EXECUTION COPY
CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE COMMISSION. CONFIDENTIAL TREATMENT
HAS BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
AMENDMENT OF THE EXPANDED FIELD LICENSE
This AMENDMENT OF THE EXPANDED FIELD LICENSE (this "Amendment"),
effective December 31, 1999 (the "Amendment Effective Date") is made by and
among ABGENIX, INC., a Delaware corporation ("ABX") and JT AMERICA INC., a New
York corporation ("JTA") and XENOTECH L.P., a California limited partnership
("XT"), with reference to the following facts and circumstances. ABX, JTA and
XT may be referred to herein each individually as a "Party" and jointly as the
"Parties."
RECITALS
A. WHEREAS, Cell Genesys, Inc. ("CGI"), the predecessor company
of ABX, and JT Immunotech USA Inc. ("Immunotech"), a wholly-owned subsidiary of
JTA (which is itself a wholly-owned subsidiary of Japan Tobacco Inc. ("JTI")),
formed XT in 1991 to develop genetically modified strains of mice which can
produce fully human monoclonal antibodies ("XenoMouse Animals"), and to
commercialize products generated therefrom;
B. WHEREAS, CGI, Immunotech and XT entered into that certain
Collaboration Agreement effective June 12, 1991, as amended, (the
"Collaboration Agreement"), pursuant to which those parties conducted a
sponsored research project for the development of transgenic animals capable of
producing human monoclonal antibodies;
C. WHEREAS, CGI, Immunotech and XT entered into that certain
Field License effective June 12, 1991, as amended, (the "Prior Field License")
to govern those parties' rights with respect to the use of technology created
pursuant to or practiced in the context of the Collaboration Agreement
("Project Technology") in the Field (as defined below);
D. WHEREAS, CGI, Immunotech and XT entered into that certain
Expanded Field License effective June 12, 1991, as amended on June 28, 1996
(the "Expanded Field License") to govern those parties' rights with respect to
the Project Technology in the Expanded Field (as defined in the Expanded Field
License);
E. WHEREAS, CGI assigned to ABX (its wholly-owned subsidiary at
such time), its interest in XT and in the Collaboration Agreement, the Prior
Field License and the Expanded Field License, and in 1997, Immunotech merged
into JTA and its interest in XT and in the Collaboration Agreement, the Prior
Field License and the Expanded Field License was assigned to JTA by operation
of law;
F. WHEREAS, XT, JTA and ABX have agreed to terminate the
Collaboration Agreement pursuant to that certain Agreement to Terminate the
Collaboration Agreement of even date herewith (the "Collaboration Termination
Agreement"), and to amend and restate the terms of the Prior Field License
pursuant to the terms of that certain Amended and Restated Field License of
even date herewith (the "Amended and Restated Field License");
G. WHEREAS, the Parties desire to amend the Expanded Field
License pursuant to
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
1.
the terms and conditions set forth in this Amendment;
NOW THEREFORE, for and in consideration of the covenants, conditions,
and undertakings hereinafter set forth, the Parties agree as follows:
1. DEFINITIONS
For purposes of this Agreement, capitalized terms set forth in this
Amendment and not otherwise defined herein shall have the meaning set forth in
the Amended and Restated Field License.
2. AMENDMENT OF THE EXPANDED FIELD LICENSE.
The Parties hereby agree to amend the Expanded Field License, as follows,
effective as of the Amendment Effective Date:
2.1 XT shall no longer be a party to the Expanded Field License,
and all references to CGI as a party thereto shall be changed to ABX and all
references to JTI as a party thereto shall be changed to JTA.
2.2 Article 1 shall be replaced with the following:
The capitalized terms referenced herein that are not herein defined
shall have the meanings given such terms in the Amended and Restated
Field License between XT and JTA dated December 31, 1999.
"AGREEMENT" means this Expanded Field License, as amended.
"EXPANDED FIELD" shall mean the [*] for any purpose: (i) of [*] or
parts thereof (other than a [*] or, (ii) of [*] or parts thereof. The
"Expanded Field" shall exclude the "Field."
2.3 Section 2.1 shall be replaced entirely with the following:
JTA hereby grants to ABX an exclusive (even as to JTA), worldwide
license or sublicense, as applicable, with the right to grant
sublicenses, under its interest, if any, in the Project Technology
within the Expanded Field. Additionally, JTA grants to ABX a
non-exclusive, worldwide, royalty-free license or sublicense, as
applicable, with the right to grant sublicenses, in the Expanded Field
under all technology and inventions made by JTA through the practice of
the Project Technology within the Expanded Field, and under the JT
Independent Technology, for all uses within the Expanded Field in order
to ensure ABX'S freedom to operate in the Expanded Field.
[*] CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
2.
2.4 Section 2.2 shall be deleted from the Expanded Field License
entirely.
2.5 Article 3 shall be deleted from the Expanded Field License
entirely.
2.6 Article 4 shall be deleted from the Expanded Field License
entirely and replaced with the following:
4. INDEMNIFICATION.
(a) BY JTA. Subject to ABX'S compliance with
subsection (c) below, JTA agrees to indemnify, defend and hold ABX and its
directors, officers, employees, agents and Affiliates harmless from and against
any losses, claims, damages, liabilities, or actions resulting directly from
any Third Party claims (collectively, "Liabilities") arising from JTA's
negligence or willful conduct or breach of any representations, warranties,
covenants or other obligations of JTA under this Agreement, except to the
extent that such Liabilities arise from ABX'S negligence or willful conduct or
breach of any of its representations, warranties, covenants or other
obligations under this Agreement.
(b) BY ABX. Subject to JTA's compliance with
subsection (c) below, ABX agrees to indemnify, defend and hold JTA and its
directors, officers, employees, agents and Affiliates harmless from and against
any Liabilities arising from ABX'S negligence or willful conduct or the breach
of any representations, warranties, covenants or other obligations of ABX under
this Agreement, except to the extent that such Liabilities arise from JTA's
negligence or willful conduct or breach of any of its representations,
warranties, covenants or other obligations under this Agreement.
(c) INDEMNIFICATION PROCEDURES. If a Party (the
"Indemnitee") intends to claim indemnification under this Section 5, it shall
promptly notify the indemnifying Party (the "Indemnitor") in writing of any
Liability in respect of which the Indemnitee or its directors, officers,
employees or agents intend to claim such indemnification, and the Indemnitor
shall have the right to participate in, and, to the extent the Indemnitor so
desires, to assume the defense thereof with counsel mutually satisfactory to
the Parties. The indemnity obligation of this Section 5 shall not apply to
amounts paid in settlement of any loss, claim, damage, liability or action if
such settlement is effected without the consent of the Indemnitor, which
consent shall not be withheld or delayed unreasonably. The failure to deliver
written notice to the Indemnitor within a reasonable time after the
commencement of any such action shall not relieve such Indemnitor of any
liability to the Indemnitee under this Section 5, except to the extent that
such failure is prejudicial to its ability to defend such action. The Party
claiming indemnification under this Section 5 and its directors, officers,
employees and agents, shall cooperate fully with the Indemnitor and its legal
representatives in the investigation of any action, claim or liability covered
by this Section 5.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
3.
2.8 The following provisions are added to the Expanded Field
License:
5. REPRESENTATIONS, WARRANTIES AND COVENANTS
(a) REPRESENTATIONS AND WARRANTIES OF ABX. ABX
represents and warrants to JTA that (i) it has the full right and authority to
enter into this Agreement; (ii) it has taken all necessary action on its part
to authorize the execution and delivery of this Agreement and the performance
of its obligations hereunder; (iii) to the knowledge of ABX as of the Effective
Date, there are no existing or threatened actions, suits or claims pending with
respect to the subject matter hereof or the right of ABX to enter into and
perform its obligations under this Agreement; and (iv) it has not entered and
during the term of this Agreement will not enter any other agreement
inconsistent or in conflict with this Agreement.
(b) REPRESENTATIONS AND WARRANTIES OF JTA. JTA
represents and warrants to ABX that (i) it has the full right and authority to
enter into this Agreement; (ii) it has taken all necessary action on its part
to authorize the execution and delivery of this Agreement and the performance
of its obligations hereunder; (iii) to the knowledge of JTA as of the Effective
Date, there are no existing or threatened actions, suits or claims pending with
respect to the subject matter hereof or the right of JTA to enter into and
perform its obligations under this Agreement; and (iv) it has not entered and
during the term of this Agreement will not enter any other agreement
inconsistent or in conflict with this Agreement.
6. MISCELLANEOUS PROVISIONS
(a) GOVERNING LAWS. This Agreement shall be
interpreted and construed in accordance with the laws of the State of
California, USA, without regard to conflict of laws principles.
(b) WAIVER. It is agreed that no waiver by a Party
hereto of any breach or default of any of the covenants or agreements herein
set forth shall be deemed a waiver as to any subsequent and/or similar breach
or default.
(c) ASSIGNMENT. Neither this Agreement nor any
right or obligation hereunder may be assigned or delegated, in whole or part,
by a Party without the prior written consent of the other Parties; provided
that such written consent shall not be required where: (i) either Party assigns
this Agreement to any entity that acquires substantially all of the assets to
which this Agreement relates, (ii) JTA assigns this Agreement to a
Majority-Owned Affiliate of JTI or (iii) ABX assigns this Agreement to an
Affiliate. The terms and conditions of this Agreement shall be binding on and
inure to the benefit of the permitted successors and assigns of the Parties.
Any assignment not in conformance with this Section 6(c) shall be null, void
and of no legal effect. For clarification, this Agreement shall survive any
dissolution of XT.
(d) INDEPENDENT CONTRACTORS. The relationship of
the Parties is that of independent contractors. The Parties shall not be deemed
to be agents, partners or joint
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
4.
venturers of the others for any purpose as a result of this Agreement or the
transactions contemplated thereby.
(e) COMPLIANCE WITH LAWS. In exercising their
rights under this Agreement, the Parties shall fully comply with the
requirements of any and all applicable laws, regulations, rules and orders of
any governmental body having jurisdiction over the exercise of rights under
this Agreement.
(f) FURTHER ACTIONS. Each Party agrees to execute,
acknowledge and deliver such further instruments 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.
(g) NOTICES. Any notice, request, approval or
consent required or permitted to be given between the Parties hereto shall be
given in writing, and shall be deemed to have been properly given if delivered
in person, transmitted by telecopy (with machine confirmation of transmission
and confirmation by personal delivery, first class certified mail or courier),
or mailed by first class certified mail to the other Party at the appropriate
address set forth below, or to such other address as may be designated in
writing by a Party from time to time in accordance with this Agreement.
JT America Inc.: JT America Inc.
000 Xxxx Xxxxxx
Xxxxx 0000
Xxx Xxxx, XX 00000
Fax: (000) 000-0000
Attn: President
With copies to: Xxxxxxx, Xxxxxx and Xxxxx LLP
000 Xxxx Xxxxxx
Xxx Xxxx, XX 00000
Fax: (000) 000-0000
Attn: Xxxx X. Xxxxxx, Esq.
Akros Pharma Inc.
0000 Xxxxxxx Xxxxxx Xxxx.
Xxxxx 000
Xxx Xxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
5.
Japan Tobacco Inc.
JT Building
0-0 Xxxxxxxxx 0-xxxxx
Xxxxxx-Xx, Xxxxx 000
Xxxxx
Fax: Fax: 000-00-0-0-000-0000
Attn: Vice President,
Pharmaceutical Division
Abgenix, Inc.: Abgenix, Inc.
0000 Xxxxxxxxx Xxxxxx
Xxxxxxx, XX 00000
Fax: (000) 000-0000
Attn: President
With a copy to: Xxxxxx Godward LLP
3000 El Camino Real
Five Xxxx Xxxx Xxxxxx
Xxxx Xxxx, XX 00000-0000
Fax: (000) 000-0000
Attn: Xxxxxx X. Xxxxx, Esq.
(h) SEVERABILITY. In the event that any provision
of this Agreement becomes or is declared by a court of competent jurisdiction
to be illegal, unenforceable or void, this Agreement shall continue in full
force and effect without said provision and the parties shall discuss in good
faith appropriate revised arrangements.
(i) FORCE MAJEURE. Nonperformance of any Party
shall be excused to the extent that performance is rendered impossible by
strike, fire, earthquake, flood, 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, intentional conduct
or misconduct of the non-performing Party.
(j) DISPUTE RESOLUTION; ARBITRATION. The Parties
will attempt to resolve any dispute under this Agreement by mutual agreement,
and, if required, there shall be a face-to-face meeting between the Chief
Executive Officer of ABX and the President of JTA. Any dispute under this
Agreement which is not settled after such meeting shall be finally settled by
binding arbitration, conducted in accordance with the Commercial Arbitration
Rules of the American Arbitration Association by three (3) arbitrators
appointed in accordance with said rules. The arbitration proceedings and all
pleadings and written evidence shall be in the English language. Any written
evidence originally in a language other than English shall be submitted in
English translation accompanied by the original or a true copy thereof. The
costs of the arbitration, including administrative and arbitrators' fees, shall
be shared equally by the parties to the arbitration. Each Party shall bear its
own costs and attorneys' and witness' fees; PROVIDED THAT the prevailing party
in any arbitration, as determined by the arbitration panel, shall be
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6.
entitled to an award against the other party in the amount of the prevailing
party's costs and reasonable attorneys' fees. A disputed performance or
suspended performances pending the resolution of the arbitration must be
completed within thirty (30) days following the final decision of the
arbitrators. Any arbitration subject to this subsection (j) shall be completed
within six (6) months from the filing of notice of a request for such
arbitration.
(k) COMPLETE AGREEMENT. It is understood and
agreed between ABX and JTA that this Agreement, the Amended and Restated Field
License and the Collaboration Termination Agreement constitute the entire
agreement, both written and oral, between the Parties with respect to the
subject matter hereof, and supersede and cancel all prior agreements respecting
the subject matter hereof, either written or oral, expressed or implied. No
amendment or change hereof or addition hereto shall be effective or binding on
either of the Parties unless reduced to writing and executed by the respective
duly authorized representatives of ABX and JTA.
(l) COUNTERPARTS. This Agreement may be executed
in counterparts, each of which shall be deemed to be an original and both
together shall be deemed to be one and the same agreement.
(m) HEADINGS. The captions to the several Articles
and Sections hereof are not a part of this Agreement, but are included merely
for convenience of reference only and shall not affect its meaning or
interpretation.
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WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT
TO THE OMITTED PORTIONS.
7.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by their respective duly authorized officers as of the day and year
first above written.
ABGENIX, INC. XENOTECH, INC. AS GENERAL PARTNER OF
XENOTECH, L.P.
By: /s/ R. Xxxxx Xxxxx By: /s/ Xxxxxxx X. Xxxxx
------------------------------------- --------------------
R. Xxxxx Xxxxx Xxxxxxx X. Xxxxx
President and Chief Executive Officer Chairman
JT AMERICA INC.
By: /s/ Xxxxx Xxxxx
---------------
Xxxxx Xxxxx
President
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8.
