EXECUTION COPY
TERMINATION AGREEMENT
THIS TERMINATION AGREEMENT (this "Agreement"), dated this *** ("Termination
Date"), is by and between AURORA BIOSCIENCES CORPORATION ("Aurora"), a
Delaware Corporation with principal offices at 00000 Xxxxxxxxx Xxxx, Xxx
Xxxxx, XX 00000 and PACKARD INSTRUMENT COMPANY ("Packard"), a Delaware
Corporation with principal offices at 000 Xxxxxxxx Xxxxxxx, Xxxxxxx, XX
00000. Aurora and Packard together are sometimes referred to herein as, the
"Parties."
RECITALS
A. Aurora and Packard are parties to the Collaboration Agreement, the Supply
Agreement and the FluoroCount Agreement (each as defined herein).
B. Aurora and Packard have each determined that it is in their mutual best
interests to terminate the FluoroCount Agreement, the Collaboration
Agreement and the Supply Agreement, subject to the terms and conditions
contained in this Agreement.
AGREEMENT
NOW, THEREFORE, in consideration of the promises contained herein, and other
good and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Aurora and Packard agree as follows:
1. DEFINITIONS.
1.1 "Collaboration Agreement" means that certain Collaboration and License
Agreement, dated April 24, 1996, by and between Aurora and Packard, as amended
by the Collaboration Agreement Amendment.
1.2 "Collaboration Agreement Amendment" means that certain Amendment to the
Collaboration and License Agreement, dated February 7, 1998, by and between
Aurora and Packard.
1.3 "Delivered Instruments" means those instruments set forth in Exhibit A.
1.4 "Detector Components" means the ***.
1.5 The "FluoroCount Agreement" means the Packard-Aurora FluoroCount R&D
Agreement, dated November 6, 1996, by and between Aurora and Packard.
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1.6 "Instruments" means ***.
1.7 "Supply Agreement" means that certain Packard Aurora Supply Agreement,
dated February 7, 1998, by and between Aurora and Packard.
1.8 ***.
1.9 ***
1.10 "*** Patent Rights" means the patents and patent applications listed on
Exhibit C hereto, any patent applications filed prior or subsequent to the
Termination Date that claim the benefit of an earlier filing date to any of the
patent applications listed in Exhibit C, 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.
All capitalized terms used herein, and not otherwise defined, shall have the
meaning given to such terms in the Collaboration Agreement or the Supply
Agreement.
2. TERMINATION.
2.1 Aurora and Packard have each determined that it is in their mutual best
interests to terminate the FluoroCount Agreement, the Collaboration Agreement
and the Supply Agreement. Subject to the terms and conditions set forth herein,
and except as otherwise provided herein, Aurora and Packard hereby terminate the
FluoroCount Agreement, the Collaboration Agreement and the Supply Agreement,
effective as of the Termination Date, and hereby release each other from any and
all continuing liabilities, obligations, covenants and restrictions contained
therein, whether arising prior to or after the Termination Date, and each of the
Parties will obligate their respective AFFILIATES to release the other Party
from the same.
2.2 Except as expressly provided herein, no provisions of the FluoroCount
Agreement, the Collaboration Agreement or the Supply Agreement shall survive the
termination of each agreement pursuant to Section 2.1 herein. The confidential
information provisions of Article XI of the Collaboration Agreement and Article
12 of the Supply Agreement shall survive as intended in accordance with each
such agreement and this Agreement.
2.3 Each Party hereby agrees to consider and treat the other Party and its
AFFILIATES as standard customers for its commercial activities, including the
ordering, delivering, marketing, pricing or servicing of products subsequent to
the Termination Date and not subject the other Party to delays or difficulties
in ordering, purchasing, delivering or servicing of products that are not
customary business practice. Each Party will obligate its respective AFFILIATES
to do the same.
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3. ***.
3.1 Except as otherwise provided for herein:
3.1.1 Packard and its AFFILIATES hereby ***and their respective
shareholders, officers, directors, employees, agents, successors and
assigns, from any and all actions, causes of action, debts, sums of
money, damages, judgments, obligations, claims and demands whatsoever,
whether or not presently known, and whether or not presently capable
of being known, which have been, could have been, or may in the future
be, asserted against ***; and
3.1.2. Aurora and its AFFILIATES hereby ***and their respective
shareholders, officers, directors, employees, agents, successors and
assigns, from any and all actions, causes of action, debts, sums of
money, damages, judgments, obligations, claims and demands whatsoever,
whether or not presently known, and whether or not presently capable
of being known, which have been, could have been, or may in the future
be, asserted against ***.
3.1.3. Each Party shall obligate its respective AFFILIATES to *** in
Section 3.1.1 or Section 3.1.2 above, as applicable.
3.2. ***.
4. GRANT OF LICENSES.
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4.1 Aurora grants Packard and its AFFILIATES a ***, to the extent that such
***, solely to the extent necessary to make, have made, use and sell ***.
4.2 Packard grants Aurora and its AFFILIATES ***, to the extent that ***,
solely to the extent necessary to make, have made, use and sell ***.
4.3 Aurora grants to Packard a ***. Upon execution of this Agreement, Packard
shall immediately *** rights granted in this Section 4.3. Packard and its
AFFILIATES ***.
4.4 ***this Agreement *** for the same.
4.5 ***.
4.6 ***.
4.7 Except as herein expressly provided, each party shall retain exclusive
rights to its proprietary technology and such rights will be determined in
accordance with applicable U.S. law; e.g., U.S. Patent law or California State
trade secret law.
4.8 All rights not expressly granted herein are retained by each respective
Party, and nothing in this Agreement shall grant, or be deemed to grant, (a) any
rights to intellectual property owned in whole or in part by any third party
which the granting party hereunder does not have the legal right to grant to the
other party, (b) any rights to proprietary technology, know-how or trade secrets
***.
5. PAYMENT OBLIGATIONS AND RELEASES.
5.1 Packard hereby ***Aurora from all further ***for such items.
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5.2 Aurora ***, including without limitation any ***.
5.3 For clarification, and without limiting the generality of this Agreement,
Packard hereby ***under Sections 4.3.2 and 4.3.3 of the Collaboration Agreement
***.
5.4 Packard hereby ***.
5.5 Aurora ***, or to make *** previously licensed and provided under the
Collaboration Agreement.
5.6 Upon execution of this Agreement, Packard shall immediately ***.
6. ***.
On the Termination Date, Aurora shall ***. To the best of Aurora's knowledge,
and on or before the Termination Date, (a) Aurora ***to use and commercialize
technology in the ***, and (b) ***.
7. OWNERSHIP PROVISIONS AND LICENSES.
Notwithstanding the termination of the Fluorocount Agreement, the
Collaboration Agreement and the Supply Agreement as set forth herein, the
Parties' respective intellectual property rights set forth in Sections 8.1
and 8.2 of the Collaboration Agreement shall remain in full force and effect,
and such provisions are hereby incorporated into this Agreement. ***. Except
as otherwise provided herein, all licenses and rights granted to the parties
in the Collaboration Agreement, including, without limitation, those licenses
granted in Articles V, VI and X of the Collaboration Agreement and Sections
2.0 and 3.0 of the Collaboration Agreement Amendment, are terminated as of
the Termination Date. To the extent not inconsistent with the foregoing
ownership provisions, all ownership of inventions, designs and other
intangible rights shall continue to be governed by applicable U.S. law and
California law.
8. WARRANTIES.
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8.1 Each party warrants and represents the following:
8.1.1 It has the right to enter into this Agreement; and
8.1.2. It has the right to grant the license set forth in Section 4.1 or
4.2 above, as applicable.
Except as expressly set forth in this Agreement, EACH PARTY 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 RIGHTS WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLED WARRANTIES.
8.2 With respect to rights licensed to Aurora by the ***, Packard agrees to
indemnify, defend and hold harmless ***, as appropriate, and *** resulting or
arising from *** to the extent that such indemnification by Packard is required
by *** pursuant to agreements between ***.
8.3 Packard warrants and represents that, on or before the Termination Date,
Packard and its AFFILIATES have exclusive license rights to certain proprietary
technology, know-how and trade secrets owned by ***.
9. NON-DISCLOSURE.
9.1 Each party hereto agrees not to disclose any terms of this Agreement, or
any of the discussions related hereto, to any third party without the prior
written consent of the other party; provided, however that disclosures may be
made to the extent required by securities or other applicable laws, or to actual
or prospective investors or corporate partners, or to a party's accountants,
attorneys and other professional advisors. Notwithstanding the foregoing,
however, if a party is required to disclose any such information, it will give
reasonable notice to the other party of such disclosure (except for disclosures
solely to a party's accountants, attorneys or other professional advisors), and
will use its best efforts to limit disclosures or secure confidential treatment
of such information prior to its disclosure.
9.2 The Parties hereby agree to issue public statements substantially in the
forms attached hereto as EXHIBIT B on the Termination Date, and to respond to
questions related to those public ***.
9.3 ***.
10. BINDING EFFECT; ASSIGNMENT.
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This Agreement shall be binding upon the Parties' respective successors and
assigns. Neither party may assign this Agreement or any of its rights or
obligations hereunder without the prior written consent of the other party,
and any attempted assignment without such prior written consent shall be
void; provided, that either party may assign this Agreement as part of a
merger or consolidation in which the surviving entity assumes all or
substantially all of such party's rights and obligations hereunder or a sale
of all or substantially all of the assets of such party.
11. ENTIRE AGREEMENT.
11.1 This Agreement (including the Exhibits and those portions of the
Collaboration Agreement and Supply Agreement specifically incorporated herein)
sets forth the entire understanding and agreement of the Parties as to the
subject matter hereof, and there are no other understandings, representations or
promises, written or verbal, not set forth herein or on which either party has
relied. No modification, supplement to or waiver of this Agreement or any
Exhibit 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
Packard and Aurora. This Agreement controls the obligations and rights with
respect to any potential or actual conflict of terms between this Agreement and
the FluoroCount Agreement, the Collaboration Agreement or the Supply Agreement.
11.2 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.
11.3 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.
11.4 All Notices under this Agreement shall be given in writing and shall be
addressed to the parties at the following addresses:
FOR PACKARD:
Xxxxxxx X. XxXxxxxx
President
Packard Instrument Company
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000 Xxxxxxxx Xxxxxxx
Xxxxxxx, XX 00000
COPIES TO:
Xxx X. Xxxxx
General Counsel
Packard Instrument Company
000 Xxxxxxxx Xxxxxxx
Xxxxxxx, XX 00000
FOR AURORA:
Xxxxxxx X. Xxxx
Chairman, CEO & President
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
COPIES TO:
Xxxx X. Xxxxxxxx
General Counsel
Vice President, Intellectual Property
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
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.
11.5 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. If either party breaches the terms of this Agreement, it shall
have sixty (60) days after written notice of such breach (the "Cure Period") to
cure the alleged breach, which notice shall specify the conditions of the
alleged breach and provide notice that the non-breaching party intends to pursue
a remedy under this Section 11.5 if the breach is not cured during the Cure
Period. If a breach is not cured within the applicable Cure Period, then prior
to any arbitration concerning this Agreement, Packard's president and Aurora'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
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good faith negotiations to begin within thirty (30) days after such notice is
received. If the Parties are not able to resolve a breach after such good
faith negotiations, 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 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,
made within six (6) months of filing the arbitration request 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 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.
11.6 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.
11.7 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, all Articles and Sections and any other provision
intended by its meaning to survive, will survive the expiration or any other
termination of this Agreement, which is intended to have a term for at least as
long as the longer of twenty (20) years or the statute of limitations for any
cause of actions that may arise from the FluoroCount Agreement, the
Collaboration Agreement or the Supply Agreement.
11.8 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.
11.9 This Agreement shall not be strictly construed against either party hereto
and
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maybe executed in two or more counterparts, each of which will be deemed an
original and the same instrument. Counterparts may be signed and delivered
by facsimile, each of which shall be binding when sent, and in each case an
original shall be sent via overnight courier. IN WITNESS WHEREOF, as of the
date first above-written, the undersigned Parties, acting through their duly
authorized representatives, have executed this Termination Agreement in
multiple counterparts.
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PACKARD INSTRUMENT COMPANY
By:
---------------------------------
Name:
---------------------------------
Title:
---------------------------------
AURORA BIOSCIENCES CORPORATION
By:
---------------------------------
Name:
---------------------------------
Title:
---------------------------------
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EXHIBIT A
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***
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EXHIBIT B
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***
SEE ATTACHED.
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Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Contact: Xxxxxx Xxxxxxx
San Diego, CA
Director, Corporate Communications
Phone 000 000-0000
and Investor Relations
Fax 000 000-0000
E-mail : xxxxxxxx@xxxxxxxxx.xxx
Website: xxxx://xxx.xxxxxxxxx.xxx
AURORA BIOSCIENCES ANNOUNCES CONCLUSION OF
COLLABORATION WITH PACKARD INSTRUMENT
COMPANY
SAN DIEGO (OCTOBER 6, 1998) - Aurora Biosciences Corporation (Nasdaq:ABSC)
today announced that the collaboration and license agreement with Packard
Instrument Company initiated in April 1996, and its supply agreement with
Packard, have been concluded by mutual agreement.
The principal activities under the collaboration agreement were development
of a high density screening plate ("NanoPlate-TM-"), instrumentation for
fluorescence detection in NanoPlates and for nanoliter microfluidic
dispensing of compound samples. In February 1998, Aurora assumed
responsibility for the NanoPlate development and production. Aurora has now
also assumed responsibility for further development and production of
fluorescence detection and microfluidic dispensing instruments for its own
and syndicate members' Ultra-high Throughput Screening Systems (THE
"UHTSS-TM-").
XXXXX XXXXXX, Ph.D., M.B.A., AURORA'S SENIOR VICE PRESIDENT, SCREEN TECHNOLOGY
AND NEW TECHNOLOGY ventures, said, "We appreciate Packard's support in our
Company's initial development. Now, Aurora's own high technology team of over
60 engineers, biophysicists, computer scientists and automation experts has
grown to the point where we feel confident in taking charge of producing the key
UHTSS components. We plan to complete technical development for the
miniaturized screening components for the UHTSS by year end, and be positioned
to deliver these components to our first two syndicate members, Xxxxxxx-Xxxxx
Squibb and Xxx Lilly and Company, in the first half of 1999."
Aurora designs and develops proprietary drug discovery systems, services and
technologies to accelerate and enhance the discovery of new medicines.
Aurora is developing an integrated technology platform comprised of a
portfolio of proprietary fluorescent assay technologies and an ultra-high
throughput screening system designed to allow assay miniaturization and to
overcome many of the limitations associated with the traditional drug
discovery process. The Company believes that this platform will enable
Aurora and its collaborators to take advantage of the opportunities created
by recent advances in genomics and combinatorial chemistry that have
generated many new therapeutic targets and an abundance of new, small
molecule compounds. Current collaborators include Merck & Co., Inc.,
Xxxxxx-Xxxxxxx, Bristol-
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Xxxxx Xxxxxx, Xxx Xxxxx and Company, Roche Bioscience, Allelix
Biopharmaceuticals, Inc., Cytovia, Inc. and SIDDCO, Inc.
Statements in this press release that are not strictly historical are
"forward-looking" statements which involve a high degree of technological and
competitive risks and uncertainties that exist in the Company's operations
and business environment. Such statements are only predictions and the
Company's actual events or results may differ materially from those projected
in such forward-looking statements. Factors that could cause or contribute
to differences include risks involved with the Company's new and uncertain
technology, the ability to meet technical milestones and timely deliver UHTSS
components to syndicate members, and uncertainties regarding production of
technologically complex instrumentation and components. These factors and
others are more fully described in the Company's Annual Report on Form 10-K
for the fiscal year ended December 31, 1997 and subsequent Forms 10-Q, as
filed with the Securities and Exchange Commission. For additional corporate
information, visit the Aurora website at xxxx://xxx.xxxxxxxxx.xxx.
###
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CONTACT:
Xxxxxxx X. XxXxxxxx, President
Packard Instrument Company
(000) 000-0000
FOR IMMEDIATE RELEASE
PACKARD INSTRUMENT COMPANY ANNOUNCES CONCLUSION
OF COLLABORATION WITH AURORA BIOSCIENCES CORPORATION
Meriden, Connecticut, USA - October 6, 1998 - Packard Instrument Company
announced today that its collaboration and license agreement with Aurora
Biosciences Corporation initiated in 1996 has been concluded by mutual
agreement.
The collaboration agreement provided for the development of certain
instrumentation for fluorescence detection and nanoliter microfluidic
dispensers of compound samples. The conclusion of the collaboration will
allow Packard to reallocate significant resources to the development and
production of new applications and new instruments for commercial
applications, and to pursue additional research and development programs
related to that technology.
Staf Van Cauter, Packard's Vice President of Business Development, said, "The
collaboration has benefited both companies in the development of new
technology and new products. We expect to offer new fluorescence detection
and microfluidics dispensing instruments through early access programs within
the next six months, and hope to make these instruments generally available
to our customers sometime in 1999. These products combined with technologies
acquired through our recent acquisitions of CCS Packard (formerly Xxxx
Creative Systems), BioSignal, Inc. and the Argonne/Motorola biochips will
allow Packard to meet the growing needs for miniaturization and higher
throughput in the drug discovery and genomic market segments."
For over forty years, Packard has been a leading supplier of instrumentation
and reagents for general life sciences research applications. Over the last
few years, Packard has introduced various microplate readers, liquid handling
products and proprietary reagents that have enabled researchers to accelerate
high-throughput screening. So far, more than 1,000 units have been installed
in the major pharmaceutical companies worldwide. Packard believes that its
new imaging, microfluidics dispensing and assay technologies will permit its
customer base to meet the increasing needs for more efficiency and lower cost
in drug discovery and genomics research.
Statements in this press release that are not strictly historical are
"forward-looking" statements which involve a high degree of technological and
competitive risks and uncertainties that exist in the Company's operations
and business environment. Such
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statements are only predictions and the Company's actual events or results
may differ materially from those projected in such forward-looking
statements. Factors that could cause or contribute to differences include
risks associated with the dependence on patents and proprietary rights, the
ability to attract additional collaborative partners, risks involved with the
Company's new and uncertain technology, and dependence on existing
collaborations. These risks and uncertainties are discussed from time to
time in the reports filed by Packard BioScience Company with the Securities
and Exchange Commission.
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CONFIDENTIAL
***
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EXHIBIT C
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***
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