DEVELOPMENT, LICENSE AND SALES AGREEMENT
This DEVELOPMENT, LICENSE, AND SALES AGREEMENT is effective, as of the
5TH day of June, 1997, (the "EFFECTIVE DATE") by and between LJL BIOSYSTEMS,
INC, a California corporation having a principal place of business at 000
Xxxxxx Xxxxx, Xxxxxxxxx, Xxxxxxxxxx 00000 ("LJL") and FLUORRX, Inc., a
Delaware corporation having a principal place of business at 000 Xxxxxxxx Xxx,
Xxxxxx, Xxxxxxx 00000 ("FLUORRX").
WITNESSETH:
WHEREAS, LJL possesses certain proprietary information, know-how,
patents, trade secrets, and other intellectual property rights with respect to
the development, use and manufacture of absorbance, fluorescence,
chemiluminescence, and other detection systems;
WHEREAS, FluorRx posses certain proprietary information, know-how,
patents and other intellectual property rights with respect to its
Fluorescence Life Time ("FLT") technology platform developed by [*] and owned
or licensed to FluorRx; and
WHEREAS, LJL desires to develop, manufacture, market, and otherwise
commercialize such FLT technology platform, including incorporating such FLT
technology platform into LJL systems in accordance with the terms and
conditions set forth below.
NOW, in consideration of the mutual promises contained in this Agreement,
the parties hereto agree as follows:
ARTICLE I - DEFINITIONS AND CONSTRUCTION
----------------------------------------
1.1 The following terms as used hereinafter in this Agreement shall have the
meaning set forth in this Article:
"AFFILIATE" shall mean any person, firm or corporation which controls, is
controlled by or is under common control with FluorRx or LJL as the case may
be, with "control" to mean ownership directly or indirectly of fifty percent
(50%) or more of voting stock or equity interest of the subject entity.
"CONFIDENTIAL INFORMATION" shall mean any information disclosed by one
party (the "DISCLOSING PARTY") to the other party (the "RECEIVING PARTY"),
which if in written, graphic, machine-readable, or other tangible form is
marked as "confidential" or "proprietary", or which, if disclosed orally or by
demonstration, is identified at the time of initial disclosure as confidential
and reduced to writing in which it is identified as "confidential" within
thirty (30) days of such disclosure. Confidential Information includes,
without limitation, source code, source listings, program listings, flow
charts, databases, schematics, computer programs, drawings, specifications,
data, design documents, methods, processes, formulae, inventions, discoveries,
know-how, trade secrets, technical information or material, marketing plans,
financial information, business plans, business strategies, customer lists,
supplier lists, and other
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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information relating to the Disclosing Party's business, products and
research, development, marketing, and manufacturing activities.
"FIELD" shall mean the field of [*].
"INSTRUMENTS" shall mean the [*] developed by LJL pursuant to this
Agreement, for [*] and incorporating FLT technology platform. Such Instruments
may include [*] which [*] the FLT technology platform, and [*] which are [*] the
FLT technology platform.
"INTELLECTUAL PROPERTY" shall mean all current and future worldwide
rights in patents, copyrights, trade secrets, trademarks, know-how, utility
models, and other intellectual property and proprietary rights including,
without limitation, all applications and registrations with respect thereto.
"LJL INTELLECTUAL PROPERTY" shall mean the Intellectual Property and
Confidential Information owned or licensed by LJL prior to the Effective Date
of this Agreement or developed by LJL pursuant to the terms of this Agreement.
"LICENSED INFORMATION" shall mean know-how, trade secrets, and other
information owned by FluorRx, controlled by FluorRx, or to which FluorRx has a
right to license or sublicense to LJL hereunder, related to the FLT technology
platform, and developed as of the Effective Date or during the Term of this
Agreement, and not including Licensed Patents.
"LICENSED PATENTS" shall mean all foreign and domestic patents and patent
applications, including provisional applications, as to which FluorRx has, as
of the Effective Date or during the Term of this Agreement, the right to grant
the licenses or sublicenses with respect thereto to LJL hereunder, containing
claims covering or relating to the FLT technology platform, and which are
filed with respect to inventions conceived prior to or during the Term of this
Agreement in the United States or any foreign jurisdiction, including any
continuation, continuation-in-part, division, substitute application,
re-registration, or patent issued therefrom, any reissue, extension or patent
term extension thereof, and any confirmation patent or registration patent or
patent of addition based on any such patent, and including without limitation
those patents and patent applications listed in EXHIBIT A and EXHIBIT B
attached hereto.
"LICENSED PRODUCTS" shall mean the Instruments and reagents developed by
LJL pursuant to the terms of this Agreement, and that incorporate the
inventions covered by or incorporating Licensed Patents.
"LICENSED TECHNOLOGY" shall mean, collectively, the Licensed Patents and
the Licensed Information, and all related materials thereto available to
FluorRx, and all improvements thereto.
"NEW PATENT" shall mean any domestic or foreign issued patent or filed
patent application that is not listed in EXHIBIT A or EXHIBIT B, and that
includes claims covering or relating to the FLT technology platform.
1.2 CONSTRUCTION. As used in this Agreement, neutral pronouns and any
variations thereof shall be deemed to include the feminine and masculine and
all terms used in the singular shall be deemed to include the plural, and vice
versa, as the context may require. The words "hereof, herein", and
"hereunder", and other words of similar import refer to this Agreement as a
whole,
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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including the Exhibits hereto, as the same may from time to time be amended or
supplemented and not to any subdivision contained in this Agreement. The word
"including", when used hereof is not intended to be exclusive and means
"including, without limitation". References hereof to Section, subsection,
paragraph or Exhibit shall refer to the appropriate Section, subsection,
paragraph or Exhibit in or to this Agreement. Headings contained in this
Agreement are for ease of reference only and shall have no legal effect. The
term "party" or "parties" shall mean, as the case may be, LJL or FluorRx
individually or collectively, to the exclusion of other parties. In
constructing the terms of this Agreement, no presumption shall operate in
favor of or against any party as a result of its counsel's role in drafting
the terms and provisions hereof.
ARTICLE 2 - LICENSE GRANT
-------------------------
2.1 LICENSE TO LICENSED PATENTS.
(a) FluorRx hereby grants to LJL and its Affiliates an exclusive,
royalty-bearing, worldwide right and license to use Licensed Patents set forth
in EXHIBIT A to make, have made, develop, have developed, use, sell, have
sold, offer to sell, import, have imported, export, have exported and
otherwise distribute Licensed Products in the Field.
(b) FluorRx hereby grants to LJL and its Affiliates a non-exclusive,
royalty-bearing worldwide right and license to use Licensed Patents set forth
in EXHIBIT B to make, have made, develop, have developed, use, sell, have
sold, offer to sell, import, have imported, export, have exported and
otherwise distribute Licensed Products in the Field.
2.2 LICENSE TO LICENSED INFORMATION. FluorRx hereby grants to LJL and its
Affiliates an exclusive, paid-up, worldwide right and license to use
Licensed Information to make, have made, develop, have developed, sell,
have sold, offer to sell, import, have imported, export, have exported and
otherwise distribute Licensed Products in the Field.
2.3 COVENANT. FluorRx agrees that LJL shall not be liable or considered
to be in breach of this Agreement in the event that [*]; PROVIDED HOWEVER,
[*] To the extent reasonably possible, if LJL, its Affiliates, or
licensees receives an inquiry relating to the purchase of any product [*],
then LJL [*], its Affiliates, or licensees. Similarly, LJL agrees that
FluorRx shall not be liable or considered to be in breach of this Agreement
in the event [*]; provided, however, [*]. To the extent reasonably
possible, if FluorRx, its Affiliates, or licensees receives an inquiry
relating to the purchase of any product [*], then FluorRx [*].
2.4 RIGHTS TO FUTURE PATENTS AND TECHNOLOGY. Promptly upon receipt by FluorRx
of each New Patent, FluorRx shall fully disclose to LJL each New Patent
owned or controlled (in whole or in part), or licensed by FluorRx, for
purposes of [*]. In addition to the licenses granted under Sections 2.1
and 2.2, [*].
2.5 NO OTHER RIGHTS. Except as expressly granted herein, no rights to any
FluorRx trademarks, copyrights, or tradenames are granted hereunder.
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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ARTICLE 3 - ROYALTIES, FEES, AND EXCLUSIVITY
--------------------------------------------
3.1 ONE-TIME FEE. In consideration of the licenses granted under Article 2
hereto, LJL shall pay to FluorRx [*] LJL shall pay: (i) [*] within [*] after
the Effective Date of this Agreement: and (ii) [*] the earlier of: (a) [*]
after [*]; or (b) [*].
3.2 ROYALTY. In consideration of the licenses granted under Section 2.1
hereto, LJL shall pay to FluorRx the royalties set forth in EXHIBIT C attached
hereto. Royalty payments shall be due and payable [*].
3.3 MINIMUM ROYALTY.
(a) MINIMUM ROYALTY PAYMENTS. LJL agrees to pay the minimum royalty
amounts set forth in EXHIBIT C attached hereto. Each minimum royalty payment
is due and payable [*] after the anniversary of the Effective Date, and all
royalties paid under Section 3.2 and 3.3 shall be fully creditable toward the
minimum royalty amounts, on a rolling credit basis. [*].
(b) EFFECT OF NON-PAYMENT. In the event that LJL fails to make any
minimum royalty payment due under Section 3.3(a) hereto, and LJL does not cure
such failure to pay within thirty (30) days after receipt by LJL of notice
thereof then, after reasonably considering LJL's reasons for nonpayment
hereunder, and at FluorRx's sole discretion:
(i) [*]or [*].
(ii) the licenses granted under Sections 2.1 (a) and 2.2 shall become
non-exclusive, the royalty rates set forth in Section 3.2 shall thereafter [*]
and [*] or
(iii) FluorRx may submit a written request to LJL for termination of this
Agreement. In the event that LJL denies such request, then the parties shall
submit to binding arbitration the issue whether: (a) LJL abandoned the
Licensed Technology and discontinued selling or commercializing the Licensed
Products, without any intention of continuing to sell or commercialize the
Licensed Products, in which event the Agreement shall be terminated; or (b)
LJL was using its reasonable efforts to commercialize or sell the Licensed
Products, in which event the Agreement shall not be terminated and either
Section 3(b)(i) or 3(b)(ii) would govern the relationship of the parties
hereunder.
For purposes of Section 3(b)(iii), binding arbitration shall take place
in San Jose, California, under the Commercial Arbitration Rules of the
American Arbitration Association by one (1) arbitrator mutually agreed to by
the parties or, in the event that the parties fail to appoint an arbitrator
within ten (10) days after the initiation of the arbitration proceeding,
appointed in accordance with such Rules. Judgment on the award rendered by
the arbitrator may be entered in any court having jurisdiction thereof. The
arbitration proceedings shall be governed by federal arbitration law and by
the Rules, without reference to state arbitration law. Judgment on the award
rendered by the arbitrator may be entered in any court of competent
jurisdiction, and shall be the sole remedy available under this Section
3.3(b). The parties agree that, any provision of
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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applicable law notwithstanding, they will not request, and the arbitrator
shall have no authority to award, punitive or exemplary damages against any
party, but shall strictly conform to the provisions set forth in this Section
3.3(b).
3.4 NEW PATENT FEES. In the event that LJL elects to exercise its rights
under Section 2.4 with respect to a New Patent, [*]. In addition, [*];
PROVIDED, HOWEVER, that in no event [*]. In addition, within [*], the amount
of [*].
3.5 AUDIT RIGHTS. LJL will permit an independent accounting firm retained by
FluorRx and acceptable to LJL, to access LJL's records solely for purposes of
auditing LJL's payment of the fees pursuant to Sections 3.2 and 3.3 hereto;
PROVIDED, HOWEVER, that such audit: (i) shall be upon at least thirty (30)
days prior notice to LJL; (ii) is conducted during LJL's normal business
hours, and without disruption to LJL's business; (iii) is conducted at
FluorRx's sole expense; and (iv) any information obtained or accessed as a
result of such audit shall be considered LJL's Confidential Information,
subject to the confidentiality provisions of Article 7 hereto, and the
accounting firm shall be bound by obligations of confidentiality with respect
to LJL's Confidential Information. In the event that the audit reveals an
underpayment of [*] or more, then LJL shall [*].
ARTICLE 4 - OBLIGATIONS OF THE PARTIES
--------------------------------------
4.1 DELIVERABLES. Within [*] after the payment of the [*], as set forth in
Section 3.1, FluorRx shall arrange for [*], to meet with LJL at a mutually
agreed site in Baltimore, Maryland, to deliver the Licensed Information at a
mutually agreed time. Prior to such meeting, LJL will provide to FluorRx a
proposed agenda for such meeting. [*].
4.2 UPDATES. During the term of this Agreement each party shall generally
keep the other party fully and promptly apprised of all technical and other
developments and information relating to the Licensed Technology, as such
developments and information becomes available to the apprising party. In
addition, each party hereto will provide to the other party hereto[*] relating
to the Licensed Technology, in a form mutually agreed by the parties.
4.3 COOPERATION AND SUPPORT. During the term of this Agreement, LJL and
FluorRx agree to cooperate fully and in good faith to enhance the development
of the Licensed Products. In general, the duty to cooperate means that LJL's
and FluorRx's scientific and management personnel involved in the development
of the Licensed Products shall communicate as frequently as reasonably
necessary to facilitate the transfer of information and Confidential
Information, including specifications, contemplated by this Agreement, discuss
and review the same and coordinate the fulfillment of LJL's obligations under
this Agreement. If LJL participates in the sponsored research program, as set
forth in Article 5 hereto, then [*]; and, if LJL does not participate, [*],
and as reasonably necessary for LJL to fully exercise its rights under this
Agreement, [*] For purposes of this Agreement, the term "CONSULTING DAYS"
shall mean eight (8) man-hours. In the event that, at any time, LJL requests
additional Consulting Days, then [*]. Nothing in this Agreement shall be
interpreted as any guaranty on the part of LJL that the development
contemplated by this Agreement win result in any commercially successful
Licensed Products, or any obligation of LJL to develop any specific Licensed
Products.
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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4.4 CONSULTANT. If at any time LJL requests the services and support of [*]
then FluorRx will use its best efforts to make [*] available, subject to [*]
personal schedule, and LJL agrees [*], including [*], associated with
receiving such Consulting.
ARTICLE 5 - SPONSORED RESEARCH PROGRAM; INTELLECTUAL PROPERTY
-------------------------------------------------------------
5.1 SPONSORED RESEARCH PROGRAM. At LJL's sole discretion, LJL may elect to
participate in the [*]. LJL's involvement, if LJL so elects, shall be in
accordance with the terms and conditions set forth in EXHIBIT D attached
hereto. LJL shall notify FluorRx in writing in the event that LJL elects to
participate in such sponsored research program.
5.2 LJL INTELLECTUAL PROPERTY. FluorRx acknowledges and agrees that LJL or
its licensors, as the case may be, are the sole and exclusive owners of all
right, title and interest in and to the LJL Intellectual Property and Licensed
Products. No provision contained in this Agreement shall be construed to
transfer to FluorRx, any FluorRx Affiliate, or any FluorRx customer any right,
title or ownership interest in any LJL Intellectual Property that may be
embodied in any Licensed Product.
5.3 FLUORRX INTELLECTUAL PROPERTY. LJL acknowledges and agrees that FluorRx
or its licensors, as the case may be, are the sole and exclusive owners of all
right, title and interest in and to FluorRx's Confidential Information and
Licensed Technology. Except as expressly stated herein, no provision
contained in this Agreement shall be construed to transfer to LJL, and LJL
Affiliate or any LJL customer any right, title or ownership interest in
FluorRx's Confidential Information or Licensed Technology.
5.4 LICENSED PRODUCTS INTELLECTUAL PROPERTY. The parties hereto shall use
their commercially reasonable efforts to maintain the strict allocation of
Intellectual Property rights contemplated in Sections 5.2 and 5.3 hereto,
during the development of the Licensed Products. Nonetheless, should any
patentable invention, trade secret or know-how or other Intellectual Property
be developed by LJL in connection with the development of any Licensed
Products hereunder in performance of this Agreement, then LJL shall own such
Intellectual Property. LJL agrees to enter into good faith negotiations with
FluorRx [*], including without limitation, [*].
5.5 SPONSORED RESEARCH PROGRAM INTELLECTUAL PROPERTY. In the event that any
Intellectual Property rights are conceived, developed, or reduced to practice
during the development of applications under the sponsored research program,
as set forth in EXHIBIT D attached hereto, then LJL shall exclusively own all
such Intellectual Property rights with respect to such application. In the
event that any Intellectual Property rights are conceived, developed, or
reduced to practice during the basic research and development under the
sponsored research program, as set forth in EXHIBIT D attached hereto, then
the parties agree to jointly own all such Intellectual Property rights
thereto, with FluorRx being restricted from using such Intellectual Property
rights within the Field.
5.6 NO RIGHTS GRANTED. The parties hereto acknowledge and agree that, except
as expressly granted herein, nothing in this Agreement is to be construed as a
grant of or as an intention or commitment to grant to FluorRx any right, title
or interest, of any nature whatsoever, to LJL Intellectual Property or to any
products or processes encompassed thereby or any improvements or developments
thereon.
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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ARTICLE 6 - GOVERNMENT APPROVALS: PATENT PROTECTION
---------------------------------------------------
6.1 APPROVALS. LJL shall solely be responsible for obtaining all required
governmental approvals, including FDA approvals, for the development, testing,
production, distribution, sale and use of Licensed Products in the Field and
for applications developed for LJL under the sponsored research program.
FluorRx agrees to provide LJL, at LJL's expense, with any assistance
reasonably requested by LJL, in obtaining such governmental approvals,
including, without limitation, the furnishing of all relevant technical
information and know-how presently or hereafter available to FluorRx, but
excluding any documentation or data which FluorRx is bound by obligations to
third parties to keep confidential.
6.2 PATENT PROTECTION. Each party hereto shall promptly disclose to the
other party hereto the making, conception or reduction to practice of any
joint invention developed under the sponsored research program. Each party
shall apply for any patent(s) covering its own invention, and shall be
responsible for any and all costs associated with prosecuting and maintaining
such patents; PROVIDED, however, that if a party fails to prosecute or
maintain any such patent (the "FIRST PARTY") within sixty (60) days of request
in writing by the other party hereto (the "SECOND PARTY"), such Second Party
shall have the right to prosecute and maintain such patent at its own expense
and shall be solely entitled to ownership of the issuing or issued patent, and
such First Party shall have, during the Term of this Agreement, a
non-exclusive, royalty-free license to make, have made, use, sell, and import
under such patent, and after the termination or expiration of this Agreement,
such First Party shall then have a non-exclusive license to make, have made,
use, sell, and import under such patent, under commercially reasonable royalty
terms.
6.3 ACTION AGAINST INFRINGERS. If during the term of this Agreement, LJL
becomes aware of a third party infringement or threatened infringement of any
Licensed Patent, or any misappropriation of Licensed Technology that is
incorporated in or related to Licensed Products, the following provisions
shall apply:
6.3.1 LJL shall promptly give notice to FluorRx, with all available
details.
6.3.2 FluorRx shall use its best efforts to pursue in its name at its
own expense to restrain such infringement and to recover profits and damages
if such infringement relates to Licensed Technology or Licensed Patents in the
Field. LJL agrees at FluorRx's request to cooperate in the pursuit thereof,
as is reasonably necessary, at FluorRx's expense. FluorRx shall have the sole
right to control prosecution but FluorRx shall keep LJL informed on a regular
basis as to the status of such action.
6.3.3 If FluorRx fails to take action under Section 6.3.2 within [*]
after becoming aware of such infringement, in the first instance or by notice
from LJL, then LJL, at any time prior to FluorRx thereafter taking action,
shall have the right, but not the obligation to take such action in its own
name; PROVIDED, HOWEVER, that: (i) such infringement relates to Licensed
Technology or Licensed Patents in or covering Licensed Products in the Field;
(ii) [*] any such action [*]. In the event that LJL exercises its rights
under this Section 6.3.3, FluorRx shall have the right to observe in any such
action hereunder, at its sole expense. FluorRx shall cooperate with LJL,
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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at LJL's expense, as is reasonably necessary in any such action brought by
LJL. If LJL brings legal action, [*], including all of LJL's lost profits and
damages.
ARTICLE 7 - CONFIDENTIALITY
---------------------------
7. 1 DUTY OF NON-DISCLOSURE. In the course of doing business in accordance
with this Agreement, FluorRx will receive Confidential Information from LJL
("LJL CONFIDENTIAL INFORMATION") and LJL will receive Confidential Information
from FluorRx ("FLUORRX CONFIDENTIAL INFORMATION'). The parties shall: (i)
maintain in strict confidence, and not disclose or reveal to third parties,
any information of the other party hereto communicated under this Agreement;
(ii) use such information only for the purposes specifically provided under
this Agreement; and (iii) obligate all their personnel having access to such
information to treat it in the same manner as their own proprietary
information, except and to the extent as required by governmental authorities.
If either party becomes required by governmental authorities to disclose any
such information to a third party, it shall provide prompt written notice
thereof to the other party, and use its best efforts to secure confidential
treatment thereof. Notwithstanding the preceding, either party may disclose
all or portions of the information to responsible persons or organizations who
will be entrusted by a party hereto with the evaluation, development or
packaging of the Licensed Products or as may otherwise be reasonably necessary
to exercise such party's rights under this Agreement; PROVIDED, HOWEVER such
party shall impose upon said persons or organizations substantially the same
or stricter obligations than those imposed under this Section 7.1.
7.2 EXCLUSIONS. Notwithstanding the foregoing, information shall not be
treated as "Confidential Information" under this Agreement which:
(i) at the time of disclosure is in the public domain;
(ii) after disclosure has become part of the public domain by
publication or otherwise, except by act or omission of the Receiving Party or
its employees, agents or contractors; or
(iii) the Receiving Party can establish by competent proof was in its
possession at the time of disclosure hereunder; or
(iv) the Receiving Party receives, without restriction, from a third
party, provided that such information was not obtained by said third party
directly or indirectly from the Disclosing Party under an obligation of
confidence.
7.3 PUBLICATIONS. The contents of all proposed technical publications or
oral presentations concerning the Licensed Products by one party (the
"DISCLOSING PARTY") shall be submitted to the other party (the "NON-DISCLOSING
PARTY") for approval prior to any such publication or oral presentations,
which approval shall not be unreasonably withheld. The parties expressly
agree that all drafts of any publications or oral presentations by a
Disclosing Party, including without
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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limitation manuscripts, abstracts, posters, and visual works based on the
Sponsored Research Program or the Licensed Products shall be submitted to the
Non-Disclosing Party at least [*] prior to the proposed submission of such
drafts for publication or presentation. Such publications and presentations
shall not divulge any of the Non-Disclosing Party's Confidential Information
without prior written approval of the Non-Disclosing Party, and the Disclosing
Party shall promptly remove any Confidential Information identified and
requested by the Non-Disclosing Party. If requested by the Non-Disclosing
Party, the Disclosing Party shall delay the submission of any publication or
presentation up to [*] from the date of the Non-Disclosing Party's request for
such a delay to permit the preparation and filing of related patent
applications.
7.4 CONFIDENTIALITY OF AGREEMENT. Each party hereto agrees that the terms
and conditions of this Agreement shall be treated as Confidential Information
and shall not be disclosed to any third party; PROVIDED, HOWEVER, that each
party hereto may disclose the terms and conditions of this Agreement:
(i) as required by any court or other governmental body;
(ii) as otherwise required by law;
(iii) to each parties' own legal counsel;
(iv) in confidence, to that party's accountants, banks, and financing
sources and their advisors;
(v) in connection with the enforcement of this Agreement or rights
under this Agreement; or
(vi) in confidence, in connection with a merger or acquisition or
proposed merger or acquisition, or the like.
ARTICLE 8 - REPRESENTATION AND WARRANTIES
-----------------------------------------
8.1 LJL REPRESENTATIONS. LJL represents, warrants and agrees as follows:
(a) POWER AND AUTHORITY. LJL has the corporate power and authority to
execute and deliver this Agreement, and perform its obligations hereunder.
The execution, delivery and performance of this Agreement by LJL have been
duly and validly authorized by LJL, and upon execution and delivery by
FluorRx, this Agreement will constitute the valid and binding agreement of LJL
enforceable against it in accordance with its terms.
(b) NO CONFLICT. Neither LJL's execution and delivery of this Agreement
nor its performance hereunder will result in a breach of any agreement or
contract to which LJL may
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
9
be a party, or violate any applicable law or regulation, LJL's Articles of
Incorporation or By-Laws, or any judgment or order of any court or
governmental agency with competent jurisdiction and authority over LJL.
8.2 FLUORRX REPRESENTATIONS. FluorRx represents, warrants and agrees as
follows:
(a) POWER AND AUTHORITY. FluorRx has the corporate power and authority
to execute and deliver this Agreement, and perform its obligations hereunder.
The execution, delivery and performance of this Agreement by FluorRx have been
duly and validly authorized by FluorRx, and upon execution and delivery by
LJL, this Agreement will constitute the valid and binding agreement of FluorRx
enforceable against it in accordance with its terms.
(b) NO CONFLICT. Neither FluorRx's execution and delivery of this
Agreement nor its performance hereunder will result in a breach of any
agreement or contract to which FluorRx or any of its Affiliates may be a
party, or violate any applicable law or regulation, FluorRx's Articles of
Incorporation or By-Laws, or any judgment or order of any court or
governmental agency with competent jurisdiction and authority over FluorRx.
(c) GRANTED RIGHTS. FluorRx owns, or has the right to license, the
FluorRx Intellectual Property related to the Licensed Technology that is the
subject matter of this Agreement.
8.3 DISCLAIMER OF WARRANTIES. EXCEPT AS SPECIFICALLY SET FORTH HEREIN,
NEITHER PARTY MAKES ANY OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS OR
IMPLIED, INCLUDING ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE OR USE AND ANY OTHER STATUTORY WARRANTIES.
ARTICLE 9 - INDEMNIFICATION
---------------------------
9.1 FLUORRX INDEMNIFICATION. FluorRx assumes responsibility and shall
indemnify LJL from all liability to third parties or expenses of litigation
(including reasonable attorney's fees) for: (i) the breach or
misrepresentation by FluorRx of its warranties or obligations hereunder; (ii)
the negligent or intentionally wrongful acts or omissions of FluorRx; and
(ill) any breach or alleged breach of any third party Intellectual Property
rights by Licensed Technology and Licensed Products; EXCEPT to the extent such
personal injury or property damages results from or arises out of: (a) the
breach or misrepresentation by LJL of its warranties or obligations hereunder;
or (b) the negligent or intentionally wrongful acts or omissions of LJL,
9.2 LJL INDEMNIFICATION. LJL assumes responsibility and shall indemnify
FluorRx from all liability to third parties or expenses of litigation
(including reasonable attorney's fees) for personal injuries or property
damages resulting from or arising out of: (i) the breach or misrepresentation
by LJL of its warranties or obligations hereunder; or (ii) product liability
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
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with respect to the Licensed Product; or (iii) the negligent or
intentionally wrongful acts or omissions of LJL, EXCEPT to the extent such
personal injury or property damages results from or arises out of: (a) the
breach or misrepresentation by FluorRx of its warranties or obligations
hereunder; or (b) negligent acts or omissions of FluorRx.
9.3 PROCEDURES. Each party's obligation to indemnify the other party
under this Article 9 shall be subject to its: (i) being notified promptly
of such claim; (ii) being given sole control of the defense and/or
settlement thereof, and, (iii) receiving the cooperation of the indemnified
party.
9.4 LIMITATION OF LIABILITY. IN NO EVENT WILL EITHER PARTY HERETO BE
LIABLE FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR INDIRECT
DAMAGES SUFFERED BY THE OTHER PARTY ARISING IN ANY WAY OUT OF THIS
AGREEMENT, HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY; PROVIDED,
HOWEVER, THAT THE FOREGOING LIMITATION SHALL NOT APPLY TO A BREACH BY
EITHER PARTY OF ARTICLE 7. THIS LIMITATION WILL APPLY EVEN IF THE PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGE.
ARTICLE 10 TERMINATION
10.1 TERM The term of this Agreement shall commence as of the Effective Date
hereof, and shall continue until: (i) the last to expire Licensed Patent; (ii)
all Licensed Patents are held invalid or unenforceable by a court of competent
jurisdiction; or (iii) terminated under the provisions of this Article 10.
10.2 TERMINATION. Without prejudice to any other rights it may have hereunder
or at law or in equity, either may terminate this Agreement immediately by
written notice to the other party in the event the other party materially
breaches any provision of this Agreement and fails to cure such breach within
[*] after receiving written notice of the breach from the non-breaching party.
10.3 RIGHTS AND DUTIES UPON TERMINATION. Termination of this Agreement, for
whatever reason, shall not affect any rights or obligations accrued by either
party prior to the effective date of termination and specifically stated
herein to survive such termination. Upon any termination of this Agreement,
each party shall, and shall cause its Affiliates and sublicensees to, return
to the other party within thirty (30) days all copies of Confidential
Information of any kind communicated or delivered by the Disclosing Party
still within the custody or control of the Receiving Party, including all
copies thereof, in whatever form.
10.4 SURVIVABILITY. The representations, warranties, covenants and
obligations of the parties contained in Sections 10.3, 10.4, and Articles 1,
5, 6, 7, 8, 9, and 11 hereof, shall survive the termination of this Agreement
unless otherwise indicated therein.
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
11
ARTICLE 11 - GENERAL PROVISIONS
-------------------------------
11.1 INDEPENDENT STATUS OF PARTIES. The parties hereto acknowledge and agree
that in connection with this Agreement, each party is an independent
contractor with respect to the other, and nothing in this Agreement shall be
considered to create an employment, agency, joint venture, partnership,
fiduciary or other relationship between LJL and FluorRx. Except as expressly
provided herein: neither party shall have the right to bind the other to any
agreement with a third party nor to represent itself as an agent, partner or
joint venturer of the other or to incur any obligation or liability on behalf
of the other party; (ii) the parties are not sharing in any profits of the
other and are not otherwise jointly responsible for any of the other party's
expenses, losses, or liabilities; and (iii) nothing herein shall be construed
as providing for the sharing of profits or losses arising out of the efforts
of either or both the parties.
11.2 FORCE MAJEURE. Except as otherwise specifically provided herein, neither
party shall be liable for loss, damage, detention, or delay, nor be deemed to
be in default from causes beyond its reasonable control or from fire, strike,
labor difficulties, act or omission of any governmental authority or of the
other party, INSURRECTION or riot, embargo, delays or shortages in
transportation or inability to obtain necessary labor, materials, or
manufacturing facilities from usual sources or from defects or delays in the
performance of its suppliers or subcontractors due to any of the foregoing
enumerated causes. In the event of delay due to any such cause, each party
hereto undertakes to immediately notify the other party hereto and the date of
delivery will be adjusted as maybe reasonably necessary.
11.3 NOTICES. All notices hereunder shall be in writing and shall be
personally delivered or duly dispatched in the United States by registered
mail, or by overnight air courier, duly addressed, if to LJL, to:
LJL BIOSYSTEMS, INC.
000 Xxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxxxx 00000
ATTN: Xxx X. Xxxxxx, P.E.
President and CEO
or, if to FluorRx to:
FLUORRX
000 Xxxxxxxx Xxx
Xxxxxx, Xxxxxxx 00000
ATTN: Xxxx Xxxxxxx, Ph.D.
President and CEO
12
or in either case to such address as the recipient party shall previously have
designated for the purpose by written communication to and actually received
by the giving party. Notices shall be effective upon receipt.
11.4 AMENDMENTS. This Agreement embodies all of the understandings and
obligations between the parties concerning the Licensed Products and the
Licensed Technology, and any amendments and supplements shall not be valid
unless executed in writing by duly authorized officers of both parties.
11.5 ASSIGNABILITY. This Agreement may not be assigned by either party hereto
without the prior written consent of the other party, EXCEPT either party may
assign this Agreement in connection with the sale or assignment of
substantially its business to which this Agreement relates. Any assignment of
this Agreement shall be conditioned upon the assignee agreeing to be bound by
all the terms of this Agreement.
11.6 GOVERNING LAW: VENUE. This Agreement shall be governed and construed in
accordance with the laws of the State of California, without regard to
conflicts of laws principles, regardless of the place of its execution or
performance. Any dispute, controversy, difference, or claim arising between
the parties, out of, in relation to, or in connection with this Agreement, or
any breach thereof, shall brought in the venue of the party against which the
action initially is brought.
11.7 SERVERABILITY. In the event that any term, clause or provision of this
Agreement is construed to be or adjudged invalid, void, contrary, to law or
public policy, or otherwise unenforceable: (i) the remaining provisions of
this Agreement as well as any portions thereof shall remain in full force and
effect; (ii) the affected provision shall remain unenforceable to the fullest
extent of the parties' stated intentions consistent with applicable law and
public policy; and (iii) the parties shall negotiate, in good faith, a
substitute, valid and enforceable provision which most nearly reflects the
parties' stated intention as set forth in such affected provision.
11.8 ENTIRE AGREEMENT. This Agreement, including the Exhibits hereto,
constitutes the entire agreement of the parties with respect to the subject
matter hereof and supersedes all prior representations, assurances, courses of
dealing, agreements and undertaking, whether written or oral, between them
concerning such subject matter.
IN WITNESS WHEREOF, the parties have executed this Agreement by their
qualified representatives effective as of the date first above written.
LJL BIOSYSTEMS FLUORRX
By: /s/ Xxx Xxxxxx By: /s/ Xxxx Xxxxxx, Ph.D.
------------------------------- -------------------------------
Title: President & CEO Title: President & CEO
--------------------------- ----------------------------
13
Date: June 5, 1997 Date: June 5, 1997
--------------------------- ------------------------------
14
EXHIBIT A
---------
FLUORRX PATENTS LICENSED TO LJL ON AN EXCLUSIVE BASIS
-----------------------------------------------------
ISSUED PATENTS
--------------
[*]
PATENT APPLICATIONS
-------------------
[*]
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
EXHIBIT B
---------
FLUORRX PATENTS LICENSED TO LJL ON A NON-EXCLUSIVE BASIS
PATENT NO. TITLE
---------- -----
[*] [*]
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
EXHIBIT C
---------
ROYALTIES
I. INSTRUMENTATION
A. [*]
B. [*]
II. REAGENTS
[*]
III. MINIMUM ROYALTIES
[*]
Wherein the first year is the period extending from the Effective Date
through twelve (12) months thereafter, and each subsequent year is measured at
the anniversary of the Effective Date.
"NET SALES" shall mean the gross invoiced price received by LJL for: [*]
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
EXHIBIT D
---------
SPONSORED RESEARCH PROGRAM
--------------------------
STATEMENT OF PURPOSE: LJL and FluorRx will work together to identify each
specific project under the program, including without limitation, the research
goals, milestones, management, and staffing requirements, of each such project.
I. DIRECT COSTS (PER YEAR):
[*]
II. APPLICATION DEVELOPMENT:
[*]
III. BASIC R&D:
[*]
IV. COMMITMENT:
[*]
[*] = Material has been omitted pursuant to a request for confidential
treatment. Such material has been filed separately with the Securities and
Exchange Commission.
