LICENSE AND TECHNOLOGY PURCHASE AGREEMENT BETWEEN CORNING AND MULTICELL RELATING TO HEPATOCYTES
BETWEEN
CORNING AND MULTICELL RELATING TO HEPATOCYTES
In
this
Agreement, Corning Incorporated, a New York corporation, having its principal
place of business at Xxx Xxxxxxxxxx Xxxxx, Xxxxxxx, XX 00000 (hereafter
“CORNING”), and Multicell Technologies, Inc., a Delaware corporation, having its
principal place of business at 000 Xxxxxx Xxxxxxxxxx Xxxxxxx, Xxxxxxx, XX 00000
(hereafter “MULTICELL”), agree as follows:
Article
1 - Background
WHEREAS,
MULTICELL owns exclusive rights, in the form of patents, trade secrets,
know-how, information, documents, license agreements, inventory, and equipment
related to the growth, use, and propagation of immortalized hepatocytes (the
“Technology”);
WHEREAS,
CORNING is interested in acquiring exclusive rights to the Technology as it
relates to the use of immortalized hepatocytes as assay tools for drug discovery
applications, including their use for performing ADME/Tox assays;
WHEREAS,
CORNING intends to further develop and commercialize the Technology as set
forth
herein; and,
WHEREAS,
MULTICELL is interested in licensing, selling, and transferring certain of
its
rights to the Technology as set forth herein to CORNING.
NOW
THEREFORE, in
consideration of the promises and mutual covenants set forth herein, the Parties
hereto, intending to be legally bound hereby, agree as follows:
Article
2 - Definitions
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2.1
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“CORNING
Field” shall mean the use of the Technology as a drug discovery assay tool
including the use of the Technology to perform ADME/Tox
assays.
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2.2
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“Effective
Date” shall mean the date upon which the last of the parties hereto signs
this Agreement.
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2.3
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“1997
RIH-MULTICELL LICENSE” shall mean the exclusive license entered into
between MULTICELL and Rhode Island Hospital dated November 25, 1997
and
any amendments thereto listed in Attachment D hereto.
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2.4
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“Joint
Field” shall mean the use of the Technology for the identification of
therapeutic targets or biomarkers subject to the following limitations:
(i) CORNING’s rights within the Joint Field shall be limited to the
identification of biomarkers for the development of drug development
assay
tools; and, (ii) MULTICELL’s rights within the Joint Field shall be
limited to the identification of therapeutic targets for drug development.
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Corning/MCT
Sublicense Agreement
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2
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2.5
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“Licensed
Product” shall mean a product, the manufacture, use, or sale of which
would, absent this Agreement, infringe any valid claim included in
any RIH
Patent or MULTICELL Patents, or the manufacture, use or sale of which
relies in whole or in part on some or all of the RIH Know-How or
MULTICELL
Know-How.
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2.6
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“Licensed
Services” shall mean a
service, the manufacture, use, or sale of which would, absent this
Agreement, infringe any valid claim included in any RIH Patent or
MULTICELL Patents, or the manufacture, use or sale of which relies
in
whole or in part on some or all of the RIH Know-How or MULTICELL
Know-How.
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2.7
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“MULTICELL
Field” shall mean all uses and applications of the Technology outside of
the CORNING Field and the Joint Field.
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2.8
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“MULTICELL
Know-How” shall mean only that know-how owned or otherwise acquired by
MULTICELL directly related to the Technology and not part of the
RIH-MULTICELL Licenses or MULTICELL Patents.
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2.9
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“MULTICELL
Patents” shall mean only those Patents owned or otherwise acquired by
MULTICELL listed in Attachment A hereto as well as all foreign
counterparts and any patent issuing on the applications or continuations
or divisions thereof, and reissues, reexaminations, or extensions
of the
patents.
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| 2.10 | “Net Sales Price” shall mean: |
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(a)
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in
any case where any Licensed Product is sold or commercially disposed
of
for value in any arm’s length sale to an independent third party, the
gross invoice price for such Licensed Product, less the following
permitted deductions to the extent that such items are reflected
in the
price charged and do not exceed reasonable and customary amounts
in the
country in which the transaction occurs: (1) trade and quantity discounts
or rebates actually taken or allowed; (2) credits or allowances given
or
made for rejections or return of any previously sold Licensed Product
actually taken or allowed; (3) any tax or government charge (including
any
tax levied with respect to income) levied on the sale, transportation
or
delivery of the Licensed Product and born by the seller thereof;
(4) any
charges for freight or insurance billed to the final customer; and
(5)
other costs directly and exclusively related to making sales of (as
opposed to producing) the Licensed Product, in an amount not to exceed
5%
of Net Sales Price.
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(b)
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in
any case where any Licensed Product is sold, leased or otherwise
commercially disposed of (including, without limitation, disposition
in
connection with the delivery of other products or services) in a
transaction that is not an arm’s length sale to an independent third
party, the greatest of: (1) the Net Sales Price for such transaction
determined as provided in (a) above or (2) if there has been any
arm’s
length sale of a similar Licensed Product to an independent third
party,
the Net Sales Price, determined as provided in (a) above, for the
most
contemporaneous such sale or (3), if there has been no such arm’s length
sale, the gross sale asking price for the Licensed
Product.
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Corning/MCT
Sublicense Agreement
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3
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For
clarity, Net Sales Price relates to sales made by CORNING or CORNING’s
sublicensees and specifically excludes sales made by MULTICELL under Article
4.1.
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2.11
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“Party”
and “Parties” shall refer to CORNING and MULTICELL, individually and
collectively, respectively.
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2.12
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“RIH”
shall mean Rhode Island Hospital.
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2.13
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“RIH
Know-How” shall mean all know-how licensed to MULTICELL under the
RIH-MULTICELL Licenses.
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2.14
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“RIH-MULTICELL
Licenses” shall mean each of the 1997 RIH-MULTICELL LICENSE and the 2003
RIH-MULTICELL LICENSE.
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2.15
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“RIH
Patents” shall mean all Patents licensed to MULTICELL under the
RIH-MULTICELL Licenses and listed in Attachment B hereto as well
as all
foreign counterparts and any patent issuing on the applications or
continuations or divisions thereof, and reissues, reexaminations,
or
extensions of the patents.
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2.16
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“2003
RIH-MULTICELL LICENSE” shall mean the exclusive license entered into
between MULTICELL and Rhode Island Hospital dated December 9, 2003
and any
amendments thereto listed in Attachment D hereto.
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2.17
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“Term”
shall be from the Effective Date hereof to the date of expiration
of the
last to expire MULTICELL Patents, or the expiration of the term of
last to
expire of the RIH-MULTICELL Licenses, whichever is longer.
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2.18
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“Trademarks”
shall mean any and all MULTICELL trademarks, trade names or trade
dress
(registered or not) associated with the Technology within the CORNING
Field.
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Corning/MCT
Sublicense Agreement
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4
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Article
3 - Grant from MULTICELL to CORNING
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3.1
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MULTICELL
hereby grants to CORNING during the Term and within the CORNING Field:
(i)
an irrevocable exclusive worldwide license to develop, have developed,
make, have made, import, have imported, use, sell and offer to sell
Licensed Products and Licensed Services under the MULTICELL Patents
and
MULTICELL Know-How; and, (ii) an exclusive worldwide sublicense to
develop, have developed, make, have made, import, have imported,
use, sell
and offer to sell Licensed Products and Licensed Services under the
RIH
Patents and RIH Know-How. This license and sublicense shall include
the
unrestricted right to grant sublicenses within the CORNING Field
provided
that any sublicense contains relevant binding payment obligations
to RIH
as contained in each of the RIH-MULTICELL Licenses and any amendments
made
thereto as of the Effective Date.
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3.2
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MULTICELL
hereby grants to CORNING during the Term and within the Joint Field:
(i)
an irrevocable non-exclusive worldwide license to develop, have developed,
make, have made, import, have imported, use, sell and offer to sell
Licensed Products and Licensed Services under the MULTICELL Patents
and
MULTICELL Know-How; and, (ii) a non-exclusive worldwide sublicense
to
develop, have developed, make, have made, import, have imported,
use, sell
and offer to sell Licensed Products and Licensed Services under the
RIH
Patents and RIH Know-How. This license and sublicense shall include
the
unrestricted right to grant sublicenses within the Joint Field provided
that any sublicense contains relevant binding payment obligations
to RIH
as contained in the RIH-MULTICELL Licenses and any amendment made
thereto
as of the Effective Date.
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3.3
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MULTICELL
grants to CORNING for perpetuity, a, irrevocable worldwide, non-exclusive
license under the Trademarks for use in conjunction with Licensed
Products, Licensed Services and any other commercial endeavor related
to
CORNING’s use of the Technology. This license shall include the
unrestricted right to grant
sublicenses.
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3.4
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CORNING
shall have no rights within the MULTICELL Field. Nothing in this
Agreement
shall limit MULTICELL’s rights within the MULTICELL
Field.
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Article
4 - Grant from CORNING to MULTICELL
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4.1
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CORNING
hereby grants to MULTICELL during the Term, under MULTICELL Patents,
MULTICELL Know-How, RIH Patents, and RIH Know-How, within the CORNING
Field, a limited non-exclusive worldwide license to make, have made,
use,
and sell products and services under the Patents and Know-How. This
license shall be limited in scope to only allow MULTICELL to service
and
renew its present agreements (as defined in Attachment C), that exist
between MULTICELL and Eisai, Bristol Xxxxxx Squibb, and Pfizer. This
license shall also allow MULTICELL to use the Technology for advancement
of its therapeutic product candidates including but not limited to,
the
use of the Technology for performing ADME/Tox assays. This license
shall
not include the right to grant sublicenses. To the extent RIH Patents
or
RIH Know-How is required to provide products or services under this
limited license as a result of which the payment of royalties or
other
monies may be due to RIH, MULTICELL shall be wholly responsible for
making
royalty payments directly to RIH as may be required by the RIH-MULTICELL
Licenses. Nothing is this Article is intended to limit CORNING’s right to
sell, service or sublicense any entity (including those identified
above)
within the CORNING Field.
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Corning/MCT
Sublicense Agreement
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5
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4.2
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CORNING
assumes no obligation or responsibility under the agreements listed
in
Attachment C. MULTICELL shall defend, indemnify and hold harmless
Corning
from any claims, losses, damages, demands, judgment or penalties
that may
arise from or otherwise relate to the agreements identified in Attachment
C.
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4.3
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Should
MULTICELL wish to engage a third party subcontractor to perform all
or any
portion of its obligations under one or more of the agreements identified
in Attachment C (by utilizing the “have made” right from the limited
grant-back license under Article 4.1), MULTICELL shall request in
writing
approval from CORNING, such approval shall not be unreasonably withheld
by
CORNING, and such request shall be answered within fifteen (15) business
days following receipt by CORNING. In the event CORNING does not
respond
to MULTICELL’s request within fifteen (15) business days, MULTICELL shall
be free to enter into said “have made” agreement. In such request,
MULTICELL shall provide CORNING with the name of the prospective
third
party as well as evidence that the third party is under obligations
of
confidentiality no less restrictive than those established between
CORNING
and MULTICELL to protect the licensed MULTICELL Know-How and RIH
Know-How.
The request shall be addressed to Xx. Xxxxxxx Xxxxxx, or current
Research
Director, Biochemical Technologies.
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Article
5 - Physical Asset Acquisition
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5.1
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Upon
execution of this Agreement, MULTICELL shall transfer all right,
title,
and interest, including ownership interest, in each of the following
to
CORNING:
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(a)
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Sixty-seven
percent (67%) of the inventory of immortalized Fa2N-4 human hepatocyte
cells used by MULTICELL for sale as part of its ADME/Tox
kit.
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(b)
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Copies
of all scientific notebooks, media formulations, manufacturing procedures,
quality control and quality assurance procedures, raw material, WIP,
finished goods inventories, and customer lists in the possession
or
control of MULTICELL that may be necessary for CORNING to practice
Technology within the CORNING Field. CORNING shall be responsible
for
producing these copies. If for whatever reason, it is necessary for
MULTICELL to produce the copies, the cost of providing copies of
all such
material be at the sole expense of CORNING and shall not exceed customary
market prices for copying services, as provided by vendors such as
Kinko’s.
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Corning/MCT
Sublicense Agreement
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6
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(c)
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The
equipment listed in Attachment E.
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5.2
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Other
Cell Lines.
MULTICELL and CORNING agree to divide MULTICELL’s remaining cell line
inventory not divided according to the terms set forth in Section
5.1(a)
herein on an equal basis.
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Article
6 - Transition Period
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6.1
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At
CORNING’s request, MULTICELL agrees to maintain its existing Rhode Island
facility at 000 Xxxxxx Xxxxxxxxxx Xxxxxxx, Xxxxxxx, XX 00000 for
up to
four (4) months from the Effective Date (“Transition Period”) to allow
CORNING an opportunity to package and ship the assets listed in Article
5
to a CORNING designated facility. At no time during the Transition
Period
shall CORNING undertake any other activity within MULTICELL’s Rhode Island
facility other than the packaging and shipping of the assets listed
in
Article 5 to a CORNING designated
facility.
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6.2
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During
the Transition Period, MULTICELL shall retain all responsibility
for costs
and obligations associated with maintaining the Rhode Island facility
including utilities, insurance, rent, etc.
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6.3
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During
the Transition Period and prior to CORNING’s initiation of packing
activities, MULTICELL shall assume all responsibility for the assets
listed in Article 5, including risk of loss, during the storage of
the
subject assets at MULTICELL’s Rhode Island facility. Once CORNING
initiates packaging activities with respect to any individual asset,
it
shall take physical possession of that asset and assume all responsibility
including risk of loss during the packaging and transport of the
respective asset from MULTICELL’s Rhode Island facility to CORNING’s
designated facility.
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6.4
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The
Transition Period is considered to be complete once all of the specified
assets listed in Article 5 have been loaded into CORNING provided
shipping
containers and transport vehicles by CORNING employees, consultants,
contractors or agents (hereinafter “CORNING Personnel”). Notwithstanding
the foregoing, the Transition Period shall not exceed four (4) months
in
duration unless otherwise mutually agreed to in writing by the
Parties.
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6.5
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CORNING
Personnel shall have access to MULTICELL’S Rhode Island facility
throughout the Transition Period only during MULTICELL’S normal business
hours. All CORNING Personnel shall (i) comply with all MULTICELL
Rhode
Island facility safety and workplace regulations, (ii) inform MULTICELL’s
Rhode Island facility Office Manager upon entry to and departure
from the
facility, and (iii) at all times conduct themselves in a professional
manner similar to if they were working at a CORNING facility. In
the event
CORNING Personnel are injured while working at MULTICELL’s Rhode Island
facility during the Transition Period, CORNING shall be solely responsible
for, and shall indemnify and hold MULTICELL harmless against, any
and all
claims of Worker’s Compensation or any other claims resulting from
injuries sustained by CORNING Personnel while at MULTICELL’s Rhode Island
facility.
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Corning/MCT
Sublicense Agreement
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7
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6.6
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MULTICELL
shall support and assist CORNING during the Transition Period in
order to
effectuate a timely and ordered transition, provided however, such
support
and assistance shall not include MULTICELL providing packaging and
shipping materials, or providing its personnel to assist with the
physical
packaging and shipping of the assets listed in Article
5.
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Article
7 - Consideration
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7.1
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In
consideration of the licenses granted in Article 3, CORNING shall
pay to
MULTICELL (i) three
hundred and seventy -five thousand
U.S. Dollars (US $375,000) upon execution of this Agreement, and
(ii) an
additional three
hundred and seventy -five thousand
U.S. Dollars (US $375,000) upon the completion of the Transition
Period.
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7.2
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In
accordance with MULTICELL’s obligations under each RIH-MULTICELL License,
CORNING shall pay to Rhode Island Hospital a royalty as a percentage
of
the Net Sales Price according to the terms and conditions set forth
in the
RIH-MULTICELL Licenses. In addition, CORNING hereby agrees (i) to
be bound
by the following Sections of the 1997 RIH-MULTICELL LICENSE: 3.2,
3.3, 3.4, 3.5, 4.2, 5.1 and 6.1 and (ii) to be bound by the following
Sections of the 2003 RIH-MULTICELL LICENSE: 3, 4.4, 4.5, 4.6, 6.1,
6.2,
6.3, 9 and 11. CORNING assumes no obligations under the RIH-MULTICELL
LICENSES which precede the Effective Date.
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7.3
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MULTICELL
shall defend, indemnify and hold harmless Corning from any and all
claims
that may be asserted by Rhode Island Hospital arising from or otherwise
related to the RIH License, other than claims for royalties owed
arising
from Corning’s sale of Licensed Products and Licensed Services but only to
the extent specifically calculable pursuant to Article 7.2.
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7.4
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For
the sale of the assets referenced in Article 5.1 and 5.2 and listed
in
Attachment E, CORNING shall pay to MULTICELL $69,837.50. Fifty percent
(50%) of this amount shall be due upon execution of this Agreement,
and
the remainder due upon the conclusion of the Transition
Period.
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7.5
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CORNING
shall pay to MULTICELL, a monthly fee of $25,000 (“Transition Fee”) for
MULTICELL to maintain the Rhode Island facility during the Transition
Period. The first month of the Transition Period shall begin on the
Effective Date, and the Transition Fee payment shall be due and payable
NET 15 days after receipt by Corning of Multicell’s Transition Fee invoice
for the respective prior period. There is no requirement that CORNING
utilize the facility for all four (4) months, and CORNING is obligated
to
pay MULTICELL the Transition Fee for only so long as the Transition
Period
lasts. In any month where the Transition Period does not constitute
an
entire month, the Transition Fee paid by CORNING shall be prorated
and
paid on a daily basis for said
month.
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Corning/MCT
Sublicense Agreement
|
8
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Article
8 - Term and Termination
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8.1
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This
Agreement shall be effective on the Effective Date and shall last
for the
Term.
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8.2
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This
Agreement may be terminated by either party, if the other party materially
breaches any of the material terms, covenants or provisions of this
Agreement, such termination to be effected by giving written notice
of
intent to terminate to the breaching party stating the grounds therefore.
The party receiving the notice shall have ninety (90) days thereafter
to
correct such breach. If such breach is not corrected within said
ninety
(90) days after notice as aforesaid, then this Agreement shall
automatically terminate.
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8.3
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The
following Articles of this Agreement shall survive the expiration
or
earlier termination of this Agreement for any reason whatsoever:
Articles
2.1 through 2.18, Article 4.2, the indemnification right/obligation
set
forth in Article 7.2; Articles 9.1, 9.2 and 9.3, and Articles 14.2
through
14.13.
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Article
9 - Warranty
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9.1
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MULTICELL
represents and warrants that it owns or controls the exclusive right
to
the Technology, that it has been duly and properly authorized and
empowered to enter into this Agreement, that it is not a party to
any
existing assignments, grants, licenses, encumbrances, obligations
or
agreements, written or oral, inconsistent with this Agreement that
would
impede CORNING’s right to practice the Technology as and to the extent
anticipated in this Agreement, or that would impede MULTICELL’s ability to
fully perform all obligations assumed by it in this Agreement; that
it has
good and marketable title to the assets referenced in Articles 5.1(a),
5.1(b), 5.1(c) and 5.2 free and clear of all liens, claims, charges
or
other encumbrances; and that it has no actual knowledge of the invalidity
or unenforceability of any patent or patent claim in MULTICELL Patents
or
RIH Patents. MULTICELL shall defend, indemnify and hold harmless
CORNING
from any and all damages, liabilities, costs or other expenses that
CORNING may suffer or incur as a result of breach of any representation
or
warranty provided by MULTICELL in this Article
9.1.
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9.2
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Other
than as provided in Article 9.1, neither MULTICELL nor CORNING make,
and
hereby specifically disclaim, any representations or warranties of
any
kind, whether express or implied, with respect to the MULTICELL Patents
and RIH Patents including, but not limited to, warranties of
merchantability, fitness for a particular purpose, validity of, or
that
the use of said patents or the Licensed Product or the Licensed Services
will not infringe the intellectual property of any third
party.
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Corning/MCT
Sublicense Agreement
|
9
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9.3
|
CORNING
represents and warrants that it has been duly and properly authorized
and
empowered to enter into this Agreement, that it is not a party to
any
existing assignments, grants, licenses, encumbrances, obligations
or
agreements, written or oral, inconsistent with this Agreement. CORNING
shall defend, indemnify and hold harmless MULTICELL from any and
all
damages, liabilities, costs or other expenses that MULTICELL may
suffer or
incur as a result of breach of any representation or warranty provided
by
CORNING in this Agreement.
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Article
10 - Patent Prosecution and Maintenance
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10.1
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MULTICELL
shall be fully responsible for payment of maintenance fees for MULTICELL
Patents and RIH Patents. To the extent prosecution is ongoing for
any of
the subject patents, MULTICELL shall control such strategy. However,
should CORNING’s rights hereunder be materially affected by such strategy,
MULTICELL agrees to inform CORNING in an advanced writing of the
issue and
shall allow CORNING to provide assistance and input. No reasonable
input
shall be withheld. Any expenses and costs associated with the prosecution
and maintenance of the subject patents shall be paid by MULTICELL.
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| 10.2 | Should MULTICELL elect to forego maintenance payments or abandon prosecution under any of the MULTICELL PATENTS, it shall first notify CORNING thirty (30) days in advance of such relinquishment of rights so that CORNING may elect to assume payments or prosecution. In such case, MULTICELL shall assign all rights to such MULTICELL Patents to CORNING and CORNING shall assume all costs and decisions with respect to such patents. |
| 10.3 | Should MULTICELL elect to forego maintenance payments or abandon prosecution under any of the RIH PATENTS, it shall first notify CORNING thirty (30) days in advance of such relinquishment of rights so that CORNING may elect to assume payments or prosecution. In such case, MULTICELL shall assign all rights to such RIH Patents under the RIH-MULTICELL License to CORNING and CORNING shall assume all costs and decisions with respect to such RIH Patents. |
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Corning/MCT
Sublicense Agreement
|
10
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Article
11 - Assignment
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11.1
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This
Agreement may not be assigned, pledged, encumbered or transferred
without
the written approval of the other Party except that either Party
may
assign the Agreement and all rights and obligations hereunder (i)
in
conjunction with the sale of substantially all of the assets of their
corporation or the respective business associated with this Agreement,
or
(ii) to an affiliate or majority owned subsidiary of the
Party.
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Article
12 - Enforcement/Improvements
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12.1
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Enforcement.
In the case of any infringement of any MULTICELL Patent or RIH Patent
or
any violation of any other intellectual property right contained
in the
CORNING Field by any third party (an “Infringer”) during the Term of this
Agreement, CORNING shall have the right but not the obligation, at
CORNING’s expense, to cause such third party to cease such infringement
and to otherwise enforce such patents or such other intellectual
property
right. MULTICELL shall assist as reasonably requested, at CORNING’s
expense, in taking any such action against any such Infringer including
joining as a party to a suit. Any amount recovered as a result of
any
action taken by CORNING hereunder shall be retained by CORNING. This
paragraph shall survive the termination or expiration of this
Agreement.
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12.2
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Improvements.
Each Party shall be the sole owner of their own improvements to the
Technology made after the Effective date and no license to such
improvements shall convey to the other Party. As an example, it is
recognized that
biomarkers can evolve into therapeutic targets and that therapeutic
targets can evolve into biomarkers, and therefore, either party will
have
sole rights to evolve their proprietary biomarkers or drug targets
within
the Joint Field into the other.
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Article
13 -Non-Compete
|
13.1
|
Non-Compete.
Multicell is aware that CORNING intends to hire as CORNING employees
two
(2) former employees of MULTICELL who have certain expertise in growing,
using and proliferating the cell lines of interest in this transaction.
Due to the unique skills possessed by these individuals, MULTICELL
hereby
agrees not to extend any offer of employment to Xx. Xxx Xxxxx or
Dr. Xxx
Xxx for a period of three (3) years after the Effective
Date.
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|
Corning/MCT
Sublicense Agreement
|
11
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Article
14 - Miscellaneous
|
14.1
|
A
waiver of any breach of any provision of this Agreement shall not
be
construed as a continuing waiver of other breaches of the same or
other
provisions of this Agreement.
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14.2
|
MULTICELL
and CORNING agree to maintain the financial terms, but not the existence
of this Agreement, in confidence except as (a) may be required by
either
Party to enforce any provision of this Agreement, (b) as otherwise
may be
ordered by a court of competent jurisdiction, (c) as may be necessary
in
connection with financial and legal reporting activities, or (d)
as may be
necessary for disclosure to a potential purchaser of all or a portion
of
the assets associated with the Party’s business to which this Agreement
relates (in such instance, the disclosure shall be made only under
terms
of a confidentiality agreement). Should a Party need to make a disclosure
under (a)-(c) above, that Party shall provide notice to the other
Party at
least fifteen (15) days prior to such
disclosure.
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|
14.3
|
Nothing
herein shall be deemed to create an agency, joint venture, or partnership
relation between the Parties.
|
|
14.4
|
With
the exception of the NDA entered into between the Parties on March
2,
2007, this Agreement constitutes the entire agreement and understanding
of
the Parties with regard to the subject matter hereof and merges and
supersedes all prior discussions, negotiations, understandings and
agreements between the Parties concerning the subject matter hereof.
Neither Party shall be bound by any definition, condition, warranty,
right, duty, or covenant other than as expressly stated in this Agreement,
or as subsequently set forth in a written document signed by both
Parties.
Each Party expressly waives any implied right or obligation regarding
the
subject matter hereof.
|
|
14.5
|
This
Agreement shall be interpreted and construed, and the legal relations
created herein shall be determined, in accordance with the laws of
the
State of New York (excluding conflict of laws) and the United States
and
exclusive jurisdiction for any litigation proceedings arising under
or
otherwise related to this Agreement shall be in Federal District
Court
located in the Western District of New
York.
|
|
14.6
|
This
Agreement may be amended only by a written document signed by authorized
representatives of both Parties.
|
|
14.7
|
Each
Party agrees to execute, acknowledge and deliver all such further
instruments, and to do all such further acts, as may be necessary
or
appropriate to carry out the intent and purposes of this
Agreement.
|
|
Corning/MCT
Sublicense Agreement
|
12
|
|
14.8
|
The
headings contained in this Agreement are for reference purposes only
and
shall not affect in any way the meaning or interpretation of this
Agreement. Except where the context requires otherwise, whenever
used the
singular includes the plural, the plural includes the singular, and
the
term “including” or “includes” means including, without limiting the
generality of any description preceding that term. The wording of
this
Agreement shall be deemed wording mutually chosen by the parties
and no
rule of strict construction shall be applied against either
party.
|
|
14.9
|
Should
any part or provision of this Agreement be held unenforceable or
in
conflict with the law of any jurisdiction, the validity of the remaining
parts or provisions shall not be affected by such holding. In the
event a
part or provision of this Agreement held unenforceable or in conflict
with
law affects consideration to either Party, the Parties agree to negotiate
in good faith amendment of such part or provision in a manner consistent
with the intention of the Parties as expressed in this
Agreement.
|
|
14.10
|
Neither
Party shall be responsible or liable to the other Party for nonperformance
or delay in performance of any terms or conditions of this Agreement
due
to acts or occurrences beyond the control of the non-performing or
delayed
Party, including but not limited to, acts of God, acts of government,
wars, riots, strikes or other labor disputes, shortages of labor
or
materials, fires and floods, provided the non-performing or delayed
Party
provides to the other Party written notice of the existence and the
reason
for such nonperformance or delay. The nonperformance or delay of
a Party
in excess of one hundred eighty (180) days shall constitute cause
for
termination of this Agreement by written notice to the non-performing
or
delayed Party.
|
|
14.11
|
(a)
|
Except
as contemplated in Article 4.3, any and all notices or other
communications required or permitted by this Agreement or by law
to be
served on or given to either Party hereto by the other Party shall
be in
writing and delivered or sent to:
|
| CORNING: |
Corporate
Secretary
Corning
Incorporated
Xxx
Xxxxxxxxxx Xxxxx
Xxxxxxx,
XX 00000
|
|
| With a copy to: |
IP
Agreement Coordinator
Corning
Incorporated
XX
Xxxxxxxxxx
XX-XX-00-00
Xxxxxxx,
XX 00000
|
|
Corning/MCT
Sublicense Agreement
|
13
|
| MULTICELL: |
President
& CEO
000
Xxxxxx Xxxxxxxxxx Xxxxxxx
Xxxxxxx,
XX 00000
|
Each
Party may change its address for purposes of this Agreement by written notice
to
the other Party.
|
(b)
|
All
notices or other communications shall be deemed duly served and given
on
the date when personally delivered to the Party to whom it is directed,
when transmitted electronically by telex or facsimile, or when deposited
in the United States mail, first class, postage prepaid, and addressed
to
the Party at the address in Article 14.11
(a).
|
|
14.12
|
This
Agreement shall be executed by each Party in duplicate originals,
each of
which shall be deemed an original, but both originals together shall
constitute only one and the same
instrument.
|
|
14.13
|
Attached
hereto as Attachment F is a letter of mutual understanding between
RIH,
MULTICELL, and CORNING. CORNING and MULTICELL each acknowledge and
agree
that, in consideration of the execution and delivery of the letter
of
mutual understanding by RIH, which letter is acknowledged and agreed
to be
of benefit to both CORNING and MULTICELL and to be executed by RIH
in
reliance upon its status as a third-party beneficiary hereunder,
RIH shall
be a third-party beneficiary of CORNING’s covenants and agreements
contained in Section 7.2, and shall have the right at its option
to
enforce such covenants and agreements directly on its own behalf
in the
event of any breach by CORNING.
|
[REMAINDER
OF PAGE INTENTIONALLY LEFT BLANK]
IN
WITNESS WHEREOF, the Parties have executed this Agreement in duplicate on the
signature page hereof.
|
CORNING
INCORPORATED
|
MULTICELL TECHNOLOGIES, INC. | ||||
| By: | By: | ||||
|
Xxxxxxx
Xxxxx, Ph.D.
|
|||||
| Title: | Title: | President & CEO | |||
| Date: | Date: | ||||
Sponsor: X. Xxxxxxxx
Accepted
and approved solely for purposes of Section 14.13:
RHODE
ISLAND HOSPITAL
| By: | ||
| Name: | ||
| Title: |
ATTACHMENT A
MULTICELL
PATENTS
|
Title
|
Country
/ Region
|
Serial
Number
|
|
Use
of cell lines to
produce active therapeutic proteins |
United
States
|
10/574,167
|
|
Australia
|
0000000000
|
|
|
Canada
|
2,541,380
|
|
|
Europe
|
04794573.8
|
|
|
Israel
|
000000
|
|
|
Xxxxx
|
2006-534388
|
|
|
India
|
0000/XXXXX/0000
|
|
|
Xxxxxxxxx
|
200602287-5
|
|
|
World
|
PCT/US2004/033260
|
|
|
Immortalized
Hepatocytes
|
United
States
|
10/574,163
|
|
Australia
|
2004322811
|
|
|
Canada
|
2550452
|
|
|
Europe
|
00000000.6
|
|
|
Japan
|
2007-506132
|
|
|
Singapore
|
200602290-9
|
|
|
World
|
PCT/US04/33091
|
|
|
Immortalization
of
Hepatocytes Using a Virus |
World
|
WO
2006/041488 A1
|
ATTACHMENT
B
RIH
PATENTS
|
Title
|
Country
/ Region
|
Serial
Number
|
|
Isolation
and culture
of Porcine Hepatocytes |
United
States
|
6,017,760
|
|
Europe
|
96928928.9
|
|
|
World
|
XXX/XX00/000000
|
|
|
Xxxxxxxxxxxx
Xxxxxxxxxxx |
Xxxxxx
Xxxxxx
|
5,869,243
|
|
United
States
|
6,107,043
|
|
|
Canada
|
2247939
|
|
|
Europe
|
97908020.7
|
|
|
World
|
XXX/XX00/00000
|
|
|
Xxxxx
Xxxx Xxxx
|
Xxxxxx
Xxxxxx
|
6,129,911
|
|
United
States
|
6,872,389
|
|
|
United
States
|
09/743,544
|
|
|
Canada
|
2336958
|
|
|
Europe
|
00000000.9
|
|
|
Japan
|
2000-559223
|
|
|
World
|
PCT/US99/15625
|
ATTACHMENT
C
PFIZER,
BMS, AND EISAI AGREEMENTS
ATTACHMENT
D
RIH-MULTICELL
LICENSES,
AMENDMENT
1; AMENDMENT 2
ATTACHMENT
E
EQUIPMENT
LIST
|
MCT
#
|
|
Model
#
|
Serial
#
|
|
|
E
|
98-7
|
Corning
Hot Plate
|
PC
101
|
L-113-6
|
|
E
|
98-13
|
Precision
Water Bath
|
188
|
10AZ-6
|
|
E
|
98-20
|
Glas-Col
Tissue Homogenizer
|
|
264611
|
|
E
|
98-35
|
Corning
PH Meter
|
430
|
3616
|
|
E
|
98-39
|
Hybaid
Hybridization Oven
|
H-9360
|
7A040006-1
|
|
E
|
98-40
|
Whatman
Ultrasonic Processor
|
GE50T
|
16625D
|
|
E
|
00-00
|
Xxxxx
Xxxxxxxxxxx Microscope
|
Axiovert
10
|
|
|
E
|
98-53
|
Xxxxxxxx
Blue M Water Bath
|
WB-1120A
|
9306-15
|
|
E
|
98-58
|
Precision
Convection Incubator
|
|
0000-000
|
|
X
|
00-00
|
XXX
Tabletop Centrifuge
|
IM221
|
0000
|
|
X
|
00-00
|
Xxx-Xxx
Power Supply
|
1000/500
|
00000
|
|
X
|
00-000
|
Xxx-Xxx
Power Supply
|
PowerPac
300
|
282BR09153
|
|
E
|
98-129
|
BioRad
Mini Protean II Cell
|
|
125BR075757
|
|
E
|
98-130
|
BioRad
Mini Trans Blot Cell
|
|
153BR26100
|
|
E
|
00-137
|
Xxxxxx
Stirrer
|
|
005N0690
|
|
E
|
00-138
|
Xxxxxx
Stirrer
|
|
005N0747
|
|
E
|
00-000
|
Xxxxxxxxx
Microcentrifuge
|
5415C
|
93862
|
|
E
|
00-153
|
Kenmore
-20 Upright Freezer
|
|
|
|
E
|
00-162
|
Xxxxxx
Stirrer / Hotplate
|
|
904N1197
|
|
E
|
00-000
|
Xxxxxx
Xxxxxx TPM Pump
|
|
03643410P0
|
|
E
|
00-000
|
Xxxxxxxxx
Microcentrifuge
|
5415D
|
00000
|
|
X
|
00-000
|
Xxxxxx
Electrophoresis System
|
XXXXX0000
|
|
|
X
|
00-000
|
Xxxxxxxxxxxxxxxx
|
XXXX-000
|
001N0089
|
|
E
|
00-181
|
Electrophoresis
Analysis System
|
EDAS-290
|
ETK01901899
|
|
E
|
00-182
|
Electrophoresis
Analysis System
|
EDAS-290
|
EKT02703617
|
|
X
|
00-000
|
Xxxx-Xxx
Xxxxxxx
|
|
000000
|
|
E
|
04-186
|
Biorad
SmartSpec Spectrophotometer
|
|
273
BR 01856
|
|
E
|
04-187
|
MJ
Research DNA Cycler
|
|
AL074819
|
|
X
|
00-000
|
Xxxxx
Xxxxxxx Shaker
|
|
|
|
E
|
05-199
|
Sanyo
Cell Culture Incubator
|
MCO-20AIC
|
600100867
|
ATTACHMENT
F
RHODE
ISLAND HOSPITAL, MULTICELL TECHNOLOGIES, CORNING
LETTER
OF MUTUAL UNDERSTANDING
