"[**]" INDICATES THAT CONFIDENTIAL MATERIAL HAS BEEN OMITTED AND FILED
SEPARATELY IN A REQUEST FOR CONFIDENTIAL TREATMENT WITH THE SECURITIES AND
EXCHANGE COMMISSION.
EXHIBIT 10.41
LICENSE AGREEMENT
Affymetrix, Inc.
and
Molecular Dynamics, Inc.
1
CONTENTS
--------
DEFINITIONS 3
RECITALS 6
TECHNICAL INFORMATION 6
GRANTS 7
RECORDS, ACCOUNTS AND PAYMENTS 15
DURATION OF AGREEMENT 16
MISCELLANEOUS 17
EXHIBIT 1 21
2 22
3 23
4 24
5 27
6 28
2
THIS AGREEMENT is effective as of ("Effective Date")
between Affymetrix, Inc., a California corporation, hereinafter referred to as
"Affymetrix" and Molecular Dynamics, Inc., a Delaware corporation, hereinafter
referred to as "MD".
1 DEFINITIONS
Whenever used in this Agreement, the following terms shall have the
meanings set forth below:
1.1 "Affiliates" as applied to Affymetrix shall mean Affymetrix, Inc., a
California U.S.A. corporation, and all present and future companies
(other than Affymetrix) whose outstanding stock carrying the right to
vote for or appoint directors thereof is fifty percent (50%) or more
owned or controlled, directly or indirectly, by Affymetrix. "Affiliates"
as applied to MD shall mean Molecular Dynamics, Inc., a Delaware
corporation, and all present and future companies (other than MD) whose
outstanding stock carrying the right to vote for or appoint directors
thereof is eighty percent (80%) or more owned or controlled, directly or
indirectly, by MD, but only for so long as such ownership or control
exists. In the case of non-corporate entities, "Affiliates" shall refer
to those entities where the power to control and direct management of the
entity is eighty percent (80%) or more owned or controlled, directly or
indirectly, by the referenced entity.
1.2 "Array Maker" shall mean a device designed to fabricate Nucleic Acid
Arrays by Mechanical Fabrication Methods and specifically configured to
fabricate only Nucleic Acid Arrays only by Mechanical Fabrication
Methods, and otherwise subject to the restrictions herein.
1.3 "Category 1 Patent" shall refer to a United States Patent issuing on U.S.
Ser. No. [**] reciting, inter alia, [**], or a United States patent
claiming substantively the subject matter of such application.
1.4 "Category 2 Patent" shall refer to a) a United States Patent issuing on
U.S. Ser. No. [**] reciting, inter alia, [**], or a United States patent
claiming substantively the subject matter of such application; or b) a
United States Patent issuing on U.S. Ser. No. [**] reciting, inter alia,
[**]; or c) a United States Patent issuing on U.S. Ser. No. [**]
reciting, inter alia, [**], or a United States patent claiming
substantively the subject matter of such application; or d) a United
States Patent issuing on U.S. Ser. No. [**] reciting, inter alia, [**],
or a United States patent claiming substantively the subject matter of
such application.
1.5 "Expression Analysis" means the measurement of the presence, absence, or
level of an expressed messenger RNA in cells.
3
1.6 "GATC Compliant" shall refer to Nucleic Acid Arrays, software, or Systems
meeting the standards set forth in the GATC Agreement executed on a
substantially even date herewith, provided that Nucleic Acid Arrays or
Systems need not meet such standards when delivered before [**]. In the
event that one or both Parties cease to be a party to such GATC
Agreement , the Parties will negotiate in good faith to provide
substitute specifications for interoperability of their respective
Systems, Nucleic Acid Arrays, and associated software. In the event that
the GATC Agreement is not executed by the Parties on a substantially even
date, the Parties will agree upon specifications for interoperability
substantially based on the draft of the GATC Agreement in place on the
Effective Date, such agreement to be reached in good faith by the Parties
by [**].
1.7 "Gene" shall refer to a nucleic acid sequence encoding a distinct
messenger RNA and protein as well as polymorphic variants of such
sequence, provided that such polymorphic variants must have at least
99.9% homology with the underlying gene.
1.8 "Initial Period" shall mean, with respect to a particular Array Maker,
the time period beginning upon the contractual commitment of MD to
transfer such Array Maker to a third party (provided that such time must
begin before [**]), and a) ending [**] from the date of such commitment,
when such commitment is made between [**] and [**], or b) ending [**] for
those Array Makers for which contractual commitments of MD are made
before [**]. For those Array Makers for which MD contractually commits
on or after [**], there shall be no Initial Period.
1.9 "Mechanical Fabrication Methods" shall mean any method for the
fabrication of Nucleic Acid Arrays on a solid support by placement of
fully synthesized nucleic acids (clonal polynucleotides or other
presynthesized polynucleotides) having more than [**] bases each, solely
through mechanically isolated deposition of such fully synthesized
nucleic acids at specific locations on the array. Without limiting the
above, it is understood that the synthesis of an array in which regions
of an array are activated or prepared for placement of materials by means
of controlled direction of electromagnetic energy at a portion of a
support is not a Mechanical Fabrication Method.
1.10 "Metered Period" shall mean any period other than the Initial Period.
1.11 "Nucleic Acid Array" shall mean an array of diverse nucleic acids, each
having at least [**], at defined locations on a solid support and
fabricated by Mechanical Fabrication Methods, provided that in no part of
such solid support may such diverse nucleic acids be arranged at a
density of more than [**] locations per square centimeter, and all of the
nucleic acids in any one Nucleic Acid Array may represent no more than
[**] Genes.
1.12 "Party(ies)" shall refer to Affymetrix and/or MD.
1.13 "Patent Rights" shall mean claims, or the equivalent of claims of
"Affymetrix' Patent Rights" or "MD's Patent Rights," as appropriate,
directed to and/or primarily useful in
4
connection with Nucleic Acid Arrays. "Affymetrix' Patent Rights" shall
be those arising from, and only those arising from, the patents and
applications listed in Exhibit 1, as well as the inventions disclosed
and claimed therein, and all continuations, continuations-in-part,
divisions, reexaminations, and reissues thereof, and any corresponding
foreign patent applications that may be filed in the future claiming
priority thereto and any patents, patents of addition, or other
equivalent foreign patent rights issuing, granted or registered thereon
that are based on one or more of the patents or applications in Exhibit
1, including the patent rights of third parties for which Affymetrix
obtains the right to grant sublicenses pursuant to sublicensing rights
in connection with and obtained as part of a license grant of the
Affymetrix Patent Rights to such third party pursuant to terms
equivalent to Section 4. "MD's Patent Rights" shall be those arising
from, and only those arising from, the patents and applications listed
in Exhibit 2, as well as and the inventions disclosed and claimed
therein, and all continuations, continuations-in-part, divisions, and
reissues thereof, and any corresponding foreign patent applications
that may be filed in the future claiming priority thereto and any
patents, patents of addition, or other equivalent foreign patent rights
issuing, granted or registered thereon. The term "Patent Rights" as
defined above includes only said claims under which the
herein-designated company has the right at any time during the life of
this Agreement to make the herein-contained grants, in each instance to
the extent, and subject to the terms and conditions, including the
obligation to account to or make payments to others, under which the
herein-designated company shall have such right.
1.14 "Research Market Array Maker" shall mean an Array Maker designed,
manufactured, or sold to (and only to) not-for-profit research
institutions, specifically including university and government research
institutions, (without right of subsequent transfer) for lower-throughput
and lower density research purposes than Array Makers otherwise licensed
hereunder. Research Market Array Makers shall not be available for sale
or transfer to third parties before [**]. Research Market Array Makers
shall be subject to the terms and conditions herein relating to Array
Makers except that a) such Research Market Array Makers shall be adapted
to make Nucleic Acid Arrays not be configured to fabricate Nucleic Acid
Arrays having more than [**] genes per array and not more than [**] array
elements per square centimeter, and b) shall be subject to the lower
royalty provisions of Section 5.9 herein.
1.15 "System" shall mean one or more readers, hybridization devices, computer
work stations, and/or single copies of software associated therewith
specifically configured (but not necessarily exclusively configured) for
use with Nucleic Acid Arrays and to be used for extraction and processing
of data from such Nucleic Acid Arrays (and not including, for example,
Array Makers).
1.16 "Technical Information" shall mean: (a) the software identified in
Exhibit 3 in object code form; (b) associated documentation related to
such software directed to and/or primarily useful in connection with
Nucleic Acid Arrays; and (c) reasonable enhancements thereto heretofore
or hereafter acquired by the designated party prior to
5
[**] after the Effective Date of the Agreement, as well as the
copyright and trade secret rights therein. Notwithstanding the above,
"Technical Information" includes only such software, associated
documentation, and enhancements as the herein-designated party has the
right at any time during the life of this Agreement to disclose, and in
each instance only to the extent that and subject to the terms and
conditions, including the obligation to account to or make payments to
others, under which the herein-designated party shall have the right to
disclose such information to others.
2 RECITALS
2.1 MD has requested that Affymetrix grant MD a license under Affymetrix's
Patent Rights and Technical Information to make, use, import, lease,
distribute, and sell Nucleic Acid Arrays, as well as associated Systems
and Array Makers. Affymetrix is willing to grant such a license to MD on
the provisions herein set forth.
3 TECHNICAL INFORMATION
3.1 Affymetrix has developed Affymetrix' Technical Information which includes
a software suite for data extraction and image processing. Affymetrix
shall, promptly following execution of this Agreement and in accordance
herewith, permit MD to utilize Affymetrix' Technical Information for the
purpose of the commercial development of Nucleic Acid Arrays and
associated Systems. Affymetrix shall thereafter, from time to time and
upon MD's request, make available to MD any additional Technical
Information developed by or on behalf of Affymetrix. Affymetrix will
deliver object code versions of the software associated with the
Technical Information to MD. MD will license software only in object
code form.
3.2 Affymetrix and MD agree: (a) to use reasonable efforts to protect the
confidential nature of the other Party's Technical Information; (b) not
to disclose the same to others, except to the extent reasonably necessary
to carry out operations licensed hereunder; and (c) to use the same only
pursuant to the terms of this Agreement. However, the foregoing
commitments shall not extend to any portion of Technical Information (i)
which was in the possession of the receiving Party prior to receipt of
same without an obligation of confidentiality; (ii) which is now, or
hereafter becomes through no act or failure to act on the part of the
receiving Party, generally known to the nucleic acid array industry on a
non-confidential basis; or (iii) which is hereafter disclosed to the
disclosing Party by others if said others have imposed no restriction on
disclosure by the disclosing Party; or (iv) is independently developed by
the Party; or (v) is required to be disclosed pursuant to court or agency
order.
3.3 From time to time during the life of this Agreement, at Affymetrix'
request, MD shall make MD's Technical Information available to
Affymetrix.
6
3.4 Affymetrix and MD will advise the other with reasonable promptness and
detail of Technical Information developed after the Effective Date.
4 GRANTS
4.1 Subject to the terms and conditions of this Agreement, Affymetrix grants
to MD a nontransferable, nonexclusive, worldwide, royalty bearing license
under Affymetrix' Patent Rights and Technical Information to make, (but
not have made), use for internal array development programs and
pharmaceutical or diagnostic research (such use rights not including the
right to license or distribute expression databases, or perform
therapeutic or pharmaceutical development on a service or similar basis),
import, lease, distribute, offer for sale, and sell (in the case of
products other than software) a) GATC Compliant Nucleic Acid Arrays, and
b) GATC Compliant Systems for use with and only for use with GATC
Compliant Nucleic Acid Arrays licensed hereunder, all to the extent that
such Nucleic Acid Arrays or Systems are covered by Affymetrix' Patent
Rights and/or Affymetrix's Technical Information. Such license shall not
include the right to sublicense, except that MD shall have the right to
sublicense single copies of Affymetrix' Technical Information (without
the right to further sublicense) for use with GATC Compliant Systems
leased, sold, or transferred by MD pursuant to this Agreement. It is
understood that the rights conveyed herein do not include the right for
MD to use, have used, or license or otherwise permit any third party to
use the Nucleic Acid Arrays (including those made by Array Makers) for
database development for external distribution, service based target or
drug discovery, or product development of other nucleic acid analysis
technologies. It is further understood that while the sale of Systems or
licensing of Technical Information to third parties is permitted even
though such Systems are or may be useful to read, prepare, or process
data from nucleic acid arrays having a density greater than the density
of Nucleic Acid Arrays licensed herein or in applications other than the
Nucleic Acid Arrays licensed herein (such as those made by Affymetrix),
no express or implied license to make, have made, use, import, lease,
distribute, offer for sale, sell or transfer such higher density nucleic
acid arrays or nucleic acid arrays for other applications is granted or
is to be inferred or implied hereunder except as to those nucleic acid
arrays made by Affymetrix or licensed by Affymetrix. Notwithstanding
anything to the contrary in this Section 4.1, Nucleic Acid Arrays are
licensed hereunder only to the extent that such Nucleic Acid Arrays are
a) used, leased, distributed, or sold only for research use only; and b)
designed and marketed only for use and used in Expression Analysis
studies; and c) are for single use only, and d) are sold, leased, or
otherwise transferred with contractual and label restrictions on use
consistent with this agreement, which provisions may be reasonably
reviewed by Affymetrix. It is understood that MD may have subassemblies
made under this license that would not, but for this license, infringe
the intellectual property rights granted herein. The Parties will agree
to appropriate royalty and support terms for additional copies of the
Technical Information to be used in the Systems.
7
4.2 Subject to the terms and conditions of this Agreement, Affymetrix grants
to MD a nontransferable, nonexclusive, worldwide, royalty-free license
under Affymetrix' Patent Rights to make (but not have made), and use
Array Makers for internal array development and manufacturing development
programs. It is understood that MD may have subassemblies made under this
license that would not, but for this license, infringe the intellectual
property rights granted herein.
4.3 During the term and subject to the terms and conditions of this Agreement
and during the Initial Period or the Metered Period as applicable (if
any), Affymetrix grants to MD a nontransferable, nonexclusive, worldwide,
royalty bearing license under Affymetrix' Patent Rights and Technical
Information to make, (but not have made), use for internal array
development programs and pharmaceutical or diagnostic research (such use
rights not including the right to license or distribute expression
databases, or perform therapeutic or pharmaceutical development on a
service or similar basis), import, lease, distribute, offer for sale, and
sell (in the case of licensed products other than software) Array Makers
for the manufacture of GATC Compliant Nucleic Acid Arrays to the extent
that such Array Makers or the use of such Arrays Makers or Nucleic Acid
Arrays made therewith (or use thereof) are covered by Affymetrix' Patent
Rights and/or Affymetrix' Technical Information. Such license shall not
include the right to sublicense. Such license shall be considered to
include a license for the Array Makers sold prior to the date of this
Agreement only to the entities in Exhibit 5. It is understood that the
rights conveyed herein do not include the right for MD or those acquiring
Array Makers pursuant to this Agreement to use, have used, or license or
otherwise permit any third party to use the Nucleic Acid Arrays made with
such Array Makers for database development for external distribution, for
service based target or drug discovery, or manufacture Nucleic Acid
Arrays for resale or other transfer to third parties. Nucleic Acid
Arrays made with the Array Makers licensed hereunder will be licensed
only to the extent that such Nucleic Acid Arrays are a) used, leased,
distributed, or sold for research use only; and b) designed, marketed and
used only in Expression Analysis studies; and c) are for single use only,
and d) are sold or otherwise transferred with contractual and label
restrictions on use consistent with this agreement, which provisions may
be reasonably reviewed by Affymetrix. In no event may MD transfer more
than [**] Array Makers pursuant to the license hereunder to a single
third party or its Affiliates, except as to [**], to which MD will not
transfer more than [**] Array Makers pursuant to the license hereunder
when such Array Makers are to be licensed in an Initial Period. During
the Metered Period, MD may provide additional Array Makers to its
customers. It is understood that a particular customer of MD may wish to
order more than the above recited [**] or [**] Array Makers, and when MD
is contractually obligated to provide such Array Makers they may be
provided by MD, provided that any such Array Makers in excess of the
above limits will be considered as being in the Metered Period upon their
delivery to the customer of MD. In the event that MD is committed to
deliver more than the above numbers of Array Makers before the Effective
Date to the customers in Exhibit 5, MD and Affymetrix will negotiate for
appropriate metering rates for such Array Makers pursuant to Section 5,
upon which such Array Makers will be licensed hereunder.
8
It is understood that MD may have subassemblies made under this license
that would not, but for this license, infringe the intellectual
property rights granted herein.
4.4 Research Market Array Makers will be subject to the provisions of this
Agreement related to Arrays Makers. In addition, Research Market Array
Makers may be used and are licensed only to the extent they are used in
the generation of scientific information for general publication, and
without pursuit of intellectual property rights thereon. Any further
uses, including the patenting of information or discoveries created with
the Research Market Array Maker, the creation of arrays for sale to third
parties, the performance of services or tests on a paid basis for third
parties, and the creation of database or informatics products for sale to
third parties will not be licensed hereunder except to the extent that
any such purchaser agrees to abide by the terms of Affymetrix' then
current Academic User Center (or then equivalent) agreement providing for
Affymetrix rights to either a) have access to such intellectual property,
or b) share in royalties generated by such intellectual property. Each
Research Market Array Maker sold, leased, or otherwise transferred by MD
will be sold with written consent to and conditioned upon such terms.
4.5 It is understood that MD may wish to perform a service business using
Nucleic Acid Arrays during the Term of this Agreement. Affymetrix will
negotiate in good faith to license such service business at rates
otherwise consistent with its then current pricing models.
4.6 MD may grant sublicenses (without the right to further sublicense) to the
Technical Information in association with the bona fide sale, lease, or
transfer of Systems or Nucleic Acid Arrays, provided that any such
license of the Technical Information: a) will allow any sublicensee
access only to object code versions of any software included within such
grant; and b) any such grant includes provisions the same as or
substantially identical to those in Exhibit 4. MD will maintain all
trademark and copyright notices of Affymetrix in such Technical
Information sublicensed to a third party.
4.7 Affymetrix shall provide support for the Technical Information
commensurate with standard industry practices (under standard terms and
conditions) to MD, its Affiliates, and their customers who have received
Technical Information in connection with the bona fide sale, lease, or
transfer of Systems or Nucleic Acid Arrays by MD or its Affiliates
pursuant to the licenses granted hereunder. In addition, upon MD's
request, Affymetrix shall escrow a source code version of the Technical
information with an escrow agent mutually agreeable to the parties, which
escrowed source code shall be accessible to MD in the event that
Affymetrix shall default on or be unable to perform its support
obligations, or as a result of insolvency, bankruptcy, or if Affymetrix
otherwise ceases in the relevant business.
4.8 MD and Affymetrix will reasonably meet and confer to determine if it is
reasonably feasible to retrofit Systems that are not GATC Compliant, but
which are licensed
9
hereunder, to permit such Systems to utilize probe arrays of low and/or
high density made by Affymetrix.
4.9 In the event that a third party brings a lawsuit or is otherwise involved
in administrative or other similar disputes with a Party regarding
intellectual property rights, the Party that is subject to such action
may provide written notification of such action, along with notification
that it wishes to discontinue sales, if any, of products that would
otherwise have been licensed hereunder to such third party, and
terminating the licenses herein with respect to such third party. The
Party receiving such notice will, subject to prior contractual
commitments, use reasonable efforts to discontinue sales of products
licensed hereunder to such third party or, if no such sales have
occurred, to prevent such sales in the future. MD acknowledges that
Affymetrix has provided notice of two such third parties, and MD
understands that any products transferred to such third parties are not
licensed hereunder.
4.10 Subject to the terms and conditions of this Agreement, MD grants to
Affymetrix, which grant is extendible by Affymetrix to its Affiliates
without accounting therefor to MD, a worldwide, nonexclusive license
under MD's Patent Rights to make, have made, use, import, lease,
distribute, offer for sale, and sell high density arrays of nucleic acids
and systems for use therewith to the extent used to analyze such high
density arrays of nucleic acids.
4.11 It is recognized that up to [**] may be sold by MD to [**] pursuant to an
existing contract between MD and [**] and in accordance with the rights
and obligations of this Agreement. The Parties recognize, however, that
[**] may not agree to be bound by all of the the terms of this license
relating to database distribution in Section 4.3. To the extent that
[**] does not comply with the database distribution restrictions in
Section 4.3 and to the extent that such [**] are otherwise sold by MD in
accordance with this Agreement, Affymetrix, on behalf of itself, and its
Affiliates, heirs, executors, assigns, agents and representatives hereby
fully and forever releases MD and its heirs, executors, assigns, agents,
and representatives from any claim or cause of action, under any thery of
liability, known or unknown, fixed or contingent, that any of them may
have arising from or relating to Affymetrix Patent Rights and/or
Technical Information from the beginning of time up to the Effective Date
on account of [**] lack of non-compliance, performance, or lack of
agreement to comply with such database distribution restrictions with
respect to such three instruments. Such release shall in no manner be
construed to extend to [**] whether by implication, license, or otherwise
and, further, shall not extend to future acts of MD beyond the supply of
such [**] to [**].
4.12 MD, on behalf of itself, and its Affiliates, heirs, executors, assigns,
agents and representatives hereby fully and forever releases Affymetrix
and its heirs, executors, assigns, agents and representatives from any
claim or cause of action, under any theory of liability, known or
unknown, fixed or contingent, that any of them may have arising from or
relating to MD Patent Rights from the beginning of time up to the
Effective Date on
10
account of the manufacture, use, or sale of high density nucleic acid
arrays and systems to analyze such high density nucleic acid arrays.
4.13 Subject to the terms and conditions of this Agreement, MD grants to
Affymetrix the royalty-free right to grant nonexclusive licenses under
MD's Patent Rights to others licensed by Affymetrix under Affymetrix'
Patent Rights for use with Nucleic Acid Arrays and Systems; provided,
however, that Affymetrix may grant such licenses under MD's Patent Rights
only to others whose Patent Rights are included within the Affymetrix
Patent Rights.
4.14 Nothing in this Agreement shall be construed to obligate either party to
▇▇▇ alleged infringers under such party's Patent Rights and Technical
Information. Any determination to take any action against such alleged
infringers shall be in such party's sole discretion.
4.15 MD shall include with all Nucleic Acid Arrays (including Nucleic Acid
Arrays made with Array Makers) and Systems leased, distributed, sold, or
otherwise transferred hereunder reasonable package markings, product
markings, contractual restrictions, and/or user manual instructions
indicating that such products are licensed: (a) for research purposes
only; (b) only for Expression Analysis studies or studies otherwise
licensed by Affymetrix (it being understood that the Parties may chooses
upon mutual written consent to modify this limitation); and (c) for
single use only, and (d) with restrictions on the distribution of
databases or services based on the use of arrays herein, and (e) only
consistent with the licenses herein. MD shall diligently police and
enforce such restrictions.
4.16 MD shall attach a label on each Nucleic Acid Array, System and/or
associated documentation sold, leased, or otherwise transferred hereunder
reasonably reflecting patent numbers of a) issued US device patents
covering such product, and b) other appropriate intellectual property
rights notices, and will reasonably modify such label periodically at the
direction of Affymetrix. Affymetrix shall attach a label on each Nucleic
Acid Array, System and/or associated documentation reasonably reflecting
patent numbers of a) issued US device patents covering such product, and
b) other appropriate intellectual property rights notices, and will
reasonably modify such label periodically at the direction of MD.
4.17 The licenses granted herein are granted on the understanding that MD will
use commercially reasonable efforts to develop, manufacture, and market
Nucleic Acid Arrays and Systems, and MD agrees to use such commercially
reasonable efforts to develop, manufacture, and market Nucleic Acid
Arrays, and Systems. If during the term of this Agreement Affymetrix
reasonably believes that MD has discontinued commercially reasonable
efforts to develop, manufacture, and market Nucleic Acid Arrays and/or
Systems, Affymetrix may provide written notice to MD of such reasonable
belief, along with notification that it intends to terminate the licenses
herein In the event
11
that MD disagrees with such assertions by Affymetrix, MD may provide
reasonable evidence of its continued reasonable commercial efforts under
suitable terms of confidentiality. In the absence of such reasonable
evidence, Affymetrix may, thereafter, on 6 months written notice,
terminate this Agreement.
4.18 MD may extend the licenses granted herein to its Affiliates provided such
Affiliates agree in writing to be bound by the terms and conditions of
this Agreement, and further provided that MD agrees to be liable and
indemnify Affymetrix for the activities of such Affiliates.
5 FEES
5.1 At the time and in the manner hereinafter provided, MD shall pay to
Affymetrix for each Nucleic Acid Array a) leased, sold, or otherwise
transferred pursuant to the license granted under Section 4 hereof, or b)
used for internal pharmaceutical research and development purposes (but
not used solely for development of Arrays Makers, Systems or Nucleic Acid
Arrays), a royalty pursuant to Table 1. The royalty shall be payable
based on [**] prices in Table 1 are the number of dollars to be paid to
Affymetrix [**].
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Royalty [**]
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[**] [**]
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[**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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[**] [**] [**] [**] [**]
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12
5.2 The royalties and operating fees, and the licenses herein, cover arrays
made with up to [**]. In the event that MD reasonably believes at a
future date that [**] are reasonably required to competitively market
Nucleic Acid Arrays or Array Makers, MD and Affymetrix will reasonably
confer and agree upon appropriate royalty levels for such Nucleic Acid
Arrays and/or Array Makers using the royalty and operating fee structures
set forth herein as guiding factors, provided that in no event will the
licenses granted herein cover Nucleic Acid Arrays representing more than
[**] unless agreed to in writing by Affymetrix. In addition, if MD is
required to license probe array based intellectual property from third
parties that make the above royalty rates unsupportable, MD and
Affymetrix will negotiate in good faith with each other to modify the
above royalty structure and/or the third party royalty rates that should
be paid.
5.3 In the event that a) MD reasonably believes that it cannot support the
above royalty rates and operating fees under a reasonable business model
for the sale, lease, or transfer of Nucleic Acid Arrays sold pursuant to
this Agreement after commercial efforts to implement such business model
as a result of such royalty rates, and b) Affymetrix is not taking
reasonable efforts to mitigate infringement of its intellectual property
rights, MD will provide written notification to Affymetrix, along with
reasonable documentation of the basis of such assertion. MD and
Affymetrix will reasonably confer and identify alternative license fees
and or structures to support a reasonable business model for the sale of
Nucleic Acid Arrays licensed pursuant to this Agreement.
5.4 If in any calendar year following the [**] anniversary of this Agreement
the royalties and operating fees generated by MD's licensed operations
hereunder are less than [**], then Affymetrix shall have the right,
exercisable within the period of ninety (90) days following the end of
the said year, to terminate this Agreement on sixty (60) days' written
notice to MD; provided, however, that MD shall have the right but not the
obligation, before the expiration of the said sixty (60) days following
the date of said notice of termination, to pay any differences between
the royalties and operating fees so accruing and the foregoing amount and
maintain this Agreement and the license granted to MD in full force and
effect, subject to Affymetrix' rights to terminate this Agreement
pursuant to any of Sections 7.3 through 7.5 hereunder.
5.5 In partial consideration of the rights and waivers herein MD shall pay to
Affymetrix [**] upon MD's execution of this Agreement. Such payment
shall be subject to refund as follows: a) if a Category 1 patent has not
issued by [**] shall be refunded, and b) if a Category 2 patent has not
issued by [**] shall be refunded.
5.6 During the Initial Period, and as to Array Makers (excluding Research
Array Makers) transferred to third parties under contracts in which MD
has committed to transfer such Array Makers pursuant to agreements
effective before [**] MD will pay to Affymetrix an operating license fee
for the usage of the Array Makers during the period beginning when the
Category 1 and/or 2 Patents, as applicable, are issued: a) [**] per
calendar year for each calendar year in which a Category 1 Patent is
issued, pro-rated for the number of
13
months in such calendar year in which such Category 1 Patent is issued,
and provided that this payment shall not be payable with respect to Array
Makers specifically configured to make Nucleic Acid Arrays at a density
of less than [**], and b) [**] per calendar year for each calendar year
in which a Category 2 Patent is issued, pro-rated for the number of months
in such calendar year in which such Category 2 Patent is issued. The
foregoing operating license fees are a proxy for usage fees for the Array
Makers. The fees recited in this Section may be made in equal quarterly
installments during the applicable calendar year in which such payments
are due.
5.7 MD will reasonably gather data regarding the Array Makers (excluding
Research Array Makers) sold pursuant to this Agreement to determine the
approximate use rate and type of use (density of arrays, etc.) by users
of such Array Makers. Before [**] the Parties will meet and confer
regarding an appropriate and reasonable metering system (such as, for
example, monitoring of reagent usage, software usage monitoring, etc.)
that may be used to apply reasonable royalties and operating fees to the
use of such Array Makers reflective of the rates recited herein for Array
Makers and Nucleic Acid Arrays. During the Metering Period, the
royalties and operating fees payable on any such Array Makers will be
based upon such agreed metering mechanism.
5.8 Until such time as Affymetrix provides MD written notification of the
issuance of a Category 1 Patent, MD may discount the royalties and
operating fees payable on Nucleic Acid Arrays pursuant to Sections 5.1
and 5.6 herein by [**]. Until such time as Affymetrix provides MD
written notification of the issuance of a Category 2 Patent, MD may
discount the royalties and operating fees payable on Nucleic Acid Arrays
pursuant to Sections 5.1 and 5.6 herein by [**]. It is understood during
such time as neither a Category 1 Patent or a Category 2 Patent is
issued, MD may discount the royalties and operating fees payable on
Nucleic Acid Arrays pursuant to Sections 5.1 and 5.6 herein by [**].
5.9 Molecular Dynamics shall pay to Affymetrix a one-time royalty on each
Research Market Array Maker and reagents sold therefor equal to [**] of
the net sales revenue (F.O.B. Sunnyvale) of such Research Market Array
Makers and reagents sold therefor.
5.10 MD may discount the royalties/operating fees payable pursuant to Section
5.1 herein on the sale of Nucleic Acid Arrays by [**] in those cases
where the Genes represented on the Nucleic Acid Arrays are from an
organism listed in Exhibit 6.
5.11 If, under similar conditions and on substantially the same terms as this
Agreement, other than royalty terms, Affymetrix shall hereafter enter
into another agreement making available to any person, firm or company
(other than any national government or branches or agencies of any
national government, or any Affiliate(s) of Affymetrix) a license or
immunity from suit for any country or countries, otherwise of the same
scope as the licenses and immunities granted MD under this Agreement,
wherein the terms taken as a whole are more favorable than those granted
in this Agreement, then MD shall,
14
at MD's election to be exercised within ninety (90) days from the date
of Affymetrix' notification, be entitled to the benefit of such more
favorable terms in such country or countries as of and subsequent to
the effective date of the grant by Affymetrix of such more favorable
terms, so long as such more favorable terms shall be available to such
other licensee, provided that in any such event MD shall at the same
time accept any and all other terms, conditions and limitations imposed
on such other licensee, whether or not they are directly related to such
more favorable terms. Affymetrix shall reasonably notify MD of any
agreement which provides Affymetrix of the benefits of this paragraph.
6 RECORDS, ACCOUNTS AND PAYMENTS
6.1 The royalties and operating fees payable by MD to Affymetrix as provided
in Article 5 shall be paid on or before the last day of February, May,
August and November in each calendar year for MD's operations hereunder
during the respective immediately preceding calendar quarter. MD will at
the same time deliver to Affymetrix a certified statement of one of MD's
officers, on forms which may be provided or prescribed therefor by
Affymetrix, accounting for royalties and operating fees payable
hereunder, or showing that no royalty is payable.
6.2 In keeping with established bookkeeping and accounting practices, MD
shall maintain, for a period of two (2) years following the end of the
calendar year in which any royalties and operating fees are payable,
appropriate books and records fully adequate to show the full amount of
royalty payable under this Agreement, including, but not limited to,
books and records showing each sale, lease, or other transfer of Nucleic
Acid Arrays or Systems, the net invoice price for said sale, lease, other
transfer, and sublicense, the name and address of the purchaser, lessee,
transferee and/or sublicensee, as appropriate. Affymetrix shall have the
right, at any time during regular business hours and upon 10 days notice,
to make such examination as Affymetrix deems necessary to verify said
records and books of account. In the event that such examination reveals
a discrepancy between the royalties and operating fees payable hereunder
and the royalties and operating fees actually paid, all such additional
royalties and operating fees, together with interest from the date when
such additional royalties and operating fees would have been due, shall
be paid to Affymetrix within thirty (30) days of written notice from
Affymetrix of such discrepancy. Such notice shall be deemed to be notice
of default under Section 7.5 hereunder. Any such audit shall be at
Affymetrix sole expense and performed by a nationally recognized
accounting firm under reasonable obligations of confidentiality. In the
event that a deficiency of more than [**] is discovered, the audit shall
be at MD expense.
6.3 All payments provided for in this Agreement refer to lawful money of the
United States of America. All payments shall be made by MD to Affymetrix
at the office of Affymetrix designated in Section 8 and shall be made in
the full amounts as herein specified; provided, however, that deduction
may be made from such payments by MD for amounts lawfully required to be
withheld and paid by MD in respect of any income
15
tax levied or assessed upon such payments by, and in accordance with
the laws of, any foreign government but only in respect to sales and
leases by MD in the foreign country imposing such income tax.
Affymetrix shall have the right at any time or from time-to-time to
contest by appropriate proceedings the validity or amount of any such
income tax withheld. If so requested by Affymetrix, MD will make such
payments under protest, and, on behalf and at the expense of
Affymetrix, take such other action and render all reasonable assistance
that may be required by Affymetrix in the prosecution of any such
proceedings. MD will obtain and forward to Affymetrix tax credit
receipts or vouchers for all income taxes thus withheld and paid by MD.
As used herein, "income tax" shall mean a tax on income imposed by a
country other than the United States of America or by any possession or
territory of the United States of America, for which a foreign tax
credit is allowed by the Government of the United States of America.
All late payments shall bear interest at the rate of 1.5% per month,
unless the maximum amount allowed by law is lower, in which case all
late payments shall bear interest at the maximum permitted rate.
6.4 If one or more of the payments required to be made herein is not made by
its due date, and if such payment or payments, plus interest, is not made
prior to forty five (45) days after notice from Affymetrix of such
delinquency, then Affymetrix may, at its sole option, terminate this
Agreement on the fifteenth day after written notice is given to MD that
it intends to terminate this Agreement.
6.5 All payments herein shall be made in United States of America dollars in
the form of a check drawn on a United States bank.
7 DURATION OF AGREEMENT
7.1 Unless earlier terminated as provided below, this Agreement shall remain
in full force and effect until January 1, 2008.
7.2 At any time after one (1) year following the Effective Date of this
Agreement, MD may terminate this Agreement upon sixty (60) days' prior
written notice to Affymetrix.
7.3 In the event that MD intends to file any petition, answer, or other
proceeding in bankruptcy, MD will use reasonable efforts to give
Affymetrix reasonable advance written notice prior to filing such
petition and provide Affymetrix reasonable adequate opportunity to review
and oversee any reorganization or disposal of MD's relevant assets (to
the extent applicable to the intellectual property rights herein granted)
to ensure strict compliance with this Agreement. Failure to comply with
this Section shall be considered a material breach which may not be
remedied.
7.4 In the event that MD files, or intends to file any petition, answer, or
other proceeding in bankruptcy, Affymetrix will have the right, but not
the obligation, to terminate this Agreement by providing written notice.
16
7.5 If either party should fail to perform any obligations under this
Agreement, the other party may give written notice to the defaulting
party calling attention to the default. In the event of a material breach
or default, unless said breach or default is corrected within thirty (30)
days after such notice, said other party shall thereafter have the right
to terminate this Agreement upon thirty (30) days' prior written notice
to said defaulting party. Said right to terminate for default shall be
in addition to, and without prejudice to the exercise of, any other
remedies available in law or equity.
7.6 No termination of this Agreement shall in any way affect MD's obligations
pursuant to Articles 5 and 6 to pay royalties and operating fees, deliver
statements, and maintain books and records under this Agreement accrued
prior to such termination, or MD's or Affymetrix's obligations pursuant
to Section 3.2. Furthermore, no termination of this Agreement shall in
any way affect Affymetrix's rights under Sections 4 above.
8 MISCELLANEOUS
8.1 MD and Affymetrix will appropriately ▇▇▇▇ all licensed products hereunder
with applicable intellectual property rights notices as may be reasonably
be provided from time to time by the other Party. In addition, all
product manuals and instruments to be sold as or in conjunction with
Nucleic Acid Arrays, Systems, or Array Makers shall include the following
notice, such notice to be reasonably modified upon notice from Affymetrix
provided that any such modification is consistent with the terms and
conditions of this Agreement:
LIMITED LICENSE: NUCLEIC ACID ARRAYS, ARRAY MAKERS, SYSTEMS
(INSTRUMENTS, SOFTWARE, AND REAGENTS) ARE LICENSED FOR RESEARCH USE
ONLY. NO IMPLIED RIGHT TO MAKE, USE, HAVE MADE, OFFER TO SELL, LEASE,
DISTRIBUTE, SELL, OR IMPORT NUCLEIC ACID PROBE ARRAYS OR ANY OTHER
PRODUCT IN WHICH AFFYMETRIX OR MOLECULAR DYNAMICS HAS PATENT RIGHTS
IS CONVEYED BY THE SALE OF PROBE ARRAYS, INSTRUMENTS, SOFTWARE, OR
REAGENTS HEREUNDER. THIS LIMITED LICENSE PERMITS ONLY THE USE OF THE
PARTICULAR PRODUCT(S) THAT THE USER HAS PURCHASED FROM AFFYMETRIX OR
LICENSED AND SOLD BY MOLECULAR DYNAMICS, OR PERMITTED LICENSEES, AND
MAY NOT BE USED IN DATABASE GENERATION FOR EXTERNAL LICENSE OR SALE,
OR FOR SERVICE BASED PHARMACEUTICAL RESEARCH.
8.2 Affymetrix warrants that the Technical Information does not infringe the
copyrights or trade secret rights of a third party, and will indemnify MD
against any claims based on the infringement of third party copyrights or
trade secret rights. THIS WARRANTY STATES THE ENTIRE LIABILITY FOR
INFRINGEMENT OF THIRD PARTY
17
INTELLECTUAL RIGHTS ARISING FROM THE SALE OF PRODUCTS UNDER THIS
AGREEMENT.
8.3 Nothing in this Agreement shall be construed as conferring any right to
use in advertising, publicity, or other promotional activities any name,
trade name, trademark, or other designation of either party hereto
without the express written approval of the other party.
8.4 Each of Affymetrix and MD represents and warrants that it neither owns or
controls any patent or patent application which would be necessary for
the other party to exercise the rights granted herein and which is not
licensed hereunder. MD and Affymetrix warrant that they each have the
full right to enter into this Agreement. Nothing in this Agreement shall
be construed as a warranty or representation by Affymetrix or MD as to
the validity or scope of any of the Patent Rights, a warranty or
representation by either party that any manufacture, sale, use, or other
disposition of the products licensed hereunder will be free from
infringement of patents, utility models, and/or design patents other than
those Patent Rights for which licenses are extended hereunder. Nothing
in this Agreement shall be considered as conferring any warranty or
representation as to the usefulness, marketability, or merchantability of
any products sold within the scope of the licenses hereunder. Affymetrix
and MD agree to hold the other harmless from any personal injury or
products liability claims made as a result of the sale of products
licensed hereunder.
8.5 The Parties will retain the terms of this Agreement in strict confidence,
except as may be required by regulatory agencies or courts, and will then
use all reasonable precautions to maintain the terms of this Agreement
confidential.
8.6 This Agreement is not assignable by MD by operation of law or otherwise
without the prior written consent of Affymetrix including in the event of
acquisition of the assets or stock of MD without the consent of
Affymetrix, which will not be unreasonably withheld, except in the case
of companies directly competitive with Affymetrix. Affymetrix may assign
this Agreement, without the prior written consent of MD, to any entity
acquiring all or substantially all of Affymetrix' Nucleic Acid Array
licensing business. No assignment of this Agreement shall be valid until
all obligations under this Agreement shall have been assumed in writing
by the assignee.
8.7 This Agreement is executed by the parties with the understanding that it
embodies the entire agreement between the parties pertaining to the
subject matter of this Agreement and there are no representations,
warranties or other commitments, written or oral, pertaining to the
subject matter of this Agreement which are not embodied in this
Agreement.
8.8 MD and Affymetrix represents that they are familiar with the Export
Administration Regulations comprising the compilation of official
regulations and policies governing the export licensing of commodities
and technical data promulgated by the United States
18
Department of Commerce, Bureau of International Commerce, Office of
Export Administration. Notwithstanding any other provisions of this
Agreement, and each assures the other that with respect to all
information and licenses furnished by or under this Agreement, that it
will comply with such official regulations.
8.9 It is understood and agreed between the parties that the Technical
Information made available to each Party shall all be provided "as is"
without any warranties, express or implied. THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE ARE EXPRESSLY
EXCLUDED FROM THIS WARRANTY AND FROM THE TERMS OF THIS CONTRACT BY
AGREEMENT OF THE PARTIES. In no event will Affymetrix or MD be liable
for lost or prospective profits or indirect or consequential damages even
if Affymetrix or MD has been advised of the possibility of such damages.
8.10 The addresses of the parties hereto for all purposes of this Agreement
shall be as follows:
Affymetrix:
Affymetrix, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
MD:
Molecular Dynamics, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
All correspondence relating to this Agreement shall be deemed to have
been duly communicated to the addressee upon the confirmed facsimile
transmission or prepaid express mailing to the party entitled thereto at
its above address or at such address as it may from time-to-time
designate in writing to the other party.
8.11 In the event that any provision of this Agreement is held invalid or
unenforceable for any reason, such unenforeceability shall not affect the
enforceability of the remaining provisions of this Agreement, and all
provisions of this Agreement shall be construed so as to preserve the
enforceability hereof.
8.12 The waiver by either Party of a breach or a default of any provision of
this Agreement by the other Party shall not be construed as a waiver of
any succeeding breach of the same or any other provision, nor shall any
delay or omission on the part of either Party to exercise
19
or avail itself of any right, power or privilege that it has or may
have hereunder operate as a waiver of any right, power or privilege by
such Party.
8.13 This Agreement is made and shall be construed in accordance with the
local laws of the State of California, U.S.A. without regard to the
doctrine of conflict of laws.
8.14 This Agreement may be executed in any number of counterparts, each of
which shall be deemed an original but all of which together shall
constitute one and the same instrument
IN WITNESS WHEREOF, the parties have respectively caused this Agreement to be
executed on the dates hereinafter indicated.
Affymetrix, Inc.
By:
---------------------------
Title:
------------------------
Date:
-------------------------
Molecular Dynamics, Inc.
By:
---------------------------
Title:
------------------------
Date:
-------------------------
20
EXHIBIT 1
AFFYMETRIX PATENT LISTING (BY AFFYMETRIX FILE NO.)
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EXHIBIT 2
MD PATENT LISTING (BY PATENT NO. OR MD FILE NO.)
[**]
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EXHIBIT 3
LICENSED SOFTWARE PACKAGES
GeneChip-Registered Trademark- System Software (current version)
GeneChip Expression Analysis Software (Cat No. 900136)
23
EXHIBIT 4
SOFTWARE LICENSE PROVISION
END-USER LICENSE AGREEMENT
IMPORTANT-READ CAREFULLY: This End-User License Agreement ("Agreement") is a
legal agreement between you and Affymetrix, Inc. ("Licensor"), the licensor of
the software products ("Software Products") accompanying the diagnostic or
analytical system ("System") you have acquired from Affymetrix or a distributor
of the System ("Distributor"). The Software Products include computer programs,
associated storage media, associated documentation, and any other information
regarding the software products listed below. If the Software Products are not
accompanied with a System, you may not use, copy or read the Software Products.
By installing, copying, reading, or otherwise using the Software Products, you
agree to be bound by the terms of this Agreement. If you do not agree to the
terms of this Agreement, Licensor is unwilling to license the Software Products
to you. In such event, you may not use, copy or Distributor for instructions on
return of the Software Products. This Agreement represents the entire agreement
concerning the Software Products between you and Licensor, and it supersedes any
prior proposal, representation, or understanding between the parties.
The Software Products are protected by copyright laws and international
copyright treaties, as well as other intellectual property laws and treaties.
The Software Products are licensed, not sold, to you by Licensor for use only
under the terms of this Agreement, and Licensor reserves any rights not
expressly granted to you.
1. License Grant. This Agreement grants to you, and you accept, a nonexclusive
license to use the Software Products. The computer programs of the Software
Products ("Computer Programs") may only be used on the System. Further, the
Computer Programs may only be used in their machine-readable, object code form.
You agree that you will not assign, sublicense, transfer, pledge, lease, rent,
or share your rights under this Agreement. You agree that you may not modify or
prepare derivative works of the Software Products. You agree that you may not
reverse engineer, decompile, disassemble, or otherwise translate the Computer
Programs. The Software Products are for RESEARCH USE ONLY. You agree not to
use the Software Products in any setting requiring FDA or other regulatory
approval.
The Computer Programs may be loaded on the System in both temporary and
permanent storage, and the associated storage media may be utilized for backup
purposes. In addition, you may make one copy of the Computer Programs on a
backup storage media for the purpose of backup. Except as authorized under this
paragraph, no copies of the Software Products or any portions thereof may be
made by you or any person under your authority or control.
2. Licensor's Rights. You acknowledge and agree that the Software Products are
proprietary products of Licensor protected under copyright and other
intellectual property laws. You further
24
acknowledge and agree that all right, title, and interest in and to the
Software Products, including associated intellectual property rights, are and
shall remain with Licensor. This Agreement does not convey to you an
interest in or to the Software Products, but only a limited right of use
revocable in accordance with the terms of this Agreement. You agree to keep
confidential and use your reasonable efforts to prevent and protect the
Software Products from unauthorized disclosure or use. LIMITED LICENSE: PROBE
ARRAYS, INSTRUMENTS, SOFTWARE, AND REAGENTS ARE LICENSED FOR RESEARCH USE
ONLY. NO IMPLIED RIGHT TO MAKE, HAVE MADE, USE, LEASE, DISTRIBUTE, OFFER TO
SELL, SELL, OR IMPORT OLIGONUCLEOTIDE PROBE ARRAYS OR ANY OTHER PRODUCT IN
WHICH AFFYMETRIX HAS PATENT RIGHTS IS CONVEYED BY THE SOFTWARE. THIS
LIMITED LICENSE PERMITS ONLY THE USE OF THE PARTICULAR PRODUCT(S) THAT THE
USER HAS PURCHASED FROM AFFYMETRIX OR ITS LICENSEES OF PARTICULAR PATENT
RIGHTS.
3. Software Products. The Affymetrix software products covered by this
Agreement include, but are not limited to, the following:
[to be added]
4. Term. This Agreement shall continue until terminated. You may terminate
this Agreement at any time by destroying all copies of the Software Products,
including the associated storage media and documentation, and erasing all copies
of the Software Products in both temporary and permanent storage on the System.
Licensor may terminate this Agreement upon the breach by you of any term hereof.
5. Limited Warranty. Licensor or its distributor warrants, for your benefit
alone, for a period of ninety (90) days from the date of commencement of this
Agreement ("Warranty Period") that the associated storage media on which the
Computer Programs reside will be free from defects in material and workmanship.
Licensor further warrants, for your benefit alone, that during the Warranty
Period the Computer Programs shall operate substantially in accordance with the
associated documentation. If during the Warranty Period, a defect in the
Computer Programs appears, you may return the Software Products to Licensor for
either replacement or, if so elected by Licensor, refund of license fees paid by
you to Distributor for use of the Software Products. TO THE MAXIMUM EXTENT
PERMITTED BY APPLICABLE LAW, AFFYMETRIX AND ITS LICENSORS EXPRESSLY DISCLAIM ALL
OTHER WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE WITH REGARD
TO THE SOFTWARE PRODUCTS. SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR
LIMITATION OF IMPLIED WARRANTIES SO THE ABOVE LIMITATION MAY NOT APPLY TO YOU.
6. Limitation of Liability. To the maximum extent permitted by applicable law,
Licensor's cumulative liability to you or any other party for any loss or
damages resulting from any claims, demands, or actions arising out of or
relating to this Agreement shall not exceed the license fees
25
paid to Distributor for the use of the Software Products. In no event shall
Licensor be liable for any incidental, consequential, special, or exemplary
damages, or indirect damages for personal injury or lost profits, even if
Licensor has been advised of the possibility of such damages. SOME
JURISDICTIONS DO NOT ALLOW THE LIMITATION OR EXCLUSION OF LIABILITY FOR
INCIDENTAL OR CONSEQUENTIAL DAMAGES SO THE ABOVE LIMITATION OR EXCLUSION MAY
NOT APPLY TO YOU.
7. Governing Law. This Agreement shall be governed by and interpreted under
the laws of California, without regard to conflict of law provisions.
8. Severability. Should any term of this Agreement be declared void or
unenforceable by any court of competent jurisdiction, such declaration shall
have no effect on the remaining terms hereof.
9. U.S. Government Restricted Rights. The Software Products and documentation
are provided with RESTRICTED RIGHTS as follows:
a. Department of Defense LicenseesThe Government's right to use,
modify, reproduce, release, perform, display, or disclose the Software Products
are restricted by paragraph (b)(3) of the Rights in Noncommercial Computer
Software and Noncommercial Computer Software Documentation clause contained in
the relevant contract between the Government and Affymetrix, Inc, ▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇. Any reproduction of the Software
Products or portions thereof marked with this legend must also reproduce the
markings. Any person, other than the Government, who has been provided access
to the Software Products must promptly notify Affymetrix.
b. Civilian Government Agency LicenseesUse, reproduction, or
disclosure is subject to restrictions set forth in the relevant contract between
the Government and Affymetrix, Inc, ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
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EXHIBIT 5
EXCUSED FABRICATION SYSTEMS
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EXHIBIT 6
DISCOUNTED ORGANISMS
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