1
EXHIBIT 10.55
CONFIDENTIAL EXECUTION COPY
LICENSE AGREEMENT
BETWEEN
ZYMOGENETICS, INC.
AND
AURORA BIOSCIENCES CORPORATION
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
1
2
LICENSE AGREEMENT
This License Agreement (the "Agreement") is made this 17th day of December 1999
(the "Effective Date"), by and between ZYMOGENETICS, INC. ("ZymoGenetics"), a
Washington corporation with principal offices at 0000 Xxxxxxxx Xxxxxx Xxxx,
Xxxxxxx, XX 00000 and AURORA BIOSCIENCES CORPORATION ("Aurora"), a Delaware
corporation with principal offices at 00000 Xxxxxxxxx Xxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000 to license certain technology.
RECITALS
WHEREAS, Aurora has the right to sublicense the Aurora Patents and Stanford
Patents (both defined herein) relating to fluorescent proteins further described
herein, and desires to license the same to ZymoGenetics;
WHEREAS, ZymoGenetics seeks to obtain certain Materials, license rights under
the Aurora Patents and Stanford Patents *** according to the terms contained
herein (the "Agreement");
Now, therefore, in consideration of the foregoing and the covenants and premises
contained herein the parties agree as follows:
1. DEFINITIONS
As used herein, the following terms shall have the following meanings:
1.1 "Aurora Mutant GFP" means ***.
1.2 "Aurora Patents" means U.S. Patent Nos. 5,625,048, 5,777,079 and the
patent applications listed on Exhibit A and *** U.S. patents issuing
therefrom.
1.3 "Aurora Technology" means the *** listed in Exhibit C and Aurora's
proprietary technical manual for the same.
1.4 "Confidential Information" means all information, data, and
documentation received by either party from the other party pursuant to
this Agreement, subject to the exceptions set forth in Section 8.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
2
3
1.5 "Control" or "Controlled" means, in the context of intellectual
property, right of a party 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.
1.6 "Excluded Fields" means any activities outside the Field, including, but
not limited to: (i) services to Third Parties; (ii) Fluorescent
Resonance Energy Transfer (FRET); (iii) diagnostics; (iv) testing small
molecule compounds (i.e. non-protein, non-peptide, or non-nucleotide
substances) in an effort to identify therapeutic entities; (v) quality
control, quality assurance or manufacture of products (e.g. cell lines
or antibodies) for sale or clinical use; (vi) use of polynucleotides in
gene trap, enhancer trap and promoter trap vectors for integration into
a genome (e.g. random integration) (vii) use in plants or plant cells;
(viii) no right to sublicense; and (ix) the subject matter of the
Stanford Patents may not be practiced in the field of anti-infectives.
1.7 "Field" means:
(1) use of Aurora Mutant GFP for *** solely for pharmaceutical
research;
(2) use of Aurora Mutant GFP for the *** and *** solely for
pharmaceutical research, and use of Aurora Mutant GFP for *** as
described in Section 1.7(1);
(3) use of Aurora Mutant GFP for *** applications solely for
pharmaceutical research, such applications including but not
limited to: the *** and *** and in the *** described in Section
1.7(2); the evaluation of *** and *** of Targets ***;
(4) use of Aurora Mutant GFP for in vitro Screening; and
(5) use of Aurora Mutant GFP as a *** assays. Such use as a ***
is limited to Screening of *** including *** Target ***.
Items (1)-(5) are limited to activities that occur at
ZymoGenetics.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
3
4
1.8 "Materials" means any reagents, promoters, enhancers, vectors, plasmids,
genes, polynucleotides, cells, proteins and fragments thereof, peptides,
antigens, antibodies, antagonists, agonists, inhibitors and chemicals.
1.9 ***.
1.10 "Screening" means ***.
1.11 "Stanford Agreement" means that certain exclusive license agreement
between Aurora and The Board of Trustees of the Xxxxxx Xxxxxxxx Junior
University ("Stanford"), dated as ***.
1.12 "Stanford Licensed Product(s)" means any product or process, or part
thereof, in the Field, the manufacture, use or sale of which is covered
by a valid claim of an issued, unexpired Stanford Patent and shall be
presumed to be valid unless and until it has been held to be invalid by
a final judgment of a court of competent jurisdiction from which no
appeal can be or is taken.
1.13 "Stanford Patents" means U.S. Patent No. 5,807,387, 5,968,738 and the
patent applications listed on Exhibit B and *** U.S. patents issuing
therefrom.
1.14 "Target" means ***.
1.15 "Territory" means the United States.
1.16 "Third Party" means any entity other than (i) Aurora and (ii)
ZymoGenetics.
1.17 "Term" has the meaning set forth in Section 9.1.
1.18 "ZymoGenetics Product" means ***.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
4
5
2. LICENSES AND SUPPLY
2.1 Grant Under the Aurora Patents, Stanford Patents and Aurora Technology
2.1.1 Non-exclusive License to Aurora Patents. Aurora hereby grants to
ZymoGenetics, subject to ZymoGenetics' obligations described in
Sections 3, 4 and 5, a non-exclusive, non-transferable, license
to make, use and import Aurora Mutant GFP under the Aurora
Patents solely in the Field in the Territory during the Term.
2.1.2 Non-exclusive License to Stanford Patents. Aurora hereby grants
to ZymoGenetics, subject to ZymoGenetics' obligations described
in Sections 3, 4 and 5, a non-exclusive, non-transferable,
license to make, use and import Aurora Mutant GFP under the
Stanford Patents solely in the Field in the Territory during the
Term.
2.1.3 Non-exclusive License to Aurora Technology. Aurora hereby grants
to ZymoGenetics, subject to ZymoGenetics' obligations described
in Sections 3, 4 and 5, a non-exclusive, non-transferable,
license to make and use Aurora Mutant GFP under the Aurora
Technology solely in the Field in the Territory during the Term.
2.1.4 Limitations. 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 (e.g.
know-how), 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. All rights not expressly licensed by Aurora are retained
by Aurora. The Aurora Mutant GFP within the scope of license
grants of Sections 2.1.1, 2.1.2 and 2.1.3 are limited to Aurora
Mutant GFP within the scope *** (i) ***; (ii) ***; or (iii) ***.
The license rights granted to ZymoGenetics in Section 2.1 do not
include: (a) the right to sublicense such rights; (b) the right
to conduct any activities outside the Field under the Aurora
Patents or Stanford Patents or with Aurora Technology; or (c) the
right to conduct activities inside the Excluded Fields under the
Aurora Patents or Stanford Patents or with Aurora Technology.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
5
6
2.2 Supply. Aurora shall deliver the Aurora Technology to ZymoGenetics
within *** business days after the Effective Date in the quantities
described on Exhibit C.
3. COMPENSATION
3.1 Technology Access Fee. As consideration for the Aurora Technology
provided to ZymoGenetics pursuant to section 2.2, ZymoGenetics shall pay
to Aurora within *** after the Effective Date, a *** Dollars ($***).
3.2 Settlement Fee. As consideration for the covenant provided to
ZymoGenetics pursuant to Section 5.1, ZymoGenetics shall pay to Aurora
within *** after the Effective Date, *** settlement fee of *** Dollars
($***). Such payment by Zymogenetics is made solely ***.
3.3 Annual Maintenance Fee. As consideration for the rights granted in
Section ***, ZymoGenetics will pay to Aurora a *** fee as payment for
the upcoming year *** Dollars ($***) on the first anniversary of the
Effective Date and then each anniversary of the Effective Date
thereafter.
4. PAYMENTS AND MILESTONES
4.1 Currency of Payment. All payments to be made under this Agreement shall
be paid in U.S. dollars by wire transfer or other mutually acceptable
means to a bank account designated by Aurora. Wiring instructions for
payments are as follows:
***
4.2 Milestones. When any ZymoGenetics Product reaches any of the following
milestones, ZymoGenetics shall pay to Aurora the corresponding
non-creditable, non-refundable milestone payment; ***
Milestone Payment
--------- -------
1. *** $ ***
2. *** $ ***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
6
7
3. *** $ ***
4. ***
4.2.1 Payment and Reporting. The milestones due under this Section 4
shall be paid within *** days after the end of each calendar
quarter period in which such milestones are reached for each
ZymoGenetics Product or for a ZymoGenetics Product earned and not
previously reported.
4.2.2 Tracking. ZymoGenetics Products will be recorded and stored by
ZymoGenetics using its customary means and in a computer
searchable database on a storage device. Records of any ***
(including, ***) that would *** subject to additional *** will be
*** file or database that ***. ZymoGenetics shall keep
appropriate records of ZymoGenetics Products discovered,
identified or profiled under the rights granted herein ***. All
the records described in this Section are collectively referred
to as tracking records (the "Tracking Records"). ***
ZymoGenetics, and subject to a confidential relationship with
ZymoGenetics *** Tracking Records once per year upon reasonable
prior written request *** milestone under ***. The Tracking
Records shall be securely retained according to ZymoGenetics' ***
for no less than *** from the date a ***. Until all of the
milestones have been paid, *** that may be used to calculate
milestones. Such reports shall be sent to the attention of SVP,
Intellectual Property via first class mail, overnight courier or
facsimile.
4.2.3 Trade Secret Milestones. The parties acknowledge that a
significant value contributed by Aurora under this Agreement is
the enhanced probability of identifying products, such as human
pharmaceutical products (or other products having commercial
value), and the potential to generate multiple cell lines or
leads, either or both of which the parties reasonably believe
will lessen the time required to bring pharmaceutical products to
market and increase the efficiency of drug discovery and
development processes and technologies. Additionally, the parties
acknowledge that Aurora may not own or Control patent
applications or
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
7
8
patents covering the manufacture, offer for sale, sale, use or
importation of a particular product. ZymoGenetics acknowledges
and agrees that the value it receives hereunder is in the access
and use of Aurora Technology, Aurora Patents or Stanford Patents.
*** a patent application or patent within the Aurora Patents or
Stanford Patents.
4.3 ***. If ZymoGenetics makes a payment to *** under such Third Party
patent rights, biological materials or know-how, *** ZymoGenetics, ***
payments in annual maintenance fees or milestones, described in Sections
3.3 and 4.2 respectively, to Aurora totaling *** dollars ($***),
ZymoGenetics *** made to *** amount payable under Section *** dollars
($***) ***.
5. COVENANTS
5.1 Aurora's Covenant. Subject to ZymoGenetics' obligations in accordance
with Section 3, the first paragraph of Section 4.2 and Sections 4.2.1,
5.2.1 and 5.2.2, Aurora covenants *** by ZymoGenetics under the Aurora
Patents or Stanford Patents, and such *** making or using Aurora Mutant
GFP's ***. Such covenant *** any ZymoGenetics' successors in interest,
***, in part or in whole.
5.2 Covenants of ZymoGenetics:
5.2.1 ***
5.2.2 ***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
8
9
5.2.3 Except as expressly licensed herein, ZymoGenetics covenants not
to make or use Aurora Technology or polynucleotides or proteins
under the Aurora Patents or Stanford Patents. ***
6. REPRESENTATIONS AND WARRANTIES
6.1 Representations and Warranties of Aurora and ZymoGenetics
Each Party hereby represents and warrants:
Corporate Power. 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.
Due Authorization. Such party is duly authorized to execute and
deliver this Agreement and to perform its obligations hereunder.
Binding Agreement. 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.
6.2 Representations and Warranties of Aurora. To the best knowledge of
Aurora, as of the Effective Date, Aurora represents and warrants to
ZymoGenetics, except as otherwise provided or disclosed herein: (i) it
Controls under valid licenses or by virtue of ownership all right, title
and interest in and to the Aurora Patents and Stanford Patents and
Aurora Technology licensed hereunder; (ii) *** (iii) ***; and (iv) ***.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
9
10
7. NEGATION OF WARRANTIES
7.1 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 AURORA
TECHNOLOGY WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK, OR OTHER
RIGHTS OR ANY OTHER EXPRESS OR IMPLIED WARRANTIES.
8. CONFIDENTIALITY
8.1 Confidential Information. Except as expressly provided herein, the
parties agree that, for the Term and five (5) years thereafter, the
receiving party 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 written evidence 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;
or
was lawfully disclosed to the receiving party by a person other
than a party hereto,
or
was independently developed by the receiving party.
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 reasonably necessary in filing or
prosecuting patent applications, prosecuting or defending litigation,
complying with applicable law, governmental regulation or court order,
submitting information to tax or other governmental authorities, making
a permitted sublicense or 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
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
10
11
pursuant to a confidentiality agreement, it will give reasonable advance
notice to the latter party of such disclosure and, save to the extent
inappropriate in the case of patent applications, will use reasonable
efforts to secure confidential treatment of such information prior to
its disclosure (whether through protective orders or otherwise).
8.3 Confidential Terms. Except as expressly provided herein, each party
agrees not to disclose *** 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
mutually agreed redaction of material or financial terms) as required by
securities or other applicable laws, or to actual or prospective
investors or corporate partners, 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. A party shall have the further right to disclose the material
financial terms of this Agreement under strictures of confidentiality to
any potential acquirer, bona fide potential strategic partner or
collaborator, merger partner, bank, venture capital firm, or other
financial institution to obtain financing. If any Confidential
Information is to become public information by disclosure of the
disclosing party (except by way of issuance of a patent), the disclosing
party must obtain the written consent of the non-disclosing party in
order to disclose the information or allow the non-disclosing party to
obtain protection of the Confidential Information, if necessary.
9. TERMINATION
9.1 Term. This Agreement shall continue until the date the last patent of
the Aurora Patents or Stanford Patents expires ("Term").
9.2 Termination for Material Breach. Either party shall have the right to
terminate this Agreement at any time for a material breach of this
Agreement by the other party, provided that the non-breaching party
shall have first given thirty (30) days prior written notice (ten (10)
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 a reasonable time. In no case will a party be liable for
punitive or consequential damages.
9.3 Termination by ZymoGenetics. ZymoGenetics may, at anytime after the date
of the seventh (7th) anniversary of the Effective Date, terminate the
license rights granted in Section 2.1 upon *** days written notice to
Aurora and ***.
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
11
12
9.4 Any termination pursuant to Section 9.2 or 9.3 shall not relieve
ZymoGenetics of any obligation or liability accrued hereunder prior to
such termination, including the obligation to pay applicable license
fees and milestones. The licenses granted to ZymoGenetics under this
Agreement shall terminate in the event the Agreement is terminated or
otherwise expired. Upon termination of the Agreement all licenses
granted will thereby terminate and Materials with an Aurora Mutant GFP
will be destroyed or returned to Aurora at the direction of Aurora
within sixty (60) days.
10. MISCELLANEOUS
10.1 Binding Effect; Assignment. This Agreement shall be binding upon the
parties' respective successors and permitted assigns. ZymoGenetics may
not assign or otherwise transfer this Agreement or any of its rights or
obligations hereunder without the prior written consent of Aurora ***
and any such attempted assignment or other transfer shall be void.
Aurora may assign this Agreement, upon notice to ZymoGenetics.
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 Limitation of Liability. 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.
10.4 Indemnification. ZymoGenetics shall indemnify, hold harmless and defend
Aurora, its officers, employees, and agents (collectively, the
"Indemnities") against any and all claims, suits, losses, liabilities,
damages, costs, fees, and expenses resulting from or arising out of
exercise of this license described herein. This indemnification
includes, but is not limited to, any product liability. ZymoGenetics
shall have no obligation under this Section 10.4 to the extent any such
claim, suit, loss, liability, damages, cost, fee or expense was the
result of the willful misconduct or gross negligence of any Indemnitee.
ZymoGenetics shall have no obligation under this Section 10.4 unless:
(i) Aurora gives ZymoGenetics prompt written notice of any such claim,
suit, loss, liability, damages, cost, fee or expense; (ii) ZymoGenetics
is granted full authority and control over the defense as well as any
settlement of such claims, suit, losses, liability, damages, costs, fees
and expenses; and (iii) Aurora and all Indemnitees seeking
indemnification reasonably cooperate with
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
12
13
ZymoGenetics and its agents in such defense.
10.5 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses on account of failure of
performance by the defaulting party if the failure is occasioned by war,
strike, fire, act of God(s), el nino, la nina, earthquake, flood,
lockout, embargo, governmental acts or orders or restrictions, failure
of suppliers, or any other reason where failure to perform is beyond the
reasonable control and not caused by the gross negligence or intentional
conduct or misconduct of the nonperforming party, and such party has
exerted all reasonable efforts to avoid or remedy such force majeure;
provided, however, that in no event shall a party be required to settle
any labor dispute or disturbance.
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 ZymoGenetics 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 Exhibit attached hereto, 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:
For ZymoGenetics:
Senior Director, Legal Affairs
ZymoGenetics, Inc.
0000 Xxxxxxxx Xxxxxx Xxxx
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
13
14
Xxxxxxx, XX 00000
Facsimile (000)000-0000
Copies to:
Xxxxx Xxxxxx, Ph.D.
CEO and President
ZymoGenetics, Inc.
0000 Xxxxxxxx Xxxxxx Xxxx
Xxxxxxx, XX 00000
Facsimile: (000)000-0000
For Aurora:
Stuart X. X. Xxxxxxxxx, Ph.D., M.B.A.
CEO and President
Aurora Biosciences Corporation
00000 Xxxxxxxxx Xxxx
Xxx Xxxxx, XX. 00000
Copies to:
Xxxx X. Xxxxxxxx
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 if by facsimile, with confirmation copy or
on the second business day following mailing, if sent by first-class
certified or registered mail, postage prepaid. Notice delivered upon
receipt of fax (confirmation copy follows to support date of notice).
10.9 Arbitration. The parties recognize that disputes as to certain matters
may from time to time arise during the term of this Agreement which
relate to either party's rights and/or obligations hereunder, including,
but not limited to attempted termination of the Agreement. It is the
objective of the parties to establish procedures to facilitate the
resolution of disputes arising under this Agreement in an expedient
manner by mutual cooperation and without resort to arbitration. The
parties agree that prior to any arbitration concerning this Agreement,
Zymogenetics' CEO and Aurora's CEO will meet in person or by
video-conferencing in a good faith effort to resolve any disputes
concerning this Agreement. Within *** days of a formal request by either
party to the other, any party
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
14
15
may, by written notice to the other, have such dispute referred to their
respective officers designated or their successors, for attempted
resolution by good faith negotiations, such good faith negotiations to
begin within *** days after such notice is received and not to be
continued for more than *** days after initiation of such negotiations
unless the parties mutually agree to an extension thereto. Except as
otherwise provided specifically herein, any controversy or claim under
this Agreement shall be solely settled by arbitration by one arbitrator
pursuant to the Commercial Arbitration Rules of the American Arbitration
Association (the "Association"); provided that the parties shall first
use their best efforts to resolve such dispute by negotiation.
Arbitration shall be initiated by a written request for arbitration
proceedings by one party to the other after such *** day good faith
negotiation period. The arbitration shall be conducted ***. The
arbitrator shall be selected by the joint agreement of the parties, but
if they do not so agree within *** days of the date of a request for
arbitration, the selection shall be made pursuant to the rules of the
Association. The decision reached by the arbitrator shall be conclusive
and binding upon the parties hereto and may be filed with the clerk of
any court of competent jurisdiction, and a judgment confirming such
decision may, if desired by any party to the arbitration, be entered in
such court. Each of the parties shall pay its own expenses of
arbitration and the expenses of the arbitrator(s) shall be equally
shared; provided, however, that if in the opinion of the arbitrator(s)
any claim hereunder or any defense or objection thereto was
unreasonable, the arbitrator(s) may assess, as part of the award, all or
any part of the arbitration expenses (including reasonable attorneys'
fees) against the party raising such unreasonable claim, defense or
objection. Nothing herein set forth shall prevent the parties from
settling any dispute by mutual agreement at any time. Notwithstanding
anything to the contrary in this Section 10, either party may seek
immediate injunctive or other interim relief from any court of competent
jurisdiction with respect to enforcement and protection of the patent
rights, copyrights, trademarks, or other intellectual property rights
owned or Controlled by such party. For clarity, this arbitration
provision, Section 10.12, shall not apply to any claim of infringement
or a lawsuit to determine the enforceability or validity of intellectual
property, including patents. In no event shall a demand for arbitration
be made after the date when the institution of a legal or equitable
proceeding based on such claim, dispute or other matter in question
would be barred by the applicable statute of limitations.
10.10 Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of the State of California.
10.11 Severability and Survival. 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
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
15
16
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 mutual agreement of the parties or
arbitration, 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 shall be valid, legal
and enforceable. Unless expressly stated otherwise, the provision of
Sections 4, 5, 6, 7, 8, and 10 and any other provision intended by its
meaning to survive, will survive the expiration or any other termination
of this Agreement.
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 be
construed without regard to the drafting or non-drafting party hereto
and may be executed in two 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 by Zymogenetics on or before December 17,
1999.
IN WITNESS WHEREOF, Aurora and ZymoGenetics have executed, by duly authorized
representatives, this Agreement.
For ZymoGenetics, Inc.
By: /s/ Xxxxx Xxxxxx Date: 12/17/99
------------------------------- -------------------------------
Name: Xxxxx Xxxxxx
-----------------------------
Title: President
----------------------------
For Aurora Biosciences Corporation
By: /s/ Xxxx Xxxxxxxx Date: 12/16/99
------------------------------- -------------------------------
Name: Xxxx Xxxxxxxx
-----------------------------
Title: CKO
----------------------------
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
16
17
EXHIBIT A
AURORA PATENTS
***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
17
18
EXHIBIT B
STANFORD PATENTS
***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
18
19
***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
19
20
EXHIBIT C
***
***
December 17, 1999
ZymoGenetics.Aurora License Agrt.-
*** CONFIDENTIAL TREATMENT REQUESTED
20
