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EXHIBIT 10.6 CONFIDENTIAL TREATMENT
GENOMETRIX INCORPORATED HAS REQUESTED
THAT THE MARKED PORTIONS OF THIS DOCUMENT
BE ACCORDED CONFIDENTIAL TREATMENT PURSUANT
TO RULE 406 UNDER THE SECURITIES ACT OF 1933,
AS AMENDED
LICENSE AGREEMENT
BETWEEN
XENOMETRIX, INC.
AND
GENOMETRIX INCORPORATED
AUGUST 27,1999
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LICENSE AGREEMENT
This License Agreement (the "Agreement") is made this 27th day of
August, 1999 (the "Effective Date"), by and between Xenometrix, Inc., a Delaware
corporation with principal offices at 0000 Xxxxx 00xx Xxxxxx, Xxxxx 000,
Xxxxxxx, XX 00000-0000 ("XENO") and Genometrix Incorporated, a Delaware
corporation with principal offices at 3608 Research Forest Drive, Suite B7, The
Xxxxxxxxx, Xxxxx, 00000 ("GENOMETRIX").
RECITALS
WHEREAS, XENO is the joint owner of and the exclusive licensee of the
XENO Patents (as hereinafter defined), and desires to non-exclusively license
the same to GENOMETRIX; and
WHEREAS, GENOMETRIX seeks to obtain certain non-exclusive rights and
licenses under the XENO Patents, according to the terms contained herein.
NOW THEREFORE, in consideration of the foregoing and the covenants and
promises contained herein, the parties agree as follows:
1. DEFINITIONS
1.1. "AFFILIATE" means any corporation or other business entity
controlling, controlled by, or in common control with the designated party.
Control, as used in the context of a business entity, means the ownership
directly or indirectly of greater than fifty percent (50%) of the voting
securities of the corporation or other entity, or greater than a fifty percent
(50%) interest in the income of such corporation or other entity, or the ability
otherwise to secure that the affairs of such corporation or other entity are
managed in accordance with the such entity's wishes.
1.2. "CHIP" means a microarray of biological probes designed to carry
out or enable genomic sequencing, mutation detection, assays, syntheses,
reactions, analyses or sample preparation. The term "Chip" also includes
assemblies of multiple Chips that are interconnected in close physical proximity
to each other. Chips may incorporate other electrical, electronic,
electromechanical and mechanical components when said components are an integral
part of the Chip.
1.3. "CONFIDENTIAL INFORMATION" means all information, compounds, data,
know-how, trade secrets, technical data, specifications, testing methods,
protocols, standard operating procedures, product and marketing plans' customer
and supplier information, and Materials disclosed by one party (the "Disclosing
Party") to the other party (the "Receiving Party") pursuant to this Agreement
and specifically designated as confidential, regardless of whether such
information is in written, oral, electronic, or other form; provided, that,
Confidential Information that is disclosed orally or visually shall be
documented in a written notice to the Receiving Party within fifteen (15) days
of the date of disclosure.
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
1.4. "FIELD" means *** ****** ** ***, including without limitation
********* *******, **********, **** ********** ********* and ******* *********
*********, and the *************** ** ************ ** **** ************ ***
******* *********** **********.
1.5. "HARVARD" means the President and Fellows of Harvard College, a
nonprofit Massachusetts educational corporation having offices at the Office for
Technology and Trademark Licensing, Xxxxxxx Xxxxxx, Xxxxx 000, 0000
Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000.
1.6. "HARVARD LICENSE AGREEMENT" means the license agreement between
the President and Fellows of Harvard College and Venmark Ltd., having an
effective date of January 18, 1992, and any amendments thereto. A true and
accurate copy of the Harvard License Agreement and the amendment thereto dated
January 18, 1992 and having an effective date of January 21, 1993, is attached
hereto as EXHIBIT B.
1.7. "LICENSED PRODUCT(S)" means a Chip where (i) the Chip or a
functional component thereof is claimed in the XENO Patents or (ii) the Chip is
manufactured or used in accordance with or by means of the Licensed Process, or
(iii) the Chip makes use of the technology claimed in the XENO Patents in its
manufacture, testing, use or sale.
1.8. "LICENSE PROCESS(ES)" means the process(es) claimed in XENO
Patents.
1.9. "LICENSED SERVICE(S)" means services performed on a commercial
basis for third parties or components thereof utilizing Licensed Product(s) or
Licensed Process(es) as defined herein.
1.10. "NET SALES" means the amounts received in consideration for the
sale, transfer or use of Licensed Products covered by a Valid Claim less the sum
of the following actual and customary deductions: (i) customary trade, quantity
or cash discounts and non-affiliated brokers' or agents' commissions actually
allowed and taken; (ii) amounts repaid or credited by reason of rejection or
return; and (iii) any tax (including sales and use taxes) or government charges
(other than an income tax) levied on the sale, transportation or delivery of a
Licensed Product; (iv) import or export duties and/or taxes; and (v)
transportation charges, including any prepaid or invoiced charges for freight,
postage, shipping, insurance or charges for returnable containers.
In the event that Licensed Products are sold, used or provided in
combination with other products, components or processes, or in the event a
Licensed Product is one component among a combination of functional elements,
then Net Sales, for purposes of determining royalty payments on the combination,
shall be calculated using one of the following methods:
(i) By multiplying the Net Sales of the combination product or
process by the fraction A/A+B, where A is the gross selling price,
during the royalty period in question, of the Licensed Product sold
separately, and B is the aggregate gross selling price, during the
royalty period in question, of all other products, components,
processes or elements when sold separately; or
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(ii) In the event that no such separate sales are made of the
Licensed Product or such other products, components, elements or
processes in such combination during the royalty period in question,
Net Sales, for the purposes of determining royalty payments, shall be
calculated using the above formula where A is the reasonably estimated
commercial value of the Licensed Product when sold separately, and B is
the reasonably estimated aggregate commercial value of all other
products, processes, components or elements when sold separately. Any
such estimates shall be determined using criteria to be mutually agreed
upon by the parties.
1.11. "SERVICE INCOME" means (A) the total number of distinct Chips
which are (i) Licensed Products, and (ii) which are covered by a Valid Claim of
the XENO Patents, and (iii) which are used by GENOMETRIX to provide a Licensed
Service to a Third Party, multiplied by (B) the Net Sales that would be
attributable to the sale of each such Chip pursuant to Section 1.10. above if,
such Chip had been sold to such Third Party during the period in question.
1.12. "TERM" has the meaning set forth in Section 6.1.1.
1.13. "THIRD PARTY" means any entity other than (i) GENOMETRIX and any
of its Affiliates, and (ii) XENO and any of its Affiliates.
1.14. "VALID CLAIM" means (i) a pending claim of a patent application
comprising the XENO Patents, which (A) has been asserted in good faith and can
be reasonably considered to be patentable in view of any and all references and
prior art known to the parties at any time, (B) has not been abandoned or
finally rejected without the possibility of appeal or refiling, and (C) has been
pending for less than seven (7) years from the applicable priority date; or (ii)
a claim of an issued or granted and unexpired patent comprising the XENO
Patents, which has not been held unenforceable, unpatentable or invalid by a
decision of a court or governmental body of competent jurisdiction, unappealable
or unappealed within the time allowed for appeal, which has not been rendered
unenforceable through disclaimer or otherwise, which has not been abandoned, or
which has not been lost through an interference proceeding.
1.15. "XENO PATENTS" means the patents and patent applications listed
on EXHIBIT A hereto, any patent applications filed prior or subsequent to the
Effective Date that claim the benefit of an early filing date to any of the
patent applications listed in EXHIBIT A, and any improvements, reissues,
extensions, substitutions, confirmations, re-registrations, reexaminations,
continuations, divisionals or continuations-in-part of the foregoing patents and
patent applications, as well as all foreign counterparts, or equivalents
thereof.
2. LICENSES
2.1. GRANT OF LICENSES UNDER THE XENO PATENTS FROM XENO TO GENOMETRIX
2.1.1. Non-Exclusive License Under XENO's Interest in the XENO
Patents. XENO hereby grants to GENOMETRIX and its Affiliates a non-exclusive,
worldwide license in the Field under XENO's ownership interest in the XENO
Patents, to make, use, sell, offer for
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
sale, import, and export, or otherwise exploit any process, composition of
matter or other invention claimed in the XENO Patents. Such right shall include,
without limitation, the right to make, use, sell, offer for sale, import, and
export Licensed Products and Licensed Services.
2.1.2. Non-Exclusive Sublicense to XENO Patents Under the
Harvard License Agreement. XENO hereby grants to GENOMETRIX and its Affiliates a
non-exclusive, worldwide sublicense in the Field under XENO's license to
Harvard's interest in the XENO Patents pursuant to the Harvard License
Agreement, to make, use, sell, offer for sale, import, and export, or otherwise
exploit any process, composition of matter or other invention claimed in the
XENO Patents. Such license shall include, without limitation, the right to make,
use, sell, offer for sale, import, and export Licensed Products and Licensed
Services. GENOMETRIX acknowledges the Harvard License Agreement and obligations
imposed by Section 2.2(e) thereof; provided that, the obligation of Section
2.2(e) of the Harvard License Agreement shall not be construed to affect
GENOMETRIX's right to freely determine pricing for Licensed Products and
Licensed Services hereunder. GENOMETRIX agrees that any Licensed Products or
Licensed Services produced for sale or use in the United States will be
manufactured substantially in the United States.
2.2. RIGHT TO GRANT SUBLICENSES. The rights and licenses granted to
GENOMETRIX pursuant to Section 2.1. above, ***** ******* *** ***** ** GENOMETRIX
and its Affiliates ** ***** *********** ** ***** ********** *********, *******,
************ and ************** ** ******** ******** ****** ******** ********
****** *** *** **** ********** ****** ** ********** ** **********.
2.3. RETAINED RIGHTS; RIGHTS OF UNITED STATES GOVERNMENT.
2.3.1. GENOMIETRIX recognizes that, pursuant to Section 2.2(b)
of the Harvard License Agreement, Harvard has retained certain rights to make
and to use, for its own research purposes only and not for any commercial
purpose, the subject matter described and claimed in the XENO Patents.
2.3.2. GENOMETRIX recognizes that the rights granted to it
under the XENO Patents which are owned jointly by XENO and Harvard and which are
the subject of the Harvard License Agreement are subject to the rights of the
United States Government as set forth in Public Laws 96-517 and 98-620.
3. COMPENSATION
3.1. COMPENSATION FOR THE XENO PATENTS LICENSE. As consideration for
the licenses and rights granted to GENOMETRIX herein, GENOMETRIX shall pay to
XENO:
3.1.1. A non-refundable, up-front license issue fee of
*************** , less the Option Fee of **************** paid by GENOMETRIX
prior to the Effective Date pursuant to the Option Agreement dated May 27, 1999,
leaving an outstanding balance of
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CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION. ASTERISKS
DENOTE SUCH OMISSIONS.
****************** payable by GENOMETRIX as follows: (i) ************** upon
execution of this Agreement, and (ii) **************** within three (3) months
of the Effective Date of this Agreement.
3.1.2. With respect to Licensed Products only (and not
Licensed Services), a royalty of ************ of the Net Sales of Licensed
Products covered by a Valid Claim of the XENO Patents and sold by GENOMETRIX,
its Affiliates or sublicensees.
3.1.3. With respect to Licensed Services only (and not
Licensed Products), a royalty of ************ of Service Income covered by a
Valid Claim of the XENO Patents and received by GENOMETRIX, its Affiliates or
sublicensees.
3.1.4. For the avoidance of doubt, the royalty payments
outlined in Sections 3.1.2. and 3.1.3. are intended to be mutually exclusive.
Only one royalty payment for each specific sale of a Licensed Product or the
provision of a Licensed Service shall be payable to XENO, regardless of the
number of Valid Claims of the XENO Patents covering the manufacture, use or sale
of the applicable Licensed Product or the provision of the Licensed Service.
3.1.5. The royalties set forth in Sections 3.1.2. and 3.1.3.
shall be paid to XENO within sixty (60) days after the end of each calendar
quarter.
3.1.6. If, in the reasonable judgment of GENOMETRIX, it should
prove impractical or impossible for GENOMETRIX or any of its Affiliates or
sublicensees to develop, make, use, sell or import a Licensed Product or provide
a Licensed Service without first obtaining a royalty-bearing license from a
Third Party under one or more pending patent applications or issued patents
owned or controlled by such Third Party in any country, then, effective upon
obtaining a license from such Third Party, GENOMETRIX shall be entitled to a
credit against the payments due hereunder of an amount equal to ************ of
the royalty paid to any such Third Party by GENOMETRIX, its Affiliates or
sublicensees in such country, not to exceed ********** of the royalty payment
otherwise due under this Agreement, arising from the development, manufacture,
use, sale or import of the Licensed Product or Licensed Service covered by such
Third Party patent or patent application in such country. If such *************
of the Third Party royalty owed by GENOMETRIX's exceeds the amount of royalties
deducted by GENOMETRIX for any calendar year, GENOMETRIX may to that extent
reduce the royalties due to XENO in succeeding calendar years, but never by more
than ********* of the total royalty due in any one year until such Third Party
royalties have been fully carried forward and credited to GENOMETRIX.
3.1.7. GENOMETRIX shall not be obligated to make any further
royalty payments in a country for any Licensed Product or Licensed Service after
the end-of the period commencing on the date of the first commercial transaction
of the Licensed Product or provision of Licensed Service in that country by
GENOMETRIX, its Affiliates or sublicensees and ending
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on the expiration of the last to expire Valid Claim covering the Licensed
Product or Licensed Service in that country.
4. REPRESENTATIONS AND WARRANTIES
4.1. REPRESENTATIONS AND WARRANTIES OF GENOMETRIX AND XENO. Each party
hereby represents and warrants:
4.1.1. Corporate Power. Such party is duly organized and
validly existing and in good standing under the laws of the state and/or country
of its incorporation and has all requisite corporate power and authority to
enter into this Agreement and to carry out the provisions hereof.
4.1.2. Due Authorization. Such party is duly authorized to
execute and deliver this Agreement and to perform its obligations hereunder.
4.1.3. Binding Agreement. This Agreement is a legal and valid
obligation binding upon it and enforceable in accordance with its terms. The
execution, delivery and performance of this Agreement by such party does not
conflict with any agreement, instrument or understanding, oral or written, to
which it is a party or by which it may be bound, nor violate any law or
regulation of any court, governmental body or administrative or other agency
having jurisdiction over it.
4.2. NEGATION OF WARRANTIES. Except as expressly set forth in this
Agreement, XENO MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE
LICENSED PRODUCTS OR THE PROVISION OF LICENSED SERVICES WILL NOT INFRINGE ANY
PATENT, COPYRIGHT, TRADEMARK, OR, OTHER INTELLECTUAL PROPERTY RIGHT OF ANY THIRD
PARTY. HOWEVER, XENO HAS NO REASON TO BELIEVE THAT THE XENO PATENTS ARE INVALID
OR THAT EXPLOITATION OF THE XENO PATENTS BY GENOMETRIX, ITS AFFILIATES OR
SUBLICENSEES WILL INFRINGE THE PATENT OR OTHER INTELLECTUAL PROPERTY RIGHTS OF
XENO, HARVARD OR ANY THIRD PARTY.
4.3. HARVARD LICENSE AGREEMENT. XENO represents and warrants that the
Harvard License Agreement has not, as of the Effective Date, been terminated by
either XENO or the President and Fellows of Harvard College and that XENO has
not, as of the Effective Date, received nor given notice of termination for
breach of the Harvard License Agreement, and neither XENO nor Harvard is in
default or breach of the Harvard License Agreement. XENO represents and warrants
that it will use its best efforts to maintain the Harvard License Agreement and
the exclusive licenses granted to XENO therein in full force and effect, which
shall include, without limitation, (a) complying with its obligations to pay the
royalties and other amounts owed Harvard pursuant to the Harvard License
Agreement, and complying with all due diligence and commercialization
obligations and milestones set forth in the Harvard License Agreement, (b)
refraining from entering into any modification or amendment to the Harvard
License Agreement that would in any way affect the rights under the XENO Patents
granted to
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GENOMETRIX hereunder, and (c) taking no action or making no omission which will
cause Harvard to have the right to terminate the Harvard License Agreement
pursuant to its terms or rendering the exclusive licenses granted thereunder
non-exclusive, and (d) taking any action to terminate the Harvard License
Agreement. XENO agrees to notify GENOMETRIX of any written or oral notification
by Harvard that XENO has breached the Harvard License Agreement or that Harvard
wishes to terminate the Harvard License Agreement or render the exclusive
licenses granted thereunder non-exclusive. XENO represents and warrants that it
has the right under the Harvard License Agreement to grant to GENOMETRIX the
rights and licenses granted herein. XENO represents and warrants that, should
the Harvard License Agreement be terminated or rendered non-exclusive by
Harvard, (i) the rights and licenses granted to GENOMETRIX under XENO's interest
in the XENO Patents shall remain in full force and effect, and (ii) as set forth
in EXHIBIT C hereof, GENOMETRIX shall continue to have a non-exclusive,
worldwide, royalty bearing (as set forth in this Agreement) license under XENO's
interest in the XENO Patents.
4.4. ENFORCEMENT OF THE XENO PATENTS. GENOMETRIX and XENO each agree to
notify the other promptly of any infringement of the XENO Patents of which it
becomes aware. XENO shall have the right, but not the obligation, to bring an
enforcement action against any Third Party infringer of the XENO Patents in the
FIELD; provided, that, if XENO does bring such action, GENOMETRIX at its option
may elect to join in any such action at GENOMETRIX's expense, and the parties
shall agree on a reasonable allocation of any damages recovered pursuant to such
action. If XENO fails to bring any such enforcement action against any such
alleged infringer within ninety (90) days of notification of such alleged
infringement, (pursuant in this Section 4.4) GENOMETRIX shall have the right,
but not the obligation, to bring such action, and in such case, XENO shall
provide GENOMETRIX with all reasonable assistance or technical support
reasonably requested by GENOMETRIX, including, without limitation and only to
the extent it has the right to do so pursuant to the Harvard License Agreement,
causing Harvard to provide assistance in such action. XENO agrees that it shall
not sublicense any alleged infringer of the XENO Patents in the Field, without
the prior written consent of GENOMETRIX, if the alleged infringer is in active
settlement discussions, and/or active litigation with GENOMETRIX regarding
infringement of the XENO Patents, such consent not to be unreasonably withheld.
In the event that an action is brought against GENOMETRIX by a Third Party
alleging infringement of such Third Party's patent rights, XENO shall provide
GENOMETRIX, at GENOMETRIX's expense, with all reasonable assistance or technical
support reasonably requested by GENOMETRIX, including, without limitation and
only to the extent it has the right to do so pursuant to the Harvard License
Agreement, causing Harvard to provide assistance in such action.
5. CONFIDENTIALITY
5.1. CONFIDENTIAL INFORMATION. Except as otherwise expressly provided
herein, the parties agree that, during the Term and for a period of five (5)
years thereafter, the Receiving Party shall keep completely confidential and
shall not publish or otherwise disclose to any Third Party, and shall not use
for any purpose other than (i) to perform the purposes contemplated by this
Agreement and to exercise the rights and licenses granted hereunder, and (ii)
where
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reasonably necessary, for the filing or prosecution of patent applications
comprising the XENO Patents, and to prosecute alleged infringers or the XENO
Patents or to defend the XENO Patents.
The foregoing obligations shall not apply to Confidential Information
that the Receiving Party can demonstrate by written records:
(a) was in the public domain prior to the time of its
disclosure under this Agreement;
(b) entered the public domain after the time of its disclosure
under this Agreement through means other than an unauthorized
disclosure resulting from an act or omission of the Receiving Party,
its directors, officers or employees;
(c) was independently developed or discovered by the Receiving
Party prior to the time of its disclosure under this Agreement;
(d) is or was disclosed to the Receiving Party at any time,
whether prior to or after the time of its disclosure under this
Agreement, by a Third Party who had no fiduciary relationship with the
Disclosing Party and had no obligation of confidentiality with respect
to such Confidential Information; or
(e) is required to be disclosed to comply with applicable laws
or regulations, or with a court or administrative order, provided that,
the Receiving Party notifies the Disclosing Party promptly upon receipt
of such court or administrative order and/or prior to any disclosure,
thereby giving the Disclosing Party sufficient advance notice to permit
the Disclosing Party to seek a protective order or other similar order
with respect to such Confidential Information; and provided further,
that the Receiving Party shall take all reasonable and lawful actions
to obtain confidential treatment for such disclosure and to minimize
the extent of the disclosure, and that the Receiving Party furnishes
only that portion of the Confidential Information which it is advised
by its legal counsel is legally required to be disclosed, regardless of
whether a protective order or other similar order is obtained by the
Disclosing Party.
5.2. CONFIDENTIAL TERMS. The terms and conditions of this Agreement,
including without limitation the financial terms, shall be considered
Confidential Information hereunder, and shall be treated in accordance with the
provisions of this Article 5. The foregoing notwithstanding, the parties
recognize and agree that, pursuant to Section 2.2(e) of the Harvard License
Agreement, XENO is obligated to provide Harvard with a copy of this Agreement,
and XENO agrees that in fulfilling such obligation XENO shall notify Harvard in
writing that this Agreement shall be treated by Harvard as Proprietary
Information pursuant to Section 4.4(a) of the Harvard License Agreement
5.3. PRESS RELEASE. The provisions of Sections 5.1. and 5.2.
notwithstanding, the parties shall agree upon a press release to announce the
execution of this Agreement Thereafter, XENO and GENOMETRIX may each disclose to
Third Parties the information contained in such press release without the need
for further approval by the other.
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6. TERMINATION
6.1. TERMINATION OF AGREEMENT.
6.1.1. Unless earlier terminated, this Agreement shall remain
in full force and effect until the expiration or disallowance of the last claim
of a patent or patent application comprising the XENO Patents (hereinafter the
"Term").
6.1.2. Either party shall have the right to terminate this
Agreement for a material breach of this Agreement by the other party by
providing the breaching party with written notification of the nature of the
default and requiring it to cure the default. If such default is not cured
within thirty (30) days after receipt of such notice (or, if such default cannot
be cured or remedied within such thirty (30) day period, if the party in default
does not commence and diligently continue actions to cure or remedy the
default), the non-breaching party shall be entitled, without prejudice to any of
its other rights under this Agreement, to terminate this Agreement by giving
written notice to take effect within thirty (30) days after such notice, unless
the breaching party shall cure such default within such thirty (30) day period.
The right of either party to terminate this Agreement pursuant to this Section
6.1.2. shall not be affected in any way by its waiver or failure to take action
with respect to any previous default, subject to applicable statutes of
limitation.
6.1.3. GENOMETRIX may terminate this Agreement without cause
at any time by providing written notice thereof to XENO and such termination
will be. effective ninety (90) days thereafter.
6.1.4. If (i) GENOMETRIX loses the rights under XENO's
interest in the XENO Patents granted to it pursuant to this Agreement as a
result of the bankruptcy or insolvency of XENO, or (ii) if XENO makes an
assignment for the benefit of creditors, appoints or suffers appointment of a
receiver or trustee or files a petition under any bankruptcy or insolvency act
or has any such petition filed against it, and such action causes GENOMETRIX to
lose the rights under XENO's interest in the XENO Patents granted to it under
this Agreement, then Harvard has agreed (as set forth in EXHIBIT C hereof), to
the extent it is legally able to do so, to negotiate with GENOMETRIX in good
faith regarding the grant to GENOMETRIX of a non-exclusive license under
Harvard's interest in the XENO Patents, such license to have commercially
reasonable terms; provided, that, the terms (including the applicable royalty
rate) shall be at least as favorable to GENOMETRIX as the terms (including the
applicable royalty rate) of this Agreement.
6.1.5. Upon any termination of this Agreement, all sublicenses
granted by GENOMETRIX under this Agreement shall terminate, unless any
sublicensee shall agree in writing thereto to be bound directly to XENO by the
provisions of the relevant sublicense agreement, in which event such sublicense
shall survive. The foregoing not withstanding, any sublicense granted to
customers or clients of GENOMETRIX shall survive only to the extent necessary to
permit such sublicensees to continue in its use of Licensed Product(s) sold to
it or Licensed Service(s) provided to it pursuant to this Agreement prior to the
effective date of termination.
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6.1.6. The following Articles and Sections shall survive the
expiration or early termination of this Agreement: Articles 5 and 7, and
Sections 3.1.7., 4.2., 4.3., 6.1.4., 6.1.5., this Section 6.1.6., and Section
6.1.7.
6.1.7. Any termination, relinquishment or expiration of this
Agreement for any reason shall be without prejudice to any rights, which shall
have accrued, to the benefit of either party under this Agreement prior to such
termination, relinquishment or expiration. Such termination, relinquishment or
expiration shall not relieve either party from obligations, which are expressly
indicated to survive termination or expiration of this Agreement.
7. MISCELLANEOUS
7.1. BINDING EFFECT; ASSIGNMENT. This Agreement shall be binding upon
the parties' respective successors and permitted assigns. Neither party may
assign this Agreement or any of its rights or obligations hereunder without the
prior written consent of the other party (not to be unreasonably withheld), and
any such attempted assignment shall be void; provided, that, XENO or GENOMETRIX,
respectively, may assign this Agreement to a successor to the business interest
of such party relating to the XENO Patents; provided, that, such assignee agrees
to assume all of the obligations of the assigning party hereunder.
7.2. EFFECT OF WAIVER. No waiver of any default, condition, provisions
or breach of this Agreement shall be deemed to imply or constitute a waiver of
any other like default, condition, provision or breach of this Agreement.
7.3. LIMITATION OF LIABILITY. EXCEPT AS OTHERWISE PROVIDED HEREIN,
NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL,
INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF THIS LICENSE AGREEMENT, HOWEVER
CAUSED, UNDER ANY THEORY OF LIABILITY.
7.4. INDEMNIFICATION. GENOMETRIX will defend, indemnify and hold XENO,
its officers, directors, employees, Affiliates and agents harmless against any
and all liability, loss, damage, claim or expense (including attorney's fees)
arising out of a suit by a Third Party from the performance under this Agreement
by GENOMETRIX; except to the extent such claim is caused by the negligence or
willful misconduct of XENO or a breach of a representation of XENO. XENO will
defend, indemnify and hold GENOMETRIX, its officers, directors, employees,
Affiliates and agents harmless against any and all liability, loss, damage,
claim or expense (including attorney's fees) arising out of a suit by a Third
Party from the performance under this Agreement by XENO; except to the extent
such claim is caused by the negligence or willful misconduct of GENOMETRIX or a
breach of a representation of GENOMETRIX.
7.5. PRODUCT LIABILITY INSURANCE; INDEMNITY. GENOMIETRIX agrees that,
to the extent it has insurance coverage therefore, it shall indemnify, defend
and hold XENO harmless from any claim, demand or action by any Third Party
arising out of or relating to the sale by GENOMIETRIX hereunder of products
licensed in the Field herein by XENO, services
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performed by GENOMETRIX in the Field, or the performance of any activity as
GENOMETRIX under this Agreement, except to the extent such claim, demand or
action resulted from the negligence of misconduct of XENO.
7.6. FORCE MAJEURE. 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 majeure; provided however, that in no event shall a party
be required to settle any labor dispute or disturbance.
7.7. AMENDMENT. No modification, supplement to or waiver of this
Agreement or any Addendum hereto or any of their provisions shall be binding
upon a party hereto unless made in writing and duly signed by an authorized
representative of both XENO and GENOMETRIX. In no event may the terms of this
Agreement be changed, deleted, supplemented or waived by any notice, purchase
order; receipt, acceptance, xxxx of lading or other similar form of document. A
failure of either party to exercise any right or remedy hereunder, in whole or
in part, or on one or more occasions, shall not be deemed either a waiver of
such right or remedy to the extent not exercised, or of any other right or
remedy, on such occasion or a waiver of any right or remedy on any succeeding
occasion.
7.8. ENTIRE AGREEMENT. This Agreement, together with EXHIBIT A, EXHIBIT
B and Exhibit C attached hereto, sets forth the entire understanding and
agreement of the parties as to the subject matter thereof, and there are no
other understandings, representations or promises, written or verbal, not set
forth herein or on which either party has relied.
7.9. NOTICES. All Notices under this Agreement shall be given in
writing and shall be addressed to the parties at the following addresses:
FOR XENO:
Xxxxxxx Xxx, Ph.D.
President and Chief Scientific Officer
Xenometrix, Inc.
0000 Xxxxx 00xx Xxxxxx, Xxxxx 000
Xxxxxxx, Xxxxxxxx 00000-0000
FOR GENOMETRIX:
Xxxxxxxx X. Xxxxxx, Ph.D.
Chief Executive Officer
Genometrix Incorporated
0000 Xxxxxxxx Xxxxxx Xxxxx, Xxxxx X0
Xxx Xxxxxxxxx, XX 00000
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Notices shall be in writing and shall be deemed delivered when
received, if delivered by a courier, overnight mail service or the like, or a
week following mailing, if sent by first-class certified or registered mail,
postage prepaid.
7.10 ARBITRATION.
7.10.1. In the event of any controversy or claim arising out
of or relating to any provision of this Agreement or the breach thereof,
including any dispute relating to patent validity or infringement (hereinafter a
"Dispute"), the parties shall try to settle such disputes amicably between
themselves, and it is the objective of the parties to establish procedures to
facilitate the resolution of disputes arising under this Agreement in an
expedient manner by mutual cooperation and without resort to arbitration.
Promptly after the identification of a Dispute, the party raising the Dispute
shall promptly advise the other party thereof in writing, which writing shall
describe the nature of the Dispute in reasonable detail. The parties shall
thereafter attempt to resolve the Dispute by good faith negotiations between
XENO's President and GENOMETRIX's Chief Executive Officer within thirty (30)
days after such notice is received. If the Dispute is not resolved within such
thirty (30) day period (or any mutually agreed extension), or if the parties
fail to meet within such thirty (30) days, the Dispute shall be submitted to
binding arbitration as provided in Section 7.10.2. below.
7.10.2. Any Dispute which the parties are unable to resolve
pursuant to Section 7.10.1. shall be settled through binding arbitration
conducted in accordance with the Commercial Arbitration Rules of the American
Arbitration Association (the "Association"). The demand for arbitration shall be
filed within a reasonable time after the Dispute has arisen, and in no event
after the date upon which institution of legal proceedings based on such Dispute
would be barred by the applicable statute of limitations. Unless other wise
agreed by the parties, such arbitration shall be held in Santa Fe, New Mexico.
The arbitration shall be conducted before three (3) arbitrators chosen according
to the following procedure: each of the parties shall appoint one arbitrator,
and the two so nominated shall choose the third. If the arbitrators chosen by
the parties cannot agree on the choice of the third arbitrator within twenty
(20) days of their appointment, then the selection shall be made by the
Association pursuant to its rules; provided, that, under no circumstances shall
the third arbitrator be an employee, director, or shareholder of either party or
any of its Affiliates. Unless otherwise agreed by the parties, the arbitration
proceedings will be conducted in the utmost secrecy; in such case, all
documents, testimony and records shall be received, heard and maintained by the
arbitrators in secrecy under seal, available for the inspection only of the
parties and their respective attorneys and their respective experts who shall
agree in advance and in writing to receive all such information confidentially
and to maintain such information in secrecy until such information shall become
generally known. The decision reached by the arbitrators shall be conclusive and
binding upon the parties hereto and may be filed with the clerk of any court of
competent jurisdiction, and a judgment confirming such decision may, if desired
by any party to the arbitration, be entered in such court. Each of the parties
shall pay its own expenses of arbitration and the expenses of the arbitrator(s)
shall be equally shared; provided, however, that if in the opinion of the
arbitrator(s) any claim hereunder or any defense or objection thereto was
unreasonable, the arbitrator(s) may assess, as part of the award, all or any
part of the arbitration expenses (including reasonable attorneys' fees) against
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the party raising such unreasonable claim, defense or objection. Nothing herein
set forth shall prevent the parties from settling any Dispute by mutual
agreement at any time.
7.11. GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the laws of the State of Delaware, without regard or giving
effect to its principles of conflict of laws.
7.12. SEVERABILITY AND SURVIVAL. This Agreement is intended to be
severable. If any provision(s) of this Agreement are or become invalid, are
ruled illegal by a court of competent jurisdiction or are deemed unenforceable
under the current applicable law from time to time in effect during the term
hereof, it is the intention of the parties that the remainder of this Agreement
shall not be affected thereby and shall continue to be construed to the maximum
extent permitted by law at such time. It is further the intention of the parties
that in lieu of each such provision which is invalid, illegal, or unenforceable,
there shall be substituted or added as part of this Agreement by such court of
competent jurisdiction a provision which shall be as similar as possible, in
economic and business objectives as intended by the parties to such invalid,
illegal or unenforceable provision, but shall be valid, legal and enforceable.
Unless expressly stated otherwise, any provision intended by its meaning to
survive, will survive the expiration or any other termination of this Agreement.
7.13. INDEPENDENT CONTRACTORS. The parties hereto are acting as
independent contractors and shall not be considered partners, joint venturers or
agents of the other. Neither shall have the right to act on behalf of, or to
bind, the other.
7.14. HEADINGS. Captions and paragraph headings are for convenience
only and shall not form an interpretative part of this Agreement. Unless
otherwise specifically provided herein, all references to an Article incorporate
all Articles or subsections thereunder. This Agreement shall not be strictly
construed against either party hereto and maybe executed in two or more
counterparts, each of which will be deemed an original and the same instrument.
7.15. ACTIONS OF PARTIES. Each party agrees to execute, acknowledge and
deliver such further instructions, and to do all such other acts, as may be
necessary or appropriate in order to carry out the purposes and intent of this
Agreement.
7.16. COUNTERPARTS. This Agreement may be executed in a series of
counterparts, all of which when taken together, shall constitute one and the
same instrument.
7.17. RIGHTS IN BANKRUPTCY. All rights and licenses granted under or
pursuant to this Agreement are, and shall otherwise be deemed to be, for
purposes of Section 365(n) of the U.S. Bankruptcy Code, licenses of rights to
"intellectual property" as defined under Section 101 of the U.S. Bankruptcy
Code. The Parties agree that GENOMETRIX shall retain and may fully exercise all
of its rights and elections under the U.S. Bankruptcy Code.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK.]
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
XENOMETRIX, INC.
By: /s/Xxxxxxx Xxx
------------------------------------------
Xxxxxxx Xxx, Ph.D.
President and Chief Scientific Officer
GENOMETRIX INCORPORATED
By: /s/Xxxxxxxx X. Xxxxxx
------------------------------------------
Xxxxxxxx X. Xxxxxx Ph.D.
Chief Executive Officer
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EXHIBIT A
(TO BE UPDATED)
PATENT/ FILING ISSUE
APPLICATION # DATE COUNTRY DATE TITLE
08/008,896 1/21/93 US
5,811,231 7/21/95 US 9/22/9S Methods and Kits for Mammalian Gene
692434 1/21/94 Australia 6/11/98 Profiling
E160178 1/21/94 Austria 11/12/97
0 680 517 1/21/94 Belgium 11/12/97
2154265 1/21/94 Canada
0 680 517 1/21/94 Denmark 11/12/97
0 680 517 1/21/94 EPC 11/12/97
0 680 517 1/21/94 France 11/12/97
694 06 772.5-08 1/21/94 Germany 11/12/97
980400301 1/21/94 Greece 11/12/97
0 680 517 Hong Kong
E77394 1/21/94 Ireland 11/12/97
20035BE/98 1/21/94 Italy 11/12/97
6-517147 1/21/94 Japan
0 680 517 1/21/94 Luxembourg 11/12/97
0 680 517 1/21/94 Monaco 11/12/97
0 680 517 1/21/94 Netherlands 11/12/97
US94/00583 1/21/94 PCT
0 680 517 1/21/94 Portugal 1/19/98
9601405-5 2/13/96 Singapore
0 680 517 1/21/94 Spain 11/12/97
0 680 517 1/21/94 Sweden 11/12/97
0 680 517 1/21/94 Switzerland 11/12/97
0 680 517 1/21/94 UK 11/12/97
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EXHIBIT B
HARVARD LICENSE AGREEMENT
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EXHIBIT C
HARVARD LETTER AGREEMENT
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