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EXHIBIT 10.26
AGREEMENT
THIS AGREEMENT (the "Agreement") effective as of March 26, 1997 (the
"Effective Date") is made by and among Xenotech, L.P., a California limited
partnership ("XT"), Xenotech, Inc., a Delaware corporation and General Partner
of XT ("XT"), Cell Genesys, Inc., a Delaware corporation ("CGI"), Abgenix,
Inc., a Delaware corporation and wholly-owned subsidiary of CGI ("ABX"), JAPAN
TOBACCO INC., A Japanese corporation ("JT"), and JT Immunotech USA Inc., a New
York corporation and wholly-owned indirect subsidiary of JT ("JT").
RECITALS
A. XT, CGI, ABX and JT, along with GenPharm International, Inc. ("GPI"),
are entering into that certain Release and Settlement Agreement (the "Settlement
Agreement"), dated March 26, 1997, and pursuant thereto that certain Cross
License Agreement (the "Cross License Agreement") and Interference Settlement
Procedure Agreement (the "Interference Settlement Procedure Agreement"), and CGI
and GPI are entering into that certain Sublicense Agreement ("Sublicense
Agreement" and, together with the Settlement Agreement, Cross License Agreement
and Interference Settlement Procedure Agreement, the "GPI Agreements"), each of
even date therewith.
B. The parties now wish to enter into certain agreements relating to the
obligations of XT, CGI, ABX and JT under the GPI Agreements.
NOW, THEREFORE, in consideration of the covenants, conditions, and
undertakings hereinafter set forth, it is agreed by and among the parties as
follows:
1. DEFINITIONS
1.1 "Convertible Note" shall mean the $15,000,000 convertible note
attached as Exhibit A to the Cross License Agreement.
1.2 "Master Research License and Option Agreement" shall mean the Master
Research License and Option Agreement among CGI, JT and XT dated June 28, 1996.
1.3 "Patent Rights" shall have the meaning set forth in the Cross License
Agreement.
1.4 "Third Party License Agreements" shall have the meaning set forth in
the Cross License Agreement.
1.5 "Xenotech Group" shall have the meaning set forth in the Interference
Settlement Procedure Agreement.
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2. AMENDMENT OF EXISTING LICENSES
The parties agree that all existing licenses among them are hereby
amended to be subject to those rights granted to GPI pursuant to the Cross
License Agreement. In the event of any conflict between the Cross License
Agreement and such existing licenses, the parties agree that the Cross License
Agreement shall control.
3. PATENT RIGHTS
The parties agree that the Patent Rights licensed to XT pursuant to the
Cross License Agreement shall become part of XenoMouse Technology, as such term
is defined in Master Research License and Option Agreement, and shall be
subject to all of the rights and obligations of the parties with respect to
XenoMouse Technology.
4. AMENDMENT OF LIMITED PARTNERSHIP AGREEMENT
The parties agree that Section 10.6(b) of the Limited Partnership
Agreement among XTI, as General Partner, CGI and JTI, as Limited Partners, as
amended by Amendments Nos. 1, 2, 3, and 4 thereto (the "Limited Partnership
Agreement") is hereby further amended by adding reference to the Cross License
Agreement as clause (x) thereto.
5. PAYMENTS TO GPI
5.1 JT shall be responsible for making payment of $3,750,000 to GPI
pursuant to the Settlement Agreement.
5.2 XT shall be responsible for making the payment of $7,470,000 to GPI
pursuant to Section 3.1 of the Cross License Agreement and CGI shall be
responsible for making payment of $11,280,000 to GPI pursuant to such section.
ABX and JTI shall be responsible for making capital contributions to XT equal
to one-half of any payments made by XT pursuant to this Section 5.2, with a
$3,735,000 portion of the Convertible Note being deemed to constitute ABX's
contribution thereof. ABX and JTI agree that, as of the date of the deemed
contribution, the fair market value of the portion of the Convertible Note being
contributed is equal to $3,735,000 for partnership capital allocation purposes.
5.3 XT shall be responsible for making the payments of $7,500,000 each to
GPI pursuant to Section 3.2 of the Cross License Agreement. ABX and JTI each
shall be responsible for making capital contributions to XT equal to one-half
of any payments made by XT pursuant to this Section 5.3.
5.4 The parties confirm that the allocation set forth in Section 8.1(e)
of the Limited Partnership Agreement applies to allocate to ABX any partnership
income arising with respect to the Convertible Note.
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6. AMENDMENT OF AGREEMENTS; OTHER ACTIONS
The parties agree to complete all such further amendments to existing
agreements and other actions as may be necessary or appropriate to effect the
purposes of the provisions of this Agreement and the GPI Agreements within 60
days of the Effective Date.
7. INTERFERENCE AGREEMENT
When the Xenotech Group is required or allowed to take action pursuant to
the Interference Settlement Procedure Agreement, such action shall be taken by
the party having responsibility for prosecuting the patent application or
which had responsibility for prosecuting the patent involved, pursuant to the
existing agreements among the parties, unless not provided for therein, in
which case the inventing party (or the assignee of the inventor) shall have
such responsibility.
8. THIRD PARTY LICENSE AGREEMENTS
When the Xenotech Group is required or allowed to take action pursuant to
the Cross License Agreement with respect to a Xenotech Group Third Party
License Agreement, such action shall be taken and controlled by the party
initially responsible for negotiating such Third Party License Agreement. Any
costs arising from such action which are not borne by GPI shall be shared
equally by JT and ABX.
9. [*] OPTION
If either ABX or JT (the "Exercising Party") desires to exercise the
option to obtain a sublicense pursuant to Section 2.10 of the Cross License
Agreement, the Exercising Party shall notify the other party. If the other party
notifies the Exercising Party that it also desires such sublicense, then XT
shall exercise such option, each of ABX and JT shall pay to XT [*] and the
technology sublicensed shall become part of the XenoMouse Technology in the same
manner as set forth in Section 3 above. If the other party declines such
sublicense or does not notify the Exercising Party within thirty days that it
also desires such sublicense, the Exercising Party may exercise such option
directly and shall, in such case, pay the entire sublicense fee.
10. LEGAL FEES
Each party shall bear its own legal fees relating to the GPI Agreements.
11. MISCELLANEOUS
No provision of this Agreement may be modified or amended except
expressly in writing signed by the parties nor shall any terms be waived except
expressly in a writing signed by the party
*Certain information on this page has been omitted and filed separately with the
Commission. Confidential treatment has been requested with respect to the
omitted portions.
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charged therewith. This Agreement shall be governed in accordance with the laws
of the State of California, without regard to principles of conflicts of laws.
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, each copy of which shall for all purposes be deemed to be original.
XENOTECH, INC. (AS GENERAL
PARTNERS OF XENOTECH, L.P.
By: /s/ XXXXXXX X. XXXXX
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Name: Xxxxxxx X. Xxxxx
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Title: Chairman
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By: /s/ XXXXXXX XXXXXX
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Name: Xxxxxxx Xxxxxx
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Title: President and CEO
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XENOTECH, INC.
By: /s/ XXXXXXX X. XXXXX
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Name: Xxxxxxx X. Xxxxx
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Title: Chairman
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By: /s/ XXXXXXX XXXXXX
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Name: Xxxxxxx Xxxxxx
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Title: President and CEO
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CELL GENESYS, INC.
By: /s/ XXXXXXX X. XXXXXXX
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Name: Xxxxxxx X. Xxxxxxx
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Title: Chairman and CEO
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ABGENIX, INC.
By: /s/ R. XXXXX XXXXX
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Name: R. Xxxxx Xxxxx
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Title: President and CEO
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JAPAN TOBACCO INC.
By: /s/ MASAKAZU KAKEI
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Name: Masakazu Kakei
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Title: Managing Director Pharmaceutical Business
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JT IMMUNOTECH USA INC.
By: /s/ XXXXXXX XXXXX
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Name: Xxxxxxx Xxxxx
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Title: President
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