Exhibit 99.4
MSD/MST SUBLICENSE AGREEMENT
----------------------------
This Agreement is entered into as of November 30, 1995 among MESO SCALE
DIAGNOSTICS, LLC., ("MSD"), a Delaware limited liability company with its
principal office at 00000 Xxxxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxx, MESO SCALE
TECHNOLOGIES, LLC., a Delaware limited liability company with its principal
office at 00000 Xxxxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxx ("MST"), and IGEN,
Inc., a California corporation with its principal office at 00000 Xxxxxxxxxx
Xxxxx, Xxxxxxxxxxxx, Xxxxxxxx ("IGEN").
RECITALS
--------
MSD and IGEN have entered into an IGEN/MSD License Agreement dated of even
date herewith (the "IGEN/MSD License Agreement") pursuant to which IGEN has
licensed certain rights in IGEN's technology to MSD. MSD, MST and IGEN are party
to a Joint Venture Agreement of even date herewith (the "JV Agreement"). In
consideration of the execution and delivery by MST of the MST License agreement
(as defined in the JV Agreement) and the JV Agreement, MSD wishes to enter into
this Agreement in order to sublicense to MST certain rights granted MSD pursuant
to the IGEN/MSD License Agreement.
AGREEMENT
---------
The parties hereto hereby agree as follows:
Definitions. Terms defined in the JV Agreement and IGEN/MSD License Agreement
-----------
and not otherwise defined herein shall have the earnings as so defined.
1. License Grants
--------------
1.1. IGEN Technology. MSD hereby grants to MST an exclusive worldwide,
---------------
royalty-free license to practice the IGEN Technology to make, use and sell
products or processes applying or related to the Research Technologies outside
of the Diagnostic Field; provided that IGEN Technology shall not include (i) any
technology that is subject to exclusive licenses granted by IGEN to third
parties prior to the date hereof, or (ii) any technology that is subject to
exclusive licenses granted by third parties to IGEN. In the event any such
exclusive license terminates, or IGEN is otherwise no longer restricted by such
license from licensing such technology, such technology shall be, and hereby is,
licensed to MST pursuant hereto.
1.2. IGEN Improvements. MSD hereby grants to MST an exclusive, worldwide,
-----------------
royalty-free license to practice the IGEN Improvements to make, use and sell
products, services or processes applying or related to the Research Technologies
outside of the Diagnostic Field.
1.3. Sublicenses. MST shall have the right, after providing written notice
-----------
to IGEN, to grant sublicenses to third parties under the licenses granted
pursuant hereto, provided that such third parties are affiliates of MST.
--------
1.4. Technology Transfer. Promptly after the date hereof, MSD shall
-------------------
disclose to MST all Licensed Technology. Thereafter, upon the disclosure to MSD
of any additional Licensed Technology, MSD shall promptly disclose to MST such
additional Licensed Technology. MSD shall, from time to time upon the request of
MST, deliver to MST a copy of any and all physical embodiments of the Licensed
Technology, and MSD shall take such other reasonable action, at its own expense,
as MST may request in order to allow MST to practice the Licensed Technology in
accordance with the licenses granted above.
1.5. Agreement to Manufacture Products. In the event MST wishes to
---------------------------------
incorporate into a product or service any intellectual property licensed to IGEN
which IGEN is restricted from allowing MST to use, at MST's request, either IGEN
or MSD shall use all reasonable commercial efforts to develop, manufacture, and
market such product or service, and MST shall, at MST's option, either (i)
reimburse IGEN (or MSD, as the case may be) for the cost of commercializing such
product or service (such cost to be calculated based on generally accepted
accounting principles), in which case MST shall be entitled to all revenue
derived from the sale of such product or service or (ii) IGEN (or MSD, as the
case may be) shall be reimbursed for such cost from the revenue of the sale of
such product or service, in which case any such revenue in excess of such cost
shall be remitted to MST.
2. Term and Termination.
--------------------
2.1. Term. Unless sooner terminated in accordance with the terms hereof, or
----
otherwise, this Agreement, and the license herein grated to MST, shall continue
in effect indefinitely; provided that in the event that (i) either MST or IGEN
--------
ceases to be a Class A Member of MSD, or (ii) the joint venture as described in
the Joint Venture Agreement expires or is terminated, the license granted to MST
shall continue indefinitely for any IGEN Technology and IGEN Improvements
granted to MST during the period of time that both IGEN and MST were Class A
Members of MSD and the joint venture as described in the Joint Venture Agreement
was in effect. From such time as (i) either IGEN or MST ceases to be a Class A
Member of MSD, or (ii) the joint venture as described in the Joint Venture
Agreement expires or is terminated, IGEN shall no longer grant or be under any
obligation to grant to MST any license to practice any new IGEN Technology or
IGEN Improvements.
2.2. Breach and Remedies. If either party commits a material breach of any
-------------------
of the terms of this Agreement, the other party may notify the defaulting party
in writing, specifying the nature of the breach or the obligation that the
defaulting party has failed to meet. If the defaulting party fails to cure the
breach or meet the obligation specified within a period of sixty (60) days after
service of such written notice, then the party not in default may terminate this
Agreement forthwith by serving written notice of such termination upon the
defaulting party.
3. Effective Date. This Agreement shall become effective as of the date the
--------------
Joint Venture Agreement is signed.
4. Applicable Law. This Agreement and the relationships between the parties
--------------
shall be governed in all respects by the laws of the State of Delaware.
5. Notices. All notices required or permitted by this Agreement shall be given
-------
in writing and shall be deemed effective when personally delivered or when
delivered by registered or certified mail, to the address of each party set
forth in the preamble to this Agreement. The facsimile numbers of the parties
are as follows: MSD: (000) 000-0000; MST: (000) 000-0000; IGEN: (000) 000-0000.
Such notices may also be sent by telex, telegram, or facsimile transmission, and
shall be deemed effective upon receipt by the other party if confirmed in
writing by the sender via registered or certified mail delivered within ten (10)
days thereafter or if sent by telecopier or facsimile, it shall be deemed
effective at the time when received in legible form by the recipient at such
address and when the recipient has been requested to acknowledge receipt of the
entire telecopier or facsimile transmission upon the sending or receiving the
acknowledgment of receipt of the entire telecopier or facsimile transmission
upon the sending or receiving the acknowledgement of receipt (which
acknowledgement the recipient will promptly give). Either party may at any time
during this Agreement designate a different person or address for notices by
notice to the other in the manner prescribed herein.
6. Amendments. No modification or waiver of any provision of this Agreement
----------
shall be valid unless it is in writing and signed by all the parties hereto.
7. Entire Agreement. This Agreement, including all agreements referred to
----------------
herein, constitute the entire agreement among the parties with respect to the
subject matter hereof.
8. Assignment. MST may assign its rights or obligations under this Agreement
----------
upon prior written consent of MSD and IGEN. All provisions of this Agreement
shall be binding upon and inure solely to the benefit of the parties hereto, and
respective successors (whether by consolidation, merger, or otherwise), and
assigns.
9. Confidentiality. All parties to this Agreement are subject to the
---------------
confidentiality obligations described in Sections 5.1 through 5.4 of the JV
Agreement.
10. Counterparts. This Agreement may be executed in one or more counterparts,
------------
each of which shall be an original but al of which shall together constitute a
single agreement.
[Remainder of Page Intentionally Left Blank]
IN WITNESS WHEREOF, the parties hereto, intending to be bound hereby, have
caused this Agreement to be executed by their duly authorized representatives as
of the 30th day of November, 1995.
MESO SCALE DIAGNOSTICS, LLC.
By: /s/ Xxxxx Xxxxxxxxxxx
-----------------------------
Name: Xxxxx Xxxxxxxxxxx
Title: President
MESO SCALE TECHNOLOGIES, LLC.
By: /s/ Xxxxx Xxxxxxxxxxx
-----------------------------
Name: Xxxxx Xxxxxxxxxxx
Title: President
IGEN, INC.
By: /s/ Xxxxxxx Xxxxxx
-----------------------------
Name: Xxxxxxx Xxxxxx
Title: President
