1
Exhibit 10.30
PATENT AND TECHNOLOGY TRANSFER AND STOCK PURCHASE AGREEMENT
This Patent and Technology Transfer and Stock Purchase Agreement (this
"Agreement") is made and entered into as of August 8, 1996 (the "Effective
Date") by and among LXR Biotechnology Inc., a Delaware corporation (the
"Company"), Xxxxxxxx X. Xxxxxxx ("Xxxxxxx") and Xxxxxxx X. Xxxxxx ("Wicomb").
Xxxxxxx and Wicomb are hereinafter sometimes referred to individually as
"Purchaser" and together as "Purchasers".
1. PURCHASE OF SHARES. Subject to the terms and conditions of this
Agreement, Purchasers hereby purchase from the Company, and Company hereby sells
to Purchasers, a total of up to 300,000 shares of the Company's common stock,
$0.0001 par value per share (the "Shares"). As used in this Agreement, the term
"Shares" refers to the Shares purchased under this Agreement and (a) includes
all securities received in replacement of the Shares, whether as a result of a
recapitalization, merger, reorganization or otherwise, and (b) shall be adjusted
to reflect stock dividends, stock splits or reverse stock splits in respect of
the Shares.
2. PAYMENT OF PURCHASE PRICE.
(A) DELIVERIES BY PURCHASER. Purchasers hereby deliver to the Company
the full purchase price of the Shares by Purchasers' assignment to the Company
of certain technology and related rights co-owned by Purchasers (the
"Technology"), evidenced by delivery to the Company of an Assignment Agreement
in the form of Exhibit 1 attached hereto (the "Assignment Agreement") and a
Joint Assignment in the form of Exhibit A to the Assignment Agreement, each duly
executed by Purchasers. If a Purchaser is married, such Purchaser also hereby
delivers to the Company a Consent of Spouse in the form of Exhibit 2 attached
hereto, duly executed by such Purchaser's spouse.
(B) DELIVERIES BY THE COMPANY. Upon its receipt of the documents to be
executed and delivered by Purchasers to the Company under Section 2(a), the
Company will issue one or more duly executed stock certificates evidencing a
total of 37,500 Shares, registered in the name of each Purchaser as set forth on
Exhibit 3 attached hereto, as completed by such Purchaser. The allocation of
such Shares between Purchasers will be as set forth on Exhibit 4 attached hereto
(the "Allocation Schedule").
(D) FUTURE DELIVERIES BY THE COMPANY. As further consideration for
Purchasers' assignment of the Technology to the Company, the Company agrees to
issue up to an additional 262,500 Shares to Purchasers as follows:
(i) 37,500 Shares on January 1, 1997;
(ii) 75,000 Shares on January 1, 1998;
(iii) 75,000 Shares on January 1, 1999; and
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Patent and Technology Transfer
and Stock Purchase Agreement
(iv) 75,000 Shares upon first commercial sale and shipment of
a preservation solution based on the Technology to a customer in the United
States that is unaffiliated with Purchasers (or other customer agreed upon by
the parties), after receipt of all necessary FDA approvals and commencement of
general marketing activities by the Company for such product.
The Company will issue the Shares to Purchasers as set forth above and
in the Allocation Schedule; provided, however, that at the time of each such
future issuance, each Purchaser receiving Shares shall represent to the Company
that (a) the representations and warranties of such Purchaser in Section 4,
paragraphs (a) through (i), are true and correct on the date of such issuance,
as if they were made on such date, and (b) the warranties of such Purchaser in
Section 4, paragraph (j) were true and correct as of the Effective Date.
(d) ACKNOWLEDGMENT OF PAYMENT OF CASH CONSIDERATION.
Purchasers acknowledge that they previously received a total of $110,000 in cash
from the Company in connection with the Company's acquisition of the Technology
(i.e., a $30,000 diligence fee, a $68,000 document execution fee and a $12,000
prepayment of consulting fees in connection with Xxxxxxx' service as a member of
the Company's Science Advisory Board), and that such cash payments were
allocated between Purchasers as agreed by Purchasers.
(e) OTHER AGREEMENTS. As of the Effective Date, the Company and the
Purchasers have entered into the following other agreements in connection with
Purchasers' assignment of the Technology to the Company:
(i) Wicomb Employment Agreement. The Company and Wicomb have
entered into an employment agreement in substantially the form attached hereto
as Exhibit 5.
(ii) Xxxxxxx Science Advisory Board Consulting Agreement. The
Company and Xxxxxxx have entered into a Science Advisory Board Consulting
Agreement in substantially the form attached hereto as Exhibit 6.
Notwithstanding the fact that the parties are also entering into the Wicomb
Employment Agreement and Xxxxxxx Science Advisory Board Consulting Agreement
(together, the "Other Agreements"), the Company's obligation to issue Shares
shall not be affected by the Other Agreements, and accordingly a breach or
alleged breach by Wicomb or Xxxxxxx under the Other Agreements shall not entitle
the Company to withhold delivery of the Shares. Additionally, the transfer of
Technology by the Purchasers to the Company shall not be affected by the Other
Agreements, and accordingly a breach or alleged breach by the Company under the
Other Agreements shall not entitle the Purchasers to revoke or otherwise affect
the transfer of Technology to the Company.
3. REPRESENTATIONS AND WARRANTIES OF THE COMPANY. The Company hereby
represents and warrants to each Purchaser that the statements in the following
paragraphs of this Section 3 are all true and correct as of the Effective Date:
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(a) ORGANIZATION, GOOD STANDING AND QUALIFICATION. The Company is a
corporation duly organized, validly existing and in good standing under the laws
of the State of Delaware.
(b) CAPITALIZATION. The capitalization of the Company will consist of
the following:
(i) Preferred Stock. A total of 5,000,000 authorized shares of
preferred stock, $0.01 par value per share (the "Preferred Stock"), none of
which will be issued or outstanding.
(ii) Common Stock. A total of 45,000,000 authorized shares of
common stock, $0.0001 par value per share (the "Common Stock"), of which
approximately 16,000,000 shares will be issued and outstanding.
(iii) Options, Warrants, Reserved Shares. Except for: (1) the
1,049,850 shares of Common Stock reserved for issuance under the Company's 1993
Stock Option Plan, as amended, under which options to purchase approximately
600,000 shares are outstanding; (2) the 200,000 shares of Common Stock reserved
for issuance under the Company's 1993 Directors Stock Option Plan, as amended,
under which options to purchase approximately 40,000 shares are outstanding; (3)
warrants to purchase approximately 685,000 shares of Common Stock; and (4) the
Company's agreement to issue Shares to Purchasers pursuant to this Agreement;
there are not outstanding any options, warrants, rights (including conversion or
preemptive rights) or agreements for the purchase or acquisition from the
Company of any shares of its capital stock or any securities convertible into or
ultimately exchangeable or exercisable for any shares of the Company's capital
stock.
(c) DUE AUTHORIZATION. All corporate action on the part of the Company
and its officers, directors and stockholders necessary for the authorization,
execution and delivery of, and the performance of all obligations of the Company
under, this Agreement, and the authorization, issuance, reservation for issuance
and delivery of all of the Shares being sold under this Agreement has been taken
or will be taken prior to the Effective Date, and this Agreement constitutes the
valid and legally binding obligation of the Company, enforceable in accordance
with its terms, except as may be limited by (i) applicable bankruptcy,
insolvency, reorganization or others laws of general application relating to or
affecting the enforcement of creditors' rights generally and (ii) the effect of
rules of law governing the availability of equitable remedies.
(d) VALID ISSUANCE OF STOCK.
(i) The Shares, when issued, sold and delivered in accordance
with the terms of this Agreement for the consideration provided for herein, will
be duly and validly issued, fully paid and nonassessable.
(ii) Based in part on the representations made by Purchasers in
Section 4 hereof, the Shares to be issued on the Effective Date and (assuming no
change in applicable law and no unlawful distribution of Shares by Purchasers or
other parties) the Shares
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Patent and Technology Transfer
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to be issued pursuant to Section 2(d) hereof, will be issued in full compliance
with the registration and prospectus delivery requirements of the U.S.
Securities Act of 1933, as amended (the "1933 Act") and the registration and
qualification requirements of the securities laws of the State of California.
4. REPRESENTATIONS AND WARRANTIES OF PURCHASER. Each Purchaser
represents and warrants to the Company, with respect to the Shares received by
such Purchaser, that:
(a) PURCHASE FOR OWN ACCOUNT FOR INVESTMENT. Purchaser is
purchasing the Shares for Purchaser's own account for investment purposes only
and not with a view to, or for sale in connection with, a distribution of the
Shares within the meaning of the Securities Act of 1933, as amended (the "1933
Act"). Purchaser has no present intention of selling or otherwise disposing of
all or any portion of the Shares and no one other than Purchaser has any
beneficial ownership of any of the Shares.
(b) ACCESS TO INFORMATION. Purchaser has had access to all
information regarding the Company and its present and prospective business,
assets, liabilities and financial condition that Purchaser reasonably considers
important in making the decision to purchase the Shares, and Purchaser has had
ample opportunity to ask questions of the Company's representatives concerning
such matters and this investment. Without limiting the foregoing, Purchaser
acknowledges receipt of the Company's 1995 Annual Report on Form 10-KSB, report
on Form 10-QSB for the period ending March 31, 1996 and Proxy Statement for the
1996 Annual Meeting of Company Stockholders.
(c) UNDERSTANDING OF RISKS. Purchaser is fully aware of: (i)
the highly speculative nature of the investment in the Shares; (ii) the
financial hazards involved; (iii) the lack of liquidity of the Shares and the
restrictions on transferability of the Shares (e.g., that Purchaser may not be
able to sell or dispose of the Shares or use them as collateral for loans); (iv)
the qualifications and backgrounds of the management of the Company; and (v) the
tax consequences of investment in the Shares.
(d) PURCHASER'S QUALIFICATIONS. Purchaser has consulted with
independent tax, legal and all other advisors he deems necessary before entering
into this Agreement. By reason of Purchaser's business or financial experience,
Purchaser is capable of evaluating the merits and risks of this investment and
has the ability to protect Purchaser's own interests in this transaction.
Purchaser is financially capable of bearing a total loss of this investment.
(e) NO GENERAL SOLICITATION. At no time was Purchaser
presented with or solicited by any publicly issued or circulated newspaper,
mail, radio, television or other form of general advertising or solicitation in
connection with the offer, sale and purchase of the Shares.
(f) COMPLIANCE WITH SECURITIES LAWS. Purchaser understands and
acknowledges that, in reliance upon the representations and warranties made by
Purchaser herein, the Shares are not being registered with the Securities and
Exchange Commission ("SEC") under the 1933 Act but instead are being issued
under an exemption or exemptions from
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Patent and Technology Transfer
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the registration requirements of the 1933 Act which impose certain restrictions
on Purchaser's ability to transfer the Shares.
(g) RESTRICTIONS ON TRANSFER. Purchaser understands that
Purchaser may not transfer any Shares unless such Shares are registered under
the 1933 Act or unless, in the opinion of counsel to the Company, exemptions
from such registration requirements are available. Purchaser understands that
only the Company may file a registration statement with the SEC and that the
Company is under no obligation to do so with respect to the Shares other than as
set forth in Section 4, below. Purchaser has also been advised that exemptions
from registration may not be available or may not permit Purchaser to transfer
all or any of the Shares in the amounts or at the times proposed by Purchaser.
(h) RULE 144. In addition, Purchaser has been advised that SEC
Rule 144 promulgated under the 1933 Act, which permits certain limited sales of
unregistered securities, is not presently available with respect to the Shares
and, in any event, requires that the Shares be held for a minimum of two years,
and in certain cases three years, after they have been purchased and paid for
(within the meaning of Rule 144), before they may be resold under Rule 144.
(i) LICENSE AGREEMENT TERMINATED. The Assignors hereby agree
and acknowledge that that certain Agreement effective as of November 15, 1988 by
and among Waters Instruments, Inc., Xxxxxxx and Wicomb, as amended by that
certain Amendment to Agreement dated December 15, 1989, is hereby terminated and
of no further force and effect, and represent that no other license or other
agreements are outstanding relating to the Technology.
(j) "ASSIGNOR WARRANTIES." The Assignor Warranties set forth
in Section 4 of the Assignment Agreement are hereby incorporated by reference.
5. REGISTRATION RIGHTS. The Company agrees to provide Purchasers
with reasonable "piggyback" registration rights with respect to the Shares, to
permit Purchasers to sell the Shares in connection with future public offerings
of the Company's common stock, to the extent feasible.
6. RESTRICTIVE LEGENDS AND STOP-TRANSFER ORDERS.
(a) LEGENDS. Each Purchaser understands and agrees that the
Company will place the legends set forth below or similar legends on any stock
certificate(s) evidencing the Shares received by such Purchaser, together with
any other legends that may be required by state or federal securities laws, the
Company's Restated Certificate of Incorporation or Bylaws, any other agreement
between such Purchaser and the Company or any agreement between such Purchaser
and any third party:
THE SECURITIES REPRESENTED HEREBY HAVE
NOT BEEN REGISTERED UNDER THE SECURITIES
ACT OF 1933, AS AMENDED (THE "ACT"), OR
UNDER THE SECURITIES LAWS OF CERTAIN
STATES. THESE SECURITIES ARE SUBJECT TO
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RESTRICTIONS ON TRANSFERABILITY AND RESALE AND MAY NOT
BE TRANSFERRED OR RESOLD EXCEPT AS PERMITTED UNDER THE
ACT AND APPLICABLE STATE SECURITIES LAWS, PURSUANT TO
REGISTRATION OR EXEMPTION THEREFROM. INVESTORS SHOULD BE
AWARE THAT THEY MAY BE REQUIRED TO BEAR THE FINANCIAL
RISKS OF THIS INVESTMENT FOR AN INDEFINITE PERIOD OF
TIME. THE ISSUER OF THESE SECURITIES MAY REQUIRE AN
OPINION OF COUNSEL IN FORM AND SUBSTANCE SATISFACTORY TO
THE ISSUER TO THE EFFECT THAT ANY PROPOSED TRANSFER OR
RESALE IS IN COMPLIANCE WITH THE ACT AND ANY APPLICABLE
STATE SECURITIES LAWS.
(b) STOP-TRANSFER INSTRUCTIONS. Each Purchaser agrees that,
in order to ensure compliance with the restrictions imposed by this Agreement,
the Company may issue appropriate "stop-transfer" instructions to its transfer
agent, if any, and if the Company transfers its own securities, it may make
appropriate notations to the same effect in its own records.
(c) REFUSAL TO TRANSFER. The Company will not be required
(i) to transfer on its books any Shares that have been sold or otherwise
transferred in violation of any of the provisions of this Agreement or (ii) to
treat as owner of such Shares, or to accord the right to vote or pay dividends,
to any purchaser or other transferee to whom such Shares have been so
transferred.
7. COMPLIANCE WITH LAWS AND REGULATIONS. The issuance and
transfer of the Shares will be subject to and conditioned upon compliance by the
Company and Purchaser with all applicable state and federal laws and regulations
and with all applicable requirements of any stock exchange or automated
quotation system on which the Company's common stock may be listed or quoted at
the time of such issuance or transfer.
8. SUCCESSORS AND ASSIGNS. The Company may assign any of its
rights under this Agreement. This Agreement will be binding upon and inure to
the benefit of the successors and assigns of the Company. Subject to the
restrictions on transfer herein set forth, this Agreement will be binding upon
each Purchaser and such Purchaser's heirs, executors, administrators, successors
and assigns. If the Company assigns all or substantially all of its rights under
this Agreement, then all remaining Shares not previously issued to the
Purchasers shall automatically vest and be issued to the Purchasers by the
Company.
9. GOVERNING LAW; SEVERABILITY. This Agreement will be governed
by and construed in accordance with the internal laws of the State of
California, excluding that body of laws pertaining to conflict of laws. If any
provision of this Agreement is determined by a court of law to be illegal or
unenforceable, then such provision will be enforced to the maximum extent
possible and the other provisions will remain fully effective and enforceable.
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10. NOTICES. Any notice required or permitted hereunder will be given
in writing and will be deemed effectively given upon personal delivery, three
(3) days after deposit in the United States mail by certified or registered mail
(return receipt requested), one (1) business day after its deposit with any
recognized express courier (prepaid), or one (1) business day after transmission
by telecopier, addressed to the other party at its address (or facsimile number,
in the case of transmission by telecopier) as shown below its signature to this
Agreement, or to such other address as such party may designate in writing from
time to time to the other party.
11. FURTHER INSTRUMENTS. The parties agree to execute such further
instruments and to take such further action as may be reasonably necessary to
carry out the purposes and intent of this Agreement.
12. HEADINGS. The captions and headings of this Agreement are
included for ease of reference only and will be disregarded in interpreting or
construing this Agreement. All references herein to Sections will refer to
Sections of this Agreement.
13. ENTIRE AGREEMENT. This Agreement, together with all its Exhibits,
constitutes the entire agreement and understanding of the parties with respect
to the subject matter of this Agreement, and supersedes all prior understandings
and agreements, whether oral or written, between the parties hereto with respect
to the specific subject matter hereof, specifically including the letter
agreements among the parties dated February 14, 1996 and May 21, 1996.
14. COUNTERPARTS. This Agreement may be executed in counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument.
15. TITLE TO SHARES. The exact spelling of the name(s) under and
manner in which a Purchaser will take title to such Purchaser's Shares is set
forth on Exhibit 3.
16. ARBITRATION. Any controversy or claim arising out of this Agreement
shall be settled by arbitration in accordance with the Commercial Arbitration
Rules of the American Arbitration Association in San Francisco, California, and
judgment upon the award rendered by the arbitrator(s) may be entered in any
court having jurisdiction thereof. There shall be reasonable right to discovery
under the California Code of Civil Procedure. The prevailing party shall be
entitled to costs and reasonable attorneys' fees.
REST OF PAGE INTENTIONALLY LEFT BLANK
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Patent and Technology Transfer
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IN WITNESS WHEREOF, the Company has caused this Agreement to be
executed in triplicate by its duly authorized representative and each Purchaser
has executed this Agreement in triplicate, as of the Effective Date.
COMPANY PURCHASERS
LXR BIOTECHNOLOGY INC.
By: /s/ L. Xxxxx Xxxxx /s/ Xxxxxxxx X. Xxxxxxx
------------------------------- ----------------------------------
L. Xxxxx Xxxxx, Ph.D., President & Xxxxxxxx X. Xxxxxxx
Chief Executive Officer
Address: 0000 Xxxxxx Xxxxxxx Address: 00 Xxxxxxx Xxxx
Xxxxxxxx, XX 00000-0000 Xxxxxxxxx, XX 00000
Fax: (000) 000-0000 Fax:(____)
/s/ Xxxxxxx X. Xxxxxx
----------------------------------
Xxxxxxx X. Xxxxxx
Address: 000 Xxxx Xxxxxx
Xxxxx Xxxxxx, XX 00000
Fax:(000) 000-0000
SIGNATURE PAGE TO
TECHNOLOGY TRANSFER AND STOCK PURCHASE AGREEMENT
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LIST OF EXHIBITS
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Exhibit 1: Assignment Agreement
Exhibit 2: Consent of Spouse
Exhibit 3: Title to Shares
Exhibit 4: Allocation Schedule: Allocation of Shares Between Purchasers
Exhibit 5: Wicomb Employment Agreement
Exhibit 6: Xxxxxxx Science Advisory Board Consulting Agreement
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EXHIBIT 1
ASSIGNMENT AGREEMENT
This Assignment Agreement (this "Agreement") is made and entered into effective
as of August 8, 1996 by and among LXR Biotechnology Inc., a Delaware corporation
(the "Company"), Xxxxxxxx X. Xxxxxxx ("Xxxxxxx") and Xxxxxxx X. Xxxxxx
("Wicomb"). Xxxxxxx and Wicomb are hereinafter sometimes referred to
individually as "Assignor" and together as "Assignors."
R E C I T A L S
A. Assignors are the co-inventors and co-owners of the Technology
(as defined below).
B. Assignors desire to assign and transfer to the Company all of
Assignors' right, title and interest in and to the Technology and other related
rights in exchange for the Company's issuance to Assignors of a total of up to
300,000 shares of the Company's common stock, $0.0001 par value per share
("Common Stock"), and certain other consideration, as described in the Patent
and Technology Transfer and Stock Purchase Agreement among the parties dated of
even date herewith (the "Stock Purchase Agreement").
NOW THEREFORE, the parties hereby agree as follows:
1. CERTAIN DEFINITIONS. As used herein, the following terms will
have the meanings set forth below:
1.1 Technology. The term "Technology" means that invention
disclosed in United States Patent No. 4,938,961, titled "Organ Preservation
Solution containing Pokyethylene (sic) Glycol and Method of Performing
Cardioplegia," and all technology, trade secrets and know-how related thereto.
1.2 Derivative. The term "Derivative" means: (a) any
derivative work of the Technology (as defined in Section 101 of the U.S.
Copyright Act); (b) all improvements, modifications, alterations, adaptations,
enhancements and new versions of the Technology ("Technology Derivatives"); and
(c) all technology, inventions, products or other items that, directly or
indirectly, incorporate, or are derived from, any part of the Technology or any
Technology Derivative.
1.3 Intellectual Property Rights. The term "Intellectual
Property Rights" means, collectively, all worldwide patents (including but not
limited to United States Patent No. 4,938,961), patent rights, copyrights,
copyright registrations, moral rights, trade names, trademarks, service marks
and registrations and applications therefor, trade secrets, know-how, mask work
rights, rights in trade dress and packaging, goodwill and all other intellectual
property rights and proprietary rights relating in any way to the Technology,
any Derivative or any Embodiment, whether arising under the laws of the United
States of America or the laws of any other state, country or jurisdiction.
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Assignment Agreement
1.4 Embodiment. The term "Embodiment" means all
documentation, drafts, papers, designs, schematics, diagrams, models,
prototypes, source and object code (in any form or format and for all hardware
platforms), computer-stored data, diskettes, manuscripts and other items
describing all or any part of the Technology, any Derivative, any Intellectual
Property Rights or any information related thereto or in which all of any part
of the Technology, any Derivative, any Intellectual Property Right or such
information is set forth, embodied, recorded or stored.
1.5 Assigned Assets. The term "Assigned Assets" refers to
the Technology, all Derivatives, all Intellectual Property Rights and all
Embodiments, collectively.
2. ASSIGNMENT. Assignors acknowledge that as of the date hereof,
upon the Effective Date (as defined in the Stock Purchase Agreement), Assignors
have received from the Company a total of 37,500 shares of Common Stock and
$98,000 in cash. In consideration of the foregoing and the Company's agreement
to issue to Assignors up to an additional 262,500 shares of Common Stock, as set
forth in the Stock Purchase Agreement, Assignors hereby forever sell, assign,
transfer, release and convey to the Company, and its successors and assigns,
Assignors' entire right, title and interest in and to each and all of the
Assigned Assets. In furtherance thereof, Assignors hereby deliver to the Company
a Joint Assignment in the form of Exhibit A attached hereto, duly executed by
Assignors.
3. DELIVERY. The Assignors agree to deliver all Embodiments of
all Assigned Assets to the Company at a location designated by the Company no
later than August __, 1996.
4. ASSIGNOR WARRANTIES. Each Assignor represents and warrants to
the Company that, except only for the interest of the other Assignor, such
Assignor is the sole owner, inventor and/or author of, and that such Assignor
owns, and can grant exclusive right, title and interest in and to, each of the
Assigned Assets without the consent of any other party, and that none of the
Assigned Assets is currently subject to any dispute, claim, prior license or
other agreement, assignment, lien or rights of any third party, or any other
rights that might interfere with the Company's use, or exercise of ownership of,
any Assigned Assets. Each Assignor further represents and warrants to the
Company that the Assigned Assets are free of any claim of any prior employer of
such Assignor or any school, university or other institution such Assignor
attended, and that such Assignor is not aware of any claims by any third party
to any rights of any kind in or to any of the Assigned Assets other than the
claims of the other Assignor.
5. FURTHER ASSURANCES. Each Assignor further agrees, promptly upon
request of the Company, or any of its successors or assigns, to execute and
deliver, without further compensation of any kind, any power of attorney,
assignment, application for copyright, patent or other intellectual property
right protection, or any other papers which may be necessary or desirable to
fully secure to the Company, its successors and assigns, all right, title and
interest in and to each of the Assigned Assets, and to cooperate and assist in
the prosecution of any opposition proceedings involving said rights and any
adjudication of the same. Further, each Assignor agrees never to assert any
claims, rights or moral rights in or to any of the Assigned Assets. The
Assignors' obligations under this Section 5 shall be suspended during any period
of time that the Company is in material breach of the Stock Purchase Agreement.
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Assignment Agreement
6. INDEMNITY.
6.1 Indemnity by Assignors. Assignors agree, severally, to indemnify
and hold the Company harmless from and against one-half of any loss, damages or
expense (including without limitation reasonable attorneys' fees) incurred by
the Company in connection with any claim, suit or other proceeding in which a
third party asserts (i) any claim to any right, title, license or other interest
in or to any Assigned Asset, or (ii) any claim that, if true, would be
inconsistent with any representation made by Assignors in Section 4 above;
provided, however, that each Assignor's liability under this Agreement shall be
limited to $500,000 unless such loss, damages or expense arises from matters of
which an Assignor was aware on or prior to the date of this Agreement and has
not disclosed to the Company as of the date hereof.
6.2 Indemnity by the Company. The Company agrees to indemnity the
Assignors for any third party claims by reason of claims or lawsuits filed
claiming injury or damages arising from the use, sale or distribution of any
product based on the Technology (except claims based on intellectual property
issues). In the event of the notice of any such third party claims, the
Assignors shall advise the Company of such claims or action. If the Company
fails to defend such action on their behalf, the Assignors may retain their own
counsel at the Company's expense. The Company shall maintain reasonable
liability insurance and add the Assignors as additional insureds. The Company,
on request, will furnish the Assignors with evidence of such insurance.
7. COUNTERPARTS; GOVERNING LAW. This Agreement may be executed in any
number of counterparts, each of which will constitute an original, and all of
which will together constitute this one Agreement. This Agreement will be
governed exclusively by the internal laws of the State of California.
8. ENTIRE AGREEMENT. This Agreement and the Stock Purchase Agreement
constitute the entire understanding and agreement between Assignors and the
Company regarding the subject matter of such agreements, and supersede any and
all other agreements or understandings of the parties regarding such subject
matter.
IN WITNESS WHEREOF, the undersigned have executed this Agreement
effective as of the date and year first above written.
COMPANY ASSIGNORS
LXR BIOTECHNOLOGY INC.
By: /s/ L. Xxxxx Xxxxx /s/ Xxxxxxxx X. Xxxxxxx
-------------------------------- -----------------------------
L. Xxxxx Xxxxx, Ph.D., President Xxxxxxxx X. Xxxxxxx
and Chief Executive Officer
/s/ Xxxxxxx X. Xxxxxx
-----------------------------
Xxxxxxx X. Xxxxxx
Exhibit A: Joint Assignment
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EXHIBIT A
ASSIGNMENT
JOINT
THIS ASSIGNMENT, by Xxxxxxxx X. Xxxxxxx and Xxxxxxx X. Xxxxxx
(hereinafter referred to as the assignors), residing at 00 Xxxxxxx Xxxx,
Xxxxxxxxx, Xxxxxxxxxx 00000 and 000 Xxxx Xxxxxx, Xxxxx Xxxxxx, Xxxxxxxxxx 00000,
respectively, witnesseth:
WHEREAS, said assignors have invented certain new and useful
improvements in organ preservation solutions, in the form of the inventions
disclosed in United States Patent No. 4,938,961, titled "Organ Preservation
Solution containing Pokyethylene (sic) Glycol and Method of Performing
Cardioplegia" (the "961 Patent"); and
WHEREAS, LXR Biotechnology Inc., a corporation duly organized under and
pursuant to the laws of Delaware and having its principal place of business at
0000 Xxxxxx Xxx Xxxxx, Xxxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred to as
the assignee), is desirous of acquiring the entire right, title and interest in
and to said inventions and the 961 Patent, and in and to any application for
Letters Patent to be submitted in connection therewith and any Letters Patent,
United States or foreign, to be obtained therefor and thereon:
NOW, THEREFORE, in consideration of One Dollar ($1.00) and other good
and sufficient consideration set forth in that certain Patent and Technology
Transfer and Stock Purchase Agreement among the assignors and the assignee, the
receipt of which is hereby acknowledged, said assignors have sold, assigned,
transferred and set over, and by these presents do sell, assign, transfer and
set over, unto said assignee, its successors, legal representatives and assigns,
as co-owners in undivided one-half interest, respectively, the entire right,
title and interest in and to the above-mentioned inventions, the 961 Patent, any
and all applications for Letters Patent to be submitted in connection therewith
and any Letters Patent, in the United States of America and all foreign
countries, which may be granted therefor and thereon, and in and to any and all
divisions, continuations and continuations-in part of said applications, or
reissues or extensions of said 961 Patent or Letters Patent, and all rights
under the International Convention for the Protection of Industrial Property,
the same to be held and enjoyed by said assignee, for its own use and the use of
its successors, legal representatives and assigns, to the full end of the term
or terms for which said 961 Patent or Letters Patent are or may be granted, as
fully and entirely as the same would have been held and enjoyed by the
assignors, had this sale and assignment not been made.
AND for the same consideration, said assignors hereby covenant and
agree to and with said assignee, its successors, legal representatives and
assigns, that, at the time of execution and delivery of these presents, said
assignors are the sole and lawful owners of the entire right, title, interest in
and to said inventions and the 961 Patent above-mentioned, and that the same are
unencumbered and that said assignors have good and full right and lawful
authority to sell and convey the same in the manner herein set forth.
14
AND for the same consideration, said assignors hereby covenant and
agree to and with said assignee, its successors, legal representatives and
assigns, that said assignors will, whenever counsel of said assignee, or the
counsel of its successors, legal representative and assigns, shall advise that
any proceeding in connection with said inventions or 961 Patent, or any
proceeding in connection with any application for Letters Patent or any Letters
Patent for said inventions in any country, including interference proceedings,
is lawful and desirable, or that any division, continuation or
continuation-in-part of any application for Letters Patent or any reissue or
extension of the 961 Patent or any Letters Patent, to be obtained thereon, is
lawful and desirable, sign all papers and documents, take all lawful oaths, and
do all acts necessary or required to be done for the procurement, maintenance,
enforcement and defense of the 961 Patent or any Letters Patent for said
inventions, without charge to said assignee, its successors, legal
representatives and assigns, but at the cost and expense of said assignee, its
successors, legal representatives and assigns;
This Assignment may be executed in counterparts, each of which will be
deemed an original, but all of which together will constitute one and the same
instrument.
8/8/96 /s/ Xxxxxxxx X. Xxxxxxx
---------------- --------------------------------------
Date Xxxxxxxx X. Xxxxxxx
8/8/96 /s/ Xxxxxxx X. Xxxxxx
---------------- --------------------------------------
Date Xxxxxxx X. Xxxxxx
State of California
-------------------------------
County of San Francisco
-----------------------------
On ___August 8,_____, 1996, before me, __Edward Xxxxxx
Tinsley________, personally appeared ______Winston N. Wicomb and Xxxxxxxx X.
Collins_________, personally known to me or proved to me on the basis of
satisfactory evidence to be the person whose name is subscribed to the within
instrument and acknowledged to me that he/she executed the same in his/her
authorized capacity, and that by his/her signature on the instrument the person,
or the entity upon behalf of which the person acted, executed the instrument.
Witness my hand and official seal.
/s/ Xxxxxx Xxxxxx Xxxxxxx
-------------------------------
Notary Public
Notary's Seal
- 2 -
18438-00201/JTH/437692.5/070396
15
EXHIBIT 2
CONSENT OF SPOUSE
I, the undersigned, am the spouse of ______________________________
("Purchaser"). I have read and hereby consent to and approve all the terms and
conditions of the Patent and Technology Transfer and Stock Purchase Agreement
(the "Agreement") dated July ______, 1996 among LXR Biotechnology Inc., a
Delaware corporation (the "Company"), Purchaser and another party, pursuant to
which Purchaser has purchased shares of the Company's common stock
(collectively, the "Shares") and received certain other consideration (the
"Other Consideration"), and that certain Assignment Agreement ("Assignment
Agreement") executed by Purchaser in connection with the Agreement.
In consideration of the Company granting my spouse the right to
purchase the Shares and receive the Other Consideration under the Agreement, I
hereby agree to be irrevocably bound by all the terms and conditions of the
Agreement and further agree that any community property interest I may have in
the Shares, the Other Consideration and all property assigned by Purchaser to
the Company under the Assignment Agreement will be similarly bound by the
Agreement.
I hereby appoint Purchaser as my attorney-in-fact, to act in my name,
place and xxxxx with respect to any amendment of the Agreement and the
Assignment Agreement.
Dated: July ______, 1996
_______________________________
Signature of Spouse [Sign Here]
_______________________________
Name of Spouse [Please Print]
16
EXHIBIT 3
TITLE TO SHARES
I, the undersigned ("Purchaser"), desire to take title to the Shares as follows:
[ ] Individually, as separate property
[ ] Husband and wife, as community property
[ ] Joint Tenants
[ ] Alone or with spouse as trustee(s) of the
following trust (including date):_____________________________
______________________________________________________________
______________________________________________________________
[ ] Other; please specify:________________________________________
______________________________________________________________
The exact spelling of the name(s) under which Purchaser will take title to the
Shares is:
______________________________________________________________
______________________________________________________________
Purchaser's social security number is:__________________________________________
PURCHASER
_________________________________
(signature)
_________________________________
(print name)
17
EXHIBIT 4
ALLOCATION SCHEDULE
ALLOCATION OF SHARES BETWEEN PURCHASERS
Total No. of Shares Shares Issuable Shares Issuable
------------------- --------------- ---------------
Milestone to be Issued to Xxxxxxx to Wicomb
--------- ------------ ---------- ---------
January 1, 1997 37,500 18,750 18,750
January 1, 1998 75,000 37,500 37,500
January 1, 1999 75,000 37,500 37,500
First Commercial 75,000 37,500 37,500
Sale and Shipment to
Customer in U.S.
TOTAL 262,500 131,250 131,250
======= ------- -------
18
EXHIBIT 5
EMPLOYMENT AND PROPRIETARY INFORMATION AGREEMENT
1. PARTIES
1.1 Company. LXR Biotechnology Inc., a Delaware corporation
("Company"), is engaged in the business of research, development, marketing and
sales of human pharmaceuticals based upon biotechnology.
1.2 Employee. Xxxxxxx X. Xxxxxx ("Employee") desires to be employed
by Company.
2. EFFECTIVE DATE OF EMPLOYMENT
Company and Employee agree to each and every term of this Employment
and Proprietary Information Agreement (this "Agreement"). The first day of
employment (the "Effective Date") is July 1, 1996.
3. DUTIES AND PERFORMANCE
3.1 Employee's employment position with the Company will be Director
of Pre- Clinical Affairs at the outset of employment. Employee will have such
duties and responsibilities as are appropriate for such position. It is
contemplated that Employee will work at the Company on approximately a 50%
basis, and that for the remaining 50% of Employee's work time he will work at
the California Pacific Medical Center ("CPMC") on a project funded and approved
by the Company. Employee shall keep Company apprised on a regular basis of the
nature and progress of his work at CPMC.
3.2 Employee must devote reasonable time and efforts during the
Company's normal business hours to the performance of the duties as indicated in
paragraph 3.1. Employee will report to the President or Chief Financial Officer
of the Company and must conform to the rules and regulations of Company, as of
the date of this document, or as amended by mutual agreement, including those
referred or described in an employee handbook or practices and procedures manual
or similar document. Neither an employee handbook nor any other manual
constitutes a part of this Agreement, but are meant only as guidelines for
management and may be altered at any time without notice.
3.3 Employee will work for the Company and not provide services of any
type for any other person or entity, except as provided in 3.1 and this
paragraph. If Employee wishes, however, to provide substantial services, of any
type, to any other third party for compensation of any type, Employee must
submit a written request to Company stating (i) the total time commitment
involved; (ii) when that time commitment will be fulfilled; (iii) the identity
of the third party; (iv) an explanation of the scope and nature of the services;
and (v) such other information or details as Company may request. Company will
approve the request if Company determines that such services (i) will not
detract from the ability of Employee to perform under this Agreement; (ii) will
not benefit, directly or indirectly, a competitor or potential competitor of
Company; and (iii) do not in any way involve any products or services which
compete, directly
19
or indirectly, with the products and services that Company contemplates offering
in the future. Any approval will be limited in scope and apply only to
Employee's written request. All services rendered by Employee, other than those
authorized in writing by Company under the terms of this paragraph, shall be
performed solely on behalf of Company or related business entities, and all
proceeds resulting therefrom shall be the sole property of Company or such
related business entities.
4. TERM AND TERMINATION
4.1 INITIAL TERM. The initial term of this Agreement shall commence as
of the Effective Date of this Agreement set forth above and shall continue for a
period of one (1) year of the Effective Date.
4.2 RIGHT TO EXTEND. At the end of the initial one (1) year term,
provided the Agreement has not previously been terminated, the Agreement is
automatically renewed on a month to month basis.
4.3 TERMINATION WITHOUT CAUSE. Either party may terminate this
Agreement, without cause, by giving the other party notice at least thirty (30)
days in advance of the date of termination. In the event the Company terminates
this Agreement without cause then Employee shall be entitled to severance
compensation set forth below: (a) SEVERANCE COMPENSATION. Subject to provisions
of paragraph 4.3(b) below, Employee shall be entitled to severance compensation
in an amount equal to three (3) months at the Employee's monthly base salary on
the date of notice of termination. (b) OFFSET FROM OTHER BENEFITS. Any payments
made to the Employee in the event of an involuntary termination of employment
under the provisions of paragraph 4.3(a) will be decreased by the amount of any
payments received under entitlements from any other Company (LXR) severance or
layoff plan, program or arrangement, currently in place or hereafter adopted, in
which Employee is entitled to share or participate as an employee of the
Company.
4.4 TERMINATION FOR CAUSE. The Company may terminate this Agreement
for cause at any time effective immediately upon delivery of written notice,
Cause shall consist of any of the following:
(a) material breach of any of the
provisions of this Agreement;
(b) willful failure to reasonably perform normally assigned
duties;
(c) willful misconduct which has a material and adverse effect on
the Company's reputation or profitability;
(d) conviction of a felony.
In order for the Company to terminate for cause, the Company must first give
Employee written notice of the basis of cause and, if curable, thirty (30) days
to cure such cause. If such cause has
2
20
not been fully remedied within the thirty-day period, then the termination shall
be effective automatically on the thirtieth day following delivery of the
notice. If the cause is not curable, then no notice need be given, and
termination shall be effective as of the date of written notice of termination.
If the Company terminates this Agreement for cause, it shall thereafter not be
responsible for any additional payments of salary or provisions of benefits
under this Agreement except the salary and benefits otherwise due as of the date
of termination.
4.5 TERMINATION ON DEATH. This Agreement shall terminate immediately
upon Employee's death, if not terminated earlier. The Company shall not be
responsible for additional payments of salary or provision of benefits under
this Agreement after Employee dies except as are owed (to employee estate) with
respect to employment prior to death and continued issuance of the common stock
per the terms of the Patent and Technology Transfer and Stock Purchase Agreement
dated July __, 1996 (the "Transfer Agreement").
4.6 TERMINATION OF DISABILITY. If Employee is unable to perform the
services required by this Agreement for a period of ninety (90) days within any
calendar year as a result of incapacity due to physical or mental illness or
injury, the Company may terminate this Agreement and shall pay Employee
severance compensation in accordance with paragraph 4.3(a).
5. COMPENSATION EXPENSES AND FRINGE BENEFITS
5.1 For all employment services rendered by Employee during the term
of this Agreement, Company shall pay Employee a salary of $4166.67 per month
plus normal employee benefits including medical coverage for employee and his
dependents. Additionally, the Company will provide funding to CPMC to provide
Employee with an additional $4166.67 of salary per month from CPMC.
5.2 In addition to the compensation provided above, and subject to
review of management, Company will pay the reasonable expenses incurred and
promptly reported to Company by Employee in furtherance of and in connection
with Company's business under Company's established policies.
6. ASSIGNABILITY
Neither party shall have the right to assign this Agreement or any of
its rights or obligations without the consent of the other party; provided,
however, that upon the sale of all or substantially all of the assets, business
and goodwill of Company or upon the merger or consolidation of Company with
another corporation or corporations, then, this Agreement may be assigned to the
purchaser of such assets, business and goodwill, or to the surviving entity of
any such aforementioned merger or consolidation, as the case may be, in the same
manner and to the same extent as though such purchaser or surviving entity were
Company, with effective date for initial term becoming that of the date of such
acquisition or transition.
7. CONFIDENTIALITY
3
21
7.1 Employee shall keep confidential, and shall not at any time during
or after Employee's employment, disclose to anyone outside of Company any trade
secrets, confidential or proprietary information, confidential or proprietary
knowledge, or confidential or proprietary data of Company relating to products,
processes, know-how, designs, formulae, test data, customer lists, business
plans, marketing plans and strategies, or pricing strategies, or any
documentation relating thereto, or any other subject matter pertaining to any
business of Company or any of its clients, customers, consultants, licensees,
distributors, partners or affiliates ("Confidential Material"), which Employee
may produce, obtain, learn about, or otherwise acquire during Employee's
employment, except as herein provided. Employee shall not deliver, reproduce or
in any way allow any such Confidential Material to be delivered to or used by
any third parties without specific written consent of a duly authorized
representative of Company.
7.2 Company's agreements with other persons or with the U.S.
government, or its agencies, may include agreements that impose obligations or
restrictions regarding inventions that occur in connection with work relating to
such an agreement, or regarding the confidential nature of work pursuant to such
an agreement. Employee agrees to be bound by all such lawful obligations and
restrictions, and exert reasonable business efforts to satisfy the obligations
of Company.
7.3 If this Agreement is terminated for any reason, Employee shall
promptly surrender and deliver to Company all Confidential Materials. Employee
will not retain any description or other document that contains or relates to
any Confidential Material that Employee may produce, obtain or otherwise learn
about during employment with Company. Employee agrees to sign, date and return
the Termination Certificate in the form attached as Exhibit A on Employee's last
day of employment with Company.
8. ASSIGNMENT OF INVENTIONS
Employee assigns and transfer to Company Employee's entire right, title and
interest in and to all inventions including, but not limited to, ideas,
improvements, designs and discoveries (Inventions"), whether or not patentable
and whether or not reduced to practice, made or conceived by Employee (whether
made solely by Employee or jointly with others) during the term of Employee's
employment with Company which relate in any manner to the actual or demonstrably
anticipated business, work or research and development of Company or its
subsidiaries, or result from or are suggested by any task assigned to Employee
or any work performed by Employee for or on behalf of Company or its
subsidiaries or that involve the use of any Company equipment, facilities, trade
secrets or information. It is acknowledged that the Company is to own such
Inventions, regardless of whether such Invention is made at the Company, CPMC or
otherwise, and Employee hereby represents to the Company that Employee has not
entered into any agreement with CPMC or any other person providing them with any
rights to Employee's Inventions, that the Employee will not do so without the
written approval of the Company, and that neither CPMC nor any other person has
or will have any rights in or to such Inventions. All inventions are the sole
property of Company; provided, however, that this Agreement does not require
assignment or an invention which qualified fully for protection under Section
2870 of the California Labor Code ("Section 2870"), which provides as follows:
4
22
(a) Any provision in an employment agreement which provides
that an employee shall assign any of his or her rights in an invention to his or
her employer shall not apply to an invention that the employee developed
entirely on his or her own time and without using the employer's equipment,
supplies, facilities or trade secrets information except for those inventions
that either;
(1) Relate at the time of conception or reduction to
practice of the invention to the employer's business, or actual or demonstrably
anticipated research or development of the employer.
(2) Result from any work performed by the employee for the
employer.
(b) To the extent a provision in an employment agreement purports
to require an employee to assign an invention otherwise excluded from being
required to be assigned under subdivision (a), the provision is against the
public policy of this state and is unenforceable.
9. DISCLOSURE OF INVENTIONS; PATENTS, COPYRIGHTS, AND MASK WORK RIGHTS.
Employee agrees that in connection with any Invention:
(a) to keep and maintain adequate and current written
records of all inventions made by Employee (in the form of notes, sketches,
drawings and other form of specified by Company) while employed by Company.
These records shall be available to Company and shall be and remain the sole
property of Company at all times. Employee will disclose such Inventions
promptly in writing to Employee's immediate supervisor at Company, with a copy
to Company President, whether or not Employee believes the inventions is
protected by Section 2870. Such disclosure shall be received in confidence by
Company. Within 30 days after receipt of such disclosure, Company shall respond
to Employee specifying that Company either (i) claims that the Invention is an
assignable invention (as defined below in paragraph 9(b)), (ii) relinquishes any
claim to the Invention or (iii) requires further or more detailed disclosure to
assess its rights to the Invention under this Agreement. In the case of clause
(iii) above, Company shall permit Employee time during normal business hours
reasonably necessary to prepare a more detailed disclosure; and Company shall
provide an additional response as described in this paragraph 9(a) within 30
days after receipt by Company of such further or more detailed disclosure;
(b) upon request, to promptly execute a written assignment of
title to Company for any Invention required to be assigned by Section 8
("assignable invention") and Employee will preserve any such assignable
invention as Confidential Material;
(c) upon request, to assist Company or its nominee (at its
expense) during and at any time subsequent to Employee's employment in every
reasonable way to obtain for Company's or its nominee's benefit, patents,
copyrights, mask work rights and other statutory rights ("Statutory Rights") for
such assignable inventions in any and all countries, which inventions shall be
and remain the sole and exclusive property of Company or its nominee
5
23
whether or not patented, copyrighted or the subject of a mask work right.
Employee shall execute such papers and perform such lawful acts as Company deems
necessary to exercise all rights, title and interest in such Statutory Rights;
and
(d) to execute and deliver to Company or its nominee upon request
and at its expense all documents, including applications for and assignments of
Statutory Rights to be issued therefore, as Company determines are necessary or
desirable to apply for and obtain Statutory Rights on such assignable inventions
in any and all countries and/or to protect the interest of Company or its
nominee in Statutory Rights and to vest title thereto in Company or its nominee.
10. EMPLOYEE'S INVENTIONS PRIOR TO THIS AGREEMENT
All inventions, if any, patented or unpatented, which Employee made prior to
employment by Company, are excluded from the scope of this Agreement other than
those transferred pursuant to the Transfer Agreement. To preclude any possible
uncertainty, Employee has set forth on Exhibit B attached hereto a complete list
of all of Employee's prior inventions, including numbers of all patents and
patent applications, and a brief description of all unpatented inventions which
are not the property of a previous employer. Employee represents and covenants
that the list is complete and that, if no items are on the list, Employee has no
such prior inventions. Employee shall notify Company in writing before Employee
makes any disclosure or performs any work on behalf of Company which appears to
threaten or conflict with proprietary rights Employee claims in any invention or
idea. In the event of the failure to give such notice, Employee shall make no
claim against Company with respect to any such inventions or ideas.
11. TRADE SECRETS ACQUIRED PRIOR TO THIS AGREEMENT
Employee represents that Employee's performance of this Agreement and as an
employee of Company does not and will not breach any agreement to keep in
confidence proprietary information, knowledge or data acquired by Employee in
confidence or in trust prior to employment with Company, and Employee will not
disclose to Company, or induce Company to use, any confidential or proprietary
information or material belonging to any previous employer or others. Employee
agrees not to enter into any agreement either written or oral in conflict
herewith.
12. GENERAL
12.1 Governing Law. The validity, performance and all other matters
pertaining to this Agreement shall be governed by California law as it would
apply to agreements between California corporation and an employee in California
for services to be rendered within California.
12.2 Non waiver. The waiver or failure of any party to enforce at any time
in any of the provisions hereof shall not be construed to be a waiver of the
right of such party thereafter to enforce any such provision.
6
24
12.3 Severability. If any covenant, agreement, term or provision of this
Agreement of the application thereof to any situation or circumstance shall be
invalid or unenforceable, the remainder of this Agreement or the application of
such covenant, agreement, term or provision to situations or circumstances other
than those as to which it is invalid or unenforceable shall not be affected; and
each covenant, agreement, term or provision of this Agreement shall be valid and
enforceable to the fullest extent permitted by applicable law. In such event,
the parties shall negotiate in good faith to substitute for any such invalid or
unenforceable provision a valid and enforceable provision which most nearly
effects the parties' original intent in entering into this Agreement.
12.4 Notices. Notices under this Agreement shall be sufficient only if
mailed by certified or registered United States mail, return receipt requested,
or personally delivered, to the parties at their addresses set forth below or as
amended by notice pursuant to this subsection. Notice by mail shall be deemed
received two (2) days after deposit.
12.5 Entire Agreement. This Agreement contains the entire agreement of the
parties with regard to employment capacity, and supersedes all proposals, oral
or written, all negotiations, conversations or discussions between or among the
parties relating to this Agreement and all past course of dealing or industry
custom, with the exception of those documents listed below. Employee has not
entered into this Agreement or employment relationship in reliance on any
representations other than those contained herein. This Agreement may be
modified only by a writing signed by Employee and the President or Chief
Financial Officer of Company.
Other pertinent documents:
The Transfer Agreement
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date and year first above written.
COMPANY: EMPLOYEE:
LXR Biotechnology Inc. Xxxxxxx X. Xxxxxx
By: /s/ L. Xxxxx Xxxxx Address: 000 Xxxx Xxxxxx
---------------------------- ----------------------------
Print Name: L. Xxxxx Xxxxx Xxxxx Xxxxxx, XX 00000
------------------- -------------------------------------
Title: President Print Name: /s/ Xxxxxx X. Xxxxxx
------------------------- -------------------------
7
25
EXHIBIT A
TERMINATION CERTIFICATION
This is to certify that: (a) I do not have in my possession, nor have I
failed to return, any devices, records, data, notes, reports, proposals, lists,
correspondence, specifications, drawings, blueprints, sketches, materials,
equipment, other documents or property, or reproductions of any of these items
belonging to Company; (b) I have complied with all terms of Company's Employment
and Proprietary Information Agreement signed by me; and (c) I will preserve as
confidential all trade secrets, confidential knowledge, data or other
proprietary information relating to products, processes, know-how, designs,
formulas, developmental or experimental work, computer programs, data bases,
other original works of authorship, customer lists, business plans, financial
information or other subject matter pertaining to any business of Company or any
of its clients, consultants or licenses.
Date:
------------------------------
-----------------------------------
(Signature)
-----------------------------------
(Type/Print Name)
26
EXHIBIT B
LIST OF PRIOR INVENTIONS AND OTHER DEVELOPMENT
Title Date Identifying Number or
Brief Description
Memoirs 1994-present Autobiography
Fizz Bottle 1995-present Device that maintains
carbonation in soda.
Portable Langendorff 1994-1996 Portable device to test hearts
at 37(degree) C.
Air-lift Pump 1981-1982 Perfusion device used to
preserve hearts at 0(degree)-
4(degree) C.
Microperfusion device 1989-1992 Low-flow heart preservation
machine
Wine bottle cartridge 1996-present Device to protect against
oxidation of alcohol.
Portable infusion device 1996-present Patient infusion without
confinement to bed.
27
EXHIBIT 6
LXR BIOTECHNOLOGY INC.
SCIENCE ADVISORY BOARD CONSULTING AGREEMENT
This SCIENCE ADVISORY BOARD CONSULTING AGREEMENT (the
"Agreement") is made as of April 1, 1996 (the "Effective Date") by and between
LXR Biotechnology Inc., a Delaware corporation (the "Company"), and Xxxxxxxx X.
Xxxxxxx ("Consultant").
R E C I T A L S
The Company desires to retain Consultant as a member of the
Science Advisory Board of the Company and in a consulting capacity as described
in this Agreement, and Consultant is willing to so act.
NOW, THEREFORE, Consultant and the Company agree as follows:
1. DESCRIPTION OF SERVICES. The Company hereby retains
Consultant as a member of the Science Advisory Board of and consultant to the
Company, and Consultant hereby agrees to act in such capacities and to perform
such services as are reasonably requested by the Company (the "Services"). The
Services are expected to focus on the area of research and development of
preservation solutions for use in organ transplantation and cardioplegia. The
Company anticipates that Consultant will perform Services for one year ending
March 31, 1997.
2. TERM AND EXPIRATION.
(a) Term. This Agreement will become effective as of
the Effective Date and remain in effect for one (1) year thereafter.
(b) Breach. Either party may terminate the Agreement
in the event of a material breach of the Agreement by the other party if such
material breach has not been cured (if such is capable of cure) within ten (10)
days after written notice.
3. COMPENSATION. For all Services provided hereunder, the
Company will pay Consultant at the rate of $12,000 per annum (to cover the
period from April 1, 1996 through March 31, 1997). Consultant acknowledges
receipt of a check from the Company for $80,000 on June 14, 1996, $12,000 of
which represented payment in advance for one year of Services to be performed
during the term of this Agreement.
4. EXPENSES. The Company will reimburse Consultant for any
reasonable expenses incurred by Consultant in the course of rendering the
Services. Requests for reimbursement will be in a form acceptable to the
Company. Consultant will notify the Company in advance before incurring any
expenses over $200 or $500 in the aggregate.
28
5. PROPERTY OF COMPANY.
(a) Definition. For the purposes of this Agreement,
the term "Inventions" will mean all discoveries, inventions, improvements,
developments, products, processes, procedures, techniques, formulae, computer
programs, drawings, designs, notes, documents, information and materials made,
conceived, developed or reduced to practice by Consultant, alone or with others,
which result from or relate to the Services, or which are funded in whole or in
part by the Company or which result from the use of any premises or resources
owned, leased or contracted for by the Company.
(b) Assignment of Ownership.
(i) Assignment. Consultant hereby
irrevocably transfers and assigns to the Company any and all of his right,
title, and interest in and to Inventions, including but not limited to all
copyrights, patent rights, trade secrets and trademarks. Inventions will be the
sole property of the Company. The Company will have the sole right to determine
the treatment of any Inventions, including the right to keep them as trade
secrets, to file and execute patent applications on them, to use and disclose
them without prior patent application, to file registrations for copyrights or
trademarks on them in its own name, or to follow any other procedure that the
Company deems appropriate.
(ii) Disclosure, Assistance and
Confidentiality. Consultant agrees: (a) to disclose all Inventions to the
Company promptly, in writing; (b) to cooperate with and assist the Company to
apply for and to prosecute, and to execute any applications and/or assignments
and/or other documents reasonably necessary to obtain or maintain, any patent,
copyright, trademark or other statutory protection for Inventions in the
Company's name as the Company deems appropriate; (c) to deliver to the Company
evidence for interference purposes or other legal proceedings and to testify in
any interference or other legal proceedings and to otherwise assist the Company
related thereto, whenever requested to do so by the Company; and (d) to
otherwise treat all Inventions as "Confidential Information," as defined below.
Consultant hereby grants the Company a limited power of attorney to execute any
documents necessary or appropriate to effectuate the Company's rights hereunder.
If Consultant has any question as to whether a given invention, discovery or the
like qualifies as an "Invention" hereunder, Consultant will inform the Company
of the nature of such invention or discovery for determination as to whether
such is an Invention.
(iii) Reimbursement of Expenses. The Company
will reimburse Consultant for all reasonable expenses incurred by Consultant at
the Company's request in assisting the Company to protect its rights in any
Invention.
6. CONFIDENTIAL INFORMATION.
(a) Acknowledgment and Definition. Consultant
acknowledges that Consultant will acquire information and materials from the
Company and knowledge about the Company's business, products, techniques,
experimental work, customers, clients and suppliers. Consultant further
acknowledges that all such knowledge, information and materials acquired, the
existence, terms and conditions of this Agreement, and the Inventions are and
will be the trade secrets and confidential and proprietary information of
Company (collectively, the "Confidential Information"). Confidential Information
will not include, however, any information which is or becomes part of the
public domain through no fault of Consultant or that the Company regularly gives
to third parties without restriction on use or disclosure.
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(b) Maintaining Confidentiality. To ensure the
continued confidentiality of the Confidential Information, Consultant agrees as
follows:
(i) to hold all Confidential Information in
strict confidence; not to disclose it to others or use it in any way,
commercially or otherwise, except in performing the Services; and not to allow
any unauthorized person access to it.
(ii) to take all action reasonably necessary
to protect the confidentiality of the Confidential Information including,
without limitation, implementing and enforcing operating procedures to minimize
the possibility of unauthorized use or copying of the Confidential Information.
(iii) that Confidential Information
furnished to Consultant by the Company or produced by Consultant or others in
connection with the Services will be and remain the sole property of the
Company. Consultant agrees to return all Confidential Information and any
materials or other property provided by the Company promptly, at the Company's
request, upon expiration of this Agreement, or upon termination of Consultant's
Services by Consultant or by the Company for any reason, whichever occurs first.
Consultant agrees not to retain any Confidential Information or reproductions
thereof, or other such property or materials, after such request, expiration or
termination.
7. COVENANT NOT TO COMPETE.
(a) During the term of this Agreement, Consultant
will not directly or indirectly assist any person, business or enterprise which
is engaged in research or development related to preservation solutions for
organ transplantation and cardioplegia without the express prior written consent
of the Company. For purposes of this Section 7, to "assist" is defined as
follows: (a) to be an officer, director, employee, partner, shareholder (other
than a holder of less than 1% of the voting power of a public company, where
Consultant has no other relationship to such public company), principal, agent,
representative or consultant for such person or entity, or to carry on any
similar activities for such person or entity, in whatever capacity; (b) to
promote or endorse or allow his or her name to be used in any Annual Report,
Quarterly Report, Private Placement Memorandum or advertisement of such entity;
or (c) to solicit or attempt to solicit business or other opportunities on
behalf of such entity.
(b) Nothing in this Section 7 will prohibit
Consultant from serving as an expert in malpractice cases or on Boards of
charitable organizations, provided that such activities do not require or result
in the disclosure of any Confidential Information.
8. SURVIVAL OF OBLIGATIONS. The obligations of Sections 5 and
6 hereof will survive any expiration or termination of this Agreement.
9. REMEDIES. Consultant acknowledges that the Company will
have no adequate remedy at law if Consultant violates the terms of Sections 5,
6, or 7 hereof. In such event, the Company will have the right, in addition to
any other rights it may have, to obtain in any court of competent jurisdiction
injunctive relief to restrain any breach or threatened breach of this Agreement.
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10. NOTICES. Any notice required or permitted hereunder will
be given in writing and will be deemed effectively given as follows: (a) upon
personal delivery; (b) three (3) days after deposit in the United States mail by
certified or registered mail (return receipt requested); (c) one (1) business
day after its deposit with any recognized express courier (prepaid); or (d) one
(1) business day after transmission by rapifax or telecopier, addressed to the
other party at its address (or facsimile number, in the case of transmission by
telecopier) as shown below its signature to this Agreement, or to such other
address as such party may designate in writing from time to time to the other
party. Any notice to the Company shall be addressed to the President.
11. GOVERNING LAW; SEVERABILITY. This Agreement will be
construed and enforced in accordance with the internal laws of the State of
California, excluding that body of laws pertaining to conflict of laws. If any
provision of this Agreement is determined by a court of law to be illegal or
unenforceable, then such provision will be enforced to the maximum extent
possible and the other provisions will remain in full force and effect.
IN WITNESS WHEREOF, the parties hereto have executed this
Agreement as of the day and year first written above.
COMPANY CONSULTANT
LXR BIOTECHNOLOGY INC.
By: /s/ L. Xxxxx Xxxxx /s/ Xxxxxxxx X. Xxxxxxx
------------------------------------- ------------------------------
L. Xxxxx Xxxxx, Ph.D., President Xxxxxxxx X. Xxxxxxx
and Chief Executive Officer
Address: 0000 Xxxxxx Xxx Xxxxx Xxxxxxx: 00 Xxxxxxx Xxxx
----------------------
Richmond, CA 94804-3746 Xxxxxxxxx, XX 00000
------------------------------
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Fax: (000) 000-0000 Fax:
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SIGNATURE PAGE TO XXXXXXX SCIENCE ADVISORY BOARD
CONSULTING AGREEMENT
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