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EXHIBIT 10.53
EXECUTION COPY
INSTRUMENT, ASSAY DEVELOPMENT AND LICENSE AGREEMENT
BETWEEN
GLAXO RESEARCH AND DEVELOPMENT LIMITED
AND
GLAXO GROUP LIMITED
AND
AURORA BIOSCIENCES CORPORATION
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This Agreement is made by and between GLAXO RESEARCH AND DEVELOPMENT LIMITED AND
GLAXO GROUP LIMITED both with their principal offices at Glaxo Wellcome House,
Berkeley Avenue, Greenford, Middlesex UB6 ONN, United Kingdom, (together with
any Affiliate company, "GW") and AURORA BIOSCIENCES CORPORATION ("Aurora"), a
Delaware corporation with principal offices at 00000 Xxxxxxxxx Xxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000, X.X.X.
RECITALS
WHEREAS, GW and Aurora wish to enter into an agreement involving the purchase by
GW *** (VIPR) from Aurora, collaborative research to develop ***, and licenses
of rights from Aurora to GW to use *** Voltage Sensor Probes (VSPs) and the ***
to practice the technologies *** as set forth herein.
Now, therefore, in consideration of the foregoing and the covenants and premises
contained herein the parties agree as follows:
1. DEFINITIONS
1.1 "Achievement of Proof of Concept" means the point at which the
initial human efficacy trial is successfully completed and a
compound approved for further development by GW, such decision
usually being agreed to at a meeting of the GW Therapeutic
Management Team, or its functional equivalent.
1.2 "Affiliate" means (1) any corporation or other entity directly or
indirectly owning or controlling, at least *** of the stock
entitled to vote for election of directors with a party to this
Agreement or otherwise having the power to direct the management
and policies of a party to this Agreement, (2) any corporation or
other entity of which a party to this Agreement directly or
indirectly owns or controls at least *** of the stock entitled to
vote for election of directors or otherwise has the power to
direct the management and policies, (3) any corporate or other
entity directly or indirectly under common control with a party
to this Agreement; provided, however, that in the circumstance
where the country of incorporation of such owned or controlled
corporation or other entity requires the maximum ownership by a
foreign entity be less ***, the percentage of ownership required
to make such an entity an affiliate must be equal to the maximum
percentage of ownership permitted by such country provided the
operational control is held by a party to this Agreement.
1.3 "Assay" means a *** incorporating Aurora VSPs, and additions to
or substitutions thereof made in accordance with this Agreement.
1.4 "Assay Transfer Date" means the date that GW receives delivery of
***, *** Assay *** Collaborative Research Plan, this date *** of
the Assay by the Steering Committee.
1.5 "Aurora Factory Certified Engineers" means engineers provided by
Aurora to service
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the VIPR ***.
1.6 "Aurora Patents" means *** and *** set forth in Exhibit A and ***
issuing therefrom.
1.7 "Aurora Technology" means Materials and Know-How owned or
Controlled by Aurora on or before the Effective Date and
necessary for the Collaborative Research Program.
1.8 "Collaborative Research Program" means the collaboration between
Aurora and GW as set forth in Exhibit B for the development ***.
1.9 "Collaborative Research Plan" means that project plan attached as
Exhibit B hereto, which may be amended from time to time, upon
written mutual agreement of Aurora and GW.
1.10 "Confidential Information" means all information, data, and
documentation received by either party from the other party
pursuant to this Agreement and if in writing, designated as
confidential at the time of disclosure, subject to the exceptions
set forth in Section 9.1.
1.11 "Control" or "Controlled" means, in the context of intellectual
property, possession by a party of the ability to grant a license
or sublicense in accordance with the terms of this Agreement, and
without violating the terms of any agreement by such party with
any Third Party.
1.12 "Effective Date" means the latest date on which the Agreement is
executed by a party hereto.
1.13 "GW Compounds" means *** compounds and an *** that GW shall
provide to Aurora in a format *** and that shall be screened by
Aurora in accordance with Section ***.
1.14 "GW Materials" means Materials provided by GW to Aurora in
furtherance of the Collaborative Research Program.
1.15 "GW Technology" means GW Materials and Know-How owned or
Controlled by GW on or before the Effective Date and necessary
for the Collaborative Research Program.
1.16 "Invention" means ***.
1.17 "Know-How" means information and data owned or Controlled by a
party hereto, which is existing as of the Effective Date or which
a party develops or acquires as part of the Collaborative
Research Program which is not generally known to the public,
comprising: designs, concepts, algorithms, formulae, techniques,
practices, processes,
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methods, knowledge, skill, experience, expertise and technical
information.
1.18 "Materials" means any reagents, cell lines, promoters, enhancers,
vectors, plasmids, genes, proteins and fragments thereof,
peptides, antigens, antibodies, agonists, antagonists, inhibitors
and chemicals.
1.19 "Patent Rights" means all U.S. or foreign (including regional
authorities such as the European Patent Office) regular or
provisional patent applications, including any continuation,
continuation-in-part, or division thereof or any substitute
application therefor or equivalent thereof, and any patent
issuing thereon, including any reissue, reexamination or
extension thereof and any confirmation patent or registration
patent or patent of additions based on any such patent,
containing one or more claims to an Invention (and in the case of
an issued patent, containing one or more claims), and for which a
party hereto owns or Controls, individually or jointly, any title
thereto or rights thereunder.
1.20 "Pre-clinical Candidate Selection" means the point at which lead
optimization is concluded and a candidate for further development
is selected, ***.
1.21 "Product Launch" means the first commercial sale of a product.
1.22 "***" means *** defined respectively by *** and ***.
1.23 "Technology" means Materials and Know-How.
1.24 "Third Party" means any person or entity other than Aurora and GW
or its Affiliates.
1.25 "Tracking Record" means tracking records referred to in Section
5.8.
1.26 "VIPR" means Aurora's voltage-ion probe reader as described in
Attachment 1 ***.
1.27 "Voltage Sensor Probes" or "VSPs" means *** the Aurora Patents.
2. EQUIPMENT PURCHASE
2.1. Shipment. Subject to GW's payments in Section 5, Aurora will ship
to GW's *** on or before ***. Aurora will provide consultative
support and technical specifications *** the *** GW's ***. GW
will also be provided *** described in Section 2.4 *** updates
regarding the *** with the VIPR on the Assay *** produced by or
on behalf of Aurora.
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2.2. Installation and Validation. Subject to GW's payments in Section
5, Aurora will install *** site within *** days of the Assay
Transfer Date. Reasonable travel and expenses of Aurora personnel
directly related to the installation and validation shall be
billed separately at GW's expense.
2.3. Training. Subject to GW's payments in Section 5, Aurora will
provide a comprehensive consecutive *** training session on the
operation of the VIPR for up to *** GW scientists *** to be
scheduled approximately at the time of the installation of the
VIPR. Travel and related expenses for Aurora personnel will be
paid by GW. In addition, *** GW engineers will be trained at
Aurora and certified by Aurora for routine servicing of ***
Dollars ($***), such training to take place prior to the delivery
***.
2.4. Warranty. Subject to GW's payments in Section 5, *** with a ***
warranty, entitling GW to *** years of *** support, a total of
*** (*** annually) by an Aurora Factory Certified Engineer
provided by Aurora *** parts, which are *** and *** service
invoice after any *** repair. Travel and related expenses for
Aurora personnel for ***. Travel and related expenses for service
visits other than preventative maintenance visits shall be paid
by GW. No one other than an Aurora Factory Certified Engineer is
authorized to service the VIPR and any tampering with or
modification of the instrument by any other party will nullify
the warranty to the VIPR. ***, *** personnel *** in any month,
*** additional *** cost, *** months of *** and *** to be
confirmed in writing by Aurora. *** as the *** support *** day of
request and *** for ***, if needed, within *** of request.
3. COLLABORATIVE RESEARCH
3.1. Assay Development at Aurora. Aurora will use *** to develop, in
collaboration with GW, *** in a *** within four (4) months of the
Effective Date (the "Collaborative Research Program"). Aurora
will then transfer the Assay to GW with *** and an *** within two
(2) weeks of acceptance of the Assay by the Steering Committee.
Criteria *** defined in the Collaborative Research Plan.
3.1.1. Late Delivery of Assay. If Aurora does not transfer the
Assay to GW within nine (9) months of the Effective Date,
GW, *** either: (i) make the payments under Sections 5.1.2
and 5.2.4 and *** and approval *** is
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contractually precluded from licensing to Third Parties;
or (ii)not make the payments of Sections 5.1.2 and 5.2.4
and *** .
3.1.2. Assay Throughput. In the event that all other validation
criteria for the Assay are satisfied, but the Assay ***
specified in Exhibit B, the parties ***, or assay payments
due to Aurora based upon the ***, unless the ***, in which
case ***. In the event *** shall promptly *** Aurora.
3.2. Materials from GW. GW will provide pursuant to this Agreement the
GW Materials and GW Compounds, or a mutually agreed upon subset
thereof, to Aurora within *** days of the Effective Date, and
before ***, respectively. Aurora will not use GW Materials or GW
Compounds for any purpose other than those described in this
Agreement. Aurora will return or destroy all *** outlined in
Exhibit C. Aurora will destroy all GW Materials within *** of the
Assay, *** Collaborative Research Program, which shall be held
for up to *** by Aurora following *** and *** GW.
3.3. Screening of GW Compounds. Upon validation *** with the
Collaborative Research Plan and payment by GW according to
Section 5.5, Aurora shall undertake to screen the GW Compounds
***. Such screening by Aurora shall be completed within *** of
*** and receipt of the GW Compounds. Upon completion of such
screening and written agreement of the parties, ***, as agreed
upon in the Collaborative Research Plan, GW shall pay Aurora in
accordance with Section 5.5 for performance of such screening.
3.4. Steering Committee. The Collaborative Research Program shall be
managed by a joint steering committee (the "Joint Steering
Committee") of a size and composition to be determined in good
faith by the parties and indicated in writing, with equal
representation from both GW and Aurora. Each member of the Joint
Steering Committee shall have ***. The Joint Steering Committee
shall meet on a schedule and in a venue or format mutually
agreed. Initial meetings shall by teleconference every ***.
3.5. ***. During the period of the Collaborative Research Program, ***
so ***.
4. LICENSES AND OPTION
4.1. Non-exclusive License. Aurora hereby grants to GW and its
Affiliates a non-
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exclusive, non-sublicensable, non-transferable, royalty-free
milestone bearing, single VIPR instrument, worldwide license
under the Aurora Patents and Aurora Technology solely to ***
Aurora or modifications produced by *** using other *** for drug
discovery screening. GW shall notify Aurora of any *** in
writing. The license grant of this Section 4.1 shall be effective
until the date of the *** anniversary of the ***. The license, at
that point, may be extended through exercise of the option
described in Section 4.2. The license grant of this Section 4.1
may be ***, to allow GW to *** to be proposed by GW and *** other
than in the event that Aurora is contractually precluded from
licensing to Third Parties, should GW ***, during the time period
such license grant is in effect, or should Aurora *** GW *** of
the Effective Date, in accordance with Section ***.
4.2. Option to Extend License. Aurora hereby grants to GW an option to
extend the license granted in Section 4.1 above *** to an
additional five (5) years on an *** Dollars ($***) to be paid to
Aurora *** (the "***") and each subsequent anniversary of the ***
for up to *** years. Such option granted to GW expires on the
date *** days prior to the third (3rd) anniversary of the *** or
a later date taking into account any license ***. It is
understood that the *** under Section ***.
4.3. Retained Rights and Limitations. The licenses under this Section
4 are subject to GW's obligations described herein including
payments by GW as set forth in Section 5. For clarity, the
license rights granted to GW in this Section 4 specifically
exclude the right 1) ***. Aurora retains the right to work with
other parties on the same or similar targets, compounds, data and
cell lines supplied by a Third Party or independently developed
by Aurora without the use of GW Confidential Information, GW
Compounds, or GW Materials. Except as expressly licensed herein,
GW *** or *** under the Aurora Patents and Aurora Technology.
5. PAYMENTS
5.1. Equipment purchase. In consideration for the purchase of the
VIPR, GW shall pay to Aurora a total of *** Dollars ($***)
according to the following schedule of non-refundable,
non-creditable payments:
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5.1.1. A *** Dollar ($***) pre-payment due upon the Effective
Date; and
5.1.2. A *** Dollar ($***) payment due on ***.
Shipping will be prepaid and added FOB San Diego to the invoice.
5.2. Collaborative research. In consideration for the development of
***, or in the event that GW *** Assay is ***, GW shall pay to
Aurora in accordance with the following schedule of
non-refundable, non-creditable payments:
5.2.1. *** Dollars ($***) on the Effective Date; and
5.2.2. *** Dollars ($***)*** Assay Transfer Date is *** ; ***
5.2.3. *** Dollars ($***)*** Assay Transfer Date is *** Effective
Date and ***; ***
5.2.4. *** Dollars ($***)*** Assay *** months *** and *** GW does
*** Agreement.
5.3. License fees. In consideration for the licenses granted in
Section 4.1, GW shall pay to Aurora a non-refundable,
non-creditable license fee of *** Dollars ($***), first due on
the Assay Transfer Date and then each anniversary of the Assay
Transfer Date for a total *** payments and *** Dollars ($***). GW
may extend the license in accordance with Section 4.1.
5.4. Reagent Supply. In consideration for the provision of the VSPs by
Aurora to GW, GW shall pay to Aurora *** Dollars ($***) for ***
of the VSPs. Such *** shall be delivered to GW on the ***. GW's
payment for such VSPs is due upon receipt. For subsequent orders
of VSPs from Aurora during the period from the Assay Transfer
Date to the *** anniversary of the Effective Date, GW shall pay
***.
5.5. Screening Payment. In consideration for the screening services
provided in Section 3.3, GW shall pay to Aurora, the amount equal
to *** Dollars ($***) for such agreed screening program. Such
payment is due within *** after the Assay Transfer Date.
5.6. Warranty Payments. In consideration for the warranty described in
Section 2.4, GW shall pay to Aurora (i) *** Dollars ($***) on the
first anniversary of the Assay Transfer Date ***; and (ii) ***
Dollars ($***) on the *** for the ***.
5.7. Milestone Payments. In addition to other fees described in this
Section 5, GW shall also pay to Aurora the following milestone
payments ***, ***:
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Event Milestone Payment
----- -----------------
*** ***
5.8. Payment and Tracking Milestones. The milestones due under this
Section 5 shall be paid within *** days after the end of each
calendar quarter period in which such milestones are earned and
***. The compounds and target tested using the Assay developed
under this Agreement will be recorded and stored by GW using its
customary means and in a computer searchable database on a
storage device. The information stored will include the target,
screen type, the concentration, structure and activity of the
compound tested, and date of testing. Records of any hits,
derivatives or any compound subject to additional screening or
evaluation will be stored by GW in a computer searchable file or
database that may or may not be separate from other GW data not
related to the Assay. GW shall keep appropriate records of
compounds discovered, identified or profiled with the Assay
subjected to ***. All the records described in this Section are
collectively referred to as tracking records (the "Tracking
Records"). GW *** by Aurora and agreed to by GW, and *** GW, to
inspect the Tracking Records once per year upon reasonable prior
written request by Aurora for the sole purpose of determining the
attainment of a milestone under this Section 5. The Tracking
Records shall be securely retained *** for no less than *** years
from ***. Until all of the milestones have been paid and upon the
request of Aurora, GW will provide Aurora with a summary of the
status of development compounds and products that may be used to
calculate milestones.
5.9. Patent disclaimer. The parties acknowledge that Aurora may not
own or Control patent applications or patents covering the
manufacture, sale, use or importation of a particular compound or
pharmaceutical product developed and/or commercialized by GW as a
result of the Assay; provided, however, GW agrees to pay to
Aurora the milestones in Section 5.7 regardless of whether a
compound or pharmaceutical product is covered by a patent
application or patent within the Aurora Patents.
5.10. Withholding taxes. All amounts required to be paid to Aurora by
GW pursuant to Sections 5.3, 5.6 and 5.7 of this Agreement may be
paid ***. At Aurora's request, GW shall provide Aurora a
certificate evidencing deduction of any withholding taxes
hereunder and shall reasonably assist Aurora to obtain the
benefit of any applicable tax treaty. Should the benefit of ***
not be as favorable as that applying at the Effective Date then
***.
6. INTELLECTUAL PROPERTY OWNERSHIP
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6.1. Pre-existing Intellectual Property. This agreement does not
affect the ownership of Inventions, Technology and Patent Rights
of either party which existed prior to the Effective Date.
6.2. Intellectual Property created under the Collaborative Research
Program. The Assay developed by Aurora *** Collaborative Research
Program ***.
6.3. Intellectual Property created through GW's ***. Any Inventions,
Technology and Patent Rights relating to the activities or
properties of compounds discovered, identified or profiled
through GW's *** the Assay or other assays incorporating Aurora
Technology ***, subject to the terms of the licenses granted by
Aurora under Section 4. *** will be responsible for the filing,
prosecution, and enforcement of all applicable patents and for
the expenses thereof. Any improvements, Know-How, Inventions,
Technology and Patent Rights developed by ***, *** for paying any
fees related to the filing, prosecution, and enforcement of all
applicable patents and for the expenses thereof.
6.4. Transfer of Rights. All rights not expressly licensed or assigned
by Aurora are retained by Aurora and no implied licenses are
conveyed herein or were conveyed before the Effective Date.
Except as otherwise expressly provided in this Agreement, nothing
in this Agreement is intended to convey or transfer ownership by
one party to the other of any rights, title or interest in any
Confidential Information, Technology, copyrights or Patent Rights
owned or Controlled by a party. Except as expressly provided for
in this Agreement, nothing in this Agreement shall be construed
as a license or sublicense by one party to the other of any
rights in any Technology, copyrights, or Patent Rights owned or
Controlled by a party.
6.5. Inventorship and Assignment. Inventorship of patentable
inventions shall be determined by U.S. patent law. GW and Aurora
*** Inventions, Technology and Patent Rights.
6.6. Copyrights. The parties agree to treat and handle, to the maximum
extent practical, any copyrights owned or Controlled by a party
in the same manner as Patent Rights owned or Controlled by such
party.
7. PRODUCT DEVELOPMENT, COMMERCIALIZATION AND DILIGENCE
7.1. *** development and commercialization of all compounds discovered
through GW's ***, and such development and commercialization will
be at GW's sole discretion.
8. CONFIDENTIALITY
8.1. Confidential Information. Except as expressly provided herein,
the parties agree that, for the term of this Agreement and ***
years thereafter, the receiving party
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shall keep completely confidential and shall not publish or
otherwise disclose to another party and shall not use for any
purpose other than to perform the purposes contemplated by this
Agreement any Confidential Information furnished to it by the
disclosing party hereto pursuant to this Agreement, except that
to the extent that it can be established by the receiving party
by competent proof that such Confidential Information:
- was already known to the receiving party, other than under
an obligation of confidentiality, at the time of
disclosure;
- was generally available to the public or otherwise part of
the public domain at the time of its disclosure to the
receiving party;
- became generally available to the public or otherwise part
of the public domain after its disclosure and other than
through any act or omission of the receiving party in
breach of this Agreement;
- was lawfully disclosed to the receiving party by a person
other than a party hereto, or
- was independently developed by the receiving party without
the use of Confidential Information.
8.2. Permitted Use and Disclosures. Each party hereto may use or
disclose Confidential Information disclosed to it by the other
party to the extent such use or disclosure is (i) reasonably
necessary in filing or prosecuting patent applications,
prosecuting or defending litigation, (ii) complying with
applicable law, governmental regulation or court order, (iii)
submitting information to tax or other governmental authorities,
(iv) making a permitted sublicense or (v) otherwise exercising
its rights hereunder, provided that if a party is required to
make any such disclosure of another party's Confidential
Information, other than pursuant to subsection (ii) hereof, it
will give reasonable advance notice to the latter party of such
disclosure, and shall obtain the prior written approval of said
latter party, which approval shall not be unreasonably withheld.
8.3 Confidential Terms. Except as expressly provided herein, each
party agrees not to disclose any material or financial terms of
this Agreement to another party without the consent of the other
party, not to be unreasonably withheld; provided, however, each
party reserves the right to make reasonable disclosures
(including the redaction of material or financial terms) as
required by securities or other applicable laws, or to actual or
prospective investors or corporate partners (including licensees
and acquirers), or to accountants, attorneys and other
professional advisors on a need-to-know basis under circumstances
that reasonably ensure the confidentiality thereof, or to the
extent required by law. If such Confidential Information is to
become public information by such disclosure the disclosing party
must obtain the written consent of the non-disclosing party in
order to obtain protection of the Confidential Information if
necessary.
8.4. Press Release. Notwithstanding the foregoing, the parties agree
that Aurora will make a press release to announce the execution
of this Agreement which shall be subject to prior written
approval of GW, such approval not to be unreasonably withheld.
Thereafter, GW and Aurora may each disclose to Third Parties the
information contained in the mutually agreed upon press release
without the need for further approval by the other.
9. TERM AND TERMINATION OF THE RESEARCH COLLABORATION
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9.1. Term. This Agreement shall commence on the Effective Date and
shall terminate on the date that the last patent of the Aurora
Patents expires. The Collaborative Research Program will
terminate on the completion of the screening of the Assay by
Aurora in accordance with Section 3.3., or *** after the
Effective Date, whichever is first, unless extended by mutual
written agreement of both parties.
9.2. Termination. Either party shall have the right to terminate this
Agreement at any time during the term for a material breach of
this Agreement by the other party, provided that the
non-breaching party shall have first given *** days prior written
notice (***days in the event of non-payment of any amounts due
under this Agreement) to the breaching party describing such
breach and stating the non-breaching party's intention to
terminate this Agreement if such breach remains uncured, and the
breaching party thereafter fails to cure same within such *** day
period (*** day period in the event of non-payment of any amounts
due under this Agreement).
9.3. Termination by GW this Agreement pursuant to Sections 3.1.1 or
3.1.2. All amounts paid by GW to Aurora under this Agreement
under Sections 5.1, 5.2 and 5.3 shall be nonrefundable.
9.4. Effect of Expiration or Termination. Except as otherwise
expressly provided in this Agreement, the rights and obligations
of the parties hereof shall terminate and be of no further force
or effect whatsoever upon any termination of this Agreement under
Section 9 hereof. Sections *** and ***, hereof shall survive
termination or expiration of this Agreement. Upon expiration or
other termination of the Agreement all licenses granted will
thereby terminate and Materials will be destroyed or returned at
the direction of the parties within *** days.
10 MISCELLANEOUS
10.1. Binding Effect; Assignment. Except as otherwise provided herein,
neither this Agreement nor any interest hereunder will be
assignable in part or in whole *** may assign this Agreement ***.
This Agreement will be binding upon *** herein will be deemed to
*** to the extent necessary to carry out the intent of this
Agreement. Any assignment which is not in accordance with this
Section is void.
10.2. Effect of Waiver. No waiver of any default, condition, provisions
or breach of this Agreement shall be deemed to imply or
constitute a waiver of any other like default, condition,
provision or breach of this Agreement.
10.3. Representations and Warranties of Aurora and GW. Each Party
hereby represents and warrants: Such party is duly organized and
validly existing and in good standing under the laws of the state
of its incorporation and has all requisite corporate power and
authority to enter into this Agreement and to carry out the
provisions hereof. Such party
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is duly authorized to execute and deliver this Agreement and to
perform its obligations hereunder. This Agreement is a legal and
valid obligation binding upon it and enforceable in accordance
with its terms. The execution, delivery and performance of this
Agreement by such party does not conflict with any agreement,
instrument or understanding, oral or written, to which it is a
party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative or
other agency having jurisdiction over it.
10.4 *** Indemnification for products or services arising from license
granted herein. With respect to rights licensed to *** by the ***
or by ***, *** agrees to indemnify, defend and hold harmless ***,
as appropriate, and their respective officers, directors,
employees, sponsors and agents from and against all damages or
other amounts payable to a Third Party (including product
liability) resulting or arising from *** use of the rights
granted herein to the extent that such indemnification by *** is
required by *** pursuant to agreements between *** or between
***.
10.4.1. Limitation of Liability and Warranty. NEITHER PARTY SHALL BE
LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTIAL,
OR INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT, HOWEVER
CAUSED, UNDER ANY THEORY OF LIABILITY. Except as expressly set
forth in this Agreement, Aurora MAKES NO REPRESENTATIONS AND
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED.
THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED
PRODUCTS OR SERVICES WILL NOT INFRINGE ANY PATENT, COPYRIGHT,
TRADEMARK, OR OTHER RIGHTS OR ANY OTHER EXPRESS OR IMPLIED
WARRANTIES.
10.4.2. *** Indemnification. *** shall indemnify, hold harmless and
defend ***, its officers, employees, and agents from and against
any and all claims, suits, losses, liabilities, damages, costs,
fees, and expenses (collectively, "Claims") resulting from or
arising out of the development, manufacture, storage, sale or
other distribution or use of chemical entities identified using
the Assay by or on behalf of *** or an Affiliate thereof,
resulting from rights granted herein, except in the case of
negligence or willful misconduct by ***. This indemnification
includes, but is not limited to, any product liability. *** shall
give prompt notice of the Claim to *** and, provided that *** is
not contesting the indemnity obligation, shall permit *** to
control any litigation relating to such a Claim and disposition
of any such Claim provided that *** shall act reasonably and in
good faith with respect to all matters relating to the settlement
or disposition of any Claim as the settlement or disposition
relates to parties being indemnified under this Section and ***
shall not settle or otherwise resolve any Claim without prior
notice to *** and the consent of *** if such settlement involves
anything other than the payment of money by ***. *** shall
cooperate with ***, at *** expense, in its defense of any Claim
for which indemnification is sought under this Section.
10.4.3. Aurora Indemnification. Aurora agrees to indemnify, defend and
hold harmless GW, its officers, employees and agents from and
against any and all claims,
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liabilities, demands, damages, judgements, awards, settlements,
expenses or losses (including reasonable attorney fees)
(collectively, "Claims") arising out of Aurora's negligence or
willful misconduct or any damages to property or injuries
(including death) to any persons directly caused by Aurora, its
employees, agents or permitted subcontractors. GW shall give
prompt notice of the Claim to Aurora and, provided that Aurora is
not contesting the indemnity obligation, shall permit Aurora to
control any litigation relating to such a Claim and disposition
of any such Claim provided that Aurora shall act reasonably and
in good faith with respect to all matters relating to the
settlement or disposition of any Claim as the settlement or
disposition relates to parties being indemnified under this
Section and Aurora shall not settle or otherwise resolve any
Claim without prior notice to GW and the consent of GW if such
settlement involves anything other than the payment of money by
Aurora. GW shall cooperate with Aurora, at Aurora's expense, in
its defense of any Claim for which indemnification is sought
under this Section.
10.5. 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(s), earthquake, flood (including El Nino and La
Nina), lockout, embargo and governmental acts or orders or
restrictions.
10.6. Amendment. No modification, supplement to or waiver of this
Agreement or any Addendum hereto or any of their provisions shall
be binding upon a party hereto unless made in writing and duly
signed by an authorized representative of both GW and Aurora. In
no event may the terms of this Agreement be changed, deleted,
supplemented or waived by any notice, purchase order, receipt,
acceptance, xxxx of lading or other similar form of document. A
failure of either party to exercise any right or remedy
hereunder, in whole or in part, or on one or more occasions,
shall not be deemed either a waiver of such right or remedy to
the extent not exercised, or of any other right or remedy, on
such occasion, or a waiver of any right or remedy on any
succeeding occasion.
10.7. Entire Agreement. This Agreement and each supplemental written
agreement contemplated hereunder, sets forth the entire
understanding and agreement of the parties as to the subject
matter thereof, and there are no other understandings,
representations or promises, written or verbal, not set forth
herein or on which either party has relied. If any provisions of
any such Addendum or supplemental written agreement conflict with
any provisions set forth in this Agreement, the provisions of
this Agreement shall take precedence, unless such Addendum or
supplemental written agreement expressly refers to the specific
provision(s) of this Agreement that it is intended to replace or
modify (and which shall be limited in force and effect to such
Addendum or supplemental written agreement only).
10.8. Notices. All Notices under this Agreement shall be given in
writing and shall be addressed to the parties at the following
addresses:
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For Glaxo Wellcome:
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Glaxo Wellcome House West,
Berkeley Avenue,
Greenford, Middlesex UB6 ONN,
United Kingdom
For Aurora:
Xxxxx Xxxxxx, Ph.D.
Senior Vice President Commercial Development
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
Copies to:
Xxxx X. Xxxxxxxx, Ph.D., X.X.
Senior Vice President, Intellectual Property
and Chief Knowledge Officer
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
Notices shall be in writing and shall be deemed delivered when
received, if delivered by a courier, or on the second business
day following mailing, if sent by first-class certified or
registered mail, postage prepaid.
10.9. Governing Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of California as those
laws apply to California residents, without regard or giving
effect to its principles of conflict of laws. Resolution of any
disputes will be decided in California.
10.10. Third Party Beneficiaries. This Agreement and the rights and
obligations created hereunder are for the sole benefit of the
parties hereto and their respective successors or assigns as may
be permitted under the terms of this Agreement. By entering into
this Agreement, the parties agree that they are not creating and
do not intend to create implied or incidental rights inuring to
the benefit of Third Parties.
10.11. Severability. This Agreement is intended to be severable. If any
provision(s) of this Agreement are or become invalid, are ruled
illegal by a court of competent jurisdiction or are deemed
unenforceable under the current applicable law from time to time
in effect during the term hereof, it is the intention of the
parties that the remainder of the Agreement shall not be affected
thereby and shall continue to be construed to the maximum extent
permitted by law at such time. It is further the intention of the
parties that in lieu of each such provision which is invalid,
illegal, or unenforceable, there shall be substituted or added as
part of this Agreement by such court of competent jurisdiction a
provision which shall be as similar as possible, in economic and
business
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objectives as intended by the parties to such invalid, illegal or
unenforceable provision, but shall be valid, legal and
enforceable.
10.12. Headings. Captions and paragraph headings are for convenience
only and shall not form an interpretative part of this Agreement.
Unless otherwise specifically provided, all references to a
Section incorporate all Sections or subsections thereunder. This
Agreement shall not be strictly construed against either party
hereto and maybe executed in two (2) or more counterparts, each
of which will be deemed an original and the same instrument.
Counterparts may be signed and delivered by facsimile, each of
which shall be binding when sent, and in each case an original
shall be sent via overnight courier. This Agreement will not be
enforceable and shall have no effect if this Agreement is not
executed ***.
IN WITNESS WHEREOF, the parties have executed, by duly authorized
representatives, this Agreement:
For Glaxo Group Limited For Glaxo Research and
Development Limited
By: /s/ XX Xxxxxxxx By: /s/ XX Xxxxxxxx
--------------------------------- --------------------------------
Date: 15 December 1999 Date: 15 December 1999
------------------------------- ------------------------------
Name: XX Xxxxxxxx Name: XX Xxxxxxxx
------------------------------- ------------------------------
Title: Assistant Secretary Title: Assistant Secretary
------------------------------ -----------------------------
For Aurora Biosciences Corporation
By: /s/ Xxxxxxx X. Xxxx
---------------------------------
Date: 12/15/99
-------------------------------
Name: Xxxxxxx X. Xxxx
-------------------------------
Title: Vice President Business Development
-----------------------------------
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EXHIBIT A
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EXHIBIT B
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***
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EXHIBIT C
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ATTACHMENT 1
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