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EXHIBIT 10.21
INTELLECTUAL PROPERTY PURCHASE AGREEMENT
BETWEEN
NEOPATH, INC.
AND
AUTOCYTE, INC.
DATED AS OF APRIL 24, 1999
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INTELLECTUAL PROPERTY PURCHASE AGREEMENT
This Agreement, dated as of April 24, 1999, is made and entered into by
and between NeoPath, Inc., located at 0000 000xx Xxxxxx X.X., Xxxxxxx,
Xxxxxxxxxx 00000 ("NeoPath"), and AutoCyte, Inc., located at 000 Xxxxxxxxxx
Xxxxx, Xxxxxxxxxx, Xxxxx Xxxxxxxx 00000 ("AutoCyte"). NeoPath and AutoCyte are
sometimes referred to collectively as the "Parties" and individually as a
"Party."
The Parties agree as follows:
SECTION 1. DEFINITIONS
The following terms will have the following specified meanings whenever
used in this Agreement with initial letters capitalized:
"ACQUIRED ASSETS" means (a) a fifty-five percent (55%) undivided,
royalty-free and fully paid-up ownership right, title, and interest in and to
the NSI Intellectual Property Rights (including, without limitation, all rights
to perfection, registration, rights against Third Parties, and rights to defend
the NSI Intellectual Property Rights), (b) undivided rights to fifty-five (55%)
percent of the benefit of all covenants, representations and warranties made by
NSI to AutoCyte, and (c) an undivided right to all approvals and consents
acquired by NSI or AutoCyte in connection with the NSI AutoCyte Agreement.
"AFFILIATE" means any Person directly or indirectly (through any number
of successive tiers) that controls, is controlled by, or is under the common
control with a Party.
"BANKRUPTCY CASE" means Case Number 99-00703 pending before the United
States Bankruptcy Court for the District of Delaware.
"CLOSING" means the consummation of NeoPath's purchase of an undivided
ownership interest in the Acquired Assets as contemplated by Section 2.
"CONFIDENTIAL INFORMATION" means any confidential or proprietary
information of NSI that is transferred to AutoCyte, whether of a technical,
business or other nature (including, but not necessarily limited to: trade
secrets, know how, and information relating to the NSI Intellectual Property
Rights, customers, business plans, promotional and marketing activities,
finances and other business affairs of NSI.
"DOCUMENTATION" means any design, plan, drawing, schematic, flow chart,
photograph, notebook, notice, premarket approval, writing, tape or other
documentation (whether in handwritten, printed, coded, magnetic, electronic or
other form or media).
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"IMPROVEMENT" means any correction, modification, enhancement,
improvement, update, revision or derivative to or of the NSI Intellectual
Property Rights or the intellectual property covered thereby.
"LITIGATION" means the claims in the three lawsuits described on
Exhibit A and any other claims filed subsequent to the commencement of those
lawsuits that are based on the NSI Intellectual Property Rights pending against
either Party.
"MAKE" (or such conjugations thereof, as the context may require) means
manufacture, assemble, produce, reproduce, copy or make (or such conjugations
thereof, as the context may require).
"NSI" means Neuromedical Systems Inc., and each Person that is an
Affiliate of NSI.
"NSI-AUTOCYTE AGREEMENT" means that certain Asset Purchase Agreement
dated as of March 25, 1999, pending in the Bankruptcy Case by which, subsequent
to entry of any order in the Bankruptcy Case, AutoCyte will acquire the NSI
Intellectual Property Rights.
"NSI INTELLECTUAL PROPERTY RIGHTS" means "Transferred Intellectual
Property" and "Transferred Claims" as those terms are defined in the
NSI-AutoCyte Agreement, and includes, without limitation, the Patent Rights and
the Trademark Rights.
"NSI PRODUCTS" means XxxXxx, XX0XX, and PapNet-On-Cyte.
"PATENT RIGHTS" means the same in this Agreement as "Transferred Patent
Rights" means in the NSI-AutoCyte Agreement.
"PERSON" means any individual, corporation, partnership, limited
liability company, trust, association, organization, governmental authority or
other entity.
"RESERVED CLAIMS" means the claims of the Parties that are not based on
the NSI Intellectual Property Rights.
"SECURITIES ACT" means the Securities Act of 1933, as amended, or any
similar Federal statute, and the rules and regulations of the Commission issued
under such Act, as they each may, from time to time, be in effect.
"SHARES" means 1,230,000 shares of NeoPath's common stock.
"THIRD PARTY" means any Person other than a named party to this
Agreement.
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"TRADEMARK RIGHTS" means the same in this Agreement as "Transferred
Trademark Rights" means in the NSI-AutoCyte Agreement.
SECTION 2. PURCHASE AND SALE
2.1 PURCHASE OF ACQUIRED ASSETS
Subject to the terms and conditions of this Agreement (including,
without limitation, the limitations with respect to the Patent Rights described
in Section 5.2 of this Agreement), at the Closing, AutoCyte will sell, assign,
transfer, convey, and deliver to NeoPath, and NeoPath will purchase, acquire,
and accept the Acquired Assets from AutoCyte, free and clear of all liens,
claims, restrictions, interests, and encumbrances except for restrictions
arising because NSI's representations, warranties, and covenants to AutoCyte set
forth in the NSI-AutoCyte Agreement turn out not to be true as of either March
25, 1999 or the date of closing of the NSI-AutoCyte Agreement.
2.2 CLOSING AND DELIVERIES
2.2.1 CLOSING CONDITIONS, DATE AND PLACE
The Closing will occur after (a) NeoPath's verification, in its
reasonable discretion, that the Acquired Assets can and will be sold, assigned,
transferred, conveyed, and delivered to NeoPath at the Closing without any Third
Party, following the Closing, retaining, holding or having, based on any
licenses, distributorships, agreements, reservations, liens or other agreements
(including any of the agreements listed on Schedule 3.1(f) of the NSI-AutoCyte
Agreement) any right to claim against NeoPath for patent infringement in the
United States, Canada or Europe based on the NSI Intellectual Property Rights,
provided that such verification shall be completed or waived and NeoPath shall
notify AutoCyte whether this closing condition is satisfied as soon as
practicable after the closing of the transactions contemplated by the
NSI-AutoCyte Agreement (it being understood that this closing condition shall be
independent of the representations and warranties of AutoCyte contained in
Section 5.2 or any limitations, restrictions, reservations, claims, interests,
liens and encumbrances on the NSI Intellectual Property Rights identified or
permitted under Section 2.1 or under Section 5.2 or otherwise under this
Agreement, and such condition may be invoked by NeoPath whether or not such
representations and warranties were true and correct when made or are true and
correct at the time NeoPath notifies AutoCyte that this closing condition is
satisfied or waived and whether or not such limitations, restrictions,
reservations, claims, interests, liens and encumbrances exist or will exist at
or after such time), (b) an order has been entered in the Bankruptcy Case
approving AutoCyte's acquisition of the NSI Intellectual Property Rights, and
(c) AutoCyte has acquired all the NSI Intellectual Property Rights. If such
conditions are met, the Closing will take place on the later of September 1,
1999 (unless the Parties agree in writing to an extension of such deadline) or
three (3) business days after the closing of AutoCyte's acquisition of all the
NSI Intellectual Property Rights pursuant to the NSI-AutoCyte Agreement at 10
a.m. local time at the offices of
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 3
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Xxxxxxx Coie LLP, 000 - 000xx Xxxxxx X.X., Xxxxxxxx, Xxxxxxxxxx 00000, or such
other time or location as NeoPath and AutoCyte will agree upon.
2.2.2 INSTRUMENTS OF SALE AND TRANSFER; FURTHER ASSURANCES
At or prior to the Closing, AutoCyte will deliver to NeoPath such
instruments of sale and assignment as will vest NeoPath with the Acquired
Assets. AutoCyte will take reasonable additional steps as may be necessary by
NeoPath to record and put NeoPath in ownership of the Acquired Assets to the
extent contemplated hereby, including, without limitation, the steps described
in paragraph 4.3.1.
2.3 PURCHASE PRICE
The purchase price for the Acquired Assets will be (a) Two Million Two
Hundred Thousand Dollars ($2,200,000) and (b) the Shares. Such purchase price
will be due on the later of Closing or September 1, 1999 (unless the Parties
agree in writing to a date subsequent to September 1, 1999). The cash portion of
the purchase price will be paid by certified check or wire transfer, and the
Shares will be evidenced by a certificate registered in AutoCyte's name or in
the name of any wholly-owned Affiliate of AutoCyte, whether now-existing or
hereafter formed.
2.4 RESERVATION OF RIGHTS
As between the Parties, the Parties retain all right, title and
interest in and to their respective intellectual property that is not part of
the NSI Intellectual Property Rights.
SECTION 3. COVENANTS
3.1 COVENANTS OF AUTOCYTE
3.1.1 APPROVAL AND CLOSING OF THE NSI-AUTOCYTE AGREEMENT
AutoCyte will use its best efforts to acquire the NSI Intellectual
Property Rights, including, without limitation, seeking and obtaining the entry
of an order in the Bankruptcy Case approving and authorizing the acquisition by
AutoCyte of all NSI Intellectual Property Rights and closing the purchase of the
NSI Intellectual Property Rights; provided that AutoCyte shall not be required
hereunder to pay more for the NSI Intellectual Property Rights than the
consideration contemplated by the NSI-AutoCyte Agreement.
3.1.2 DISCLOSURE TO NEOPATH OF THE NSI INTELLECTUAL PROPERTY
RIGHTS
3.1.2.1 Within thirty (30) days after the Closing,
AutoCyte will prepare and submit to NeoPath a written report setting forth in
reasonable detail a description of each of the following to the extent such have
been provided to AutoCyte by NSI and such have not been previously disclosed or
delivered to NeoPath:
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(a) any NSI Intellectual Property Rights;
(b) any material Documentation of any NSI Intellectual
Property Rights;
(c) any restrictions on the rights to any portion of the NSI
Intellectual Property Rights that NSI licensed or otherwise acquired
from any third party and a description of the applicable portion of the
NSI Intellectual Property Rights;
(d) the files of all attorneys for NSI related to the Patent
Rights (including, without limitation, patents in the Litigation or any
other action or proceeding);
(e) all software of NSI in an industry-standard, machine
readable format; and
(f) all documents supporting the U.S. clinical trial of the
PR1MA and a list of all hardware documentation;
(g) any Documentation that evidences any such restrictions of
third parties.
3.1.2.2 Upon NeoPath's request, AutoCyte will provide
to NeoPath:
(a) a copy of any Documentation described in subparagraph
3.1.2.1(b) or (d);
(b) a copy of any additional Documentation required to fully
disclose the NSI Intellectual Property Rights to NeoPath;
(c) access to AutoCyte's employees as reasonably required to
fully disclose the NSI Intellectual Property Rights to NeoPath upon
prior notice and in a manner so as not to interfere with AutoCyte's
business; and
(d) such other information as NeoPath may reasonably request
to fully disclose the NSI Intellectual Property Rights to NeoPath.
3.1.2.3 Upon NeoPath's written request, AutoCyte will
make additional reasonable
efforts to obtain from NSI and from NSI's employees information reasonably
requested by NeoPath related to the NSI Intellectual Property Rights.
3.1.3 AMENDMENT TO NSI-AUTOCYTE AGREEMENT
AutoCyte will not agree to any amendment to the NSI-AutoCyte Agreement
and will not waive any condition to closing, consent, or approval required under
the NSI-AutoCyte Agreement without the prior written consent of NeoPath, which
consent will not be unreasonably withheld.
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 5
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3.1.4 RESTRICTIONS ON THE SHARES
The Shares shall not be sold or transferred by AutoCyte unless either
(A) they first shall have been registered under the Securities Act or (B)
NeoPath first shall have been furnished with an opinion of legal counsel,
reasonably satisfactory to NeoPath, to the effect that such sale or transfer is
exempt from the registration requirements of the Securities Act.
Each certificate representing the Shares shall bear a legend
substantially in the following form:
"The shares represented by this certificate have not been registered
under the Securities Act of 1933, as amended (the "Act"), or applicable
state securities laws and may not be transferred or otherwise disposed
of unless and until such shares are registered under the Act and such
laws or (1) registration under applicable state securities laws is not
required and (2) an opinion of counsel satisfactory to the Company is
furnished to the Company to the effect that registration under the Act
is not required."
The foregoing legend shall be removed from the certificates
representing any Shares at the request of the holder thereof at such time as
they become registered under the Securities Act or eligible for resale pursuant
to Rule 144(k) under the Securities Act (or any successor provision).
NeoPath shall be entitled to place a stop order on the Shares to ensure
that transfers are made in accordance with the terms of this Agreement.
3.2 MUTUAL COVENANTS REGARDING LITIGATION
3.2.1 DISMISSAL OF THE LITIGATION
After the Closing, the Parties will each cause their attorneys to
stipulate to a substitution of AutoCyte for NSI in the Litigation. Each Party
will use its best efforts to cause the Litigation to be dismissed by the date
ten (10) business days after the Closing. Such dismissals will be without
prejudice and without costs to either Party but subject to the mutual release in
subparagraph 3.2.2 and the mutual covenant not to xxx in subparagraph 3.2.3
hereof.
3.2.2 MUTUAL RELEASE OF CLAIMS
As of the Closing, the Parties hereby irrevocably and unconditionally
release each other from any claim pending in the Litigation and from any claim
based on the NSI Intellectual Property Rights or the NSI Products. The Parties
do not release each other from claims based on anything other than the claims
pending in the Litigation or from claims based on anything unrelated to the NSI
Intellectual Property Rights or the NSI Products.
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 6
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3.2.3 MUTUAL COVENANT NOT TO XXX
As of the Closing, the Parties hereby irrevocably and unconditionally
covenant not to xxx, or bring, prosecute, assist or participate in any judicial,
administrative or other action or proceeding of any kind against (i) the other
Party, or any Affiliate of the other Party, on account of the NSI Intellectual
Property Rights or NSI Products or (ii) any reseller or customer of the other
Party or its Affiliates but only with respect to such reseller's or customer's
selling or distributing (not Making, having Made, or using) products based on
the NSI Intellectual Property Rights or the NSI Products.
3.2.4 NEGOTIATE IN GOOD FAITH
The Reserved Claims are not part of the NSI Intellectual Property
Rights and will not be affected by any dismissal, release, or covenant not to
xxx set forth in paragraph 3.2. The Parties will negotiate in good faith to
attempt to reach resolution of Reserved Claims before January 20, 2000. Prior to
January 20, 2000, each Party will not commence an action or proceeding against
the other Party on the Reserved Claims; provided, however, either Party may
assert the Reserved Claims as counterclaims in any action or proceeding the
other Party commences in breach of the obligation in this subparagraph.
SECTION 4. COOPERATION IN CO-OWNERSHIP OF, AND RESTRICTIONS ON TRANSFER OF, NSI
INTELLECTUAL PROPERTY RIGHTS
4.1 NO RIGHT TO IMPROVEMENTS OR ACCOUNTING
Except as otherwise provided in a separate written agreement entered
into by the Parties after the date of this Agreement, neither Party will have
any right or interest in or to any Improvement made by the other Party. Except
as otherwise provided in a separate written agreement entered into by the
Parties after the date of this Agreement, neither Party will have any right or
interest in or to any revenues, profits or other benefits derived by the other
Party from such other Party's commercial exploitation of any NSI Intellectual
Property Rights.
4.2 RESTRICTION ON LICENSING OR ASSIGNING THE NSI INTELLECTUAL PROPERTY
RIGHTS
No Party will license or assign any rights to the NSI Intellectual
Property Rights without the prior written consent of the other Party.
Notwithstanding the foregoing, each party may license the following rights in
the NSI Intellectual Property Rights without the prior written consent of the
other Party:
(a) any right to Affiliates;
(b) right to use NSI Intellectual Property Rights to end user
customers of the Party;
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(c) right to furnish support to customers in connection with
their end user licenses from the Party;
(d) right to have Made any product embodying the NSI
Intellectual Property Rights; and
(e) right to market and distribute the NSI Intellectual
Property Rights to the Party's distributors and
resellers.
4.3 PERFECTION OF INTERESTS
4.3.1 After the Closing, each Party will cooperate in amending
all public filings with respect to the NSI Intellectual Property Rights to name
both Parties as being the record owners of the NSI Intellectual Property Rights
and to otherwise reflect the co-ownership of the NSI Intellectual Property
Rights. Each Party will take such further action (including, but not limited to,
the execution, acknowledgment and delivery of assignments, instruments of
transfer and conveyance, and other documents) as may be reasonably requested by
the other Party to evidence, perfect or effect such other Party's rights, titles
and interests in and to any NSI Intellectual Property Rights.
4.3.2 If a Party wishes to make an application, registration
or filing with any governmental authority to effect, perfect, evidence or
enforce any patent, copyright, trademark or other proprietary right in any of
the NSI Intellectual Property Rights, such Party will furnish the other Party
not less than fifteen (15) calendar days' advance written notice of its intent
to make such a filing. The Party receiving such notice may within fifteen (15)
calendar days elect in writing to participate and pay one-half (1/2) the cost of
such application, registration or filing with any governmental authority. Any
Party not so electing to participate with the other Party in such application,
registration, or filing will nevertheless cooperate with the other Party in such
filing. Further, upon request of such other Party, the Party making the filing,
application, registration or action will assign or otherwise transfer to such
other Party a fifty percent (50%) undivided interest in such filing,
application, registration or action and any NSI Intellectual Property Rights
evidenced, perfected or effected by the same.
4.3.3 Each Party will take appropriate steps and precautions
for the protection against any loss or diminishment of any NSI Intellectual
Property Rights. Without limiting the generality of the foregoing, each Party
will exercise at least the same degree of care against any unauthorized use or
disclosure of any trade secrets included in such NSI Intellectual Property
Rights as such Party exercises with regard to its own trade secrets.
4.4 THIRD-PARTY INFRINGEMENT
Each Party will give the other Party prompt written notice of any claim
or challenge to the NSI Intellectual Property Rights and of any infringement,
misappropriation or violation of any of the NSI Intellectual Property Rights by
any Third Party that may come to such
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Party's attention (including, without limitation, a statement of the facts which
are known by the Party giving the notice and which such Party believes might
reasonably serve as a basis for a claim of such infringement, misappropriation
or violation, supported by copies of any pertinent documentation within the
possession or control of the Party giving the notice). Each Party may, but will
not be obligated to, investigate defending or pursuing any legal action or
proceeding that it deems appropriate against any infringement, misappropriation
or violation of the NSI Intellectual Property Rights. In connection with any
defense or legal action or proceeding commenced by the Party under this
paragraph:
(a) the Party will give the other Party written notice of its
intent to defend or commence the action or proceeding a reasonable
period in advance of such defense or commencement;
(b) neither Party will use the other Party's name as a party
to an action or proceeding without such Party's prior written consent
except to the extent absolutely required to properly defend or commence
or prosecute the action or proceeding;
(c) either Party may, at its option, participate in any such
action or proceeding (e.g., as a party to the action), and will pay its
attorneys' fees and other costs to participate in such action or
proceeding;
(d) each Party will provide the other Party such information
relating to the action or proceeding as the other Party may reasonably
request; and
(e) any recovery in such action or proceeding will be applied
first to pro-rate reimbursement of the Parties' costs and expenses
incurred in connection with such action or proceeding, second to be
divided between the Parties in proportion to their respective damages
suffered on account of the infringement, misappropriation or violation,
and third to a split between the Parties, with fifty-five percent (55%)
of any amount to NeoPath and forty-five percent (45%) of any amount to
AutoCyte.
4.5 LIMITATION
Except as otherwise provided for under paragraphs 4.3 and 4.4, neither
Party will have any obligation to:
(a) xxx, recover damages or obtain relief for any
infringement, misappropriation or violation of any copyright, trademark
or other proprietary right in any of the NSI Intellectual Property
Rights;
(b) make any application, registration or filing with any
governmental authority to effect, perfect, evidence or enforce any
copyright, trademark or other proprietary right in any of the NSI
Intellectual Property Rights; or
(c) otherwise protect any of the NSI Intellectual Property
Rights.
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SECTION 5. WARRANTIES
5.1 BY NEOPATH
NeoPath represents and warrants to AutoCyte that:
(a) NeoPath has the full power and authority to execute,
deliver and perform this Agreement;
(b) NeoPath's execution, delivery and performance of this
Agreement will not conflict with, result in a breach of or constitute a
default under any contract, agreement or other obligation of NeoPath;
(c) when delivered to AutoCyte, the Shares will have been duly
authorized, validly issued, and will be fully paid-up and nonassessable
shares of NeoPath's common stock;
(d) NeoPath has obtained any and all approvals, consents and
other actions required for NeoPath to execute, deliver and perform this
Agreement.
5.2 BY AUTOCYTE
AutoCyte represents and warrants to NeoPath that:
(a) AutoCyte has the full power and authority to execute,
deliver and perform this Agreement;
(b) AutoCyte's execution, delivery and performance of this
Agreement will not conflict with, result in a breach of, or constitute
a default under any contract, agreement or other obligation of
AutoCyte;
(c) upon the entry of an order in the Bankruptcy Case
approving the sale to AutoCyte of the NSI Intellectual Property Rights,
AutoCyte will have obtained any and all approvals, consents and other
actions required for AutoCyte to execute, deliver and perform this
Agreement;
(d) to the best of AutoCyte's knowledge following the limited
due diligence and investigation conducted by AutoCyte, the NSI
Intellectual Property Rights include all the tangible and intangible
intellectual property of NSI of any kind or nature;
(e) except as set forth in Schedule 3.1(f) to the NSI-AutoCyte
Agreement, as of the Closing, AutoCyte will have all right, title and
interest in and to the U.S., Canadian or European (including
Switzerland, Belgium, Germany, Denmark, Spain, Finland, France, United
Kingdom, Ireland and the Netherlands) Patent Rights free and clear of
any lien, claim, restriction, interest, or encumbrance of NSI (provided
the
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representations and warranties NSI made to AutoCyte in the NSI-AutoCyte
Agreement about the NSI Intellectual Property Rights are true) and will
have the exclusive right to dismiss all claims against NeoPath in the
Litigation and to release NeoPath, as set forth in subparagraph 3.2.2,
from such claims;
(f) as of the closing of the transactions contemplated by the
NSI-AutoCyte Agreement, AutoCyte will have paid NSI Four Million
Dollars ($4,000,000) plus 1.4 million of its shares of common stock in
AutoCyte to NSI for acquisition of the NSI Intellectual Property Rights
and is not entitled to any discount, offset, rebate, payment on an
amount scheduled by NSI or on a proof of claim, or other reduction in
such amounts; and
(g) except as set forth in Schedule 3.1(f) to the NSI-AutoCyte
Agreement, and except for a forty-five percent (45%) undivided,
royalty-free and fully paid-up ownership right, title, and interest in
and to the NSI Intellectual Property Rights retained by AutoCyte, the
right, title and interest in and to the U.S., Canadian or European
(including Switzerland, Belgium, Germany, Denmark, Spain, Finland,
France, United Kingdom, Ireland and the Netherlands) Patent Rights
transferred to NeoPath hereunder will be free and clear of any lien,
claim, restriction, interest, or encumbrance arising from NSI, its
creditors, and parties in interest (provided the representations and
warranties NSI made to AutoCyte in the NSI-AutoCyte Agreement about the
NSI Intellectual Property Rights are true) or arising from AutoCyte,
its creditors, or its parties in interest.
SECTION 6. INDEMNIFICATION
6.1 INDEMNIFICATION BY NEOPATH
NeoPath will defend and indemnify AutoCyte (including its directors,
officers, employees and agents) from and against any and all claims,
liabilities, damages, costs and expenses (including, but not limited to,
reasonable attorneys' fees) arising out of:
(a) any breach of NeoPath's warranties set forth in
paragraph 5.1;
(b) NeoPath's commercial exploitation of the NSI
Intellectual Property Rights;
(c) any breach of NeoPath's obligations in Sections 3 and
4; and
(d) any claim by a Third Party based on the NSI
Intellectual Property;
provided, however, that NeoPath will not be obligated to defend, indemnify or
hold harmless AutoCyte (or its directors, officers, employees or agents) from or
against any claim, liability, damage, cost or expense if and to the extent the
same is attributable to any negligence, willful misconduct or breach of this
Agreement by AutoCyte.
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6.2 INDEMNIFICATION BY AUTOCYTE
AutoCyte will defend and indemnify NeoPath (including its directors,
officers, employees and agents) from and against any and all claims,
liabilities, damages, costs and expenses (including, but not limited to,
reasonable attorneys' fees) arising out of:
(a) any breach of AutoCyte's warranties set forth in
paragraph 5.2;
(b) AutoCyte's commercial exploitation of the NSI
Intellectual Property Rights;
(c) any breach of AutoCyte's obligations in Sections 3
and 4; and
(d) any claim by a Third Party based on the NSI
Intellectual Property;
provided, however, that AutoCyte will not be obligated to defend, indemnify or
hold harmless NeoPath (or its directors, officers, employees or agents) from or
against any claim, liability, damage, cost or expense if and to the extent the
same is attributable to any negligence, willful misconduct or breach of this
Agreement by NeoPath.
6.3 NOTICE, COOPERATION, ETC.
The Party seeking to enforce the other Party's obligations under
paragraph 6.1 or 6.2 will:
(a) give such other Party prompt written notice of the claim;
(b) cooperate with such other Party in connection with the
defense and settlement of the claim;
(c) not settle or compromise the claim without the prior
written consent of such other Party; and
(d) permit such other Party to control the defense and
settlement of the claim.
SECTION 7. MISCELLANEOUS
7.1 NOTICES
Any notice under this Agreement will be made in writing and may be
given or served by:
(a) delivering the same in person or by prepaid messenger
service to the Person to be notified;
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(b) depositing the same in the mail, postage prepaid,
registered or certified with return receipt requested, and addressed to
the Person to be notified at the address specified below; or
(c) telex, facsimile, telegraph, telecopy, or other written
(other than email) telecommunication medium.
If notice is deposited in the United States mail pursuant to clause (b) of this
paragraph, it will be deemed to have been given upon the fifth day after the
date that it is so deposited. Notice given in any other manner will be deemed to
have been given only if and when received at the address of the Person to be
notified. For the purpose of notice, the addresses and facsimile numbers of the
Parties are as follows:
If to AutoCyte: AutoCyte Inc.
000 Xxxxxxxxxx Xxxxx
Xxxxxxxxxx, Xxxxx Xxxxxxxx 00000
Attn: Xxxxx X. Xxxxxx
With a copy to: Xxxxxx & Dodge LLP
Xxx Xxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attn: Xxxxxx X. Xxxxxx
Xxxx X. Xxxxxxxxxx
If to NeoPath: NeoPath, Inc.
0000 000xx Xxxxxx X.X.
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Xxxx X. Xxxxxx, Ph.D
With a copy to: Xxxxxxx Coie LLP
000 -000xx Xxxxxx X.X., 00xx Xxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attn: Xxxxxxx X. Xxxxx
Either Party may from time to time change its address for notices under this
Agreement by giving the other Party notice of such change in accordance with
this paragraph.
7.2 INDEPENDENT CONTRACTORS
Each Party is an independent contractor and not a partner, franchisee,
or agent of the other. This Agreement will not be interpreted or construed as
creating or evidencing any partnership, franchise, or agency between the Parties
or as imposing any partnership, franchise or agency obligation or liability upon
either Party. Further, except as provided in Section 4, neither Party is
authorized to, and will not, enter into or incur any agreement,
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contract, commitment, obligation or liability in the name of or otherwise on
behalf of the other Party.
7.3 NO THIRD-PARTY BENEFICIARIES
This Agreement is for the benefit of, and will be enforceable by, the
Parties only. This Agreement is not intended to confer any right or benefit on
any Third Party (including, but not limited to, any employee of any Party). No
action may be commenced or prosecuted against a Party by any Third Party
claiming as a third-party beneficiary of this Agreement or any of the
transactions contemplated by this Agreement.
7.4 ASSIGNMENT
Neither Party will assign all or any part of this Agreement or any of
its rights under this Agreement without the prior written consent of the other
Party, provided that either Party may assign all of its right, title, and
interest in and to this Agreement, upon thirty (30) days' prior written notice
to the other Party, to a successor to the Party by way of merger, consolidation,
or other corporate reorganization, or a sale of substantially all of the Party's
assets, where such successor agrees in writing to be bound by all of the
provisions of this Agreement. No assignment, with or without the other Party's
consent, will relieve a Party from its obligations under this Agreement. Subject
to the foregoing restriction on assignment, this Agreement will be fully binding
upon, inure to the benefit of, and be enforceable by the Parties and their
respective successors and assigns.
7.5 NONWAIVER
No waiver by either Party of any provision of this Agreement, in any
one or more instances, will be deemed to be or construed as a waiver of the same
or any other provision on any future occasion. The failure of either Party to
insist upon or enforce strict performance of any of the provisions of this
Agreement or to exercise any rights or remedies under this Agreement will not be
construed as a waiver or relinquishment to any extent of such Party's right to
assert or rely upon any such provisions, rights, or remedies in that or any
other instance; rather, the same will be and remain in full force and effect.
7.6 COURT VENUE AND JURISDICTION
AutoCyte will not commence or prosecute any action, suit, proceeding or
claim arising under or by reason of this Agreement other than in the state or
federal courts located in Delaware. AutoCyte irrevocably consents to the
jurisdiction and venue of the courts identified in the preceding sentence in
connection with any action, suit, proceeding or claim arising under or by reason
of this Agreement.
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 14
16
7.7 ATTORNEYS' FEES AND COSTS
In any action, suit or other proceeding to enforce any right or remedy
under this Agreement or to interpret any provision of this Agreement, the
prevailing Party will be entitled to recover its costs and expenses (including,
without limitation, reasonable attorneys' fees) reasonably incurred in
connection with such proceeding or any appeal thereof.
7.8 APPLICABLE LAW
THIS AGREEMENT WILL BE INTERPRETED, CONSTRUED AND ENFORCED IN ALL
RESPECTS IN ACCORDANCE WITH THE LAWS OF THE STATE OF DELAWARE, WITHOUT REFERENCE
TO ITS CHOICE OF LAW RULES TO THE CONTRARY. THE 1980 UN CONVENTION ON CONTRACTS
FOR THE INTERNATIONAL SALE OF GOODS OR ITS SUCCESSOR WILL NOT APPLY TO THIS
AGREEMENT.
7.9 PUBLICITY
The Parties will issue a mutually agreeable joint press release
regarding this Agreement and will not make any further announcement with respect
to the transactions contemplated hereby except as required by applicable law,
without the prior written approval of the other Party, which will not be
unreasonably withheld.
7.10 HEADINGS
The list of exhibits and headings of sections, paragraphs and
subparagraphs of this Agreement are for convenience of reference only and are
not intended to restrict, affect or be of any weight in the interpretation or
construction of the provisions of such sections, paragraphs or subparagraphs.
7.11 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of
which will be deemed an original, but all of which together will constitute one
and the same instrument.
7.12 COMPLIANCE WITH LAWS
In the performance of this Agreement or the exercise of any right
granted under this Agreement, each Party will comply with all applicable laws,
regulations, rules, orders and other requirements, now or hereafter in effect,
of any governmental authority having jurisdiction.
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 15
17
7.13 ENTIRE AGREEMENT
This Agreement (including Exhibit A) constitutes the entire agreement,
and supersedes any and all prior agreements, between the Parties with regard to
the NSI Intellectual Property Rights. No amendment of any provision of this
Agreement will be valid unless set forth in a written instrument signed by both
Parties.
NEOPATH: AUTOCYTE:
NEOPATH, INC. AUTOCYTE INC.
By: /s/ Xxxx X. Xxxxxx By: /s/ Xxxxxxx X. Xxxxx
Title: Chairman Title: V.P. and C.F.O.
Date Signed: April 24, 1999 Date Signed: April 24, 1999
INTELLECTUAL PROPERTY PURCHASE AGREEMENT PAGE 16
18
EXHIBIT A
LIST OF LAWSUITS (DEFINED INTO LITIGATION)
Neuromedical Systems, Inc. v. NeoPath, Inc., Xx. 00 Xxx. 0000 (X.X.X.X.
filed July 1996).
NeoPath, Inc. v. Neuromedical Systems, Inc., No. C97-496 WD (W.D. Wash.
filed March 1997).
NeoPath, Inc. v. Neuromedical Systems, Inc., No. C98-341C WD (W.D.
Wash. filed March 1998).
EXHIBIT A PAGE 1
