EXHIBIT 10.6
CONFIDENTIAL TREATMENT
----------------------
ORCHID BIOSCIENCES, INC. HAS REQUESTED THAT THE MARKED PORTIONS OF THIS DOCUMENT
BE ACCORDED CONFIDENTIAL TREATMENT PURSUANT TO RULE 406 UNDER THE SECURITIES ACT
OF 1933, AS AMENDED.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
LICENSE AND OPTION AGREEMENT
LICENSE AND OPTION AGREEMENT (the "Agreement"), dated as of December 10,
1997 (the "Effective Date"), between XXXXXXX CORPORATION, a New Jersey
corporation having its offices at 000 Xxxxxxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx
00000 ("Sarnoff"), and ORCHID BIOCOMPUTER, INC., a Delaware corporation having
its offices at 000 Xxxxxxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxxxx 00000 ("Orchid").
WHEREAS, Xxxxxxx is (and will be) the owner or licensee of rights in
certain existing and future Intellectual Property and certain Patent Rights
relating thereto.
WHEREAS, Xxxxxxx is willing to grant to Orchid and Orchid desires to
acquire from Xxxxxxx, certain rights under such Intellectual Property and Patent
Rights for the purpose of allowing Orchid to research, develop, manufacture,
market, sell, import, lease and/or deliver, within the Orchid Field, Products
and Services.
NOW, THEREFORE, in consideration of the mutual covenants set forth herein
and for other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, Xxxxxxx and Orchid, intending to be legally
bound, hereby agree as follows:
1. Definitions.
As used herein, capitalized terms shall have the respective meanings set
forth below:
1.1. "Affiliate" means any corporation, firm, limited liability company,
partnership or other entity which directly or indirectly controls or is
controlled by or is under common control with a party to this Agreement.
"Control" means ownership of, or the ability to vote, directly or through one or
more Affiliates, fifty percent (50%) or more of the shares of stock entitled to
vote for the election of directors, in the case of a corporation, or fifty
percent (50%) or more of the equity interests in the case of any limited
liability company or other type of legal entity, status as a general partner in
any partnership, or any other arrangement whereby a party controls or has the
right to control the board of directors or equivalent governing body of a
corporation or other entity. Notwithstanding the foregoing, Xxxxxxx and SRI and
companies controlled by Xxxxxxx and SRI shall not be deemed to be Affiliates of
Orchid, and Orchid shall not be deemed to be an Affiliate of such entities for
purposes of this Agreement.
1.2 "Ancillary Device" shall mean a detector or other device (but not a
Storage Device or Input/Output Device) that is specifically designed by Xxxxxxx
to interface with a Chip,
Storage Device or Input/Output Device to the extent such detector or other
devices are incorporated in Delivered Chips and Instruments. Ancillary Devices
shall not include (without upper or lower limitations as to size or volume), (i)
generic robotic fluid delivery systems, (ii) transport through synthetic or
natural membranes, tubes or capillaries except when part of a Chip or
Input/Output Device, (iii) conventional, non-electrokinetic fluid pumping or
valving technology except when part of a Chip or Input/Output Device and (iv) 3D
microimaging and modeling.
1.3. "Chip" shall mean a microfabricated flat structure device in one or
more layers having a plurality of Microchannels or Microchannels and
Microchambers in the form of (A) arrays (containing at least (i) six (6)
Microchambers or (ii) two Circuits, each of which contains at least one Active
Element), or (B) at least one Circuit containing at least three (3) serially
connected Elements, at least one of which is an Active Element, to carry out or
enable synthesis, reactions, assays, analyses or sample preparation by
transporting or retaining aqueous or organic fluids that are solvents,
solutions, mixtures or suspensions, including those containing chemicals,
particles, membranes, membrane fragments, cells, cell components or other
biologically derived substances. "Microchannels" shall mean enclosed channels
having a cross section at least 10 microns by 10 microns and no more than 2
millimeters by 2 millimeters. "Microchambers" shall mean xxxxxxxx having a
volume of at least 10 picoliters and no more than 10 microliters.
1.4. "Circuit" shall mean a combination of at least two (2) Elements.
1.5. "Combinatorial Chemistry" shall mean the synthesis of one or more
compounds as part of a process to create compounds or resynthesize known
compounds, where such compounds are to be used in clinical applications or in
the discovery, development, testing or optimization of molecules, materials, or
compounds, or mixtures thereof.
1.6. "Confidential Information" shall mean all proprietary confidential
technology disclosed by Xxxxxxx to Orchid or by Orchid to Xxxxxxx during the
term of this Agreement. For the purposes of this Agreement, Research Technology
shall be deemed Confidential Information of both Orchid and Xxxxxxx.
1.7. "Covered By" shall mean, with respect to any act, an act that would,
in the absence of a license provided hereunder, constitute an infringement of a
claim of a pending patent application, or a claim of an issued patent which has
not been held invalid or unenforceable by a court of competent jurisdiction in a
decision which is unappealable or the appeal period for which has expired
without an appeal being taken.
1.8. "Delivered Chips and Instruments" shall mean Chips and/or related
instruments based on the design of the Chips and related instruments that are
(i) delivered by Xxxxxxx under a Funded Research Program, (ii) delivered by
Xxxxxxx to SB under the SB Agreement, or (iii) delivered by Xxxxxxx to the
Government under NIST Control No. 7ONANB5HlO37 prior to June 30, 1997, or under
DARPA Control No. N66001-96-8630 prior to June 30, 1999.
1.9 "Dynal Agreements" shall mean the proposed Joint Venture Master
Agreement between Orchid and Dynal, Inc. ("Dynal"), as executed, and the
agreements between Orchid and Dynal entered into pursuant thereto, pertaining to
the creation of a joint venture to combine
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Orchid's chip technology and Dynal's bead technology to create "Cassettes" for
use in the h-vitro Diagnostic Field.
1.10. "Elements" shall mean any pump, Microchannel or Microchamber. An
Element is "Active" if it is a pump or a Microchannel or a Microchamber in which
a chemical or binding reaction or physical separation by fractionation or
differentiation of various constituents within a sample by such parameters as
molecular size, binding affinity, charge or other physical properties occurs.
An Element is "Passive" if it is not Active, including without limitation,
Microchambers or Microchannels for storage, transport, analyses other than by
chemical or binding reaction, or division of a sample into multiple samples or
streams into multiple streams.
1.11. "Environmental Testing" shall mean the determination of the presence
or effect of molecular analytes, chemicals, microbes (including, without
limitation, viruses and bacteria), parasites or other harmful elements in the
environment utilizing nucleic acid-based analyses, immunoassays or functional
assays involving cells, cellular components or extra- or intra-cellular
interactions.
1.12. "Force Majeure" shall mean any act of God, any accident, explosion,
fire, storm, earthquake, flood, drought, peril of the sea, riot, embargo, war or
foreign, federal, state or municipal order of general application, seizure,
requisition or allocation, any failure or delay of transportation, shortage of
or inability to obtain supplies, equipment, fuel or labor or any other
circumstances or event beyond the reasonable control of the party relying upon
such circumstance or event.
1.13. "Funded Research Program" shall mean the research or development
activities under a research agreement for an Option Field in which, considering
each Option Field separately, Orchid or its designee reasonably acceptable to
Xxxxxxx agrees to [*]
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.14. "Input/Output Device" shall mean fluidic transport, fluid transfer
or fluid connection means which is specifically designed to bring a fluid to a
Chip or Storage Device or remove a fluid from a Chip or a Storage Device.
1.15. "Intellectual Property" shall mean proprietary technical or other
information, know-how, data, materials, devices, systems, software, trade
secrets, processes or formulations, and any and all Patent Rights thereon.
1.16. "In-vitro Diagnostic Field" shall mean [*]
1.17. "Licensed Technology" shall mean: (a) Intellectual Property licensed
or developed under the SB Agreement including Intellectual Property funded by
such agreements, but developed prior to August 30, 1995 and listed on Schedule
A; (b) Intellectual Property embodied in the deliverable "Chips" and
"Instruments" as defined in and developed under the SB Agreement; (c)
Intellectual Property (i) developed under NIST Contract No. 7ONANB5H 1037
through June 30, 1997, (ii) developed under DARPA Contract No. N66001-96-8630
through June 30, 1999, and listed on Schedule A and (iii) certain Intellectual
Property claiming technology relating to Chips developed by Xxxxxxx on or before
August 30, 1995 and listed on Schedule A, (d) Research Technology, (e)
Intellectual Property incorporated in devices or systems as part of a Funded
Research Program and (f) subject to any of Xxxxxxx'x present or future third
party arrangements, Intellectual Property directed to Chips, Storage Devices and
Input/ Output Devices developed by Xxxxxxx and its wholly-owned subsidiaries
during the Option Period or during the term of any and all Funded Research
Programs at Xxxxxxx, and/or the research program under the SB Agreement, but
outside such programs and incorporated by Orchid into a Chip or a system
incorporating a Chip during the Option Period, or during the term of any and all
Funded Research Programs at Xxxxxxx, or the research program under the SB
Agreement and (g) Joint Inventions and Joint Patent Rights as defined in Section
2.6. Specifically excluded from Licensed Technology is the Intellectual Property
developed under DARPA Contract DABT63-95-C-0057 3D entitled "3D Microimaging".
Licensed Technology shall not include rights to general purpose electrical,
electronic, optical, electro-optical, mechanical or electro-mechanical
inventions.
1.18. "Life Science Field" means the Orchid Field, the Option Fields and
the use of Chips in the fields of the biological sciences, human healthcare,
animal healthcare or agriculture.
1.19. "Net Sales" shall mean [*]
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.20. "Non-Exclusive Licensed Technology" shall mean general purpose
electrical, electronic, optical, electro-optical, mechanical or electro-
mechanical inventions and devices to the extent such inventions and devices are
incorporated in Delivered Chips and Instruments, but not otherwise.
1.21. "Option Field(s)" shall mean [*]
1.22. "Option Period" means that period during which any Option exists as
defined in Section 2.3.
1.23. "Orchadyne" means Orchadyne, LLC, the limited liability company
created pursuant to the Dynal Agreements.
1.24. "Orchid Field" shall mean [*]
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.25. "Owned or Controlled" shall mean Intellectual Property which Xxxxxxx
owns, or under which Xxxxxxx is licensed and has the right to grant sublicenses
and/or grant immunity from suit. Intellectual Property "Owned or Controlled" as
of a certain date includes Intellectual Property first invented on or prior to
such date, and shall include all related patent applications and patents or
other intellectual property rights issuing thereon, whenever filed or obtained.
1.26. "Parties" means Xxxxxxx and Orchid.
1.27. "Partner" shall mean SB, Dynal, Orchadyne or any other Person with
whom Orchid shall have a written research and/or development agreement or other
collaborative arrangement whereby Orchid receives (a) ownership rights or
license rights in products or services based on or resulting from such research
and/or development, (b) royalty payments based on the sales of such products or
services, or (c) supply rights for such products.
1.28. "Party" means Xxxxxxx or Orchid.
1.29. "Patent Rights" shall mean rights (including, ,without limitation,
rights as licensee) Owned or Controlled, subject to Section 2.1.6 hereof, by
Xxxxxxx under (a) issued U.S. and foreign patents, (b) U.S. or foreign patent
applications, including any patent application constituting an equivalent,
counterpart, reissue, extension or continuation of any of the foregoing
applications (including, without limitation, a continuation in part or
divisional application), or (c) any patent issued or issuing upon any of the
foregoing applications. A list of Patent Rights included in Licensed Technology
as of the date of this Agreement is attached hereto as Schedule A.
1.30. "Person" shall mean any individual, partnership, limited liability
company, corporation, firm, association, unincorporated organization, joint
venture, trust or other entity.
1.31. "Product" shall mean a Chip or a system incorporating a Chip with or
without Storage Devices, Input/Output Devices or Ancillary Devices developed
using, incorporating, utilizing, manufactured using, based upon, arising out of,
or derived from the Licensed Technology.
1.32. "Research Products" shall mean [*]
1.33. "Research Technology" shall mean Intellectual Property developed by
Xxxxxxx in Funded Research Programs.
1.34. "SB Agreement" shall mean the Development and License Agreement
executed by and among Orchid, Xxxxxxx and SmithKline Xxxxxxx PLC/SmithKline
Xxxxxxx Corporation as of August 30, 1995, as amended.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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1.35. "Services" shall mean the performance of services for a fee
utilizing a Product, but shall not include performance of research or
development services.
1.36. "SmithKline Xxxxxxx" or "SB" shall mean SmithKline Xxxxxxx
PLC/SmithKline Xxxxxxx Corporation.
1.37. "SRr" shall mean SRI International, a California not for profit
corporation having its principal offices at 000 Xxxxxxxxxx Xxxxxx, Xxxxx Xxxx,
XX 00000.
1.38. "Storage Device" shall mean a microfabricated flat structure device
containing Microchambers, but not Microchannels or other Elements, that is
either (i) specifically designed for interacting with or connecting to a Chip or
(ii) broadly useful with Chips and other devices or primarily designed to be
interfaced with micropipetting systems. A Storage Device of the type described
in clause (i) is referenced to herein as a Type 1 Storage Device. A Storage
Device described in clause (ii) is referred to herein as a Type 2 Storage
Device.
1.39. "Valid Claim" shall mean an unexpired claim of (i) any issued patent
which has not been finally declared invalid or unenforceable by a patent office
or by a court or other body of competent jurisdiction in any unappealed or
unappealable decision and which has not been lost through an interference or
opposition proceeding or (ii) any pending patent application which has not been
finally rejected by a patent office of competent jurisdiction in any unappealed
or unappealable decision and which has not been pending for more than four (4)
years.
2. Grant of Rights.
2.1. Licenses to Orchid.
2.1.1. Exclusive Rights. Subject to the terms and conditions of
this Agreement, Xxxxxxx hereby grants to Orchid an exclusive, worldwide, right
and license under the Licensed Technology, with the right to sublicense, to
develop, have developed, make, have made, use, have used, import, have imported,
offer for sale, sell, have sold or lease, any Products, Storage Devices and/or
Input/Output Devices for Type 1 Storage Devices and Chips and/or to provide any
Services in the Orchid Field, provided, however, that with respect to Type 2
Storage Devices and Input/Output Devices for Type 1 Storage Devices, such
License shall only be exclusive for Licensed Technology described in clauses
(a)-(e) and (g) of Section 1.17 and further provided however with respect to the
exercised Option of the Option Field of Section 1.2 1(c), the license shall be
exclusive for the Life Science Field and non-exclusive for materials and
chemical research. In addition, the license granted under this Section 2.1.1
with regard to Ancillary Devices shall be limited to the designs of the
Ancillary Devices in the Delivered Chips and Instruments and shall include the
right to modify such designs using Orchid or third party Intellectual Property.
2.1.2. Non-Exclusive Rights.
2.1.2.1 Subject to the terms and conditions of this
Agreement, Xxxxxxx hereby grants to Orchid a non-exclusive, worldwide, right and
license under the Licensed Technology, with the right to sublicense, to develop,
have developed, make, have made, use,
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have used, import, have imported, offer for sale, sell have sold or lease (a)
any Products, Storage Devices and Input/ Output Devices and provide any Services
(i) in those Option Fields for which Orchid has not exercised its Option
hereunder as provided in Section 2.3, and (ii) which use Chips to carry out
Combinatorial Chemistry for purposes not included in the Orchid Field provided
however that such license under this Section 2.1.2.1 (ii) outside the Life
Science Field shall be limited to use for industrial materials and chemicals and
shall be limited to Licensed Technology under Section 1.1 7(a)-(e) and (g).
However, the license granted under this Section 2.1.2.1 with regard to Ancillary
Devices shall be limited to the designs of the Ancillary Devices in the
Delivered Chips and Instruments and shall include the right to modify such
designs using Orchid or third party Intellectual Property. The licenses granted
pursuant to this Section 2.1.2 shall in no way be deemed to limit the scope of
any exclusive license granted pursuant to Section 2.1.1.
2.1.2.2 Subject to the terms and conditions of this
Agreement, Xxxxxxx hereby grants to Orchid a non-exclusive, worldwide, right and
license under Non-Exclusive Licensed Technology, with the right to sublicense,
to develop, have developed, make, have made, use, have used, import, have
imported, offer for sale, sell, have sold or lease any Products, Storage Devices
and Input/Output Devices and provide any Services (i) in the Orchid Field and in
those Option Fields for which Orchid has not exercised its Option hereunder as
provided in Section 2.3, and (ii) which use Chips to carry out Combinatorial
Chemistry for purposes not included in the Orchid Field to the extent such uses
of Chips is licensed under Section 2.1.2.1.
2.1.2.3 Subject to the terms and conditions of this
Agreement, Xxxxxxx hereby grants to Orchid a non-exclusive, worldwide, right and
license under LicensedTechnology, with the right to sublicense, to develop, have
developed, make, have made, use, have used, import, have imported, offer for
sale, sell, have sold or lease Input/ Output Devices for Type 2 Storage Devices
in the Orchid Field.
2.1.3. Bead Handling. Xxxxxxx and Orchid shall negotiate in good
faith regarding a license upon commercially reasonable, mutually agreeable terms
to develop, have developed, make, have made, use, have used, import, have
imported, offer for sale, sell, have sold or lease any instrument based on the
bead handling technology to be developed by Xxxxxxx in a program funded by or in
collaboration with Orchid and useful in connection with Chips. The license will
be governed by a separate agreement which will cover the scope of the license,
field of use, statement of work to be performed by Xxxxxxx, the specifications
and drawings of the bead handling instrument and all other terms. No license is
granted to Orchid for such bead handling instruments by this Agreement.
2.1.4. Additional Licenses. In addition to the Options set forth in
Section 2.3, at Orchid's request Xxxxxxx will negotiate in good faith with
Orchid at any time for the terms and conditions of an exclusive license in one
or more Option Fields which are not the subject of a current or past Funded
Research Program.
2.1.5. Restrictions on Licenses. All licenses granted to Orchid
hereunder and all restrictions under Section 2.2. are subject to (a) a non-
exclusive, worldwide, royalty-free license which the U.S. Government may retain
under any Intellectual Property whose development was funded by the U.S.
Government, (b) a worldwide, non-exclusive, royalty-free license to Xxxxxxx
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and the U.S. Government to permit Xxxxxxx to engage in research. or .
development contracts or to prepare prototypes for the U.S. Government, and (c)
any rights previously granted to SmithKline Xxxxxxx under the SB Agreement.
Notwithstanding anything to the contrary in this Agreement, no licenses are
granted to Orchid under this Agreement to make, have made, use, sell, offer for
sale, lease or import (except as Ancillary Devices otherwise permitted
hereunder) printers, cameras, imaging systems or displays which employ Chips,
and materials for use with any of the foregoing.
2.1.6. Third-Party Technology. In the event that Xxxxxxx has
licensed from a third party any of the Licensed Technology, Xxxxxxx'x license to
Orchid of such Licensed Technology is granted hereby to the extent that, and for
as long as, Xxxxxxx can provide such rights and subject to any royalty
obligations as hereinafter provided. Orchid shall be provided with timely notice
of the terms of any such license under which such sublicense is granted, and
Orchid may choose to accept or not accept such sublicense. To the extent that
the sale or other action by Orchid or its permitted sublicensees of Products or
Services would give rise to a royalty or other payment obligation by Xxxxxxx
under any license under which Orchid accepts a sublicense, Orchid shall pay and
require its sublicensees to pay such amount to Xxxxxxx or directly to the third
party if so requested by Xxxxxxx.
2.1.7. Algorithms. Except as included in Licensed Technology,
access by Orchid to algorithms for data mining and for informatics is not
included in the licenses granted herein, but may be the subject of a separate
agreement, subject to any Xxxxxxx agreements with third parties.
2.1.8. Tangible Results. All tangible instruments, devices,
prototypes or components thereof which are produced in Funded Research Programs
at Xxxxxxx funded by Orchid shall be owned by Orchid and delivered to Orchid no
later than upon completion of the relevant Funded Research Program. Orchid
shall have the right to use and to reproduce all such instruments, devices,
prototypes or components under the terms of this Agreement.
2.2. Restrictions on Xxxxxxx'x Other Businesses. Nothing in this
Agreement shall be interpreted to preclude Xxxxxxx or any of its subsidiaries or
licensees or sublicensees from engaging in their businesses; provided that
nothing in this Section 2.2 shall limit the exclusive grant to Orchid under
Section 2.1. Notwithstanding the foregoing, during the Option Period and the
duration of any Funded Research Program and for a period of ninety (90) days
after the last to terminate of the Funded Research Programs, Xxxxxxx and its
wholly-owned subsidiaries shall not:
(a) collaborate with or enter into any agreement to provide research
services or grant any license to any commercial third party for (i) designing or
modifying Chips or Input/ Output Devices for Chips for use in the Orchid Field
or any Option Field in which the Option continues to be in effect, (ii)
designing or modifying Type I Storage Devices or Input/ Output Devices for Type
1 Storage Devices that are customized or designed by Xxxxxxx for use with Chips
in the Orchid Field or any Option Field in which the Option continues to be in
effect, or (iii) designing or modifying Ancillary Devices, whether or not
incorporated in Delivered Chips and Instruments, that are designed or customized
by Xxxxxxx in collaboration with the third party while Xxxxxxx itself is in
possession of the third party's Chips as part of a joint effort to design or
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optimize a system that includes Chips for use in the Orchid Field or any Option
Field in which the Option continues to be in effect; or
(b) sell products which contain Chips, Type 1 Storage Devices,
Input/Output Devices for Chips or Type 1 Storage Devices to any commercial third
party for use in the Orchid Field or any Option Field in which the Option
continues to be in effect.
The foregoing:
(w) shall not prevent Xxxxxxx or any of its subsidiaries from providing
services related to, or from developing, licensing or selling printers, cameras,
imaging systems or displays including but not limited to those which employ
Chips therein so long as they are not Ancillary Devices exclusively licensed to
Orchid or designed or customized in violation of 2.2(i)(a)(iii);
(x) shall not prevent Xxxxxxx or any of its subsidiaries from providing
services related to, or from developing, licensing or selling (a) Type 2 Storage
Devices, or (b) Ancillary Devices, Type 1 Storage Devices or Input/ Output
Devices for use outside the Orchid Field and any Option Field in which the
Option continues to be in effect or from developing, licensing or selling
products of general applicability which may be useful in the Orchid Field and
the Option Fields in which the Option continues to be in effect as long as such
products are not specifically designed or modified for use with Chips, Type 1
Storage Devices, or Input/ Output Devices for Chips or Type 1 Storage Devices,
(y) shall not require Xxxxxxx to prevent purchasers of such Ancillary
Devices, Storage Devices or Input/ Output Devices from using such Ancillary
Devices, StorageDevices or Input/ Output Devices in the Orchid Field and any
Option Field in which the Option continues to be in effect, and
(z) shall not require Xxxxxxx to prevent parties with whom Xxxxxxx
collaborates or provides research services or to whom Xxxxxxx grants any license
from modifying, for use in the Orchid Field or any Option Field in which the
Option remains in effect, products developed or licensed to them by Xxxxxxx, as
long as Xxxxxxx or its wholly-owned subsidiaries do not contribute to the
modification.
2.2.1 Notwithstanding anything to the contrary in this Agreement,
this Agreement shall not be construed as any limitation or restriction on
Xxxxxxx'x dry powder technology or on Xxxxxxx'x right to grant any license to a
third party for its dry powder technology or its ability to apply or employ, or
collaborate with others to apply or employ, its dry powder technology for any
purpose.
2.3. Option to Orchid.
Subject to the terms and conditions of this Agreement, Xxxxxxx hereby
grants Orchid the exclusive option to include one or more Option Fields in the
Orchid Field and to receive exclusive licenses in such Option Field(s) as
specified in Section 2.1 above (the "Option") as follows:
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2.3.1. Option Exercise. Any Option with respect to an Option Field
hereunder may be exercised by Orchid upon written notice and by timely entering
into an agreement for a Funded Research Program with Xxxxxxx relating to any
such Option Field during the Term of the Option as set forth below and upon
payment of the consideration as specified in Section 3.2 hereof
2.3.2. Term of Option. The Option(s) set forth in this Section 2.3
shall continue for a period of four (4) years unless extended or sooner
terminated as provided below (the "Option Period"). In order to maintain Options
to all remaining unexercised Option Fields during the Option Period, upon each
anniversary of the Effective Date, Orchid shall be required to have entered into
at least one Funded Research Program agreement in one new Option Field for each
year that has elapsed since the Effective Date. Notwithstanding the foregoing,
in the event Orchid has exercised at least three (3) Options during the Option
Period, then the Option Period for the remaining Option may be extended at
Orchid's sole discretion for up three additional years upon payment of an Option
Extension Fee of [*] per remaining Option Field per year.
2.3.3. Loss of Option Rights. Except as otherwise provided above,
if upon any anniversary of the Effective Date, Orchid shall have failed to
exercise at least one Option per year as set forth in Section 2.3.2 above,
Orchid shall lose rights to one of the remaining unexercised Option Fields. For
any two-year period during which Orchid has failed to exercise rights to at
least one Option Field, Orchid shall lose the rights to two of the remaining
unexercised Option Fields. Upon the occurrence of any such event, Orchid shall
have sixty (60) days in which to elect the Option Field or Fields to be removed
from its Option rights hereunder. If Orchid makes no such election, Xxxxxxx may,
within sixty (60) additional days, elect the Option Field(s) to be removed by
notice to Orchid. For any three-year period during which Orchid has failed to
exercise rights to at least one Option Field, Orchid shall lose the rights to
all of the remaining unexercised Option Fields. Failure by Orchid to comply with
the provisions of Section 3.2 or to fully fund and make payment for a Funded
Research Program in accordance with the agreement executed pursuant to Section
2.3.1 shall give Xxxxxxx the right to terminate this license in accordance with
the provisions of Section 7.2 for the corresponding Option Field.
2.3.4. Extension of Funded Research Programs. Orchid shall have
the right to extend any Funded Research Program or to fund additional related
research at Xxxxxxx at Orchid's request upon reasonable terms to be negotiated
in good faith. Such extensions may include funding for the transfer of Licensed
Technology to the Combinatorial Chemistry Field, the In-vitro Diagnostic Field
or any other Option Field for which Orchid has an exclusive license hereunder.
2.3.5. Technology Audits. Upon termination or expiration of each
Funded Research Program, Xxxxxxx and Orchid shall, within 90 days of such
termination or expiration, meet in good faith to compile a detailed list of all
Licensed Technology invented, or developed during the course of such Funded
Research Program or incorporated in devices or systems as part of such Funded
Research Program. Such list shall be mutually agreed between the parties and
appended to this Agreement as a description of the Licensed Technology
attributable to such Funded Research Program and licensed hereunder as Research
Technology. Xxxxxxx will provide reasonable assistance to Orchid to transfer all
of such Licensed Technology to Orchid.
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
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2.4. No Waiver of Rights. Notwithstanding any provision of this
Agreement, (a) the failure by Orchid to exercise any Option hereunder shall not
in any way affect any exclusive licenses granted to Orchid herein or any
licenses subsequently granted to Orchid by Xxxxxxx, and (b) the scope of any
licenses granted to Orchid in the SB Agreement shall not be limited or affected
in any way by this Agreement.
2.5. Provision of Services. For the duration of the Option Period, in
order to facilitate agreements with Partners for Funded Research Programs, in
connection with the licenses and rights granted herein to Orchid, Xxxxxxx agrees
to provide reasonable assistance to Orchid in the area of business development
in the Orchid Field and any available Option Fields as requested by Orchid.
2.6. Rights to Jointly Developed Inventions.
2.6.1. Joint Inventions Jointly Owned. All right, title and
interest to any inventions or improvements within or outside the Orchid Field
jointly invented by the Parties prior to or during the term of this Agreement
shall be the joint property of the Parties ("Joint Inventions") unless otherwise
agreed in writing, and any resulting Patent Rights ("Joint Patent Rights") shall
be jointly owned.
2.6.2. Restrictions on Licensing Joint Inventions. Unless
otherwise agreed in writing, without the prior written consent of Xxxxxxx,
Orchid shall not grant a license or other right to any third party to use or
practice outside the Orchid Field and those Option Fields for which Orchid has
not exercised its Option, any Joint Invention or Joint Patent Right, or to
develop, have developed, make, have made, use, have used, offer to sell, sell,
have sold, import, have imported, lease, or otherwise distribute any products or
deliver any services outside the Orchid Field Covered By Joint Patent Rights.
Unless otherwise agreed in writing, without the prior written consent of Orchid,
Xxxxxxx shall not grant a license or other right to any third party to use or
practice in the Orchid Field and those Option Fields for which the Orchid Option
has not expired, any Joint Invention or Joint Patent Right, or to develop, have
developed, make, have made, use, have used, offer to sell, sell, have sold,
import, have imported, lease or otherwise distribute any products or deliver any
services, within the Orchid Field Covered By Joint Patent Rights.
2.6.3 Xxxxxxx Interest in Joint Inventions. Xxxxxxx'x interest in
Joint Inventions and Joint Patent Rights shall be deemed to be Licensed
Technology.
2.7 Grant Back to Xxxxxxx. To the extent permitted by present or future
agreements with third parties, Orchid hereby grants to Xxxxxxx a paid up,
royalty-free, non-exclusive license, with right to sublicense, to all
Intellectual Property relating to Chips, Storage Devices, and Input/ Output
Devices developed by Orchid during the term of the restrictions set forth in
Section 2.2, to develop, have developed, make, have made, use, have used,
import, have imported, offer for sale, sell have sold or lease products and
practice processes outside the Life Science Field. Such license shall survive
the termination or expiration of this Agreement.
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3. Consideration.
3.1 License Consideration. In consideration of the licenses and rights
granted herein, Orchid:
(a) has previously issued to Xxxxxxx an aggregate of 79,300 shares of
Common Stock, par value $.001, of Orchid, subject to the terms and conditions
set forth in the Shareholder Common Stock Purchase Agreement dated August 30,
1995 and 670,000 shares of Series A Convertible Preferred Stock, par value
$.001, of Orchid, subject to the terms and conditions set forth in the Series A
Convertible Preferred Stock Purchase Agreement dated August 30, 1995;
(b) shall issue to Xxxxxxx or to Xxxxxxx'x designated employees Eighty
Two Thousand Five Hundred (82,500) shares of Common Stock, par value $.001, of
Orchid and One Hundred Sixty Seven Thousand Five Hundred (167,500) shares of
Series A Convertible Preferred Stock, par value $0.001, of Orchid in
consideration of the license granted hereunder in the In-vitro Diagnostic Field;
and
(c) shall pay Xxxxxxx royalties for Products and Services as set forth
in Section 3.4 and 3.5.
3.2 Option Consideration. Upon exercise of an Option with respect to
any Option Field, Orchid shall issue to Xxxxxxx or its designated employees
33,300 shares of Common Stock, par value $.001, of Orchid and shall issue to
Xxxxxxx 66,700 shares of Class A Preferred Stock, par value $.001, of Orchid.
Orchid shall also issue to Xxxxxxx or its designated employees an additional
50,000 shares of Common Stock, par value $.001, of Orchid for each year during
the term of the related Funded Research Program at the end of each funding year.
3.3 Restrictions and Limits. All shares of Common Stock or Preferred
Stock issued to Xxxxxxx pursuant to this Agreement shall contain restrictive
legends as determined by counsel to Orchid to be required under the securities
laws of the United States and the relevant states or any stock subscription
agreement and shall be subject to existing Shareholder Agreements and Charter or
By-Law limitations on transfer.
3.4 Royalties under Exclusive License. Except for Products which
incorporate no Licensed Technology other than Developed Technology (as defined
in the SB Agreement), and/or technology developed under the Dynal Agreements or
Services provided using such Products which incorporate no Licensed Technology
other than Developed Technology (as defined in the SB Agreement), and/or
technology developed under the Dynal Agreements, commencing on January 1 of the
calendar year following the date on which the percentage of Orchid stock
represented by the total shares of Series A Convertible Preferred Stock and
Common Stock issued to Xxxxxxx as set forth in Sections 3.1(a) and (b) and
Section 3.2 (the "Issued Shares"), and regardless of whether or not Xxxxxxx may
have sold all or a portion of such Issued Shares, drops below 20% of all shares
of capital stock of Orchid then outstanding (calculated by assuming conversion
of all outstanding convertible securities and exercise of all outstanding
warrants) (such January 1 being referred to herein as the "Royalty Commencement
Date"), in consideration of the exclusive licenses granted pursuant to Section
2.1.1 and the non-
13
exclusive licenses granted pursuant to Section 2.1.2 Orchid shall make payments
to Xxxxxxx of royalties as follows:
(a) [*] of Net Sales by Orchid and its Affiliates of Products and Services
whose discovery, development, testing, manufacture, use, sale, importation,
lease or offer for sale would, but for the licenses granted hereunder, infringe
a Valid Claim of a Patent Right included in the Licensed Technology which is not
a Joint Patent Right and which is exclusively licensed hereunder, or whose
discovery, development, testing, manufacture, use, sale, importation, lease or
offer for sale directly employs or embodies proprietary Licensed Technology
which is not a Joint Invention and which is exclusively licensed hereunder,
provided however that for Products which incorporate Licensed Technology and
either Developed Technology (as defined in the SB Agreement), or technology
developed under the Dynal Agreements or Services provided using such Products,
the royalty rate shall be [*] of Net Sales;
(b) [*] of Net Sales by Orchid and its Affiliates of Products and Services
whose discovery, development, testing, manufacture, use, sale, importation,
lease or offer for sale would, but for the licenses granted hereunder, infringe
a Valid Claim of a Joint Patent Right, but not any other Patent Right, which is
included in the Licensed Technology and which is exclusively licensed hereunder,
or whose discovery, development, testing, manufacture, use, sale, importation,
lease or offer for sale directly employs or embodies only such Licensed
Technology which is a Joint Invention and which is exclusively licensed
hereunder;
(c) for (i) sales by any licensees or sublicensees of Orchid of any such
Products or Services as specified in Section 3.4(a) or (b), and (ii) payments
received by Orchid under a sublicense of exclusive Licensed Technology, Orchid
shall pay Xxxxxxx [*] of any non-refundable amounts received by Orchid from such
licensees or sublicensees, including but not limited to advanced and minimum
royalties, up front and milestone project and licensing fees (excluding equity
investments by licensees or sublicensees and excluding fees paid to Orchid in
any form which are required to be used for research or other services to be
performed by Orchid).
3.5 Royalties under Non-exclusive License. In consideration of the non-
exclusive licenses granted pursuant to Section 2.1.2, except for Products which
incorporate no Licensed Technology other than Developed Technology (as defined
in the SB Agreement), and/or technology developed under the Dynal Agreements or
Services provided using such Products which incorporate no Licensed Technology
other than Developed Technology (as defined in the SB Agreement), and/or
technology developed under the Dynal Agreements, Orchid shall make payments to
Xxxxxxx of royalties without regard to Xxxxxxx'x ownership of Issued Shares as
follows:
(a) [*] of Net Sales by Orchid and its Affiliates of Products and Services
whose discovery, development, testing, manufacture, use, sale, importation,
lease or offer for sale would, but for the licenses granted hereunder, infringe
a Valid Claim of a Patent Right included in the Licensed Technology which is not
a Joint Patent Right and which is non-exclusively licensed hereunder, or whose
discovery, development, testing,
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
14
manufacture, use, sale, importation, lease or offer for sale directly employs or
embodies proprietary Licensed Technology which is not a Joint Invention and
which is non-exclusively licensed hereunder, provided however that for Products
which incorporate Licensed Technology and either Developed Technology (as
defined in the SB Agreement), or technology developed under the Dynal Agreements
or Services provided using such Products, the royalty rate shall be [*] of Net
Sales; and
(b) [*] of Net Sales by Orchid and its Affiliates of Products and Services
whose discovery, development, testing, manufacture, use, sale, importation,
lease or offer for sale would, but for the licenses granted hereunder, infringe
a Valid Claim of a Joint Patent Right, but not any other Patent Right, which is
included in the Licensed Technology and which is non-exclusively licensed
hereunder, or whose discovery, development, testing, manufacture, use, sale,
importation, lease or offer for sale directly employs or embodies only such
Licensed Technology which is a Joint Invention and which is non-exclusively
licensed hereunder; and
(c) for (i) sales by any licensees or sublicensees of Orchid of any such
Products or Services as specified in Section 3.5(a) or (b) and (ii) payments
received by Orchid under a sublicense of non-exclusive Licensed Technology,
Orchid shall pay Xxxxxxx [*] of any non-refundable amounts received by Orchid
from such licensees or sublicensees, including but not limited to advanced and
minimum royalties, up front and milestone project and licensing fees (excluding
equity investments by licensees or sublicensees and excluding fees paid to
Orchid in any form which are required to be used for research or other services
to be performed by Orchid).
(d) In addition, Orchid shall pay Xxxxxxx for each Option Field for which
Orchid has a non-exclusive license under Section 2.1.2 on the relevant date the
following minimum royalties for each Option Field: [*]. For Option Fields where
Orchid notifies Xxxxxxx, at least thirty (30) days prior to the minimum royalty
due date, that Orchid does not wish to maintain its non-exclusive license, no
minimum royalty payment shall be due and Orchid shall no longer have a non-
exclusive license for such Option Field.
3.6 Royalty Reductions. In the event that royalties and fees paid to
Xxxxxxx pursuant to Section 3.4 or 3.5 shall become a significant factor in the
return realized by Orchid such as to substantially diminish its capability to
respond to competitive pressures in the market, the parties shall mutually agree
on a reasonable reduction in the royalties and fees payable under this Agreement
with respect to the affected Products and Services. Factors to be considered in
agreeing on the royalty reduction shall include but not be limited to the profit
margin on such
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
15
Products and Services and on analogous and/or competitive Products and Services
and prices and expenditures therefor.
3.7 Royalty Term. Royalties hereunder shall be payable only until the
expiration of the last to expire of the Patent Rights covering a particular
Product or Service. Thereafter, Orchid shall have a fully paid up, perpetual
non-exclusive license to all Licensed Technology for such Product or Service.
3.8 Royalty Reporting Provisions.
(a) Orchid agrees to submit to Xxxxxxx within sixty (60) days after the
calendar quarters ending March 31, June 30, September 30, and December 31 of
each year in which royalties are due hereunder, reports setting forth for the
preceding three (3) month period at least the following information for Orchid,
its Affiliates and sublicensees:
i) total xxxxxxxx for Products sold;
ii) total xxxxxxxx for all Services provided or sold;
iii) deductions applicable to determine the Net Sales thereof;
iv) the amount of royalty due thereon; and with each such royalty
report to pay the amount of royalty due.
(b) All such reports shall be maintained in confidence by Xxxxxxx, except
as required by law.
(c) All payments due hereunder shall be payable in United States dollars.
Conversion of foreign currency to U.S. dollars shall be made at the conversion
rate existing in the United States (as reported in The Wall Street Journal) on
the last working day of each royalty period.
(d) Any tax paid or required to be withheld by Orchid on account of
royalties payable to Xxxxxxx under this Agreement shall be deducted from the
amount of royalties otherwise due. Orchid shall secure and send to Xxxxxxx proof
of any such taxes withheld and paid by Orchid for the benefit of Xxxxxxx.
(e) If governmental regulations prevent remittances from a foreign country
with respect to sales made or fees received in that country, the obligation of
Orchid to pay royalties on such sales and/of fees shall be suspended until such
remittances are permitted. Xxxxxxx shall have the right, upon giving written
notice to Orchid, to receive payment in such country in local currency.
3.9 Royalties to Third Parties. In the event Orchid becomes liable to pay
royalties or other amounts to any third party as a result of the sale of any
product or the delivery of any services by Xxxxxxx or any Affiliate of Xxxxxxx
under Section 6 of the SB Agreement or otherwise, then Xxxxxxx shall be liable
for all such royalties or other amounts and shall, at Orchid's option, either
pay such amounts directly to the third party or shall reimburse Orchid for such
royalties or other amounts within thirty (30) days after receipt of an invoice
from Orchid.
16
3.10 Royalty Audits. Orchid shall keep complete, true and accurate books
of account and other appropriate records for the purpose of showing the amount
payable to Xxxxxxx by way of royalty and of cumulative Net Sales and otherwise
showing Orchid's compliance with Section 3 of this Agreement. Said books and the
supporting data and other documentation, including technical information
relevant to the determination of Orchid's obligations hereunder, shall be kept
at Orchid's principal office and maintained for three (3) years following the
end of the calendar year to which they pertain. Such records, solely to the
extent relevant to the determination of Orchid's obligations under Section 3 of
this Agreement shall be open, upon reasonable notice and at reasonable times
during normal business hours, to the inspection by independent, certified public
accounts (to be selected solely by Xxxxxxx and reasonably acceptable to Orchid)
at Xxxxxxx'x expense. However, if a discrepancy of more than five percent (5%)
of royalties due Xxxxxxx is discovered by the inspection, then the cost of the
inspection shall be performed at Orchid's expense.
4. Representations and Warranties.
4.1. Representations, Warranties and Covenants of Xxxxxxx. Xxxxxxx
represents, warrants and covenants to Orchid as follows:
4.1.1. Xxxxxxx is a corporation duly organized, validly existing and
in good standing under the laws of the State of New Jersey with corporate powers
adequate for executing and delivering, and performing its obligations under,
this Agreement;
4.1.2. The execution, delivery and performance of this Agreement have
been duly authorized by all necessary corporate action on the part of Xxxxxxx;
4.1.3. This Agreement has been duly executed and delivered by Xxxxxxx
and is a legal, valid and binding obligation of Xxxxxxx, enforceable against it
in accordance with its terms;
4.1.4. The execution, delivery and performance of this Agreement does
not and will not conflict with or contravene any provision of the charter
documents or bylaws of Xxxxxxx or any material agreement, document, instrument,
indenture or other obligation of Xxxxxxx;
4.1.5. Xxxxxxx shall not enter into any agreement, make any
commitment, take any action or fail to take any action that would contravene any
material provision of, or materially derogate or restrict any of the rights and
licenses granted to Orchid under, this Agreement; and
4.1.6. Schedule A sets forth a list of all Patent Rights relating to
Licensed Technology Owned or Controlled by Xxxxxxx as of the Effective Date. To
the best of Xxxxxxx'x knowledge, all patents listed in Schedule A are valid and
in full force and all applications listed therein as pending have been
prosecuted in good faith as required by law and are in good standing. To the
best of Xxxxxxx'x knowledge, there has been no infringement by Xxxxxxx or its
Affiliates with respect to any patent rights of others in the conduct of the
research activities that have resulted in the existing Licensed Technology owned
by Xxxxxxx. None of the patents or patent applications listed or described in
Schedule A is involved in any interference or opposition proceeding, and there
has been no written notice received by Xxxxxxx or any of its Affiliates that any
such proceeding will hereafter be commenced. Also, included in Schedule A is a
list of all
17
licenses and license agreements relating to Licensed Technology. To the best of
Xxxxxxx'x knowledge (i) all of the licenses listed or described in Schedule A
are legally valid and binding and in full force and effect, (ii) Xxxxxxx is not
in default under any such license, and (iii) there are no defaults by any other
party to any such license. None of Xxxxxxx'x rights under any such license will
be impaired by the consummation of the transactions contemplated hereby. Except
for licenses granted under the SB Agreement and except as described in Schedule
A, Xxxxxxx has not granted any person or entity any right to use any of the
patents or patent applications listed therein in the Orchid Field or the Option
Fields.
4.1.7. Xxxxxxx shall diligently prosecute and maintain all Patent
Rights licensed to Orchid in accordance with the provisions set forth in Section
5.2 and shall not take or fail to take any actions which would impair such
Patent Rights without prior written notice to Orchid as provided in Section
5.2.4.
4.2. Representations, Warranties and Covenants of Orchid. Orchid
represents, warrants and covenants to Xxxxxxx as follows:
4.2.1. Orchid is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware with corporate powers
adequate for executing and delivering, and performing its obligations under,
this Agreement;
4.2.2. The execution, delivery and performance of this Agreement have
been duly authorized by all necessary corporate action on the part of Orchid;
4.2.3. This Agreement has been duly executed and delivered by Orchid
and is a legal, valid and binding obligation of Orchid, enforceable against
Orchid in accordance with its terms;
4.2.4. The execution, delivery and performance of this Agreement do
not and will not conflict with or contravene any provision of the charter
documents or bylaws of Orchid or any material agreement, document, instrument,
indenture or other obligation of Orchid; and
4.2.5. Orchid shall not enter into any agreement, make any
commitment, take any action or fail to take any action that would contravene any
material provisions of, or materially derogate or restrict any of the rights and
licenses granted to, Xxxxxxx under this Agreement.
5. Disclosure of Licensed Technology.
5.1. Documentation and Access. Upon request by Orchid from time to time,
Xxxxxxx shall, within a reasonable time thereafter, deliver to Orchid copies of
reasonable documentation describing the Licensed Technology and Xxxxxxx shall
give access to and use reasonable efforts to keep Orchid apprised of all ongoing
and future Licensed Technology created or acquired by Xxxxxxx and its Affiliates
and subject to a license or Option to Orchid hereunder. In the event that Orchid
shall have reason to believe that Xxxxxxx has not complied with the requirements
of this Section 5.1, it shall so notify Xxxxxxx and Xxxxxxx shall be given a
reasonable opportunity to cure such non-compliance.
18
5.2. Patents.
5.2.1. Patent Prosecution.
Xxxxxxx shall, by qualified independent patent counsel, prepare, file,
prosecute and maintain patent applications, and maintain and enforce Patent
Rights included in the Licensed Technology in the countries of United States,
Canada, Australia, Europe Patent Office (designating Austria, France, Germany,
Spain, Ireland, Italy, Netherlands, Sweden, Switzerland, United Kingdom), Japan,
and Korea and such other countries as mutually agreed between Orchid and Xxxxxxx
and shall have all rights to otherwise deal in and to enforce rights associated
with Licensed Technology except as otherwise provided in Section 6.2. Xxxxxxx
shall provide Orchid with copies of all proposed patent and other applications
and filings and communications and give Orchid the reasonable opportunity to
comment thereon and Xxxxxxx will consider in good faith any comments provided to
Xxxxxxx by Orchid prior to filing. Xxxxxxx agrees to deliver to Orchid copies of
any communications with the applicable patent office, including without
limitation, all office actions and responses, each patent application and
filing, and each registration that issues thereon.
5.2.2. Cooperation. Orchid agrees to cause each of its employees and
agents to take all actions and to execute, acknowledge and deliver all
instruments or agreements reasonably requested by Xxxxxxx, and necessary for the
perfection, maintenance, enforcement or defense of Patent Rights as set forth
above.
5.2.3. Financing of Costs. Orchid agrees to pay to Xxxxxxx [*] of
Xxxxxxx'x reasonable out of pocket costs incurred in the preparation, filing,
translation, prosecution, issuance and maintenance of any such patent
applications or patents relating to Licensed Technology except for Licensed
Technology under Section 1.17(f) prepared or filed after the Effective Date and
[*] of the maintenance costs for such Patent Rights incurred by Xxxxxxx after
the Effective Date, provided that such prosecution is conducted as set forth in
Section 5.2.1 above. If Orchid declines in writing to pay to Xxxxxxx its [*]
share of the costs of a particular Patent Right in a particular country,
Orchid's license to such Patent Right in such particular country shall be
terminated as of the Due Date. If Orchid fails to pay to Xxxxxxx within thirty
(30) days from date of receipt of invoice (the "Due Date"), and such failure
continues for a period of 30 days after written notice to Orchid by Xxxxxxx of
such failure to pay, Orchid's license to such Patent Right in such particular
country shall be terminated as of the Due Date.
5.2.4. Election to Discontinue Prosecution. Xxxxxxx may, with
respect to the Patent Rights, at any time, in its sole discretion decide that it
desires to discontinue its responsibility for the prosecution or maintenance of
a particular patent application or patent in one or more countries of Patent
Rights which are Licensed Technology under Section 1.17(a), (b), (c), (d), (e)
and (g). In such event, Xxxxxxx shall notify Orchid promptly in writing of its
intention to discontinue responsibility for the prosecution or maintenance for
such patent application or patent, and, in any event, shall give such notice at
least sixty (60) days prior to the effective date of such proposed
discontinuance in order to permit Orchid to determine whether it wishes to
assume the responsibility therefor. Orchid shall have the right and option, but
not the obligation, to assume responsibility for prosecution and maintenance of
such patent or patent
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
19
application which Xxxxxxx desires to discontinue. Orchid shall inform Xxxxxxx in
writing of its decision to assume responsibility for prosecution and maintenance
of such patent or patent application and Xxxxxxx shall execute and deliver such
documents and take such actions as are reasonably necessary or appropriate to
effect such assumption and transfer of responsibility in a timely and efficient
manner. In the event Orchid exercises such right, such patent or patent
application shall be assigned to Orchid and removed from operation of this
Agreement; provided that, Xxxxxxx shall have a royalty free, non-exclusive,
worldwide, right and license under such Licensed Technology with the right to
sublicense, to develop, have developed, make, have made, use, have used, import,
have imported, offer for sale, sell have sold or lease products and practice
processes outside the Orchid Field and the Option Fields so long as the Options
remain in effect and further provided that upon termination of this Agreement,
such patents and patent applications shall be assigned to Xxxxxxx. However, if
Xxxxxxx elects to use or sublicense a particular patent in a particular country
assigned by Xxxxxxx to Orchid under this Section 5.2.4, then Xxxxxxx shall pay
to Orchid one half of the out of pocket costs expended by Orchid in obtaining
and maintaining the particular patent in the particular country.
5.3. Confidential Information. Any Party receiving or possessing
Confidential Information of the other Party shall use commercially reasonable
efforts to: (i) maintain the confidential and proprietary status of such
Confidential Information; (ii) keep such Confidential Information and each part
thereof within its possession or under its control sufficient to prevent any
activity with respect to the Confidential Information that is not specifically
authorized by this Agreement; (iii) prevent the disclosure of any Confidential
Information to any other Person; and (iv) ensure that such Confidential
Information is used only for those purposes specifically authorized herein;
provided, however, that such restriction shall not apply to any Confidential
Information which is (a) independently developed by the receiving Party without
reference to Confidential Information of the disclosing Party, (b) in the public
domain at the time of its receipt or thereafter becomes part of the public
domain through no fault of the receiving Party, (c) received by the receiving
Party without an obligation of confidentiality from a third party having the
right to disclose such information, (d) released from the restrictions of this
Section 5.3 by the express written consent of the disclosing Party, (e)
disclosed to any actual or prospective permitted assignee, Partner, investor,
licensee, sublicensee or subcontractor of either Xxxxxxx or Orchid (if such
actual or prospective assignee, Partner, investor, licensee, sublicense or
subcontractor is subject to the provisions of this Section 5.3 or comparable
provisions of other documents), or (f) required by law, statute, rule or court
order to be disclosed (the disclosing party shall, however, use commercially
reasonable efforts to obtain confidential treatment of any such disclosure and
shall notify the other party in writing of the request or requirement as soon as
feasible so that such other party may make timely effort to protect or limit the
conditions of disclosure of its Confidential Information). Without limiting the
generality of the foregoing, Xxxxxxx and Orchid each shall use its commercially
reasonable efforts to obtain confidentiality agreements from its respective
Partners, investors, licensees, sublicensees, subcontractors employees and
agents, similar in scope to this Section 5.3, to protect the Confidential
Information.
5.4. Permitted Disclosures. Notwithstanding the provisions of Section 5.3
hereof, Xxxxxxx and Orchid may, to the extent necessary, disclose and use
Confidential Information, consistent with the rights of Xxxxxxx and Orchid
otherwise granted hereunder (a) for the purpose of securing institutional or
government approval to clinically test or market any Product, or (b)
20
for the purpose of securing patent protection for an invention within the scope
of the Patent Rights. This Agreement and the terms hereof may be disclosed by
either Party only to a third party which executes an agreement requiring such
third party to maintain the confidentiality thereof
6. Infringement.
6.1. Notification of Infringement. Orchid and Xxxxxxx each shall notify
the other of any infringement or misappropriation by any Person of any Licensed
Technology rights in the Orchid Field and shall provide the other with the
available evidence, if any, of such infringement. In such case, the respective
officers of Xxxxxxx and Orchid shall confer to determine in good faith an
appropriate course of action to enforce the Licensed Technology rights or
otherwise xxxxx the infringement thereof.
6.2. Enforcement of Licensed Technology Rights. If the parties have not
agreed on a course of action pursuant to Section 6.1, then if Orchid determines
that enforcement of the Licensed Technology rights in the Orchid Field is
appropriate, Orchid shall have the right, but not the obligation, at its own
expense, to take appropriate action to enforce such rights; provided, however,
that, if Orchid elects to so act, Xxxxxxx shall have the right to participate in
the enforcement of such rights by agreeing to bear a percentage of the costs of
such enforcement in such amount as the parties shall determine. All amounts
recovered in any action to enforce rights in Licensed Technology in the Orchid
Field undertaken by Orchid, whether by judgment or settlement, shall be retained
by Orchid after reimbursing the expenses borne by both parties in enforcing such
Licensed Technology rights. If, within six (6) months after notice of
infringement, Orchid has not commenced action to enforce such rights or
thereafter ceases to diligently pursue such action, Xxxxxxx shall have the
right, at its expense, to take appropriate action to enforce such rights. Orchid
shall have the right to participate separately in such enforcement. All amounts
recovered in any action to enforce Licensed Technology rights undertaken by
Xxxxxxx solely at its expense, whether by judgment or settlement, shall be
retained by Xxxxxxx after reimbursing the expenses borne by both parties in
enforcing such Licensed Technology rights. Xxxxxxx and Orchid shall fully
cooperate with each other in the planning and execution of any action to enforce
rights. Xxxxxxx shall not enter into any settlement that includes the grant of a
license under, agreement not to enforce, or any statement prejudicial to the
validity or enforceability of any Licensed Technology in the Orchid Field
without the consent of the Orchid.
6.3. Disclaimer of Warranty; Consequential Damages.
6.3.1. XXXXXXX EXPRESSLY DISCLAIMS ANY WARRANTY, EXPRESS OR IMPLIED,
WITH RESPECT TO THE LICENSED TECHNOLOGY, INCLUDING, W1THOUT LIMITATION, ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
6.3.2. NEITHER PARTY TO THIS AGREEMENT SHALL BE ENTITLED TO RECOVER
FROM THE OTHER ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, MULTIPLE OR PUNITIVE
DAMAGES.
21
6.4 Infringement. In the event that an action for patent infringement is
commenced against Orchid and/or its sublicensees, whether severally or jointly,
based on the manufacture, use or sale of any Product or Service in any country,
Orchid may, without limitation: (i) terminate and revert its license hereunder
to such Product or Service in such country, which shall be deemed an abandonment
of such Product or Service in such country, or (ii) defend such action on
behalf, of the appropriate parties at its own expense.
6.5 Markings. Set forth in Exhibit A is a list of the Patent Rights,
which list shall be updated from time to time by Xxxxxxx Orchid shall refer to
this list and affix appropriate markings and legends on Products or Services
sold or distributed by or on behalf of Orchid using such Patent Rights.
6.6 Limitations. Xxxxxxx makes no representations or warranties that the
rights granted to Orchid pursuant to Section 2.1 hereof may be exercised by
Orchid and its sublicensees without infringing any third party rights in any
country in the world. Xxxxxxx assumes no responsibility hereunder for the
manufacturing, product specifications, or end-uses of Products or Services by
Orchid or its customers or sublicensees. No warranties made by Orchid in
connection with its Products or Services shall expressly or implicitly obligate
Xxxxxxx in any manner.
6.7 Product Indemnification. Subject to the provisions of this Section
6.7, Orchid agrees to defend, indemnify and hold harmless Xxxxxxx from any and
all damages arising from injury or damage to persons or property (including
without limitation, product liability or infringement of any proprietary rights)
resulting directly or indirectly from Orchid's use, development, manufacture,
licensing, marketing, sale or other disposition or any other commercial
exploitation of any Product or Service, except those which result from the gross
negligence or willful misconduct of Xxxxxxx. Xxxxxxx shall promptly notify
Orchid of any claim which is to be indemnified hereunder and Orchid shall have
the sole right to defend, settle or compromise any such action or claim.
7. Term and Termination.
7.1. Term. This Agreement shall be effective as of the Effective Date and
shall continue in full force and effect unless terminated by mutual agreement or
as set forth below.
7.2. Termination. In the event Orchid fails to make payments due
hereunder, Xxxxxxx shall have the right to terminate this Agreement upon ninety
(90) days' written notice, unless Orchid makes such payments within the ninety
(90) day notice period or unless any such payment is contested in good faith, in
which event Xxxxxxx shall not have the right to terminate this Agreement until
the matter is resolved in Xxxxxxx'x favor pursuant to Section 13 hereof and
Orchid still fails to make any such payment for thirty (30) days after such
resolution.
7.3. Survival of Sublicenses. In the event any license granted to Orchid
hereunder terminates for any reason, any sublicenses granted by Orchid under
this Agreement shall continue.
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8. No Implied Waivers; Rights Cumulative.
The delay or failure of any Party at any time or times to require
performance of any provisions shall in no manner affect the rights at a later
time to enforce the same. No waiver by any Party of any condition or of the
breach of any term contained in this Agreement, whether by conduct, or
otherwise, in any one or more instances, shall be deemed to be, or considered
as, a further or continuing waiver of any such condition or of the breach of
such term or any other term of this Agreement.
9. Force Majeure.
Xxxxxxx and Orchid shall each be excused for any failure or delay in
performing any of its respective obligations under this Agreement, if such
failure or delay is caused by Force Majeure.
10. Notices.
All notices, requests and other communications to Xxxxxxx or Orchid
hereunder shall be in writing (including telecopy or similar electronic
transmissions), shall refer specifically to this Agreement and shall be
personally delivered, by registered mail or certified mail, return receipt
requested, postage prepaid or by reliable overnight courier service providing
evidence of receipt, in each case to the respective address specified below (or
to such address as may be specified in writing to the other party hereto):
Xxxxxxx Corporation
000 Xxxxxxxxxx Xxxx
Xxxxxxxxx, XX 00000
Attn: Vice President, IP and Licensing
With a copy to:
Xxxxx Xxxxx, Ph.D., Esq.
Dechert Price & Xxxxxx
Xxxxxxxxx Xxxx Xxxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000-0000
Orchid Biocomputer, Inc.
000 Xxxxxxxxxx Xxxx
Xxxxxxxxx, XX 00000
Attn: President
With a copy to:
Xxxxxxx X. Xxxxxx, Esq.
Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
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Any notice or communication given in conformity with this Section 12 shall
be deemed to be effective: (i) when received by the addressee, if delivered by
hand; (ii) three (3) days after mailing, if mailed; and (iii) one (1) business
day after delivery to a reliable overnight courier service providing evidence of
receipt.
11. Successors and Assigns.
The terms and provisions of this Agreement shall inure to the benefit of,
and be binding upon, Xxxxxxx, Orchid, and their respective successors and
assigns.
12. Amendments.
No amendment, modification, waiver, termination or discharge of any
provision of this Agreement, nor any consent to any departure by Xxxxxxx or
Orchid therefrom, shall in any event be effective unless the same shall be in
writing specifically identifying this Agreement and the provision intended to be
amended, modified, waived, terminated or discharged and signed by Xxxxxxx and
Orchid, and each such amendment, modification, waiver, termination or discharge
shall be effective only in the specific instance and for the specific purpose
for which given. No provision of this Agreement shall be varied, contradicted
or explained by any oral agreement, course of dealing or performance or any
other matter not set forth in an agreement in writing and signed by Xxxxxxx and
Orchid.
13. Arbitration
13.1. The Parties shall attempt to resolve any dispute or controversy
arising under or relating to the interpretation or meaning of this Agreement by
good faith negotiations. Any matter that cannot be resolved by such good faith
negotiation shall be resolved by final and binding arbitration conducted by
three (3) arbitrators in Princeton, New Jersey, in accordance with the then-
current American Arbitration Association ("AAA") Commercial Arbitration Rules
(the "AAA Rules") as modified by this Section 13.
13.2. The arbitrators shall be selected by mutual agreement of the parties
or, failing such agreement, in accordance with the aforesaid AAA Rules. At
least one (1) of the arbitration panel shall be reasonably familiar with the
industry in which Orchid operates. The parties shall bear the costs of the
arbitrators equally.
13.3. The parties shall have the right of limited pre-hearing discovery,
in accordance with the U.S. Federal Rules of Civil Procedure, as then in effect,
for a period not to exceed sixty (60) days.
13.4. As soon as the discovery is concluded, but in any event with thirty
(30) days thereafter, the arbitrators shall hold a hearing in accordance with
the AAA Rules. Thereafter, the arbitrators shall promptly render a written
decision, together with a written opinion setting forth in reasonable detail the
grounds for such a decision.
13.5. Judgment may be entered in any court of competent jurisdiction to
enforce the award entered by the arbitrator.
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13.6. The duty of the parties to arbitrate any dispute hereunder shall
survive expiration or termination of this Agreement for any reason.
14. Governing Law.
This Agreement shall be governed by and construed in accordance with the
laws of the State of New Jersey.
15. Severability.
If any provision hereof should be held invalid, illegal or unenforceable in
any respect in any jurisdiction, then, to the fullest extent permitted by law,
(a) all other provisions hereof shall remain in full force and effect in such
jurisdiction and shall be liberally construed in order to carry out the
intentions of the parties hereto as nearly as may be possible and (b) such
invalidity, illegality or unenforceability shall not affect the validity,
legality or enforceability of such provision in any other jurisdiction. To the
extent permitted by applicable law, Xxxxxxx and Orchid hereby waive any
provision of law that would render any provision hereof prohibited or
unenforceable in any respect.
16. Headings.
Headings used herein are for convenience only and shall not in any way
affect the construction of, or be taken into consideration in interpreting, this
Agreement.
17. Execution in Counterparts.
This Agreement may be executed in any number of counterparts, each of which
counterparts, when so executed and delivered, shall be deemed to be an original,
and all of which counterparts, taken together, shall constitute one and the same
instrument.
18. Interpretation.
The parties hereto acknowledge and agree that (i) each Party and its
counsel reviewed and negotiated the terms and provisions of this Agreement and
have contributed to its revision; (ii) the rule of construction to the effect
that any ambiguities are resolved against the drafting Party shall not be
employed in the interpretation of this agreement; and (iii) the terms and
provisions of this Agreement shall be construed fairly as to all Parties hereto
and not in a favor of or against any Party, regardless of which Party was
generally responsible for the preparation of this Agreement.
19. Entire Agreement.
This Agreement, together with any agreements referenced herein,
constitutes, on and as of the date hereof, the entire agreement of Xxxxxxx and
Orchid with respect to the licensing or transfer of technology from Xxxxxxx to
Orchid and all prior or contemporaneous understandings or agreements, whether
written or oral, between Xxxxxxx and Orchid with respect to such subject matter
are hereby superseded in their entirety except for the SB Agreement. In the case
of any conflict between the terms of this Agreement and the SB Agreement, the SB
Agreement shall govern.
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IN WITNESS WHEREOF, the parties hereto have caused this License Agreement
to be duly executed under seal and delivered as of the date first above written.
XXXXXXX CORPORATION
By: /s/ Xxxxxx X. Xxxxxxxx, Ph.D.
------------------------------
Xxxxxx X. Xxxxxxxx, Ph.D.
Title: Vice President
----------------------------
ORCHID BIOCOMPUTER, INC.
By: /s/ Xxxx X. Xxxxx, Ph.D.
------------------------------
Xxxx X. Xxxxx, Ph.D.
Title: Chief Executive Officer
and President
----------------------------
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LICENSE AGREEMENT
SCHEDULE A
PRESENT PATENT RIGHTS
[*]
27
[*] CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
COMMISSION. ASTERISKS DENOTE SUCH OMISSIONS.
