EXHIBIT 10.15
COOPERATIVE DEVELOPMENT AGREEMENT
This Cooperative Development Agreement (the "Agreement") is entered into as
of January 22, 2004 (the "Effective Date") by and between Nanosys Inc.
("Nanosys"), a California corporation with a place of business at 0000 Xxxxxxx
Xxxxxx, Xxxx Xxxx, Xxxxxxxxxx 00000 and E.I. du Pont de Nemours and Company
("DuPont"), a Delaware corporation with a place of business at 0000 Xxxxxx
Xxxxxx, Xxxxxxxxxx, XX 00000.
RECITALS
Whereas:
X. XxXxxx has expertise with respect to [*** Redacted] using DuPont's
[*** Redacted] and the development, design, and manufacture thereof, and Nanosys
has expertise with respect to the design and synthesis of nanomaterials and the
development of nanotechnology-enabled systems.
X. XxXxxx and Nanosys desire to enter into an agreement to cooperate to
investigate the commercial feasibility of combining Nanosys' [*** Redacted]
nanomaterials technology with DuPont's [*** Redacted] technology for
high-performance [*** Redacted] applications
AGREEMENT
NOW, THEREFORE, the parties agree as follows:
1. DEFINITIONS. In this Agreement, the following words and expressions
shall have the following meanings:
1.1 "Collaboration" means the research and development work set forth
in Exhibit A hereto.
1.2 "Statement of Work ("SOW")" means Exhibit A hereto.
1.3 "Collaboration Commencement Date" means the date of commencement
of the Collaboration under Section 2.1 below.
1.4 "Technology" means any and all developments, ideas, designs,
inventions, information, know-how, and technology.
1.5 "Collaboration Technology" of a party ("Party") means (i) any and
all Technology that such Party's employees or contractors conceive or develop
(solely or jointly) in the course of working specifically on the Collaboration,
and (ii) any and all Technology conceived or developed (solely or jointly) by or
for such Party based on Confidential Information of the other party disclosed to
such Party in connection with, or generated under, the Collaboration.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
1.6 "Nanosys Collaboration IP" shall mean (i) Nanosys' intellectual
property rights in Collaboration Technology of Nanosys, which intellectual
property rights were created by Nanosys' employees or contractors (solely or
jointly) in the course of specifically working on the Collaboration and (ii) all
intellectual property of Nanosys created by or for Nanosys based on DuPont
Confidential Information disclosed to Nanosys in connection with, or DuPont
Confidential Information generated under, the Collaboration.
1.7 "DuPont Collaboration IP" shall mean (i) DuPont's intellectual
property rights in Collaboration Technology of DuPont, which intellectual
property rights were created by DuPont's employees or contractors (solely or
jointly) in the course of specifically working on the Collaboration and (ii) all
intellectual property of DuPont created by or for DuPont based on Nanosys
Confidential Information disclosed to DuPont in connection with, or Nanosys
Confidential Information generated under, the Collaboration.
1.8 "Background IP" of a party means any and all intellectual property
rights that such party either (i) owned, controlled, or had rights with respect
to prior to the Effective Date; or (ii) develops, or acquires ownership,
control, or rights with respect to, during the term of this Agreement but which
is not that party's Collaboration IP.
1.9 "Nanosys [*** Redacted] Nanomaterials Technology" means (i)
[*** Redacted] semiconductors formed as [*** Redacted] (such as [*** Redacted],
[*** Redacted], [*** Redacted], and [*** Redacted] etc.), having at least
[*** Redacted] that are subsequently [*** Redacted] as such nanomaterials
[*** Redacted]; (ii) any [*** Redacted], [*** Redacted], or [*** Redacted]
incorporating such [*** Redacted]; and (iii) all applications and products
incorporating [*** Redacted] that rely on such materials.
1.10 "DuPont [*** Redacted] Technology" means (i) any method for
fabricating [*** Redacted], where such [*** Redacted] is enabled by
[*** Redacted]; (ii) any [*** Redacted] used in such methods; and (iii) all
applications and products incorporating [*** Redacted] that rely on such
methods.
1.11 "Conventional Materials" means traditional semiconducting polymers
and semiconducting organic materials such as pentacene; carbon nanotubes; and
traditional, continuous inorganic semiconductor [*** Redacted] such as [***
Redacted] and [*** Redacted], including those having at least one cross
sectional dimension of [*** Redacted].
1.12 "Nanosys' Exclusive Field" means compositions, devices, articles,
and methods involving or involved in Nanosys [*** Redacted] Nanomaterials
Technology, but excluding Conventional Materials, except including
[*** Redacted] when used in an architecture such that [*** Redacted] (e.g.
substantially similar to replacing the nanowives in the applications described
in Nanosys' Nature Paper (Duan et al, Nature, 425, p 274, 2003) with
[*** Redacted]).
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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1.13 "DuPont's Exclusive Field" means compositions (including without
limitation Conventional Materials), devices, articles, and methods involving or
involved in Dupont [*** Redacted] Technology, but excluding Conventional
Materials used in conjunction with Nanosys [*** Redacted] Nanomaterials
Technology, and excluding [*** Redacted] when used in an architecture such that
[*** Redacted] (e.g. substantially similar to replacing the nanowives in the
applications described in Nanosys' Nature Paper (Duan et al, Nature, 425, p 274,
2003) with [*** Redacted]). For the avoidance of doubt, Conventional Processes
used in conjunction with Nanosys [*** Redacted] Nanomaterials Technology are not
in DuPont's Exclusive Field nor in Nanosys' Exclusive Field.
1.14 "Overlap Field" means the fields which fall within both Nanosys'
Exclusive Field and DuPont's Exclusive Field.
1.15 "Confidential Information" is defined in Section 6 below.
1.16 "Joint Developments" is defined in Section 4.4 below.
1.17 "Filing" means any application for or registration of a patent,
patent right (or similar right under foreign law), utility model, copyright or
mask work right with respect to Collaboration Technology.
1.18 "Collaboration Right" means any patent, patent right (or similar
right under foreign law), utility model, copyright or mask work right issued or
registered as a result of a Filing.
2. COLLABORATION WORK.
2.1 Each party shall use its commercially reasonable efforts to
perform its Collaboration obligations as set forth in Exhibit A. It is
understood and agreed that the Collaboration is in the nature of research, that
successful completion of the research is not assured, and that, so long as a
party uses its commercially reasonable efforts as set forth in the preceding
sentence, that party will not be in default for any failure to achieve any
particular result or to complete any particular deliverable. The parties shall
commence the Collaboration January 22, 2004.
2.2 Nanosys agrees to allocate to the Collaboration the number of
full-time equivalent individuals (FTEs) specified in the SOW.
2.3 Where appropriate and agreed in each case, and in accordance with
the SOW, either party's employees may work with the other party at the other
party's facility. All employees of one party visiting the other party's facility
shall comply with the rules and regulations applicable at that facility, as
communicated to such employees.
2.4 Any and all materials supplied by one party to the other party
shall be used by the recipient only to perform its Collaboration obligations.
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
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2.5 Except as set forth in Section 3 below, each party shall bear its
own costs and expenses in carrying out the Collaboration.
2.6 The following persons ("Collaboration Managers") shall be
appointed to direct the conduct of the parties with respect to the
Collaboration:
(a) For DuPont:
Xx. Xxxx X. Xxxxx
Research Manager, DuPont CR&D
Experimental Station, E328/225
Xx. 00 Xxxxxxx Xx. 000 & 00
Xxxxxxxxxx, XX 00000-0000
Phone: 000-000-0000
fax: 000-000-0000
E-mail: Xxxx.X.Xxxxx@xxx.xxxxxx.xxx
(b) For Nanosys:
Xxxxxxx Xxxxxxxxxx
Director, Business Development
Nanosys Inc.
0000 Xxxxxxx Xxxxxx
Xxxx Xxxx, XX 00000
Phone: (000) 000-0000
fax: (000) 000-0000
E-mail: xxxxxxxxxxx@xxxxxxxxxx.xxx
The Collaboration Managers shall have the authority to approve in writing
changes to Exhibit A, including, as applicable, specifications, scope of work,
and milestones. The Collaboration Managers shall have no other authority to
amend this Agreement. Each party may change its Collaboration Manager on written
notice to the other party, provided that the replacement Collaboration Manager
is at a similar level of authority at the party making the replacement, or as
otherwise agreed to by the parties.
2.7 If either party desires to propose changes to the Collaboration,
it shall notify the other party in writing of such proposal and the reasons for
such proposal. The other party will give each such proposal its prompt
attention. If DuPont and Nanosys agree to any such change, the change shall be
evidenced by a written confirmation signed by the Collaboration Managers of both
parties. Such a written confirmation shall amend Exhibit A.
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3. PAYMENTS TO NANOSYS.
3.1 DuPont shall pay to Nanosys the following payments at the
following times:
Time of Payment Amount of Payment
--------------- -----------------
Collaboration Commencement Date
Three (3) months after the Collaboration Commencement Date $ [*** Redacted]
Six (6) months after the Collaboration Commencement Date $ [*** Redacted]
Nine (9) months after the Collaboration Commencement Date $ [*** Redacted]
* These amounts (for the latter three (3) quarters) are nonbinding estimates of
the effort that may be required from Nanosys in these quarters, based on
experience in similar investigations. These estimates may be revised on a
quarterly basis based on the learnings from the previous quarter. All amounts
are and will be based on a rate of [*** Redacted] per FTE-quarter.
For the avoidance of doubt, the latter [*** Redacted] payments will not be due
if this Agreement terminates under Section 10.2 below.
4. OWNERSHIP.
4.1 Each party shall retain its ownership of its Background IP. No
rights are granted pursuant to this Agreement with respect to any Background IP.
4.2 Whether Collaboration Technology is jointly or solely made shall
be determined according to United States patent law or, as to original works of
authorship, according to United States copyright law. Except as to patent
ownership, all other questions concerning the construction or effect of patent
applications and patents shall be decided in accordance with the laws of the
country in which the particular patent application concerned has been filed or
granted.
4.3 Each of Nanosys and DuPont shall own the Collaboration Technology
solely made by its respective employees, agents, and contractors. Subject to
Sections 4.5, 5, 6, and 7 below, sole ownership of Collaboration Technology
shall vest in the owning party the exclusive right to determine whether and how
the Collaboration Technology and the associated intellectual property rights are
to be protected and exercised throughout the world.
4.4 Nanosys and DuPont shall jointly own jointly made Collaboration
Technology ("Joint Developments"), with no duty to account, and, subject to
Sections 4.5, 5, 5, 6, and 7 below, each party shall have the right to use and
exploit such Joint Developments without consent of the
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portion
have been filed separately with the Commission.
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other party. Each party waives any rights under applicable law that it may have
to require consent or an accounting. Subject to Sections 4.5, 5, 6, and 7 below,
joint ownership of Collaboration Technology and the associated intellectual
property rights shall vest in the parties the joint right to determine whether
and how the Collaboration Technology and the associated intellectual property
rights are to be protected and exercised throughout the world.
4.5 Each party agrees that it will not use any of its solely owned or
jointly owned Collaboration Technology (or any associated solely owned or
jointly owned Collaboration IP) in the Overlap Field, except as may be agreed by
the parties in writing. If either party desires to use any such Collaboration
Technology and/or Collaboration IP in the Overlap Field, it may provide written
notice to the other party, in appropriate detail, of the proposed scope of such
use. Within ninety (90) days after such notice, the other party shall, by
written notice to the original notifying party, respond either (i) granting
permission for such use, or (ii) offering to negotiate the terms and conditions
of such use, it being understood that neither party shall be obligated to enter
into any particular agreement or arrangement, nor shall either party be
obligated to enter into any agreement or arrangement that is inconsistent with
its then current obligations to third parties. Any failure to so respond within
this ninety (90) day period shall be irrevocably deemed permission for the
originally notifying party to use such Collaboration Technology and/or
Collaboration IP as proposed in the original party's notice. With respect to
Collaboration IP for which permission is so granted, to the extent such
Collaboration IP is solely owned by the party granting such permission, such
party shall be deemed to have granted to the other party a worldwide,
nontransferable (except as set forth in Section 11.7 below), royalty free
license, only under such Collaboration IP, to design, develop, make, have made,
use, import, offer to sell, and sell or distribute any product or item and to
practice any method or process, in each case limited to the scope of use
specified in the licensee's notice provided as set forth hereinabove.
5. LICENSES.
5.1 Subject to the terms and conditions of this Agreement, Nanosys
agrees to grant, and hereby grants, to DuPont a worldwide, nonexclusive (except
as set forth in Section 5.1(i) hereinbelow), nontransferable (except as set
forth in Section 11.7 below), royalty free license, only under the Nanosys
Collaboration IP, to design, develop, make, have made, use, import, offer to
sell, and sell or distribute any product or item and to practice any method or
process, provided that:
(i) this license shall be exclusive (including as to
Nanosys) for use of the Nanosys Collaboration IP in DuPont's Exclusive Field,
subject to Section 5.1(ii) below, and
(ii) no license is granted by Nanosys for use of any Nanosys
Collaboration IP in Nanosys' Exclusive Field (it being understood that Nanosys'
Exclusive Field includes, without limitation, the Overlap Field).
5.2 Subject to the terms and conditions of this Agreement, DuPont
agrees to grant, and hereby grants, to Nanosys a worldwide, nonexclusive (except
as set forth in Section 5.2(i) hereinbelow), nontransferable (except as set
forth in Section 11.7 below), royalty free license, only under the DuPont
Collaboration IP, to design, develop, make, have made, use, import, offer to
sell, and sell or distribute any product or item and to practice any method or
process, provided that:
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(i) this license shall be exclusive (including as to DuPont)
for use of the DuPont Collaboration IP in Nanosys' Exclusive Field, subject to
Section 5.2(ii) below, and
(ii) no license is granted by DuPont for use of any DuPont
Collaboration IP in DuPont's Exclusive Field (it being understood that DuPont's
Exclusive Field includes, without limitation, the Overlap Field).
5.3 Each party shall have the right to grant sublicenses (and
authorize the granting of further sublicenses) under the license granted to it
in Section 5.1 or 5.2 above, as applicable.
5.4 No party shall be obligated to provide any Technology or
deliverable in connection with the licenses granted in this Section 5; all
deliverables under this Agreement are specified exclusively in Exhibit A.
6. CONFIDENTIAL INFORMATION.
6.1 The term "Confidential Information" shall mean any information or
materials disclosed by one party to the other, pursuant to this Agreement, which
is in written, graphic, machine readable or other tangible form and is marked
"Confidential", "Proprietary" or in some other manner to indicate its
confidential nature. Confidential Information may also include oral information
disclosed by one party to the other, provided that such information is
designated as confidential at the time of disclosure and reduced to a written
summary by the disclosing party, within thirty (30) days after its oral
disclosure or disclosure resulting from such access, which written summary is
marked in a manner to indicate its confidential nature and delivered to the
receiving party. Confidential Information shall also include any information
disclosed as a result of access to the other party's premises or property.
6.2 Each party shall treat as confidential all Confidential
Information of the other party, shall not use such Confidential Information
except for the Collaboration, shall implement reasonable procedures to prohibit
the disclosure, unauthorized duplication, misuse or removal of the other party's
Confidential Information, and shall not disclose such Confidential Information
to any third party except as reasonable and necessary to exercise its rights and
perform its obligations pursuant to this Agreement, and under substantially
similar restrictions as those set forth in this section. Without limiting the
foregoing, each party shall use at least the same procedures and degree of care
which it uses to prevent the disclosure or misuse of its own confidential
information of like importance to prevent the disclosure or misuse of
Confidential Information disclosed to it by the other party under this
Agreement, but in no event less than reasonable care.
6.3 Notwithstanding the above, neither party shall have liability to
the other with regard to any Confidential Information of the other which:
(i) was generally known and available at the time it was
disclosed or becomes generally known and available through no fault of the
receiving party;
(ii) was known to the receiving party, without restriction,
at the time of disclosure as shown by the files of the receiving party in
existence at the time of disclosure;
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(iii) is disclosed with the prior written approval of the
disclosing party;
(iv) was independently developed by the receiving party
without any use of the Confidential Information and by employees or other agents
of the receiving party who have not been exposed to the Confidential
Information, provided that the receiving party can demonstrate such independent
development by documented evidence prepared contemporaneously with such
independent development; or
(v) becomes known to the receiving party, without
restriction, from a source other than the disclosing party without breach of
this Agreement by the receiving party and otherwise not in violation of the
disclosing party's rights.
In addition, each party shall be entitled to disclose the other party's
Confidential Information to the extent such disclosure is required by the order
or requirement of a court, administrative agency, or other governmental body;
provided, that the party required to make the disclosure shall provide prompt,
advance notice thereof to enable the other party to seek a protective order or
otherwise prevent such disclosure.
7. INTELLECTUAL PROPERTY PROTECTION.
7.1 Nanosys and DuPont Collaboration Technology. Nanosys shall have
the sole right at its expense to prepare, file and prosecute Filings related to
any Collaboration Technology solely owned by Nanosys and to maintain
Collaboration Rights issued thereon. DuPont shall have the sole right at its
expense to prepare, file and prosecute Filings related to any Collaboration
Technology solely owned by DuPont and to maintain Collaboration Rights issued
thereon.
7.2 Joint Developments. The parties shall confer on (i) protection of
Joint Developments through Filings on the Joint Development and/or through
maintenance of the Joint Development as a trade secret, and (ii) preparation,
filing, prosecution and maintenance of Filings and Collaboration Rights related
to Joint Developments. The parties shall agree by whom Filings will be done in a
country for a particular Joint Development. If only one party wants to protect a
Joint Development through a Filing on that Joint Development, then that party
shall be entitled to do so, at its sole expense and in its own name. If both
parties share the expense of such Filing, then the Filing shall be made on
behalf of both parties and shall name each party as joint and equal owner in
such country of the Joint Development and of the resulting Collaboration Right.
If one party does not share the expense of such Filing, then the Filing shall be
made on behalf of the party which makes the Filing and shall name such party as
the sole owner in such country of the Collaboration Right pertaining to such
Joint Development, and the party which makes the Filing shall be deemed to have
granted the other party a nonexclusive (except as set forth hereinbelow),
irrevocable, perpetual, fully paid, royalty free license, with right to
sublicense (and authorize the granting of further sublicenses), only under such
Collaboration Right, without restriction, including to practice any process or
method, and to design, develop, make, use, have made, offer to sell, and sell or
distribute any product or item, provided that (A) in the case of such license
from Nanosys to DuPont (I) this license shall be exclusive (including as to
Nanosys) for use of the Collaboration Right in DuPont's Exclusive Field, subject
to clause (A)(II) hereinbelow, and (II) no license is granted by
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Nanosys for use of the Collaboration Right in Nanosys' Exclusive Field (it being
understood that Nanosys' Exclusive Field includes, without limitation, the
Overlap Field); and (B) in the case of such a license from DuPont to Nanosys (I)
this license shall be exclusive (including as to DuPont) for use of the
Collaboration Right in Nanosys' Exclusive Field, subject to clause (B)(II)
hereinbelow, and (II) no license is granted by DuPont for use of the
Collaboration Right in DuPont's Exclusive Field (it being understood that
DuPont's Exclusive Field includes, without limitation, the Overlap Field). If
either party does not pay its one-half share of maintenance expenses with
respect to a Collaboration Right, then sole ownership of that Collaboration
Right shall be transferred and assigned to the other party, subject to a license
to the non-owning party as set forth hereinabove.
7.3 Infringement Prosecution.
(a) (i) Nanosys shall have the sole right to prosecute claims of
infringement or misappropriation of Collaboration Rights (whether owned by
Nanosys, owned by DuPont, or jointly owned by Nanosys and DuPont) or
misappropriation of any trade secret with respect to Collaboration Technology
(whether of Nanosys, of DuPont, or jointly of Nanosys and DuPont), where such
infringement or misappropriation is primarily in Nanosys' Exclusive Field. In
each such case, DuPont shall, at Nanosys' expense, take all actions reasonably
requested by Nanosys in such prosecution (which may include participation as a
named plaintiff, subject to indemnification by Nanosys of DuPont for any
liability to third parties resulting from such participation as a plaintiff).
(ii) DuPont shall have the sole right to prosecute claims of
infringement or misappropriation of Collaboration Rights (whether owned by
Nanosys, owned by DuPont, or jointly owned by Nanosys and DuPont) or
misappropriation of any trade secret with respect to Collaboration Technology
(whether of Nanosys, of DuPont, or jointly of Nanosys and DuPont), where such
infringement or misappropriation is primarily in DuPont's Exclusive Field. In
each such case, Nanosys shall, at DuPont's expense, take all actions reasonably
requested by DuPont in such prosecution (which may include participation as a
named plaintiff, subject to indemnification by DuPont of Nanosys for any
liability to third parties resulting from such participation as a plaintiff).
(iii) For the avoidance of doubt, the determination of
whether any infringement or misappropriation is primarily in Nanosys Exclusive
Field or Dupont's Exclusive field shall be determined by good-faith discussions
between the parties, when such infringement or misappropriation occurs in the
Overlap Field. Regardless of this determination, either party shall have the
right to prosecute claims of infringement or misappropriation of Collaboration
Rights (whether owned by Nanosys, owned by DuPont, or jointly owned by Nanosys
and DuPont) or misappropriation of any trade secret with respect to
Collaboration Technology (whether of Nanosys, of DuPont, or jointly of Nanosys
and DuPont), where such infringement or misappropriation is in the Overlap
Field, if the other party chooses not to pursue such prosecution. In each such
case, the obligations of Nanosys and DuPont to support a prosecution initiated
by the other party shall be as set forth in paragraphs (i) and (ii) of this
Section 7.3(a).
(b) Except as set forth in Section 7.3(a) above, each party shall
have the sole right to prosecute claims of infringement of any Collaboration
Right owned solely by such party
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or infringement or misappropriation of any trade secret with respect to
Collaboration Technology owned solely by such party.
(c) Except as set forth in Section 7.3(a) above, if either party
(the "Notifying Party") wishes to commence an action against a third party for
actual or potential infringement or misappropriation ("Infringement") of any
jointly owned Joint Development or related jointly owned Collaboration Right,
then such party shall promptly so notify the other party (the "Other Party") in
writing of such Infringement (the "Infringement Notice"), and the following
shall apply:
(i) The Notifying Party shall have the sole right to
prosecute such Infringement for a period of ninety (90) days after the date
of the Infringement Notice, provided that the Other Party may, by written notice
within thirty (30) days after the Infringement Notice, elect to participate
in the Infringement action and agree to pay one-half of the costs of such
prosecution. In such event, the parties shall jointly control and cooperate in
prosecution of such Infringement action and shall share equally in any monetary
award resulting from such prosecution.
(ii) If the Other Party elects to participate and share
costs as set forth in Section 73(c)(i), but the Notifying Party does not take
reasonable actions to prosecute the Infringement action before the end of such
ninety (90) day period, or notifies the Other Party that it does not intend
to prosecute such Infringement, then (A) the Other Party shall have the sole
right for sixty (60) days at its expense to prosecute such Infringement and
retain any monetary award resulting therefrom, and (B) the Notifying Party
shall, at the Other Party's expense, take all actions reasonably requested by
the Other Party in such prosecution (which may include participation as a named
plaintiff, subject to indemnification by the Other Party of the Notifying Party
for any liability to third parties resulting from such participation as a
plaintiff). If the Other Party does not take reasonable actions to prosecute
such Infringement action before the end of such sixty (60) day period, or
notifies the Notifying Party that it does not intend to prosecute such
Infringement, then Section 7.3(c) shall become applicable again.
(iii) If the Other Party does not elect to participate and
share expenses as set forth in Section 7.3(c)(i):
(A) If the Notifying Party takes reasonable actions to
prosecute the Infringement action during the ninety (90) days after the date of
the Infringement Notice, then (I) the Notifying Party shall have the sole right
to prosecute such Infringement and retain any monetary award resulting
therefrom, and (II) the Other Party shall, at the Notifying Party's expense,
take all actions reasonably requested by the Notifying Party in such prosecution
(which may include participation as a named plaintiff, subject to
indemnification by the Notifying Party of the Other Party for any liability to
third parties resulting from such participation as a plaintiff).
(B) If the Notifying Party does not take reasonable
actions to prosecute the Infringement action before the end of such
ninety (90) day period, or notifies the Other Party that it does not intend
to prosecute such Infringement, then Section 7.3(c) shall become applicable
again.
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(iv) If a party prosecutes an Infringement and the other
party does not bear one-half the costs of such prosecution as set forth above,
then the prosecuting party shall retain the entire amount of any monetary award
resulting from such prosecution.
(d) If a party prosecuting an Infringement action with respect to
any jointly owned Joint Development or jointly owned Collaboration Right on its
own abandons the Infringement action, then Section 7.3(c) above shall again
apply with respect to that Infringement.
7.4 Further Assurances. At any time or from time to time on and after
the date of this Agreement, each party shall at the request of the other party
(i) execute, and deliver or cause to be delivered, all such consents, documents
or further instruments of license, and (ii) take or cause to be taken all such
other actions, in each case as the other party may reasonably deem necessary or
desirable in order for the other party to obtain the full benefits of this
Section 7 and the activities contemplated hereby.
8. WARRANTY DISCLAIMER.
NEITHER NANOSYS NOR DUPONT MAKES ANY WARRANTY OF ANY KIND, WHETHER EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE, INCLUDING WITHOUT LIMITATION ANY WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. WITHOUT LIMITING THE
FOREGOING, ALL DELIVERABLES AND OTHER ITEMS ARE PROVIDED BY EACH PARTY "AS IS,"
AND ALL LICENSES GRANTED BY EACH PARTY ARE GRANTED "AS IS."
9. LIMITATION OF LIABILITY.
NEITHER PARTY SHALL HAVE ANY LIABILITY FOR COSTS OF SUBSTITUTE PRODUCTS OR
SERVICES, OR FOR ANY INCIDENTAL, CONSEQUENTIAL, INDIRECT, SPECIAL OR INDIRECT
DAMAGES OR LIABILITIES, INCLUDING WITHOUT LIMITATION SUCH DAMAGES OR LIABILITIES
FOR LOSS OF REVENUE, LOSS OF BUSINESS, FRUSTRATION OF ECONOMIC OR BUSINESS
EXPECTATIONS, LOSS OF PROFITS, OR COST OF CAPITAL, REGARDLESS OF THE FORM OF THE
ACTION, WHETHER IN CONTRACT OR OTHERWISE, EVEN IF ANY REPRESENTATIVE OF A PARTY
HERETO HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL
EITHER PARTY'S LIABILITY UNDER THIS AGREEMENT EXCEED THE AMOUNTS PAID OR PAYABLE
BY DUPONT TO NANOSYS UNDER THIS AGREEMENT, provided that, as to DuPont, this
shall be in addition to DuPont's obligation to pay such amounts. These
limitations, however, shall not apply to either party's liability, if any, (i)
for contribution or indemnity with respect to liability to third parties for
personal injury, death, or damage to tangible property, (ii) exceeding the scope
of the licenses in Section 5 (Licenses), (iii) breach of Section 6 (Confidential
Information), or (iv) infringement of the other party's intellectual property
rights.
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10. TERM AND TERMINATION.
10.1 Term. This Agreement shall commence as of the Effective Date and,
subject to Section 10.2 below, shall continue until January 22, 2005 unless
earlier terminated as set forth herein.
10.2 Q1 Checkpoint. This Agreement shall terminate three (3) months
after the Collaboration Commencement Date, unless the parties have agreed, in a
writing referencing this Section 10.2, to continue the Collaboration under this
Agreement.
10.3 Termination Due to Bankruptcy, etc. In the event a party: (i)
becomes insolvent; (ii) voluntarily files or has filed against it a petition
under applicable bankruptcy or insolvency laws which such party fails to have
released within thirty (30) days after filing; (iii) proposes any dissolution,
composition or financial reorganization with creditors or if a receiver,
trustee, custodian or similar agent is appointed or takes possession with
respect to all or substantially all property or business of such party; or (iv)
such party makes a general assignment for the benefit of creditors; then the
other party may terminate this Agreement by notice to the non-terminating party.
10.4 Termination Due to Breach. Either party shall have the right to
terminate this Agreement if the other party is in material breach of any
material term or condition of this Agreement and fails to remedy such breach
within thirty (30) days after receipt of written notice of such breach given by
the non-breaching party. To terminate this Agreement, the nonbreaching party
must provide further written notice of such termination to the breaching party
prior to a cure of the breach.
10.5 Survival. Neither the termination nor expiration of this
Agreement shall relieve either party from its obligations to pay the other any
sums accrued hereunder. Upon the termination or expiration of this Agreement,
(i) DuPont shall promptly return, or certify the destruction of, to Nanosys all
Nanosys Confidential Information, except for such Nanosys Confidential
Information as may be reasonable and necessary for DuPont to exercise its
surviving rights and licenses under this Agreement, and (ii) Nanosys shall
promptly return, or certify the destruction of, to DuPont all DuPont
Confidential Information, except for such DuPont Confidential Information as may
be reasonable and necessary for Nanosys to exercise its surviving rights and
licenses under this Agreement. The parties agree that their respective rights,
obligations and duties under Sections 4 (Ownership), 5 (Licenses), 6
(Confidential Information), 7 (Intellectual Property Protection), 8 (Warranty
Disclaimer), 9 (Limitation of Liability), 10.5 (Survival), and 11
(Miscellaneous) shall survive any termination or expiration of this Agreement.
11. MISCELLANEOUS.
11.1 Publicity. Any press release or other public announcement with
respect to this Agreement shall be subject to the mutual agreement of the
parties, which agreement shall not be unreasonably withheld.
-12-
11.2 Notices. All notices, requests, demands and other communications
given or made in accordance with the provisions of this Agreement shall be in
writing and shall be deemed to have been given (i) three days after mailing when
mailed (by registered or certified mail, postage paid, only), (ii) on the date
sent when made by facsimile transmission with confirmation of receipt (with hard
copy to follow by registered or certified mail, postage paid, only), and (iii)
on the date received when delivered in person or by courier, provided that
notices and communications with respect to administrative and project matters
(e.g., changes in meeting times and dates, program specifications, and specific
program development activities) (but not legal matters or matters pertaining to
or establishing rights under this Agreement), may be provided by e-mail and will
be deemed given when sent. All notices shall be provided to the address set
forth below or such other place as such party may from time to time designate in
writing. Each party may alter its address set forth below by notice in writing
to the other party, and such notice shall be considered to have been given three
(3) days after the sending thereof
If to Nanosys: Nanosys Inc.
0000 Xxxxxxx Xxxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
Attn: Xxxxxx X.X. Xxxx
E-mail: xxxxx@xxxxxxxxxx.xxx
with a copy, for matters pertaining to intellectual property, to:
Nanosys Inc.
0000 Xxxxxxx Xxxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
Attn: Xxxx Xxxxxx
E-mail: xxxxxxx@xxxxxxxxxx.xxx
If to DuPont: Planning Manager, DuPont CR&D
Experimental Station, E328/409
Xx. 00 Xxxxxxx Xx. 000 & 00
Xxxxxxxxxx, XX 00000-0000
Phone: 000 000-0000
Fax: 000-000-0000
E-mail:
Xxxxxxx.X.Xxxxxxxxxx@xxx.xxxxxx.xxx
-13-
with a copy, for matters pertaining to intellectual property, to:
Xxxxxxx X. Sugell, Esg.
DuPont Legal
Xxxxxx Xxxx Xxxxx 00-0000
Xxxxxxxxxx, XX 19880-0025
Fax: 000-000-0000
E-mail: Xxxxxxx.X.Xxxxxxxxxx@xxx.xxxxxx.xxx
11.3 Amendment; Waiver. This Agreement may be amended, modified or
supplemented only by a writing that is signed by duly authorized representatives
of both parties and that specifically identifies the provision or provisions of
this Agreement being amended, modified or supplemented. No term or provision
hereof will be considered waived by either party, and no breach excused by
either party, unless such waiver or consent is in writing signed on behalf of
the party against whom the waiver is asserted. Without limiting the foregoing,
no consent by either party to, or waiver of, a breach by either party, whether
express or implied, will constitute a consent to, waiver of, or excuse of any
other, different, or subsequent breach by either party.
11.4 Severability. If any provision hereof should be held invalid,
illegal or unenforceable in any jurisdiction, the parties shall negotiate in
good faith a valid, legal and enforceable substitute provision that most nearly
reflects the original intent of the parties and all other provisions hereof
shall remain in full force and effect in such jurisdiction and shall be
liberally construed in order to carry out the intentions of the parties hereto
as nearly as may be possible. Such invalidity, illegality or unenforceability
shall not affect the validity, legality or enforceability of such provision in
any other jurisdiction.
11.5 Governing Law. This Agreement shall be governed by and construed
under the laws of the United States and the State of California, not including
its conflict of law provisions.
11.6 Force Majeure. Except for the payment of money, neither party
will be liable for any failure or delay in performance under this Agreement due
to fire, explosion, earthquake, storm, flood or other weather, unavailability of
necessary utilities or raw materials, war, insurrection, riot, act of God or the
public enemy, law, act, order, proclamation, decree, regulation, ordinance, or
instructions of government or other public authorities, or any other event
beyond the reasonable control of the party whose performance is to be excused.
If, however, a party's performance is prevented for sixty (60) days, then
the other party shall be entitled to terminate this Agreement on written notice
to the party suffering the force majeure at any time prior to resumption of
performance by the party suffering the force majeure.
11.7 Assignment. Neither party may transfer or assign this Agreement,
whether by operation of law or otherwise, without the prior written consent of
the other party and any attempt to do so without such consent will be void. This
Agreement will bind and inure to the benefit of the parties and their respective
permitted successors and permitted assigns. Notwithstanding anything in this
Agreement, however, either party may assign this Agreement without the other
party's prior written consent to a successor to all or substantially all of its
assets pertaining to the Collaboration
-14-
(e.g., the surviving entity in a merger or consolidation in which it
participates or to a purchaser of all or substantially all of its assets
pertaining to the Collaboration), so long as such surviving entity or purchaser
shall assume (expressly in writing or by operation of law) the performance of
all of the terms of this Agreement.
11.8 No Third Party Beneficiaries. No person or entity other than
DuPont and Nanosys will have any rights or obligations pursuant to this
Agreement.
11.9 Relationship of the Parties. The parties to this Agreement are
independent contractors. There is no relationship of agency, partnership, joint
venture, employment, or franchise between the parties and this Agreement is
negotiated at arm's length with both sides represented by counsel of their
choice. Neither party has the authority to bind the other or to incur any
obligation on its behalf. Any such act will create a separate liability in the
party so acting to any and all third parties affected thereby.
11.10 Counterparts. This Agreement maybe executed in two counterparts,
each of which shall be deemed an original, but both of which together shall
constitute one and the same instrument. If this Agreement is executed in
counterparts, no signatory hereto shall be bound until both the parties named
below have duly executed or caused to be duly executed a counterpart of this
Agreement.
11.11 Confidentiality of Agreement: Each party agrees that the terms
and conditions, but not the existence or general nature, of this Agreement shall
be treated as confidential, provided, however, that each party 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 legal counsel of
the parties; (iv) in connection with the requirements of a public offering or
securities filing; (v) in confidence, to accountants, banks, and financing
sources and their advisors; (vi) in confidence, in connection with the
enforcement of this Agreement or rights under this Agreement; or (vii) in
confidence, in connection with a merger or acquisition or proposed merger or
acquisition, or the like.
11.12 Authority. Each party represents and warrants to the other party
at the Effective Date (i) that it has the legal right, power, and authority to
enter into this Agreement and to fully perform its obligations under this
Agreement, and (ii) that the performance of such obligations will not conflict
with any agreements, contracts or other arrangements to which it is a party or
by which it is bound.
11.13 Entire Agreement. This Agreement, including all Exhibits to this
Agreement, constitutes the entire agreement between the parties relating to this
subject matter and supersedes all prior or simultaneous representations,
discussions, negotiations, letters of intent, term sheets, and agreements,
whether written or oral, with respect to the subject matter hereof (including,
without limitation, any prior non-disclosure agreement entered into by Nanosys
and DuPont).
-15-
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on the
dates set forth below effective as of the Effective Date.
NANOSYS INC. E.I. DU PONT DE NEMOURS AND COMPANY
By: /s/ Xxxxxx Xxxx By: Xxxxx X. Xxxxxx
Print Name: Xxxxxx Xxxx Print Name: Xxxxx X. Xxxxxx
Title: Chief Executive Officer Title: Science Director
Date: 1-20-04 Date: Jan. 20, 2004
-16-
EXHIBIT A
Collaboration Statement of Work (SOW)
FIRST QUARTER ACTIVITIES:
TASK O: PRELIMINARY WORK
Milestone: Set-up for Tasks 1 and 2.
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Order [*** Redacted] etc [Nanosys] - Order [*** Redacted] Materials required for task 2
- Order required [*** Redacted]
tools to [*** Redacted] in
the [*** Redacted] of [*** Redacted].
[*** Redacted] [Nanosys] Fabricate [*** Redacted] to Capability of [*** Redacted]
[*** Redacted] from samples. [*** Redacted]
[*** Redacted] to [*** Redacted].
Examine [*** Redacted] [DuPont] - Measure [*** Redacted] of [*** Redacted] [*** Redacted]
conductors.
- Establish [*** Redacted] for [*** Redacted] of
the [*** Redacted]
Prepare [*** Redacted] [DuPont] Prepare [*** Redacted] and [*** Redacted] Nanosys [*** Redacted] on [*** Redacted] of
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
TASK 1: TRANSISTOR PERFORMANCE TARGETS
Milestone: Specify near-term and long-term performance targets for
[*** Redacted].
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Define [*** Redacted] performance Near-term and long-term specifications, DuPont provides written requirements for
targets [DuPont] including: near-term ([*** Redacted]) and long-term
([*** Redacted]) performance
- [*** Redacted]
- [*** Redacted]
- [*** Redacted]
- [*** Redacted]
- [*** Redacted]
- [*** Redacted]
TASK 2: ASSESS [*** Redacted] for [*** Redacted] for [*** Redacted] to the
[*** Redacted]
Milestone: Determine appropriate [*** Redacted] for [*** Redacted] to the
[*** Redacted], or determine that [*** Redacted] is not a suitable for use with
[*** Redacted].
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Prepare [*** Redacted] - Use [*** Redacted] None
[Nanosys]
- Use [*** Redacted] to [*** Redacted] in
the [*** Redacted] of [*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-2-
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Determine [*** Redacted] - Allow for [*** Redacted] Evaluation of [*** Redacted]
[Nanosys] on the [*** Redacted] and [*** Redacted]
and [*** Redacted].
- [*** Redacted]
- Measure [*** Redacted]
the [*** Redacted]
- [*** Redacted] in [*** Redacted]
TASK 3: [*** Redacted] SYNTHESIS, [*** Redacted] AND SUPPLY
Milestone: Supply [*** Redacted] for [*** Redacted] testing in Task 4, and
electrical testing in Tasks 5 and 6.
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Fabricate [*** Redacted] for - Standard [*** Redacted] [*** Redacted] for use in Task 4
[*** Redacted] testing (no Task 4
[*** Redacted] specification)
[Nanosys]
- [*** Redacted] and [*** Redacted]
[*** Redacted] evaluated to
[*** Redacted] onto [*** Redacted]
Fabricate [*** Redacted] with - [*** Redacted] - [*** Redacted] for Xxxx 0
[*** Redacted] selected based on
results of Task 2 [Nanosys] - [*** Redacted] selected based - [*** Redacted] for Task 6
on Task 2
- [*** Redacted] optimization
based on results of Task 5
-3-
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
TASK 4: DETERMINE WHETHER [*** Redacted] and [*** Redacted] are compatible
Milestone: Determine whether [*** Redacted] can be [*** Redacted] by one or more
[*** Redacted] methods.
Remarks: We have identified [*** Redacted] potential routes for incorporating
the [*** Redacted] into the [*** Redacted]: [*** Redacted], [*** Redacted],
and [*** Redacted]. All [*** Redacted] routes will be explored in parallel.
In order to expedite testing, the [*** Redacted] used in these experiments
will be whatever is on hand in sufficient quantity, since no [*** Redacted]
tests are envisioned.
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Prepare [*** Redacted] [DuPont] - [*** Redacted] will be prepared: [*** Redacted] for [*** Redacted]
[*** Redacted], [*** Redacted],
and [*** Redacted].
- There will be at least [*** Redacted]
[*** Redacted] of each type, and
at least [*** Redacted], so the total
number of [*** Redacted] will be
in the [*** Redacted] range.
- The [*** Redacted] will be
[*** Redacted] wide and approximately
[*** Redacted].
[*** Redacted] - To effectively assess None.
[Nanosys] [*** Redacted], they should have
[*** Redacted] commensurate with
[*** Redacted]
[*** Redacted] - For the maximum of information
[*** Redacted] [Nanosys] with the minimum of
effort, each [*** Redacted] should have [*** Redacted].
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-4-
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
- Selecting the [*** Redacted]
will require a judgment call.
It should be at least
[*** Redacted], but probably not
[*** Redacted]
[*** Redacted] [DuPont] - [*** Redacted] None
will be [*** Redacted] to
look for [*** Redacted]
- [*** Redacted]
will be [*** Redacted]
- [*** Redacted]
will be [*** Redacted]
Analysis of [*** Redacted] - A combination of [*** Redacted] [*** Redacted] and a detailed
[DuPont] and [*** Redacted] will be report on what worked, what
used to assess the results of failed, and how it failed.
these [*** Redacted].
Determine whether we have - Joint assessment of results. Go/no go decision on [*** Redacted]
a viable path for [*** Redacted]
- Joint determination of
possible paths forward
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-5-
TASK 5: BUILD [*** Redacted]
Milestone: Verify that chosen [*** Redacted] in simple test structures made
from [*** Redacted] materials.
SUBTASK DESCRIPTION DELIVERABLES
------- ----------- ------------
Build [*** Redacted] structures Build up [*** Redacted] [*** Redacted] test
[DuPont] test structures. structures
[*** Redacted] Depending on the outcome of our [*** Redacted] test structures
test structures or [*** Redacted] our [*** Redacted], either: or
[Nanosys]
- [*** Redacted] will be [*** Redacted]
[*** Redacted] or:
- [*** Redacted] will be
[*** Redacted] and
[*** Redacted] the test structures.
Finish [*** Redacted] test Depending on the outcome of our [*** Redacted]
structures [DuPont] [*** Redacted], either:
- [*** Redacted] are
[*** Redacted] test
structure, or:
- [*** Redacted] and
[*** Redacted] will be
[*** Redacted] the test structures.
Verify [*** Redacted] [*** Redacted] [*** Redacted]
[DuPont and Nanoys]
TASK 6: [*** Redacted]
Milestone: Functioning [*** Redacted] that meet the [*** Redacted]
performance targets.
[*** Redacted]
At the end of this task, [*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-6-
TASK 7: DEVELOP A PLAN FOR ACHIEVING THE [*** Redacted] PERFORMANCE TARGETS
WITHIN THE [*** Redacted]
Figure 1. Xxxxx chart.
[*** Redacted]
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-7-
NANOSYS PROJECT TEAM MAKEUP:
- [*** Redacted] Engineer (95% effort)
- [*** Redacted] Engineer (95% effort)
- [*** Redacted] Engineer (95% effort)
- [*** Redacted] ([*** Redacted] for 25%)
([*** Redacted] effort)
Total effort during first quarter: 3.10 FTEs
*** Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted portions
have been filed separately with the Commission.
-8-
