or unenforceable for any reason, that provision shall be reformed to the
maximum extent permitted to preserve the parties' original intent, failing
which, it shall be severed from this Agreement with the balance of the Agreement
continuing in full force and effect, unless a party would thereby be deprived of
a substantial portion of its consideration. Such occurrence shall not have the
effect of rendering the provision in question invalid in any other jurisdiction
or in any other case or circumstance, or of rendering invalid any other
provisions contained herein to the extent that such other provisions are not
themselves actually in conflict with any applicable law.
ARTICLE XVI - COUNTERPARTS
This Agreement may be executed in counterparts, each of which shall be
deemed an original.
IN WITNESS WHEREOF, the parties have executed this Agreement to be
effective as of the Effective Date.
XXXXXX LABORATORIES BIOSITE DIAGNOSTICS, INC.
By: /s/ Miles X. Xxxxx By: /s/ Xxx X. Xxxxxxxxxxxx
---------------------------------- -----------------------------------
Title: SVP - President ADD Title: President & CEO
------------------------------- --------------------------------
Date: 9/6/96 Date: September 6, 1996
-------------------------------- ---------------------------------
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EXHIBIT A
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION]PATENTS
COUNTRY PATENT/APPLICATION STATUS
NUMBER
Australia 560,552 Issued 4/9/87
Brazil 8,301,191 Issued 11/22/83
Canada 1,206,878 Issued 7/1/86
EPO Pub. No. 088,636 Granted 8/28/91
(Nationalized in:
Belgium, Germany,
France, United
Kingdom, Italy,
Luxembourg,
Netherlands, Sweden)
India 157,435 Issued 3/29/86
Israel 68,082 Issued 12/31/86
[CONFIDENTIAL [CONFIDENTIAL [CONFIDENTIAL
MATERIAL REDACTED MATERIAL REDACTED MATERIAL REDACTED
AND FILED AND FILED AND FILED
SEPARATELY WITH THE SEPARATELY WITH SEPARATELY WITH THE
COMMISSION] THE COMMISSION] COMMISSION]
South Africa 83/1617 Issued 3/28/84
United States 5,073,484 Issued 12/17/91
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EXHIBIT E
PENDING LEGAL PROCEEDINGS INVOLVING
PATENT NO. 5,073,484
1. [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION] is involved in an interference with [CONFIDENTIAL MATERIAL
REDACTED AND FILED SEPARATELY WITH THE COMMISSION] assigned to
[CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH THE
COMMISSION].
2. [CONFIDENTIAL MATERIAL REDACTED AND FILED SEPARATELY WITH
THE COMMISSION] has been opposed by two parties. At this time, Xxxxxx has not
received any documents relating to the opposition.
