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Exhibit 10.10
DEVELOPMENT, MANUFACTURING AND SUPPLY AGREEMENT
This is an Agreement, effective this 3rd day of February, 2000, between
Xxxx Xxxxx Xxxx XxxX, 00000 Xxxx, Xxxxxxx (hereinafter ZEISS) and Cellomics,
Inc., 000 Xxxxxxx Xxxx Xxx, Xxxxxxxxxx, XX 00000 (hereinafter CELLOMICS);
WHEREAS, ZEISS has expertise and intellectual property in optical
detection systems, systems integration, control software, HTS/UHTS systems and
manufacturing;
WHEREAS, CELLOMICS has expertise and intellectual property in
technologies related to High Content Screening ("HSC");
WHEREAS, CELLOMICS desires to have ZEISS cooperatively develop,
manufacture and supply an ArrayScan Kinetics Reader and an ArrayScan Kinetics
Workstation to CELLOMICS' specifications;
WHEREAS, the parties have heretofore entered into a joint
"Co-Marketing, Manufacturing, Sales and Support Agreement" (the "Former
Agreement"), effective April 14, 1998;
WHEREAS, the parties are independently negotiating an agreement (the
"Sales Agreement") providing for the distribution of ZEISS' UHTS Systems in
North America by CELLOMICS;
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WHEREAS, the parties are determined to update and supersede the Former
Agreement.
NOW, THEREFORE, in consideration of the covenants and conditions
contained herein, the parties, intending to be legally bound, agree as follows:
ARTICLE I
DEFINITIONS
1. Specific Definitions. For purposes of this Agreement, the following
definitions shall apply:
1.1 "Microplate" shall mean the plastic and/or glass plate having 96
xxxxx or multiples (e.g. 384, 1536, 3456 or more xxxxx) or divisions
(e.g. 12, 24, 48 or more xxxxx) and dimensions ca. 12.5 and 8.5 cm.
1.2 "HTS" shall mean optics, fluidics, robotics, storage, computers,
software and other peripheral devices used to conduct intensity
measurements of molecular interactions in microplates, excludes spatial
measurements within cells.
1.3 "FCS" shall mean single molecule detection of stimulated
fluorescence in optical volume elements smaller than one nanolitre for
correlation analysis of molecule movements.
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1.4 High Content Screening ("HCS") shall mean image [*] This excludes
any other applications, and specifically excludes HTS and FCS.
1.5 ArrayScan Kinetics Reader ("ASK Reader") shall mean the combination
of optical, mechanical, environmental control components and device
control software constituting an instrument as defined in Exhibits 1.0
and 4.0 which performs the following combination of functions:
[*]
The ASK Reader is the same unit as that intended for use in the ASK
Workstation (defined below).
1.6 ArrayScan Kinetics Workstation ("ASK Workstation") shall mean an
instrument which integrates the ASK Reader and other peripheral devices
as specified herein on Exhibits 1.0 and 4.0.
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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1.7 "Sales Agreement" shall mean the Sales and Marketing Agreement with
regard to ZEISS' UHTS Systems being independently negotiated between
the parties at this time, as the same may be amended from time to time.
1.8 "Former Agreement" shall mean the "Co-Marketing, Manufacturing,
Sales and Support Agreement and development of OEM Array Scan for
Cellomics by Zeiss" between the parties, effective April 14, 1998.
1.9 "Intellectual Property" shall be defined as any invention,
discovery, improvements, device, design, apparatus, practice, process,
method, product, program, database, or compound, whether patentable or
copyrightable or not. Intellectual Property rights on the ASK
Workstation and ASK Reader are defined and categorized on Exhibit 4.0.
1.10 "OEM Development" shall be defined as any Intellectual Property
made by either party or a third party employed thereby specified as
such in Exhibit 4.0 and which relates to HCS and which was developed
and manufactured specifically for the ASK Project (defined in Article
2.1 below).
1.11 "ZEISS Technology" shall be defined as Intellectual Property which
is the property of ZEISS.
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1.12 "CELLOMICS Technology" shall be defined as Intellectual Property
which is property of CELLOMICS.
1.13 "Third Party OEM Developments" shall be defined as all OEM
Developments made specifically for the ASK Project by third parties
employed by either ZEISS or CELLOMICS.
1.14 "Third Party Technology" shall be defined as Intellectual Property
which is the property of a third party.
ARTICLE II
OEM DEVELOPMENT AND MANUFACTURING
2.1 ZEISS is in the process of cooperatively designing and
manufacturing to CELLOMICS specifications as set forth on Exhibits 1.0 and 2.0
(which are attached hereto and made a part hereof) two OEM products to be known
as the ArrayScan Kinetics Reader ("ASK Reader") and the ArrayScan Kinetics
Workstation ("ASK Workstation") in accordance with the development schedule set
forth on Exhibit 3.0 parts A and B (which is attached hereto and made a part
hereof) (the "ASK Project").
2.2 CELLOMICS will, on an ongoing basis, as necessary, advise and
consult with ZEISS on design and performance parameters for the ASK Project.
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2.3 ASK Readers and ASK Workstations manufactured by ZEISS will be sold
under the CELLOMICS label, but the ZEISS label will he affixed to the ASK
Readers and ASK Workstations in such manner as will in a commercially reasonable
manner acknowledge the use therein of ZEISS Technology as categorized on Exhibit
4.0.
2.4 The parties hereby establish a Management Committee for the ASK
Project including coordination and development of the ASK Reader and ASK
Workstation and to recommend other products and services to be explored and
developed by the parties, jointly or severally.
ARTICLE III
SOFTWARE DEVELOPMENT
3.1 CELLOMICS has developed data analysis and data management software
for the ASK Project, while ZEISS has developed instrument device control
software as part of the ASK Project. Software development responsibilities for
ZEISS are as set forth in Exhibit 2.0 (which is attached hereto and is made a
part hereof); those responsibilities include all software components not
specifically assigned to CELLOMICS.
3.2 Software interface specifications have been jointly defined to make
software compatible between ZEISS systems and the ASK Reader and the ASK
Workstation and are included in Exhibit 2.0.
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ARTICLE IV
ARRAYSCAN KINETICS READER AND ARRAYSCAN KINETICS
WORKSTATION DEVELOPMENT AND MANUFACTURING
4.1 ZEISS has designed and is manufacturing, in accordance with
CELLOMICS' specifications, the ASK Reader and ASK Workstation as part of the ASK
Project. The parties agree that the device control software and hardware
currently embodied in the ASK Reader is partly based on ZEISS Technology and is
partly an OEM Development to the specifications of CELLOMICS specifically for
the ASK Project. The ASK Workstation includes the ASK Reader and various
components manufactured by third parties as well as components developed by
ZEISS to CELLOMICS' specification needed to integrate and coordinate an
efficient, effective flow through the ASK Workstation. All parts of the ASK
Reader, the ASK Workstation and the other components mentioned above are
categorized on Exhibit 4.0 (which is attached hereto and made a part hereof).
Milestones for the development and production of the ASK Reader and ASK
Workstation are set forth in Exhibit 3.0 (which is attached hereto and made a
part hereof).
4.2 ZEISS and CELLOMICS agree that the OEM development cost ("Agreed
Sum") to meet CELLOMICS' specifications incurred by ZEISS to date and to be
incurred through completion of development is [*], which includes the
costs to [*]. ZEISS agrees to provide documentation of the Agreed Sum within
thirty (30) days of the date first above written. ZEISS agrees to ship to
CELLOMICS one of the prototype ASK Workstations on or before February 18, 2000,
if for any reason this Agreement has not been executed by February 28, 2000,
said
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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prototype ASK Workstation shall be returned to ZEISS at CELLOMICS' expense.
ZEISS shall temporarily retain the second prototype ASK Workstation to
facilitate the full acceptance testing being performed by CELLOMICS. The second
prototype ASK Workstation shall be delivered to CELLOMICS within thirty (30)
days following the completion of the first production unit and CELLOMICS'
request for delivery. CELLOMICS agrees to pay the Agreed Sum in two (2) equal
installments as follows:
A. [*] shall be paid to ZEISS within thirty (30) days after
the execution of this Agreement, completion of the FACT (= Factory
Acceptance Test) of the first prototype (already performed and passed)
and installation and proof of identical functioning at CELLOMICS' site
compared to the FACT of the first prototype.
B. [*] shall be paid to ZEISS within six (6) months after
acceptance of the first production unit of the ASK Workstation which is
that furnished unit ready for sale and shipment to CELLOMICS' Customers
following acceptance (defined in Paragraph 4.4 below).
4.3 At all times prior to, upon and after the execution of this
Agreement, CELLOMICS was, is and shall be and be deemed to be the owner of all
OEM Developments embodied in all components categorized in Exhibit 4.0 (which is
attached hereto and made a part hereof) as OEM Developments, Third Party OEM
Developments or CELLOMICS Technology including both Intellectual Property
generated and extant on
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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the date first above written and any Intellectual Property involved in such
components which is applied thereafter at any time and from time to time,
excluding the components categorized as ZEISS Technology or Third Party
Technology. Further, ZEISS shall deliver to CELLOMICS within sixty (60) days of
the acceptance of the first prototype in Pittsburgh, all existing development
designs, drawings, prints, materials, documents and specifications pertaining
to the ASK Reader and ASK Workstation both as whole integrated instruments and
the components of the ASK Reader and ASK Workstation excluding only the detailed
design of that part of such components which embody ZEISS Technology and Third
Party Technology as categorized in Exhibit 4.0 (which is attached hereto and
made a part hereof). ZEISS will provide drawings showing overall dimensions and
mounting requirements for all ZEISS Technology and/or Third Party Technology.
Notwithstanding the foregoing, ZEISS will provide the production designs,
drawings, prints, materials, documents and specifications pertaining to the ASK
Reader and ASK Workstation within ninety (90) days prior to the end of the
Exclusive Supply Period (defined in Article 5.1 below).
4.4 The working prototypes and/or series production units of the ASK
Reader and ASK Workstation shall be deemed to be accepted by CELLOMICS at such
time as CELLOMICS certifies in writing the successful execution on the prototype
and/or a series production unit in Jena of the applicable acceptance test
protocol set forth in Exhibit 5.0 ("Acceptance") (which is attached hereto and
made a part hereof).
4.5 Any design changes or modifications in the ASK Reader and/or ASK
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Workstation desired by CELLOMICS shall be implemented if mutually agreed by
ZEISS and CELLOMICS. In the event that such design changes or modifications
result in costs that cause the Agreed Sum to be exceeded or delays that extend
the development and/or production schedule, ZEISS will provide to CELLOMICS a
written proposal that includes the reasonable cost and changes to the time
schedule. Such design changes will be implemented by ZEISS upon written
acceptance of the proposal. Following Acceptance of the ASK Reader and ASK
Workstation by CELLOMICS, the costs of any system upgrades (hardware or
software), if technically feasible, will be paid by CELLOMICS in accordance with
specific development-cost proposals to be prepared by ZEISS and approved in
writing by CELLOMICS.
ARTICLE V
EXCLUSIVE SUPPLY
5.1 From the date first above written, extending to that time which ends on
[*] ("Exclusive Supply Period"), CELLOMICS agrees that it shall purchase any
and all ASK Readers and ASK Workstations exclusively from ZEISS, and during the
Exclusive Supply Period, ZEISS agrees that it will not utilize, license, sell,
offer to sell, or develop devices or systems for HCS which embody the OEM
Developments or ASK Workstation and ASK Reader according to Exhibit 4.0 and
which are competitive with those developed pursuant to the ASK Project, ("NEW
PRODUCTS") and will cooperate in developing NEW PRODUCTS for HCS exclusively in
conjunction with CELLOMICS. In the event CELLOMICS does not affirmatively agree
to the mutual and prompt development and
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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manufacture by CELLOMICS and ZEISS of such NEW PRODUCTS, within two months from
ZEISS' written request, ZEISS shall be free to develop competitive products on
its own or together with third parties. Nothing in this Agreement shall
constitute any right or license granted to ZEISS for the use of OEM
Developments, CELLOMICS Technology or Third Party OEM Developments or any
obligation to grant the same in the future. ZEISS may request such license at
any time in writing, the approval of which shall be solely with the discretion
of CELLOMICS. The term of the Exclusive Supply Period will be extended for an
additional one (1) year period if mutually agreed upon in writing by both
parties at least ninety (90) days prior to the expiration of the Exclusive
Supply Period or any extension thereof. Competitive products are not any
components or products for HTS.
5.2 Exhibit 7.0 outlines the two year projections for ASK Workstations
and ASK Readers. [*] of the Exclusive Supply Period, [*] , CELLOMICS and
ZEISS will have a review meeting in order to review purchase orders and delivery
processes. By [*] , a minimum purchase of [*] and [*] is required by
CELLOMICS. In case these quantities will not be met, either party hereto has
the option of terminating the Exclusive Supply Period with ninety days prior
written notice to the other party.
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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ARTICLE VI
PRICING
6.1 The parties agree that during calendar year 2000 the price at which
CELLOMICS may purchase ASK Readers shall be [*] and the price at which
CELLOMICS may purchase ASK Workstations shall be [*]. Prices are further
detailed on Exhibit 8 which is attached hereto and made a part hereof.
6.2 CELLOMICS agrees to supply ZEISS with a purchase forecast, on a
rolling six months basis, beginning March 1, 2000, of the number of ASK Readers
and ASK Workstations CELLOMICS intends to order in the quarter ended on the last
day of such six months. [*] With regard to subsequent orders, CELLOMICS agrees
to submit written purchase orders six (6) months prior to the expected delivery
date of ASK Readers and ASK Workstations. CELLOMICS understands that prices set
forth in paragraph 6.1 will be recalculated by ZEISS at the end of the first
year after Acceptance of the first ASK Workstation production unit and each year
thereafter. Recalculated prices will be limited to a maximum of 110% of the
previous year's price, with expectation that prices will actually be reduced.
Upon the purchase of twenty five ASK Workstations and fifteen ASK Readers, the
parties agree to negotiate
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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volume discounts in good faith. In the event the pricing as indicated in Section
6.1 is further reduced by at least [*], CELLOMICS agrees to pay to ZEISS, as a
royalty, [*] of the reagent revenue derived from ASK Workstations and ASK
Readers during the initial Exclusive Supply Period. Upon renewal of the
Exclusive Supply Period the parties agree to negotiate in good faith discounts
and royalties. CELLOMICS shell submit to ZEISS a quarterly report on the value
of reagent sales derived from ASK Workstations and ASK Readers.
6.3 ZEISS agrees to supply at least [*] and at least [*] during
the period [*] and following Acceptance of the first [*] ASK Workstation
series production units that the delivery time to CELLOMICS will not exceed
six (6) months after receipt of orders by ZEISS.
ARTICLE VII
PRODUCT WARRANTY
7.1 ZEISS warrants (1) that the ASK Reader and ASK Workstation
(sometimes herein referred to as Product or Products) will conform in all
material respects to CELLOMICS' specifications according to Exhibit 1.0 and 2.0;
(2) that CELLOMICS and/or the end user shall receive good and marketable title
to the Products upon shipment, free of any liens or claims; and (3) that the
Products will be free of defects in workmanship and materials for the lesser of
twelve (12) months after delivery to CELLOMICS or twelve (12) months after
purchase and opening of the Products by end-user customers. The
"CONFIDENTIAL [*] CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT
OF 1933, AS AMENDED."
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foregoing warranty shall not apply if the Products or component parts have been
subjected to abuse, misuse, accident or neglect. The aforementioned warranties
shall inure to CELLOMICS, its successors and assigns, and those who purchase or
use each Product from CELLOMICS.
7.2 CELLOMICS will be responsible for providing Product support. For
any claim based on the foregoing warranties, CELLOMICS shall be responsible for
processing repairs or replacements. Defective Products shall be delivered to
ZEISS DDP (Incoterms 1990). ZEISS, at its option, will either repair or replace,
any defective Products with new or functionally equivalent and compatible parts
within thirty (30) days of receipt of said defective Product(s). ZEISS will
return the repaired Product or the replacement DDP (Incoterms 1990).
Alternatively, ZEISS agrees to provide end user warranty repairs at the request
of CELLOMICS. In this case, any costs incurring in processing end user warranty
repairs or replacements (except for replacement parts themselves) shall be
reimbursed by CELLOMICS to ZEISS. To facilitate their mutual responsibilities to
support the Products, the parties will agree to a minimum inventory of spare
parts to be purchased by CELLOMICS at discount prices negotiated between
CELLOMICS and ZEISS and which will be delivered to CELLOMICS by ZEISS no later
than August 15, 2000.
7.3 The warranty provided in this Article VII shall be subject to
CELLOMICS' or the Products' end-user's satisfaction of the following conditions:
(1) a description of the failure of the Products alleged or found to be
defective shall be furnished to ZEISS in writing within a reasonable time of
discovery by CELLOMICS or the end-user of such
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defect; (2) the defects so described shall be subject to ZEISS' reasonable
verification; (3) no Products alleged or found to be defective shall be disposed
of by CELLOMICS or the end-user for at least thirty (30) days after ZEISS
receives such description in writing; and (4) such defective Products or
applicable component(s) thereof shall forthwith be returned to ZEISS, freight
payable at destination, if ZEISS so requests.
7.4 THIS LIMITED WARRANTY IS IN LIEU OF AND EXCLUDES ALL OTHER
WARRANTIES; EXPRESS OR IMPLIED; BY OPERATION OF LAW OR OTHERWISE, INCLUDING ANY
IMPLIED WARRANTY OF MERCHANTIBILITY OR FITNESS FOR A PARTICULAR PURPOSE: THE
SOLE AND EXCLUSIVE REMEDY AGAINST ZEISS WITH RESPECT TO ANY CLAIMED DEFECT IN
THE PRODUCT SHALL BE AS PROVIDED HEREIN AND SHALL IN NO CASE EXCEED THE COST OF
REPLACEMENT AND/OR REPAIR AT ZEISS' SITE IN JENA. ZEISS SHALL NOT BE LIABLE IN
CONTRACT OR IN TORT TO CELLOMICS OR ANY END USER OF THE PRODUCT FOR ANY SPECIAL
INCIDENTAL OR CONSEQUENTIAL DAMAGES WITH RESPECT TO THE PRODUCT OR WITH RESPECT
TO ZEISS' OBLIGATIONS WITH RESPECT TO THE PRODUCT SUCH AS, BUT NOT LIMITED TO
DAMAGE TO; LOSS OF OR LOSS OF THE USE OF OTHER PROPERTY OR EQUIPMENT, LOSS OF
PROFITS OR REVENUES OR CLAIMS OF CELLOMICS OR ANY END USER FOR LOSSES OF ANY
KIND, UNLESS CAUSED BY ZEISS' INTENT OR GROSS NEGLIGENCE.
ZEISS gives no warranty whatsoever with respect to parts with a limited
technical lifetime, such as, but not limited to bulbs and tubings. Components or
Products produced by other
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manufacturers are warranted by ZEISS only to the extent that such are warranted
by the manufacturer supplying such components and to the extent that such
warranties may be assignable by ZEISS. ZEISS' warranty with respect to any
software included in the Products is limited to a warranty that such a software,
when properly installed, will not fail to execute its programming instructions
due to defects in materials and workmanship. If ZEISS receives notice of a
software defect during the applicable warranty period, ZEISS will replace
software media which do not execute programming instructions due to any defect.
ZEISS does not warrant that the operation of software will be uninterrupted or
error-free.
7.5 CELLOMICS is providing a service organization capable of supporting
the Products at end users' sites. In order to be able to provide such support,
ZEISS will, at the request of CELLOMICS, offer training in Jena or in Pittsburgh
at CELLOMICS' cost. ZEISS will not charge any hourly rates for training and
traveling time.
7.6 ZEISS will be able to supply spare parts or equivalent replacement
components for hardware and electronic components for ASK Reader or ASK
Workstation which are manufactured by ZEISS for five years after the end of
series production. With regard to third party components ZEISS agrees to use any
commercially reasonable efforts to maintain these third party components
operational for five years after end of series production of the ASK Reader and
the ASK Workstation. This may include replacement by other components providing
similar functions.
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ARTICLE VIII
TERM AND TERMINATION
8.1 The parties agree that this Agreement supersedes, in its entirety,
the Former Agreement. The parties agree that the Agreement shall, unless sooner
terminated, continue in effect until December 31, 2005. Notwithstanding the
foregoing, the parties agree that the Agreement may be terminated by either
party on or after December 31, 2002 on not less than eighteen (18) months prior
written notice to the other. Upon notice by ZEISS to CELLOMICS that ZEISS
intends to terminate this Agreement, further payments of the Agreed Sum,
otherwise due pursuant to the terms of Paragraph 4.2 above, shall he canceled
and the unpaid balance of the Agreed Sum shall be forgiven.
8.2 After termination, the parties agree to continue cooperating with
each other and to carry out an orderly termination of their relations.
8.3 After termination of this Agreement, ZEISS shall cease to develop
or manufacture ASK Workstations and ASK Readers in any way, except ZEISS may
sell to CELLOMICS inventory on hand, and each party shall deliver to the other
all materials and documents belonging to the other which have come into its
possession as a result of this Agreement.
8.4 For and during the eighteen (18) months following termination,
ZEISS shall offer to sell ZEISS components listed under ZEISS Technology on
Exhibit 4.0 to CELLOMICS, at such prices as would be proportional to the price
of such components had
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such components been included in completed ASK Readers and ASK Workstations.
ZEISS will use commercially reasonable efforts to deliver all such ZEISS
components ordered by CELLOMICS within ninety (90) days of its receipt of any
such order.
8.5 Notwithstanding anything to the contrary contained in this Article
VIII all the provisions of Paragraph 4.3 and Articles IX, X, XI, XII and XIII of
this Agreement shall continue in full force and effect after termination of this
Agreement for any reason.
ARTICLE IX
PATENTS, INVENTIONS AND ENFORCEMENT OF INTELLECTUAL
PROPERTY RIGHTS
9.1 Either party may, from time to time, discover potential or actual
infringers of the intellectual property of the other, or other proprietary
information of the other party which forms the basis of this Agreement. The
party discovering such infringement shall promptly inform the other of such
activity in writing. The party owning such intellectual property or proprietary
information shall take such steps as are, in such party's discretion,
economically feasible in order to enforce its ownership rights against the
infringer. Should ZEISS fail to enforce its ownership rights against the
infringers within a reasonable time, CELLOMICS shall have an independent right
of enforcement of these rights. In that event, CELLOMICS shall name ZEISS as a
party to such enforcement, and shall have sole discretion as to the action taken
against such potential or actual infringers, including, but not limited to the
identification of counsel and the settlement of all claims without
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consultation with ZEISS. ZEISS shall also provide any or all reasonable
assistance to CELLOMICS, as deemed necessary by CELLOMICS or its counsel.
9.2 Each party to this Agreement owning intellectual property hereby
agrees to indemnify the other party and to hold it harmless against any claim of
infringement from third parties with respect to any intellectual property
claimed to be owned by the owner party and used by the other party in the
performance of this Agreement, provided that the using party notifies the owner
party, in writing, on a timely basis, of any such claim of infringement, and
provided that the owner party stall have the control of the defense against any
such claim at its own expense, and provided, further, that no compromise thereof
shall be entered into without consent of the owner party.
9.3 The parties agree that they will, by their officers, employees,
legal representatives or other persons duly authorized, communicate promptly to
each other or the representatives thereof, all facts known to them respecting
the products and services contemplated by this Agreement, or any other
proprietary information concerning the same, and will, upon request, testify in
any legal proceedings, sign all lawful papers, make all rightful oaths, and
generally do all other and further lawful acts, deemed necessary or expedient by
the other party or its counsel, to assist or enable that party to obtain and
enforce full benefits of this Agreement and the business relationship between
the parties.
9.4 Each of the parties shall render its full cooperation to the other
in fulfilling and performing the terms of this Agreement.
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9.5 Neither party will hire personnel employed by the other party for a
period of twelve (12) months after the personnel in question has left employ of
the other party. The undertakings of this Article shall survive the termination
or expiration of this Agreement for twelve (12) months.
ARTICLE X
CONFIDENTIALITY
10.1 Before and during the term of this Agreement, the parties will
disclose to each other certain confidential or proprietary information
("INFORMATION"), the disclosure of which to third parties could be commercially
injurious to the owner of the INFORMATION.
10.2 The disclosure of the INFORMATION is solely for the purpose of the
furtherance of the development, marketing and sale of the contemplated products
and services described herein.
10.3 Each party understands that the disclosing party considers the
INFORMATION to be confidential and a trade secret.
10.4 Each party will not disclose to any third party, or utilize for
its own or another's benefit, the INFORMATION obtained from the disclosing
party.
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10.5 The term "INFORMATION" shall not include, and the parties shall
not have any obligations of confidence or non-disclosure with respect to:
A. information that is in the public domain at the time of its
transmittal or which subsequently comes into the public domain without
violation of any obligation of confidence assumed hereunder;
B. information received from a third party without violation of an
obligation of confidence to the transmitting party; or
C. information which the recipient party can show to have been in its
possession at the time of transmittal; or
D. information which the recipient party can show to have been
independently developed by employees of the recipient party who have
not had access to proprietary information received hereunder; or
E. information which the recipient party is compelled to disclose
pursuant to judicial action or the legal and enforceable request of a
U.S. government agency, provided that the transmitting party is
notified at the time such action or request is initiated, and further
provided that the recipient party cooperates with the
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transmitting party in the event that the transmitting party seeks a
protective order or other appropriate remedy to prevent disclosure of
such information.
10.6 If either party believes it essential to disclose any INFORMATION
to a third party, the party wishing to disclose will first advise the other
party what INFORMATION is to be disclosed, to whom it is to be disclosed and the
purpose therefor. The party wishing to disclose will first obtain the other
party's written permission to make the disclosure before making such disclosure,
which permission may not be unreasonably withheld. The requesting party also
agrees to require the third party recipient of the INFORMATION to acknowledge
that such INFORMATION is confidential, to hold the INFORMATION confidential for
the benefit of the disclosing party, and to sign a copy of a protective
agreement, naming the disclosing party as a third-party beneficiary having the
right to enforce the Agreement against the third party.
10.7 All INFORMATION, where possible, shall be transferred from each
party to the other in written form, and shall bear a conspicuous xxxx
designating such INFORMATION to be confidential. Additionally, any INFORMATION
transferred from each party to the other in an oral or other non-permanent or
non-readable form, such as in a computer communication, shall be summarized in a
brief memorandum which shall also bear a conspicuous xxxx designating such
INFORMATION to be confidential. Furthermore, all INFORMATION transferred in
tangible form shall be returned to the disclosing party upon request and/or at
the termination of this Agreement.
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10.8 It is understood that this Agreement will neither obligate either
party, nor grant to either party or any employees, partners or other business
associate thereof, any rights in the INFORMATION, or any protectable interest
stemming therefrom, except as specifically provided herein.
10.9 Each party agrees that if it or any of its employees, partners or
other business associates breaches any condition of this Agreement relating to
the protection of proprietary or confidential rights or information, the owner
of such right or information will be entitled to, in addition to all other
remedies available, an immediate injunction prohibiting the party in breach of
its obligations, or its employees, partners or other business associates, from
committing any further breach of the Agreement.
ARTICLE XI
WARRANTIES AND DISCLAIMERS
11.1 Each party represents and warrants to the other party that it has
no pre-existing contractual or other obligations to any third party which
preclude it from entering into this Agreement and meeting its obligations
hereunder, or which conflict with any provision of this Agreement.
11.2 ZEISS warrants to CELLOMICS that the transfer price, as indicated
in Section 6.1 of ASK Workstation and ASK Reader does not include any research
and development costs.
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11.3 Each party represents and warrants to the other party that it
shall use reasonable efforts to achieve the objectives of the Agreement.
ARTICLE XII
TRADEMARKS, SERVICE MARKS AND TRADE NAMES
12.1 ZEISS Property
The parties acknowledge that ZEISS has an exclusive and
proprietary right to its names and marks (hereafter the "ZEISS MARKS"). ZEISS
and CELLOMICS contemplate the use of some or all of the ZEISS MARKS in the
manufacture and sale of the products and services identified herein as indicated
by paragraph 2.3 hereof. Nothing in this Agreement shall be construed to grant
any right or license in and to the ZEISS MARKS to CELLOMICS except pursuant to
written licensure.
12.2 CELLOMICS Property
The parties acknowledge that CELLOMICS has an exclusive and
proprietary right to its names and marks including those identified in Exhibit
6.0 hereto (hereafter the "CELLOMICS MARKS"). CELLOMICS and ZEISS contemplate
the use of some or all of the CELLOMICS MARKS in the manufacture and sale of the
products and services identified herein. Nothing in this Agreement shall be
construed to grant any right or license in and to the CELLOMICS MARKS to ZEISS
except pursuant to written licensure.
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ARTICLE XIII
MISCELLANEOUS
13.1 Governing Law
This Agreement shall be deemed made in Pittsburgh, Pennsylvania,
but shall be construed in accordance with the laws of the State of New York
applicable to contracts made and to be performed in New York. Notwithstanding
the foregoing, it is understood that no part of the performance by ZEISS of its
obligations under this Agreement shall take place in the United States, and
title to all personal property shipped to CELLOMICS or to end users shall pass
in the Federal Republic of Germany, and all risk of loss shall be borne by the
recipient of any such shipment following passage of title in Germany.
13.2 Actions Survive
All causes of action accruing to either party under this Agreement
shall survive termination for any reason, as shall provisions which expressly
state such survival unless such survival is conditional and the requisite
condition(s) has been fulfilled prior to or on such termination.
13.3 Entire Agreement; Superseder; Section Headings, Construction
This Agreement constitutes the only and entire understanding
between the parties concerning its subject matter and all other prior
negotiations, representations, agreements and understandings are superseded
hereby. No agreements altering or supplementing the terms hereof may be made
except by means of a written document signed by the duly
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authorized representatives of the parties. The parties agree that this Agreement
supersedes, in its entirety, the Former Agreement.
The headings of Sections in this Agreement are provided for convenience only and
will not affect its construction or interpretation.
13.4 Amendments
This Agreement may be amended or modified only in writing, signed
by both parties.
13.5 Independent Contractor
Each party shall have the status of an independent contractor
without the authority to bind the other to any obligation.
13.6 Arbitration
All disputes which arise out of this Agreement shall be settled by
arbitration in Westchester County, New York in accordance with the conciliation
and arbitration rules and regulations of the American Arbitration Association,
to which the parties hereto submit including the AAA Optional Rules for
Emergency Measures of Protection to preserve the status quo ante of the parties.
The arbitrator shall have background and expertise relating to the issue(s)
involved. The arbitration shall be in English. The arbitration hearing shall be
held within sixty days of an arbitration demand. The arbitrator's decision shall
be submitted within thirty (30) days of the conclusion of the arbitration
hearing. The arbitrator's decision shall be binding, final and non-appealable.
The parties shall share
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equally the cost of such arbitration. Any and all actions necessary to compel
arbitration or to enforce the decision of the arbitrator or any aspect thereof
shall be brought in the state or federal courts of Westchester County, New York
and the parties specifically agree that the state and federal courts of or
pertaining to Westchester County, New York shall have and the parties submit to
the exclusive jurisdiction and venue of such courts.
13.7 Force Majeure
If either party is prevented from performing any obligation
hereunder by reason of fire, explosion, strike, labor dispute, casualty,
accident, lack or failure of transportation facilities, flood, war, civil
commotion, acts of God, or any law, order or decree of any government or
subdivision thereof, then such party shall be excused from performance hereunder
to the extent and for the duration of such prevention, provided that such party
first notifies the other party in writing of such prevention.
13.8 Publicity
Except as required by law or applicable stock exchange rule, no
public statements shall be made by either party concerning this Agreement, its
subject matter or its existence without prior consultation with and the approval
of the other party, which approval shall not be unreasonably withheld. In the
event CELLOMICS undertakes an initial or subsequent public offering of its
stock, ZEISS agrees to review and give its approval to necessary statements
regarding the existence and/or subject matter of this Agreement within twenty
four (24) hours (but not less than one business day) of its receipt
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of a draft of the proposed language regarding this Agreement and ZEISS shall not
unreasonably withhold such approval.
13.9 Severability
In the event that any provision of this Agreement shall be found
to be illegal, invalid or unenforceable for any reason, such shall not affect
the validity of the remainder of this Agreement, which shall be construed and
interpreted as though such provision was not present.
13.10 Notices
Notices may be given to an officer of a party by:
A. personal delivery,
B. fax
C. certified or registered mail addressed as follows:
D. overnight delivery by an internationally recognized courier
service
All notices, demands, requests, consents, approvals and other
communications required or permitted hereunder must be in writing and will be
effective upon receipt if delivered personally to such party, or if sent by
facsimile transmission upon electronic confirmation of delivery, or if sent by
certified or registered mail upon receipt or if by internationally recognized
overnight courier service upon receipt at the address set forth below or at such
other address as any party may give to the other in writing for such purpose:
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If to ZEISS: Xx. Xxxxxxx Xxxxx and Dr. Xxxxxx Grub
Xxxx Zeiss Jena, GmbH Microscopy Division
Xxxx-Zeiss-Promenade 10 Xxxx Xxxxx Xxxx, GmbH
07740 Jena, Germany 07740 Jena, Germany
with a copy to: Xxxx Zeiss Inc.
Xxxxx Xxxxx
Xxx Xxxxx Xxxxx
Xxxxxxxxx, XX 00000
If to CELLOMICS: D. Lansing Xxxxxx, Ph.D.
President & Chief Executive Officer
000 Xxxxxxx Xxxx Xxx
Xxxxxxxxxx, XX 00000
with a copy to: Xxxxxxx Xxxx Xxx McGrann & Xxxxxxxx
Xxx Xxxxxxxxxxxx Xxxxxxxx - 00xx Xxxxx
00 Xxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
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13.11 Binding Effect
This Agreement shall inure to the benefit of and be binding on
each party's successors in interest and assigns.
13.12 Assignment
Either party may assign this Agreement only in connection with
the sale or disposition of the entire business of such party or that portion to
which this Agreement pertains.
IN WITNESS WHEREOF, this Agreement has been executed in multiple
counterparts, each of which shall constitute an original Agreement, on behalf of
the parties by their authorized officers as of the date first written above.
XXXX ZEISS JENA GmbH
By I.V. By I.V.
------------------------------------- ---------------------------
Its EVP Its VP
------------------------------------- ---------------------------
Date February 3, 2000 Date February 3, 2000
------------------------------------ --------------------------
CELLOMICS, INC.
By /s/ D. LANSING XXXXXX
-------------------------------------
Its President & CEO
-------------------------------------
Date February 3, 2000
-----------------------------------
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