Exhibit 99.2
* Portions of this exhibit have been omitted pursuant to a request for
confidential treatment filed with the Commission. The omitted portions,
marked by "*", have been separately filed with the Commission.
AMENDMENT NO. 1
TO
IGEN/MSD LICENSE AGREEMENT
THIS AMENDMENT NO. 1 TO IGEN/MSD LICENSE AGREEMENT (this "Amendment No. 1")
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is entered into as of August 15, 2001, by and among, Meso Scale Diagnostics,
LLC., a Delaware limited liability company ("MSD"), and IGEN International,
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Inc., a Delaware corporation (formerly IGEN, Inc., a California corporation)
("IGEN");
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WHEREAS, MSD, IGEN and Meso Scale Technologies, LLC. ("MST") entered into a
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Joint Venture Agreement, dated as of November 30, 1995, as amended (the "Joint
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Venture Agreement"), for the purpose of setting forth their respective rights
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and obligations with respect to certain research and development activities and,
if successful, the development, manufacturing, marketing and sale of the
products, processes and services based thereon;
WHEREAS, MSD and IGEN entered into an IGEN/MSD License Agreement, dated as
of November 30, 1995 (the "License Agreement"), for the purpose, among other
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things, of IGEN licensing to MSD certain rights to the Licensed Technology;
WHEREAS, MSD and IGEN desire to amend the License Agreement to make certain
changes, all as herein set forth; and
WHEREAS, for purposes of this Amendment No. 1, capitalized terms not
otherwise defined herein shall have the respective meanings set forth in the
License Agreement (as amended by this Amendment No. 1);
NOW, THEREFORE, in consideration of the foregoing and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, MSD and IGEN each hereby agrees as follows:
1. Definitions. Section 1.6 is hereby deleted in its entirety.
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2. License Grants. (a) Section 2 is hereby amended by
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inserting the following as a new Section 2.7:
2.7 Acknowledgement and Covenants. IGEN acknowledges
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and agrees that the licenses granted to MSD herein,
as well as all other obligations of IGEN concerning
the Licensed Technology (including but not limited to
the obligations set forth in Sections 2.4 and 2.5
hereunder), shall continue to apply and be binding
upon any and all successors, assignees and/or
transferees of IGEN, this Agreement and/or any or all
of the Licensed Technology (including but not limited
to the patents and patent applications listed on
Exhibit A hereto, as updated by any disclosures of
Licensed Technology to MSD). IGEN covenants and
agrees that it shall (a) provide actual notice of
this Agreement and IGEN's obligations hereunder to
any potential successor, assignee and/or transferee
of IGEN, this Agreement and/or any or all of the
Licensed Technology, (b) require any successor,
assignee and/or transferee of IGEN, this Agreement
and/or any or all of the Licensed Technology to
provide actual notice of this Agreement and IGEN's
obligations hereunder to any future successor,
assignee and/or transferee of any interest in IGEN,
this Agreement and/or any or all of the Licensed
Technology, (c) provide MSD written notice no later
than fifteen (15) business days prior to any
assignment or transfer of any interest in IGEN, this
Agreement and/or any or all of the Licensed
Technology or any similar event which would affect
IGEN's obligations hereunder (including but not
limited to a reorganization of IGEN or a
consolidation, merger, sale of assets or other
business combination transaction between IGEN and
another party), and (d) require any successor,
assignee and/or transferee of IGEN, this Agreement
and/or any or all of the Licensed Technology to
provide MSD written notice no later than fifteen (15)
business days prior to any future assignment or
transfer of any interest in IGEN, this Agreement
and/or any or all of the Licensed Technology or any
similar event which would affect IGEN's or such
future successor's, assignee's and/or transferee's
obligations hereunder.
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(b) Section 2 is hereby further amended by
inserting the following as a new Section 2.8:
IGEN hereby grants to MSD a non-exclusive,
worldwide, royalty-free license to practice the IGEN
Technology to make, use and sell products or
processes utilizing * methods, including, without
limitation, the * described in the United States
Patent application entitled * serial no. *
(including all divisions, continuations and
continuations-in-part thereto), and *; provided that
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IGEN shall not be required to grant to MSD a license
to any technology that is subject to exclusive
licenses to third parties granted prior to the date
hereof.
3. Royalties. Section 5 is hereby amended by deleting
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it in its entirety and replacing it with the following:
In the event that IGEN ceases to be a Class A Member
of MSD, then MSD shall pay to IGEN a royalty equal
to * of the Net Sales Price (defined below) of all
MSD products commercially sold by MSD which but for a
license from IGEN would infringe a patent owned by or
licensed to IGEN. Such amounts shall be paid to IGEN
within 60 days of the end of the quarter in which
payment was received from the sale giving rise to
such royalty. Royalty payments shall be made after
deducting any tax or governmental withholding amounts
required to be paid in connection with the payment of
such royalty. The royalty obligation set forth above
shall terminate on a country-by-country,
product-by-product basis upon the expiration of the
last to expire of the patents in a given country that
would be infringed by the sale of such MSD products
in such country absent a license from IGEN. MSD shall
be under no obligation to sell any such products.
"Net Sales Price" shall mean, for any sale, the
invoiced sales price charged by MSD, less (i) trade,
cash and quantity discounts or rebates actually taken
or allowed; (ii) credits or allowances given or made
for rejected, damaged or returned goods; (iii)
uncollectible amounts on such products previously
sold by MSD; (iv) retroactive price reductions; and
(v) any freight or insurance charges billed to the
customer.
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4. Notices. Section 9 is hereby amended by (i) deleting the facsimile
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number "(000) 000-0000" and replacing it with the facsimile number "(301)
947-7240", and (ii) deleting the facsimile number "(000) 000-0000" and replacing
it with the facsimile number "(000) 000-0000".
5. Consent to Filing. IGEN hereby consents to the filing by or on behalf
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of MSD of the License Agreement (as amended by this Amendment No. 1) with the
U.S. Patent and Trademark Office (and the patent offices of any foreign
countries, as appropriate) for the purpose of recording the License Agreement
against the intellectual property rights licensed therein. IGEN acknowledges and
agrees that such filings shall not be a breach of the confidentiality
obligations set forth in the License Agreement, Joint Venture Agreement, or the
other agreements executed in connection therewith.
6. Update of Exhibit A. IGEN hereby represents that the patent
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applications and registrations listed on Exhibit 1 attached hereto is an
accurate, but not necessarily comprehensive, update, as of June 30, 2001, of the
Master Patent List set forth on Exhibit A to the License Agreement. IGEN
acknowledges its continuing obligation, pursuant to Section 2.4 of the License
Agreement, to promptly disclose to MSD all IGEN Technology and IGEN Improvements
which IGEN newly discovers or to which IGEN acquires rights, and IGEN shall
cooperate with MSD to further update the Master Patent List from time to time at
MSD's request.
7. Representations.
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Each of MSD and IGEN hereby represents to one another that it has the
power and authority to enter into this Amendment No. 1 and to perform its
obligations under the License Agreement, as amended by this Amendment No. 1, and
under this Amendment No. 1, and that its execution, delivery and performance
hereof has been duly and validly authorized (including in the case of IGEN,
approval by the committee of the Board of Directors of IGEN established by the
Board of Directors of IGEN at its meeting on August 31, 2000). Each of MSD and
IGEN hereby represents to one another that its execution and delivery of this
Amendment No. 1 and its performance of the License Agreement, as amended by this
Amendment No. 1, will not constitute a breach of and will not conflict with any
agreement or duty to or by which such party is bound, and will not violate any
law or governmental regulation applicable to such party.
-4-
8. Additional Actions and Documents. Each party hereby agrees to take
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or cause to be taken such further actions, to execute, acknowledge, deliver and
file or cause to be executed, acknowledged, delivered and filed such further
documents and instruments (including an amended and restated version of the
License Agreement, as amended by this Amendment No. 1), and to use commercially
reasonable efforts to obtain such consents, as may be necessary or as may be
reasonably requested in order fully to effectuate the purposes, terms and
conditions of the License Agreement, as amended by this Amendment No. 1.
9. Effect on License Agreement. It is the express intention and
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agreement of MSD and IGEN that all provisions of the License Agreement, as
amended by this Amendment No. 1, shall survive and remain in full force and
effect following the execution and delivery of this Amendment No. 1, and the
provisions of this Amendment No. 1 shall be considered part of, and governed by,
the terms of the License Agreement (as so modified). Any reference to the
License Agreement after the date of this Amendment No. 1 shall be deemed to be a
reference to the License Agreement, as amended by this Amendment No. 1.
10. Headings. Section headings contained in this Amendment No. 1 are
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inserted for convenience of reference only, shall not be deemed to be a part of
this Amendment No. 1 for any purpose, and shall not in any way define or affect
the meaning, construction or scope of any of the provisions hereof.
11. Governing Law. As this Amendment No. 1 relates to the Joint Venture
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Agreement to which MSD and IGEN are parties and as the Joint Venture Agreement
is governed by the laws of the State of Delaware, this Amendment No. 1 and the
relationships between the parties shall be governed in all respects by the laws
of the State of Delaware without regard to the principles of conflicts of laws.
12. Execution in Counterparts. This Amendment No. 1 may be executed in
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any number of counterparts, each of which shall be deemed to be an original, but
all of which taken together shall constitute one and the same instrument.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the parties have caused this Amendment No.
1 to be duly executed and delivered on their behalf, as of the date first
written above.
MESO SCALE DIAGNOSTICS, LLC.
By: /s/ Xxxxx X. Xxxxxxxxxxx
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Name: Xxxxx X. Xxxxxxxxxxx
Title: President and Chief Executive Officer
IGEN INTERNATIONAL, INC.
By: /s/ Xxxxxx Xxxxxxxx
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Name: Xxxxxx Xxxxxxxx
Title: Vice President and Chief Financial Officer
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EXHIBIT 1
Update of Master Patent List (Exhibit A to IGEN/MSD License Agreement)
*
[40 pages redacted]
