1
Exhibit 10.12
AGREEMENT FOR AN EXCLUSIVE ALLIANCE TO DEVELOP, MANUFACTURE AND
MARKET A CHIP-BASED SCREENING SYSTEM FOR CELL ANALYSIS
This is an agreement executed this Twenty-sixth day of October, 1999,
hereinafter the "Effective Date") between Cellomics, Inc., 000 Xxxxxxx Xxxx
Xxx, Xxxxxxxxxx, XX. 00000 (hereinafter CELLOMICS) and ACLARA BioSciences Inc.
0000 Xxxx Xxxxxx, Xxxxxxxx Xxxx, XX 00000-0000 (hereinafter ACLARA).
RECITALS
Whereas CELLOMICS has expertise in drug discovery, patterning cells on
substrates, cell analyses, luminescence detection, imaging science and
informatics;
Whereas ACLARA has expertise in microfluidics, design and engineering of
microdevices in plastic, and process engineering;
Whereas CELLOMICS and ACLARA desire to form a development, manufacturing and
marketing alliance to produce a Screening System for the life sciences to
perform Cell-based Assays.
Now, therefore, in consideration of the covenants and conditions contained
herein, the Parties, intending to be legally bound, agree as follows:
1. Definitions
1.1 "Cassette" means an assembled unit comprising an operable combination of a
Cell Plate and Microfluidic Plate.
1.2 "Cell-based Array" means any assay in which a biological target molecule or
organelle is analyzed in, on and [*]. The cells can be from any life form
including but not limited to bacteria, animals and plants.
1.3 "Cell Plate" means a glass or plastic plate material having a modified
surface that supports selective adhesion of cells in discrete regions.
1.4 "EAP" shall mean an Early Access Partner. This is a third party that has
executed a TAP Agreement approved by the JSC pursuant to which such third
party (i) is provided access to Prototypes during the Development Phase and
(ii) pays a fee for having early access under the applicable TAP.
1.5 "High Content Screening (HCS)" means the activity or status of cells in the
Cassette [*].
1.6 "High Throughput Screening (HTS)" means the measurement of single values
that represent the average or total of a signal obtained from a single well
in a Cassette,
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-1-
2
regardless of whether the signal is produced intra- or extracellularly. The
single values will be obtained as a group of values as to different
candidate compounds or different indications resulting from the same
compound.
1.7 "Intellectual Property Milestone" shall be when the Parties complete a
Prototype and the aggregate commitment from the TAP shall be [*] based on
individual EAP fees of at least [*].
1.8 "JSC" shall mean the Joint Steering Committee, which will be composed of
equal numbers of members from both CELLOMICS and ACLARA, not to exceed a
total of eight, which members may be changed from time to time by the Party
whom they represent, and to be chaired by the Project Leaders for the
Parties.
1.9 "Liquid Transfer System" means any system used for transferring materials
to the Cassette.
1.10 "Luminescence-based Reagents" are reagents that result in light emission
for use in Cell-based Assays.
1.11 "Microfluidic Plate" means microfluidic device of an electrically
non-conducting material designed to mate with the Cell Plate to [*].
1.12 "Microplate" means a standard multiwell plate most commonly of 96 or 384
xxxxx, but also available in 6, 12, 24, 48, 1536 and other formats with
overall dimensions of about 3.5 x 4.5 cm.
1.13 "Program" shall mean a research program to develop a Screening System as
set forth in the Workplan.
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-2-
3
1.14 "Prototype" shall mean a development stage Screening System meeting all or
most of the specifications set forth in the applicable Workplan, however,
not in a format useful for general sale and commercial distribution. A
Prototype is typically suitable for delivery to an EAP.
1.15 "Reader" shall mean the optical system and accompanying software developed
for reading the Luminescence signals from the cells.
1.16 "Revenue Source" is any source of revenues to support the Program other
than internal sources, including but not limited to government grants, EAP
fees, funds from the other Party and funds from collaborators other than a
Party.
1.17 "Robotics" means the mechanical units for assembling and moving the
components necessary for performing a Cell-based Assay with a Cassette.
1.18 "Screening System" shall mean the Cassette, Robotics, Reader, Liquid
Transfer System, software and such other integrated peripheral devices to
conduct High Throughput and/or High Content Screening, including
disposables. The Screening System shall be all of the hardware and
software to provide a complete system for performing Cell-based Assays
(except for the Luminescence-based Reagents and such other reagents as may
be used for Cell-based Assays).
1.19 "TAP" shall mean Technology Access Program between ACLARA and CELLOMICS
with companies which shall serve as EAPs.
1.20 "Workplan" shall list goals and tasks detailing the actual work expected
to be done, with timelines, budget and a delineation of responsibilities.
2. Development
2.1 The "Field" of this collaboration is the development of an automated
system for [*]. It is an essential term of this agreement that
CELLOMICS agrees to work exclusively with ACLARA on any and all
matters involving microfluids in Cell-based Assays and ACLARA agrees
to work exclusively with CELLOMICS on any and all matters involving
Cell-based Assays during the Program.
2.2 This Agreement will become effective on the Effective Date.
2.3 CELLOMICS is attempting to obtain [*] to be permitted to utilize [*]
to support ACLARA's research effort for the [*] of the Program.
Whether or not CELLOMICS ever obtains such approval from [*],
CELLOMICS is obligated to and hereby commits to pay [*] to support
ACLARA's said research for the [*] of the
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-3-
4
Program in [*]. During the period in which CELLOMICS is paying
ACLARA, ACLARA shall provide CELLOMICS with a statement of the cost
allocated to the Program as determined in accordance with reasonable
accounting procedures used internally by ACLARA within thirty (30)
days of receipt of the quarterly check due ACLARA. The dates on which
such payments are due may be changed in accordance with the date of
initiation of work by ACLARA and the rate at which employees are
hired by ACLARA to perform the Program.
2.4 During the first year of the term of this agreement ("First Year"),
the Parties agree to work in accordance with the Workplan set forth
in Appendix A, with the goal to have a Prototype of the Cassette by
the first anniversary of the Effective Date. The goal during the [*]
is to optimize the Cell Plate and Microfluidic Plate design and
interfacing to enable fabrication of a functional Cassette. This
Cassette is intended to have the specifications for and serve as a
testbed for a [*]. In addition, it is intended that the Parties will
use this Cassette as a working Prototype in a TAP program.
Development of the Cassette Prototype will be directed to enable:
[*]. During the First Year and thereafter, each Party will provide
written reports with thirty (30) days of the end of each calendar
quarter of the progress it has made during such quarter and the work
to be performed in the next quarter and a written summation of the
work accomplished at the end of each calendar year within thirty (30)
days of the end of such calendar year.
2.5. Notwithstanding the intention to achieve the goals of the Workplan
for the First Year, it is understood that in order to staff the
Program, ACLARA and CELLOMICS will be required to hire new personnel
or transfer existing personnel as they may become available. While
each Party will act diligently to staff the Program in accordance
with the Program's needs and available funding, the timing of such
hires or transfers is not completely within the control of the
Parties and the schedule of the Workplan may be delayed. At each
quarterly meeting of the JSC, the accomplishment of the previous
quarter, and the available funding, committed or to be committed,
will be evaluated and the Workplan modified, if necessary, in light
of the circumstances then pertaining.
2.5.i. If prior to the occurrence of the Intellectual Property
Milestone there appears to either Party to be an insufficient
Revenue Source at that time or in the reasonably foreseeable
future to support the Program in the amounts required by each
Party for its performance, the JSC shall review the situation
and report to the respective CEO's its recommendation as to
how to proceed within sixty (60) days of notification by
either Party that such Party believes there is an
insufficient Revenue Source to support the Program. If the
CEOs cannot agree within sixty (60) days of receiving
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-4-
5
notification from the JSC as to how to proceed, either Party
may terminate this Agreement upon giving prompt notice of
termination to the other Party without obligation to license
the other party under the terminating Party's intellectual
property. If the Program is terminated for other than material
breach prior to the completion of the Intellectual Property
Milestone, the parties will negotiate in good faith to allow a
continuing party to continue the Program.
2.5.ii. Notwithstanding Paragraph 2.5.i, after the Intellectual
Property Milestone has been achieved, the terminating Party
will be obligated to license the continuing Party under the
terminating Party's intellectual property to continue to
develop and commercialize the Prototype and Screening System
as hereinafter provided. Upon termination by one Party for
other than material breach, with the Intellectual Property
Milestone having been achieved, the other Party may continue
the Program and the terminating Party agrees to enter into
negotiations within thirty (30) days of such termination with
the other Party over the terms of such license which the
terminating Party is obligated to license to the continuing
Party under its intellectual property, both background and
foreground, on reasonable terms and conditions to make, use
and sell Screening Systems substantially conforming to the
Screening System which was to be jointly developed.
2.6 Assuming financing is obtained as required to support the Program
for the second and third years of the term of this Agreement, or
such other periods in which the goals of these years are to be
fulfilled as determined by the JSC, a Screening System will be
developed, which is intended to offer a complete solution to the
need for flexibility in Cell-based Assays starting with an initial
focus on [*]. The Screening System will be designed to have the
ability to provide a complete portfolio of assays including [*].
The Screening System will offer a ready-to-use and easy-to-use
solution for the life scientist and further will promote
penetration of sophisticated Cell-based Assays HCS in drug
discovery. The target pharmaceutical customer for the Screening
System is an entity with significant biological expertise in
primary screening, a therapeutic group or a specialty such as [*].
2.7 The development program for [*] of the term of this agreement is
set forth in Appendix B with the intention of developing a
Screening System. The 3D Cassette will have a high density plumbing
architecture for selective addressing of a high density of
micro-arrayed cells on the Cell Plate. The initial design and
prototypes will focus on multiples of 96 well patterns in a
footprint ranging from [*].
2.8 CELLOMICS shall be responsible for identifying sources for the
Robotics, Reader and such other equipment, which is not available
from or to be developed
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-5-
6
by the Parties to this agreement. Selection of one or more sources
for providing the additional equipment will begin not later than
four (4) months after a Cassette Prototype has been shown to be
satisfactory to the Parties. CELLOMICS shall submit to ACLARA a list
of potential sources of producing the components of the Screening
System not already being produced by either ACLARA or CELLOMICS.
ACLARA and CELLOMICS shall mutually agree on the priority in which
these sources are to be approached, and additional candidates added,
neither party shall unreasonably withhold such agreement. Such third
party(s) and the terms upon which they agree to participate in
developing the Screening System shall be proposed and negotiated by
CELLOMICS and shall be subject to the review, but not the approval
of the JSC.
2.9 In [*] of the term of this Agreement, the Parties will direct their
efforts to the development of a Screening System commercial product.
The Prototype developed in [*] is to be taken through the final
phase of the product development cycle and to establish
manufacturing, marketing and sales.
2.10 A complete Screening System will include all the components required
by a user to take a library of compounds stored in a Microplate
format and screen the library of compounds against a target,
producing a data set in a standard database format for ease of
access. The responsibilities of the Parties as to the following
components that are required to accomplish this goal are:
- CELLOMICS
[*]
- ACLARA
[*]
3. Funding
3.1 A budget is set forth for the First Year in Appendix B. Promptly
after execution of this Agreement, the Parties will submit a
proposed budget for [*], which budget shall be subject to review,
modification, and approval by the JSC. These budgets will be the
basis for [*] and provide for the division of money received from
[*] between the Parties.
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-6-
7
3.2. Not later than three (3) months after initiation of the
Workplan, the JSC will prepare and submit a budget to [*]
based on the budgets submitted by the Parties requesting an
increase in the total funding for both companies to accelerate
the development of the Screening System. Not later than [*],
the Parties will prepare and submit a [*] grant. The budget
may reflect provision for sources of components of the
Screening System, which the Parties do not intend to develop
or supply.
3.3 CELLOMICS and ACLARA will jointly prepare a TAP to attract
companies as EAPs that will fund the Program. CELLOMICS and
ACLARA will jointly make presentations to the pharmaceutical
industry. The Parties will develop jointly the basic terms for
a TAP, which shall be the basis for entering into agreements
with EAPs. The TAP will be developed not later than one (1)
month from the completion of a satisfactory Cassette
Prototype.
4. Commercialization plan
4.1. Final product development and component manufacturing: The
Prototype completed in [*] and delivered as a beta test system
to at least [*] EAPs in [*] will be developed into a Screening
System component for manufacturing. ACLARA will be responsible
for final engineering and establishment of manufacturing
capability for the Microfluidic Plate. ACLARA is developing a
[*], and if applicable, ACLARA will contribute this to the
Screening System. If incremental development is required to
render this [*] applicable to the Screening System, the JSC
may adjust the Workplan accordingly. CELLOMICS will be
responsible for Cell Plates, all reagents, assays, and
protocols. CELLOMICS will work to ensure that the components
which neither Party intends to produce are made available from
a third party and are available for commercialization of the
Screening System. CELLOMICS will be responsible for the final
development and manufacturing of the remaining components of
the Screening System.
4.2. Manufacturing of the integrated system: The final
manufacturing, packaging and delivery of [*] and other
Cell-based Assay reagents, Cassettes and Screening Systems to
customers will be the responsibility of CELLOMICS. Prior to
the initiation of manufacturing of a Cassette, the Parties
will enter into a supply agreement in which ACLARA will be
responsible for delivering to CELLOMICS, or a third party
designated by CELLOMICS, sufficient quantities of Microfluidic
Plates for packaging with Cell Plates. Such supply agreement
will provide for indemnification of the other Party on
conventional terms for the intentional, willful, or negligent
act or failure to act of one Party, giving rise to a claim
against the other Party. The supply terms for ACLARA's
delivery to CELLOMICS shall be conventional, giving due regard
to
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-7-
8
the size of the batches required, the effect of volume on price,
agreements with third parties for manufacture of the Microfluidic
Plates and the time required for initiating a run of Microfluidic
Plates. CELLOMICS will provide ACLARA with sales projections on a
rolling basis. Inventory shall be the responsibility of CELLOMICS.
4.3. Deliver Production Systems: For all life science applications,
CELLOMICS will have full responsibility for ensuring that all
components of the Screening System are available for marketing,
marketing of the Screening System, and providing support for the
Screening Systems and its components. The target markets for these
systems will include, but not be limited to pharmaceutical discovery
and development, clinical diagnostics, agriculture biotech, and basic
biomedical research.
4.4. Product Designation: ACLARA's name and trademark shall appear
prominently on the Microfluidic Plate and CELLOMICS shall give due
credit for ACLARA's contributions in its labeling, advertising and
promotion. Statements made by CELLOMICS concerning ACLARA shall be
subject to review and approval by ACLARA, which approval shall not be
unreasonably withheld.
4.5. Reader Designation: CELLOMICS's name and trademark shall be use din a
primary capacity and ACLARA's name and trademark shall be use din a
secondary capacity on the Reader and CELLOMICS shall give due credit
for ACLARA's contributions in its labeling, advertising and promotion.
Statements made by CELLOMICS concerning ACLARA shall be subject to
review and approval by ACLARA, which approval shall not be
unreasonably withheld.
5. Revenue Sharing
5.1 During the development and commercialization phase, the money obtained
from third parties from a Revenue Source shall be divided to ensure
that each Party's expenditure of its own money on a JSC approved
Workplan is minimized. The exact division of [*] will be decided at
the time of [*]. The division of TAP fees will be defined by the JCS,
and approved by the CEO of both Parties, and written into a separate
agreement between CELLOMICS and ACLARA before a TAP agreement is
consummated. Funding from a collaborator other than the other Party
will primarily be used for the purposes of the collaboration.
5.2 Not later than the end of [*] the Parties shall initiate negotiations
as to the division of income resulting from the sales of Screening
Systems and its components. The division of the income will first be
considered by the JSC with final approval of the CEO's from CELLOMICS
and ACLARA. ACLARA shall receive from CELLOMICS [*] and a reasonable
profit margin for items manufactured or supplied by ACLARA;
Considerations in determining the division of remaining
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-8-
9
income shall be the financial contribution of each of the Parties,
except to the extent the Parties have been reimbursed any portion of
their contribution by a Revenue Source, the novelty of their
contributions, the value of the intellectual property that protects
components of the Screening Systems, the competitive advantages
provided by the contributions of the two Parties, the responsibilities
of the two Parties in manufacturing, marketing and supporting the
ongoing expenditures, the risks involved with the continuing
investments, and the like. The income to ACLARA shall not be less than
a reasonable royalty on patents and know-how contributed by ACLARA
with the base being Screening Systems and components, where the
royalty may vary as to whole Screening Systems and as to individual
disposable Screening System components. Royalty shall not be paid
twice for the same component of the Screening System. If there is no
agreement between the Parties, the matter shall be given to mediation
as provided for hereinafter. The exact mechanism for delivering the
value to the Parties will be defined as the program proceeds toward
commercialization. It may involve strict revenue sharing, licensing,
royalties or some combination that will be defined by the JSC.
6. Public Relations
6.1 All press releases created by an originating Party shall be submitted
to the other Party for approval and shall not be released without the
prior written approval of the other Party. In the event of a dispute,
the matter shall be submitted to the CEOs of the Parties and if the
issue cannot be reconciled, there shall be no press release containing
disputed subject matter.
6.2 Prior to commercial introduction of a Screening System, all public
presentation relating to this Program, not already made public,
including Web postings, corporate presentations, investor relations,
and marketing collateral, must be approved by the other Party, such
approval not to be unreasonably withheld.
7. Intellectual Property
7.1 Ownership. Each of the Parties will own all intellectual property and
inventions made by individuals who have a duty to assign to that Party
and will jointly own all inventions co-invented by at least one
inventor having a duty to assign to each Party. The Party owning the
invention shall have the exclusive right to file worldwide for patent
applications covering the invention.
7.2 Joint Intellectual Property. CELLOMICS and ACLARA will jointly
determine the advisability of filing a patent application. The JSC
will appoint one of the Parties to be responsible to prepare, file,
prosecute diligently and maintain such application(s). The Parties
will share equally all reasonable costs incurred in
CONFIDENTIAL
-9-
10
connection with such activities (i.e., the non-prosecuting Party will
promptly reimburse the prosecuting Party), provided, however, that
either Party may avoid its responsibility for such costs by assigning
its rights in such Joint Intellectual Property to the other Party. In
such an event, the other Party may decide at its sole discretion
whether or not to file or continue prosecution of such applications.
Also, the assigning Party will provide reasonable assistance to the
assignee to facilitate the filing and prosecution of all such
applications. Joint Intellectual Property will be jointly owned, and
either Party is free to use such Joint Intellectual Property as it
sees fit, outside the Field of this Agreement. CELLOMICS shall have
the exclusive right to use such Joint Intellectual Property within the
Field of this Agreement for the lessor of i) a period of five (5)
years from the first commercial release of the Screening System, or
ii) eight years (8) from the Effective Date. Thereafter, either Party
may use such Joint Intellectual Property without accounting to the
other Party.
7.3 Rights. All inventions owned by ACLARA developed as part of the
program having application to the Cell Plate shall be licensed to
CELLOMICS on reasonable terms and conditions, if at the time of filing
of a patent application for such invention, CELLOMICS agrees to pay
[*] of the out-of-pocket costs of the filing, prosecution and
maintenance of such application, continuing applications, foreign
analogs, and Letters Patent issuing thereon. All inventions owned by
CELLOMICS developed as part of the collaboration having application to
the Microfluidic Plate shall be licensed to ACLARA on reasonable terms
and conditions, if at the time of filing of a patent application for
such invention, ACLARA agrees to pay [*] of the out-of-pocket costs of
the filing, prosecution and maintenance of such application,
continuing applications, foreign analogs, and Letters Patent issuing
thereon.
7.4 Licensing of Foreground technology. Technical know-how and patent
rights developed as part of the Program shall be available on
reasonable terms and conditions after termination of this Agreement in
the event that one Party wishes to continue the Program.
7.5 Licenses of Background Technology. Technical know-how and patent
rights developed prior to initiation of the Program or outside of the
Program may be licensed for a Screening System developed in the
Program as set forth in Section 2.5.
7.6 Label License. All products supplied by ACLARA to CELLOMICS will
include a label license, granting CELLOMICS a license under ACLARA's
intellectual property to use, offer to sell, and sell any such
products for use in the Field, such label license being transferable
to the purchasers of such products.
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-10-
11
7.7. Confidentiality. All technical and business information given the
recipient Party by the disclosing Party shall be assumed to be in
confidence and if disclosed orally, shall be reduced to writing and
delivered to the recipient within thirty (30) days of disclosure.
Information received in confidence shall be used solely for the
purposes of this Agreement and shall be disclosed to others who assume
like duties of confidentiality. The restrictions on use and disclosure
shall not apply where the information is or becomes generally known
without failure on the part of the recipient; was known to the
recipient prior to receipt from the discloser; or is given to the
recipient by a third party who has the right to disclose the
information, without restriction on use or disclosure. The obligations
on use and disclosure shall terminate five (5) years from the
termination of the Program.
8. Surviving Rights/Termination
8.1 Surviving Rights and Duties. The right to obtain licenses to
intellectual property rights covering technology employed in the
Program as provided for in this Agreement shall survive termination of
this Agreement. Either Party shall have the right to a license from
the other Party if such license is requested within two (2) years
after termination of this Agreement.
8.2 Termination. This Agreement may be terminated by either Party in the
event of material breach by the other Party, upon giving sixty (60)
days prior written notice of the intent to terminate, which
termination will be effective if the breaching Party has not taken
reasonable steps to correct the material breach. The right to
terminate is in addition to all other rights the non-breaching Party
may have against the breaching Party.
8.3 Permissive termination. Either Party may terminate this Agreement,
with the acceptance of the other.
9. Governance
9.1 Joint Steering Committee. The Program will be governed by the JSC. The
JSC shall consist of at least one senior executive, one business
director, and one technical director from each Party. The JSC will
meet at least once per quarter, alternating between locations selected
by ACLARA and CELLOMICS, to oversee activities under a Workplan. In
particular, the JSC will monitor and support collaboration and/or
supply relationships existing between ACLARA and CELLOMICS, review,
recommend modifications to, and oversee the implementation of active
Workplans, define deliverables for TAPs, approve EAPs, review the
commercial feasibility of Screening Systems being developed under a
Workplan, review the progress of the Workplan and funding, offer
modifications to the Workplan in light of changed circumstances,
discuss new commercial opportunities and develop the objectives and
terms for additional Programs between the Parties that may be pursued.
The JSC shall have the authority to make reasonable alterations or
amendments to the Workplan, which
CONFIDENTIAL
-11-
12
will be considered final after reduction to writing and
attachment to the Agreement. Significant alterations to the
Workplan must be approved by the CEO of both Parties. The JSC
shall have the authority to recommend alterations or amendments
to this Agreement, which shall not become final until reduced to
writing and signed by the CEO of each of the Parties. Except as
otherwise expressly provided herein, decisions of the JSC will be
made by consensus.
9.2 Dispute resolution. Should disputes arise, the Parties agree to
negotiate in good faith to resolve the disputes. Disputes that
cannot be resolved by the JSC within a reasonable period shall be
submitted to the CEOs of the Parties. If agreement is still not
reached, the Parties agree to submit disputes to mediation in
accordance with the section 9.3, "Mediation", prior to seeking
any other remedy.
9.3 Mediation. If the Parties are unable to resolve by negotiation
within forty-five days of the disputing Party's written request
for dispute resolution (or such other time period expressly set
forth in this Agreement), or if the Parties fail to meet within
twenty (20) days after such notice, the Parties shall endeavor to
settle the dispute by mediation administered by the American
Arbitration Association ("AAA") pursuant to the Commercial
Mediation Rules of the AAA the time of submission prior to
resorting to any other remedy. Mediation shall be held in a
location to be decided later. The mediator appointed to assist
the Parties must possess such credentials as qualify said
mediator as (1) either an expert in the field being mediated or
(2) at a minimum as reasonably familiar with the industries and
specific applications as will enable the mediator to quickly
understand and assist the Parties in dealing with the issues that
are in dispute. Notwithstanding the foregoing, to the extent that
any controversy or claim hereunder gives rise to a prayer for
injunctive relief, equitable action or specific performance, the
aggrieved Party shall have the right to commence such an action
in any court of competent jurisdiction.
10. Representations and Warranties
10.1 Authority. Each Party hereby represents and warrants to the other that it
has full power and authority to enter into this agreement and to consummate
the transactions contemplated hereby. This agreement has been duly executed
and delivered and constitutes a valid and binding obligation of the Party,
enforceable against it in accordance with its terms, except as such
enforceability may be limited by bankruptcy, insolvency, reorganization,
fraudulent conveyance, moratorium or similar laws affecting creditors'
rights generally from time to time in effect or by general equitable
principles.
10.2 Corporate Organization and Authority. Each Party hereby represents and
warrants to the other that it is a corporation duly organized, validly
existing and in good standing under the laws of Delaware as to CELLOMICS
and California as to ACLARA and has all corporate power and authority to
carry on its business as
CONFIDENTIAL
-12-
13
now being conducted and to own its properties, is duly qualified and in
good standing to do business in every jurisdiction in which such
qualification is necessary because of the nature of the property owned,
leased or operated by it or the nature of the business conducted by it
except where the failure to be so qualified would not have a material
adverse effect.
10.3 Ability to Carry Out the Agreement: Consents and Waivers. Each Party
hereby represents and warrants to the other that the execution and
delivery of this agreement does not, and the consummation of the
transactions contemplated hereby will not, conflict with, or result in
any violation of or default (with or without notice or lapse of time, or
both) under, or give rise to a right of termination under, or accelerate
the performance required by, or result in the creation of any lien,
security interest, charge, increase in liability or other encumbrance
upon any of its assets under, any provision of:
(i) any law, statute, rule, regulation or judicial or
administrative decision;
(ii) any certificate of incorporation or by-laws;
(iii) any mortgage, deed of trust, lease, note, shareholders'
agreement, bond, indenture, contract or other instrument
or agreement; or
(iv) any judgment, order, writ, injunction or decree of any
court, governmental body, administrative agency or
arbitrator relating to it;
(v) other than conflicts, violations, defaults, right of
termination or encumbrances which could not reasonably be
expected to have a material adverse effect on the
enforceability or validity or the agreement.
10.4 Litigation. Each Party hereby represents and warrants to the other that
there is no action, suit, or governmental, administrative or regulatory
proceeding or investigation pending or, to the knowledge of the Party,
threatened against it at law, in equity or otherwise, in, before, or by
any court or governmental agency or authority which could reasonably be
expected to have a material adverse effect on this agreement or the
transactions contemplated therein. ACLARA is presently involved solely
in two pieces of litigation; being sued for misappropriation of trade
secrets; and suing for patent infringement.
10.5 Year 2000. Each Party hereby represents and warrants to the other that
software, hardware, equipment and systems owned, leased or licensed by
it and used in the conduct of its business are Year 2000 Compliant.
CONFIDENTIAL
-13-
14
10.6 Regulatory Filings. Each of the Parties hereto will furnish to the other
Party hereto such necessary information and reasonable assistance as
such other Party may reasonably request in connection with its
preparation of necessary filings or submissions to any governmental
entity.
10.7 Announcement. Neither Party nor their respective affiliates will issue
any press release or other public announcement with respect to this
agreement or the transactions contemplated hereby without the prior
written approval of the other Party hereto (such approval not to be
unreasonably withheld, conditioned or delayed).
10.8 Indemnification. Each Party agrees to defend, indemnify and hold
harmless the other and its respective successors and assigns against and
in respect of:
(a) any and all losses, damages, deficiencies or liabilities ("Damages")
caused by, resulting or arising from or otherwise relating to any
material failure by a Party to perform or otherwise fulfill or
comply with any undertaking or other agreement or obligation to be
performed, fulfilled or complied with by the Party resulting from
its gross negligence, willful misconduct or arising from or
otherwise relating to any material breach of any representation or
warranty of the Party contained in this agreement.
10.9 Entire Agreement. The Agreement (including the appendices attached
hereto, all of which are part hereof) contain the entire understanding
of the Parties hereto with respect to the subject matter contained
herein, and supersede and cancel all prior agreements, negotiations,
correspondence, undertakings and communications of the Parties, oral or
written, respecting such subject matter. There are no restrictions,
promises, representations, warranties, agreements or undertakings of any
Party hereto with respect to the transactions under this Agreement other
than those set forth herein or therein or made hereunder or thereunder.
10.10 Amendments. This agreement may be amended only by a written instrument
executed by the Parties or their respective successors or assigns.
10.11 Headings; References. The article and section headings contained in this
agreement are for reference purposes only and shall not affect in any
way the meaning or interpretation of this agreement. All references
herein to "Articles," "Sections," "Schedules," or "Appendices" shall be
deemed to be references to Articles or Sections hereof or Schedules or
Appendices hereto unless otherwise indicated.
11. Notices
11.1. Notices may be given to an officer of a Party by;
CONFIDENTIAL
-14-
15
personal delivery, fax or registered mail addressed as follows:
overnight delivery by an internationally recognized courier service
If to ACLARA Biosciences Inc.:
Xxxxxx X. Xxxxxx
President and CEO
ACLARA Biosciences, Inc.
0000 Xxxx Xxxxxx
Xxxxxxxx Xxxx, XX 00000-0000
FAX (000) 000-0000
If to CELLOMICS, Inc.:
D. Lansing Xxxxxx
President and CEO
CELLOMICS, Inc.
000 Xxxxxxx Xxxx Xxx
Xxxxxxxxxx, XX 00000
FAX (000) 000-0000
12. Binding Effect
12.1 This agreement shall inure to the benefit of and be binding on each Party's
successors in interest and assigns.
13. Assignment
13.1 Either Party may assign this agreement only in connection with the sale or
disposition of the entire business of such Party or that portion to which
this agreement pertains. Either Party may assign this Agreement to an
Affiliate(s) without permission of the other Party. Affiliate shall mean an
entity controlling, controlled by, or under common control with a Party to
this Agreement.
14. Governing Law
14.1 This Agreement shall be interpreted in accordance with the local laws of
the Party defending any action brought under this Agreement.
[Signature page Follows]
CONFIDENTIAL
-15-
16
Signature Page for Agreement For An Exclusive Alliance To Develop, Manufacture
And Market A Chip-Based Screening System For Cell Analysis
In Witness Whereof, this Agreement has been executed in multiple counterparts,
each of which shall constitute an original Agreement, on behalf of the Parties
by their authorized officers as of the date first written above:
CELLOMICS, INC.
Signature /s/ D. LANSING XXXXXX
------------------------------
Print D. Lansing Xxxxxx
----------------------------------
Title President & CEO
----------------------------------
Date 10/26/99
-----------------------------------
ACLARA BIOSCIENCES INC.
Signature /s/ XXXXXX X. XXXXXX
------------------------------
Print Xxxxxx X. Xxxxxx
----------------------------------
Title President & CEO
----------------------------------
Date October 26, 1999
-----------------------------------
CONFIDENTIAL
-16-
17
APPENDIX A
WORKPLAN
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-17-
18
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-18-
19
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-19-
00
XXXXXXXX X
FUNDING PLAN
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-20-
21
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-21-
22
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-22-
23
[*]
CONFIDENTIAL
[*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
-23-
