SECOND AMENDMENT TO LICENSE AGREEMENT
Exhibit 10.4 to the Registration Statement
CERTAIN
CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
ASTERISKS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 406 UNDER THE SECURITIES ACT
OF 1933, AS AMENDED.
This Second Amendment to the License Agreement is effective as of the 20th day of
June, 2000 (the “Second Amendment Effective Date”) between California Institute of Technology, 0000
Xxxx Xxxxxxxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 (“CALTECH”) and Clinical Micro Sensors, Inc.
(“LICENSEE”):
WHEREAS, the parties entered into a license agreement dated February 8, 1995 (the License
Agreement); and
WHEREAS, the parties executed a First Amendment to License Agreement dated October 6, 1998
(the First Amendment), wherein the First Amendment substitutes for the License Agreement and is
controlling with respect to all provisions of the License Agreement, and
WHEREAS, the parties wish to again amend the License Agreement in its entirety such that this
Second Amendment shall substitute for the License Agreement and the First Amendment and shall be
controlling with respect to all provisions of the License Agreement as of the Effective Date of the
License Agreement (“Effective Date”).
ARTICLE I
DEFINITIONS
1.1. “Licensed Product” means any product, device, service or system which is covered by, or
is made by a process covered by, any Valid Claim of any Licensed Patent Rights.
1.2. “Related Company” means any corporation, limited liability company or other legal entity
directly or indirectly controlled by LICENSEE or its successors or assigns, or which directly or
indirectly controls LICENSEE or its successors or assigns, or any successor or assign of such an
entity. For the purpose of this Agreement, “control” shall mean the direct or indirect ownership
of at least fifty percent (50%) of the outstanding shares or other voting rights of the subject
entity to elect directors, or if not meeting the preceding, any entity owned or controlled by or
owning or controlling at the maximum control or ownership right permitted in the country where such
entity exists.
1.3. “Licensed Patent Rights” means Exclusively Licensed Patent Rights and Nonexclusively
Licensed Patent Rights.
1.4. “Exclusively Licensed Patent Rights” means (a) worldwide rights to the inventions
described and claimed in the patents, patent applications and invention disclosures listed in
Exhibit A attached hereto; any patents which issue on the applications or disclosures listed in
Exhibit A; reissues, reexaminations, additions, renewals, extensions, divisionals, continuations,
and continuations-in-part of the foregoing; and any foreign counterparts and any other forms of
protection directed to the inventions covered by the patents, applications and invention
disclosures listed in Exhibit A, and (b) all patent applications hereafter filed and owned by
CALTECH which are dominated by a claim or claims of the patents or patent applications of part (a),
together with any and all patents that issue therefrom, and all related divisionals, continuations,
continuations-in-part, reissues, renewals, reexaminations, extensions or additions to any such
patents and patent applications and any foreign counterparts which hereafter arise as a result of
work conducted at CALTECH solely or jointly in the laboratories of Xx. Xxxxxx Xxxxx and Dr. Xxxxx
Xxxxxx, or jointly with LICENSEE (Improvements).
-2-
1.5. “Nonexclusively Licensed Patent Rights” means worldwide rights to the inventions
described and claimed in the patents, patent applications and invention disclosures listed in
Exhibit B attached hereto; any patents which issue on the applications or disclosures listed in
Exhibit B; reissues, reexaminations, additions, renewals, extensions, divisionals, continuations,
and continuations-in-part of the foregoing; and any foreign counterparts and any other forms of
protection directed to the inventions covered by the patents, applications and invention
disclosures listed in Exhibit B.
1.6. “CALTECH Technology” means the Licensed Patent Rights and Improvements.
1.7. “Valid Claim” means: (a) an issued claim under an issued patent within the Licensed
Patent Rights or a patent claiming an Improvement, which has not (i) expired or been canceled, (ii)
been declared invalid by an unreversed decision of a court or other appropriate body of competent
jurisdiction, iii) been admitted to be invalid or unenforceable through reissue, disclaimer or
otherwise, and/or (iv) been abandoned in accordance with or as permitted by the terms of this
Agreement or by mutual written agreement; or (b) a claim included in a pending patent application
within the Licensed Patent Rights that is being actively prosecuted in accordance with this
Agreement and which has not been (i) canceled, (ii) withdrawn from consideration, (iii) finally
determined to be unallowable by the applicable governmental authority (and from which no appeal is
or can be taken), and/or (iv) abandoned in accordance with or as permitted by the terms of this
Agreement or by mutual written consent.
1.8. “Sublicensee” shall mean, with respect to a particular Product, a third party to whom
LICENSEE has granted a license or sublicense under the CALTECH Technology to develop, make, have
made, use and sell such Licensed Product.
-3-
1.9. “Improvements” shall mean any future invention conceived, reduced to practice or
otherwise developed solely or jointly in the laboratories of Xx. Xxxxxx Xxxxx or Dr. Xxxxx Xxxxxx
at CALTECH, or jointly with LICENSEE, and which is invented solely or jointly by Xx. Xxxxxx Xxxxx,
Dr. Xxxxx Xxxxxx or an employee of LICENSEE, and which is dominated by the claims of one or more of
the Exclusively Licensed Patent Rights, and all worldwide patent applications and patents relating
thereto.
1.10. “Other Improvements” shall mean any future invention conceived, reduced to practice or
otherwise developed solely or jointly in the laboratories of Xx. Xxxxxx Xxxxx or Dr. Xxxxx Xxxxxx
at CALTECH, or jointly with LICENSEE, and which is invented solely or jointly by Xx. Xxxxxx Xxxxx,
Dr. Xxxxx Xxxxxx, another employee of CALTECH, or an employee of LICENSEE, and which is dominated
by the claims of one or more of the Exclusively Licensed Patent Rights, and all worldwide patent
applications and patents relating thereto.
ARTICLE II
PATENT LICENSE GRANT
2.1. CALTECH hereby grants to LICENSEE an exclusive, fully paid up, royalty free license under
Exclusively Licensed Patent Rights and Improvements to make, have made, import, have imported, use,
have used, sell, have sold and otherwise exploit Licensed Products throughout the world.
2.2. CALTECH hereby grants to LICENSEE a nonexclusive, fully paid up royalty free license
under Nonexclusively Licensed Patent Rights to make, have made, import, have imported, use, have
used, sell, have sold and otherwise exploit Licensed Products throughout the
-4-
world. CALTECH retains the right to grant additional nonexclusive or exclusive (exclusive
except with respect to the rights granted LICENSEE hereunder) licenses to third parties.
2.3. This license is subject to the reservation of CALTECH’s right to make, have made, and use
Licensed Products for noncommercial educational and research purposes, but not for sale or other
distribution to third parties. This license is not transferable by LICENSEE except as provided in
Paragraph 15.4, but LICENSEE shall have the right to grant nonexclusive or exclusive sublicenses
under the grant of Section 2.1, provided that LICENSEE shall furnish CALTECH within thirty (30)
days of the execution thereof, a true and complete copy of each sublicense and any changes or
additions thereto.
2.4. The patent license grants, and the term of this Agreement, shall continue, unless
terminated in accordance with the provisions of this Agreement, until the last of the patents
within the Licensed Patent Rights expires.
2.5. CALTECH hereby grants to LICENSEE an exclusive first right to include Other Improvements
under the terms of this License Agreement by adding such Other Inventions to Exhibit A hereto upon
payment by LICENSEE to CALTECH of a fee to be negotiated in good faith between the parties of not
less than * but not greater than * and upon reimbursement by LICENSEE to CALTECH of any past patent expenses.
-5-
ARTICLE III
CONSIDERATION FOR FULLY PAID UP LICENSE
3.1. In consideration of the royalty free, fully paid up license, LICENSEE hereby agrees to
pay CALTECH * within 30 days of execution of
this Second Amendment.
3.2. Any sublicenses granted by LICENSEE, including, without limitation, any nonexclusive
sublicenses, shall remain in effect and be assigned to CALTECH in the event this license terminates
pursuant to Article XI; provided, the financial obligations of each Sublicensee to CALTECH shall be
limited to a minimum annual fee of * for administration of the
sublicense. CALTECH shall assume all the rights and obligations of LICENSEE.
ARTICLE IV
OBLIGATIONS REGARDING EQUITY INTEREST
4.1. As a holder of an equity interest in LICENSEE, CALTECH agrees that, in the event of any
underwritten or public offering of securities of LICENSEE or a related company, CALTECH shall
comply with and agree to any reasonable restriction on the transfer of equity interest, or any part
thereof, imposed by an underwriter, and shall perform all acts and sign all necessary documents
required with respect thereto. The provisions of this Paragraph 4.2 shall survive termination of
this Agreement.
-6-
ARTICLE V
DUE DILIGENCE
5.1. LICENSEE shall have discretion over the commercialization of Licensed Products. However,
LICENSEE agrees to use its best efforts to introduce commercial Licensed Product(s) in the United
States as soon as practical, consistent with sound and reasonable business practices and judgments.
LICENSEE shall be deemed to have satisfied its obligations under this Paragraph if LICENSEE has an
ongoing and active research program or marketing program, as appropriate, directed toward
production and use of one or more Licensed Products. Any efforts of LICENSEE’s Sublicensees shall
be considered efforts of LICENSEE for the sole purpose of determining LICENSEE’s compliance with
its obligation under this Paragraph.
5.2. After the first year from the Effective Date, CALTECH shall have the right, no more often
than twice each year, to require LICENSEE to report to CALTECH in writing on its progress in
introducing commercial Licensed Product(s) in the United States.
ARTICLE VI
INFRINGEMENT BY THIRD PARTY
6.1. CALTECH shall at its expense, have the first right but not the obligation to protect the
Licensed Patent Rights and patents claiming Improvements from infringement and prosecute infringers
when, in its sole judgment, such action may be reasonably necessary, proper and justified.
Notwithstanding the foregoing, LICENSEE shall have the right to sublicense any alleged infringer
pursuant to Paragraph 2.1 and 2.2.
6.2. If LICENSEE shall have supplied CALTECH with evidence of infringement of Licensed Patent
Rights or patents claiming an Improvement by a third party, LICENSEE may by
-7-
notice request CALTECH to take steps to enforce the Licensed Patent Rights. If LICENSEE does
so, and CALTECH does not, within three (3) months of the receipt of such notice, either (i) cause
the infringement to terminate or (ii) initiate a legal action against the infringer, LICENSEE may,
upon notice to CALTECH, initiate an action against the infringer at LICENSEE’s expense, either in
LICENSEE’s name or in CALTECH’s name if so required by law. LICENSEE shall have sole control of
the action.
6.3. If a declaratory judgment action alleging invalidity, unenforceability or noninfringement
of any of the Licensed Patent Rights or Improvements is brought against LICENSEE and/or CALTECH,
LICENSEE shall have sole control of the action if LICENSEE agrees to bear all the costs of the
action.
6.4. In the event one party shall carry on a legal action pursuant to Paragraphs 6.2 or 6.3,
the other party shall fully cooperate with and supply all assistance reasonably requested by the
party carrying on such action, including by using its best efforts to have its employees testify
when requested and to make available relevant records, papers, information, samples, specimens, and
the like. A party controlling an action pursuant to Paragraphs 6.2 or 6.3 shall bear the
reasonable expenses incurred by said other party in providing such assistance and cooperation as is
requested pursuant to this Paragraph. A party carrying on such an action shall keep the other
party informed of the progress of such action, and said other party shall be entitled to be
represented by counsel in connection with such action at its own expense.
6.5. The party controlling any action referred to in this Article VI shall have the right to
settle any claims, but only upon terms and conditions that are reasonably acceptable to the other
party hereto. Should either party elect to abandon such an action other than pursuant to a
-8-
settlement with the alleged infringer that is reasonably acceptable to the other party, the
party controlling the action shall give timely notice to the other party who, if it so desires, may
continue the action; provided, however, that the sharing of expenses and any recovery in such suit
shall be as agreed upon between the parties.
6.6. Any amounts paid to a party by third parties as the result of such an action (such as in
satisfaction of a judgment or pursuant to a settlement) shall first be applied to reimbursement of
the unreimbursed expenses (including attorneys’ fees and expert fees) incurred by either party and
any remainder shall be divided between the parties as follows:
(a) To the extent the amount recovered reflects lost profits, LICENSEE shall retain the
remainder; or
(b) To the extent the amount recovered does not reflect lost profits * shall be paid to the party initiating the action and * to the other party.
ARTICLE VII
CONFIDENTIALITY
7.1. Xx. Xxxxx and Xx. Xxxxxx shall provide to LICENSEE copies of any proposed publication,
abstract, or oral presentation which describes an Improvement or Other Improvement to CALTECH
Technology prior to the submission of such documents. Proposed publications and abstracts shall be
supplied at least thirty (30) days in advance of submission to a journal, editor, or third party.
In addition, if Xx. Xxxxx and Xx. Xxxxxx submit a copy of the proposed publication to LICENSEE less
than thirty (30) days prior to submission for publication, then LICENSEE can request CALTECH to
file, at CALTECH’s expense, a provisional patent
-9-
application enabling the technology disclosed in the proposed publication at the United States
Patent and Trademark Office, and shall provide LICENSEE with evidence of the filing of such
provisional patent application. LICENSEE may request reasonable changes and/or deletions be made
in any proposed publication. Xx. Xxxxx and Xx. Xxxxxx will consider such changes but retain the
sole right to determine whether such changes or deletions will be made; but Xx. Xxxxx and Xx.
Xxxxxx agree that they will honor LICENSEE’s reasonable requests to remove Confidential Information
of LICENSEE included in any such public disclosure. If LICENSEE believes that the subject matter
to be disclosed or published warrants patent protection, it will identify the subject matter
requiring protection and notify CALTECH. CALTECH agrees to use its best efforts to file a U.S.
patent application prior to any date that would result in preventing the obtaining of valid patent
rights throughout the world when LICENSEE so identifies subject matter requiring patent protection
from a review of the planned publication.
7.2. All reports provided to and accepted by Xx. Xxxxx and Xx. Xxxxxx pursuant to this
Agreement shall be treated as confidential information of LICENSEE and shall not be disclosed to
any third party without the prior written consent of LICENSEE.
7.3. Except as expressly provided herein, each party agrees not to disclose any terms of this
Agreement to any third party without the consent of the other party; provided, however, that
disclosures may be made as required by securities or other applicable laws, or to actual or
prospective investors or corporate partners, or to a party’s accountants, attorneys, and other
professional advisors.
-10-
ARTICLE VIII
PAYMENT OF PATENT COSTS
8.1. LICENSEE shall, in connection with the preparation, filing, and prosecution, issuance and
maintenance of the Exclusively Licensed Patent Rights and patents claiming Improvements both in the
United States and foreign jurisdictions:
(a) pay all reasonable attorney fees for services performed to obtain the issuance of the
Exclusively Licensed Patent Rights, and all patent and government fees for services performed after
the issuance of Exclusively Licensed Patent Rights, and
(b) pay all Patent Office maintenance fees.
8.2. Payment shall be made to CALTECH within thirty (30) days following receipt by LICENSEE
from CALTECH of (i) an invoice covering such fees and (ii) reasonably satisfactory evidence that
such fees were paid. To the extent that LICENSEE terminates this Agreement pursuant to Paragraph
9.2 with respect to any patent application or patent, LICENSEE shall have no further liability
under Paragraph 8.1 for fees relating to applications or patents affected by the termination.
8.3. LICENSEE shall have the right to apply for, prosecute and maintain during the term of
this Agreement the Exclusively Licensed Patent Rights and patent applications and patents claiming
one or more Improvements. The application filings, prosecution, maintenance and payment of all
fees and expenses; including legal fees, relating to such Exclusively Licensed Patent Rights shall
be the responsibility of LICENSEE, provided that LICENSEE shall pay for all reasonable fees and
expenses, including reasonable legal fees, incurred in such application filings, prosecution and
maintenance. Patent attorneys chosen by LICENSEE shall handle all
-11-
patent filings and prosecutions, on behalf of CALTECH, provided, however, CALTECH shall be
entitled to review and comment upon and approve all actions undertaken in the prosecution of all
patents and applications. In the event LICENSEE declines to apply for, prosecute or maintain any
Exclusively Licensed Patent Rights, CALTECH shall have the right to pursue the same at CALTECH’s
expense and LICENSEE shall have no rights therein. If LICENSEE decides not to apply for, prosecute
or maintain any Exclusively Licensed Patent Rights and patent applications and patents claiming one
or more Improvements, LICENSEE shall give sufficient and timely notice to CALTECH so as to permit
CALTECH to apply for, prosecute and maintain such Exclusively Licensed Patent Rights.
8.4. LICENSEE shall, in connection with the preparation, filing, and prosecution, issuance and
maintenance of the Nonexclusively Licensed Patent Rights both in the United States and foreign
jurisdictions:
(a) pay * of all reasonable attorney fees for services performed to
obtain the issuance of the Nonexclusively Licensed Patent Rights, and all patent and government
fees for services performed after the issuance of Nonexclusively Licensed Patent Rights wherein
said fees are incurred following the Second Amendment Effective Date, and
(b) pay * of all Patent Office maintenance fees incurred following the Second Amendment
Effective Date.
8.5. CALTECH shall reimburse LICENSEE for all patent prosecution expenses for Nonexclusively
Licensed Patents Rights paid prior to the Second Amendment Effective Date
-12-
within 30 days following receipt of an invoice from LICENSEE, which invoice shall be delivered
to CALTECH within 15 days following the Second Amendment Effective Date.
8.6. Payment shall be made to CALTECH within thirty (30) days following receipt by LICENSEE
from CALTECH of (i) an invoice covering such fees and (ii) reasonably satisfactory evidence that
such fees were paid. To the extent that LICENSEE terminates this Agreement pursuant to Paragraph
9.2 with respect to any patent application or patent, LICENSEE shall have no further liability
under Paragraph 8.1 for fees relating to applications or patents affected by the termination.
8.7. CALTECH shall have the right to apply for, prosecute and maintain during the term of this
Agreement the Nonexclusively Licensed Patent Rights and patent applications. The application
filings, prosecution, maintenance and payment of all fees and expenses; including legal fees,
relating to such Nonexclusively Licensed Patent Rights shall be the responsibility of CALTECH,
provided that CALTECH shall pay for all reasonable fees and expenses, including reasonable legal
fees, incurred in such application filings, prosecution and maintenance. Patent attorneys chosen
by CALTECH shall handle all patent filings and prosecutions, on behalf of CALTECH, provided,
however, LICENSEE shall be entitled to review, comment upon, and make recommendation, which shall
not be unreasonably denied by CALTECH, on all actions undertaken in the prosecution of all patents
and applications. In the event CALTECH declines to apply for, prosecute or maintain any
Nonexclusively Licensed Patent Rights, LICENSEE shall have the right to pursue the same at
LICENSEE’s expense and CALTECH shall have no rights therein. If CALTECH decides not to apply for,
prosecute or maintain any Nonexclusively Licensed Patent Rights and patent applications, CALTECH
shall give sufficient and timely notice to LICENSEE so as to permit LICENSEE to apply for,
prosecute and maintain such
-13-
Nonexclusively Licensed Patent Rights. LICENSEE shall agree to negotiate in good faith with
other CALTECH licensees of Nonexclusively Licensed Patent Rights, if any, to provide nonexclusive
rights under such patents or patent applications.
ARTICLE IX
TERMINATION
9.1. CALTECH shall have the right to terminate this Agreement if LICENSEE fails to make any
payment due hereunder and LICENSEE continues to fail to make the payment, either to CALTECH
directly or by placing any disputed amount into an interest bearing escrow account to be released
when the dispute is resolved, for a period of sixty (60) days after receiving written notice from
CALTECH specifying LICENSEE’s failure. Upon any such termination, (i) LICENSEE and Related
Companies shall have six (6) months to complete the manufacture of any Licensed Products that then
are work in progress and to sell their inventory of Licensed Products and (ii) CALTECH shall accept
an assignment by LICENSEE of any sublicenses granted by LICENSEE to entities other than Related
Companies, and any sublicense so assigned shall remain in full force and effect.
9.2. If either party materially breaches this Agreement, the other party may elect to give the
breaching party written notice describing the alleged breach. If the breaching party has not cured
such breach within sixty (60) days after receipt of such notice, the notifying party will be
entitled, in addition to any other rights it may have under this Agreement, to terminate this
Agreement effective immediately; provided, however, that if either party receives notification from
the other of a material breach and if the party alleged to be in default notifies the other party
in writing within thirty (30) days of receipt of such default notice that it disputes the asserted
default, the matter will be submitted to arbitration as provided in Article XI of this
-14-
Agreement. In such event, the nonbreaching party shall not have the right to terminate this
Agreement until it has been determined in such arbitration proceeding that the other party
materially breached this Agreement, and the breaching party fails to cure such breach in accordance
with the decision of the arbitration proceeding within ninety (90) days after the conclusion of
such arbitration proceeding.
9.3. LICENSEE shall have the right to terminate this Agreement either in its entirety or as to
any jurisdiction or any part of the Licensed Patent Rights upon sixty (60) days written notice.
9.4. Termination of this Agreement for any reason shall not release any party hereto from any
liability which, at the time of such termination, has already accrued to the other party or which
is attributable to a period prior to such termination, nor preclude either party from pursuing any
rights and remedies it may have hereunder or at law or in equity which accrued or are based upon
any event occurring prior to such termination.
9.5. Sections 3.2, 4.1 and 7.2, and Articles XI, XII and XIII of this Agreement shall survive
termination of this Agreement for any reason.
ARTICLE X
WARRANTIES AND
NEGATION OF WARRANTIES,
IMPLIED LICENSES AND AGENCY
NEGATION OF WARRANTIES,
IMPLIED LICENSES AND AGENCY
10.1. CALTECH represents and warrants that it owns all right, title and interest in and to the
Licensed Patent Rights.
-15-
10.2. CALTECH represents and warrants that it has not granted any third party right or
interest in any of the Licensed Patent Rights and Improvements that is inconsistent with the rights
granted to LICENSEE herein and will not grant any third party such a right during the term of this
Agreement.
10.3. CALTECH represents and warrants: (i) it is the sole and exclusive owner of all right,
title, and interest in the CALTECH Technology; (ii) it has the right to grant the rights and
licenses granted herein, and the CALTECH Technology is free and clear of any lien, encumbrance,
security interest, or restriction on license; and (iii) there are no threatened or pending actions,
suits, investigations, claims, or proceedings in any way relating to the CALTECH Technology.
10.4. Nothing in this Agreement shall be construed as:
(a) a representation or warranty of CALTECH as to the validity or scope of Licensed Patent
Rights or any claim thereof; or
(b) a representation or warranty that any Licensed Product is or will be free from
infringement of rights of third parties; or
(c) an obligation to bring or prosecute actions or suits against third parties for
infringement; or
(d) conferring by implication, estoppel or otherwise, any license or rights under any patents
of CALTECH other than Licensed Patent Rights, regardless of whether such other patents are dominant
or subordinate to Licensed Patent Rights.
-16-
10.5. CALTECH MAKES NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE, AND ASSUMES NO RESPONSIBILITIES WHATEVER WITH RESPECT TO THE USE, SALE, OR
OTHER DISPOSITION BY LICENSEE OF LICENSED PRODUCT(S).
10.6. CALTECH and LICENSEE are independent parties in this Agreement. Accordingly, there is
no agency relationship between CALTECH and LICENSEE under this Agreement with respect to any
products made or sold, or any methods used, by LICENSEE under this Agreement.
ARTICLE XI
ARBITRATION
11.1. Any controversy or claim arising out of or related to this Agreement, or the breach
thereof, shall be settled by arbitration in the State of California, in accordance with the
Commercial Arbitration Rules of the American Arbitration Association, and judgment upon the award
rendered by the arbitrator(s) may be entered in any court having jurisdiction thereof.
ARTICLE XII
PRODUCT LIABILITY
12.1. LICENSEE agrees that CALTECH shall have no liability to LICENSEE or to any purchasers or
users of Licensed Products made or sold by LICENSEE for any claims, demands, losses, costs, or
damages suffered by LICENSEE, or purchasers or users of Licensed Products, or any other party,
which may result from personal injury, death, or property damage related to the manufacture, use,
or sale of such Licensed Products (“Claims”). LICENSEE agrees to defend, indemnify, and hold
harmless CALTECH, its trustees, officers, agents, and
-17-
employees from any such Claims, provided that (i) LICENSEE is notified promptly of any Claims,
(ii) LICENSEE has the sole right to control and defend or settle any litigation within the scope of
this indemnity, and (iii) all indemnified parties cooperate to the extent necessary in the defense
of any Claims.
12.2. At such time as LICENSEE begins to sell , or distribute Licensed Products (other than
for the purpose of obtaining regulatory approvals), LICENSEE shall at its sole expense, procure and
maintain policies of comprehensive general liability insurance in amounts not less than * per incident and * in annual aggregate and naming those indemnified under Paragraph 14.1
as additional insureds. Such comprehensive general liability insurance shall provide (i) product
liability coverage and (ii) broad form contractual liability coverage for LICENSEE’s
indemnification under Paragraph 14.1. In the event the aforesaid product liability coverage does
not provide for occurrence liability, LICENSEE shall maintain such comprehensive general liability
insurance for a reasonable period of not less than * years after it has ceased commercial
distribution or use of any Licensed Product.
12.3. LICENSEE shall provide CALTECH with written evidence of such insurance upon request of
CALTECH. LICENSEE shall provide CALTECH with notice at least fifteen (15) days prior to any
cancellation, non-renewal or material change in such insurance, to the extent LICENSEE receives
advance notice of such matters from its insurer. If LICENSEE does not obtain replacement insurance
providing comparable coverage within sixty (60) days following the date of such cancellation,
non-renewal or material change, CALTECH shall have the right to terminate this Agreement effective
at the end of such sixty (60) day period without any additional waiting period; provided that if
LICENSEE uses reasonable efforts but is unable to obtain the required insurance at commercially
reasonable rates, CALTECH shall not have the
-18-
right to terminate this Agreement, and CALTECH instead shall cooperate with LICENSEE to either
grant a waiver of LICENSEE’s obligations under this Article or assist LICENSEE in identifying a
carrier to provide such insurance or in developing a program for self-insurance or other
alternative measures. This Article XIII shall survive the expiration or termination of this
Agreement.
ARTICLE XIII
MISCELLANEOUS
13.1. LICENSEE agrees that it shall not use the name of CALTECH, or California Institute of
Technology, in any advertising or publicity material, or make any form of representation or
statement which would constitute an express or implied endorsement by CALTECH of any Licensed
Product, and that it shall not authorize others to do so, without first having obtained written
approval from CALTECH.
13.2. LICENSEE agrees to xxxx the appropriate U.S. patent number or numbers on all Licensed
Products made or sold in the United States, and to require its Sublicensees to do the same.
13.3. This Agreement sets forth the complete agreement of the parties concerning the subject
mater hereof. No claimed oral agreement in respect thereto shall be considered as any part hereof.
No waiver of or change in any of the terms hereof subsequent to the execution hereof claimed to
have been made by any representative of either party shall have any force or effect unless in
writing, signed by duly authorized representatives of the parties.
13.4. This Agreement shall be binding upon and inure to the benefit of any successor or
assignee of CALTECH. This Agreement is not assignable by LICENSEE without the prior
-19-
written consent of CALTECH, except that LICENSEE may assign this Agreement without the prior
written consent of CALTECH, to any Related Company, or any successor of, or purchaser of a
substantial part of the assets of, the business to which this Agreement pertains. Any permitted
assignee shall succeed to all of the rights and obligations of LICENSEE under this Agreement.
13.5. This Agreement is subject in all respects to the laws and regulations of the United
States of America, including the Export Administration Act of 1979, as amended, and any regulations
thereunder.
13.6. This Agreement shall be deemed to have been entered into in California and shall be
construed and enforced in accordance with California law.
13.7. Any notice or communication required or permitted to be given or made under this
Agreement shall be addressed as follows:
CALTECH:
|
Office of Technology Transfer | |
| California Institute of Technology | ||
| 0000 Xxxx Xxxxxxxxxx Xxxxxxxxx (X/X 000-00) | ||
| Xxxxxxxx, Xxxxxxxxxx 00000 | ||
| FAX No. (000) 000-0000 | ||
LICENSEE:
|
Xxxx X. Xxxxxxxxx, Ph.D. | |
| Vice President, Scientific Affairs | ||
| 000 Xxxxxxx Xxxxxx | ||
| Xxxxxxxx, XX 00000 | ||
| FAX No. (000) 000-0000 |
Either party may notify the other in writing of a change of address or FAX number, in which
event any subsequent communication relative to this Agreement shall be sent to the last said
notified address or number. All notices and communications relating to this Agreement
-20-
shall be deemed to have been given when received and shall be sent by registered return
receipt mail and by FAX.
13.8. Nothing in this Agreement will impair LICENSEE’s right to independently acquire,
license, develop for itself, or have others develop for it, intellectual property and technology
performing similar functions as the CALTECH Technology or to market and distribute products other
than Licensed Products based on such other intellectual property and technology.
13.9. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL, INCIDENTAL,
OR INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
13.10. Neither party shall lose any rights hereunder or be liable to the other party for
damages or losses (except for payment obligations) on account of failure of performance by the
defaulting party if the failure is occasioned by war, strike, fire, Act of God, earthquake, flood,
lockout, embargo, governmental acts or orders or restrictions, failure of suppliers, or any other
reason where failure to perform is beyond the reasonable control and not caused by the negligence
or intentional conduct or misconduct of the nonperforming party, and such party has exerted all
reasonable efforts to avoid or remedy such force majored; provided, however, that in no event shall
a party be required to settle any labor dispute or disturbance.
13.11. In the event that any provisions of this Agreement are determined to be invalid or
unenforceable by a court of competent jurisdiction, the remainder of the Agreement shall remain in
full force and effect without said provision. The parties shall in good faith negotiate a
-21-
substitute clause for any provision declared invalid or unenforceable, which shall most nearly
approximate the intent of the parties in entering this Agreement.
-22-
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed:
| CALIFORNIA INSTITUTE OF TECHNOLOGY (CALTECH) |
||||
| By: | /s/ Xxxxxxxx Xxxxxxx | |||
| Name: | Xxxxxxxx Xxxxxxx | |||
| Title: | Director, Office of Technology Transfer | |||
| CLINICAL MICRO SENSORS, INC. |
||||
| By: | /s/ Xxx Xxxxxx | |||
| Name: | Xxx X. Xxxxxx | |||
| Title: | President and CEO | |||
-23-
EXHIBIT A
| Intn1 | Intnl | |||||||||||||||||
| Atty. Docket # | Title | Inventors | Filng Date | Country | USSN | US Patent # | Application # | Publication | ||||||||||
A-58762
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx, Kayyem Fraser | 12/10/93 | U.S. | 08/166,036 | 5,591,578 | ||||||||||||
A-58762-1
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/7/95 | U.S. | 08/475,051 | 5,824,473 | ||||||||||||
A58762-2
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/7/96 | U.S. | 08/660,534 | 5,770,369 | ||||||||||||
A58762-4
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
9/6/96 | U.S. | 08/709,265 | 5,705,348 | ||||||||||||
A58762-5
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
9/6796 | U.S. | 08/709,263 | 5,780,234 | I | |||||||||||
A58762-6
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/12/97 | U.S. | 08/873,598 | 5,952,172 | ||||||||||||
A58762-7
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
10/8/97 | U.S. | 08/946,679 | |||||||||||||
A58762-8
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/19/98 | 09/100,507 | ||||||||||||||
A58762-9
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
5/7/99 | U.S. | 09/306,749 | |||||||||||||
A-58762-10
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
5/7/99 | U.S. | 09/306,737 | |||||||||||||
A-58762-11
|
Nucleic Acid Mediated Elecron Transfert |
Meade, Kayyem, Fraser |
5/7/99 | U.S. | 09/306,768 | |||||||||||||
A-58762-12
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
T2/6/99 | U.S. | ||||||||||||||
A-58762-13
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
12/10/99 | U.S. | ||||||||||||||
A-58762-14
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
12/10/99 |
U.S. | ||||||||||||||
A-58762-15
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
00/0/00 | X.X. | ||||||||||||||
X00000-00
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
12/8/99 | U.S. | ||||||||||||||
FP-58762-PC
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
12/5/94 | PCT | PCT 1US94/13893 | WO 9515971 | ||||||||||||
FA-58762-AU
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
7/8/99 | Australia | 08/166,036 | 703329 | 12152/95 | |||||||||||
FA-58762-CA
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Canada | |||||||||||||||
FE-58762-EP
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Europe | |||||||||||||||
FA-58762-JA
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Japan | |||||||||||||||
FP 587622-PC
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/7/96 | PCT | PCT US96/097691 |
WO 9640712 |
||||||||||||
FA-58762-2-AU
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Australia | |||||||||||||||
FA-58762-2-CA
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Canada | |||||||||||||||
FE-58762-2-EP
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Europe | |||||||||||||||
FA-58762-2-JP
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
Japan | |||||||||||||||
A58762-3
|
Nucleic Acid Mediated Electron Transfer |
Meade, Kayyem, Fraser |
6/7/96 | U.S. | 08/659,987 | |||||||||||||
FP-58762-3-PC
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx, Xxxxx | 6/4/97 | PCT | PCT US97/09739 | WO 9746568 | ||||||||||||
FA-58762-3-AU
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx, Xxxxx | Australia | |||||||||||||||
FA-58762-3-CA
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx, Xxxxx | Canada | |||||||||||||||
FA 58762-3-EP
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx, Xxxxx | Europe | |||||||||||||||
FA-58762-3-JP
|
Nucleic Acid Mediated Electron Transfer |
Xxxxx Xxxxx | Japan | |||||||||||||||
-24-
EXHIBIT B
| Intn1 | Intnl | |||||||||||||||
| Atty. Docket # | Title | Inventors | Filng Date | Country | USSN | US Patent # | Application # | Publication | ||||||||
A58763
|
Cell-Specific Gene Delively Vehicles |
Kayyem, Fraser, Xxxxx |
10/12/94 | U.S. | 08/321,552 | |||||||||||
A58763-1
|
Cell-Specific Gene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
6/ 6/95 | |||||||||||||
A62629
|
Cell-SpecificGene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
10/11/95 | U.S. | 08/541,191 | |||||||||||
FP-62629-PC
|
Cell-SpecificGene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
10/11/95 | PCT | PCT US95/14621 | WO 9611712 | ||||||||||
FA-62629-AU
|
Cell-SpecificGene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
Australia | |||||||||||||
FA-62629-CA
|
Cell-SpecificGene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
Canada | |||||||||||||
FE-62629- 3EP
|
Cell-Specific Gene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
Europe | |||||||||||||
FA-62629-JP
|
Cell-Specific GeneDelivery Vehicles |
Kayyem, Fraser, Xxxxx |
Japan | r. | ||||||||||||
FA-62629-NZ
|
Cell Specific Gene Delivery Vehicles |
Kayyem, Fraser, Xxxxx |
New Zealand |
PCT/US95/14621 |
-25-
