EXHIBIT 2.2
FIRST AMENDMENT TO THE ASSIGNMENT AGREEMENT
THIS FIRST AMENDMENT TO THE ASSIGNMENT AGREEMENT (the "AMENDMENT") is
made and entered into as of March 31, 2004, by and among Applera Corporation
through its Applied Biosystems Group with offices at 000 Xxxxxxx Xxxxxx Xxxxx,
Xxxxxx Xxxx, XX 00000, (collectively "AB") and Xtrana, Inc., with offices at 000
Xxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxxxx XX 00000 ("Xtrana"). Each of AB and Xtrana
a "Party" and, collectively, "Parties".
WHEREAS, AB and Xtrana have entered into that certain Assignment
Agreement dated January 26, 2004 (the "Agreement") (all capitalized terms not
defined herein shall have the meanings ascribed thereto in the Agreement);
WHEREAS, AB and Xtrana desire to amend the Agreement as provided
herein.
NOW, THEREFORE, AB and Xtrana hereby agree as follows:
1. Section 1 of the Agreement is hereby amended by deleting the
definition of "Fundamental Representations" and inserting the following
in lieu thereof:
""Fundamental Representations" shall mean the representations,
warranties and covenants set forth in Section 7 and Sections 8(f) and
8(j); provided however that part (iii) of Section 8(f) as it relates to
claims arising after the Closing that AB's use of the Intellectual
Property infringes any third party's intellectual property rights shall
not be deemed a Fundamental Representation."
2. Section 2(a) of the Agreement is hereby amended by deleting the
first sentence of Section 2(a) and inserting the following in lieu
thereof:
"Effective upon Closing, Xtrana hereby assigns all right, title and
interest in and to the Intellectual Property to AB, together with all
accrued causes of action for infringement thereof and the right to xxx
and recover for past and future infringement of the Intellectual
Property; provided, however, that such assignment shall be subject to
the nonexclusive, nontransferable licenses granted to the United States
government to practice or have practiced on behalf of the United States
government on February 18, 2004 (with respect to the NIST Contract (as
defined below)) and on February 20, 2004 (with respect to the Army
Contract (as defined below)) under the subject inventions claimed in
the Affected Patents (as defined below)."
3. Section 2(d) of the Agreement is hereby amended by deleting Section
2(d) and inserting the following in lieu thereof:
"(d) Subject to the satisfaction of the terms and conditions herein set
forth, and in
reliance upon the respective representations and warranties of the
Parties set forth herein and in any document delivered pursuant hereto,
the closing of the assignment of the Intellectual Property by Xtrana to
AB pursuant to Section 2(a) (the "Closing") will be held at the offices
of AB at 000 Xxxxxxx Xxxxxx Xxxxx, Xxxxxx Xxxx, Xxxxxxxxxx at 10:00 am
on March 31, 2004 or at such other time as may be mutually agreed upon
in writing by the Parties (the "Closing Date"). Upon consummation, the
Closing shall be deemed to take place as of the close of business on
the Closing Date."
4. Section 2(e) of the Agreement is hereby amended by deleting Section
2(e) and inserting the following in lieu thereof:
"(e) CLOSING AND POST-CLOSING DELIVERIES.
(i) On the Closing Date, Xtrana will execute and deliver to
Wachovia, National Association ("Escrow Agent"), as escrow agent, the
patent assignment instrument attached hereto as Exhibit III (the
"Patent Assignment"), to be held in escrow in accordance with the terms
and conditions of the Escrow Agreement in the form attached hereto as
Schedule 2(e)(i) (the "Escrow Agreement"). On the Closing Date, Xtrana
and AB shall execute and deliver to the Escrow Agent and to each other
the Escrow Agreement. The Patent Assignment and any money delivered to
the Escrow Agent shall be released and delivered by the Escrow Agent as
provided in the Escrow Agreement. The Parties agree that: (A) the
Patent Assignment shall be released from escrow and delivered to AB,
and the Initial Purchase Price (as defined in Section 2(f) below) and
any interest earned on the Initial Purchase Price shall be released
from escrow and delivered to Xtrana, in the event that all the
conditions set forth in Section 2(e)(ii) (the "Consummation
Conditions") have been satisfied on or before May 14, 2004, or in the
event that AB delivers a written notice to the Escrow Agent directing
such delivery of the Patent Assignment to AB and payment of such
amounts to Xtrana (the "AB Consummation Notice") on or prior to May 24,
2004, and that otherwise (B) the purchase and sale of the Intellectual
Property shall be rescinded as provided in Section 27 hereof and that
in such case the Patent Assignment be released and returned to Xtrana
and the Initial Purchase Price and any interest thereon be released and
delivered to AB. In the event that the conditions set forth in Section
2(e)(ii) have been satisfied on or before May 14, 2004, Xtrana and AB
shall promptly issue a joint instruction certificate to the Escrow
Agent instructing it to deliver the Patent Assignment to AB and the
Initial Purchase Price, plus any interest earned thereon, to Xtrana.
(ii) The Consummation Conditions are that:
(1) One of the conditions specified in Section 1(a) or
1(b) of Schedule 2(e)(ii) has been satisfied on or
prior to May 14, 2004; and
(2) One of the conditions specified in Section 2(a) or
2(b) of Schedule 2(e)(ii) has been satisfied on or
prior to May 14, 2004; and
(3) An officer of Xtrana duly authorized to do so has
executed and delivered to AB a certificate in the
form of Schedule 2(e)(ii) hereto with the
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appropriate boxes checked and the appropriate
certification from Xxxxx & Xxxxxxx LLP, counsel to
Xtrana, executed as of May 14, 2004."
5. Section 2(f) of the Agreement is hereby amended by deleting the
first sentence of Section 2(f) and inserting the following in lieu
thereof:
"Subject to the terms and conditions of this Agreement, AB will make an
aggregate payment in the amount of four million dollars ($4,000,000) as
follows: (i) one payment of three million five hundred thousand dollars
($3,500,000) (the "Initial Purchase Price") shall be delivered to the
Escrow Agent on the Closing Date (reflecting the application of the
deposit of $100,000 previously paid by AB (the "Deposit")), and (ii) a
second payment of four hundred thousand dollars ($400,000) (the
"Remaining Purchase Price") shall be due and payable three (3) months
thereafter, contingent upon Xtrana's providing the consulting services
as described in Section 2(c) above."
6. Section 8 of the Agreement is hereby amended by adding the following
subsection (j).
"(j) GOVERNMENT CONTRACTS. Except for U.S. Patents: 6,291,166,
5,955,351, 6,153,425, 6,649,378 and 5,989,813 and U.S. Patent
Applications: 10/413,433, 09/944,604, 10/690,359, and 10/441,158 (the
foregoing patents and patent applications, the "Affected Patents"),
Xtrana represents and warrants that none of the Intellectual Property
subject to this Agreement was created, conceived, or first actually
reduced to practice, in whole or in part, using assets or services
obtained from any third party. Xtrana also represents and warrants that
U.S. Patent Application 10/441,158 was not conceived or first actually
reduced to practice, in whole or in part, using assets or services
obtained from any third party, other than funds received from the U.S.
Army under Contract DAMB 17-00-C-001 (the "Army Contract"). Xtrana
further represents and warrants that U.S. Patents 6,291,166, 5,955,351,
6,153,425, 6,649,378 and 5,989,813 and U.S. Patent Applications
10/413,433, 09/944,604, and 10/690,359, were not conceived or reduced
to practice, in whole or in part, using assets or services obtained
from any third party, other than funds received from the United States
National Institutes of Standards and Technology ("NIST") under
Cooperative Agreement No. 70NANB5H1109 (the "NIST Contract"). Xtrana
further represents and warrants that (a) subject to part (d) below of
this Section 8(j) and subject to the nonexclusive, nontransferable
license granted to the United States government to practice or have
practiced on behalf of the United States government on February 18,
2004 (with respect to the NIST Contract) and on February 20, 2004 (with
respect to the Army Contract) under the subject inventions claimed in
the Affected Patents, (the foregoing nonexclusive licenses granted to
the U.S. government, the "Governmental Licenses") Xtrana owns all
right, title and interest in and to and has not granted any other
licenses under the Affected Patents; (b) the assignment hereunder to AB
of the Affected Patents is valid and enforceable; (c) the terms and
conditions of the Army Contract and the NIST Contract do not conflict
with this Agreement or AB's ownership, use and enjoyment of the
Affected Patents; (d) unless the United States government provides
Xtrana by April 26, 2004 with a written request for title to the
Affected Patents, Xtrana has (including, without limitation through the
actions taken by
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Xtrana's counsel Xxxxx and Xxxxxxx LLP in correspondence, attached
hereto as Exhibit 8(j), addressed to the U.S. Army and NIST) complied
with all requisite legal requirements (including, without limitation,
all reporting requirements and Xtrana's election to take title to the
subject inventions under the Army Contract and the NIST Contract ), and
cured all prior omissions with respect to the same, as necessary to
vest Xtrana with full title to the Affected Patents; and (e) Xtrana
will immediately provided AB with a copy of any future correspondence
from the U.S. government relating to Affected Patents. For the
avoidance of doubt the foregoing representation and warranty is not
breached by general equity investments in Xtrana provided that such
investments were neither (i) made as part of an agreement that was
directed at funding research or development by Xtrana; nor (ii) in
consideration of (and such equity investors did not obtain) any rights
or licenses to or under the Intellectual Property or any other
inventions conceived or reduced to practice by Xtrana.
7. Section 10 of the Agreement is hereby amended by adding the
following subsection (e):
"(e) WAIVER OF CERTAIN INDEMNIFICATION RIGHTS. In the event that (i)
the Consummation Conditions are satisfied, or (ii) AB has delivered the
AB Consummation Notice to the Escrow Agent on or prior to May 24, 2004,
AB shall be deemed to have waived any and all rights to indemnification
pursuant to this Section 10 with respect to Xtrana's breach of
representations and warranties in the Agreement (prior to its amendment
by this Amendment) due to its failure to disclose the existence of the
Governmental Licenses."
8. The Agreement is hereby amended by inserting the following new
Section 27:
"27. RESCISSION. If the Consummation Conditions have not all been
satisfied on or before May 14, 2004, and if AB has not delivered an AB
Consummation Notice to the Escrow Agent on or prior to May 24, 2004,
the purchase and sale of the Intellectual Property to AB shall be
rescinded effective as of May 24, 2004. In such event, (i) AB shall
reconvey to Xtrana all trade secrets, know-how, prosecution files and
any other documentation or information conveyed pursuant to Section
2(b) of the Agreement, (ii) the Consulting Agreement shall be deemed
terminated effective May 24, 2004, (iii) this Agreement shall be deemed
terminated effective May 24, 2004, (iv) AB shall not have any
obligation to make any payments to Xtrana for any Consulting Services,
and (iv) within 10 days after written notice is given to Xtrana by AB
requesting repayment of the Deposit, Xtrana shall repay the Deposit to
AB. In the event AB has provided such written notice to Xtrana
requesting repayment of the Deposit, upon receipt by AB of the full
amount of such Deposit, each Party shall be deemed to have irrevocably
and unconditionally released and discharged the other Party from any
and all obligations, claims, damages, losses, judgments, awards,
actions, causes of action, suits, debts, covenants, agreements,
contracts, accounts, bonds, promises, demands, penalties, costs,
expenses or other liability arising out of or relating to this
Agreement. In connection therewith, Xtrana and AB shall each execute
such documents(including execution by AB of any documents reasonably
necessary to reconvey to Xtrana the Intellectual Property) and make
such payments as are reasonably necessary to give effect to the
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rescission referred to above. Xtrana's and AB's obligations under this
Section 27 shall survive termination of this Agreement."
9. All other provisions of the Agreement shall remain in full force and
effect.
10. This Amendment may be executed (including via facsimile or other
electronic means of transmitting signed copies) in any number of
counterparts, all of which when taken together shall constitute one and
the same instrument, and any of the Parties hereto may execute this
Amendment by signing any such counterpart.
IN WITNESS WHEREOF, the Parties have caused this Amendment to
be duly executed and delivered as of the date and year first above written.
APPLERA CORPORATION, through its Applied
Biosystems Group
By: /S/ XXXXXXX X. XXXXXXXXXXX
----------------------------------------
Name: Xxxxxxx X. Xxxxxxxxxxx
Title: Sr. V.P.
XTRANA, INC.
By: /S/ XXXXX XXXXXXXXXXX
---------------------------------------
Name: Xxxxx Xxxxxxxxxxx
Title: Chief Executive Officer
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SCHEDULE 2(e)(ii)
CERTIFICATION
1. Xtrana hereby certifies that on February 17, 2004, Xxxxx & Xxxxxxx
LLP, counsel for Xtrana, notified the National Institute of Standards
and Technology, in writing delivered by hand, of its apparent failure
to timely report, under the provisions of Cooperative Agreement No.
70NANB5H1109, the subject inventions encompassed by U.S. Patents:
6,291,166, 5,955,351, 6,153,425, 6,649,378 and 5,989,813 and U.S.
Patent Applications: 10/413,433, 09/944,604 and 10/690,359 and its
apparent failure to timely elect title in the same ("Xtrana's
Notification"). Xtrana hereby certifies that as of May 14, 2004, the
National Institute of Standards and Technology has:
(a) ____ not responded to Xtrana's Notification.
(b) ____ notified Xtrana that it does not intend to
request title to the aforementioned subject
inventions
(c) _____ requested title to the aforementioned subject
inventions from Xtrana.
2. Xtrana hereby certifies that on February 24, 2004, Xxxxx & Xxxxxxx
LLP, counsel for Xtrana, notified, in writing via express delivery, the
U.S. Army of its apparent failure to timely report, under the
provisions of U.S. Army Contract DAMB 17-00-C-001, the subject
inventions encompassed by U.S. Patent Application 10/441,158 and its
apparent failure to timely elect title in the same ("Xtrana's
Notification"). Xtrana hereby certifies that as of May 14, 2004, the
U.S. Army has:
(a) ____ not responded to Xtrana's Notification.
(b) ____ notified Xtrana that it does not intend to
request title to the aforementioned subject
inventions
(c) _____ requested title to the aforementioned subject
inventions from Xtrana.
XTRANA, INC.
By:
-----------------------------------------
Name:
Title:
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Xxxxx & Xxxxxxx LLP, counsel to Xtrana, Inc., hereby certifies that to its
knowledge, the above certifications by Xtrana, Inc. are true and correct, and
that as of May 14, 2004, Xxxxx & Xxxxxxx LLP has not received any notice from
the National Institute of Standards and Technology or the U.S. Army that would
contravene the above certifications by Xtrana.
Xxxxx & Xxxxxxx LLP
By:
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