Amendment No. 1 to Xenogen License Agreement For Real-Time In Vivo Imaging Technology
Exhibit 10.91a
Certain
confidential information contained in this document, marked by brackets
and the word "REDACTED" ([REDACTED]),
has
been omitted and filed separately with the Securities and Exchange
Commission
pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as
Amended.
Amendment
No. 1 to
This
First Amendment to the Xenogen License Agreement For Real-Time In Vivo
Imaging
Technology, effective November 20, 2004 (the "Agreement”),
by
and between Xenogen
Corporation, with offices at 000 Xxxxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx
00000
(“Xenogen”) and Gene
Logic, Inc., a corporation with a principal place of business at 000
Xxxxxxxxxxxx Xxxxx, Xxxxxxxxxxxx, Xxxxxxxx 00000 (“GL”) is effective as of the
19th day of November, 2005 (the "First Amendment Effective Date").
W
I T N E S S E T H:
The
Parties desire
to
amend the Agreement in certain respects upon the terms and conditions
set forth
below. In
consideration of the foregoing premises and the mutual covenants set
forth
below, the Parties do hereby amend the Agreement and otherwise agree
as
follows:
1. Effect:
Provided that both Parties execute this First Amendment not later than
November
23, 2005, this First Amendment shall be effective for all purposes
as of the
First Amendment Effective Date, and except as otherwise expressly modified
by
this First Amendment, the Agreement shall remain in full force and
effect in
accordance with its terms. All terms and capitalized words used in
this First
Amendment not otherwise defined herein shall have the same meaning
for such
terms as set forth in the Agreement.
2. Additional
System Purchase:
Pursuant to Sections 2.1(b) and 3.5(a) of the Agreement, GL hereby
purchases an
Additional System from Xenogen for a purchase price of [REDACTED] dollars
($[REDACTED]) plus shipping and insurance charges. Xenogen will deliver
and
install the Additional System prior to December 31, 2005.
3. Amendment
to Section 3.3 - Bioware:
Section
3.3 of the Agreement is hereby amended by replacing subsection (c)
as
follows:
"(c) Consideration.
During
the Term, Bioware cell lines and bacterial strains will be priced at
a
non-refundable initial fee of [REDACTED]
dollars
($[REDACTED])
per
cell line or strain, with a non-refundable annual renewal fee of [REDACTED]
dollars
($[REDACTED])
per
cell line or strain. Xenogen will invoice Licensee for Bioware requested
by Licensee upon
shipment and annually thereafter.
After
Licensee has made the foregoing annual payments for Bioware for [REDACTED]
years, Licensee will have a fully paid-up, non-exclusive, non-transferable
license to such LPTA Model line.“
4. Amendment
to Section 3.4 - LPTA®
Animal Models:
Section
3.4 of the Agreement is hereby amended by replacing
“During
the Term, LPTA Models will be priced at a non-refundable fee of [REDACTED]
dollars
($[REDACTED])
per
animal (minimum quantity of twenty animals), or, for breeding pairs,
a
non-refundable initial fee of [REDACTED]
dollars
($[REDACTED])
per
line, with a non-refundable annual renewal fee of [REDACTED]
dollars
($[REDACTED])
per
line. As long as Licensee maintains its access rights to at least one
such line
during the Term, then breeding pairs for subsequent lines will be priced
at a
non-refundable initial fee of [REDACTED]
dollars
($[REDACTED])
per
line, with a non-refundable annual renewal fee of [REDACTED]
dollars
($[REDACTED])
per
line”
with
“During
the Term, LPTA Models will be priced at a non-refundable fee of [REDACTED]
dollars
($[REDACTED])
per
animal (minimum quantity of twenty animals), or breeding pairs will
be priced at
a non-refundable initial fee of [REDACTED]
dollars
($[REDACTED])
per
line, with a non-refundable annual renewal fee of [REDACTED]
dollars
($[REDACTED])
per
line. After Licensee has made the foregoing annual payments for an
LPTA Model
line for [REDACTED] years, Licensee will have a fully paid-up, non-exclusive,
non-transferable license to such LPTA Model line.“
5. Amendment
to Section 3.5 - Payments:
Section
3.5(a) of the Agreement is hereby amended by replacing “first
Additional System ordered within the first twelve (12) months of the
Term, the
price shall be the lesser of $[REDACTED]
or
Xenogen’s then current list price”
with
“first
Additional System ordered within the first twelve (12) months of the
Term, the
price shall be the lesser of $[REDACTED]
or
Xenogen’s then current list price, and for the second Additional System ordered
before the first anniversary of the First
Amendment Effective Date,
the
price shall be the lesser of $[REDACTED]
or
Xenogen’s then current list price”.
5. Amendment
to Section 3.5 - Payments:
Section
3.5 of the Agreement is hereby amended by replacing subsection (b)
as
follows:
“(b) Technology
License Fee.
Beginning on the Amendment Effective Date, in addition to the purchase
price set
forth in Section 3.5(a), for each Imaging System purchased by Licensee
hereunder, Licensee shall pay a non-refundable, non-creditable, annual
technology license fee of [REDACTED]
dollars
($[REDACTED])
to
practice the Xenogen Imaging Technology in the Field with the Imaging
System for
the first year of the Term and [REDACTED]
dollars
($[REDACTED])
annually to practice the Xenogen Imaging Technology in the Field with
each
Imaging System for each year of the Term thereafter (e.g., for the
Imaging
System and an Additional System, an aggregate annual fee of $[REDACTED]);
provided however, that if the patents included in the Xenogen Imaging
Technology
are declared invalid or unenforceable as they relate to the Imaging
System in a
final judicial or administrative opinion from which no appeal can be
taken, such
fee shall no longer apply. Annual license fees for each Authorized
Site shall be
capped at [REDACTED]
dollars
($[REDACTED]).”
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6. Amendment
to Section 8.1 - Term:
Section
8.1 of the Agreement is hereby amended by replacing “will expire three (3) years
after the System Installation Date (the “Term”)” with “will expire three (3)
years after the Installation Date of the most recent Additional System
(the
“Term”).”
7. Governing
Law.
This
First Amendment shall be governed by, interpreted and construed in
accordance
with the laws of the State of California, without regard to conflicts
of law
principles.
8. Counterparts.
This
First Amendment may be executed in counterparts, each of which shall
be deemed
to be an original and together shall be deemed to be one and the same
document.
IN
WITNESS WHEREOF, the Parties hereby execute this First
Amendment by their respective duly authorized representatives
as of
the First Amendment Effective Date.
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XENOGEN
CORPORATION
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Signature
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Signature
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Name
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Name
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Title
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Title
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