Exhibit 10.3
MALDI-TOF Mass Spectrometry
Collaboration and OEM Agreement
between
PerkinElmer Instruments LLC and its Affiliates ("PKI")
and
Bruker Daltonics Inc. and its Affiliates ("BDAL")
1. BACKGROUND
o PKI wishes to offer and distribute a MALDI-TOF system to its North
American pharmaceutical, biotech, food and chemical industry customers, as
well as to certain international markets by Q2-2000.
o PKI requires a high-quality MALDI-TOF for a diverse range of customer
applications from a supplier with a strong reputation.
o PKI has particularly strong distribution channels into pharmaceutical and
food QA/QC, pharma/biotech and chemical manufacturing, pharma/biotech drug
development, pre-clinical and clinical trials.
o PKI also has international distribution strength in certain markets where
BDAL is not well established, e.g. Latin America, Italy, Eastern Europe,
Israel, India;
o If PKI rolls out a MALDI-TOF, it intends to sell such a product in
significant numbers. Eventually, PKI wishes to sell such a product
globally.
o Based on the performance, automation and quality of its systems, BDAL has
recently become the leading MALDI-TOF company for high-end research
applications in proteomics, PKIs, and drug discovery.
1
o BDAL has significant MALDI-TOF sales into universities, medical schools,
government research labs, and pharma/biotech research and drug discovery
labs.
o BDAL presently does not have strong distribution into industrial QA/QC,
manufacturing, clinical trials, and drug development, and BDAL does not
have complete international distribution coverage
o At Xxxxxxx 0000, XXXX will introduce a high-performance, bench-top,
PC/NT-driven MALDI-TOF system called OmniFLEXT(TM). This new product has
very good performance/price ratio compared to otherbench-top MALDI-TOFs on
the market. It is arguably "the first bench-top MALDI-TOF worth buying".
The OmniFLEX also features an attractive industrial design, and a well
thought-out intuitive GUI.
2. OBJECTIVE
PKI and BDAL wish to enter into a strategic alliance in MALDI-TOF mass
spectrometry. In particular, PKI and BDAL wish to collaborate on the
distribution of BDAL's linear bench-top OMNIFLEXTm MALDI-TOF system via PKI's
international distribution system.
3. TERM AND NON-COMIPETE CLAUSE
Once signed by both parties this Agreement shall initially be valid until
Dec. 31, 2001 ("Phase I"). If both PKI and BDAL are satisfied with Phase I of
this Agreement, and if and when the numerical targets agreed to herein for Phase
I have been reached, then this Agreement shall be automatically extended to Dec.
31st , 2003 ("Phase 2"). Thereafter, this Agreement is renewable for additional
two-year periods by mutual written consent.
2
During the Term of this Agreement, and, except as described below, for one
(1) year following the expiration or termination of this Agreement, PKI will not
develop, manufacture, offer to sell, sell or deliver any other benchtop
MALDI-TOF system comparable to the OmniFLEX, i.e. in the selling price range
between $80,000 to $140,000, and not built by BDAL, unless BDAL cannot deliver
systems without sustained, substantial and non-solvable delivery or quality
problems which negatively impact PKI's ability to sell the OmniFLEX.
Any MALDI-TOF system manufactured and/or sold by Genomic Solutions Inc. as
part of a complete proteomics solution (presently called Investigator(TM)
proteomics solution) via PKI or other sales channels shall be specifically
excluded from this non-compete clause. Also, this non-compete clause shall not
apply if PKI acquires an instrument company with a MALDI-TOF product line if
that line represents less than 30% of the acquired company's business. Finally,
this non-compete clause shall not apply if BDAL is not willing to sell and
deliver OmniFLEX systems to PKI, for example by refusing to extend this
Collaboration into a Phase 2 (see below), even though PKI may have achieved the
minimum quantities of Phase I (see below).
4. PRODUCT DEFINITION & CO-LABELLING
The mass spectrometer that may be resold by PKI as an authorized
OEM-dealer for BDAL is a linear OMNIFLEX(TM) MALDI-TOF, as described in
Attachment A, which will meet the specifications contained in Attachment B. PKI
may also resell additional BDAL MALDI-TOF accessories, such as MAP(TM) MALDI
AutoPrep robots, AnchorChip(TM) high-sensitivity targets, various
post-processing software packages, and MALDI-TOF consumables (collectively the
"Accessories"), which are described on
3
BDAL's standard U.S. MALDI-TOF price list from time to time. The linear OmniFLEX
system to be sold by PKI will be co-labeled with both, equally-sized PKI and
BDAL decals on the system.
If, during the term of this Agreement BDAL introduces a system that
replaces or supersedes the OmniFLEX or introduces new Accessories, BDAL will
sell such products to PKI under the terms of this Agreement.
PKI is specifically not authorized to sell the reflector version of the
OmniFLEX. If a research customer absolutely needs a reflector OmniFLEX system
from the beginning, then PKI will pass this customer lead on to BDAL. The only
exception to this policy is that PKI upon specific request by its linear
OmniFLEX customer, may sell the reflector upgrade to PKI linear OmniFLEX
customers who have accepted their PKI-purchased linear OnmiFLEX more than twelve
(12) months before those customers request an upgrade. The transfer price to PKI
will be the BDAL U.S. list price minus a 10% finders' fee for PKI. BDAL will
install the reflector upgrade, and provide a limited 90-day warranty on the
reflector upgrade. Moreover, PKI agrees not to incentivize its sales force or
product manager for reflectron upgrades sold via PKI to its customer base of
linear OmniFLEX customers.
For customer leads passed from PKI to BDAL which result in an accepted
purchase order for a reflectron OmniFLEX, or a reflectron upgrade, to BDAL, BDAL
will pay PKI a 5% finder's fee of the purchase order net amount, provided that
PKI played a significant and substantial role in assisting BDAL with the systems
sale (i.e. this would apply if a joint sales call took place, but it would not
apply for passing on lists of potential customers, unqualified general leads,
etc.).
4
It is understood that BDAL itself will also continue to sell the OmniFLEX,
including a version with an optional reflector, and nothing contained in this
Agreement shall prevent BDAL from selling or distributing its OmniFLEX system
also via additional third-party distribution channels in the future.
PKI and BDAL agree that on-time deliveries and high quality are important
for the success of this Collaboration. If repeated substantially late deliveries
and major quality problems arise, PKI and BDAL will try to resolve these issues
mutually. If BDAL cannot deliver OmniFLEX systems to PKI without sustained,
substantial and non-solvable delivery or quality problems which negatively
impact PKI's ability to sell the OmniFLEX, then PKI can terminate this Agreement
with one hundred twenty (120) days written notice, including a ninety (90) day
period during which BDAL is afforded an opportunity to fix the delivery or
quality problems.
5. INTRODUCTION AND PHASE 1
PKI and BDAL intend to announce their strategic alliance and
simultaneously introduce the OmniFLEX at Pittcon 2000 on March 13th, 2000. BDAL
will loan an OmniFLEX shell or system to PKI for Pittcon 2000. If PKI can
provide paint color requests and decals to BDAL very soon, then BDAL will make a
best effort to have a co-labeled OmniFLEX shell or system in the PKI selected
colors at the PKI booth at Pittcon.
This strategic alliance will be announced in a joint mutually agreeable
press release, which will initially be drafted by PKI.
5
For Phase 1 of this Agreement until Dec. 31st, 2001, PKI with the signing
of this Agreement places a firm, fixed minimum order with BDAL for [*](1)
systems to be delivered to PKI at a minimum rate of [*] per month for
July-October 2000, and going up to [*] per month for the thirteen month period
between November 2000 and November 2001, for a minimum total of [*] systems.
This order shall be accompanied by a non-refundable down-payment of forty
percent (40%) of the total order value, i.e. [*], which will be credited against
actual deliveries of OmniFLEX systems to PKI. Alternatively, PKI may opt to pay
a cash down-payment of forty percent (40%) for the first [*] units in the amount
of [*], plus an irrevocable letter of credit acceptable to BDAL for the
down-payment of forty percent (40%) on the remaining [*] units in the amount of
[*], with both amounts to be credited against actual deliveries of OmniFLEX
systems to PKI. The letter of credit will provide that, if PKI fails to meet its
commitment to purchase and take delivery of systems in accordance with the
agreed upon monthly delivery rate, BDAL shall have the right, after giving
thirty (30) days written notice to PKI, to call the letter of credit. The letter
of credit will be reduced quarterly on the last business day of the quarter in
an amount equal to the value of the units delivered to PKI during such quarter.
Should PKI determine that it needs more systems during Phase 1, then PKI
will advise BDAL as soon as practical on forecasting for additional systems
deliveries. Should PKI take delivery and pay for all [*] systems (or optionally
[*] systems, see below) ordered in Phase 1 well before Dec. 31st, 2001, then
Phase 2 will begin earlier, i.e.
----------
(1) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
6
whenever PKI has taken delivery and paid for the first [*](2) systems (or
optionally [*] systems, see below).
Xxxxxx Xxxxx 0, PKI may re-sell the co-labeled OmniFLEX MALDI-TOF
o in the US, Canada and Mexico into
(i) the for-profit food and agriculture industries for any application,
including but not limited to research, production, product safety and or
distribution;
(ii) the for-profit chemical, petroleum and polymer industries for
applications involving
(a) the characterization of raw materials, intermediates and
products used in the production and distribution of synthetic
polymers, bulk chemicals, specialty chemicals, and petrochemicals,
and
(b) the development of analytical methods used to support the
characterizations describe in (ii)(a) above; and
(c) research laboratories only as far as these research labs are
involved in methods development for (ii)(a) and (ii)(b) above;
(iii) QA/QC, manufacturing, drug development and clinical trials in the
for-profit pharmaceutical and biotech industry for applications
specifically involving
(a) the characterization of any molecular components integral to the
manufacture and distribution of commercial products, and
(b) the characterization of any molecular component integral to the
development and evaluation of pharmacologically active compounds for
any
----------
(2) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
7
development phase after the identification of lead candidate
compounds, including characterization of polypeptides,
oligonucleotides, and carbohydrates synthesized within core
laboratories when these compounds are used as enabling tools for any
development phase after the drug discovery phase and the
identification of lead compounds.
In Phase 1, if PKI increases the minimum order from [*](3) to [*] systems
over eighteen (18) months, PKI shall have the option of adding the following
countries and fields-of-use to its authorized reselling territory:
o Central and South America to all potential customers
o Italy, Greece, Turkey, Eastern Europe, Israel, and India to all potential
customers.
In Phase 1, PKI is not permitted to re-sell the OmniFLEX into any other
country, and PKI is not permitted to re-sell the OmniFLEX in the U.S. and Canada
into pharmaceutical/biotech laboratories performing drug discovery, including
target research and discovery of new lead compounds; into chemical/polymer
research labs, except as described in (ii)(c) above; or into academic,
non-profit or governmental customer accounts.
Xxxxxx Xxxxx 0, XXXX will be responsible for installation and warranty
service of the co-labeled OmniFLEX in the U.S., Canada and Mexico. If PKI elects
to add Central and South America, Italy, Greece, Turkey, Eastern Europe, Israel,
and India, then BDAL will initially be responsible for the installation, but PKI
will participate in the installation in
----------
(3) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
8
order to train its local technicians, and PKI will be responsible for the
post-installation warranty service. BDAL will provide 1-2 weeks of installation
and service training to PKI at mutually agreeable times at BDAL's Massachusetts
factory.
At the beginning of Xxxxx 0, XXXX will generally assist PKI with
transferring marketing materials (e.g. Powerpoint presentations, brochures,
flyers, manual, advertisements) to PKI at no charge, except for direct printing
cost. BDAL retains all rights, including its copyright on these materials, but
PKI is authorized to use these materials as co-labeled materials for its own
marketing purposes, provided that any material changes in content must be
approved in writing by BDAL. However, PKI is responsible for its own
advertising, trade show and similar costs. If PKI develops additional marketing
materials (e.g. application notes, product notes, photos, etc.), PKI will
provide these materials to BDAL at no charge, except for direct printing cost.
PKI retains all rights, including its copyright, and BDAL will obtain prior
written permission from PKI if BDAL makes material changes in content. BDAL has
the right to use the PKI materials as co-labeled materials for marketing
purposes.
6. CONTINUATION AND PHASE 2
If PKI reaches or exceeds the minimum sales goal of [*](4) systems (or
optionally [*] systems) in Phase 1, then this OEM distribution model is expanded
globally for Phase 2, starting Jan. 1st, 2002, and until this Agreement is
terminated. If at the end of Phase 1 the minimum sales goal of [*] systems (or
optionally [*] systems) has not been reached
----------
(4) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
9
by PKI, then this Agreement can either be terminated by either party hereto, or
PKI and BDAL may mutually agree to extend Phase 1 by another 2 years.
At least 4 months prior to the beginning of the two-year Phase 2, as well
as at least 4 months prior to the beginning of any subsequent 2-year Phase 2
agreement period, PKI will order a two-year minimum order to be mutually agreed
upon, but in any case greater than [*](5) systems per month, to be delivered to
PKI over 2 years at a minimum rate of greater than [*] systems per month. Unless
the parties otherwise mutually agree, this two-year order shall be accompanied
with a non-refundable down-payment of forty percent (40%) of the total order
value, which will be credited against actual deliveries of OmniFLEX systems to
PKI.
Alternatively, PKI may opt to pay a cash down-payment of forty percent
(40%) for the first third (one 3rd), plus an irrevocable letter of credit
acceptable to BDAL for the down-payment of forty percent (40%) on the remaining
two thirds (two 3rds), with both amounts to be credited against actual
deliveries of OmniFLEX systems to PKI. The letter of credit will provide that,
if PKI fails to meet its commitment to purchase and take delivery of systems in
accordance with the agreed upon monthly delivery rate, BDAL shall have the
right, after giving thirty (30) days written notice to PKI, to call the letter
of credit The letter of credit will be reduced quarterly on the last business
day of the quarter in an amount equal to the value of the units delivered to PKI
during such quarter.
----------
(5) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
10
Should PKI determine that it needs more systems during Phase 2, then PKI
will advise BDAL as soon as practical on forecasting for additional systems
deliveries.
Xxxxxx Xxxxx 0 and subsequently, PKI may re-sell the OmniFLEX MALDI-TOF
o in the U.S., Canada and Mexico into
(i) the for-profit food and agriculture industries for any application,
including but not limited to research, production, product safety and or
distribution;
(ii) the for-profit chemical, petroleum and polymer industries for
applications involving
(a) the characterization of raw materials, intermediates and
products used in the production and distribution of synthetic
polymers, bulk chemicals, specialty chemicals, and petrochemicals,
and
(b) the development of analytical methods used to support the
characterizations describe in (ii)(a) above; and
(c) research laboratories only as far as these research labs are
involved in methods development for (ii)(a) and (ii)(b) above;
(iii) QA/QC, manufacturing, drug development and clinical trials in the
for profit pharmaceutical and biotech industry for applications
specifically involving
(a) the characterization of any molecular components integral to the
manufacture and distribution of commercial products, and
(b) the characterization of any molecular component integral to the
development and evaluation of pharmacologically active compounds for
any development phase after the identification of lead candidate
compounds, including characterization of polypeptides,
oligonucleotides, and
11
carbohydrates synthesized within core laboratories when these
compounds are used as enabling tools for any development phase after
the drug discovery phase and the identification of lead compounds.
in such other countries and geography, which may be broader than
during Phase 1, and into country-specific fields of use as will be
mutually agreed between the parties prior to the beginning of Phase
2, provided that the monthly minimum quantity of units will exceed
the two (2) units per month of Phase 1 by a mutually agreeable
amount.
In Phase 2 and subsequently, PKI is not permitted to re-sell the OmniFLEX
globally into pharmaceutical/biotech laboratories performing drug discovery,
including target research and discovery of new lead compounds; into
chemical/polymer research labs, except as described in (ii)(c) above, or into
academic, non-profit or governmental customer accounts. During Phase 2, PKI will
be responsible for installation and warranty service of the co-labeled OmniFLEX
globally.
For post-warranty service, PKI and BDAL will adopt a two-layer service
strategy with front-line service support by PKI for straight-forward service
issues (e.g. subunit exchange, calibration, vacuum service, laser alignment,
software loading), and back-up BDAL service by factory-engineers for difficult
problems.
7. OEM PRICING AND VOLUME DISCOUNTS
Assuming that PKI herewith places a minimum order with BDAL for [*](6)
systems at the beginning of Phase 1, as discussed in section 5 above, and a
minimum order of [*]
----------
(6) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
12
systems at the beginning of the Phase 2 two-year period (or subsequent two-year
Phase 2 type periods), an OEM Discount of [*](7) shall apply, as long as BDAL is
responsible for installation and warranty service. "OEM Discount" is the
percentage discount off the U.S. list price given in Attachment A, which shall
be fixed for Phase 1, but which may increase or decrease in Phase 2 and
subsequently.
Specifically, for the minimum order of [*] systems under Phase 1, the OEM
transfer price per system to PKI shall be [*], as long as BDAL is responsible
for installation and warranty service.
Xxxxxx Xxxxx 0, and as long as PKI takes delivery of [*] OmniFLEX systems
from BDAL per month, PKI's OEM Discount for other MALDI-TOF accessories,
consumables and software will be [*] off BDAL's applicable U.S. list price, as
it may be in effect from time to time.
All pricing is understood as F.O.B. BDAL's factory in Billerica, USA, and
does not include import duty, or any country or local sales tax, VAT,
Mehrwertsteuer, or similar.
As part of this Agreement, PKI grants BDAL a [*] OEM discount on
digitizers purchased by BDAL from PKI Ortec division on minimum orders of [*]
units per order. BDAL forecasts that it will wish to purchase [*] Ortec
digitizers in 2000, and [*] Ortec digitizers in the year 2001, but this forecast
shall not be contractually binding.
----------
(7) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
13
For each OnmiFLEX system for which PKI provides the warranty service, the
OEM Discount is increased to [*](8). For each OmniFLEX system for which PKI
performs installation, acceptance and warranty service, the OEM Discount is
increased to [*].
The transfer prices above includes Windows-NT workstation (present
configuration: 000 XXx Xxxxxxx XX, 00" color monitor, 256MB RAM, >8 GB hard
disk, 1.44 MB floppy, CDR drive for data archival, Ethernet connection) and a HP
1100xi laser printer. Should PKI decide to supply the Windows-NT workstation and
the laser printer, then the transfer price for each OmniFLEX system is reduced
by $2,856.00. However, PKI needs to send each Windows-NT workstation to BDAL for
complete software loading and systems final test 4-6 weeks prior to the expected
factory shipment date.
8. DEVELOPMENT, DEMONSTRATION, TESTING (DDT) DISCOUNT
For OMNIFLEX systems purchased by PKI for internal applications
development, or internal customer demonstration purposes, the DDT discount shall
be [*] off BDAL's applicable U.S. price list. For Phase 1, the DDT transfer
price to PKI is [*]. PKI may not resell any systems purchased under this DDT
discount until the earlier of two years after delivery to PKI or the termination
or expiration of this Agreement, unless there is an imminent major model change,
which would make the DDT systems in PKI's demo inventory obsolete.
9. PAYMENT TERMS
For each ONPULEX system, the payment terms for each OEM system are as follows:
----------
(8) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
14
40% deposit N30 after order placement
30% N30 after delivery
30% N30 upon installation and acceptance
For the first [*](9) units in Phase 1, the 40% cash down payment will be
deemed to satisfy the requirement for a 40% deposit and 30% will be due N30
after delivery and 30% will be due N30 upon installation and acceptance. For the
remaining [*] units in Phase 1 subject to the letter of credit referred to in
Section 5, 70% will be due N30 after delivery and 30% N30 upon installation and
acceptance.
10. WARRANTY AND SERVICE
In Phase 1, the cost of customer site preparation according to BDAL's site
planning guide, or rigging and transportation of the system into the PKI or
customer lab, and consumables required for the installation, are not included in
the BDAL OEM price. If PKI or its customers require additional installations (in
addition to the one installation included in the normal transfer price of [*]),
then these additional installations will be billed by BDAL to PKJ, or its
customer, at normal posted BDAL service rates.
In Phase 1, each system price includes a one-year limited warranty under BDAL's
standard warranty terms, a copy of which is attached hereto as Attachment C. The
period of warranty is one year following demonstration of specifications, but in
any event not more than 13 months after delivery, if the beginning of
installation is delayed for no fault of BDAL. If, however, the installation and
acceptance of the system by BDAL takes longer than 2 weeks because the OmniFLEX
system does not meet its performance
----------
(9) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
15
specifications for reasons other than siting problems, then the one year
warranty shall run from acceptance of the instrument.
Warranty covers both parts and labor.
In Phase 2, or whenever PKI is responsible for the warranty service, PKI
will supply warranty service labor, be responsible for travel and related costs
of its service technicians, etc. However, BDAL provides to PKI a limited 13
months hardware back-up warranty, beginning upon shipment by BDAL to PKI or its
customer, for all submits which are not wear-and-tear items or consumables. This
BDAL hardware warranty is for parts-exchange or BDAL depot level parts repair
service only, and does not cover field service.
After the expiration of the one-year limited warranty (or at any time when
PKI needs expert assistance with installations or warranty service for which PKI
is responsible per this Agreement) PKI, or the final customer, may purchase
additional annual Maintenance Service Agreements (MSA) or per-call service from
the BDAL service organization in each country at normal MSA or per-call service
rates, posted in each country from time to time. If a customer requires
additional response time guarantees, or 24/7 coverage, then surcharges to the
normal BDAL MSA rates will apply.
BDAL will sell to PKI any spare parts needed by PKI to service the
OmniFLEX system as long as such system is manufactured and for an additional
seven (7) years after manufacture of such system is discontinued, or for an
additional seven (7) years after the
16
termination of this Agreement, whichever is earlier, at a discount level of
[*](10) off of BDAL's U.S. list price.
11. LICENSING OF BDAL'S MALDI-TOF IP FOR OEM SYSTEMS
With the purchase of each OMNIFLEX system, PKI and its final system's
customer receives a paid-up non-exclusive license for each particular OMNIFLEX
system to use this particular system under BDAL's intellectual property,
including all patents owned by or exclusively licensed by BDAL, for MALDI-TOF
mass spectrometry. Specifically, this license includes the Indiana University
patent portfolio on SVCF (Space-Velocity Correlation Focussing, by X. Xxxxxx et.
al.), and for BDAL OEM MALDI-TOF systems purchased by PKI, the royalty cost to
Indiana University will be paid by BDAL. The sublicense agreement in Attachment
D, which will be executed simultaneously as a separate agreement, is required
for this Agreement to become valid.
Each software package sold from BDAL to PKI comes with a single CPU
license which PKI may transfer to the final customer. Details of the software
licensing and sublicensing will be subject to BDAL's standard software licensing
policy, as it may be in effect from time to time.
12. OVERSIGHT BOARD
BDAL and PKI will each appoint two members to serve on an oversight board
("Oversight Board") with respect to this Agreement. Initially, the
representative of BDAL will be Xxxxx X. Xxxxxxx and Xxxxxx Xxxxxx, and the
representatives of PKI will be Dr. Xxxxxx Xxxxxxxxx and Xxxxxxx Xxxxxxx. The
oversight board will meet on a quarterly basis or as otherwise agreed upon by
BDAL and PKI to review the progress under the
----------
(10) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
17
Agreement, to review and approve modifications to this Agreement, and attempt in
good faith to resolve any disputes that may arise before the arbitration
provisions of Section 13.9 are invoked to resolve any dispute. The Oversight
Board will also meet, in person or by telephone, to address any issues relating
to the interpretation of the field of use language in Section 5 in order to
minimize customer confusion and resolve disputes as quickly as possible.
13. GENERAL TERMS AND CONDITIONS
13.1 The terms and conditions of this Agreement are confidential, and any press
releases will be done by mutual agreement.
13.2 Neither party acquires any intellectual property rights under this
Agreement except the limited rights necessary to carry out the purposes
set forth in paragraph 11.
13.3 Both parties shall adhere to all applicable laws, regulations and rules
relating to the export of technical data and equipment. PKI shall not
export or re-export any BDAL product or technical data to any proscribed
country listed in such applicable laws, regulations and rules unless
properly authorized.
13.4 This Agreement does not create any agency or partnership relationship.
13.5 All additions or modifications to this Agreement must be made in writing
and must be signed by both parties.
13.6 This Agreement constitutes the entire agreement between the parties with
respect to the subject matter hereof and it supersedes all prior
agreements, understandings and negotiations, written or oral, between the
parties with respect to the subject matter hereof, except for a previously
signed Confidentiality Agreement. Drafts to
18
this Agreement were exchanged and drafted by both parties hereto, and
accordingly this Agreement shall be considered jointly drafted.
13.7 This Agreement is made under, and shall be construed according to, the
laws of the Commonwealth of Massachusetts.
13.8 Neither party shall be liable to the other party for any special,
consequential or punitive damages, including, but not limited to, loss of
profits. The provisions of this section shall survive any termination of
this Agreement.
13.9 Neither party shall institute a proceeding in any court or administrative
agency to resolve a dispute between the parties before that party has
sought to resolve the dispute through direct negotiation with the other
party using the Oversight Board established in accordance with Section 12.
If the dispute is not resolved within thirty (30) days after a demand for
direct negotiation, the aggrieved party may then seek relief through
arbitration in Boston Massachusetts administered by the American
Arbitration Association under its commercial arbitration rules before a
single arbitrator; provided that persons eligible to be selected as the
arbitrator shall be limited to attorneys-at-law who have practiced law for
at least 15 years specializing in either general commercial litigation or
general corporate and commercial matters. The arbitrator shall base his or
her award on applicable laws and judicial precedent and include in such
award a statement of the reasons upon which the award is based. Judgement
on the award rendered by the arbitrator may be entered in any court having
jurisdiction thereof. Both parties will share the cost of the arbitration
equally. The arbitrator may not award special, consequential or punitive
damages.
19
14. NOTICE
All notices and other communications required by this Agreement shall be
deemed duly given when deposited in the mail, postage prepaid, registered or
certified First Class mail and addressed to the address given below (unless a
different address shall have been duly given previously) or sent by telephone
facsimile (with receipt confirmed by telephone):
If to BDAL, to:
Bruker Daltonics Inc.
00 Xxxxxxx Xxxx
Xxxxxxxxx, XX 0 1821
Attention: President
Facsimile No.: (000) 000-0000
If to PKI, to:
PerkinElmer Instruments LLC
000 Xxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxxx 00000
Attention: President
Facsimile No.: (000) 000-0000
15. EXCUSABLE DELAYS
Neither party shall be liable in damages for failure to perform under this
Agreement due to any causes beyond its control and without its fault or
negligence, including, but not restricted to, acts of God, acts of war,
governmental acts, fires, floods, epidemics, quarantine restrictions, freight
embargoes, strikes, unusually severe weather, or delay of a subcontractor due to
such causes (unless the materials, supplies, or services to be furnished under a
subcontract are procurable from other sources). In the event that a party
discovers any facts which may, or could with the passage of time, result in a
delay in performance due to an event beyond its control, that party shall
immediately provide written notice to the other party of such facts (including a
description of the cause of the delay, an estimate of the duration of the delay
and a statement regarding the
20
remedial steps that are being undertaken to resume performance) and shall take
all measures and precautions to reduce the effects of the delay on contract
performance. The time for performance under this Agreement shall be extended by
an amount of time equal to the period of delay; provided, however, that, if the
delay lasts more than ninety (90) days, the party whose performance is not
delayed shall have the right, but not the obligation, to terminate this
Agreement without liability.
16. NAME AND TRADEMARK
16.1. BDAL hereby grants to PKI a royalty-free, non-exclusive license under the
BDAL Trademarks, that pertain to the OmniFLEX and its Accessories, to
distribute these BDAL products to which any of the BDAL Trademarks have
been applied by BDAL; and use any documentation provided by BDAL
hereunder. No license is granted to PKI to use the name Bruker
Daltonics(R) as, or as part of, a corporate name and/or a trading name.
16.2. PKI hereby grants to BDAL a royalty-free, non-exclusive license under the
PKI Trademarks, to apply the PKI Trademarks to the co-labeled OmniFLEX
before supplying them to PKI.
16.3 The BDAL Trademarks and PKI Trademarks shall be applied to the products in
accordance with such principles as may be agreed between the parties
regarding the form, location and prominence of such trademark, each such
trademark to be of equal prominence to each other.
16.4 All rights in the BDAL Trademarks are owned by BDAL, and all rights in the
PKI Trademarks are owned by PKI. All rights granted pursuant to this
Section 16 shall
21
terminate upon the expiration or termination of this Agreement. This
applies to registered or unregistered trademarks.
17. PATENT INDEMNITY
BDAL shall defend, indemnify and hold PKI harmless from and against all claims,
damages, costs (including reasonable attorneys fees), or judgments against PKI
in which it is determined or alleged that the sale or the use of any of BDAL
product infringes any patent, copyright, trademark or any other intellectual
property right of any third party. PKI agrees that BDAL, at its sole option,
shall be relieved of the foregoing obligations unless PKI or its customers (i)
notifies BDAL promptly in writing of such claim, suit or proceeding, (ii) gives
BDAL available information and assistance to settle and/or defend any such
claim, suit or proceeding, (iii) gives BDAL authority over the defense or
settlement of such claim as contemplated above, and (iv) refrains from settling
such claim without BDAL's written consent. If a product (or any part thereof)
is, or in the opinion of BDAL, may become, the subject of any claim, suit or
proceeding for infringement of any patent, copyright or trademark, or if it is
determined that a product (or any part thereof) is infringing and, as a result,
its use is enjoined, then BDAL may, at its option and expense: (i) procure for
PKI the right under such patent, copyright or trademark to distribute such
product (or such part thereof) without prejudice to BDAL's obligations above; or
(ii) replace such product (or part thereof) with other suitable parts; or (iii)
suitably modify such product (or part thereof) to make them non-infringing
without modifying their capability; or (iv) if the use of a product (or part
thereof) is prevented by injunction, remove such product (or part thereof) and
refund the aggregate payment paid therefor by
22
PKI less an amount to account for actual use by PKI's customer, as measured over
a sixty month (60) month life span.
18. TERMINATION
If either party shall, at any time, commit any material breach of any of
the terms or conditions of this Agreement, the non-breaching party shall give
notice of the breach to the breaching party. If the breaching party fails to
cure the breach within forty-five (45) days of said notice (or such longer
period not to exceed ninety (90) days if such breach is incapable of cure within
forty-five days, provided that the breaching party continues diligently to cure
said breach during such period), the non-breaching party may terminate this
Agreement, effective immediately.
In the event that at any time during the term of this Agreement, either
party is adjudged insolvent or bankrupt or shall make an assignment for the
benefit of its creditors, the other party hereto shall have the right, at its
election, to terminate this Agreement effective upon the giving of written
notice. In no event shall this Agreement be construed as an asset of the
bankrupt party.
Upon termination of this Agreement, PKI shall immediately cease to
describe itself as a distributor of products. BDAL shall honor its obligations
under this Agreement with respect to orders for products placed prior to the
effective date of termination or expiration, and shall fill such orders that are
accepted by it prior to the effective date of such termination or expiration.
SIGNATURES:
For PKK: /s/ Xxxxxx Xxxxxxxxx For BDAL: /s/ Xxxxx X. Xxxxxxx
-------------------- -----------------------
Name: Xxxxxx Xxxxxxxxx Name: Xxxxx X. Xxxxxxx
----------------
23
Title: President & CEO Title: President & CEO
---------------
Date: March 06, 2000 Date: March 02, 2000
Attachment D:
OEM SUB-LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") is made and/or entered into by and
between Bruker Daltonics Inc. ("Licensor"), a Delaware corporation with its
principal place of business at Fortune Drive, Xxxxxxx Park, Billerica,
Massachusetts 0 182 1, and PerkinElmer Instruments LLC ("Licensee") a
______________________ corporation with its principal place of business at 000
Xxxx Xxxxxx, Xxxxxxx, XX 00000.
WHEREAS, Licensor is the exclusive licensee of, having the full right to
grant sublicenses to, the Patent Rights, as these are defined with particularity
herein; and
WHEREAS, Licensee desires to obtain a license under certain patent rights
held by Licensor, as defined with particularity in this Agreement;
NOW, THEREFORE in view of the promises set forth below, the parties hereto
agree as follows:
1. Definitions
Solely for the purposes of this Agreement the following terms, as used
herein, will have the meanings specified below:
1.1 "Effective Date" means the date last written below.
1.2 "Patent Rights" means those patents and/or patent applications
listed on Schedule A and any patents issuing from such patent
applications, or any related U.S. or foreign applications or patents
based upon any of such patent applications or patents, as well as
any continuations, divisions, reexaminations, reissues, substitutes,
renewals or extensions of any of the foregoing patent applications
or patents.
1.3 "Affiliate" of a specified entity means an entity that directly
or indirectly controls, is controlled by, or is under common control
with, the specified entity. For purposes of this Agreement, the
direct or indirect ownership of more than 50% of the outstanding
voting shares of an entity, the right to receive 50% or more of the
profits or earnings of an entity, or the right to control policy
decisions of an entity, will be deemed to constitute control.
1.4 "Licensed Product" or "Licensed Products" means and includes any
apparatus, device, system, product, article of manufacture,
appliance, method or process, the practice, manufacture, use or sale
of which would
24
be, but for this Agreement, covered in whole or in part by a pending
claim in a pending application within the Patent Rights or an
unexpired claim in a patent within the Patent Rights.
1.5 "Net Sales" means the gross sales amount of all sales or leases
of Licensed Products by Licensee, Affiliates or sublicensees to any
distributors and/or customers minus any customary quantity, trade or
cash discounts actually given, allowed returns or allowances given
in lieu of allowed returns, freight and insurance, if separately
itemized on the invoice and paid by the customer, and any value
added, sales, use or excise taxes actually included in the invoice
amount, provided, however, that no deductions will be taken for any
other costs incurred in the manufacture, offering for sale, sale,
distribution, shipment, promotion, advertisement, exploitation or
commercialization of the Licensed Products, for any costs of
collections or any uncollectible accounts, or for any other costs,
expenditures, fees or expenses. For all Licensed Products used by
Licensee as premiums to promote, market, sell and/or lease products
or processes other than Licensed Products such premiums will be
deemed to have been sold at Licensee's customary sales price.
Licensed Products will be considered "sold" when delivered, billed
out, or invoiced, whichever comes first. In the cases of
transactions not at "arm's length" and of transactions in which the
Licensed Product is exchanged for other than a separate,
entirely-money consideration, "Net Wholesale Price" shall mean Fair
Market Value.
1.6 "Fair Market Value" as applied to Licensed Products means the
Net Sales which the Licensee (or its Affiliate) would realize from
an unaffiliated buyer typical of Licensee's (or its Affiliate's)
buyers in an arm's length sale of identical apparatus in the same
quantity and at the same time and place as such transaction;
provided, however, that Fair Market Value shall not be lower than
complete cost less the items specified in paragraph 1.5 above to be
deducted from Net Sales, to the extent these items are included in
such complete cost) plus a normal profit factor.
2. Grant of Special OEM Sub-License
2.1. Licensor hereby grants an individual systems' license to
Licensee, with the right to grant sublicenses to its
Affiliates, to use and/or to re-sell each MALDI-TOF mass
spectrometer purchased by Licensee from Licensor under a
separate "MALDI-TOF Mass Spectrometry Collaboration and OEM
Agreement" of even date.
2.2. Pursuant to the separate "MALDI-TOF Mass Spectrometry
Collaboration and OEM Agreement" Licensor shall be responsible
25
for the payment of all royalties to IU-ARTI on Licensor's
MALDI-TOF systems sold as OEM systems to Licensee.
2.3. Any license granted under this Agreement shall not constitute
or be interpreted as a license to the Licensee for
manufacture, use or sale of any other MALDI-TOF or other mass
spectrometer, other than the OEM MALDI-TOF systems
specifically purchased from Licensor under the terms of the
"MALDI-TOF Mass Spectrometry Collaboration and OEM Agreement".
In particular, this Agreement does not waive for the Licensee
future access payments, retroactive or future royalty payments
on any other MALDI-TOF or other mass spectrometer not
specifically covered by this Agreement.
3. Payments/License Fees and Royalties
This section is not applicable, as Licensor pays all royalties to IU-ARTI
for OEM MALDI-TOF systems sold to Licensee under the separate "MALDI-TOF
Mass Spectrometry Collaboration and OEM Agreement".
26
4. Representation and Warranties
Licensor warrants that, to the best of its knowledge and belief, it is the
sole exclusive licensee of all rights, title, and interest in the Patent
Rights, free of any liens, encumbrances, restrictions and other legal or
equitable claims, subject, however, to any rights of governmental
authorities, including full right and authority to sublicense the Patent
Rights.
5. Records, Reports, and Payments
5.1 not applicable
5.2 not applicable
5.3 not applicable
5.4 not applicable
6. Term of the Agreement
6.1 Unless sooner canceled or terminated as herein provided, the
individual system's license granted under this Agreement will
continue for ten (10) years or for the full term of the last
expiring patent or patent application within the Patent Rights,
whichever is longer.
6.2 If Licensee becomes bankrupt or insolvent, or files a petition
in bankruptcy, or if the business of Licensee is placed in the hands
of a receiver, assignee or trustee for the benefit of creditors,
whether by the voluntary act of Licensee or otherwise, this
Agreement will automatically terminate without any notice whatsoever
to Licensee.
6.3 not applicable
6.4 Licensee will have the right to terminate this Agreement with or
without cause at any time upon six (6) months written notice to
Licensor.
6.5 not applicable
6.6 If, at any time during this Agreement, Licensee directly or
indirectly opposes or assists any third party to oppose the grant of
any Letters Patent on any patent application within the Patent
Rights or disputes or directly or indirectly assists any third party
to dispute the validity of any patent within the Patent Rights, or
any of the claims thereof, Licensor will be entitled thereafter to
terminate immediately all or any portion of the license granted
under this Agreement by notice thereof to Licensee.
27
6.7 In the event that any claim of any application within the Patent
Rights is canceled, abandoned, or otherwise disallowed by a final
non-appealable or non-appealed action of a Patent Office having
jurisdiction, or in the event that any claim of any patent within
the Patent Rights is held invalid or unenforceable by a
non-appealable or non-appealed decision by any court of competent
jurisdiction, such claim will be deemed to have expired, as of the
date of final disallowance or final decision of invalidity or
non-enforceability.
6.8 Provisions of this Agreement which by their nature contemplate
rights and obligations of the parties to be enjoyed or performed
after the expiration or termination of this Agreement will survive
until their purposes are fulfilled. Termination of this Agreement
for any reason will not relieve either party of its obligations
under this Agreement previous to the effective date of such
termination.
7. Non-Transferability of Licenses
7.1 The license granted by this Agreement can be transferred by the
Licensee, but only as part of a transaction by which the Licensee
divests itself of all or substantially all of the business of
manufacturing and/or selling Licensed Products. In the event of such
a transfer, Licensee and its Affiliates shall thereupon cease to be
Licensees hereunder, but such termination of licenses shall not
affect any obligations to pay royalties which may have accrued prior
thereto.
7.2 Should any entity or person cease to be an Affiliate of a party,
as that term is defined in paragraph 1.3 above, this Agreement shall
be terminated as to that entity or person, who shall have no further
rights or obligations under this Agreement; provided, that such
termination of Affiliate status shall not affect any obligations to
pay royalties which may have accrued prior thereto.
7.3 The license granted in this Agreement shall be binding upon any
successor of Licensor in ownership or control of the Patent Rights,
and the obligations of Licensee, including, but not limited to, the
obligation to make reports and pay royalties, shall run in favor of
any such successor of Licensor's benefits under this Agreement.
8. Payments, Notices and Other Communications
Any payment, notice, or other communication pursuant to this Agreement
will be sufficiently made or given on the date of mailing if sent to such
party by express mail or certified first class mail, postage prepaid, made
out to Bruker Daltonics,
28
Inc. and addressed to it at its address below or made out to Licensee and
addressed to it at its address below as either party will designate by
written notice given to the other party:
Licensor: Xxxxx X. Xxxxxxx, President
Bruker Daltonics Inc.
Fortune Drive, Xxxxxxx Park
Billerica, MA 0 1821
Licensee: Xxxxxx Xxxxxxxxx, President
PerkinElmer Instruments LLC.
____________________________
____________________________
9. Miscellaneous Provisions
9.1 Each party hereto agrees that it will not release any
information to any third party with respect to the terms of this
Agreement without the prior written consent of the other party. This
prohibition includes, but is not limited to, press releases,
educational and scientific conferences, promotional materials,
governmental filings, and discussions with lenders, investment
bankers, public officials, and the media. Should any third party
seek to obtain any information by legal process with respect to the
existence or terms of this Agreement from either Party hereto, such
Party shall promptly notify the other Party hereto, and shall take
all appropriate measures to avoid and minimize the release of such
information.
9.2 This Agreement will be construed, governed, interpreted, and
applied in accordance with the laws of the Commonwealth of
Massachusetts, U.S.A., except that questions affecting the
construction and effect of any patent will be determined by the law
of the country in which the patent was granted.
9.3 In the event of an adjudication to resolve a dispute over the
scope to or appropriate royalty payment (if any) under, any of the
Patent Rights licensed under this Agreement, the Licensee may place
any disputed royalty payments in an interest-bearing escrow account
mutually satisfactory to the Licensee and Licensor, rather than
paying them to the Licensor, during the pendency of the
adjudication. If the determination of the adjudication is that no
royalty payment is owed to the Licensor, the escrowed funds,
together with any accrued interest, shall be returned to the
Licensee. If the determination of the adjudication is that a royalty
payment is owed to the Licensor, the escrowed funds, together with
any accrued interest, shall be paid to the Licensor.
29
9.4 This Agreement constitutes the entire understanding between the
Parties hereto with respect to the subject matter hereof. This
Agreement supersedes any prior agreements between the Parties hereto
as to the subject matter of this Agreement except as specifically
provided herein. No modification, extension or waiver of any
provision hereof or any release of any right hereunder shall be
valid, unless the same is in writing and is consented to by both
Parties hereto.
9.5 The provisions of this Agreement are severable, and if any
provision of this Agreement is held to be ineffective, unenforceable
or illegal for any reason, such ineffectiveness, unenforceability
and/or illegality shall not affect the validity or enforceability of
any or all of the remaining portions hereof.
9.6 This Agreement shall be construed in accordance with its fair
meaning and not strictly for or against any Party.
9.7 This Agreement may be executed simultaneously in two or more
counterparts, each of which shall be deemed an original, but both of
which together constitute one and the same Agreement.
9.8 Paragraph titles or captions contained herein are inserted only
as a matter of convenience and for reference, and in no way define,
limit, extend, or describe the scope of this Agreement, nor the
intent of any provision thereof.
9.9 Each Party acknowledges that it has or has, had the opportunity
to consult with counsel of its choice and that in executing this
Agreement it has not relied upon any statements, representations or
agreements of any other person other than those contained herein.
9.10 Notwithstanding Paragraph 1.5 above, at anytime prior to the
expiration of the patents licensed pursuant to this Agreement,
Licensee may challenge in a legal proceeding the validity or
enforceability the Patent Rights. Licensor may not use in said legal
proceeding this Agreement, the language contained herein or the
royalty payments previously made or required to be made by this
Agreement as an admission by Licensee that any Patent Rights are
valid, enforceable or infringed.
9.11 Licensee agrees to xxxx the Licensed Products made, used or
sold in the United States with all applicable United States patent
numbers. All Licensed Products used, shipped to or sold in other
countries will be marked in such a manner as to conform with the
patent laws and practice of the country of use, shipment, and/or
sale.
30
9.12 No failure or delay on the part of either Party hereto in the
exercise of any power, right or privilege under this Agreement shall
operate as a waiver thereof, nor shall any single or partial
exercise of any such power, right or privilege preclude other or
further exercise thereof or of any other right, power or privilege.
9.13 Nothing in this Agreement shall be construed as:
(a) a warranty or representation as to the validity,
enforceability or scope of any patent by the Licensor;
(b) a warranty or representation that any manufacture,
sale, lease, use or importation will be free fi7om
infringement of patents other than those under which and to
the extent to which licenses or covenants are in force
hereunder, including patents of third parties;
(c) an agreement to bring or prosecute actions or suits
against third parties for infringement;
(d) conferring any right to use, in advertising,
publicity or otherwise, any name, trade name, trademark,
service xxxx, symbol or any other identification or any
contraction, abbreviation or simulation thereof,
(e) conferring by implication, estoppel or otherwise any
license or other right under any patent, except as expressly
granted herein;
(f) a representation or warranty of any kind or the
assumption of any responsibility whatsoever by any Party with
respect to the manufacture, sale, lease, use or other
disposition of any product or method licensed hereunder
(including without limitation, claims of third parties
asserting that a product is defective or unsafe for its
intended purpose); and
(g) a representation deemed to place Licensee and
Licensor in a partnership, joint venture or agency
relationship and neither party will have the right or
authority to obligate or bind the other party in any manner.
9.14 All notices and communications provided for hereunder shall be
in writing and shall be mailed or delivered to the business address
of the respective Parties as aforementioned, or to such other
address as any Party may designate from time to time in writing to
the other.
31
9.15 Each of the Parties agrees to perform reasonably requested
actions of the other Party which are required to effectuate the
covenants and purposes of this Agreement.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this Agreement as of the day and year set forth below.
Licensee Licensor
BY: /s/ Xxxxxx Xxxxxxxxx BY: /s/ Xxxxx X. Xxxxxxx
--------------------- ---------------------
Xxxxxx Xxxxxxxxx Xxxxx X. Xxxxxxx
President & CEO President & CEO
PerkinElmer Instruments LLC Bruker Daltonics Inc.
DATE: March 06, 2000 DATE: March 02, 2000
32
SCHEDULE A
--------------------------------------------------------------------------------
US Xxx. No. Inventor Title
----------- -------- -----
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
5,504,326 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing
Xxxxxx X. Xxxxx in Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
5,510,613 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing
Xxxxxx X. Xxxxx in Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
5,712,479 Xxxxx X. Xxxxxx Spatial-Velocity Correlation Focusing
Xxxxxx X. Xxxxx in Time-of-Flight Mass Spectrometry
Xxxxxxx X. Xxxx
--------------------------------------------------------------------------------
--------------------------------------------------------------------------------
33
