1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Xxxx"). This Exhibit has been filed separately with the
Secretary of the Commission without the Xxxx pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.20
RESEARCH AGREEMENT
THIS RESEARCH AGREEMENT("Agreement") is entered into as of this 2nd
day of April 1996 (the "Effective Date") by and between AURORA BIOSCIENCES
CORPORATION, a company organized under the laws of the State of Delaware,
having an office at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xx Xxxxx, XX 00000
(hereinafter referred to as "Aurora"), and SEQUANA THERAPEUTICS, INC., a
California corporation having its principal place of business at 00000 Xxxxx
Xxxxxx Xxxxx Xxxx, Xxxxx 000, Xx Xxxxx, XX 00000 (hereinafter referred to as
"Sequana").
RECITALS
WHEREAS, Aurora is a start-up drug discovery company focused on
exploiting novel, highly sensitive fluorescence assays for use in genetically
engineered mammalian cells and the development of ultra-high throughput
screening systems. Aurora desires to obtain additional capital resources and
customers with novel genomic based targets for developing cell-based assays in
high-throughput screens.
WHEREAS, Sequana is a company engaged in the discovery,
characterization and positional cloning of disease genes, which desires to
extend its discovery capabilities into functional analysis of newly identified
genes, cell-based or other systems for screening such gene targets and methods
for high throughput screening of potential drug candidates.
WHEREAS, In connection with the execution of this Agreement, Sequana
will purchase Preferred Stock of Aurora as set forth in a separate Stock
Purchase Agreement between the parties of even date herewith (the "Stock
Purchase Agreement").
NOW, THEREFORE, the parties agree as follows:
AGREEMENT
ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the
following meanings.
1.1 "AFFILIATE" shall mean any entity that directly or indirectly
owns, is owned by, or is under common ownership, with a party, where "owns" or
"ownership" means direct or indirect possession and/or control of at least 50%
of the outstanding voting securities of a corporation or a comparable equity
interest in any other type of entity.
1.
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1.2 "AURORA PATENT" means the rights granted by any governmental
authority under a Patent which covers a Product or a method of use, apparatus,
material or manufacture useful in the discovery, development, manufacture, use
or sale of a Product, which Patent Aurora (i) owns, controls or has a license
to (with a right to sublicense) as of the Effective Date or (ii) acquires
ownership, control or license rights to (with a right to sublicense) during the
term of the Agreement or in the course of carrying out the Research Program.
1.3 "AURORA TECHNOLOGY" shall mean the ***
1.4 "COMPOUND" means a compound provided by Sequana to Aurora to
be used in screening activities in the Research Program.
1.5 "FTE" means 1880 hours of work per year by a full time
equivalent scientific or technical researcher, appropriately qualified for the
tasks assigned under the Research Plan.
1.6 "FUNCTIONAL ANALYSIS" means background research ***
1.7 "NET SALES" means the ***
1.8 "PATENT" means (i) unexpired letters patent (including
inventor's certificates and utility models, xxxxx patents and similar
intellectual property rights) which have not been held invalid or unenforceable
by a court of competent jurisdiction from which no appeal can be taken or has
been taken within the required time period, including without limitation any
substitution, extension, registration, confirmation, reissue, re-examination,
renewal or any like filing thereof and (ii) pending applications for letters
patent, including without limitation any continuation, division or
continuation-in-part thereof and any provisional applications.
1.9 "PRODUCT" shall have the meaning assigned in Section 4.2.
1.10 "RESEARCH PLAN" shall mean the plan established pursuant to
Section 3.3 describing the research activities to be undertaken regarding a
particular Target.
1.11 "RESEARCH PROGRAM" means the program described in Article 3.
***CONFIDENTIAL TREATMENT REQUESTED
2.
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1.12 "SEQUANA PATENT" means the rights granted by any governmental
authority under a Patent which covers a Product or a method of use, apparatus,
material or manufacture useful in the discovery development, manufacture, use or
sale of a Product, which Patent Sequana (i) owns, controls or has a license to
(with a right to sublicense) as of the Effective Date or (ii) acquires
ownership, control or license rights to (with a right to sublicense) during the
term of the Agreement or in the course of carrying out the Research Program.
1.13 "SEQUANA TECHNOLOGY" shall mean the Sequana Patents and all
know-how, technology, trade secrets, processes, data, methods or other
information and any physical, chemical or biological material that is useful in
the discovery development, manufacture, use or sale of Products which Sequana
(i) owns, controls or has a license to (with a right to sublicense) as of the
Effective Date or (ii) acquires ownership, control or license rights to (with a
right to sublicense) in the course of carrying out the Research Program.
1.14 "TARGET" means a positionally cloned disease gene referred to
in Section 2.1 or an additional target gene referred to in Section 2.2, or the
protein-encoded by such a gene.
1.15 "TECHNICAL COMMITTEE" shall have the meaning assigned in
Section 3.2.
ARTICLE 2 - SELECTION OF TARGETS
2.1 POSITIONALLY CLONED DISEASE GENES. Sequana may select ***
genes or genetically validated molecular targets, discovered as a result of
positional cloning or statistical genetics of specified familial lineages, to
which Aurora will apply all scientifically applicable Aurora Technology,
including Functional Analysis, screen development and screening, pursuant to an
agreed Research Plan as provided in Section 3.2, during the term of this
Agreement.
2.2 ADDITIONAL TARGET GENES. During the term of this Agreement,
Aurora will also apply all scientifically applicable Aurora Technology
including, related to Functional Analysis, screen development and screening for
*** additional newly identified genes or genetically validated molecular
targets, discovered by any method, including but not limited to positional
cloning, provided that: (i) Sequana specifies each such Target in writing to
Aurora; (ii) notwithstanding any other provision of this Agreement (including
but not limited to Section 3.3), within *** days of the date of such notice the
parties agree on an appropriate Research Plan for such Target (which agreement
shall not be unreasonably withheld by Aurora); and (iii) prior to Sequana's
delivery of any such notice Aurora has not already commenced work for, or good
faith negotiations with, another party, as demonstrated by written
correspondence, with respect to such Target. With regard to the foregoing
clause (iii), if negotiations are not concluded with such a third party within
*** of delivery of Sequana's notice, Sequana shall be entitled to include the
relevant additional target gene in the Research Program subject to the terms of
this Agreement.
2.3 CHANGE IN CONTROL. Notwithstanding Section 2.2, in the event
of a Sequana change in control (defined below) at any time during the term of
this Agreement, Sequana's rights
***CONFIDENTIAL TREATMENT REQUESTED
3.
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and Aurora's obligations to include Targets in the Research Program shall
thereafter be limited to Targets discovered by positional cloning or
statistical genetics of specified familial lineages. In such event, new
Targets not discovered by positional cloning or statistical genetics of
specified familial lineages may not be added to the Research Program. Work in
progress under the Research Program on Targets not discovered by positional
cloning or statistical genetics of specified familial lineages shall continue
according to the agreed Research Plan. Each party's rights and obligations
under this Agreement shall continue following an Aurora change in control.
For purposes of this Section 2.3, "change in control" of an entity
shall mean (i) a merger or consolidation in which the shareholders of such
entity immediately prior to such merger or consolidation do not own at least
fifty percent (50%) of the surviving entity, (ii) the sale, transfer or other
disposition of all or substantially all of the assets of such entity, or (iii)
any transaction or series of related transactions in which a third party
acquires the beneficial ownership (as defined under the Securities Exchange Act
of 1934, as amended) of more than fifty percent (50%) of the voting power of
such entity's outstanding voting securities.
ARTICLE 3 - RESEARCH PROGRAM
3.1 OBJECTIVES; DILIGENCE. Following the selection of Targets in
accordance with Article 2, the parties agree to conduct a research program (the
"Research Program") in accordance with this Article 3 involving Functional
Analysis by Aurora of Targets, development of screens for such Targets,
screening of Compounds or any combination thereof. Aurora shall use
commercially reasonable diligence to pursue work under the Research Program so
long as Sequana is in compliance with its funding commitments under Section
4.1.
3.2 TECHNICAL COMMITTEE. A technical committee (the "Technical
Committee") consisting of two senior research and development executives from
each of Sequana and Aurora shall review opportunities for research projects to
be conducted under this Agreement and monitor and assess the status of work
being conducted pursuant to this Agreement. The Technical Committee shall
provide a quarterly written report regarding such matters to each party. The
Technical Committee shall meet at least quarterly at such times and places as
shall be mutually agreed upon by the members of the Technical Committee.
3.3 RESEARCH PLANS. The Research Program will be conducted in
accordance with a research plan (the "Research Plan") for each Target. Each
Research Plan shall by devised by the Technical Committee in accordance with
the terms of this Agreement, but Sequana shall have the determining vote on
disputed decisions (subject to clause (ii) of Section 2.2 and except with
respect to the allocation of work among Aurora, Sequana and/or third parties
under Research Plans as provided in Section 3.4 below). Each Research Plan
shall provide for *** FTEs to perform such work through the term of such
Research Plan, however in the event of early completion of the Research Plan or
a determination by Sequana that a Target is not commercially viable, Sequana
will have the right to substitute a new Target under the Research Plan. Work
may additionally be done by Sequana scientists or third parties to the extent
the parties agree that such work is more appropriately done by Sequana or such
third parties, and Sequana and/or such
*** CONFIDENTIAL TREATMENT REQUESTED
4.
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third parties shall have a non-exclusive, non-assignable, royalty-free license
for the term of the applicable research contract to Aurora Technology to the
extent necessary to perform such work. It is the understanding of the parties,
however, that Aurora will be primarily responsible for performing research under
applicable Research Plans. Notwithstanding the foregoing, however, to the
extent any Research Plan with respect to Targets selected under Section 2.1 or
Section 2.2 is directed solely toward Functional Analysis, then such Research
Plan shall involve *** FTEs through the term of such Research Plan, however in
the event of early completion of the Research Plan, or a determination by
Sequana that a Target is not commercially viable, Sequana will have the right to
substitute a new Target under the Research Plan.
3.4 RESEARCH COMMITMENTS. Aurora shall not be required to
provide, at any one time, *** Aurora appropriately qualified scientists at any
one time under this Agreement for research programs directed to Targets
selected under Section 2.1 above or *** Aurora appropriately qualified
scientists at any one time under this Agreement for research programs directed
to Targets selected under Section 2.2 above. Further, Aurora shall not be
obligated to provide *** appropriately qualified scientists at any one time
under this Agreement for Functional Analysis of Targets where the Research
Plans under which such scientists are working are directed solely toward
Function Analysis.
3.5 SPECIAL EQUIPMENT. Aurora may require Sequana to provide to
Aurora, at Sequana's expense (including but not limited to delivery charges to
and from Aurora's facilities, and insurance costs), any specific equipment (to
be owned by Sequana) that Aurora requires for work under a Research Plan.
Aurora shall not use such equipment for other purpose except with the consent
of Sequana.
3.6 EXCLUSIVITY. During the term of this Agreement Aurora will not
apply Aurora technology to any gene or genetically Validated Molecular Targets
discovered as a result of positional cloning or statistical genetics of
specified familial lineages, other than those provided by Sequana hereunder. ***
The exclusivity provisions of this Section 3.6 will continue so long as, within
*** of the effective date of the UC License Agreement (defined below), Sequana
shall have either (i) selected Targets and agreed to related Research Plans
providing for research to be conducted by Aurora requiring at least *** Aurora
FTEs or (ii) paid Aurora an additional exclusivity fee of ***. If this
exclusivity obligation has been maintained throughout the initial term of this
Agreement, it will continue to apply through any extension of the term of the
Agreement under Section 7.1.
3.7 RESEARCH LICENSE TO AURORA. Sequana hereby grants to Aurora a
non-exclusive, non-transferable, fully-paid license under the Sequana
Technology solely for the purpose of carrying out the Research Program in
accordance with this Agreement.
***CONFIDENTIAL TREATMENT REQUESTED
5.
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ARTICLE 4 - COMPENSATION
4.1 RESEARCH PAYMENTS. Sequana shall make research funding
payments to Aurora a rate equal to *** per FTE for each FTE provided for
in any Research Plan. Such payments shall be made on a quarterly basis in
advance.
If the Agreement is extended as provided in Section 7.1, the research
funding rate per FTE for such extension years will be *** per FTE ***.
4.2 MILESTONES AND ROYALTIES.
(A) If any Compound screened by Aurora under the Research
Program, or any derivative thereof, is developed and commercialized as a drug
product, or any assay development or screening work performed by Aurora under
this Agreement otherwise directly or indirectly leads to the development and
commercialization of any drug products (collectively, "Products"), Aurora shall
be entitled to receive from Sequana, subject to paragraph (c) below, *** of all
license fees, milestone payments and other fees and compensation received by
Sequana from third parties (if any) with respect to such Products and (ii)
royalties on Net Sales of such Products equal to the *** (if any) with respect
to such Products; provided, however, that with respect to any Product, the
amounts to which the percentages under the foregoing clauses (i) and (ii) are
applied shall be *** in connection with the discovery, development or
commercialization of such Product.
(B) With respect to any Target on which Aurora performs
Functional Analysis but not screening or assay development work referred to
under Section 4.2(a), if the Functional Analyses of any such Targets performed
by Aurora under this Agreement directly or indirectly lead to the development or
commercialization of any Products acting substantially on any such Target,
Aurora shall be entitled to receive from Sequana, subject to paragraph (c)
below, (i) *** of all license fees, milestone fees and other fees and
compensation received by Sequana from third parties (if any) with respect to
such Products and (ii) royalties on Net Sales of such Products equal to *** (if
any) with respect to such Products; provided, however, that the amounts to which
the percentages under the foregoing clauses (i) and (ii) are applied shall be
********* in connection with the discovery, development or commercialization
of such Products.
In no event shall any license fees, milestone payments,
royalties or other payments paid by Sequana and referred to in the provisos in
Sections 4.2(a) and 4.2(b) be applied on more than one occasion to reduce the
amounts upon which percentages are payable to Aurora under this Section 4.2.
***CONFIDENTIAL TREATMENT REQUESTED
6.
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(C) Aurora shall not be entitled to receive any amount of
(i) license fees, milestone payments, royalties or other fees or compensation
received by Sequana from third party collaborators to the extent such payments
are received solely and specifically in consideration of Sequana's research
activities in connection with and including discovering the gene with respect
to which screening services are being provided by Aurora to Sequana, or (ii)
payments from third party collaborators (a) for research or development work
performed by Sequana or (b) as reimbursement of patient collection costs, or
(iii) equity investments in Sequana even if at a premium to market price. The
provisions of this paragraph (c) and the provisos contained in Sections 4.2(a)
and 4.2(b) shall not apply to the extent the parties shall both otherwise agree
in writing to an alternative compensation arrangement with respect to any
Products, such as in the event that Sequana has not entered into a separate
gene discovery agreement with a commercial partner, after considering in good
faith the relative contributions by the parties (Aurora, Sequana and third
parties) of intellectual property, specialist know how and prior work done and
any unusual or special features of the contractual arrangements to which
Sequana is subject for a particular project, including but not limited to the
fact that no substantial milestones or royalties are payable to Sequana
pursuant to such arrangements. Notwithstanding anything in this Agreement to
the contrary, Aurora shall not be entitled to receive any amounts of any
payments received by Sequana under the following agreements as in effect on the
date hereof: (i) the Collaborative Research Agreement between Sequana and
Glaxo Wellcome Inc. dated July 27, 1994; (ii) the Collaborative Research
Agreement dated June 30, 1995 between Sequana and Corange International, Ltd.;
and (iii) the Collaborative Research Agreement dated June 12, 1995 between
Sequana and Boehringer Ingelheim International GmbH; provided, however, that
notwithstanding any other provision of this Agreement, Aurora shall not be
required to provide screening or assay development services or Functional
Analysis under this Agreement with respect to any genes or molecular targets
identified (or with respect to which Sequana may otherwise receive
compensation) under such agreements unless, with respect to any such gene or
molecular target under any such agreement, such agreement is hereafter amended
to provide for the payment of compensation to Sequana for the provision of such
services or Functional Analysis, in which case this sentence shall no longer
apply with respect to such agreement (it being understood that the payments
payable to Sequana under such agreements as in effect on the date hereof shall
be deemed to be payments referred to under clauses (i), (ii) and (iii) of this
Section 4.2(c)).
4.3 PAYMENTS. Sequana shall provide reports to Aurora within 60
days after the end of each calendar quarter during this Agreement stating the
quantity and description of Products subject to royalty sold the preceding
calendar half year, the Net Sales thereof and the calculation of the royalty
due, as well the amount of any other payments due under Section 4.2 and the
basis for determining such amount. All payments due hereunder shall be paid
simultaneously with the submission of such reports. Payments shall be made in
United States Dollars. If any taxes are imposed and required to be withheld
from such payments, the taxes withheld shall be for the account of Aurora and
shall reduce the payments required to be made hereunder. Sequana shall make
any required withholding payments to appropriate tax authorities and forward to
Aurora all appropriate receipts and other documents necessary to enable Aurora
to recover such withheld taxes to the extent permissible under applicable law.
7.
8
4.4 RECORDS AND AUDITS. Sequana shall keep true and accurate
records and/or books of account containing information reasonably required for
the computation and verification of all payments to be made hereunder, which
records and/or books shall at all reasonable and mutually convenient times
during ordinary business hours be open for periodic inspection, not more than
once each calendar year and for inspection of no more than the three prior years
of records and/or books, by an independently certified public accounting firm of
nationally recognized standing selected by Aurora who is reasonably acceptable
to Sequana, for the sole purpose of and only to the extent reasonably necessary
for verification of the amounts due and payable under this Agreement. The
accounting firm shall disclose to Sequana all information gathered or concluded,
and to Aurora only whether the records are correct or not and the specific
details concerning any discrepancies. The expense of the audit shall be borne
by Aurora, unless the audit reveals a deficiency *** in payments due hereunder,
in which case Sequana shall bear the expenses of the audit. The results of the
audit shall be binding on both parties. Any deficiency in payments revealed by
the audit shall be due and payable within thirty (30) days of the audit results
being disclosed to the parties, with simple interest from the date originally
due at a rate of eight percent (8%) per annum.
ARTICLE 5 - INTELLECTUAL PROPERTY RIGHTS
5.1 INVENTIONS AND DATA. Inventions made by Aurora using
Compounds supplied by Sequana under this Agreement, all data generated by
Aurora in connection with the evaluation of Compounds pursuant to this
Agreement and all rights in such inventions and data shall be owned by Sequana
and Sequana shall have the right to obtain Patents thereon at its own expense
and using counsel of its selection. Inventions made by Aurora pertaining
generally to assay development technology and screening technology shall be
owned by Aurora and Aurora shall have the right to obtain Patents thereon at
its own expense and using counsel of its selection. Aurora's rights shall,
however, be subject to any Patent rights owned by Sequana and no rights or
license under Sequana Patents shall inure to Aurora except as expressly
provided in this Agreement. All inventions made by Sequana in connection with
the Research Program shall be owned by Seqana.
For the avoidance of doubt, as between Aurora and Sequana, Sequana
shall own all rights to any Compounds identified as potential drug candidates,
and any assays containing a Target developed, in the course of the Research
Program.
5.2 COMMERCIAL LICENSE TO SEQUANA. Sequana shall use commercially
reasonable diligence to pursue product opportunities arising out of the
Research Program. Subject to the terms of this Agreement, Aurora hereby grants
to Sequana a worldwide, exclusive license under the Aurora Technology to
develop, make, use and sell Products covered by Section 4.2. Sequana may
sublicense such rights to third parties, provided that payments received by
Sequana pursuant to such sublicenses shall be covered by Section 4.2.
5.3 ***
***CONFIDENTIAL TREATMENT REQUESTED
8.
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***
The licenses granted under this Section 5.3 shall terminate upon the
expiration of the Agreement, provided that following the expiration of the
Agreement, Aurora and Sequana shall negotiate in good faith with regard to
extending the licenses set forth above on reasonable terms to be mutually
agreed upon by the parties.
5.4 PATENT ENFORCEMENT. Each party shall have the right at its
own expense to protect the Patents owned by it and licensed to the other party
under this Agreement from infringement by third parties and to control any
litigation initiated to prosecute such infringers. The decision to undertake
litigation shall be in the sole discretion of such party and its decision to
enter into litigation shall be binding on the other party. In the event that
party shall recover profits and/or damages from an infringer based upon the
infringer's sales of a Product, such party agrees to pay the other party a
percentage of such profit and/or damages equal to the percentage the other
party would have received hereunder in the absence of infringement, after
deducting the recovering party's expenses of litigation, including costs and
legal fees incurred therein.
***CONFIDENTIAL TREATMENT REQUESTED
9.
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ARTICLE 6 - CONFIDENTIALITY
6.1 The parties contemplate that during the course of their
relationship arising under this Agreement, it may be necessary to provide the
other with confidential information to facilitate the performance of their
obligations pursuant to this Agreement. The parties agree, therefore, that
information received from the other shall be maintained in confidence and that
reasonable and prudent practices shall be followed to maintain the information
in confidence, including, where necessary, obtaining written confidentiality
agreement from employees and consultants not already bound by such agreements
who have access to the confidential information. Information received in
confidence shall be used by a party only for the purpose of and in connection
with its performance of this Agreement. The obligation to maintain information
in confidence shall survive expiration or termination of this Agreement for a
period of five (5) years thereafter.
However, a party shall not be obliged to maintain information in
confidence which it can show by written documentation: (a) to have been
publicly known prior to submission to it by the other party; (b) to have been
known or available to it prior to submission by the other party; (c) to have
become publicly known without fault on its part subsequent to submission by the
other party; (d) to have been received by it from a third party having
possession of the information without obligations of confidentiality; (e) to
have independently developed it without reference to or use of the confidential
information; or (f) to be required to be disclosed pursuant to applicable law
or the order of any court or governmental agency having jurisdiction thereof
after notice to the other party sufficient to afford it an opportunity to
intervene in the proceeding where disclosure is required.
ARTICLE 7 - TERM AND TERMINATION
7.1 TERM OF AGREEMENT; OPTION TO EXTEND. The term of the Agreement
shall be three years from the effective date of the UC License Agreement,
subject to Sequana's right to extend such term for up to two one-year periods
for a fee of *** for each such one-year extension (but only for an additional
*** Targets discovered by Sequana as a result of positional cloning or
statistical genetics of specified familial lineages under Section 2.1 and an
additional *** targets under Section 2.2 per extension year. Up to one-half of
such extension fee ***. In the event that Aurora has not established
fluorescence- based screening equipment referred to in the Recitals to this
Agreement with a capacity of *** tests per week within *** months of the
Effective Date, no fee will be payable upon any extension of the Agreement under
this Section 7.1. Following the expiration of the initial three year term, or
any extension thereof, Sequana shall retain the license granted in Section 5.2
of this Agreement and shall remain subject to the terms of Section 4.2, 4.3 and
4.4, as well as Articles 6 and 8.
7.2 TERMINATION FOR MATERIAL BREACH. Each party can terminate
this Agreement in the event of a material breach of this Agreement by the other
party by giving the other party notice of its intention to terminate if within
ninety (90) days of such notice such party does not cure the breach.
*** CONFIDENTIAL TREATMENT REQUESTED
10.
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7.3 CONSEQUENCES OF TERMINATION FOR MATERIAL BREACH.
(A) BREACH BY SEQUANA. If Aurora terminates this
Agreement pursuant to Section 7.2, then in addition to any other remedies that
may be available, all rights and obligations of the parties under this
Agreement (including but not limited to all licenses) shall terminate as of the
effective date of such termination and each party shall promptly return to the
other party all documentation and materials in such party's possession;
provided, however, that Sequana shall remain obligated to pay milestones and
royalties under this Agreement, and the provisions of Sections 4.2, 4.3, 4.4
and 5.2 of this Agreement shall survive such termination, with respect to work
done hereunder by Aurora through the effective date of such termination, and
nothing shall relieve any party of any payment obligations accrued prior to the
effective date of such termination.
(B) BREACH BY AURORA. If Sequana terminates this
Agreement pursuant to Section 7.2, then in addition to any other remedies that
may be available, all rights and obligations of the parties under this Agreement
(including but not limited to all licenses) shall terminate as of the effective
date of such termination and each party shall promptly return to the other party
all documentation and materials in such party's possession; provided, however,
that (i) the provisions of Sections 4.2, 4.3, 4.4, and 5.2 of this Agreement
shall survive such termination, with respect to work done hereunder by Aurora
through the effective date of such termination (Section 5.3 shall survive for 3
years from the effective date of the UC License Agreement and thereafter as
Sequana may elect subject to clause (ii) of this Section 7.3(b) below) and (ii)
Sequana may elect to continue the license grant under Section 5.3 and Aurora's
exclusivity obligation under Section 3.6 for up to two (2) one-year periods
after expiration of the initial 3 year period after the effective date of the UC
License Agreement following such termination by delivery to Aurora on or prior
to the effective date of such termination cash in the amount of *** for each
such year and (iii) nothing shall relieve any party of any payment obligations
accrued prior to the effective date of such termination.
The provisions of Sections 5.1, 5.2, 5.4, 6.1, this 7.3 and 8.1 and Article 9
shall in any event survive termination of this Agreement.
7.4 DISPUTE RESOLUTION. In the event of any disputes under this
Agreement, the Technical Committee shall first attempt to resolve such disputes
in good faith. If the members of the Technical Committee cannot resolve such
matters, such matters shall be referred to the Chief Executive Officers of each
party for resolution. If such persons are unable to resolve such matters, then
such matters shall be resolved by Arbitration pursuant to Section 9.6.
ARTICLE 8 - INDEMNIFICATION
8.1 INDEMNIFICATION. Sequana shall defend, indemnify and hold
Aurora harmless from and against all claims and expenses, including reasonable
attorneys' fees, arising out of the development, manufacture, use or sale of
Products by Sequana and its Affiliates and sublicensees, except to the extent
caused by the negligence or misconduct of Aurora; provided that (i) Aurora
*** CONFIDENTIAL TREATMENT REQUESTED
11.
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provides Sequana prompt notice of any such claim, (ii) Sequana shall not be
obligated to indemnify Aurora for any loss in connection with any settlement
unless Sequana consents in writing to such settlement and (iii) Sequana shall
have the exclusive right to defend and settle any such claim.
8.2 INDEMNIFICATION. Aurora shall defend, indemnify and hold
Sequana harmless from and against all claims and expenses, including reasonable
attorneys' fees, arising out of the development, manufacture, use or sale of
Products by Aurora and its Affiliates and sublicensees, except to the extent
caused by the negligence or misconduct of Sequana; provided that (i) Sequana
provides Aurora prompt notice of any such claim, (ii) Aurora shall not be
obligated to indemnify Sequana for any loss in connection with any settlement
unless Aurora consents in writing to such settlement and (iii) Aurora shall
have the exclusive right to defend and settle any such claim.
ARTICLE 9 - MISCELLANEOUS
9.1 NO AGENCY OR PARTNERSHIP. Neither party shall be deemed to be
an agent of the other party as the result of any transaction under or related
to this Agreement and shall not in any way incur any obligations on behalf of
the other party. This Agreement shall not constitute a partnership or a joint
venture, and neither party may be bound by the other to any contract,
arrangement or understanding except as specifically stated herein.
9.2 PUBLICITY. Neither party shall, in connection with its
activities under this Agreement, use the name of the other party in any
advertising, promotional sales literature, or other publicity without prior
written consent obtained from the other party, which consent shall not be
unreasonably withheld.
9.3 NOTICES. All written notices, payment, reports and the like
required or permitted hereunder shall be deemed to be effective when mailed,
postage prepaid, by first class, registered or certified mail to the address of
the applicable party set forth above or to such other person or by such other
means as to which the parties may from time to time have agreed.
9.4 ASSIGNMENT. This Agreement, in whole or in part, shall be
assignable by each party in the case of a transfer of all the assets of such
party or to a successor entity by merger, acquisition or other reorganization.
Any other assignment shall require the consent of the other party, which
consent shall not be unreasonably withheld, and any attempted assignment other
than is provided herein without such consent shall be void.
9.5 GOVERNING LAW. This Agreement shall be governed and construed
in accordance with the laws of the State of California as applied to contracts
entered into and performed entirely in California among California residents.
9.6 ARBITRATION. Subject to Section 7.4, any and all disputes
arising hereunder shall be resolved through binding and nonappealable
arbitration to be held in San Diego County administered by the American
Arbitration Association ("AAA"). Any such arbitration shall be
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conducted before a single arbitrator to be appointed by the parties from the
AAA roster. If the parties fail to agree as to the identity of the single
arbitrator within fifteen (15) days after notice by any party of any dispute
hereunder, the AAA shall make such appointment within ten (10) days of the
expiration of such fifteen (15) day period, provided that in any event the
arbitrator shall be an active member of the California bar who is reasonably
familiar with the biotechnology industry and is experienced with transactions
of this type. The conduct of the arbitration hearing and discovery prior
thereto shall be in accordance with the California Code of Civil Procedure,
California Rules of Court, and California Rules of Evidence. The arbitrator
shall be empowered to make appropriate orders and rulings and shall be
empowered to award legal and equitable relief deemed appropriate thereby;
provided that notwithstanding any other provision of this Agreement, in no
event shall punitive damages be awarded. The parties shall complete any and
all discovery with respect to any such dispute within thirty (30) days after
the selection of the arbitrator and the arbitrator shall be instructed to issue
any and all orders and/or rulings within sixty (60) days after selection of the
arbitrator (subject in each case to extension if the arbitrator determines
extenuating circumstances exist which justify such extension). Notwithstanding
the foregoing provisions of this paragraph 9.6 however, the parties shall be
entitled to seek and obtain appropriate injunctive relief with respect to
Article 6 in any court of competent jurisdiction pending the results of the
arbitration.
9.7 NO WAIVER. The failure of either party to enforce at any time
any of the provisions of this Agreement, or any rights in respect thereto, or
to exercise any election herein provided, shall in no way be considered to be a
waiver of such provisions, rights or elections, or in any way to affect the
validity of this Agreement. Exercise by either party any of its rights herein
or any of its elections under the terms or covenants herein shall not preclude
either party from exercising the same or any other rights in this Agreement,
irrespective of any previous action or proceeding taken by either party
hereunder.
9.8 SEVERABILITY. If any provision of this Agreement is
judicially determined to be void or unenforceable, such provision shall be
deemed to be severable from the other provisions of this Agreement which shall
remain in full force and effect. Either party may request that a provision
otherwise void or unenforceable be reformed so as to be valid and enforceable
to the maximum extent permitted by law.
9.9 FORCE MAJEURE. No liability hereunder shall result to a party
by reason of delay in performance caused by force majeure, that is,
circumstances beyond the reasonable control of the party, including, without
limitation, acts of God, fire, flood, war, civil unrest, labor unrest, or
shortage of or inability to obtain material as equipment.
9.10 ASSURANCES AND WARRANTIES. The parties agree to execute,
acknowledge and deliver all such further instruments, and to do all such other
acts, as may be necessary or appropriate in order to carry out the intent and
purpose of this Agreement. Each party warrants that it has the authority to
enter into this Agreement on the basis of the terms and conditions herein and
that it has not made any other Agreement inconsistent with its obligations
under this Agreement.
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9.11 ENTIRE AGREEMENT; AMENDMENTS. The terms and conditions herein
constitute the entire Agreement between the parties and shall supersede all
previous Agreements, either oral or written, between the parties hereto with
respect to the subject matter hereof. No amendment, modification or other
understanding bearing on this Agreement shall be binding upon either party
hereto unless it shall be in writing and signed by the duly authorized officer
or representative of each of the parties and shall expressly refer to this
Agreement.
9.12 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed an original and all of which
together shall constitute one instrument.
IN WITNESS WHEREO, the parties hereto have caused this Agreement to be
duly executed by their duly authorized representatives.
AURORA BIOSCIENCES CORPORATION
By:
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Name:
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Title:
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SEQUANA THERAPEUTICS, INC.
By:
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Name:
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Title:
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