EXHIBIT 10.6
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered into this ___ day of June
2001, and shall be effective as of the date specified in Section 2.7 hereof
("Effective Date") by and between CEDARS-SINAI MEDICAL CENTER, a California
nonprofit public benefit corporation ("CSMC"), with offices at 0000 Xxxxxxx
Xxxxxxxxx, Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000, and XXXXXX TECHNOLOGIES, INC., a
Delaware corporation ("Licensee"), with offices at 0000 Xxxxxxxxxx Xxxx, Xxx
Xxxxxxx, Xxxxxxxxxx 00000-0000.
R E C I T A L S
A. CSMC owns and/or is entitled to grant license rights with respect to
certain Patent Rights and Technical Information (as defined below) invented or
developed in the course of certain studies in the area of liver cell procurement
and cryopreservation for use in cell-based therapies like hepatocyte
transplantation and support of failing liver using extracorporeal liver assist
devices (the "Liver Studies Programs") at CSMC conducted under the direction or
supervision of Achilles X. Xxxxxxxxx, M.D., Ph.D., or Xxxxx Xxxxx, M.D., Ph.D.
(hereinafter collectively referred to as the "Inventors").
B. CSMC desires to have the Patent Rights and the Technical Information
developed, used and commercialized in the Field of Use (as defined below) by
Licensee, and Licensee desires to obtain an exclusive, worldwide license to
conduct research in the Field of Use, and to develop, manufacture, use and sell
Products (as defined below) in the Field of Use, using the Patent Rights and
Technical Information in accordance with the terms of this Agreement. Other than
the rights expressly granted by CSMC hereunder within the Field of Use, Licensee
acknowledges that CSMC shall retain all other rights with respect to the Patent
Rights and the Technical Information.
C. CSMC and Licensee intend that the execution, delivery and performance
of this Agreement by each party, and the consummation of the transactions
contemplated hereunder, shall not at any time threaten CSMC's tax-exempt status
under Section 501(c)(3) of the Internal Revenue Code and Section 23701d of the
California Revenue and Taxation Code, or cause CSMC to be in default under any
of CSMC's issued and outstanding tax-exempt bonds.
NOW, THEREFORE, in consideration of the mutual covenants and premises
herein contained, the parties hereto agree as follows:
1. DEFINITIONS
1.1 "AFFILIATE" or "AFFILIATES" shall mean any corporation, person or
entity, which controls, is controlled by, or is under common control with, a
party to this Agreement without regard to stock or other equity ownership. For
purposes hereof, the terms "control" and "controls" mean the possession, direct
or indirect, of the power to direct or cause the direction of the management and
policies of a corporation, person or entity, whether through the ownership of
voting securities, by contract or otherwise.
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1.2 "CONFIDENTIAL INFORMATION" shall mean any confidential or proprietary
information furnished by one party (the "Disclosing Party") to the other party
(the "Receiving Party") in connection with this Agreement, including, without
limitation, all specifications, know-how, trade secrets, technical information,
drawings, software, models, business information and patent applications
pertaining to the Patent Rights and Technical Information, and as further
provided in Section 10 hereof.
1.3 "FDA" shall mean the United States Food and Drug Administration, or
any successor agency thereof.
1.4 "FIELD OF USE" shall mean any and all applications and uses of any of
the Licensed Patents or any of the Technical Information.
1.5 "FUNDING AGENCIES" shall mean any public or private granting agencies
which have provided funding to CSMC or the Inventors for the development of any
of the Patent Rights or Technical Information prior to the Effective Date.
1.6 "FUTURE PATENT RIGHTS" shall mean any patents and/or patent
applications claiming Inventions invented after the Effective Date through any
use of the Patent Rights or Technical Information licensed hereunder arising
from work conducted by or under the direction of the Inventors during the course
of their employment with CSMC, and any patents and/or patent applications
(including provisional patent applications) in any other country corresponding
to any of the foregoing, and all divisions, continuations,
continuations-in-part, reissues, reexaminations, supplementary protection
certificates and extensions thereof, whether domestic or foreign, and any patent
that issues thereon. Future Patent Rights do not include any Inventions
conceived or reduced to practice solely during the Inventors' course of
employment, if any, with Licensee.
1.7 "FUTURE TECHNICAL INFORMATION" shall mean the following information in
the Field of Use developed after the Effective Date through practicing the
Inventions claimed in or otherwise arising through any of the Patent Rights or
Technical Information licensed hereunder arising from work conducted by or under
the direction of the Inventors during the course of their employment with CSMC:
Know-how, trade secrets, unpublished patent applications, software,
bioinformatics, unpatented technology, technical information, statistical
information and analyses, biological materials, chemical reagents, preclinical
and clinical information, and any and all confidential and proprietary
information described in the Future Patent Rights or Inventions invented after
the Effective Date through any use of the Patent Rights or Technical
Information. Future Technical Information does not include any know-how, trade
secrets, unpublished patent applications, software, bioinformatics, unpatented
technology, technical information, statistical information and analyses,
biological materials, chemical reagents, pre-clinical and clinical information
conceived or reduced to practice solely during the Inventors' course of
employment, if any, with Licensee.
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1.8 "INVENTION" shall mean all unpatented, patentable and patented
inventions, discoveries, designs, apparatuses, systems, machines, methods,
processes, uses, devices, models, composition of matter, technical information,
trade secrets, know how, codes, programs or configurations of any kind which are
in the Field of Use.
1.9 "LICENSEE IMPROVEMENTS" shall mean any and all processes, uses,
designs, applications, methods and compositions-of-matter, indications,
improvements, enhancements and modifications in the Field of Use that relate to,
and are directly based upon or directly created using, the Patent Rights and/or
Technical Information and which were discovered or developed by or on behalf of
Licensee (exclusive of work performed by CSMC or the Inventors during the course
of their employment with CSMC, but inclusive of work performed by Licensee's
sublicensees under circumstances where Licensee has obtained such sublicensees'
prior written consent), during the term of this Agreement.
1.10 "PATENT RIGHTS" shall mean the patents and/or patent applications
existing on the Effective Date which are described on Schedule A attached
hereto, and all patents and/or patent applications (including provisional patent
applications) existing as of the Effective Date in any other country
corresponding to any of the foregoing, and all divisions, continuations,
continuations-in-part, reissues, reexaminations, supplementary protection
certificates and extensions thereof, whether domestic or foreign, and any patent
that issues thereon. The Patent Rights are all owned by CSMC.
1.11 "PRODUCT" or "PRODUCTS" shall mean any products or services that
utilize, are derived from or made from, or incorporate, in any manner
whatsoever, any of the Patent Rights or Technical Information.
1.12 "TECHNICAL INFORMATION" shall mean, as of the Effective Date, any
know-how, trade secrets, unpublished patent applications, software,
bioinformatics, unpatented technology, technical information, statistical
information and analyses, biological materials, chemical reagents, preclinical
and clinical information, in each case which has been conceived or reduced to
practice prior to the Effective Date, in the conduct by CSMC of the Liver
Studies Programs at CSMC under the direction or supervision of any of the
Inventors. The Technical Information shall further include information described
in Schedule B hereto which is described in, or useful in the practice of, the
Patent Rights and which has been conceived or reduced to practice prior to the
Effective Date in the conduct of any of the aforementioned research programs at
CSMC under the direction or supervision of any of the Inventors. The Technical
Information is owned by CSMC.
1.13 "TERRITORY" shall mean the World.
1.14 "VALID CLAIM" shall mean a claim of (a) a patent application included
within the Patent Rights, which patent application has not been pending for
longer than ten (10) years after its first filing, or (b) an issued patent
included within the Patent Rights, which claim has not (i) lapsed, been canceled
or become abandoned, (ii) been declared invalid or unenforceable by a
non-appealable decision or judgment of a court or other appropriate body or
authority of competent jurisdiction, or (iii) been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
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2. LICENSE
2.1 GRANT OF EXCLUSIVE RIGHTS. Subject to the terms of this Agreement,
CSMC hereby grants to Licensee, and Licensee hereby accepts from CSMC, the
exclusive, worldwide license, with the right to grant sublicenses (subject to
the terms of Section 2.2 hereof), during the term of this Agreement (as provided
in Section 6 hereof) to conduct research in the Field of Use using the Patent
Rights and the Technical Information and to develop, use, make, have made,
practice, import, carry out, manufacture, have manufactured, offer for sale,
sell and/or have sold Products in the Field of Use in the Territory using the
Patent Rights and the Technical Information. The foregoing grant of exclusivity
is made expressly subject to the following:
(A) All applicable laws and regulations, including, without
limitation, the requirements of federal law as pertains to the manufacture of
products within the United States;
(B) All applicable rules of the Funding Agencies which have provided
funding to CSMC or to any of its employees (including any of the Inventors) for
the development of the Patent Rights and Technical Information; and
(C) The following non-exclusive rights to the Patent Rights and
Technical Information, which are retained by CSMC (and which are transferable by
CSMC solely to its Affiliates for so long as they remain Affiliates) within the
Field of Use:
(I) Subject to Licensee's right to prior review to determine
the patentability thereof (which shall expire after forty-five (45) days after
Licensee's receipt thereof in complete written form, including all amendments),
the right to submit for publication the scientific findings from research
conducted by or through CSMC or its investigators (including the Inventors)
related to the Patent Rights and the Technical Information;
(II) Except as provided in subparagraph (d) hereof, the right
(A) to use any tangible or intangible information contained in the Patent Rights
or the Technical Information (so long as CSMC shall treat such information as
Confidential Information and maintain its confidentiality in accordance with
Section 10 hereof), for CSMC's internal teaching and other educationally-related
and non-commercial (except for charges to its own patients) clinical purposes,
where clinical use does not involve a third party funding grant to commercialize
or develop such information, and (B) to obtain research funding for further
study and development thereof from governmental and other nonprofit
organizations (including grant applications); and
(III) Except as provided in subparagraph (d) hereof, the right
to conduct research using the Patent Rights and Technical Information, and to
develop, use, make, practice, carry-out, and otherwise exploit the Patent Rights
and Technical Information for CSMC's internal research and non-commercial
(except for charges to its own patients) clinical purposes, where clinical use
does not involve a third party funding grant to commercialize or develop any
Product.
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(D) CSMC shall not, under any circumstances, grant and/or transfer
any rights (i) retained by CSMC under Section 2.1(c) to any third party (other
than to Licensee or, where required by applicable law, rule, regulation,
governmental policy or contract, to any Funding Agency or the United States
Government) or (ii) to commercialize Inventions or information related thereto
derived directly from the Patent Rights or the Technical Information in the
Field of Use as a result of CSMC's teaching and internal research and clinical
activities with respect to the Patent Rights and Technical Information otherwise
permitted by Sections 2.1(c)(ii) and (iii) above.
(E) There are no rights to the Patent Rights and the Technical
Information outside of the Field of Use to be retained by CSMC. All rights to
the Future Patent Rights and Future Technical Information shall be governed by
Section 2.3 hereof and, if applicable, any license agreement between CSMC and
Licensee with respect to such Future Patent Rights and Future Technical
Information.
2.2 RIGHT TO SUBLICENSE. Licensee shall have the right to grant
sublicenses to any of its rights under Section 2.1; provided, however, that
Licensee shall not sublicense any such rights to any entity which is not a
recognized biopharmaceutical, pharmaceutical or bio-diagnostic company which is
either (a) listed on Schedule C hereto, as amended from time to time by mutual
agreement of the parties, or (b) generally recognized in such industries and has
a level of science, management and investors of the quality as shall be
acceptable to CSMC (each, an "Acceptable Sublicensee") on the basis of CSMC's
prior written consent (which consent shall not be unreasonably withheld, delayed
or conditioned). In order to preserve and protect the value of the Patent Rights
and Technical Information, Licensee shall obtain the prior written consent of
CSMC prior to entering into or granting a sublicense to any party who is not an
Acceptable Sublicensee under subclause (a) above. Licensee also shall keep CSMC
reasonably informed with respect to the progress of any relations entered into
with any Acceptable Sublicensees (or any other party for whom CSMC has given its
prior written consent) and shall give due consideration to any comments or
concerns that CSMC has with respect to same. Any and all sublicenses shall be
subject to the terms of this Agreement. Licensee shall promptly notify CSMC of
all sublicenses and shall require all sublicensees to perform in accordance with
the terms of this Agreement (including, but not limited to, the royalty
reporting and record keeping provisions, the indemnification and inspection
provisions, and the provisions pertaining to the use of CSMC's names and marks
and Confidential Information). Licensee will be responsible for enforcing each
sublicensee's obligations under its sublicense and, in particular, royalty
payment obligations due on such sublicensee's sales of Products. If Licensee
shall conduct one or more audits of its sublicensees hereunder during the term
hereof, Licensee shall provide to CSMC, on a timely basis, copies of all audit
reports; provided, however, that Licensee shall have the right to redact from
such audit reports any and all information which is not related to the Patent
Rights and Technical Information or the license granted to Licensee under this
Agreement. The covenants pertaining to the use of CSMC's name and marks, the
indemnification of CSMC and the use of CSMC's Confidential Information in any
sublicense shall run for the benefit of CSMC, who shall be expressly stated as
being a third-party beneficiary thereof with respect to the covenants set forth
in this Agreement. Licensee understands and agrees that none of its permitted
sublicenses hereunder shall reduce in any manner any of its obligations set
forth in this Agreement.
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2.3 CERTAIN FUTURE RIGHTS. The following shall pertain to Inventions which
constitute Future Patent Rights or Future Technical Information: Subject to the
rights and applicable rules of the Funding Agencies, Licensee shall have, for a
period of ninety (90) days after either (a) receipt by Licensee of written
notice from CSMC disclosing in adequate detail any such Inventions in the Field
of Use or (b) written notification by any of the Inventors to each of Licensee
and CSMC disclosing in adequate detail any such Inventions in the Field of Use,
the exclusive first right to negotiate with CSMC to obtain one or more licenses
to the Future Patent Rights in the Field of Use and/or Future Technical
Information in the Field of Use, upon such terms and conditions as shall be
agreed by the parties hereto, which terms and conditions shall include
provisions for fair market value consideration for the grant of any such
licenses. Subject to the rights and applicable rules of the Funding Agencies or
the United States Government, and to the extent it would not impair or
jeopardize any efforts of CSMC to obtain domestic or foreign rights thereto,
CSMC shall provide Licensee with prompt written disclosure of Future Patent
Rights in the Field of Use and/or Future Technical Information in the Field of
Use as may be developed by CSMC or either of the Inventors. If Licensee declines
or fails to pursue, or if the parties fail to conclude negotiations for a
license to, such Future Patent Rights in the Field of Use and/or Future
Technical Information in the Field of Use during the ninety (90) day period
specified above, then CSMC shall have the right to commence discussions with any
other party concerning such Future Patent Rights and/or Future Technical
Information. Subject to the provisions of this Section 2.3, Licensee
acknowledges and agrees that CSMC expressly retains and reserves any and all
right, title and interest in and to the Future Patent Rights and Future
Technical Information, whether or not in the Field of Use and, accordingly, no
license to any Future Patent Rights or Future Technical Information is granted
to Licensee under this Agreement. CSMC shall use its reasonable and continuing
efforts during the term of this Agreement, in accordance with its policies and
procedures, where appropriate, to file and maintain patent applications claiming
Inventions in the Field of Use.
2.4 LICENSE TO USE IMPROVEMENTS. Licensee hereby grants to CSMC the
following license rights to the Licensee Improvements, which rights shall be
nonexclusive, royalty-free, fully paid-up rights and subject to the following
conditions:
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(A) Subject to Licensee's right to prior review to determine the
patentability thereof within forty-five (45) days following receipt by Licensee,
the right and license to publish the scientific findings from research conducted
for Licensee by CSMC with respect to particular and identified Licensee
Improvements;
(B) Except as provided below in this Section 2.4, the right and
license to use any tangible or intangible information contained in the Licensee
Improvements (so long as CSMC shall treat such information as Confidential
Information and maintain its confidentiality in accordance with Section 10
hereof), for CSMC's internal teaching and other educationally-related and
non-commercial (except for charges to its own patients) clinical purposes, where
clinical use does not involve a third party funding grant to commercialize or
develop such information and, with Licensee's prior written consent (not to be
unreasonably withheld, delayed or conditioned), to obtain research funding from
governmental and other nonprofit organizations (including grant applications);
and
(C) Except as provided below in this Section 2.4, the right and
license to conduct research using the Licensee Improvements, and to develop,
use, make, practice and carry out the Licensee Improvements for CSMC's internal
teaching and research and non-commercial (except for charges to its own
patients) clinical purposes, where clinical use does not involve a third party
funding grant to commercialize or develop any Product.
CSMC shall not, under any circumstances, grant and/or transfer any rights
(i) granted to CSMC under this Section 2.4 to any third party (other than to
Licensee or, where required by applicable law, rule, regulation, governmental
policy or contract, to any Funding Agency or the United States Government) or
(ii) to commercialize or develop Inventions in the Field of Use resulting
directly from the Licensee Improvements as a result of CSMC's internal research
and clinical activities with respect to the Licensee Improvements otherwise
permitted by Sections 2.4(b) and (c) above.
2.5 MILESTONES. Licensee acknowledges that (a) it is important to CSMC
that Licensee pursue the development, commercialization and marketing of
Products and otherwise exercise commercially reasonable efforts to maximize the
value of this Agreement to CSMC and (b) the United States Government under Title
00, Xxxxxxx 000 xx xxx Xxxxxx Xxxxxx Code, has certain march-in rights with
respect to the Patent Rights to the extent such Patent Rights were developed
with funding from the United States Government. Licensee shall be deemed to have
exercised commercially reasonable efforts to maximize the value of this
Agreement to CSMC, and the milestone requirements of this Section 2.5 shall be
deemed to have been met, if Licensee meets the respective requirements set forth
on Schedule D hereto, with each such requirement being deemed a separate and
independent condition (each, a "Milestone"). Within sixty (60) days after each
anniversary of the Effective Date, Licensee shall prepare and deliver to CSMC an
annual written report (to be certified by an executive officer of Licensee)
indicating its compliance with the Milestones. If Licensee fails to meet any
annual Milestone designated in Schedule D hereto, CSMC may, at its option and as
its sole remedy for Licensee's breach of this Section 2.5, upon written notice
to Licensee, (i) convert the exclusive license granted under Section 2.1 hereof
to a non-exclusive license or to a co-exclusive license, or (ii) terminate the
license; provided, however, that CSMC shall in good faith review Licensee's
efforts and shall not exercise any of such remedies if Licensee has demonstrated
that (A) it has been exercising reasonable and diligent efforts, consistent with
industry standards, or (B) it has been subject to events commonly recognized as
"force majeure" events (i.e., events or causes for delay beyond its reasonable
control). In the event that Licensee does not develop or commercialize one or
more Products as a result of legitimate patent infringement, interference or
other issues relating to the Patent Rights, all of Licensee's obligations with
respect to such Products, including, without limitation, royalty and other
payment obligations, and milestone and diligence obligations related to that
particular Product in that jurisdiction, shall be suspended unless and until
such patent infringement, interference or other issues are resolved. In the
event that any such issues are not resolved during the term of the Agreement, or
in the event that such issues are resolved in a manner that does not provide
commercially reasonable incentive to develop or commercialize such Products,
then Licensee shall have no further obligations hereunder with respect to such
Products.
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2.6 PROCEDURE FOR GRANTING ACCESS TO TECHNICAL INFORMATION. The grant of
rights by CSMC to Licensee pursuant to Section 2.1 hereof are expressly subject
to the following provisions:
(A) RESPONSIBILITY FOR MONITORING ACCESS TO TECHNICAL INFORMATION.
During the term of this Agreement, the responsibility for monitoring access to
the Technical Information (and any Future Technical Information) in the Field of
Use at CSMC shall be borne by the Inventors or, in the event that all the
Inventors shall die, become disabled or otherwise cease to be employees of CSMC
for whatever reason, the Senior Vice President for Academic Affairs of CSMC (or
his or her functional equivalent at CSMC) (the "Gatekeeper"). Subject to
Sections 2.1(c), 2.4 and 3.3 hereof, the Gatekeeper shall not grant access to
the Technical Information or any Future Technical Information in the Field of
Use to any person at CSMC except as provided in this Section 2.6, and CSMC's
sole responsibility with respect to requests for the grant of access to the
Technical Information or any Future Technical Information in the Field of Use by
any person at CSMC shall be to refer all such requests to the Gatekeeper.
(B) CONDITIONS OF ACCESS TO THE TECHNICAL INFORMATION. As a
condition to any use of the Technical Information or Future Technical
Information by, and any grant of access to the Technical Information or any
Future Technical Information to, any person at CSMC within the Field of Use
during the term of this Agreement, such person shall be required to (i) obtain
the prior written consent of the Gatekeeper to obtain the use of or access to
the Technical Information or Future Technical Information within the Field of
Use, and (ii) after obtaining the Gatekeeper's prior written consent, execute a
material transfer agreement (to be obtained from the Gatekeeper) in the form
customarily employed for such purpose by CSMC. Such material transfer agreement
shall identify Licensee's rights in such Technical Information and/or such
Future Technical Information and specify the obligations of the transferee,
which obligations shall not be less than those of CSMC under this Agreement. The
Gatekeeper shall then promptly provide the executed originals of all such
material transfer agreements to CSMC, with an executed copy to Licensee for its
records.
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(C) SPECIAL SITUATIONS. Licensee shall obtain the prior written
consent of CSMC to any proposed transfer of Technical Information (or any Future
Technical Information) or any proposed sublicense of any Patent Rights, to any
other person or entity for which special notice and for which commercially
reasonable justification is previously provided by CSMC to Licensee.
2.7 CONDITIONS TO EFFECTIVENESS. As a condition precedent to the
effectiveness of this Agreement, all of the following documents and instruments
shall have been fully executed and delivered by each of the parties hereto and
thereto: (a) this Agreement, including applicable Schedules A, B, C and D, (b)
that certain Stock Purchase Agreement by and between Licensee and CSMC in the
form of that attached hereto as Schedule E (the "Stock Purchase Agreement"), (c)
a stock certificate or certificates in the name of CSMC for the Shares of
Licensee as provided in Section 4.1 hereof, (d) that certain Facilities Lease by
and between Licensee and CSMC in the form of that attached hereto as Schedule F
(the "Facilities Lease"), (e) that certain Equipment Lease by and between
Licensee and CSMC in the form of that attached hereto as Schedule G (the
"Equipment Lease"), and (f) that certain Employee Loan-Out Agreement by and
between Licensee and CSMC in the form of that attached hereto as Schedule H (the
"Loan-Out Agreement"). For purposes of this Agreement, the "Effective Date"
shall mean, and this Agreement shall become effective upon, the date upon which
the last of the documents or instruments described in the preceding sentence has
been fully executed and delivered by all of the parties hereto and thereto.
3. REPRESENTATIONS AND WARRANTIES
3.1 RIGHTS TO TECHNOLOGY. Except for the rights, if any, of the Funding
Agencies or the United States Government, CSMC represents and warrants to
Licensee that, to the best of its current knowledge (without investigation
outside of CSMC as to such representations and warranties) (a) it has the right
to grant the licenses in this Agreement, (b) it has not granted licenses to the
Patent Rights or Technical Information to any other party that would restrict
the rights granted hereunder except as stated herein, (c) it is the owner of the
Patent Rights and Technical Information, (d) no other party has any interest in
the Patent Rights or Technical Information and (e) there are no claims,
judgments or settlements to be paid by CSMC with respect the Patent Rights or
Technical Information or pending claims or litigation relating to the Patent
Rights or Technical Information. Except for any potential or actual rights of
Funding Agencies or the United States Government, CSMC is not aware that any
additional rights or licenses are necessary for Licensee to exercise its
licensed rights granted by CSMC under this Agreement.
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3.2 LIMITED WARRANTY. CSMC makes no representation or warranty other than
those expressly specified in this Agreement. Licensee accepts the Patent Rights
and the Technical Information on an "AS-IS" basis. CSMC MAKES NO EXPRESS OR
IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR OTHER
ATTRIBUTES OF ANY OF THE PATENT RIGHTS OR TECHNICAL INFORMATION.
3.3 RIGHTS RETAINED BY FUNDING AGENCIES. Licensee acknowledges that to the
extent that the Patent Rights and Technical Information have been developed in
part under one or more funding agreements ("Funding Agreements") with one or
more Funding Agencies, such Funding Agencies may have certain statutory,
non-exclusive rights relative thereto for use for government purposes as well as
regulatory or statutory "march-in rights" (collectively, "Statutory Rights").
Licensee also acknowledges that to the extent that the Future Patent Rights and
Future Technical Information may be developed in part under one or more Funding
Agreements with one or more Funding Agencies, such Funding Agencies may have
certain Statutory Rights relative thereto. This Agreement is explicitly made
subject to such Statutory Rights and, to the extent of any conflict between any
such Statutory Rights and this Agreement, such Statutory Rights shall prevail.
4. CONSIDERATION
In consideration of the execution and delivery by CSMC of this Agreement,
Licensee agrees as follows:
4.1 ISSUANCE OF STOCK. As of the Effective Date, Licensee shall have
issued 681,818 shares of the voting "Junior Preferred Stock of Licensee (the
"Shares"). The Shares to be issued to CSMC shall be Junior Preferred Stock, with
the rights, preferences, privileges and restrictions set forth in the Stock
Purchase Agreement and/or in Licensee's Certificate of Incorporation and other
charter documents ("Charter Documents"). Licensee represents and warrants to
CSMC that, as of the Effective Date, (a) the total Shares issuable to CSMC
hereunder shall equal twelve percent (12%), in the aggregate, of the total
issued and outstanding shares of Licensee's capital stock, as more fully
described in the capitalization table attached as Schedule I, (b) the Shares
shall be convertible voting preferred stock having the rights, preferences,
privileges and restrictions as set forth in the Stock Purchase Agreement and/or
the Charter Documents), (c) shall represent one hundred percent (100%) of the
issued and outstanding shares of the Junior Preferred Stock of Licensee), and
(d) would represent, at the time of issuance, twelve percent (12%) of the issued
and outstanding shares of Licensee's common stock if it were convertible
immediately upon Licensee's issuance thereof to CSMC.
4.2 PAYMENT OF ROYALTIES. Licensee shall pay to CSMC certain royalties,
which shall be determined and paid in accordance with Schedule J hereto. As more
particularly set forth in Schedule J hereto, Licensee shall permit
representatives of CSMC, upon reasonable prior notice, to audit and inspect its
books and records (including such thereof as shall exist in computer systems and
computer memories) in order for CSMC to determine that Licensee is in full
compliance with its obligations to pay and account for the royalties required by
this Agreement.
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4.3 CONSULTING GUIDELINES; SEEKING RESEARCH GRANTS. Notwithstanding
anything to the contrary contained in CSMC's "Guidelines on Institutional
Acceptance of Equity as Part of Licensing Transactions", CSMC expressly agrees
that, at all times during the term of this Agreement, and subject to compliance
with the "Full Time Faculty Consulting Guidelines" of CSMC and the terms of any
consulting or similar agreement approved by CSMC, the Inventors (a) may hold one
or more management and/or consulting positions with Licensee, (b) may be
appointed to, and act as members of, the Board of Directors and/or advisory
boards of Licensee, and (c) may be "loaned-out" to Licensee pursuant to the
terms of the Loan-Out Agreement. In addition, Licensee acknowledges that each
Inventor, in his capacity as an employee of CSMC, may continue to seek research
funding after the Effective Date from Funding Agencies and nonprofit
organizations, as appropriate, in connection with the conduct of the Liver
Studies Programs and research programs in liver biology, pathophysiology and
therapy, transplantation biology and minimally-invasive surgery at CSMC
conducted under the direction or supervision of the Inventors as the principal
investigators.
4.4 RIGHT OF FIRST CONSIDERATION. With respect to continued research in
the areas of bioartificial liver devices, bioartificial liver systems and
associated technology related to a bioartificial human liver ("BAL Area"), if
any, Licensee shall consider CSMC as its external facility of first choice, for
research contracts in excess of Twenty-Five Thousand Dollars ($25,000) for
research in the BAL Area (excluding therefrom clinical trials in which CSMC
would be considered to be an inappropriate choice by reason of its relationships
with the Inventors). Licensee shall notify CSMC in writing in each such case
where Licensee intends to fund such external research in the BAL Area. Such
written notice shall specify the general criteria upon which Licensee intends to
choose the appropriate facility to conduct the proposed research, and CSMC shall
promptly provide such information to Licensee as shall be relevant in
demonstrating its ability to meet such criteria. Upon the presentation of such
information, CSMC and Licensee shall negotiate in good faith the proposed terms
of a research agreement, to be consummated within forty-five (45) days after
receipt by CSMC from Licensee of a detailed written description of the research
to be conducted.
CSMC acknowledges and agrees that the Shares, royalties, and other
obligations of Licensee under this Agreement constitute fair market value for
the rights granted to Licensee under this Agreement based on arms'-length
negotiations with Licensee and an independent evaluation made by CSMC's outside
expert(s).
11
5. PATENT RIGHTS
5.1 PROSECUTION. Commencing on the Effective Date, Licensee shall assume,
in coordination with CSMC, full responsibility for the application, maintenance,
reexamination, reissue, opposition and prosecution of any kind (collectively
"Prosecution") relating to the Patent Rights in the Territory, including, but
not limited to, payment of all costs, fees and expenses related thereto. Subject
to the approval of CSMC (which approval shall not be unreasonably withheld,
delayed or conditioned), Licensee shall have the right to select counsel with
respect to the responsibility assumed by Licensee in this Section 5.1, and
Licensee shall diligently pursue the Prosecution of the Patent Rights to the
benefit of CSMC. For all purposes of the patent Prosecution, CSMC shall be the
named "client" of such patent counsel. Each party shall provide the other with
copies of any and all material or communications with the United States Patent
and Trademark Office, or any foreign patent office, and CSMC shall be afforded
the opportunity of prior review and comment on such action or paper.
5.2 ABANDONMENT, DISCLAIMERS, ETC. Licensee shall obtain the prior written
consent of CSMC (which consent shall not be unreasonably withheld, delayed or
conditioned) prior to abandoning, disclaiming, withdrawing, seeking reissue or
allowing to lapse any material patent, patent application or Licensee
Improvements relating to the Patent Rights; provided, however, that CSMC shall
not require Licensee to maintain any patent or patent application in any
jurisdiction where such maintenance would not be commercially reasonable or
economically feasible; and, provided further, that any failure by Licensee to
obtain such prior written consent shall not be deemed a breach of this Agreement
if Licensee has otherwise complied with the following notice requirements. In
the event that Licensee shall elect to abandon the Prosecution or maintenance of
any patent or patent application included in the Patent Rights, Licensee shall
notify CSMC of such election at least forty-five (45) days before a final due
date which would result in abandonment or bar of patentability of the patent or
patent application. In such event, CSMC may, at its sole option and expense,
continue Prosecution or maintenance of the patent application or patent.
Licensee further agrees that it shall not file any continuation-in-part
application relating to the Patent Rights unless the additional disclosure or
material to be included in the continuation-in-part application is necessary or
appropriate to support the patentability of a claim recited in a parent
application on which the continuation-in-part application is based. Prior to
filing any continuation-in-part application, Licensee shall consult with CSMC to
discuss the need for filing such an application. If CSMC shall disagree with
Licensee's conclusion that such a continuation-in-part application is either
necessary or appropriate to support the patentability of a claim recited or
capable of being recited in a patent application, then the matter shall be
submitted for resolution to independent patent counsel mutually agreed upon by
the parties, who will determine whether a continuation-in-part application is
necessary or appropriate in accordance with this Section 5.2. Any decision made
by such independent patent counsel shall be conclusive and binding on the
parties hereto.
5.3 EXPENSES. Licensee shall pay all expenses resulting from its
obligations in Section 5.1 hereof. CSMC shall exercise reasonable efforts to
cause the Inventors (to the extent they are available and on CSMC's staff as
employees) to cooperate fully with Licensee with respect to the Prosecution,
maintenance and protection of the Patent Rights, and CSMC shall be reimbursed
for all reasonable out-of-pocket expenses as such expenses are incurred.
12
6. TERM AND TERMINATION
6.1 TERM. Unless earlier terminated as provided in Section 6.2 hereof, the
term of this Agreement shall commence on the Effective Date and shall expire, on
a country-by-country basis, on the date upon which the last to expire of the
patents covering the Patent Rights shall expire. Upon expiration of the term of
this Agreement, Licensee shall have a fully paid-up, royalty-free, perpetual,
nonexclusive license to use the Technical Information.
6.2 TERMINATION. Except as provided by Section 6.3 hereof, this Agreement
shall terminate upon the earliest to occur of the following:
(A) Automatically if Licensee shall enter into a liquidating
bankruptcy, be adjudged insolvent, liquidate, dissolve and/or if the business of
Licensee shall be placed in the hands of a receiver, assignee, or trustee,
whether by voluntary act of Licensee or otherwise; provided, however, that if
any such action is involuntary, termination shall not take place unless the
action is not reversed within sixty (60) days. Further, Licensee shall give CSMC
at least forty-five (45) days' prior written notice before Licensee initiates
any bankruptcy proceeding, and CSMC shall have the right to terminate this
Agreement immediately upon receipt of such notice;
(B) Upon thirty (30) days' written notice from CSMC if, within such
thirty (30) day period, Licensee shall fail to pay fully any royalty payment
required by Section 4.3 hereof or Schedule J hereto;
(C) Upon ninety (90) days' written notice from CSMC if, within such
ninety (90) day period, Licensee shall fail to cure fully any breach or default
of any material obligation under this Agreement as described in such written
notice detailing the facts of such breach with reasonable specificity; provided,
however, that Licensee may avoid such termination if, before the end of such
90-day period, such breach or default has been cured by Licensee;
(D) Upon ninety (90) days' written notice from Licensee if, within
such ninety (90) day period, CSMC shall fail to cure fully any breach or default
of any material obligation under this Agreement as described in such written
notice detailing the facts of such breach with reasonable specificity; provided,
however, that CSMC may avoid such termination if, before the end of such 90-day
period, such breach or default has been cured by CSMC;
(E) Upon the mutual written agreement of the parties hereto (such
termination to be effective as of the date mutually agreed upon in such written
agreement); or
13
(F) As to the entire Agreement, at Licensee's sole discretion, upon
sixty (60) days' written notice from Licensee.
6.3 OBLIGATIONS UPON TERMINATION. Upon any termination of this Agreement
pursuant to Section 6.2 hereof, nothing herein shall be construed to release any
party from any liability for any obligation incurred through the effective date
of termination (e.g., confidentiality, reimbursement of patent expenses incurred
prior to such date, etc.) or for any breach of this Agreement prior to the
effective date of such termination. Licensee may, for a period of one (1) year
after the effective date of such termination, sell all tangible Products
customarily classified as "inventory" that it has on hand at the date of
termination, subject to payment by Licensee to CSMC of the applicable royalty or
royalties, as set forth in Schedule J.
6.4 EFFECT OF TERMINATION. In the event of any termination of this
Agreement pursuant to Section 6.2 hereof, where such termination has not been
caused by any action or inaction on the part of any sublicensee of Licensee or
by any breach by such sublicensee of its obligations under its sublicense from
Licensee, such termination of this Agreement shall be without prejudice to the
rights of each non-breaching sublicensee of Licensee and each non-breaching
sublicensee shall be deemed to be a licensee of CSMC thereunder, and CSMC shall
be entitled to all rights, but shall not be subject to any obligations (other
than the grant of license and appurtenant obligations under this Agreement to
the extent provided for in such sublicense) of Licensee thereunder.
6.5 RIGHT TO INSTITUTE LEGAL ACTIONS. Notwithstanding the provisions of
Section 6.2 hereof, CSMC, on the one hand, and Licensee, on the other hand, may
institute any other legal action or pursue any other remedy against the other
party permitted by applicable law if the other party does not substantially cure
any breach or default of any material obligation as provided herein.
6.6 REVERSION OF RIGHTS. Notwithstanding anything to the contrary set
forth herein (including, but not limited to, Section 5 hereof), full
responsibility for Prosecution of the Patent Rights shall, at the option of CSMC
(exercisable in its sole and absolute discretion), and at its sole expense from
the date of reversion, revert to CSMC upon any termination of this Agreement.
14
7. INFRINGEMENT BY THIRD PARTIES
7.1 ENFORCEMENT. Licensee shall have the first right and the obligation
(as more particularly set forth in this Section 7.1) to enforce, at its sole
expense, any Patent Rights to the extent licensed hereunder against infringement
by third parties and shall notify CSMC in writing in advance of all such
enforcement efforts. Licensee shall have the obligation to make the initial
assessment of any actual or alleged infringement by a third party, to the extent
such actual or alleged infringement is known to Licensee, and Licensee shall
promptly inform CSMC of the results of such initial assessment. Upon Licensee's
undertaking to pay all expenditures reasonably incurred by CSMC, CSMC shall
reasonably cooperate in any such enforcement and, as necessary, join as a party
therein. Licensee shall reimburse CSMC for all expenses, including reasonable
attorneys' fees, incurred in connection with any such enforcement. In the event
that Licensee does not file suit against or commence and conclude settlement
negotiations with a substantial infringer of Patent Rights within ninety (90)
days of receipt of a written demand from CSMC that Licensee bring suit, then the
parties will consult with one another in an effort to determine whether a
reasonably prudent licensee would institute litigation to enforce the patent in
question in light of all relevant business and economic factors (including, but
not limited to, the projected cost of such litigation, the likelihood of success
on the merits, the probable amount of any damage award, the prospects for
satisfaction of any judgment against the alleged infringer, the possibility of
counterclaims against the parties hereto, the impact of any possible adverse
outcome on Licensee and the effect any publicity might have on the parties'
respective reputations and goodwill). If, after such process, it is determined
that a suit should be filed and Licensee does not file suit or commence
settlement negotiations forthwith against the infringer, then CSMC shall have
the right, at its own expense, to enforce any Patent Rights licensed hereunder
on behalf of itself and Licensee, and Licensee's failure to pursue such
enforcement shall not be deemed a breach of this Agreement. Any amount recovered
in any such action or suit, whether by judgment or settlement, shall be paid to
or retained entirely by whichever party brought the action, or where both
parties participate in such action or suit, all such amounts shall be allocated
to each party in the ratio of damages incurred, after first paying each party's
out-of-pocket expenses, including reasonable attorneys' fees.
7.2 DEFENSE OF PATENT RIGHTS. In the event that any Patent Rights are the
subject of a legal action seeking declaratory relief or of any reexamination or
opposition proceeding instituted by a third party, the parties agree to promptly
consult with one another concerning the defense of such actions or proceedings.
If the parties agree that such defense should be undertaken, then Licensee shall
bear the expenses, including attorneys' fees, associated with such defense and
in any recoupment of expenses. If the parties disagree, then the party desiring
to defend the action or proceeding may proceed with such defense and will bear
its own expenses, and be entitled to all sums recovered.
15
8. INDEMNIFICATION
8.1 INDEMNIFICATION BY LICENSEE. Subject to Section 8.2 hereof, Licensee
shall hold harmless, defend and indemnify CSMC and each of its officers,
directors, employees (including the Inventors), agents and sponsors of the
research (except Licensee) (each, an "Indemnified Party", and collectively, the
"Indemnified Parties") from and against any and all claims, damages, losses,
costs and expenses (including reasonable attorneys' fees and expenses and costs
of investigation) (collectively, "Losses") suffered or incurred by any of the
Indemnified Parties in any action, litigation, arbitration or dispute of any
kind ("Action") arising or resulting from any negligence or willful acts or
omissions on the part of Licensee, its Affiliates or permitted sublicensees in
connection with (a) their use the Patent Rights or Technical Information and/or
(b) the exercise of their rights hereunder or under any sublicense, including,
but not limited to (i) the preclinical development and clinical testing of
Products, and (ii) the manufacture, sale, use, marketing, or other disposition
of Products developed, manufactured, sold, marketed, used or otherwise disposed
of under this Agreement; provided, however, that Licensee shall have no
obligation under this Section 8.1 with respect to any Losses in any Action to
the extent such Losses are caused by the gross negligence or willful misconduct
of an Indemnified Party. As part of its obligations hereunder, Licensee shall
defend any Action brought against any of the Indemnified Parties with counsel of
its own choosing and reasonably acceptable to CSMC, and neither CSMC nor any
other Indemnified Party shall enter into any settlement of any such Action
without first obtaining prior approval of Licensee. Should CSMC or any other
Indemnified Party not afford Licensee the right to defend any such Action, or
should CSMC or any other Indemnified Party not obtain the approval of Licensee
to such settlement, Licensee shall have no obligation to indemnify CSMC or any
other Indemnified Party hereunder. Should Licensee fail to provide a defense for
the Indemnified Parties as required hereunder, then Licensee shall reimburse
CSMC for its out-of-pocket expenses (including reasonable attorneys' fees and
expenses and costs of investigation) which are incurred as a result of any
investigation, defense or settlement relating to the foregoing, which
reimbursement shall be made to CSMC upon receipt by Licensee of invoices
reflecting in reasonable detail such expenses incurred by CSMC. Licensee shall
obtain and maintain insurance policies (including products liability and general
liability policies at such time as is appropriate) which are reasonable and
necessary to cover its activities and to comply with the indemnification
obligations set forth above. Such insurance policies shall (A) name CSMC as an
additional insured party, (B) provide minimum amounts in coverage per occurrence
that are standard and customary for similarly situated companies in the industry
in which Licensee conducts business, and (C) provide for a thirty (30) day
notice to CSMC of any material change in such policies. Upon initiation of any
human clinical studies using a therapeutic molecule covered by the Patent
Rights, Licensee shall have first increased its insurance coverage to a minimum
amount in the aggregate that is standard and customary for similarly situated
companies in the industry in which Licensee conducts business. Licensee shall
provide CSMC with Certificates of Insurance upon request, and annually
thereafter, evidencing the policies required in accordance with this Section
8.1.
8.2 NOTICE OF CLAIM. CSMC shall promptly notify Licensee in writing of any
claim or Action or material threat thereof brought against any Indemnified Party
in respect of which indemnification for Losses may be sought and, to the extent
allowed by law, shall reasonably cooperate with and provide full information to
Licensee in defending or settling any such claim or Action. No settlement of any
claim, Action or threat thereof received by CSMC and for which CSMC intends to
seek indemnification (for itself or on behalf of any other Indemnified Party)
for Losses shall be made without the prior joint written approval of Licensee
and CSMC.
16
9. USE OF NAMES
Licensee shall not, unless as required by any law or governmental
regulation, use the name of CSMC, and/or any of its trademarks, service marks,
trade names or fictitious business names without express prior written consent
of the Vice President for Public Relations and Marketing of CSMC. Further, prior
to any reference by Licensee to the names or marks of CSMC in any manner,
Licensee shall provide CSMC with a writing reflecting the proposed reference so
that CSMC can review the reference within a reasonable period of time prior to
the proposed use thereof by Licensee. This limitation includes, but is not
limited to, use by Licensee in any regulatory filing, advertising, offering
circular, prospectus, sales presentation, news release or trade publication.
Subject to compliance by Licensee with the foregoing, which shall be deemed
conditions precedent to any use of CSMC's name or marks by Licensee, Licensee
shall ensure that the name of CSMC is used as scientifically or academically
appropriate in the "byline" of any article, abstract, manuscript or any other
publication related to the subject matter hereof.
10. CONFIDENTIAL INFORMATION
10.1 NON-DISCLOSURE. The parties hereto shall keep the terms of this
Agreement and all business and scientific discussions relating to the business
of the parties strictly confidential. All patient information to which a party
is given access by the other party shall be subject to the provisions of the
Confidentiality of Medical Information Act (Cal. Civ. Code ss.ss.56, et seq.).
It may, from time to time, be necessary for the parties, in connection with
performance under this Agreement, to disclose Confidential Information
(including know-how) to each other. The Receiving Party (as defined in Section
1.2 hereof) shall keep in strictest confidence the Confidential Information of
the Disclosing Party (as defined in Section 1.2 hereof), using the standard of
care it normally uses for information of like character, and shall not disclose
the Confidential Information to any third party or use it except as expressly
authorized by the prior written consent of the Disclosing Party or as otherwise
permitted by this Agreement; provided, however, that Licensee may disclose, and
will not be required to maintain as confidential, the Patent Rights and
Technical Information in connection with the exercise of its license rights
hereunder. The Receiving Party's obligation hereunder shall not apply to
Confidential Information that the Receiving Party can show:
(A) Is or later becomes part of the public domain through no fault
or neglect of the Receiving Party;
(B) Is received in good faith from a third party having no
obligations of confidentiality to the Disclosing Party, provided that the
Receiving Party complies with any restrictions imposed by the third party;
(C) Is independently developed without use of the Disclosing Party's
Confidential Information by the Receiving Party; or
(D) Is required by law or regulation to be disclosed (including,
without limitation, in connection with FDA filings, filings with another
government agency or as required under the California Public Records Act),
provided that the Receiving Party uses reasonable efforts to restrict disclosure
and to obtain confidential treatment and gives the Disclosing Party as much
advance notice as reasonably possible.
17
Except as provided in Sections 2.1(c)(i), 2.1(c)(ii) and 2.6, CSMC shall
keep confidential and not disclose to third parties the Patent Rights and
Technical Information.
10.2 LIMITS ON PERMITTED DISCLOSURES. Each party agrees that any
disclosure or distribution of the other party's Confidential Information within
its own organization shall be made only as is reasonably necessary to carry out
the intent of this Agreement. The parties further agree that all of their
respective officers, employees, agents, representatives or approved sublicensees
to whom any Confidential Information is disclosed or distributed shall have
agreed to maintain its confidentiality, upon terms no less restrictive than
those set forth in this Agreement. In such event, the Receiving Party shall
identify with reasonable particularity, upon request by the Disclosing Party,
each person within the Receiving Party's organization to whom the Receiving
Party has disclosed or distributed Confidential Information.
10.3 LEGALLY REQUIRED DISCLOSURES. If a subpoena or other legal process
concerning Confidential Information is served upon any party hereto pertaining
to the subject matter hereof, the party served shall notify the other party
immediately, the other party shall cooperate with the party served, at the other
party's expense, in any effort to contest the validity of such subpoena or other
legal process. This Section 10.3 shall not be construed in any way to limit any
party's ability to satisfy any disclosure of its relationship with the other
party required by any governmental authority.
10.4 PATENT RIGHTS AS CONFIDENTIAL INFORMATION. The Patent Rights are
understood by Licensee to be the Confidential Information of CSMC to the extent
"unpublished" as such term is construed under the United States Patent Laws. As
such, Licensee's and CSMC's confidentiality obligations hereunder automatically
extend to any and all Technical Information and to any and all patent
applications of CSMC relating to any Patent Rights, Technical Information,
Future Patent Rights and Future Technical Information and to any and all
communications with the United States Patent Office, and any foreign patent
office relating to any Patent Rights, Technical Information, Future Patent
Rights or Future Technical Information.
10.5 RETURN OF CONFIDENTIAL INFORMATION. In the event of any termination
of this Agreement, the Receiving Party shall promptly return all Confidential
Information and any copies made thereof previously made available to the
Receiving Party by the Disclosing Party.
10.6 REMEDIES. Both parties acknowledge and agree that it would be
difficult to measure damages for breach by either party of the covenants set
forth in this Section 10, and that injury from any such breach would be
incalculable, and that money damages would therefore be an inadequate remedy for
any such breach. Accordingly, either party shall be entitled, in addition to all
other remedies available hereunder or under law or equity, to injunctive or such
other equitable relief as a court may deem appropriate to restrain or remedy any
breach of such covenants.
18
11. INFORMATION EXCHANGE
CSMC shall promptly disclose (or cause the Inventors to disclose) to
Licensee the Patent Rights and Technical Information. In addition, the parties
shall cooperate to exchange such non-confidential information as may be
appropriate and necessary to facilitate Licensee's development and
commercialization of Products incorporating any Patent Rights or Technical
Information.
12. PATENT MARKING
In the event any Product is the subject of a patent under the Patent
Rights, Licensee shall xxxx all products made, sold or otherwise disposed of by
or on behalf of it or any of its sublicensees with the word "Patented" followed
by the number of the licensed patent. In such case, Licensee shall xxxx any
Product made using a process or method covered by any such Patent Rights with
the number of each such patent.
13. MISCELLANEOUS
13.1 NOTICES. Any notice, request, instruction or other document required
by this Agreement shall be in writing and shall be deemed to have been given (a)
if mailed with the United States Postal Service by prepaid, first class,
certified mail, return receipt requested, at the time of receipt by the intended
recipient, (b) if sent by Federal Express(R), Airborne(R), or other overnight
carrier, signature of delivery required, at the time of receipt by the intended
recipient, or (c) if sent by facsimile transmission, when so sent and when
receipt has been acknowledged by appropriate telephone or facsimile receipt,
addressed as follows:
In the case of Inventors to:
c/o Achilles X. Xxxxxxxxx, M.D., Ph.D.
0000 Xxxxxxxxxx Xxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
c/o Xxxxx Xxxxx, M.D., Ph.D.
000 Xxxx Xxxxxxxx Xxxxxx
Xxxxxxxx Xxxxxxx, Xxxxxxxxxx 00000
Fax: (000) 000-0000
or in the case of CSMC to:
Cedars Sinai Medical Center
Room 2009, North Tower
0000 Xxxxxxx Xxxxxxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000-0000
19
Attention: Senior Vice President for Academic Affairs
Fax (000) 000-0000
or in the case of Licensee to:
Xxxxxx Technologies, Inc.
0000 Xxxxxxxxxx Xxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attention: Xxxxx Xxxxx, M.D., Ph.D., President
Fax: (000) 000-0000
or to such other address or to such other person(s) as may be given from time to
time under the terms of this Section 13.1.
13.2 COMPLIANCE WITH LAWS. Each party shall comply with all applicable
federal, state and local laws and regulations in connection with its activities
pursuant to this Agreement.
13.3 GOVERNING LAW. This Agreement shall be construed and enforced in
accordance with the laws of the United States of America and of the State of
California, irrespective of choice of laws provisions. The parties agree that
Los Angeles, California shall be the situs of any legal proceeding arising out
of or relating to this Agreement.
13.4 WAIVER. Failure of any party to enforce a right under this Agreement
shall not act as a waiver of that right or the ability to assert that right
relative to the particular situation involved.
13.5 ENFORCEABILITY. If any provision of this Agreement shall be found by
a court of competent jurisdiction to be void, invalid or unenforceable, the same
shall be reformed to comply with applicable law or stricken if not so
conformable, so as not to affect the validity or enforceability of the remainder
of this Agreement.
13.6 MODIFICATION. No change, modification, or addition or amendment to
this Agreement, or waiver of any term or condition of this Agreement, is valid
or enforceable unless in writing and signed and dated by the authorized officers
of the parties to this Agreement.
13.7 ENTIRE AGREEMENT. This Agreement, the Schedules hereto (which are
incorporated herein by this reference as if fully set forth herein), the Stock
Purchase Agreement, the Facilities Lease, the Equipment Lease and the Loan-Out
Agreement constitute the entire agreements among the parties with respect to the
subject matter hereof and thereof, and replace and supersede as of the date
hereof and thereof any and all prior agreements and understandings, whether oral
or written, between the parties with respect to the subject matter of such
agreements.
20
13.8 SUCCESSORS. Except as otherwise expressly provided in this Agreement,
this Agreement shall be binding upon, inures to the benefit of, and is
enforceable by, the parties and their respective heirs, legal representatives,
successors and permitted assigns.
13.9 CONSTRUCTION. This Agreement has been prepared, examined, negotiated
and revised by each party and their respective attorneys, and no implication
shall be drawn and no provision shall be construed against any party to this
Agreement by virtue of the purported identity of the drafter of this Agreement
or any portion thereof.
13.10 COUNTERPARTS. This Agreement may be executed simultaneously in one
or more counterparts, each of which shall constitute one and the same
instrument. This Agreement may be executed by facsimile.
13.11 ATTORNEYS' FEES. In the event of any action at law or in equity
between the parties hereto to enforce any of the provisions hereof, the
unsuccessful party to such litigation shall pay to the successful party all
reasonable costs and expenses, including reasonable attorneys' fees, incurred
therein by such successful party; and if such successful party shall recover a
judgment in any such action or proceeding, such reasonable costs, expenses and
attorneys' fees may be included in and as part of such judgment.
13.12 ASSIGNMENT. This Agreement shall be binding upon and shall inure to
the benefit of each party and its respective successors and permitted assigns.
Neither party may assign its rights or delegate its obligations under this
Agreement without the prior written consent of the other party, except that (a)
Licensee shall have the right to assign its rights and delegate its obligations
hereunder to (i) an Acceptable Sublicensee, (ii) in connection with a merger,
consolidation or reorganization of Licensee, (iii) to an Affiliate of Licensee
or (iv) to a purchaser of all or substantially all of Licensee's assets that
relate to the subject matter of this Agreement; and (b) CSMC shall have the
right to assign its rights and delegate its obligations hereunder as part of any
reorganization or bond financing. As an express condition of any such assignment
or delegation by Licensee, the assignee shall be required to agree in writing to
be bound by all of the terms and conditions of this Agreement.
13.13 FURTHER ASSURANCES. At any time and from time to time after the
Effective Date, each party shall do, execute, acknowledge and deliver, and cause
to be done, executed, acknowledged or delivered, all such further acts,
transfers, conveyances, assignments or assurances as may be reasonably required
to consummate the transactions contemplated by this Agreement.
13.14 SURVIVAL. The following sections shall survive any expiration or
earlier termination of this Agreement: Section 2.1(c) (retention of certain
non-exclusive rights by CSMC), Section 8 ("Indemnification"), Section 9 ("Use of
Name") and Section 10 ("Confidentiality"). The provisions set forth in Schedule
J also shall survive any expiration or earlier termination of this Agreement, to
the extent set forth therein.
21
IN WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement as of the date first above written.
"LICENSEE":
XXXXXX TECHNOLOGIES, INC.,
A DELAWARE CORPORATION
By:
-----------------------------------------
Xxxxxxx X. Xxxxxxxxx, Secretary
Date: June __, 2001
"CSMC":
CEDARS SINAI MEDICAL CENTER, A CALIFORNIA
NONPROFIT PUBLIC BENEFIT CORPORATION
By: /s/ Xxxxxx Xxxxxx, M.D.
-----------------------------------------
Xxxxxx Xxxxxx, M.D.
Senior Vice President for
Academic Affairs
Date: June __, 2001
By: /s/ Xxxxxx X. Xxxxxxxxxx
-----------------------------------------
Xxxxxx X. Xxxxxxxxxx
Senior Vice President for
Finance and CFO
Date: June __, 2001
22
ACKNOWLEDGED AND AGREED:
"INVENTORS":
/s/ Achilles X. Xxxxxxxxx, M.D., Ph.D.
-----------------------------------------
Achilles X. Xxxxxxxxx, M.D., Ph.D.
/s/ Xxxxx Xxxxx, M.D., Ph.D.
-----------------------------------------
Xxxxx Xxxxx, M.D., Ph.D.
23
