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EXHIBIT 10.14
*CERTAIN INFORMATION WITHIN THIS EXHIBIT HAS BEEN OMITTED AND THE NON-PUBLIC
INFORMATION HAS BEEN FILED SEPARATELY WITH THE SEC. CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
LICENSE AND SUPPLY AGREEMENT entered into as of the 4th day of February 2000.
BETWEEN: XXXXXX CORP., a corporation incorporated under the laws of the
Province of Nova Scotia (hereinafter the "Corporation")
AND: CEPHEID, a corporation incorporated under the laws of the state of
California (hereinafter "Cepheid")
WHEREAS, Cepheid has expertise and know-how relating to systems, subsystems and
consumables (such as disposable reaction tube), for diagnosing human disease
parameters;
WHEREAS Infectio Diagnostic (I.D.I.) Inc. ("IDI") has granted to the Corporation
an exclusive license to make, use, offer to sell and sell certain nucleic acid
sequences in combination with Cepheid proprietary technology for identification
and diagnosis of certain human infectious disease parameters;
WHEREAS, Cepheid and the Corporation desire to enter into an agreement whereby
JV Products will be developed and commercialized with Cepheid systems,
subsystems and consumables for use with IDI nucleic acid sequences;
WHEREAS IDI, Cepheid and the Corporation have entered into a Joint Technology
and Collaboration Agreement dated February 4, 2000; and
WHEREAS IDI, Cepheid and the Corporation have entered into a Shareholders
Agreement dated February 4, 2000.
NOW THEREFORE, in consideration of the mutual covenants and agreements
hereinafter set forth and other good and valuable consideration, the parties
hereby agree as follows:
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ARTICLE 1
DEFINITIONS
As used in this agreement:
1.1 "AFFILIATE(s)" shall mean any corporation or other business entity
controlled by or in common control of a party. "Control" as used herein
means ownership directly or through one or more Affiliates, of fifty
percent (50%) or more of the shares of the share capital entitled to vote
for the election of directors, in the case of any corporation, or fifty
percent (50%) or more of the equity interests in the case of any other
type of legal entity, status as a general partner in any partnership, or
any other arrangement whereby a party controls or has the right to control
the board of directors or equivalent governing body of a corporation or
other entity.
1.2 "CEPHEID" shall include all of the divisions, subsidiaries and Affiliates
of Cepheid.
1.3 "CEPHEID INTELLECTUAL PROPERTY" shall mean all technology rights and
patents rights (a) owned by Cepheid, existing as of the date hereof or
developed subsequent to the date hereof and (b) relating to systems,
subsystems and consumables for diagnosing human disease parameters
including without limitations the patents and patents applications listed
and described on Appendix A hereto. The Cepheid Intellectual Property
shall also include any improvements, refinements, updates, discoveries or
inventions related to Cepheid Intellectual Property and intellectual
property developed by Cepheid in the course of the Collaboration Program
as defined in the Collaboration Agreement.
1.4 "CEPHEID PRODUCTS" shall mean any products developed by Cepheid including
but not limited to systems, subsystems and non reagent consumables to be
incorporated in the JV Products.
1.5 "COLLABORATION AGREEMENT" shall mean the Joint Technology and
Collaboration Agreement between the Corporation, IDI and Cepheid dated
February 4, 2000;
1.6 "COST" shall mean [to be provided by the parties and shall take into
account adjustment mechanisms]
1.7 "FIELD" shall mean the rapid diagnosis of human infectious diseases,
including but not limited to bacteria, fungi, antibiotic resistance and
related disorders, with systems integrating both IDI Intellectual Property
and Cepheid Intellectual Property.
1.8 "IDI" shall include all of the divisions, subsidiaries and Affiliates of
IDI.
1.9 "IDI INTELLECTUAL PROPERTY" shall mean all technology rights and patent
rights (a) owned by IDI, existing as of the date hereof or developed
subsequent to the date hereof and (b) relating to nucleic acid sequences
useful for the identification and/or diagnosis of human infectious disease
parameters, including, without limitation, the patents and patent
applications listed and
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described on Appendix B hereto. The IDI Intellectual Property shall also
include any improvements, refinements, updates, discoveries or inventions
related to IDI Intellectual Property and intellectual property developed
by IDI in the course of the Collaboration Program as defined in the
Collaboration Agreement.
1.10 "JV PRODUCTS" shall mean any of the Corporation Products integrating both
Cepheid Intellectual Property and IDI Intellectual Property.
1.11 "SHAREHOLDERS AGREEMENT" shall mean the Shareholders Agreement between
IDI, Cepheid and the Corporation dated February 4, 2000, and any addenda
and amendments of said agreement.
1.12 "TERRITORY" shall mean all of the countries in the world, including their
respecting territories and possessions.
1.13 "TRANSFER PRICE" shall mean with respect to any Cepheid Product the price
at which Cepheid will sell Cepheid Product to the Corporation as provided
in Article 3 hereof.
ARTICLE 2
LICENSE AND TECHNOLOGY TRANSFER
2.1 LICENSE GRANT
(a) Cepheid hereby grants to the Corporation a fully paid-up,
royalty-free, exclusive right and license in the Territory, with the
right to grant sublicenses, in and to all Cepheid Intellectual
Property and Cepheid Products to make, use, offer to sell and sell
JV Products in the Field.
(b) If the Corporation grants a sublicense to a third party, the
Corporation guarantees that such sublicense shall be in conformity
with the terms and conditions of this Agreement and the Corporation
shall not be relieved of its obligations pursuant to this Agreement
as a result of such sublicense.
2.2 LIMITED RIGHTS
Notwithstanding Section 2.1, the Corporation and IDI acknowledge and
covenant that Cepheid can make, have made, use, offer for sale, and sell
outside the Field in the Territory, directly or indirectly, Cepheid
Intellectual Property and Cepheid Products for use with technology other
than IDI Intellectual Property.
2.3 CEPHEID WARRANTY
To the best knowledge of Cepheid, Cepheid Intellectual Property and
Cepheid Products do not infringe patents of any third party other than
certain patents owned by Xxxxxx Xxxxx for which Cepheid is currently
negotiating a license.
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ARTICLE 3
SUPPLY AND USE OF CEPHEID PRODUCTS
3.1 EXCLUSIVE PURCHASE
The Corporation shall exclusively purchase Cepheid Products required for
the manufacturing and sale of the Product from Cepheid and shall not use
any third party product or technology other than Cepheid Products and
Cepheid Intellectual Property for the manufacture and sale of JV Products
except for IDI Intellectual Property.
3.2 PRODUCTION
Cepheid declares that it is and shall be in a position to produce or cause
to be produced Cepheid Products in a quantity necessary to meet the
Corporation's reasonable projected sales forecast projections with
reserves to include back-up supplies in the event such may be required.
3.3 TRANSFER PRICE
The Transfer Prices at which Cepheid shall sell Cepheid Product to the
Corporation shall be as follows: the transfer price of Cepheid instruments
shall be equal to the Cost of said Cepheid Instruments plus [**]; the
transfer price of Cepheid consummables shall be established as agreed by
both IDI and Cepheid to enable their equitable sharing of revenues and
profits generated by the Corporation. Transfer pricing formulas will be
periodically reviewed and adjusted as necessary upon agreement by both IDI
and Cepheid to ensure their equitable sharing of revenues and profits
generated by the Corporation.
3.4 TITLE TO CEPHEID PRODUCTS
To secure the payment of all amounts due hereunder and the observance and
performance of all the terms, provisions, agreements and covenants of this
Agreement, Cepheid reserves ownership of all Cepheid Products sold to the
Corporation under the terms of this Agreement until the earlier of the
dates on which the Corporation shall have (i) resold such Cepheid Products
to a customer or (ii) made payment in full to Cepheid of all amounts due
hereunder. Such reservation of ownership shall operate to the maximum
extent permitted under the laws of the country in which the respective
Cepheid Product is physically located, and the Corporation shall comply
with all formalities required to give effect thereto.
3.5 FORECASTS
For the purposes of Section 3.1, the Corporation shall provide Cepheid on
a calendar quarterly basis with an updated two year forecast in order to
enable Cepheid to develop realistic production requirements of Cepheid
Products for future periods.
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3.6 DELAY IN SUPPLY
In the event that Cepheid would encounter circumstances out of its control
where the supply of the Cepheid Products could not be provided to the
Corporation, IDI shall so advise the Corporation, in the best of delays,
and in such a case the parties shall attempt to find alternatives to
supply the required Cepheid Products to the Corporation during the period
in question.
3.7 TRANSPORTATION
All Cepheid Products to be supplied by Cepheid to the Corporation shall be
delivered to the Corporation F.O.B. Sunnyvale, California, at the premises
of the Corporation. Subject to the following, the parties agree that the
term "F.O.B." shall be interpreted in accordance with the Uniform
Commercial Code. Without limiting the generality of the foregoing, Cepheid
Products shall be at Corporation's sole risk and responsibility as of the
moment that Cepheid Products have been placed on board the carrier
specified by the Corporation.
3.8 EXPORT/IMPORT LICENSE
Notwithstanding any provisions to the contrary, the obtainment of any and
all export and/or import licenses as well as any and all required
governmental consents are the sole responsibility of the Corporation,
Cepheid declaring, however that it shall collaborate with the Corporation
in this regard.
ARTICLE 4
INFRINGEMENT
4.1 INFRINGEMENT
(a) Each party shall promptly report in writing to the other party
during the term of this Agreement any known infringement or
suspected infringement of any Product, Cepheid Intellectual Property
or Cepheid Products by a third party of which it becomes aware, and
shall provide the other party with all available evidence supporting
said infringement or suspected infringement.
(b) Except as provided in paragraph (d), the Corporation shall have the
right to initiate an infringement or other appropriate suit against
any third party who at any time has infringed, or is suspected of
infringing, any Product, Cepheid Intellectual Property or Cepheid
Products. The Corporation shall give Cepheid sufficient advance
notice of its intent to file said suit and the reasons therefor, and
shall provide Cepheid with an opportunity to make suggestions and
comments regarding such suit. The Corporation shall keep Cepheid
properly informed, and shall from time to time consult with Cepheid,
regarding the status of any such suit.
(c) The Corporation shall have the sole and exclusive right to select
counsel for any suit referred to in paragraph (b) and shall pay all
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expenses of the suit, including without limitation attorney's fees
and court costs. If necessary, Cepheid shall join as a party to the
suit but shall be under no obligation to participate except to the
extent that such participation is required as the result of being a
named party to the suit. Cepheid shall offer reasonable assistance
to the Corporation in connection therewith at no charge to the
Corporation except for reimbursement of reasonable out-of-pocket
expenses (not including salaries of Cepheid personnel) incurred in
rendering such assistance. Cepheid shall have the right to
participate and be represented in any such suit by its own counsel
at its own expense. The Corporation shall not settle any such suit
involving rights of IDI without obtaining the prior written consent
of Cepheid, which consent shall not be unreasonably.
(d) In the event that the Corporation elects not to initiate an
infringement or other appropriate suit pursuant to paragraph (b),
the Corporation shall promptly advise Cepheid of its intent not to
initiate such suit, and Cepheid shall have the right, at the expense
of Cepheid, of initiating an infringement or other appropriate suit
against any third party who at any time has infringed, or is
suspected of infringing, any Product, Cepheid Intellectual Property
or Cepheid Products. In exercising its rights pursuant to this
paragraph (d), Cepheid shall have the sole and exclusive right to
select counsel and shall pay all expenses of the suit, including
without limitation, attorney's fees and court costs, and shall be
entitled to receive and retain any damages, royalties, settlement
fees or other consideration. If necessary, the Corporation shall
join as a party to the suit but shall be under no obligation to
participate except to the extent that such participation is required
as a result of being a named party of the suit. At Cepheid's
request, the Corporation shall offer reasonable assistance to
Cepheid at no charge to Cepheid except for reimbursement of
reasonable out-of-pocket expenses (not including salaries of the
Corporation personnel) incurred in rendering such assistance. The
Corporation shall have the right to participate and be represented
in any such suit by its own counsel at its own expense.
4.2 CLAIMED INFRINGEMENT
Notwithstanding anything to the contrary in this Agreement, in the event
that any action, suit or proceeding is brought against Cepheid or the
Corporation, licensee or sublicensee of the Corporation alleging the
infringement of the intellectual property rights of a third party by
reason of the manufacture, use, sale or offer for sale of Cepheid
Products, Cepheid Intellectual Property or JV Products by the Corporation,
the Corporation will have the obligation to defend itself and Cepheid in
such action, suit or proceeding at the Corporation's expense. Cepheid
shall have the right to separate counsel at its own expense in any such
action or proceeding. The parties will cooperate with each other in the
defense of any such suit, action or proceeding. The parties will give each
other prompt written notice of the commencement of any such suit, action
or proceeding or claim or infringement and will furnish
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each other a copy of each communication relating to the alleged
infringement, but the failure to do so shall not affect the Corporation's
obligations under this Article and under Article 5 except to the extent
the Corporation is actually damaged thereby. The Corporation shall not
compromise, litigate, settle or otherwise dispose of any such suit, action
or proceeding which involves the use of Cepheid Product or Cepheid
Intellectual Property without Cepheid's advice and prior written consent,
provided that Cepheid shall not unreasonably withhold its consent to any
settlement which will provide an unconditional release of Cepheid.
4.3 LIMITED LIABILITY
Notwithstanding anything else in this Agreement or otherwise, neither
Cepheid nor the Corporation will be liable with respect to any subject
matter of this Agreement under any contract, negligence, strict liability
or other legal or equitable theory for any indirect, incidental,
consequential or punitive damages or lost profits.
4.4 WARRANTY DISCLAIMER
The Corporation agrees that there does not exist any warranty, guarantee,
declaration or condition, express or implied, made by Cepheid, including
implicit warranties as to merchantability, market quality, commercial
value and fitness for any particular purpose whatsoever relative to
Cepheid Intellectual Property or Cepheid Products or to the incorporation
of Cepheid Products in the JV Products.
ARTICLE 5
INDEMNIFICATION
The Corporation shall indemnify, defend and hold harmless Cepheid and its
and their respective directors, officers, employees, and agents and their
respective successors, heirs and assigns (the "Cepheid Indemnitees"),
against any liability, damage, loss or expense (including reasonable
attorneys' fees and expenses of litigation) incurred by or imposed upon
the Cepheid Indemnitees, or any of them, in connection with any claims,
suits, actions, demands or judgments of third parties, including without
limitation, personal injury and product liability matters (except in cases
where such claims, suits, actions, demands or judgments result from
willful misconduct, gross negligence or material breach of this Agreement
on the part of Cepheid Indemnitees) arising out of the development,
testing, production, manufacture, promotion, import, sale or use by any
person of any JV Products, Cepheid Products or Cepheid Intellectual
Property manufactured or sold by the Corporation or by a licensee,
sublicensee, distributor or agent of the Corporation. The Corporation
shall have no obligation under this Article 5 with respect to incidental,
indirect, or consequential damages or lost profits of Cepheid.
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ARTICLE 6
CONFIDENTIALITY AND NON-DISCLOSURE
The parties agree that the Confidentiality provisions contained in the
Shareholders Agreement apply to this Agreement with the necessary changes
having been made.
ARTICLE 7
TERM AND TERMINATION
7.1 TERM AND TERMINATION
This Agreement shall continue in full force and effect until the
expiration of the 6 month period following receipt by IDI or Cepheid of a
notice of winding up sent pursuant to Article 4 of the Shareholders
Agreement.
7.2 SURVIVAL OF OBLIGATIONS
Articles 4, 5 and 6 of this Agreement shall survive its termination.
7.3 RETURN OF CEPHEID PRODUCTS
Cepheid shall have the right at its option to repurchase all or any part
of the inventories of Cepheid Products in the Corporation's possession as
of the termination of this Agreement at Cepheid's invoice price to the
Corporation for such Cepheid Products less any appropriate amount for
excessive wear and tear. Cepheid shall exercise its option by notifying
the Corporation in writing no later than 30 days after the effective
termination date.
ARTICLE 8
DISPUTES
8.1 NEGOTIATION AND MEDIATION
If a dispute arises out of or relates to this Agreement or its breach (the
"Matter"), the parties agree to resolve the Matter as follows:
(a) A party shall submit written notice of the Matter to the other
parties and request negotiation.
(b) The parties shall attempt in good faith to resolve any Matter
arising out of or relating to this Agreement promptly by negotiation
between representatives which the parties may appoint, and
(c) If the Matter has not been resolved within 60 days of a party's
request for negotiation, either party may request that the Matter be
submitted
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to a sole mediator selected by the parties for a mandatory 1 day
mediation;
8.2 ARBITRATION
If the Matter has not been resolved by such mediation, either party may
submit the Matter for binding arbitration, to a sole arbitrator in
accordance with the Rules of Conciliation and Arbitration of the
International Chamber of Commerce as in effect on the date of commencement
of such arbitration, (the "ICC Rules") if Cepheid initiates such
arbitration, and pursuant to the Rules of the American Arbitration
Association as in effect on the date of commencement of such arbitration
(the "AAA Rules") if Corporation initiates such arbitration, except where
such ICC Rules conflict with the provisions of Article 8 in which event
the provisions of this Article 8 shall prevail.
8.3 APPOINTMENT OF ARBITRATOR
If the parties fail to agree on the appointment of the sole arbitrator
within 20 days after one party has served the other party, a written
notice to concur in the appointment of the single arbitrator nominated by
the serving party, the sole arbitrator shall be appointed in accordance
with the ICC Rules or AAA Rules, as the case may be. The sole arbitrator
shall be a member of the Quebec Bar if the ICC Rules apply or the
California Bar if the AAA Rules apply with at least 10 years of experience
in corporate commercial or intellectual property law. The arbitrator shall
render any final award within 20 days following the completion of evidence
and arguments on the Matter.
8.4 ADMISSIBILITY OF EVIDENCE IN OTHER PROCEEDINGS
The parties shall not be entitled to rely on or introduce as evidence
before any arbitral proceedings whether or not such proceedings relate to
the Matter that is the subject of the negotiations:
(a) Views expressed or suggestions made by another party in respect of a
possible settlement of the Matter;
(b) Admissions or proposals made by another party in the course of
negotiations; or
(c) The fact that the other party had indicated his willingness to
accept a proposal for settlement made by another party.
8.5 LOCATION
The mediation and arbitration shall be held in Montreal, Quebec. if
Cepheid initiates the arbitration and in San Francisco, California if the
Corporation initiates the arbitration. The parties, their representatives,
the mediator and the arbitrator shall hold the existence, contend and
results or any negotiation, mediation or arbitration in confidence unless
disclosure is required by law or regulation, and in such case the parties
shall take reasonable precautions to only disclose what is required by law
or governmental regulation. All proceedings and all pleadings shall be in
English.
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8.6 AWARD
Any award of the Arbitration shall be final and binding on the parties and
shall be enforceable in any court having jurisdiction over the party from
whom enforcement is requested.
ARTICLE 9
NOTICES
Any notice, request, instruction or other document to be given hereunder
shall be deemed validly given if in writing, and delivered personally,
sent by overnight courier, or sent by certified mail, postage prepaid,
return receipt requested, as follows:
If to Cephied:
-------------
Cepheid
0000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX, 00000-0000
Attn: Xxxxxx X. Xxxxxxxx
Facsimile: (000) 000-0000
and if to the Corporation:
-------------------------
Xxxxxx Corp.
0000 Xxxx Xxxxxxxx Xxxx. Xxxx
Xxx-Xxx, Xxxxxx, Xxxxxx X0X 0X0
Attn: Xx. Xxxxxx Xxxxxxxx
Facsimile: (000) 000-0000
And copy to: Xxxxxx X. Xxxxxxxx
Facsimile: (000) 000-0000
and copy to IDI:
---------------
Infectio Diagnostic (I.D.I.) Inc.
0000 Xxxx Xxxxxxxx Xxxx. Xxxx
Xxx-Xxx, Xxxxxx, Xxxxxx X0X 0X0
Attn: Xx. Xxxxxx Xxxxxxxx
Facsimile: (000) 000-0000
Alternatively, notices and other communications may be sent by facsimile
transmission with a confirmation copy sent by one of the forms of
delivery set forth above. All notices and other communications shall be
deemed delivered on the date of actual receipt.
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ARTICLE 10
MISCELLANEOUS
10.1 ENTIRE AGREEMENT
This Agreement along with the Collaboration Agreement, the Shareholders
Agreement and the License and Supply Agreement between IDI and the
Corporation constitutes the entire understanding between the parties with
respect to the subject matter hereof and supersedes and replaces all prior
agreements, understandings, writings and discussions between the parties
relating to said subject matter. Only a written instrument executed by the
parties may amend this Agreement.
10.2 WAIVER
The failure of either party at any time or times to require performance of
any provision hereof shall in no manner affect its rights at a later time
to enforce the same. No waiver by either party of any condition or term in
any one or more instances shall be construed as a further or continuing
waiver of such condition or term or any other condition or term.
10.3 SUCCESSORS AND ASSIGNS
This Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties hereto and their respective successors and
assigns and Cepheid shall not assign this Agreement without the prior
written consent of the Corporation which cannot be unreasonably withheld.
10.4 FORCE MAJEURE
Any delays in or failure of performance by either party under this
Agreement shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the party
affected, including but not limited to acts of God; acts, regulations, or
laws of any government; strikes or other considered acts of workers;
fires; floods; explosions; riots; wars; rebellion; and sabotage; and any
time for performance hereunder shall be extended by the actual time of
delay caused by such occurrence.
10.5 SEVERABILITY
If any provision(s) of this Agreement are or become invalid, or ruled
illegal by any court of competent jurisdiction, or are deemed
unenforceable under then current applicable law from time to time in
effect during the term hereof, it is the intention of the parties that the
remainder of this Agreement shall not be affected thereby. It is further
the intention of the parties that in lieu of each such provision which is
invalid, illegal, or unenforceable, there be substituted or added as part
of this Agreement, a provision which shall be as similar as possible in
economic and business objectives as intended by the parties to such
invalid, illegal, or unenforceable provision, but which shall be valid,
legal, and enforceable, and shall be mutually agreed by the parties.
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10.6 HEADINGS
The headings contained herein are for reference purposes only and shall
not in any way affect the meaning of this Agreement.
10.7 COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of
which shall be an original, but all of which together shall constitute one
instrument.
10.8 NO AGENCY
Nothing contained in this Agreement shall be deemed to create a
partnership between the Corporation and Cepheid. Neither party shall be
liable for the act of the other party unless the other party expressly
authorizes such act in writing.
10.9 GOVERNING LAW
As to matters affecting Cepheid Intellectual Property, this Agreement
shall be governed by and construed in accordance with the laws of the
State of California, without regard to the application of principles of
conflicts of laws thereof. As to other matters, this Agreement shall be
governed by and construed in accordance with the laws of the Province of
Quebec, without regard to the application of principles of conflicts of
laws thereof.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first above written.
CEPHEID XXXXXX CORP.
Per: /s/ XXXXXX X. XXXXXXXX Per: /s/ XX. XXXXXX XXXXXXXX
------------------------------ -------------------------------
Xxxxxx X. Xxxxxxxx Xx. Xxxxxx Xxxxxxxx
Per: /s/ XXXXXX X. XXXXXXXX
-------------------------------
Xxxxxx X. Xxxxxxxx
XXX Inc. intervenes to declare that it has taken cognizance of this Agreement
and that it accepts to be bound by Sections 2.2, 3.3 and 7.1.
INFECTIO DIAGNOSTIC (I.D.I.) INC.
Per: /s/ XX. XXXXXX XXXXXXXX
-------------------------------
Xx. Xxxxxx Xxxxxxxx
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APPENDIX A
CEPHEID INTELLECTUAL PROPERTY
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APPENDIX A
TO THE LICENSE AND SUPPLY AGREEMENT
BETWEEN XXXXXX CORP. AND CEPHEID
CEPHEID PATENT RIGHTS AND APPLICATIONS
I. Reaction vessel for heat-exchanging chemical processes.
PATENT
COUNTRY NUMBER ISSUED
UNITED STATES US 5,958,349 Sept. 28, 1999
15
APPENDIX B
IDI INTELLECTUAL PROPERTY
