Exhibit 99.3
* Portions of this exhibit have been omitted pursuant to a request for
confidential treatment filed with the Commission. The omitted portions,
marked by "*", have been separately filed with the Commission.
AMENDMENT NO. 1
TO
MSD/MST SUBLICENSE AGREEMENT
THIS AMENDMENT NO. 1 TO MSD/MST SUBLICENSE AGREEMENT (this "Amendment
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No. 1") is entered into as of August 15, 2001, by and among, Meso Scale
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Technologies, LLC., a Delaware limited liability company ("MST"), Meso Scale
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Diagnostics, LLC., a Delaware limited liability company ("MSD"), and IGEN
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International, Inc., a Delaware corporation (formerly IGEN, Inc., a California
corporation) ("IGEN");
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WHEREAS, MST, MSD and IGEN entered into a Joint Venture Agreement,
dated as of November 30, 1995, as amended (the "Joint Venture Agreement"), for
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the purpose of setting forth their respective rights and obligations with
respect to certain research and development activities and, if successful, the
development, manufacturing, marketing and sale of the products, processes and
services based thereon;
WHEREAS, MST, MSD and IGEN entered into a MSD/MST Sublicense
Agreement, dated as of November 30, 1995 (the "Sublicense Agreement"), for the
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purpose of MSD sublicensing to MST certain rights to IGEN Technology that were
licensed by IGEN to MSD pursuant to the IGEN/MSD License Agreement, dated as of
November 30, 1995 and entered into by the parties;
WHEREAS, MST, MSD and IGEN desire to amend the Sublicense Agreement,
among other things, to include a royalty provision, and to make certain other
changes, all as herein set forth; and
WHEREAS, for purposes of this Amendment No. 1, capitalized terms not
otherwise defined herein shall have the respective meanings set forth in the
Sublicense Agreement (as amended by this Amendment No. 1);
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, MST, MSD and IGEN each hereby agrees as follows:
1. Preamble.
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The preamble is hereby amended by replacing the second occurrence of
the phrase "16020 Industrial Drive, Gaithersburg, Maryland" with the phrase
"9905D Xxxxx Xxxxx Xxxxxxx, Xxxxxxxxx, Xxxxxxxx 00000".
2. Recitals.
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The first sentence of the Recitals is hereby amended by inserting the
phrase `or the "Joint Venture Agreement"' after the phrase `the "JV Agreement"'.
3. License Grants.
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(a) The first sentence of Section 1.1 is hereby amended by deleting
the phrase "an exclusive" and replacing it with the phrase "a nonexclusive".
(b) Section 1 is hereby further amended by inserting the following as
a new Section 1.6:
1.6 Royalty on MST Products. MST shall pay IGEN a royalty equal
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to * of the Net Sales Price (defined below) on all MST products
commercially sold by MST which but for the sublicense from MSD
would infringe a patent owned by or licensed to IGEN. Such
amounts shall be paid to IGEN within 60 days of the end of the
quarter in which payment was received from the sale giving rise
to such royalty. Royalty payments shall be made after deducting
any tax or governmental withholding amounts required to be paid
in connection with the payment of such royalty. The royalty
obligation set forth above shall terminate on a
country-by-country, product-by-product basis upon the expiration
of the last to expire of the patents in a given country that
would be infringed by the sale of such MST products in such
country absent a sublicense from MSD. MST shall be under no
obligation to sell any such products. "Net Sales Price" shall
mean, for any sale, the invoiced sales price charged by MST, less
(i) trade, cash and quantity discounts or rebates actually taken
or allowed; (ii) credits or allowances given or made for
rejected, damaged or returned goods; (iii) uncollectible amounts
on such products previously sold by MST; (iv) retroactive price
reductions; and (v) any freight or insurance charges billed to
the customer. MST's financing of the development of products in
accordance with Section 1.5 shall not trigger the royalty
obligations set forth in this Section 1.6.
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4. Clarification.
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Section 2 is hereby amended by inserting the following as a new
Section 2.3:
2.3 Receipt of Royalties. Upon the occurrence of one or more of
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the events set forth in Section 8.4 of the Joint Venture
Agreement giving rise to either MST's and/or MSD's right to
terminate the Joint Venture Agreement and the delivery of a
Purchase Election Notice under Section 8.5.3 (b) of the Joint
Venture Agreement, MST, MSD and IGEN hereby agree that IGEN's
status as a party hereunder terminates except that IGEN's right
to continue to receive royalties pursuant to Section 1.6 hereof
shall survive IGEN's termination as a party hereto.
5. Miscellaneous Provisions.
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Section 5 is hereby amended by (i) deleting the facsimile number
"(000) 000-0000" and replacing it with the facsimile number "(000) 000-0000",
(ii) deleting the facsimile number "(000) 000-0000" and replacing it with the
facsimile number "(000) 000-0000", and (iii) deleting the facsimile number
"(000) 000-0000" and replacing it with the facsimile number "(000) 000-0000".
6. Representations.
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Each of MST, MSD and IGEN hereby represents to one another that it
has the power and authority to enter into this Amendment No. 1 and to perform
its obligations under the Sublicense Agreement, as amended by this Amendment No.
1, and under this Amendment No. 1, and that its execution, delivery and
performance hereof has been duly and validly authorized (including in the case
of IGEN, approval by the committee of the Board of Directors of IGEN established
by the Board of Directors of IGEN at its meeting on August 31, 2000). Each of
MST, MSD and IGEN hereby represents to one another that its entry into this
Amendment No. 1 and its performance under the Sublicense Agreement, as amended
by this Amendment No. 1, will not constitute a breach of and will not conflict
with any agreement or duty to or by which such party is bound, and will not
violate any law or governmental regulation applicable to such party.
7. Additional Actions and Documents.
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Each party hereby agrees to take or cause to be taken such further
actions, to execute, acknowledge, deliver and file or cause to be executed,
acknowledged, delivered and filed such further documents and instruments, and to
use commercially reasonable efforts to obtain such consents, as may be necessary
or as may be reasonably requested in order fully to effectuate the purposes,
terms and conditions of the Sublicense Agreement, as amended by this Amendment
No. 1.
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8. Effect on Sublicense Agreement.
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It is the express intention and agreement of MST, MSD and IGEN that
all provisions of the Sublicense Agreement, as amended by this Amendment No. 1,
shall survive and remain in full force and effect following the execution and
delivery of this Amendment No. 1, and the provisions of this Amendment No. 1
shall be considered part of, and governed by, the terms of the Sublicense
Agreement (as so modified). Any reference to the Sublicense Agreement after the
date of this Amendment No. 1 shall be deemed to be a reference to the Sublicense
Agreement, as amended by this Amendment No. 1.
9. Headings.
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Section headings contained in this Amendment No. 1 are inserted for
convenience of reference only, shall not be deemed to be a part of this
Amendment No. 1 for any purpose, and shall not in any way define or affect the
meaning, construction or scope of any of the provisions hereof.
10. Governing Law.
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As this Amendment No. 1 relates to the Joint Venture Agreement to
which MSD, MST and IGEN are parties and as the Joint Venture Agreement is
governed by the laws of the State of Delaware, this Agreement and the
relationships between the parties shall be governed in all respects by the laws
of the State of Delaware without regard to the principles of conflicts of laws.
11. Execution in Counterparts.
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This Amendment No. 1 may be executed in any number of counterparts,
each of which shall be deemed to be an original, but all of which taken together
shall constitute one and the same instrument.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the parties have caused this Amendment No. 1 to
be duly executed and delivered on their behalf, as of the date first written
above.
MESO SCALE TECHNOLOGIES, LLC.
By: /s/ Xxxxx X. Xxxxxxxxxxx
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Name: Xxxxx X. Xxxxxxxxxxx
Title: President and Chief Executive Officer
MESO SCALE DIAGNOSTICS, LLC.
By: /s/ Xxxxx X. Xxxxxxxxxxx
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Name: Xxxxx X. Xxxxxxxxxxx
Title: President and Chief Executive Officer
IGEN INTERNATIONAL, INC.
By: /s/ Xxxxxx Xxxxxxxx
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Name: Xxxxxx Xxxxxxxx
Title: Vice President and Chief Financial Officer
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