COOPERATION AGREEMENT
THIS COOPERATION AGREEMENT is made the ____ day of December, 1997, between
VYSIS, INC. ("Vysis"), a Delaware corporation, and AMOCO TECHNOLOGY COMPANY
("ATC"), a Delaware corporation.
WHEREAS, Vysis is a former wholly-owned subsidiary of ATC and ATC has
consolidated its medical diagnostics businesses and research efforts (the
"Diagnostics Business") into Vysis;
WHEREAS, ATC has previously made capital contributions to Vysis of various
assets of the Diagnostics Business, including the stock of Vysis, Inc., an
Illinois corporation, and of Gene-Trak, Inc., a Delaware corporation; and
WHEREAS, as part of this consolidation ATC and Vysis wish to set out their
agreement on corporate transactions necessary to complete the consolidation and
establishment of Vysis as a stand-alone company.
NOW, THEREFORE, for and in consideration of the mutual covenants, and
subject to the terms and conditions contained herein, the parties hereto agree
as follows:
1. DOCUMENTATION OF ASSET TRANSFERS TO VYSIS
(a) ATC agrees to execute and deliver, or cause to be executed and
delivered, to Vysis all such additional documents as shall be reasonably
requested by Vysis in order to fully evidence in Vysis title to any intellectual
property assets previously assigned to Vysis pursuant to an assignment dated
September 27, 1996, including without limitation, assignments of foreign patents
and patent applications. ATC and Vysis acknowledge and agree that the necessary
filings in the appropriate patent offices to evidence the assignment of the
patents and patent applications to Vysis may take an extended period of time to
complete. ATC and Vysis will cooperate in carrying out these filings. Vysis
agrees that the filing costs and fees associated with any such assignments are
its sole responsibility.
(b) ATC hereby assigns, subject to any necessary consents of third
parties, to Vysis: (i) the License Agreement between ATC and the University of
California signed July 30, 1992, and (ii) the Agreement between ATC and the
Center for Neurological Studies dated June 3, 1993. ATC and Vysis will
cooperate in obtaining any necessary consents of the University or the Center
for these assignments.
2. LITIGATION
(a) ATC and Vysis and their respective affiliates are defendants in a
patent infringement suit, Gen-Probe, Inc. v. Amoco Corporation, et al., pending
in the Federal Court for the Southern District of California (the "Gen-
Probe suit"). The Gen-Probe suit alleged two counts of patent infringement
of U.S. Patent Numbers 4,851,330 and 5,288,611 (the "▇▇▇▇▇ patents"), based
upon (a) Vysis' Food Diagnostics business operations and (b) the Gallileo
infectious disease program. The suit also alleged three additional counts:
(c) unfair competition, (d) conspiracy to commit unfair competition and (e)
violation of the ▇▇▇▇▇▇▇▇▇▇ Act. The conspiracy to commit unfair competition
and violation of the ▇▇▇▇▇▇▇▇▇▇ Act counts have been dismissed without
prejudice. ATC and Vysis agree to allocate any liabilities which may arise
from the Gen-Probe suit or from any suit filed against ATC and Vysis and
their affiliates by Gen-Probe, Gen-Probe's affiliates or any successor in
interest to or assignee of Gen-Probe in any jurisdiction as follows:
(i) ATC indemnifies Vysis and its subsidiaries against any and
all liabilities and claims arising from any of the pending unfair competition
count in the Gen-Probe suit or from any reinstatement of a claim of
substantially similar content to the dismissed counts of conspiracy to commit
unfair competition and violation of the ▇▇▇▇▇▇▇▇▇▇ Act which may be brought by
Gen-Probe or its affiliates, successors or assignees, and
(ii) Vysis indemnifies ATC and Amoco Corporation and their
affiliates against any and all other liabilities and claims arising from the
Gen-Probe suit (including the two pending counts of patent infringement) or from
the facts and circumstances relating to the Gen-Probe suit or any litigation
concerning the ownership of the ▇▇▇▇▇ patents.
(iii) Vysis and ATC agree that Vysis shall be responsible for the
attorney's fees incurred in defending the Gen-Probe suit; provided that ATC
shall have the right to be represented by separate counsel at its expense and
ATC shall be responsible for any attorney's fees for counsel which the parties
agree to retain to represent Vysis and ATC with respect to the unfair
competition count.
(b) Vysis and ATC further agree to cooperate in the defense of the
Gen-Probe suit. Vysis and ATC agree that neither will settle any claim or
liability to Gen-Probe arising from the Gen-Probe suit, any successor suit to
it or from the activities related to the Gen-Probe suit without the consent
of the other party.
(c) Vysis and ATC agree to cooperate in prosecuting the pending European
patent opposition filed against the European counterpart of the ▇▇▇▇▇
patents. Vysis and ATC agree that Vysis shall be responsible for all legal
fees for prosecution of this European opposition.
3. ACCESS TO RECORDS
Vysis and ATC agree that each shall afford the other party and its
authorized accountants, counsel and designated representatives reasonable access
to their employees and shall make available or provide reasonable access and
duplicating rights to all records, books, contracts, instruments, computer data
and other data and information within their possession and
2
relating to the Diagnostics Business insofar as such information is
reasonably required for the purposes of financial and governmental compliance
and reporting, tax calculation and reporting and third party claims and
litigation handling and resolution.
4. LIABILITIES FROM DISCONTINUED OPERATIONS
ATC agrees that it shall retain responsibility for matters arising from the
following discontinued business and research efforts of certain of its prior
businesses related to the Diagnostics Business (the "Discontinued Operations")
as follows: (i) except as otherwise provided in Paragraph 2. above, the Galileo
infectious disease program, (ii) the Nissui Termination Agreement, (iii) the
shut-down of the Diagnostics Business' operations in Framingham, Massachusetts,
(iv) the sale of the Diagnostics Business' facility in Framingham,
Massachusetts, (v) the Betagen business, (vi) the investment in and dealings
with GDP Technologies, and (vii) the operations and sale of IntelliGenetics,
Inc. ATC therefore indemnifies Vysis and its subsidiaries against any
liabilities and claims arising from the Discontinued Operations, whether or not
these liabilities and claims are alleged as or are due to the negligence of
Vysis or any of its subsidiaries, including without limitation employee
severance claims and litigation, COBRA medical payment liabilities, obligations
under contractual settlement agreements and reasonable attorneys' fees spent in
preparing for or responding to any such liabilities or claims, except to the
extent that Vysis specifically accepts a liability or claim under this
Cooperation Agreement. Vysis agrees to notify ATC promptly after it receives
notice of any liability or claim subject to this indemnity and to cooperate with
ATC in the handling and resolution of any such liability or claim.
5. GOVERNING LAW
This Agreement shall be governed by and construed under the laws of the
State of Illinois, excluding any choice of law rules which would direct the
application of the law of another jurisdiction.
In witness whereof, Vysis and ATC show their agreement by signing below.
VYSIS, INC. AMOCO TECHNOLOGY COMPANY
-------------------------- ----------------------------
President President
3
