[CONFIDENTIAL TREATMENT REQUESTED. CONFIDENTIAL PORTIONS OF THIS AGREEMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION.]
EXHIBIT 10.15
LICENSE AGREEMENT DATED FEBRUARY 21, 2003 BETWEEN SYMYX
TECHNOLOGIES, INC. AND SYMYX THERAPEUTICS, INC.
This License Agreement ("Agreement") is made as of the 21st day of
February, 2003 (the "Effective Date") by and between Symyx Technologies, Inc.,
with a principal place of business at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx Xxxxx,
Xxxxxxxxxx (together with its Affiliates, "Symyx"), and Symyx Therapeutics,
Inc., with a principal place of business at 0000 Xxxxxxx Xxxxxxxxxx, Xxxxx
Xxxxx, Xxxxxxxxxx ("STI").
BACKGROUND
A. Symyx owns certain Patent Rights (as defined below) and
certain Know-How (as defined below) ancillary to the Patent Rights [*];
B. Symyx desires to license the Patent Rights and Know-How to STI
in the Field (as defined below), and STI desires to obtain a license from Symyx
under the Patent Rights and Know-How, on the terms and conditions set forth
below.
NOW, THEREFORE, in consideration of the mutual covenants and promises
herein contained, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
As used in this Agreement, the following capitalized terms shall have
the meanings indicated:
1.1 "Affiliate" shall mean any individual or entity directly or indirectly
controlling, controlled by or under common control with, a party to this
Agreement. For purposes of this Agreement, the direct or indirect ownership of
fifty percent (50%) or more of the outstanding voting securities of an entity
shall be deemed to constitute control.
1.2 "Combinatorial Chemistry Instruments" shall mean instrumentation for
practicing Combinatorial Chemistry Methods, and intellectual property rights in,
to and under the foregoing; provided, however, that Combinatorial Chemistry
Instruments shall not include instrumentation that has been exclusively licensed
by Symyx to a third party as set forth on Exhibit A hereto.
1.3 "Combinatorial Chemistry Methods" means techniques, methodologies,
processes, synthetic routes or instrumentation that are useful for the
simultaneous, parallel or rapid serial: (i) design, (ii) synthesis, (iii)
processing, (iv) analysis, or (v) characterization (including screening and
assays) of more than two (2) [*], and intellectual property rights in, to and
under the foregoing.
1.4 "Combinatorial Chemistry Software" shall mean software for practicing
Combinatorial Chemistry Methods, and intellectual property rights in, to and
under the foregoing.
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1.5 "Combinatorial Chemistry Technology" shall mean Combinatorial Chemistry
Methods and Combinatorial Chemistry Instruments.
1.6 "Confidential Information" shall mean any information disclosed by one
party to the other in connection with this Agreement that is in written,
graphic, machine readable or other tangible form and is marked "Confidential" or
"Proprietary" or in some other manner to clearly indicate its confidential
nature. Confidential Information may also include information that is disclosed
orally, provided that such information is designated as confidential at the time
of disclosure and confirmed in writing as confidential within thirty (30) days
after its oral disclosure.
1.7 "Encumbrances" shall mean any lien, security interest, or option to
acquire or license rights in the Field.
1.8 "Field" shall mean [*].
1.9 "Improvements" shall mean improvements, additions, enhancements,
changes, modifications, or technical advances of or to the Combinatorial
Chemistry Technology [*]or Combinatorial Chemistry Software that are (i) reduced
to practice within the first five (5) years after the Effective Date, (ii)
claimed in a patent application filed within the first five (5) years after the
Effective Date, or (iii) disclosed in an invention disclosure by an employee of
Symyx or STI (or a contractor who has assigned such invention to Symyx or STI)
within the first five (5) years after the Effective Date, and intellectual
property rights to the foregoing, including know how associated with (i), (ii)
or (iii) above when transferred or made known to STI by Symyx.
1.9.1 "STI Improvements" shall mean Improvements made by or on behalf of STI,
independently or jointly.
1.9.2 "Symyx Improvements" shall mean Improvements made by or on behalf of
Symyx, independently or jointly.
1.10 "Know-How" shall mean confidential or proprietary information,
know-how, processes, procedures, methods, techniques, data, materials, drawings,
or documents owned or controlled or which otherwise can be licensed by Symyx as
of the Effective Date that is useful or necessary to practice Combinatorial
Chemistry Technology [*] or Combinatorial Chemistry Software in the Field, and
intellectual property rights in, to and under the foregoing, provided, however
that Know-How shall not include copyrights, trade secrets, designs, drawings or
other documents with respect to Symyx-designed instruments or Symyx-designed
software.
1.11 [*]
1.12 "Licensed Software" shall have the meaning set forth in Section 2.1.5.
1.13 "Patent Rights" shall mean rights in, to and under patents and patent
applications worldwide that are owned or controlled or which otherwise can be
licensed by Symyx as of the Effective Date and that have claims covering (or
claims that would be infringed, absent a license, by the practice of)
Combinatorial Chemistry Technology or [*] or Combinatorial Chemistry Software,
including but not limited to those patents and patent applications listed in
Exhibit B hereto; together with any divisions, substitutions, continuations,
re-examinations, or continuation-in-part thereof; all patents
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issuing on any of the foregoing; all reissues, extensions and renewals thereof;
all patents claiming priority back to any of the foregoing and all foreign
counterparts of the foregoing.
1.14 [*]
1.15 "[*] Product" shall mean [*]
1.16 [*]
1.17 "Term" shall have the meaning set forth in Section 10.1.
1.18 "Third Party" shall mean any person or entity other than Symyx and its
Affiliates, STI and its Affiliates, and their permitted assigns.
ARTICLE II
LICENSES
2.1 Licenses.
2.1.1 Grant. Subject to the terms of this Agreement, Symyx agrees to
grant and hereby grants to STI (i) an exclusive (except as set forth herein),
worldwide, perpetual, nontransferable (except as set forth in Section 11.3),
royalty-free license under the Patent Rights and Know-How solely to make (but
not to copy Symyx-designed instruments except as permitted in Section 2.4) and
use Combinatorial Chemistry Technology and [*] in the Field; (ii) an exclusive
(except as set forth herein), worldwide, perpetual, nontransferable (except as
set forth in Section 11.3), royalty-free license under the Patent Rights and
Know-How solely to research, develop, make, use, sell, offer to sell, export,
import or otherwise commercialize [*] Products in the Field, and (iii) a
nonexclusive, worldwide, perpetual, nontransferable (except as set forth in
Section 11.3), royalty-free license under the Patent Rights and Know-How solely
to make (but not to copy Symyx-designed software) and use (but not to use
Symyx-designed software except as set forth in Section 2.1.5) Combinatorial
Chemistry Software in the Field.
2.1.2 Symyx Activities. Notwithstanding the foregoing, Symyx shall
have the right to practice Combinatorial Chemistry Technology and [*], including
Symyx Improvements (i) in the Field, in order to carry out research undertaken
on behalf of or in collaboration with STI, and (ii) to conduct research,
development, manufacture, use or commercialization activities directed
toward [*].
2.1.3 Research License. Subject to the terms of this Agreement,
Symyx agrees to grant and hereby grants to STI a nonexclusive, worldwide,
perpetual, nontransferable (except as set forth in Section 11.3), royalty-free
license under the Patent Rights, Know-How, and Improvements to use Combinatorial
Chemistry Technology and [*] to conduct internal research and development
activities outside of the Field, but only in conjunction with and in support of
a research or development project in the Field. For purposes of illustration,
STI may conduct internal research and development activities pursuant to this
Section 2.1.3 to develop [*] technology aimed at [*] a [*] Product for use in
the Field, where such [*] Product is the subject of an active research and
development effort by STI. STI agrees to grant and hereby grants to Symyx an
exclusive, worldwide, perpetual, royalty-free license, with the right to
sublicense, to make, use, sell, offer to
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sell, sell, export or import any inventions resulting from research activities
of STI pursuant to this Section 2.1.3 outside of the Field. It is understood
that STI shall have no right to sell or otherwise commercialize any inventions
resulting from research activities of STI pursuant to this Section 2.1.3 other
than in connection with the sale or commercialization of a [*] Product in the
Field.
2.1.4 Know-How Transfer. The transfer of Know-How from Symyx to STI
under this Agreement shall be in the sole and absolute discretion of Symyx, and
this Agreement shall impose upon Symyx no obligation to transfer or make
available to STI any Know-How.
2.1.5 Licensed Software. Subject to the terms of this Agreement,
Symyx agrees to grant and hereby grants to STI a nonexclusive, worldwide,
perpetual, nontransferable (except as set forth in Section 11.3), royalty-free
license to install and use certain Licensed Software (as defined below) and
associated documentation provided by Symyx, in object code format, solely for
STI's internal research and development activities in the Field, as follows: (i)
such grant shall apply only with respect to the Symyx Renaissance(R) software
programs as set forth in Exhibit F (the "Licensed Software"), without upgrades,
updates or improvements thereafter; (ii) such grant will be limited to fifteen
(15) Named Users (as defined below); and (iii) Symyx is not providing, and STI
shall be responsible to secure or use its own Oracle database and appropriate
licenses thereto. STI agrees that it will not itself, nor through any parent,
subsidiary, Affiliate, agent, or other Third Party, directly or indirectly: (i)
reproduce or copy the Licensed Software, any component thereof, or any related
documentation (other than as necessary to exercise the rights granted in this
Section 2.1.5, including for backup purposes); (ii) distribute, sell, lease,
license, or sublicense the Licensed Software, any component thereof, or any
related documentation; (iii) use the Licensed Software, or any component thereof
or any related documentation for any other purpose other than as licensed above;
(iv) attempt to, or permit a third party to, through any means, reverse
engineer, disassemble, decrypt, decompile, or otherwise attempt to derive source
code from the Licensed Software; or (v) use the Licensed Software in connection
with any time-sharing or other multi-user network or service bureau (it being
understood such Licensed Software may be used in connection with research and
development collaborations and similar arrangements by STI employees and such
use shall not be deemed a service bureau so long as STI's collaborators or
similar third party does not itself use or access the Licensed Software).
Further, STI agrees that access to the Licensed Software shall be limited to
employees of STI, independent contractors performing scientific functions who
have entered into an agreement with STI containing confidentiality provisions
equivalent to those applicable to STI employees and other independent
contractors approved by Symyx in writing. A Named User is defined as a person
that uses the Software, or any part of the Software, or any software authored by
STI incorporating any of the Software, or any part of the Software, including
the indirect use of the Software, or any part of the Software, through a custom
or non-Symyx developed user interface. STI agrees to establish and maintain
records of Named Users and changes to Named Users, and to make such records
available to Symyx upon request. Named Users may be changed or replaced
according to reasonable business practices, program or project changes, or
changes in job function.
2.2 Sublicense. STI shall have the right to sublicense the rights
granted in Section 2.1.1, Section 2.3.1 and Section 2.7 as required or useful to
develop, make, use, sell, offer to sell, export and import [*] Products in the
Field. STI shall provide to Symyx prior written notice of any such sublicense,
and the terms of such sublicense shall be consistent with the terms of this
Agreement.
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Any such sublicensee shall agree to exercise such sublicensed rights only for
the purpose specified in this Section 2.2.
2.3 Improvements.
2.3.1 Symyx. Subject to the terms of this Agreement, Symyx agrees to
grant and hereby grants to STI (i) an exclusive (except as set forth herein),
worldwide, perpetual, nontransferable (except as set forth in Section 11.3),
royalty-free license under Symyx Improvements solely to make (but not to copy
Symyx-designed instruments except as permitted in Section 2.4) and use
Combinatorial Chemistry Technology and [*] in the Field; (ii) an exclusive
(except as set forth herein), worldwide, perpetual, nontransferable (except as
set forth in Section 11.3), royalty-free license under Symyx Improvements solely
to research, develop, make, use, sell, offer to sell, export, import or
otherwise commercialize [*] Products in the Field; and (iii) a nonexclusive,
worldwide, perpetual, nontransferable (except as set forth in Section 11.3),
royalty-free license under Symyx Improvements solely to make (but not to copy
Symyx-designed software or upgrades, updates or any improvements to the Licensed
Software) and use (but not to use Symyx-designed software or upgrades, updates
or any improvements to the Licensed Software) Combinatorial Chemistry Software
in the Field.
2.3.2 STI. Subject to the terms of this Agreement, STI agrees to
grant and hereby grants to Symyx (i) an exclusive, worldwide, perpetual,
royalty-free license, with the right to sublicense, under STI Improvements, to
make, use, sell, offer for sale, import, export and otherwise exploit
Combinatorial Chemistry Technology and [*] and Combinatorial Chemistry Software
outside of the Field and other than in the field of [*], and (ii) a
nonexclusive, worldwide, perpetual, royalty-free license, with the right to
sublicense, under STI Improvements, to make, use, sell, offer for sale, import,
export and otherwise exploit Combinatorial Chemistry Technology and [*] and
Combinatorial Chemistry Software in the field of [*] but outside of the Field.
2.3.3 Discussions and Transfer of Improvements. Representatives from
each of the parties shall meet at least every six (6) months and confer upon
request by either of the parties during the first five (5) years after the
Effective Date of this Agreement to discuss potential Improvements and then
identify and agree how to transfer their respective Improvements. In addition,
either party may request that the other party provide a list of potential
Improvements that are Material to the Field (as defined in Section 5.2) and that
relate to particular areas of interest identified by the requesting party. Upon
receipt of such request, the other party shall compile and provide such a list
to the requesting party, and the parties shall agree upon a transfer of such
material Improvements. When the parties have agreed upon the transfer of an
Improvement, such transfer shall include know how associated with such
Improvement. Minutes for these meetings shall be kept for both parties and both
parties agree to retain written records of Improvements identified and
transferred as a result of these discussions. The parties agree to act in good
faith in connection with the discussion, disclosure, and transfer of
Improvements.
2.4 Instruments and Software.
2.4.1 Symyx-Designed Instruments. In the event STI wishes to acquire
a Symyx-designed instrument (whether commercially available or otherwise) for
use solely in the Field, STI shall so notify Symyx, and Symyx will provide a
quotation for the sale of such instrument to STI. Such quotation will take into
account the fact that STI already has acquired, pursuant to this Agreement,
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the right to use Combinatorial Chemistry Technology in the Field. The parties
shall negotiate reasonably and in good faith the terms of such transaction. In
the event the parties are unable to reach written agreement with respect to the
terms of such transaction within forty-five (45) days of STI's initial request
or Symyx does not provide such instrument as agreed in the relevant agreement,
STI shall have the right to make (including copying) such instrument for use
solely in the Field, subject to the following provisions: (i) STI may not
receive assistance or know-how (other than Know-How made available by Symyx)
from Symyx or then-current Symyx personnel (absent a separate agreement between
the parties), (ii) STI may not hire or recruit then-current Symyx personnel to
make or participate in the making of such instrument. If STI requires the use of
then-current Symyx personnel or Symyx know how (other than Know-How made
available by Symyx) to make such instrument, the parties shall negotiate
reasonably and in good faith the terms of such assistance. In the event of a
breach of the provisions of (i) or (ii) of this Section 2.4.1, STI shall cease
all activities with respect to the making and use of such instrument and
negotiate with Symyx appropriate consideration for the use of such Symyx
assistance or know how; if the parties are unable to reach agreement on such
consideration (within sixty (60) days), STI shall refrain from all use of such
instrument, unless such breach is cured.
2.4.2 Having Made Instruments; Software. In the event STI wishes to
have a Third Party make a Combinatorial Chemistry Instrument for STI's use in
the Field, or make Combinatorial Chemistry Software (other than Symyx-designed
software) for STI's use in the Field, where such Combinatorial Chemistry
Instrument or such Combinatorial Chemistry Software, or the use of such
Combinatorial Chemistry Instrument, or such Combinatorial Chemistry Software, is
within a claim of the Patent Rights or within a claim of a patent or patent
application with respect to a Symyx Improvement, STI shall so notify Symyx, and
Symyx will provide a quotation for the sale of such instrument to STI or the
license of such Combinatorial Chemistry Software to STI. Such quotation, in the
case of an instrument, will take into account the fact that STI already has
acquired, pursuant to this Agreement, the right to use Combinatorial Chemistry
Technology in the Field. The parties shall negotiate reasonably and in good
faith the terms of such transaction. In the event the parties are unable to
reach written agreement with respect to the terms of such transaction within
forty-five (45) days of STI's initial request or Symyx does not provide such
instrument or software as agreed in the relevant agreement, Symyx agrees to
grant and hereby grants to STI the right to have a Third Party make such
Combinatorial Chemistry Instrument for STI's use solely in the Field, or to have
a Third Party make such Combinatorial Chemistry Software (other than
Symyx-designed software) for STI's use solely in the Field, as applicable,
subject to the following provisions: (i) all intellectual property rights
(whether invented by or on behalf of STI, such Third Party, or jointly, but not
including copyrights or trademarks relating to software) arising as a result of
the design and manufacture of such instrument or software shall be assigned to
Symyx, and the agreement between STI and such Third Party shall contain
provisions to that effect; (ii) such Third Party shall make such instrument or
software exclusively for STI's internal research purposes, and shall not provide
such instrument or software or a substantially similar instrument or software
(unless such Third Party can establish that the substantially similar instrument
or software was independently developed) to any other party, and the agreement
between STI and such Third Party shall contain provisions to that effect; (iii)
such Third Party agrees to be directly liable to STI and Symyx for damages
caused to STI and Symyx as a result of a breach of the provisions of (i) or (ii)
of this Section 2.4.2, (iv) STI shall take all diligent action to enforce the
provisions of (i), (ii), and (iii) of this Section 2.4.2 against such Third
Party; and (v) if STI fails to take such diligent action, STI shall
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be liable directly to Symyx for any damages Symyx has suffered resulting from
the breach by a Third Party of the provisions of (i), (ii), (iii), or (iv)
above.
2.4.3 Software. In the event STI wishes to license Symyx-designed
software (other than as provided for in Section 2.1.5) for use solely in the
Field, or wishes to access software support and/or upgrades, updates or
improvements, STI shall so notify Symyx, and the parties shall negotiate
reasonably and in good faith the terms of such transaction. Any Symyx quotation
for such items will be consistent with Symyx' then-current basis for pricing
such items.
2.5 Limitations.
2.5.1 STI. The licenses granted under Sections 2.1 and 2.3 expressly
exclude, and no right is provided hereunder under the Patent Rights, Know-How,
Symyx' intellectual property rights in Symyx Improvements or other Symyx
intellectual property rights, for STI to have made (except as set forth in
Section 2.4.2), sell, offer for sale, import or export (i) Combinatorial
Chemistry Technology or Combinatorial Chemistry Software, (ii) instrumentation
exclusively licensed to licensees of Symyx as set forth in Exhibit A, or (iii)
[*] Technology (other than as required to research, develop, make, use, sell,
offer to sell, export, import or otherwise commercialize [*] Products in the
Field).
2.5.2 Symyx. Nothing in this Agreement, including without limitation
Section 2.1, 2.2 and 2.3, shall restrict or prevent Symyx from (i) making,
having made, using (in connection with the development, manufacture, sale,
support, service and quality control of equipment or instruments as part of its
Discovery Tools business), selling, offering to sell, exporting or importing
equipment or instruments as part of its Discovery Tools(R) business, or from
licensing any Third Party purchaser or licensee of such equipment or instrument
to use such equipment or instrument, subject only to the provisions of this
Section 2.5.2, or (ii) licensing a Third Party equipment or instrument
manufacturer or seller to sell or license equipment, instruments or software
[*], and provide the buyer a license to use such equipment, instruments or
software, subject only to the provisions of this Section 2.5.2. Symyx agrees
that it will not, during the Term, develop, validate or adapt equipment,
instruments or software specifically for use in the Field (except for the
benefit of STI). Symyx further agrees that during the Term (a) it will not sell
or license equipment, instruments or software to any Third Party where Symyx
knows, or has reason to know, that such Third Party will actively use such
equipment, instruments or software for the identification or discovery of[*],
(b) it will not license a Third Party equipment or instrument manufacturer or
seller to sell or license equipment, instruments or software where Symyx knows,
or has reason to know, that such Third Party will manufacture or sell equipment,
instruments or software specifically designed for the identification or
discovery of[*], (c) it will not license a Third Party equipment or instrument
manufacturer or seller to sell or license [*] equipment, instruments or software
unless such Third Party equipment or instrument manufacturer or seller agrees
not to validate or adapt such equipment, instruments or software specifically
for use by the customer in the identification or discovery of[*], and (d) it
will not sell or license equipment, instruments or software to a Designated
Customer listed in Exhibit G hereto unless the license granted by Symyx in
connection with such transaction expressly excludes the use such equipment,
instruments or software for the identification or discovery of[*]. As used
herein, "identification or discovery of[*]" shall include [*], but shall not
include [*]. In furtherance of the provisions of this Section, Symyx agrees that
it will not provide to its Discovery Tools customers or its Third Party
equipment or instrument manufacturer or seller licensees a license,
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under the [*] Technology, in the Field and nothing in this Section 2.5.2 limits
the exclusivity of the licenses granted to STI in the Field hereunder with
respect to the [*]Technology.
2.6 Exceptions to Exclusivity. STI acknowledges that Symyx has granted
licenses to Third Parties under patents or patent applications included within
the Patent Rights and to Know-How, pursuant to those certain agreements between
Symyx and Third Parties (the "Prior Agreements"), listed on Exhibit C attached
hereto, and that such licenses did not exclude Third Party activities within the
Field. Accordingly, the rights granted to STI pursuant to this Agreement shall
not be exclusive with respect to the rights granted pursuant to such Prior
Agreements. It is understood that many of the Prior Agreements listed on Exhibit
C relate to (i) sales and licenses of equipment or instruments as part of Symyx'
Discovery Tools business and (ii) licensing transactions with a Third Party
equipment or instrument manufacturer or seller to sell or license equipment,
instruments or software, and that such Prior Agreements would not be within the
exclusivity provisions of this Agreement as a result of Section 2.5.2. Such
agreements are listed on Exhibit C for informational purposes.
2.7 [*] Applications. In the event STI identifies or develops a [*] Product
in the Field [*] through the exercise of the rights set forth in Section 2.1 or
2.3, Symyx agrees to grant and hereby grants to STI, under the Patent Rights,
Know-How, and Improvements, the right to make, use, sell, offer to sell, export,
import or otherwise commercialize such [*] Product for [*] applications [*]
2.8 Trademark. Symyx agrees to grant and hereby grants to STI a
nonexclusive, worldwide, nontransferable (except as set forth in Section 11.3),
nonsublicensable license, under the registered trademark Symyx(R) (the
"Trademark"), solely to use the Trademark in its name (Symyx Therapeutics or
Symyx Therapeutics, Inc.) and in promotion, advertising, marketing, sales or
other materials or products incorporating such name; provided, however, STI
shall comply with Symyx' generally applicable guidelines for use of the
Trademark in every use of the Trademark, or, if any such proposed use does not
comply with such guidelines, STI shall, prior to using the Trademark, obtain the
prior written consent of Symyx. Symyx shall have the right to review STI's use
of the Trademark to monitor compliance with the provisions hereof. The license
granted pursuant to this Section 2.8 shall continue as long as STI's corporate
name contains the Trademark, and shall terminate immediately in the event STI
changes its corporate name such that it does not contain the Trademark. In the
event that STI fails to meet any of its obligations under this Section 2.8,
Symyx may terminate only the license granted in this Section 2.8 if such
noncompliance is not cured within thirty (30) days of written notice.
2.9 Reservations. Except as expressly provided in this Agreement, no other
rights or licenses are granted by either of the parties to the other party.
2.10 Right of Negotiation. In the event it is determined that Symyx (without
breaching Section 7.1), as of the Effective Date, owned or controlled any
patents or patent applications, outside of the Patent Rights, that are necessary
or materially useful for STI to conduct research or development in the Field or
commercialize in the Field the results of such research, the parties will, at
the written request of STI, negotiate reasonably and in good faith for a period
of sixty (60) days for STI to acquire a license to such patents or patent
applications in the Field.
ARTICLE III
PAYMENTS
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3.1 STI Stock. In further consideration for the rights and licenses granted
by Symyx to STI herein, STI will issue STI preferred stock to Symyx pursuant to
a Series A-1 Preferred Stock Purchase Agreement between Symyx and STI.
ARTICLE IV
CONFIDENTIALITY
4.1 Confidentiality. Except as otherwise expressly provided herein, the
parties agree that until ten (10) years from signing of the Agreement, the
receiving party shall not, except as expressly provided in this Article IV,
disclose to any Third Party, or use for any purpose, any Confidential
Information furnished to it by the disclosing party pursuant to this Agreement,
except in each case to the extent that it can be established by the receiving
party by competent proof that such information:
(a) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving party;
(c) became generally available to the public or otherwise part of
the public domain after it disclosure and other than through any act or omission
of the receiving party in breach of this agreement;
(d) was independently developed by the receiving party without use
of, or reference to, the other party's confidential information, as demonstrated
by documented evidence prepared contemporaneously with such independent
development; or
(e) was disclosed to the receiving party, other than under an
obligation of confidentiality, by a Third Party authorized and entitled to
disclose such information to others.
Confidential Information shall not be considered within the above exceptions
merely because the Confidential Information is embraced by more general
information within the exceptions. Any combination of features of Confidential
Information shall not be considered within the above exceptions merely because
individual features, as opposed to the combination itself and its principles of
operation, are within the exception. Further, Symyx and STI agree to keep all
Know-How, including Improvements to Know-How that is made available by Symyx to
STI pursuant to Section 2.1.4, confidential pursuant to the terms of this
Section.
4.2 Permitted Use and Disclosures. Notwithstanding the restrictions of
Section 4.1, each party hereto may use or disclose Confidential Information
disclosed to it by the other party to the extent such use or disclosure is
reasonably necessary in (A) exercising the rights and licenses granted
hereunder, (B) prosecuting or defending litigation, (C) complying with
applicable laws, governmental regulations or court orders or submitting
information to tax or other governmental authorities (including, without
limitation, the Securities and Exchange Commission and in connection with
regulatory filings), (D) preparing, filing and prosecuting patent applications,
or (E) making a permitted sublicense or otherwise exercising license rights
expressly granted pursuant to this Agreement; in each case, provided that if a
party is required to make any such disclosure, other
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than pursuant to a confidentiality agreement or other agreement with appropriate
confidentiality obligations, it will give reasonable advance notice to the other
party of such disclosure and will use reasonable efforts to secure confidential
treatment of such information (whether through protective order or otherwise),
except to the extent inappropriate with respect to patent applications. It is
understood that either party may also disclose the Confidential Information of
the other party upon written consent to such disclosure by the duly authorized
representative of the other party.
4.3 Nondisclosure of Terms. Each of the parties hereto agrees not to
disclose the terms of this Agreement to any Third Party without the prior
written consent of the other party hereto (which consent shall not be
unreasonably withheld), except to such party's attorney's, accountants,
advisors, investors and financing sources and their advisors and others on a
need to know basis under circumstances that reasonably ensure the
confidentiality thereof, to the extent required by law, in connection with the
enforcement of this Agreement or rights under this Agreement, or in connection
with a merger, acquisition, financing transaction or proposed merger,
acquisition or financing transaction, or the like. Notwithstanding the
foregoing, the parties may agree upon a press release and timing to announce the
execution of this Agreement, and Symyx and STI may each thereafter disclose to
Third Parties the information contained in such press release without the need
for further approval by the other.
ARTICLE V
PATENTS
5.1 Prosecution. Symyx shall have the sole and exclusive right and
authority to control the filing, prosecution and maintenance of patents and
patent applications included within the Patent Rights, and with respect to Symyx
Improvements, at its own discretion and at its own expense. For purposes of this
Section 5.1, "filing, prosecution and maintenance" of patents and patent
applications shall be deemed to include, without limitation, appeals to
administrative or judicial entities having jurisdiction over patentability, the
conduct of interferences or oppositions, and/or requests for re-examinations,
reissues or extensions of patent terms. STI shall have the sole and exclusive
right and authority to control the filing, prosecution and maintenance of
patents and patent applications with respect to STI Improvements, at its own
discretion and at its own expense. In the event of Improvements, if any, jointly
invented by Symyx and STI, the parties will discuss and agree upon the filing,
prosecution and maintenance of patents and patent applications.
5.2 Symyx Right to Abandon. Symyx shall have the right and the sole and
ultimate discretion as to whether or not to pursue any further prosecution or
any further maintenance of any claims pending in a patent application included
within the Patent Rights. In the event Symyx determines to abandon a patent or
patent application Material to the Field, Symyx shall provide reasonable notice
to STI, and STI may elect to prosecute or maintain such application or patent,
at STI's sole expense, and in consultation with Symyx. In such event, upon the
request of and, at the expense of STI, Symyx shall provide reasonable
cooperation to STI. For the purposes of this Section 5.2, "Material to the
Field" shall mean necessary to avoid significant loss of exclusivity or
competitive advantage in the Field.
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ARTICLE VI
INFRINGEMENT
6.1 Enforcement. The Parties agree with respect to enforcement of the
Patent Rights, Know-How and Symyx Improvements that:
6.1.1 In the event that either party becomes aware of or suspects
third-party activities that could constitute a commercially significant
infringement or misappropriation of the Patent Rights or Know-How in the Field,
then such party shall promptly notify the other party of such third-party
activities, including identification of the third party and delineation of the
facts relating to such third-party activities. STI may offer to pay all of the
costs and expenses of a suit, action or other proceeding to enforce the Patent
Rights, Know-How, or Symyx Improvements against such commercially significant
infringing or misappropriating activities by a third party in the Field and
provide reasonable assurance to Symyx of its willingness and ability to pay all
of such costs and expenses, in which case Symyx shall undertake such suit,
action or other proceeding; provided, however, that if Symyx is of the view that
there does not exist a reasonable likelihood of infringement or
misappropriation, Symyx and STI shall mutually agree to have the matter reviewed
by an independent, reputable patent counsel, and in the event such counsel
opines that that there does not exist a reasonable likelihood of infringement or
misappropriation, Symyx shall have no obligation to undertake such suit, action
or other proceeding. Symyx shall keep STI reasonably informed as to the defense
and/or settlement of any action pursuant to this paragraph. It is understood and
agreed that Symyx shall have substantive and procedural decision making during
the course of such suit. Symyx shall not settle any suit, action or proceeding
for infringement or misappropriation of the Patent Rights, Know-How, or Symyx
Improvements in the Field pursuant to this paragraph without the written consent
of STI, which consent shall not be unreasonably withheld. Subject to the above
provisions, Symyx shall afford STI the opportunity to join such a suit and make
claims for any lost profits or other damages for infringement or
misappropriation of the Patent Rights, Know-How, or Symyx Improvements in the
Field at STI's expense.
6.1.2 In the event Symyx is required pursuant to Section 6.1.1 to
undertake a suit, action or other proceeding to enforce the Patent Rights,
Know-How, or Symyx Improvements against commercially significant infringing or
misappropriating activities by a third party in the Field, and declines to do
so, or fails to maintain such suit, action or proceeding as set forth in Section
6.1.1, STI may itself undertake such suit, action or other proceeding, and shall
keep Symyx reasonably informed as to such suit, action or other proceeding. STI
shall not enter into any settlement agreement with any such third party that
would impair Symyx' rights outside of the Field without the written consent of
Symyx.
6.1.3 All recoveries received from an action to enforce the Patent
Rights or Symyx Improvements in the Field shall be retained as follows: (i) all
recoveries received from an action pursuant to Section 6.1.1 shall be applied
first to reimburse STI for the costs and expenses of such suit, action or other
proceeding, and any remaining proceeds shall be divided between STI and Symyx,
wherein STI shall receive [*] of such remaining proceeds and Symyx shall obtain
[*] of such remaining proceeds; and (ii) all recoveries received from an action
pursuant to Section 6.1.2 shall be applied first to reimburse STI for the costs
and expenses of such suit, action or other proceeding, and any remaining
proceeds shall be divided between STI and Symyx, wherein STI shall receive [*]
of such remaining proceeds and Symyx shall obtain [*] of such remaining
proceeds.
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6.2 Cooperation. In any suit, action or other proceeding in connection with
enforcement or defense of the Patent Rights or Symyx Improvements in the Field,
the parties shall cooperate fully, including without limitation by joining as a
party plaintiff and executing such documents as may reasonably be requested. In
the event that STI is joined as a party plaintiff in any such proceeding, Symyx
shall indemnify STI from liability arising from the same to the extent that such
liability is based solely on STI being named by Symyx as a party-plaintiff and
is not based upon activities of STI. In the event that Symyx is joined as a
party plaintiff in any such proceeding, STI shall indemnify Symyx from liability
arising from the same to the extent that such liability is based solely on Symyx
being named as a party-plaintiff and is not based upon activities of Symyx.
6.3 No Implied Obligations. Except as expressly provided in this Article
VI, neither party has any obligation to bring or prosecute any suit, action or
proceeding against any Third Party for patent infringement.
ARTICLE VII
REPRESENTATIONS AND WARRANTIES
7.1 Symyx. Symyx represents and warrants as of the Effective Date that: (i)
it is a corporation duly organized, validly existing, and in good standing under
the laws of the State of Delaware; (ii) it has the power and authority to
execute and deliver this Agreement and to perform its obligations hereunder,
including granting the licenses provided for in this Agreement; (iii) it has by
all necessary corporate action duly and validly authorized the execution and
delivery of this Agreement and the performance of its obligations hereunder;
(iv) there is no litigation as to which Symyx has received service of process,
judgment or settlement against or owed by Symyx or pending or, to Symyx'
knowledge, threatened claims, proceedings or litigation relating to the Patent
Rights or Know-How or to Combinatorial Chemistry Technology or [*] Technology or
Combinatorial Chemistry Software, except the matter involving Hazard Evaluation
Laboratories, Inc. and Hazard Evaluation Laboratory Limited disclosed in Symyx'
filings with the Securities Exchange Commission and except for opposition
proceedings pending in Europe and other administrative matters pending in patent
offices; (v) there is no pending interference proceeding before the U.S. Patent
and Trademark Office with respect to the Patent Rights; (vi) to Symyx'
knowledge, it does not own or control any patents or patent applications,
outside of the Patent Rights, that would be necessary or materially useful for
STI to conduct research in the Field or commercialize in the Field the results
of such research; (vii) to Symyx' knowledge, the issued claims of the Patent
Rights as applicable to the Field are believed to be valid and enforceable;
(viii) to Symyx' knowledge, no Third Party is infringing or misappropriating
within the Field any Symyx intellectual property rights exclusively licensed to
STI hereunder in the Field, provided however that Symyx is aware that Third
Parties engaged in research with respect to products for [*] routinely use high
throughput or combinatorial research techniques, methodologies, instrumentation
and/or software, and that such research could be directed to the Field; (ix) to
Symyx' knowledge, it has received no notice from a Third Party indicating that
Symyx activities Material to the Field infringe or misappropriate the
intellectual property rights of a Third Party, nor has Symyx received any legal
opinions as to the validity or enforceability of Third Party patents Material to
the Field [*]; (x) Exhibit D lists all agreements pursuant to which Symyx has
in-licensed patents or patent applications that are within the Patent Rights;
(xi) to Symyx' knowledge, it has not received a notice of default with respect
to the in-license agreements listed on Exhibit D; (xii) Symyx has followed its
internal policies with respect to the prosecution, registration, maintenance and
payment of renewal fees on the patents and
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patent applications within the Patent Rights; (xiii) each of the Patent Rights
is free and clear of any Encumbrance within the Field, except as set forth in
the agreements listed in Exhibit D; (xiv) Symyx is not currently developing or
planning to develop new technology directed to the Field that would include
intellectual property rights not licensed to STI under Section 2.1 or Section
2.3.1 (provided that Symyx plans to continue its activities in high throughput
[*] research outside of the Field); and (xv) Exhibit C lists all agreements
pursuant to which Symyx has out-licensed patents or patent applications that are
within the Patent Rights whereby the licensee is not precluded from use of such
rights in the Field. As used herein, "to Symyx' knowledge" means to the actual
knowledge as of the Effective Date of Symyx personnel involved in negotiating
this Agreement with STI, or preparing or reviewing this Agreement (including
Symyx in house legal and patent counsel), without any investigation or duty to
investigate.
7.2 STI. STI represents and warrants that: (i) it is a corporation duly
organized, validly existing, and in good standing under the laws of the State of
Delaware; (ii) it has the power and authority to execute and deliver this
Agreement and to perform its obligations hereunder; and (iii) it has by all
necessary corporate action duly and validly authorized the execution and
delivery of this Agreement and the performance of its obligations hereunder.
ARTICLE VIII
INDEMNIFICATION
8.1 Symyx Indemnification. Symyx shall hold harmless and indemnify STI, its
trustees, directors, officers, employees, agents and the successor and assigns
of any of the foregoing (collectively, the "STI Indemnitees"), from and against
any and all claims, actions, suits, or proceedings brought by Third Parties
(including, without limitation, reasonable attorneys' fees and other expenses of
litigation) (any of the foregoing, a "Claim") against any STI Indemnitee,
arising from or occurring as a result of a breach of Symyx' representations and
warranties made herein; except, in each case, to the extent such Claim results
from the gross negligence or intentional misconduct of STI; and provided that a
STI Indemnitee that intends to claim indemnification under this Article VIII
shall: (i) promptly notify Symyx in writing of any Claim with respect to which
the STI Indemnitee intends to claim such indemnification, and (ii) provide Symyx
with reasonable assistance and full information with respect to such Claim.
Symyx shall have the sole right to control the defense and settlement thereof.
Notwithstanding the preceding sentence, Symyx shall not settle any claim, suit
or proceeding subject to this Article VIII or otherwise consent to an adverse
judgment in such claim, suit or proceeding if the same materially diminishes the
rights or interests of the STI Indemnitee without the express written consent of
the STI Indemnitee.
8.2 STI Indemnification. STI shall hold harmless and indemnify Symyx, its
trustees, directors, officers, employees, agents and the successor and assigns
of any of the foregoing (collectively, the "Symyx Indemnitees"), from and
against any and all claims, actions, suits, or proceedings brought by Third
Parties (including, without limitation, reasonable attorneys' fees and other
expenses of litigation) (any of the foregoing, a "Claim") against any Symyx
Indemnitee, arising from or occurring as a result of (i) a breach of STI's
representations and warranties made herein, (ii) based upon STI's business
activities constituting an infringement of that Third Party's patent rights or a
misappropriation of that Third Party's trade secret rights (other than in
connection with STI's practice of Combinatorial Chemistry Technology or [*]
Technology as licensed hereunder), (iii) based upon any compounds or products
manufactured, stored, used, sold or otherwise distributed by or on behalf of
STI, its Affiliates, Sublicensees or other designees (including, without
limitation,
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product liability and patent infringement claims); and (iv) arising from or
relating to the license agreement with[*]; except, in each case of (i) through
(iv) above, to the extent such Claim results from the gross negligence or
intentional misconduct of Symyx; and provided that a Symyx Indemnitee that
intends to claim indemnification under this Article VIII shall promptly notify
STI in writing of any Claim with respect to which the Symyx Indemnitee intends
to claim such indemnification, and provide STI with reasonable assistance and
full information with respect to such Claim. STI shall have the sole right to
control the defense and settlement thereof. Notwithstanding the preceding
sentence, STI shall not settle any claim, suit or proceeding subject to this
Article VIII, or otherwise consent to an adverse judgment in such claim, suit or
proceeding if the same materially diminishes the rights or interests of the
Symyx Indemnitee without the express written consent of the Symyx Indemnitee.
ARTICLE IX
DISCLAIMER
9.1 Disclaimer. EXCEPT AS EXPRESSLY PROVIDED IN THIS AGREEMENT, NEITHER
PARTY MAKES ANY WARRANTIES OR CONDITIONS (EXPRESS, IMPLIED, STATUTORY OR
OTHERWISE) WITH RESPECT TO THE SUBJECT MATTER HEREOF, AND EACH PARTY
SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED WARRANTIES OR CONDITIONS OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE, AND ALL WARRANTIES AND
CONDITIONS OF THE VALIDITY OF THE PATENT RIGHTS OR NONINFRINGEMENT OF THIRD
PARTY INTELLECTUAL PROPERTY RIGHTS. ANY SOFTWARE LICENSED HEREUNDER IS PROVIDED
"AS IS".
ARTICLE X
TERM AND TERMINATION
10.1 Term. Unless terminated earlier pursuant to this Article X, the Term of
this Agreement shall commence on the Effective Date and continue in effect until
expiration, revocation or invalidation of the last patent and the abandonment of
the last application (or until any such application otherwise no longer is
pending) included within the Patent Rights and within any patents or patent
applications licensed between the parties in connection with Improvements
pursuant to Section 2.3.
10.2 Termination for Breach. Either party to this Agreement may terminate
this Agreement in the event the other party shall have materially breached the
Agreement, and such material breach shall have continued for one hundred twenty
(120) days after written notice thereof was provided to the breaching party by
the non-breaching party. Any termination shall become effective at the end of
such one hundred (120) day period unless the breaching party (or any other party
on its behalf) has cured any such breach or default prior to the expiration of
the one hundred (120) day period. In the event of a dispute with respect to the
existence or cure of a material breach or default hereunder, this Agreement
shall remain in force and shall not be terminated and the cure period shall be
tolled pending resolution of such dispute pursuant to Section 11.13.
10.3 Termination for Insolvency. If voluntary or involuntary proceedings by
or against a party are instituted in bankruptcy under any insolvency law, or a
receiver or custodian is appointed for such party, or proceedings are instituted
by or against such party for dissolution, liquidation or winding-up of such
party, which proceedings, if involuntary, shall not have been dismissed within
sixty (60) days after the date of filing, or if such party makes an assignment
for the benefit of
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creditors, or substantially all of the assets of such party are seized or
attached and not released within sixty (60) days thereafter, the other party may
immediately terminate this Agreement effective upon notice of such termination.
10.4 Survival. The parties understand and agree that Articles IV, VI, VIII,
IX, X and XI, and Sections 2.1.1, 2.1.2, 2.1.3, 2.1.4, 2.1.5, 2.2, 2.3, 2.4.2,
2.5.1, 2.5.2, 2.6, 2.7, 2.8, and 2.9 shall survive the expiration and any
termination of this Agreement; provided, however, that in the event of
termination in accordance with Section 10.2 wherein STI has materially breached
Section 2.4 or Section 2.5.1, the licenses granted under Sections 2.1.1, 2.1.3,
2.2 and 2.3 shall survive only as nonexclusive licenses. Except as otherwise
provided in this Article X, all rights and obligations of the parties under this
Agreement shall terminate upon the expiration or termination of this Agreement.
Notwithstanding the above, licenses hereunder with respect to any patent shall
expire on the date of expiration of such patent.
ARTICLE XI
GENERAL
11.1 No Implied Obligations. Except as expressly provided herein, nothing in
this Agreement shall be deemed to obligate either of the parties.
11.2 Independent Contractors. The relationship of the parties hereto is that
of independent contractors. The parties hereto are not deemed to be agents,
partners or joint ventures of the others for any purpose as a result of this
Agreement or the transactions contemplated thereby.
11.3 Assignment. This Agreement shall not be assignable by either party
without the written consent of the other party hereto, except either party may
assign this Agreement, without such consent, to an entity that acquires all or
substantially all of the business or assets of the assigning party, whether by
merger, reorganization, acquisition, sale, or otherwise. Any purported
prohibited assignment without such consent shall be void and of no effect. This
Agreement shall be binding upon and accrue to the benefit of any permitted
assignee, and any such assignee shall agree to perform the obligation of the
assignor.
11.4 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment obligations)
on account of failure of performance by the defaulting party if the failure is
occasioned by war, strike, fire, Act of God, earthquake, flood, lockout,
embargo, act of terrorism, 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, intentional conduct or
misconduct of the non-performing 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.
11.5 Notices. All notices, requests and other communications hereunder shall
be in writing and shall be hand delivered, or sent by express delivery service
with confirmation of receipt, or sent by registered or certified mail, return
receipt requested, postage prepaid, or by facsimile transmission (with written
confirmation copy by registered first-class mail), in each case to the
respective address or facsimile number indicated below.
STI: Symyx:
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3100 Central Expressway 0000 Xxxxxxx Xxxxxxxxxx
Xxxxx Xxxxx, XX 00000 Xxxxx Xxxxx, XX 00000
Attn: President Attn: President
Fax: (000) 000-0000 Fax: (000) 000-0000
w/copy to: VP, Alliances & Legal Affairs
Any such notice shall be deemed to have been given when received. Either party
may change its address or facsimile number by giving the other party written
notice, delivered in accordance with this Section.
11.6 Governing Law. This Agreement and any dispute arising from the
construction, performance or breach hereof shall be governed by and construed
and enforced in accordance with, the laws of the state of California, without
reference to conflicts of law principles.
11.7 Waiver. It is agreed that no waiver by either party hereto of any
breach or default of any of the covenants or agreements herein set forth shall
be deemed a waiver as to any subsequent and/or similar breach or default.
11.8 Limitation of Liability. NEITHER PARTY SHALL BE LIABLE TO THE OTHER
PARTY OR ANY THIRD PARTY FOR ANY SPECIAL, CONSEQUENTIAL, EXEMPLARY OR INCIDENTAL
DAMAGES (INCLUDING LOST OR ANTICIPATED REVENUES OR PROFITS RELATING TO THE
SAME), ARISING FROM ANY CLAIM RELATING TO THIS AGREEMENT, WHETHER SUCH CLAIM IS
BASED ON CONTRACT, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, EVEN IF AN
AUTHORIZED REPRESENTATIVE OF SUCH PARTY IS ADVISED OF THE POSSIBILITY OR
LIKELIHOOD OF SAME.
11.9 Headings. The captions to the several Sections hereof are not part of
this Agreement, but are included merely for convenience of reference and shall
not affect its meaning or interpretation.
11.10 Severability. In the event that any provision of this Agreement becomes
or is declared by a court of competent jurisdiction to be illegal, unenforceable
or void, this Agreement shall continue in full force and effect to the fullest
extent permitted by law without said provision, and the parties shall amend the
Agreement to the extent feasible to lawfully include the substance of the
excluded term to as fully as possible realize the intent of the parties and
their commercial bargain.
11.11 Complete Agreement. This Agreement with its Exhibits, constitutes the
entire agreement, both written and oral, between the parties with respect to the
subject matter hereof, and all prior agreements respecting the subject matter
hereof, either written or oral, express or implied, shall be abrogated,
canceled, and are null and void and of no effect. No amendment or change hereof
or addition hereto shall be effective or binding on either of the parties hereto
unless reduced to writing and executed by the respective duly authorized
representatives of Symyx and STI.
11.12 Counterparts. This Agreement may be executed in counterparts, each of
which shall be deemed to be an original and all of which together shall be
deemed to be one and the same agreement.
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11.13 Dispute Resolution. Any dispute under this Agreement that is not
settled by mutual consent shall be solely, exclusively and finally settled by
binding arbitration, conducted in accordance with the procedures set forth in
Exhibit E.
11.14 Representation by Legal Counsel. Each party hereto represents that it
has been represented by legal counsel in connection with this Agreement and
acknowledges that it has participated in the drafting hereof. In interpreting
and applying the terms and provisions of this Agreement, the parties agree that
no presumption shall exist or be implied against the party that drafted such
terms and provisions.
11.15 Further Assurances. Each party shall execute and deliver such
additional instruments, documents or other writings as may be reasonably
requested by the another party in order to confirm and carry out and to
effectuate fully the intent and purposes of this Agreement.
[SIGNATURE PAGE FOLLOWS]
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed by their authorized representatives and delivered in duplicate
originals as of the Effective Date.
SYMYX THERAPEUTICS, INC. SYMYX TECHNOLOGIES, INC.
By: /s/ Xxx Xxxxxxxxxx By: /s/ Xxxxx X. Xxxxxxxx
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Title: President Title: Sr. V.P. & C.F.O.
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Date: Date:
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EXHIBIT A
EXCLUSIVE LICENSES
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EXHIBIT B
SYMYX PATENTS / PATENT APPLICATIONS
GRANTED PATENT OR
PUBLISHED NO. PENDING APPL. NO. TITLE
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EXHIBIT C
PRIOR SYMYX - THIRD-PARTY LICENSE AGREEMENTS
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TITLE OF AGREEMENT PARTIES TO AGREEMENT WITH SYMYX: EFFECTIVE DATE OF AGREEMENT
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[*] [*] [*]
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EXHIBIT D
INLICENSE AGREEMENTS
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EXHIBIT E
ALTERNATIVE DISPUTE RESOLUTION
In the event of any dispute, difference or question arising between the parties
in connection with this Agreement, the construction thereof, or the rights,
duties or liabilities of either party, and which dispute is not amicably
resolved by the good faith efforts of the parties, then such dispute will be
resolved by binding Alternative Dispute Resolution ("ADR") in the manner
described below:
1) If any party intends to begin an ADR to resolve a dispute, such party will
provide written notice to the other party informing the other party of such
intention and the issues to be resolved. Within 10 business days after the
receipt of such notice, the other party may by written notice to the party
initiating ADR, add additional issues to be resolved. From the date of
receipt of the ADR notice and until such time as any matter has been
finally settled by ADR, the running of the time periods in which a party
must cure a breach of this Agreement will be suspended as to the subject
matter of the dispute.
2) Within 5 business days following the receipt of the original ADR notice
("Notice Date") a neutral will be selected by the then President of the
Center for Public Resources ("CPR"), 14th Floor, 000 Xxxxxxx Xxxxxx, Xxx
Xxxx, Xxx Xxxx 00000. The neutral will be an individual who will preside in
resolution of any disputes between the parties. The neutral selected will
be a member of the Judicial Panel of the CPR and will not be an employee,
director or shareholder of either party or of an Affiliate of either party.
3) Each party will have 10 days from the date the neutral is selected to
object in good faith to the selection of that person. If either party makes
such an objection, the then president of the CPR will as soon as possible
thereafter, select another neutral under the same conditions set forth
above. This second selection will be final.
4) No later than 60 days after selection, the neutral will hold a hearing to
resolve each of the issues identified by the parties.
a) Each party will have the right to be represented by counsel at the
hearing.
b) The hearing will be held in San Francisco.
5) The ADR proceeding will be confidential and the neutral will issue
appropriate protective orders to safeguard each party's Confidential
Information. Except as required by law, no party will make (or instruct the
neutral to make) any public announcement with respect to the proceedings or
decision of the neutral without the prior written consent of each other
party. The existence of any dispute submitted to ADR, and the award of the
neutral, will be kept in confidence by the parties and the neutral, except
as required in connection with the enforcement of such award or as
otherwise required by applicable law.
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6) It is the intention of the parties that discovery, although permitted as
described herein, will be limited except in exceptional circumstances. The
neutral will permit such limited discovery necessary for an understanding
of any legitimate issue raised in the ADR, including the production of
documents. Each party will be permitted but not required to take the
deposition of not more than 5 persons, each such deposition not to exceed 6
hours in length. If the neutral believes that exceptional circumstances
exist, and additional discovery is necessary for a full and fair resolution
of the issue, the neutral may order such additional discovery as the
neutral deems necessary. At the hearing the parties may present testimony
(either by live witness or deposition) and documentary evidence. The
neutral will have sole discretion with regard to the admissibility of any
evidence and all other materials relating to the conduct of the hearing.
7) Each party will be entitled to no more than 4 hours of hearing to present
testimony or documentary evidence. The testimony of both parties will be
presented during the same calendar day. Such time limitation will include
any direct, cross or rebuttal testimony, but such time limitation will only
be charged against the party conducting such direct, cross or rebuttal
testimony. It will be the responsibility of the neutral to determine
whether the parties have had the 4 hours to which they are entitled. If the
neutral believes that exceptional circumstances exist, and additional
hearing time is necessary for a full and fair resolution of the issue, the
neutral may order such additional hearing time as the neutral deems
necessary.
8) At least 15 days prior to the date set for the hearing, each party will
submit to each other party and the neutral a list of all documents on which
such party intends to rely in any oral or written presentation to the
neutral and a list of all witnesses, if any, such party intends to call at
such hearing and a brief summary of each witnesses testimony.
9) At least 5 business days prior to the hearing, each party must submit to
the neutral and serve on each other party a proposed ruling on each issue
to be resolved and a proposed remedy. Such writing will be limited to
presenting the proposed ruling and remedy, will contain no argument or
analysis of the facts or issues, and will be limited to not more than 10
pages.
10) The arbitration hearing shall be conducted in the English language, and if
a translator or interpreter is required, the party needing such translator
or interpreter shall provide one at its own expense.
11) Not more than 5 business days following the close of hearings, the parties
may each submit post-hearing briefs to the neutral addressing the evidence
and issues to be resolved. Such post-hearing briefs will not be more than
50 pages.
12) The neutral will rule on each disputed issue after the hearing as
expeditiously as possible, but in no event more than 30 days after the
close of the hearing. The neutral will, in rendering his decision, apply
the substantive law of the state of California, U.S.A., and without giving
effect to its principles of conflicts of law, and without giving effect to
any rules or laws relating to arbitration.
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13) Any judgment upon the award rendered by the neutral may be entered in any
court having jurisdiction thereof. The decision rendered in any such ADR
will be final and not appealable, except in cases of fraud or bad faith on
the part of the neutral or any party to the ADR proceeding in connection
with the conduct of such proceedings, and will be enforceable in any court
of competent jurisdiction.
14) The neutral will have the option to assess costs and expenses to the
non-prevailing party; otherwise the parties will pay their own costs
(including, without limitation, attorneys fees) and expenses in connection
with such ADR.
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EXHIBIT F
LICENSED SOFTWARE
Symyx Library Studio(R)Software Version 5.2
Symyx Impressionist(R)Software Version 4.0
Symyx Epoch(TM)Software Version 1.7
Symyx PolyView(R)Software Version 1.3
Renaissance Application Server and Database Version 2.0 (STI shall be
responsible to secure or use its own Oracle database and appropriate licenses
thereto)
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EXHIBIT G
DESIGNATED CUSTOMERS
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