Exhibit 10.64.2
CONFIDENTIAL TREATMENT REQUESTED.
CONFIDENTIAL PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST
FOR CONFIDENTIAL TREATMENT AND HAVE BEEN FILED SEPARATELY WITH THE COMMISSION.
SUBLICENSE AGREEMENT
This Sublicense Agreement (this "Agreement") is made and entered into
this 19th day of September, 2001 (the "Effective Date") by and between Lexicon
Genetics Incorporated, a Delaware corporation having an office at 0000 Xxxxxxxx
Xxxxxx Xxxxx, Xxx Xxxxxxxxx, Xxxxx 00000 ("Lexicon"), and Deltagen, Inc., a
Delaware corporation having an office at 000 Xxx Xxxx, Xxxxxxx Xxxx, Xxxxxxxxxx
00000-0000 ("Deltagen").
RECITALS:
WHEREAS, Lexicon holds a license from GenPharm International Inc.
("GenPharm") under certain Patent Rights (as defined herein) relating to the use
of "positive negative selection" and "isogenic DNA constructs" in gene targeting
for the generation, of transgenic and knock out mice, and has the right to grant
sublicenses under said Patent Rights; and
WHEREAS, under the terms of a Settlement Agreement between the parties
dated of even date herewith (the "Settlement Agreement"), Lexicon and Deltagen
have agreed to the settlement and dismissal of litigation brought by Lexicon and
the University of Utah Research Foundation (the "Foundation") against Deltagen
in the United States District Court for the Northern District of California,
Civil Action No. 00-21060-PVT, and the litigation brought by Lexicon in the
United States District Court for the District of Delaware, Civil Action No.
00-516-JJF, and all claims and counterclaims asserted therein;
WHEREAS, the Settlement Agreement provides for (i) the grant by Deltagen
to Lexicon of certain rights of access and licenses to Deltagen's DeltaBase(TM)
Database and Materials (as defined herein) under that certain DeltaBase
Collaboration Agreement between the parties of even date herewith (the
"DeltaBase Agreement") and (ii) the grant by Lexicon to Deltagen of a sublicense
under the Patent Rights in the Field of Use and certain agreements not to xxx on
behalf of both parties upon the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1. Definitions. For the purposes of this Agreement, the following
words and phrases shall have the following meanings:
1.1 "Academic Collaborator" shall mean a principal
investigator, employed by a university or other not for profit research
institution, who is performing collaborative research with Deltagen, a
Deltagen Corporate Partner or a Deltagen Fee-For-Service Customer, as
applicable, involving use of a Rodent Model or Progeny.
1.2 "Affiliate" shall mean, with respect to any corporation
or other entity, any other corporation or other entity that directly or
indirectly controls, is controlled by or is under common control with
such corporation or entity, where "control" is defined as the ownership
of [*] percent ([*]%) of the equity or beneficial ownership interests of
such
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
corporation or entity; provided, however, that where local laws require
a minimum percentage of local ownership, the ownership of the maximum
percentage of the equity or beneficial ownership interests of a
corporation or entity that may, under such local laws, be owned or
controlled by foreign interests shall be deemed to constitute "control"
of such corporation or entity.
1.3 "Corporate Partnership Agreement" shall mean:
(a) in the case of Deltagen or its Affiliates, any
agreement, other than a Fee-For-Service Agreement, between
Deltagen or its Affiliates and a Third Party involving [*]);
and
(b) in the case of any Deltagen Corporate Partner or
Deltagen Fee-For-Service Customer to which Deltagen transfers a
Rodent Model or Progeny, any agreement between such Deltagen
Corporate Partner, Deltagen Fee For-Service-Customer or its
Affiliates and another Third Party involving [*].
1.4 "DeltaBase Database and Materials" shall mean DeltaBase
Information and Knockout Mice Materials, as such terms are defined in
the DeltaBase Agreement.
1.5 "Deltagen Corporate Partner" means a Third Party that
enters into a Corporate Partnership Agreement with Deltagen or its
Affiliates.
1.6 "Deltagen Fee-For-Service Customer" means any Third
Xxxxx that enters into a Fee-For-Service Agreement with Deltagen or its
Affiliates.
1.7 "Fee-For-Service Agreement" shall mean any agreement
entered into between Deltagen or its Affiliates and a Third Party under
which Deltagen or its Affiliates performs contract research services on
a work for hire basis to generate or develop Rodent Model(s) for such
Third Party. For purposes of the foregoing, "work for hire" shall mean
and include [*].
1.8 "Field of Use" shall mean (i) the generation and
development of Rodent Models by Deltagen and its Affiliates (including
the right to make but not have made), (ii) the use of Rodent Models and
Progeny by Deltagen and its Affiliates, at the internal research
facilities of Deltagen or such Affiliates, (A) for research purposes,
including research directed toward the discovery, development or
commercialization of Products, and (B) for purposes of commercially
using, developing, selling and otherwise malting available (e.g.,
through the DeltaBase Database and Materials) to Third Parties
Phenotypic Data generated by Deltagen or its Affiliates with respect
thereto, including, without limitation, rights to discover, develop and
commercialize Products derived from such Rodent Models, Progeny or
Phenotypic Data, and (iii) the use of Rodent Models and
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
Progeny by any Academic Collaborators, Deltagen Corporate Partners,
Deltagen Fee-For-Service Customers and Product Collaborators that have
entered into an agreement with respect thereto containing the provisions
specified in Section 2.2, Academic Collaborators, Deltagen Corporate
Partners, Deltagen Fee-For-Service Customers or Product Collaborators,
in each such case for research purposes only, including research
directed toward the discovery, development or commercialization of
Products.
1.9 "Rodent Model" shall mean any rodent cell or rodent
generated or developed by Deltagen or its Affiliates through use of any
product or process covered by a Valid Claim of the Patent Rights, and
any materials derived therefrom. A "line of Rodent Models" shall mean
any Rodent Model with the same mutation in the same gene.
1.10 "Patent Rights" shall mean all of Lexicon's rights and
interests in and to (i) the United States patents listed in Exhibit A,
and any patent applications that claim the benefit of priority to any of
the patents listed in Exhibit A, any patent applications from which the
patents listed in Exhibit A claim priority, and all foreign counterparts
thereof, (ii) any patents issuing from such patent applications and
(iii) any continuations, continuations-in-part, divisionals, reissues,
reexaminations, substitutions, supplementary protection certificates or
extensions of any of the foregoing.
1.11 "Phenotypic Data" means genetic, phenotypic and related
data generated or developed from a Rodent Model or Progeny and
intellectual property rights therein.
1.12 "Product" shall mean any human therapeutic or diagnostic
product which is discovered, identified, selected, characterized or
determined to have utility, or which interacts with a gene and/or the
protein it encodes (including allelic variants thereof and post
translationally modified variants thereof) which is discovered,
identified, selected, characterized or determined to have utility,
through use by Deltagen, its Affiliates, Academic Collaborators or
Corporate Partners of a Rodent Model or Progeny, or Phenotypic Data with
respect to a Rodent Model or Progeny. For purposes of this Agreement, a
Product is referred to as having been "derived from" the Rodent Model,
Progeny or Phenotypic Data used in discovering, identifying, selecting,
characterizing or determining the utility of such Product.
1.13 "Product Collaborators" means any Third Party that
enters into a Corporate Partnership Agreement with a Deltagen Corporate
Partner or its Affiliates, or with a Deltagen Fee-For-Service Customer
or its Affiliates.
1.14 "Progeny" shall mean any rodent cells or rodents,
including successive generations thereof, that are produced or developed
by Deltagen, its Affiliates, Academic Collaborators or Corporate
Partners by breeding a Rodent Model with any other rodent (including,
without limitation, any other Rodent Model), and any materials derived
therefrom; provided, however, that Progeny shall not include, and the
rights and licenses granted under this Agreement shall not extend to,
any rodent cell or rodent that is produced or developed by breeding a
Rodent Model with any rodent, other than another Rodent Model, that
contains a mutation in its genome which was generated or developed, or
whose progenitors include a rodent containing such mutation which was
generated or
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
developed, through use of any product or process covered by a Valid
Claim of the Patent Rights.
1.15 "Third Party" shall mean any person or entity other than
Lexicon, Lexicon's Affiliates, Deltagen and Deltagen's Affiliates.
1.16 "Valid Claim" shall mean a claim of an issued and
unexpired patent which has not been [*].
2. Grant of Sublicense and Covenants Not to Xxx.
2.1 Subject to the terms and conditions of this Agreement,
Lexicon hereby grants to Deltagen and its Affiliates, during the term of
this Agreement, a worldwide, nonexclusive right and sublicense under the
Patent Rights in the Field of Use to make, breed and use Rodent Models
and Progeny. Deltagen and its Affiliates shall have no right to grant
any sublicense under the Patent Rights. Nothing in this Agreement shall
be construed to confer upon Deltagen or its Affiliates any rights under
the Patent Rights outside the Field of Use. Notwithstanding the
foregoing, the rights and sublicense granted under this Section 2.1
shall not extend to the following (the "Excluded Fields"):
(a) the sale of any Rodent Model or Progeny (for
purposes of which "sale" means the transfer of a Rodent Model or
Progeny for consideration under an agreement entered into after
the use of the methods claimed by the Patent Rights to create
such Rodent Model or Progeny; [*];
(b) the use of any Rodent Model or Progeny for
purposes of contract testing services (for purposes of which
"contract testing services" means [*]; and
(c) the generation, development and use of (i) [*].
[*].
2.2 Deltagen and its Affiliates shall have the right to
transfer Rodent Models and Progeny to (i) Academic Collaborators, (ii)
Deltagen Corporate Partners and (iii) Deltagen Fee-For-Service
Customers, in each case subject to the terms of this Section 2.2. Any
such transfer shall be made pursuant to a material transfer agreement or
other agreement containing terms relating to the transfer of such
material that expressly (i) prohibits the use of such Rodent Models and
Progeny thereof for any purpose other than use in the Field of Use and
(ii) prohibits the transfer of such Rodent Models or Progeny thereof by
such Academic Collaborator, Deltagen Corporate Partner or Deltagen
Fee-For-Service Customer to any Third Party; provided that [*].
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
2.3 Subject to the terms of this Agreement, Lexicon and its
Affiliates shall not assert or enforce against Deltagen or its
Affiliates any claims of an issued patent (other than the patents
included in the Patent Rights) now owned or hereafter acquired or
obtained by Lexicon or its Affiliates, to [*] to the extent, but only to
the extent, any such assertion or enforcement would, absent a license
from Lexicon or its Affiliates, prevent Deltagen or its Affiliates from
[*]. Nothing herein shall be deemed to restrict the right of Lexicon and
its Affiliates to assert or enforce against Deltagen or its Affiliates
any claims of an issued patent to any product or process for generating
or developing transgenic rodent cells or rodents using gene trapping.
2.4 Subject to the terms of this Agreement, Deltagen and its
Affiliates shall not assert or enforce against Lexicon or its Affiliates
any claims of an issued patent now owned or hereafter acquired or
obtained by Deltagen or its Affiliates, to [*], to the extent, but only
to the extent, any such assertion or enforcement would, absent a license
from Deltagen or its Affiliates, prevent Lexicon or its Affiliates from
[*]. Nothing herein shall be deemed to restrict the right of Deltagen
and its Affiliates to assert or enforce against Lexicon or its
Affiliates any claims of an issued patent to any product or process for
generating or developing transgenic rodent cells or rodents using gene
trapping.
2.5 Deltagen and its Affiliates shall use reasonable, good
faith efforts to obtain the agreement of its Academic Collaborators,
Deltagen Corporate Partners and Deltagen Fee-For-Service Customers not
to assert or enforce (and to use reasonable, good faith efforts to
obtain the agreement of their respective Academic Collaborators and
Product Collaborators not to assert or enforce) against Lexicon or its
Affiliates any claims of an issued patent, now owned or hereafter
acquired or obtained by any such party (including, without limitation,
any issued patent under which Deltagen has granted exclusive rights to
such party), (i) to any Rodent Model or use thereof or (ii) arising in
whole or in part from the use of any Rodent Model, Progeny or Phenotypic
Data, to the extent, but only to the extent, any such assertion or
enforcement would, absent a license from such party, prevent Lexicon
and/or its Affiliates from:
(a) using, for research purposes only (including,
without limitation, research directed toward the discovery,
development and commercialization of human therapeutic and
diagnostic products) any [*]; or
(b) discovering, developing or commercializing any
human therapeutic or diagnostic products derived from such
research use.
Nothing herein shall be deemed to restrict the rights of Deltagen's
Academic Collaborators, Deltagen Corporate Partners or Deltagen
Fee-For-Service Customers to assert or enforce against Lexicon or its
Affiliates any claims of an issued patent to the composition of matter
of any Product or the use of any Product as a human therapeutic or
diagnostic.
2.6 Except as expressly provided in this Agreement, under no
circumstances shall a party hereto, as a result of this Agreement,
obtain any ownership interest in or other right to or under any
technology, know how, patents, patent applications, gene or
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
genomic xxxxxxxx xxxx or information, products, or biological materials
of the other party, including items owned, controlled or developed by,
or licensed to, the other party, at any time pursuant to this Agreement.
3. Consideration for License; Royalty Obligations.
3.1 For the rights, privileges and sublicense granted under
the Patent Rights hereunder, Deltagen shall grant Lexicon the rights and
licenses specified in the DeltaBase Agreement.
3.2 Deltagen shall pay to the Foundation and to GenPharm for
payment to the Netherlands Cancer Institute ("NCI") the royalties
specified in the agreements attached hereto as Exhibit B and Exhibit C,
respectively, in accordance with the terms of such agreements.
3.3 Deltagen shall pay Lexicon a royalty of [*] Dollars
($[*]) for each line of Rodent Models made for a Third Party under a
Fee-For-Service Agreement, payable within [*] days after the end of each
calendar quarter for each such line of Rodent Models completed during
such quarter. For purposes of the foregoing, a line of Rodent Models
shall be deemed to be completed upon the earlier of (i) the development
of chimeras for such line of Rodent Models or (ii) the first transfer to
such Third Party of Rodent Models or materials related to such Rodent
Model (e.g., targeting vectors).
3.4 Within [*] days after each calendar quarter, Deltagen
shall furnish to Lexicon a written quarterly report showing: (i) the
number of lines of Rodent Models made by Deltagen and its Affiliates
during the reporting period, separately specifying the number of lines
of Rodent Models made under Fee-For-Service Agreements, and the
calculation of royalties under Sections 3.2 and 3.3 and (ii) the
royalties paid or payable with respect thereto. If no royalty or payment
is due for any royalty period hereunder, Deltagen shall so report.
Deltagen shall keep complete and accurate records in sufficient detail
to properly reflect its activities under this Agreement and to enable
the royalties payable hereunder to be determined. Information disclosed
by Deltagen to Lexicon pursuant to this Section 3.4 will be treated as
confidential information.
3.5 Upon the written request of Lexicon, Deltagen shall
permit an independent certified public accountant selected by Lexicon
and acceptable to Deltagen, which acceptance shall not be unreasonably
withheld, to have access, at reasonable times and during normal business
hours, to such records of Deltagen as may be reasonably necessary to
verify the accuracy of the reports described herein, in respect of any
fiscal year ending not more than [*] months prior to the date of such
request. Lexicon and Deltagen shall use commercially reasonable efforts
to schedule all such verifications within [*] days after Lexicon makes
its written request. All such verifications shall be conducted not more
than once in, or with respect to, each calendar year. The report of
Lexicon's independent certified public accountant shall be made
available to both parties. Subject to Deltagen's rights under Section
10, in the event Lexicon's independent certified public accountant
concludes that additional royalties were owed to Lexicon for such
period, the additional royalty shall be paid by Deltagen within [*] days
of the date
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
Lexicon delivers to Deltagen such independent certified public
accountant's written report so concluding, unless such report contains
manifest error. In the event Lexicon's independent certified public
accountant concludes that there was an overpayment of royalties to
Lexicon during such period, the overpayment shall be repaid by Lexicon
within [*] days of the date Lexicon received such independent certified
public accountant's written report so concluding, unless such report
contains manifest error. The fees charged by such independent certified
public accountant shall be paid by Lexicon unless such audit discloses
an underpayment of more than [*] percent ([*]%) of the amount due under
this Agreement for the period in question, in which case Deltagen will
bear the full cost of such audit. Lexicon agrees that all information
subject to review under this Section 3.5 is confidential and that
Lexicon shall cause its independent certified public accountant to
retain all such information in confidence. Lexicon's independent
certified public accountant shall only report to Lexicon as to
information required to be reported under Section 3.4, including the
computation of the royalties and other payments due to Lexicon under
this Agreement, and shall not disclose to Lexicon any other information
of Deltagen.
3.6 To the extent that payments due under this Agreement are
not paid within the specified time period and are not timely, such
outstanding sums shall accrue interest from the date due, to be computed
for such unpaid amount on the last day of each calendar quarter
(accruing quarterly) at the prime rate as published in the Wall Street
Journal for the last day of the calendar quarter plus one and a half
percent (1.5%) (or the highest interest rate permissible under
applicable law, whichever is lower), compounded on an annual basis.
3.7 Payments to be made by Deltagen to Lexicon under this
Agreement shall be payable in United States dollars and shall be paid by
check delivered to Lexicon at its principal office at The Woodlands,
Texas or bank wire transfer in immediately available funds to such bank
account in the State of Texas as may be designated in writing by Lexicon
from time to time.
3.8 Payment obligations under Sections 3.1 shall not apply
to Rodent Models made by Deltagen for Third Parties under
Fee-For-Service Agreements in effect as of June 30, 2001; provided that
any extension or expansion of any such Fee-For-Service Agreement
(including, without limitation, any amendment that has the effect of
increasing the number of Rodent Models that may be made under any
Fee-For-Service Agreement) that is made or entered after June 30, 2001
shall be deemed to be a new Fee-For-Service Agreement with respect to
which such payment obligations shall apply. Deltagen represents and
warrants that, as of the Effective Date, Deltagen Fee-For-Service
Customers have the right to request no more than 16 lines of Rodent
Models in addition to the lines of Rodent Models that have already been
commenced by Deltagen prior to the Effective Date; provided that the
parties acknowledge and agree that any breach of the foregoing
representation and warranty shall not be deemed a material breach or
default for purposes of Section 6.2, and that Lexicon's remedy for any
such breach shall be the payment by Deltagen of the royalties specified
in Section 3.3 with respect to the lines of
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
Rodent Models made for such Deltagen Fee-For-Service Customers in excess
of the number of lines specified in such representation and warranty.
4. Infringement of Patent Rights. Lexicon shall have the exclusive
right, but shall not be obligated, to prosecute any infringements of the Patent
Rights. The total cost of any such infringement action commenced or defended by
Lexicon shall be borne by Lexicon, and Lexicon shall keep any recovery or
damages for past infringement derived therefrom.
5. Indemnification and Limitation of Liability.
5.1 Deltagen shall at all times during the term of this
Agreement and thereafter, indemnify, defend and hold Lexicon and its
directors, officers, employees and Affiliates harmless from and against
all claims, proceedings, demands, liabilities and losses of any kind
whatsoever that are brought by a Third Party, including legal expenses
and reasonable attorneys' fees, arising out of, based upon or resulting
from (i) the use of the Patent Rights by Deltagen, its Affiliates,
Academic Collaborators or Corporate Partners hereunder, (ii) the use of
Rodent Models or Progeny by Deltagen, its Affiliates, Academic
Collaborators or Corporate Partners or (iii) the use, testing, marketing
or sale of Products, except to the extent that such claims, proceedings,
demands, liabilities and losses result from Lexicon's gross negligence
or willful misconduct.
5.2 Lexicon warrants to Deltagen that: (i) Lexicon has the
lawful right to grant the rights and licenses under the Patent Rights
set forth in this Agreement; (ii) Lexicon's grant of such license does
not require the approval or consent of any person or entity which has
not already been obtained; and (iii) Lexicon's entering into of this
Agreement will not breach any agreement to which Lexicon is party.
EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LEXICON AND
ITS DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR
IMPLIED, INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, VALIDITY OF PATENT CLAIMS, ISSUED OR
PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT
DISCOVERABLE. NOTHING IN THIS AGREEMENT SHALL BE CONSTRUED AS A
REPRESENTATION MADE OR WARRANTY GIVEN BY LEXICON THAT THE PRACTICE BY
DELTAGEN OF THE SUBLICENSE RIGHTS GRANTED HEREUNDER SHALL NOT INFRINGE
THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL LEXICON OR ITS
DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL
OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR
INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WITHER LEXICON SHALL
BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF
THE POSSIBILITY OF THE FOREGOING.
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
6. Term and Termination.
6.1 This Agreement shall become effective on the Effective
Date and, unless terminated earlier, shall remain in full force and
effect until the expiration of the last to expire of any Valid Claim
included in the Patent Rights.
6.2 Subject to the provisions of Section 10, upon any
material breach or default of this Agreement, the Settlement Agreement
or the DeltaBase Agreement by Deltagen or any of its Affiliates, or by
Lexicon or any of its Affiliates, the party not in default shall have
the right to terminate this Agreement and the rights, privileges and
licenses granted hereunder, effective on [*] days' written notice,
unless the other party shall have cured any such material breach or
default prior to the expiration of such [*] day period. Notwithstanding
the foregoing, the rights and licenses granted by Lexicon to Deltagen
pursuant to Sections 2.1 and 2.2 to breed and use Rodent Models and
Progeny shall survive any such termination of this Agreement with
respect to lines of Rodent Models made by Deltagen prior to such
termination and Progeny thereof, subject to Deltagen's continued
compliance with its obligations under this Agreement with respect
thereto; provided that, if this Agreement is terminated by Lexicon, such
licenses shall terminate with respect to any lines of Rodent Models to
which a breach or, default giving rise to such right of termination
directly relate; and provided, further, that, following such
termination, Deltagen shall have no further right or license under the
Patent Rights to make Rodent Models.
6.3 If either party shall liquidate, dissolve, file a
voluntary petition in bankruptcy, be adjudicated a bankrupt, make a
general assignment for the benefit of creditors, admit in writing that
it is insolvent or fail to discharge within [*] days an involuntary
petition in bankruptcy filed against it, this Agreement shall terminate
upon written notice by the other party.
6.4 No termination of this Agreement shall be construed to
release either party from any obligation that matured prior to the
effective date of such termination. The provisions of Sections 2.6, 4,
5, 6.4, 8, 9, 10 and 12 shall survive the termination or expiration of
this Agreement. The provisions of Section 2.3 shall survive the
termination or expiration of this Agreement unless this Agreement is
terminated by Lexicon pursuant to Section 6.2 or 6.3. The provisions of
Sections 2.4 and 2.5 shall survive the termination or expiration of this
Agreement unless this Agreement is terminated by Deltagen pursuant to
Section 6.2 or 6.3.
7. Export Controls. Deltagen acknowledges that it is subject to
United States laws and regulations controlling the export of technical data,
computer software, laboratory prototypes and other commodities (including the
Arms Export Control Act, as amended and the United States Department of Commerce
Export Administration Regulations). The transfer of such items may require a
license from the relevant agency of the United States Government and/or written
assurances by Deltagen that Deltagen shall not export data or commodities to
certain foreign countries without prior approval of such agency. Lexicon does
not represent that a license shall not be required nor that, if required, it
shall be issued.
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
8. Confidentiality of Terms; Publicity. The terms of this Agreement
shall be treated as confidential and shall not be disclosed to anyone except for
the parties' respective employees, consultants, agents and attorneys assisting
in the review and negotiation of this Agreement who have a need to know the
terms of this Agreement and have an obligation to keep such terms confidential,
or such other attorneys or agents who are performing due diligence on either
party and who are under an implied obligation of confidentiality, without the
written permission of the other party; provided that each party may disclose
that Deltagen has obtained a sublicense under the Patent Rights hereunder.
Notwithstanding the foregoing, each party may disclose such terms as may be
requested or required pursuant to interrogatories, requests for information or
documents; subpoena, civil investigative demand issued by a court or
governmental agency or as otherwise required by law; provided, however, that
such party shall provide prompt notice to the other party of such request or
requirement, giving (where practicable) the other party sufficient advance
notice to permit it to oppose, limit or seek confidential treatment for such
disclosure. The parties have agreed upon a public announcement with respect to
the execution of this Agreement. If either party desires to release any other
public announcement relating to this Agreement, it shall first allow the other
party to approve in writing such proposed announcement; provided that such
approval shall not be unreasonably withheld or delayed.
9. Assignment. This Agreement may not be assigned or otherwise
transferred by either party without the consent of the other party; provided
that either party may, without such consent, assign its rights and obligations
under this Agreement (i) to any Affiliate or (ii) in connection with a merger,
consolidation or sale of substantially all of its assets to a Third Party;
provided, however, that such party's rights and obligations under this Agreement
shall be assumed by its successor in interest in any such transaction. Any
purported assignment in violation of the preceding sentence shall be void. Any
permitted assignee shall assume all obligations of its assignor under this
Agreement.
10. Dispute Resolution.
10.1 If any controversy or claim should arise under this
Agreement, the matter shall be referred to an individual designated by
the Chief Executive Officer (or the equivalent position) of Lexicon and
an individual designated by the Chief Executive Officer (or the
equivalent position) of Deltagen (the "Representatives"), who will
attempt in good faith to resolve such controversy or, claim promptly by
negotiations. If the matter has not been resolved within [*] days of the
first meeting of the Representatives (which period may be extended by
mutual agreement) concerning such matter, such matter shall be resolved
by binding arbitration in accordance with Section 10.2.
10.2 Any and all claims, disputes or controversies arising
under, out of, or in connection with this Agreement that are not
resolved by the parties under Section 10.1 shall be resolved by final
and binding arbitration in [*] under the Commercial Arbitration Rules of
the American Arbitration Association as then in effect. The arbitrators
shall have no power to add to, subtract from or modify any of the terms
or conditions of this Agreement or to award punitive damages. Any award
rendered in such arbitration may be enforced by either party in any
court of competent jurisdiction.
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
10.3 Notwithstanding the foregoing, nothing in this Section
shall be construed to, waive any rights or timely performance of any
obligations existing under this Agreement.
11. Notices and Other Communications. Any notice or other
communication pursuant to this Agreement shall be sufficiently made or given on
the date of mailing if sent to such party by certified first class mail, return
receipt requested, postage prepaid, addressed to it at its address below or as
it shall designate by written notice given to the other party:
In the case of Deltagen:
Deltagen, Inc.
000 Xxx Xxxx
Xxxxxxx Xxxx, XX 00000-0000
Attention: President
Copy to: General Counsel
In the case of Lexicon:
Lexicon Genetics Incorporated
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxx Xxxxxxxxx, Xxxxx 00000
Attention: President
Copy to: Vice President, Intellectual Property
12. Miscellaneous.
12.1 Governing Law. All disputes arising out of or related to
this Agreement, or the performance, enforcement, breach or termination
hereof, and any remedies relating thereto, shall be construed, governed,
interpreted and applied in accordance with the laws of the State of
Delaware, U.S.A., except that questions affecting the construction and
effect of any patent shall be determined by the law of the country in
which the patent shall have been granted.
12.2 Entire Agreement. The parties hereto acknowledge that
this Agreement sets forth the entire Agreement and understanding of the
parties hereto as to the subject matter hereof, and shall not be subject
to any change or modification except by the execution of a written
instrument signed by the parties.
12.3 Severability. The provisions of this Agreement are
severable, and in the event that any provisions of this Agreement shall
be determined to be invalid or unenforceable under any controlling body
of the law, such invalidity or unenforceability shall not in any way
affect the validity or enforceability of the remaining provisions
hereof. The parties shall thereafter in good faith amend this Agreement
to provide for an acceptable provision to replace such invalid or
unenforceable provision.
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
12.4 No Waiver. The failure of either party to assert a right
hereunder or to insist upon compliance with any term or condition of
this Agreement shall not constitute a waiver of that right or excuse a
similar subsequent failure to perform any such term or condition by the
other party.
12.5 No Trademark Rights. Except as otherwise provided herein
or agreed to in advance in writing, no right, express or implied, is
granted by this Agreement to a party to use in any manner the names
"Lexicon" or "Deltagen," or any other trade name or trademark of a party
or the names of any employees thereof, for any purpose.
12.6 Captions. The captions to this Agreement are for
convenience only, and are to be of no force or effect in construing or
interpreting any of the provisions of this Agreement.
12.7 Counterparts. This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
12.8 Independent Contractors. The relationship between
Lexicon and Deltagen is that of independent contractors. Lexicon and
Deltagen are not joint venturers, partners, principal and agent, master
and servant, employer or employee, and have no other relationship other
than independent contracting parties. Lexicon shall have no power to
bind or obligate Deltagen in any manner, other than as is expressly set
forth in this Agreement. Likewise Deltagen shall have no power to bind
or obligate Lexicon in any manner other than as is expressly set forth
in this Agreement.
[THIS SPACE IS INTENTIONALLY LEFT BLANK]
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of
the Effective Date.
"DELTAGEN"
DELTAGEN, INC.
By:
------------------------------------------
For: Xxxxxxx Xxxxxxxx, Ph.D.
President and Chief Executive Officer
"LEXICON"
LEXICON GENETICS INCORPORATED
By:
------------------------------------------
Xxxxxx X. Xxxxx, M.D., Ph.D.
President and Chief Executive Officer
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
EXHIBIT A
PATENT RIGHTS
POSITIVE-NEGATIVE SELECTION
1. U.S. Patent No. 5,464,764 issued November 7, 1995 entitled
"Positive-Negative Selection Methods and Vectors"
2. U.S. Patent No. 5,487,992 issued January 30, 1996 entitled "Cells and
Non-Human Organisms Containing Predetermined Genomic Modifications and
Positive-Negative Selection Methods and Vectors for Making Same"
3. U.S. Patent No. 5,627,059 issued May 6, 1997 entitled "Cells and
Non-Human Organisms Containing Predetermined Genomic Modifications and
Positive-Negative Selection Methods and Vectors for Making Same"
4. U.S. Patent No. 5,631,153 issued May 20, 1997 entitled "Cells and
Non-Human Organisms Containing Predetermined Genomic Modifications and
Positive-Negative Selection Methods and Vectors for Making Same"
5. U.S. Patent No. 6,204,061 issued March 20, 2001 entitled "Cells and
Non-Human Organisms Containing Predetermined Genomic Modifications and
Positive-Negative Selection Methods and Vectors for Making Same"
ISOGENIC DNA
U.S. Patent No. 5,789,215 issued August 4, 1998 entitled "Gene Targeting in
Animal Cells Using Isogenic DNA Constructs"
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 24b-2 of the Securities Exchange Act of 1934, as
amended.
