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CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
EXHIBIT 10.26
TECHNOLOGY ACCESS AND
APPLICATIONS DEVELOPMENT AGREEMENT
This TECHNOLOGY ACCESS AND APPLICATIONS DEVELOPMENT AGREEMENT
("Agreement") dated as of March 24, 2000 (the "Effective Date") is entered into
by and between MILLENNIUM PHARMACEUTICALS, INC. having an address at 75 Sidney
Street, Cambridge, Massachusetts 02139 ("MPI") and CALIPER TECHNOLOGIES CORP.
having offices at 605 Fairchild Drive, Mountain View, California 94043-2234
("Caliper").
RECITALS
WHEREAS, MPI has developed a proprietary technology platform with
applications in genomics-based drug discovery processes, including target
identification and validation and other drug development and commercialization
activities, which is used by MPI and its Affiliates to pursue multiple business
opportunities in the discovery, development and commercialization of
life-science based products and services;
WHEREAS, Caliper has developed proprietary microfluidic technologies
applicable to genomics, high throughput screening and other drug discovery
applications;
WHEREAS, Caliper has made such microfluidic technologies, in particular,
screening products, available to companies through its Technology Access
Program; and
WHEREAS, Caliper and MPI desire to implement new and existing
microfluidic systems at MPI and to establish programs to develop new
genomics-based and other applications based on Caliper's technologies.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1 "AFFILIATE" shall mean, with respect to a party, any other Person
that directly, or indirectly through one or more intermediaries, controls, is
controlled by or is under common control with such party. For purposes of this
Agreement, "control" and, with correlative meanings, the terms "controlled by"
and "under common control with" shall mean (a) the possession, directly or
indirectly, of the power to direct the management or policies of a Person,
whether through the ownership of voting securities, by contract or otherwise, or
(b) the ownership, directly or indirectly, of at least fifty percent (50%) (or,
if less, the maximum ownership interest permitted by law) of the voting
securities or other ownership interest of a Person.
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1.2 "APPROVED NAP PLAN" shall mean a Development NAP Plan approved
pursuant to Section 3.3.
1.3 "ASSAY DATA" shall have the meaning specified in Section 5.3.
1.4 "CALIPER KNOW-HOW" shall mean all discoveries, materials,
techniques, procedures, data, trade secrets and other technical information
which Caliper or its Affiliates (a) own or control, or in which Caliper or its
Affiliates have an interest that they are not legally or contractually
prohibited from licensing or sublicensing to MPI or its Affiliates, and (b)
treat as confidential or proprietary, as of the Effective Date or at any time
thereafter. Caliper Know-How does not include Caliper Patents.
1.5 "CALIPER PATENTS" shall mean any and all Patents which Caliper or
its Affiliates own or control, or in which Caliper or its Affiliates have an
interest that they are not legally or contractually prohibited from licensing or
sublicensing to MPI or its Affiliates, as of the Effective Date or at any time
thereafter.
1.6 "CALIPER PRODUCT SOFTWARE" shall mean any software in Object Code
Form and in Source Code Form, any accompanying documentation and [ * ] that (a)
(i) is owned or controlled by Caliper or its Affiliates, or (ii) is in-licensed
from third parties by Caliper or its Affiliates subject to any applicable
license restrictions, or (iii) is licensed to Caliper pursuant to Section
3.1.2(b)(iii), and (b) is designed for use in or otherwise included in Products
or prototypes sold or otherwise transferred by Caliper to MPI pursuant to this
Agreement or purchase orders submitted hereunder.
1.7 "CALIPER REAGENTS" shall mean any buffer, dye or other material
owned or controlled by Caliper or its Affiliates, or in which Caliper or its
Affiliates have an interest that they are not legally or contractually
prohibited from licensing or sublicensing to MPI, that is provided by Caliper
for use in a Chip. Caliper Reagents shall not include any MPI Materials.
1.8 "CALIPER SOFTWARE COPYRIGHTS" means any and all copyrights which
Caliper or its Affiliates own or control, or in which Caliper or its Affiliates
have an interest that they are not legally or contractually prohibited from
licensing or sublicensing to MPI or its Affiliates, with respect to Caliper
Product Software or, to the extent owned by Caliper or its Affiliates, the NAP
Program Software.
1.9 "CALIPER TECHNOLOGY" shall mean, collectively, the Caliper Patents,
the Caliper Know-How and the Caliper Software Copyrights.
1.10 "CHIP" shall mean a chip offered by Caliper or its Affiliates to
perform microfluidic or miniaturization experimentation utilizing Caliper
Technology.
1.11 "CONFIDENTIAL INFORMATION" of a party shall mean all information
and know-how and any tangible embodiments thereof provided by such party to the
other party either in connection with the discussions and negotiations
pertaining to this Agreement or in the course of performing this Agreement
(including, without limitation, data; knowledge; practices; processes; ideas;
research plans; engineering designs and drawings; research data; manufacturing
processes
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[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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and techniques; scientific, manufacturing, marketing and business plans; and
financial and personnel matters relating to the disclosing party or to its
present or future products, sales, suppliers, customers, employees, investors or
business), which information, know-how and tangible embodiments are reasonably
considered to be proprietary and confidential by the disclosing party and are
designated as confidential in writing by the disclosing party, whether by letter
or by the use of an appropriate stamp or legend, prior to or at the time any
such information, know-how or tangible embodiment is disclosed by the disclosing
party to the other party. Notwithstanding the foregoing, information or know-how
that is orally, electronically or visually disclosed by a party, or is disclosed
in writing or in some other tangible embodiment without an appropriate letter,
stamp or legend, shall constitute Confidential Information of a party (a) if the
disclosing party, within thirty (30) days after such disclosure, delivers to the
other party a written document or documents describing the information, or
know-how or other material and referencing the place and date of such oral,
visual, electronic or other disclosure and the names of the persons to whom such
disclosure was made, or (b) such information or know-how is of the type that is
customarily considered to be confidential information by persons engaged in
activities that are substantially similar to the activities being engaged in by
the disclosing party (including, without limitation, software source code).
Notwithstanding the foregoing, information or know-how shall not be deemed
Confidential Information for purposes of this Agreement if such information or
know-how:
1.11.1 was already known to the receiving party or its Affiliates,
other than under an obligation of confidentiality or non-use, at the time of
disclosure by the disclosing party;
1.11.2 was generally available or known to Persons reasonably
skilled in the field to which such information or know-how pertains, or
otherwise part of the public domain, at the time of its disclosure to the
receiving party;
1.11.3 became generally available or known to Persons reasonably
skilled in the field to which such information or know-how pertains or otherwise
part of the public domain after its disclosure to the receiving party through no
fault of the receiving party;
1.11.4 was disclosed to the receiving party or its Affiliates, other
than under an obligation of confidentiality or non-use, by a third party who had
no obligation to the disclosing party not to disclose such information or
know-how to others; or
1.11.5 was independently discovered or developed by the receiving
party or its Affiliates, as evidenced by their written records, without the use
of Confidential Information belonging to the disclosing party.
For purposes of this Agreement, MPI-Related Inventions and Assay
Data, and all information or know-how with respect thereto, shall be deemed to
be Confidential Information of MPI, and all LabChip Improvements, and
information and know-how with respect thereto, that are assigned to Caliper
pursuant to Section 5.2.1(a) shall be deemed to be Confidential Information of
Caliper.
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[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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1.12 "CONTRACT QUARTER" shall mean each successive period of three
consecutive months in a Contract Year commencing from the 24th day of the first,
fourth, seventh and tenth months of such Contract Year.
1.13 "CONTRACT YEAR" shall mean a period of one year commencing from the
Effective Date or any anniversary of the Effective Date.
1.14 "CORE TECHNOLOGY DEVELOPMENT FUNDING PAYMENT" shall have the
meaning specified in Section 4.1.1.
1.15 "DEVELOPMENT NAP PLAN" shall mean the detailed plan and budget for
the development and commercialization of each NAP System, agreed to by the
parties pursuant to Section 3.3 that sets forth:
1.15.1 The features or specifications for each NAP Product to be
included in such NAP System;
1.15.2 The activities to be performed by each party with respect to
the development of such NAP System and any deliverables in connection therewith;
1.15.3 A detailed timeline for the completion of such activities and
the delivery of such deliverables;
1.15.4 A budget with respect to such development activities that
sets forth the FTEs to be committed and other costs to be incurred by each party
with respect to the development of such NAP System and the allocation of any
third party costs related to the project;
1.15.5 A schedule of all development systems, materials, Chips,
Instruments, Reagents, and other Products required to complete the development
of such NAP System and any cost to each party thereof;
1.15.6 Caliper's good faith estimate of the price to MPI and its
Affiliates with respect to each NAP Product included in the NAP System [ * ]
with respect to such NAP Products;
1.15.7 A written agreement with respect to any (a) MPI Materials,
(b) MPI Software, and (c) any other intellectual property of MPI to which rights
are not expressly granted to Caliper hereunder (collectively, "Excluded MPI
Property"), that is necessary to develop or commercialize such NAP System, which
sets forth the specific terms and conditions on which any such Excluded MPI
Property shall be included in a NAP Product; provided, however, that no such
Excluded MPI Property shall be included in any NAP System and no rights shall be
granted to Caliper or its Affiliates with respect thereto under a Development
NAP Plan or this Agreement, unless and until such Development NAP Plan has
received review by MPI and has been executed by the Vice President of Research
and Technology Operations of MPI or such other officer as he or she may
designate; and provided further that MPI shall have no obligation to enter into
any such agreement and Caliper shall have no obligation to execute a Development
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[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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NAP Plan with respect to any NAP System that requires Excluded MPI Property in
the absence of such an agreement;
1.15.8 An express acknowledgement that each party is obligated to
proceed with the development and commercialization of each NAP Product
comprising such NAP System subject to Section 3.5.2, or such other provisions as
the Vice President of Research and Technology Operations of MPI and the Vice
President of Science and Technology of Caliper, or their respective designees,
may approve with respect to the termination of a Development NAP Plan and the
rights and obligations of the parties with respect thereto; and
1.15.9 such other matters as the parties determine to be appropriate
with respect to such NAP System.
1.16 FEASIBILITY NAP PLAN" shall have the meaning set forth in Section
3.3.2.
1.17 "FTE" (full-time equivalent) shall mean one or more MPI person(s)
or Caliper person(s), as applicable, whether employees, contractors or
consultants, with expertise with respect to the technology development
activities of the type contemplated by this Agreement, and who is working on
Program activities under this Agreement for the equivalent of one full-time
employee's time (assuming a 40 hour work week). FTE shall not include [ * ].
1.18 "INSTRUMENT" shall mean the hardware component(s) of a system other
than a Chip offered by Caliper or its Affiliates utilizing Caliper Technology.
1.19 "LABCHIP ASSAY" shall mean (a) an assay for the analysis,
detection, identification or verification of, or the performance of other
reactions and interactions with respect to, genes, gene fragments, gene
sequences, probes, DNA, RNA, cDNA libraries, proteins, peptides, protein
fragments, plasmids, vectors, expression systems, cells, cell lines, organisms,
antibodies, biological substances, and any constituents, progeny, mutants,
derivatives or replications thereof or therefrom, reagents, chemical compounds,
or any other compounds or material for use in human, animal or agricultural
applications, and (b) with respect to MPI, the performance of such other
processes or procedures as MPI or its Affiliates may from time to time conduct
in connection with a Program or otherwise, in each case that is performed on a
Chip. LabChip(R) is a registered Caliper trademark but is printed without the
registration mark in this Agreement for convenience.
1.20 "LABCHIP IMPROVEMENTS" shall mean all inventions (whether or not
patentable), discoveries, techniques, procedures, trade secrets and other
technical information (and any Patents claiming the foregoing) that (a) are
conceived and reduced to practice by MPI or its Affiliates, solely or jointly
with others, in connection with (i) the development of LabChip Assays for
Screening under the sTAP during the Term or (ii) the development of NAP Systems
under a NAP Plan during the Term, (b) [ * ], and (c) are owned or controlled by
MPI or its Affiliates, or in which MPI or its Affiliates has an interest that it
is not legally or contractually prohibited from assigning to Caliper. LabChip
Improvements shall not include any (A) [ * ], (B) MPI Materials or any other
inventions, discoveries, techniques, procedures, trade secrets, information or
Patents that relate to MPI Materials or (C) potential drug compounds or any
other
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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inventions, discoveries, techniques, procedures, trade secrets, information or
Patents that relate to such compounds.
1.21 "MICROFLUIDIC SYSTEMS" shall mean any systems for manipulating
nanoliter fluid volumes, as opposed to larger volumes of fluid, in structures
having one or more fluidic chambers or channels where such chambers or channels
have [ * ].
1.22 "MPI BUSINESS" shall mean the business of MPI and its Affiliates as
[ * ] MPI Business shall be deemed not to include (a) the manufacture, sale or
resale of Chips or Instruments by MPI or its Affiliates, or (b) the performance
by MPI or its Affiliates of LabChip Assays utilizing Products for [ * ] or (c)
the disclosure or transfer of Caliper Know-How or other Caliper Confidential
Information to any Person that [ * ] and which Persons [ * ]. For the purposes
of clarity, Persons engaged by MPI as consultants and who have expertise in [ *
], shall not be deemed to [ * ] as described in Section (c) above.
1.23 "MPI MATERIALS" shall mean genes, gene fragments, gene sequences,
probes, DNA, RNA, cDNA libraries, proteins, peptides, protein fragments,
plasmids, vectors, expression systems, cells, cell lines, organisms, antibodies,
biological substances, and any constituents, progeny, mutants, derivatives or
replications thereof or therefrom, reagents or chemical compounds or other
tangible materials that are owned or controlled by MPI or its Affiliates, or as
to which MPI or its Affiliates otherwise has rights. MPI Materials shall not
include materials that are available from a third party without breach of any
obligation to MPI or its Affiliates.
1.24 "MPI NAP TECHNOLOGY" shall mean, with respect to a NAP System
developed pursuant to a NAP Plan, all Patents, discoveries, techniques,
procedures, data, trade secrets and technical information that MPI makes
directly under such NAP Plan, that relate directly to such NAP System and that
MPI owns or controls, or in which MPI has an interest that it is not legally or
contractually prohibited from licensing or sublicensing to Caliper, during the
term of such NAP Plan; provided, however, that no MPI Software or MPI Materials
shall be included in the MPI NAP Technology unless MPI expressly agrees to such
inclusion, and the transfer to Caliper of rights with respect thereto, in the
Approved NAP Plan with respect a NAP System.
1.25 "MPI PROGRAM SOFTWARE" shall mean such MPI Software as MPI, in its
sole discretion, elects to license to Caliper under an Approved NAP Plan.
1.26 "MPI-RELATED INVENTION" shall mean all inventions (whether or not
patentable), discoveries, techniques, procedures, trade secrets and other
technical information (and any Patents claiming any of the foregoing) that are
conceived and reduced to practice by Caliper, solely or jointly with others, and
are owned or controlled by Caliper, or in which Caliper has an interest that it
is not legally or contractually prohibited from assigning to MPI, (a) using MPI
Materials or are related thereto, or (b) in connection with a Program and that
relate to (i) [ * ], (ii) pre-clinical product candidates, clinical product
candidates and any commercial products with medical uses, or (iii) [ * ].
MPI-Related Inventions shall not include inventions, discoveries, techniques,
procedures, trade secrets and other technical information [ * ].
1.27 "MPI SOFTWARE" shall mean software in Object Code Form and in
Source Code Form, any accompanying documentation and [ * ] that (i) is owned or
controlled by MPI or its
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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Affiliates, or (ii) is in-licensed from third parties by MPI or its Affiliates,
subject to any applicable license restrictions.
1.28 "MPI SOFTWARE RIGHTS" means any Patents that claim or cover, and
any know-how or copyrights with respect to, MPI Program Software or, to the
extent owned or controlled by MPI or its Affiliates, NAP Program Software, which
MPI or its Affiliates own or control, or in which MPI or its Affiliates have an
interest that they are not legally or contractually prohibited from licensing or
sublicensing to Caliper.
1.29 "NAP PRODUCTS" shall mean all Instruments, Chips, Caliper Product
Software and Caliper Reagents that are used in or designed for use in a NAP
System, and [ * ], that are developed pursuant to this Agreement or offered by
Caliper or its Affiliates; provided, however, that in no event shall any NAP
Product include any MPI Materials or MPI Software unless MPI expressly agrees to
such inclusion, and the transfer to Caliper of rights with respect thereto, in
the Approved NAP Plan with respect to a NAP System.
1.30 "NAP PROGRAM SOFTWARE" means software in Object Code Form and
Source Code Form and accompanying documentation that (i) is developed under this
Agreement pursuant to an Approved NAP Plan, including any third party software
incorporated therein pursuant to Section 3.4.5, and (ii) is designed to process,
integrate and organize unprocessed data generated solely by a NAP System into an
end-user friendly format, but that does not perform any other processing,
integration or any analysis of such data, either alone or in combination with
any information, software or any other data apart from such NAP System. NAP
Program Software shall not include software tools used to develop any software
code.
1.31 "NAP SYSTEM" shall mean (a) the overall system and process set
forth in a NAP Plan, for performing a particular task, experiment or biochemical
or chemical manipulation, or series thereof, that (i) makes use of Caliper
Technology and (ii) consists of a Chip, an Instrument, software, reagents and a
protocol for performing such activity, as distinguished from (b) the particular
component Chip, Instrument, software and reagents that constitute such system.
1.32 "NEW APPLICATION PLAN" OR "NAP PLAN" shall mean a Feasibility NAP
Plan or an Approved NAP Plan with respect to a NAP System.
1.33 "NEW APPLICATIONS PROGRAM" OR "NAP" shall mean the program pursuant
to which Caliper and MPI jointly research and develop new applications for
Caliper Technology, as further described in Article 3.
1.34 "OBJECT CODE FORM" means a form of software code resulting from the
translation or processing of a computer program in Source Code Form by a
computer into machine language or intermediate code, which thus is in a form
that would not be convenient to human understanding of the program logic, but
which is appropriate for execution or interpretation by a computer.
1.35 "PARTICIPANTS" shall mean a Person participating in the sTAP under
an agreement with Caliper.
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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1.36 "PATENTS" shall mean any and all patents, foreign or domestic,
together with any substitutions, extensions, divisions, continuations,
continuations-in-part, reexaminations, reissues, and renewals thereof, any
supplementary protection certificates relating thereto, and any inventors'
certificates, which have not been held invalid or unenforceable by a
non-appealable or non-appealed decision of a court of competent jurisdiction,
issuing from patent applications filed in any jurisdiction and any provisionals,
divisionals, continuations, and continuations-in-part of such applications.
1.37 "PERSON" shall mean an individual, partnership, firm, corporation,
limited liability company, joint venture, association, trust or other entity, or
any governmental agency or political subdivision thereof.
1.38 "PRODUCTS" shall mean, collectively, the sTAP Products, the NAP
Products and such other Instruments, Chips and other hardware, software or
reagents that the parties may agree to develop in accordance with this
Agreement; provided, however, that in no event shall any Product include any MPI
Materials or MPI Software unless MPI expressly agrees to such inclusion, and the
transfer to Caliper of rights with respect thereto, in the Approved NAP Plan
with respect such Product.
1.39 "PROGRAM(s)" shall mean the sTAP, NAP or both.
1.40 "SCREENING" shall mean the process of performing a screening assay
of a designated agent or compounds against a target (e.g., an enzyme, receptor
or cell type) to determine such agent's or compound's potential safety,
efficacy, biological activity, chemical activity or other characteristics
relevant to its use in human medicine, animal health or agriculture. For
purposes of this Agreement, Screening shall include, but not be limited to,
primary, high throughput screening against potential therapeutic targets,
secondary screening of analogues and derivatives against such targets, and
screens of potential pharmaceutical compounds for specificity, toxicity and
other parameters relevant to safety or efficacy. [ * ].
1.41 "screening TECHNOLOGY ACCESS PROGRAM" OR "sTAP" shall mean
Caliper's program for providing access to its evolving line of products useful
for Screening in the context of an ongoing, renewable business relationship. In
addition to sales of finished sTAP Products, the sTAP may include customer input
into development, early access to prototypes and substantial training and
support.
1.42 "SOURCE CODE FORM" means a form in which a computer program's logic
is easily deduced by a human being with skill in the art, such as a printed
listing of the program or a form from which a printed listing can be easily
generated and shall include interpretive code such as perl or shell scripts.
1.43 "sTAP PLAN" shall have the meaning set forth in Section 2.3.
1.44 "sTAP PRODUCTS" shall mean all Instruments, Chips and other
hardware, Caliper Product Software or Caliper Reagents that are set forth on
Exhibit A as being offered by Caliper or its Affiliates, and, subject to any
agreement with a third party that would prohibit their transfer to Persons other
than such third party, such other Instruments, Chips and other hardware,
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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software or reagents designed for Screening as Caliper offers during the Term to
Participants or other Persons for use in Screening; provided, however, that in
no event shall any sTAP Products include any MPI Material or MPI Software unless
MPI expressly agrees to such inclusion, and the transfer to Caliper of rights
with respect thereto, in a written agreement approved by the Vice President of
Research and Technology Operations of MPI. Caliper represents and warrants to
MPI that no third-party agreement exists as of the Effective Date that would
restrict the offering of the sTAP Products that would otherwise be available to
MPI under this Agreement.
1.45 "SUBSCRIPTION FEE" shall have the meaning specified in Section
4.1.2.
1.46 "TERM" shall mean the period commencing on the Effective Date and
ending on the second anniversary of the Effective Date, unless extended by MPI
pursuant to Section 8.2 or earlier terminated pursuant to Section 8.3 or
modified by mutual written agreement of the parties pursuant to Section 10.5.
2. SCREENING TECHNOLOGY ACCESS PROGRAM
2.1 sTAP PRODUCT LICENSES.
2.1.1 PRODUCT LICENSES.
(a) Subject to Section 2.7, Caliper hereby grants to MPI and its
Affiliates a fully paid, worldwide, non-exclusive, non-transferable (except as
provided in Section 10.4) right and license, with no right to sublicense, under
Caliper Technology to develop, make and use sTAP Products (but not to make
Chips) for the purpose of developing sTAP Products jointly with Caliper, and to
practice the Caliper Know-How with respect thereto, during the Term and pursuant
to this Agreement.
(b) Subject to Section 2.7, Caliper hereby grants to MPI and its
Affiliates a worldwide, non-exclusive, non-transferable (except as provided in
Section 10.4) right and license, with no right to sublicense, under Caliper
Technology to use, modify and enhance sTAP Products (but not to modify and
enhance Chips), and to practice Caliper Know-How with respect thereto, for all
purposes in the MPI Business. Notwithstanding the foregoing, this license grant
shall extend to [ * ]. With respect to each of the sTAP Products offered by
Caliper in a Contract Quarter, this license shall become fully-paid, irrevocable
and perpetual upon Caliper's receipt of the Subscription Fee for such Contract
Quarter.
2.1.2 SOFTWARE LICENSES. Subject to Sections 2.7 and 3.4, for all
sTAP Products purchased or otherwise acquired by MPI or its Affiliates, Caliper
hereby grants to MPI and its Affiliates a fully paid, worldwide, non-exclusive,
irrevocable, perpetual, non-transferable (except as provided in Section 10.4)
right and license, under Caliper Technology, (i) to use, copy, make, modify,
enhance, and create derivative works of the Source Code Form and Object Code
Form of Caliper Product Software in the MPI Business, and (ii) to distribute the
Object Code Form of Caliper Product Software and any derivative works thereof,
to collaborators of MPI to use, modify and enhance in connection with MPI's
technology platform. If MPI modifies any Caliper Product Software, Caliper shall
have no obligation to support such software or incorporate it into subsequent
versions of Caliper Product Software. MPI acknowledges that any
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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such modified software may be incompatible with subsequent versions of Caliper
Product Software. In the event the parties mutually agree in writing to
incorporate such modifications into the Caliper Product Software then such
modification shall be supported to the same extent as any unmodified Caliper
Product Software.
2.2 sTAP LEADERS. Caliper and MPI shall each designate a leader (each, a "sTAP
Leader") who together shall jointly plan and oversee all activities carried out
under a sTAP Plan and monitor the progress of such activities. The Caliper sTAP
Leader shall be responsible for the timely transfer to MPI of all sTAP Products
and other Chips, Instruments, Caliper Reagents, Caliper Product Software and
other materials in accordance with the sTAP Plan or as otherwise agreed to by
the parties, as well as the support, training and other services required
hereunder subject to the FTE limitations set forth in Section 4.2.1. The sTAP
Leaders shall meet once each Contract Quarter, or as they may otherwise agree,
in person, with such meetings alternating between Caliper and MPI facilities, or
by such other means as the sTAP Leaders may agree. At the request of MPI,
Caliper's sTAP Leader shall provide MPI with quarterly confidential written
reports, within thirty (30) days after the end of each Contract Quarter,
summarizing the activities undertaken and the results achieved under the sTAP
Plan during such quarter, provided that Caliper shall not be obligated to
disclose any information that it is precluded from disclosing under an agreement
or arrangement with a third party or that is not otherwise required to disclose
hereunder. The initial sTAP Leader from MPI shall be [ * ], and the initial sTAP
Leader from Caliper shall be [ * ]. Either party, in its sole discretion, may
change its sTAP Leader by delivering written notice to the other party.
2.3 sTAP PLANS. The sTAP Leaders shall develop a plan for each Contract
Year which shall set forth in reasonable detail each project to be pursued by
MPI and Caliper under the sTAP for such Contract Year, including, with respect
to each project, any benchmarks or specifications, the activities to be
performed by MPI and Caliper, the budget for MPI support to be provided by
Caliper personnel under Section 2.4, and such other matters as the sTAP Leaders
determine to be appropriate (each, a "sTAP Plan"). The sTAP Plan shall also
include the [ * ] in that Contract Year as well as any other Instruments, Chips,
Caliper Reagents, hardware, Caliper Product Software or other systems or
materials to be provided by Caliper in such Contract Year pursuant to such sTAP
Plan. In developing the sTAP Plan, the MPI sTAP Leader shall have the sole right
to propose the desired sTAP projects and goals and to prioritize the projects,
which shall be deemed Confidential Information for all purposes hereunder.
Caliper's sTAP Leader shall determine the necessary personnel resources, and
provide estimates of the projected Caliper FTEs needed to perform relevant tasks
for each project and the cost of sTAP Products necessary for MPI to implement
each project, including the sTAP Products necessary for the ongoing performance
of LabChip Assays, and advise MPI as to the technical feasibility of each
project; provided, however, that Caliper shall not be required to dedicate more
FTEs to sTAP than required by Section 4.2.1. Based on this information, the sTAP
Leaders shall develop a sTAP Plan. A summary and outline of the initial sTAP
projects is included in an exhibit entitled, Summary of Initial Projects,
attached to that certain letter agreement between the parties hereto, dated
March 24, 2000. The sTAP Leaders shall [ * ] sTAP Plan for the first Contract
Year within [ * ] of the Effective Date, which at a minimum shall include the
projects included in Exhibit A. Caliper acknowledges and agrees that it is
committed to initiating the activities set forth in the sTAP Plan upon the
finalization of such plan. The sTAP Leaders shall agree on a
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sTAP Plan for each successive Contract Year no later than [ * ] prior to the
start of such year. A sTAP Plan may only be amended by the mutual agreement of
the sTAP Leaders.
2.4 MPI sTAP SUPPORT.
2.4.1 GENERAL; CALIPER FTES. If necessary, and at the discretion of
MPI, the sTAP Plan shall include a plan and budget for activities of Caliper
personnel specifically directed to supporting MPI's implementation of the sTAP.
Such activities may include (i) assay development for MPI Materials, (ii)
training and support for MPI personnel developing LabChip Assays or using sTAP
Products, and (iii) custom development projects requested by MPI (each discussed
further below). Funding for such Caliper personnel shall be provided pursuant to
Section 4.2.1 below.
2.4.2 ASSAY DEVELOPMENT. MPI shall have the right to have Caliper
assist with the development and performance of LabChip Assays from time to time
subject to the FTE commitments set forth in Section 4.2.1. At MPI's request,
Caliper shall advise MPI as to the technical feasibility of various proposals.
Prior to rendering any assistance, Caliper shall provide MPI with a good faith
estimate of the time required to perform the assistance. With respect to any
such assistance rendered, Caliper shall transfer to MPI any assay development
information as well as the results of any assays conducted by Caliper, which
results shall be Assay Data. MPI shall have the right to conduct development
tasks and activities and perform LabChip Assays independently of Caliper, and
shall not be obligated to disclose to Caliper any information with respect
thereto, including, without limitation, the fact that MPI has performed such
tasks, activities or assays.
2.4.3 TRAINING AND SUPPORT. At MPI's request, Caliper shall provide
training and support for MPI employees in development of LabChip Assays and use
of sTAP Products, subject to the FTE commitments set forth in Section 4.2.1.
Scheduling of sTAP training and support to be provided at MPI's facilities shall
be mutually agreed upon. Caliper's sTAP Leader shall advise MPI's sTAP Leader as
to recommended priorities and tasks for Caliper to support MPI under sTAP, but
MPI shall have the right to determine the support MPI requires, provided that
such training and support [ * ] set forth in the sTAP Plan for the applicable
Contract Year. Based on MPI's requirements, Caliper's sTAP Leader shall
determine the necessary personnel resources, provide estimates of the projected
time needed to perform relevant tasks and provide estimates of the technical
feasibility of various tasks.
2.4.4 sTAP PRODUCT OFFERINGS; CUSTOM DEVELOPMENT. Caliper shall
consult with MPI with respect to the sTAP Products it intends to offer during
each Contract Year. From time to time, Caliper shall notify MPI in accordance
with Section 4.3.1 of the particular sTAP Products that Caliper has decided to
develop and offer in a Contract Year, and the estimated time that such sTAP
Products will be available. If MPI is interested in having Caliper proceed with
the development of a sTAP Product or sTAP Product accessory that Caliper
initially determined not to develop in such Contract Year, or to accelerate the
development of a sTAP Product or a sTAP Product accessory proposed to be offered
later in the Contract Year, then MPI may elect to apply a portion of the [ * ]
to such custom development efforts. At the request of MPI, Caliper shall advise
MPI regarding the effect that any such allocation [ * ] would have on ongoing
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activities under the relevant sTAP Plan. Alternatively, at MPI's option, MPI may
propose such new application for Screening for development under a NAP Plan
pursuant to Article 3.
2.5 NON-EXCLUSIVITY. The sTAP is a mutually non-exclusive collaboration.
MPI and Caliper are each free to work with any other company in any area. sTAP
Products developed by Caliper, independently or with input from MPI, will be
sold by Caliper on a non-exclusive basis unless otherwise mutually agreed in
writing by the parties. MPI acknowledges that other customers, independently or
together with Caliper, may develop LabChip Assays for the [ * ], subject in all
cases to Section 6.1 and the other terms of this Agreement. Similarly, Caliper
acknowledges that MPI may continue to perform Lab Chip Assays, Screening or
other assays, reactions, interactions, processes, procedures or other activities
on non-Caliper systems and may collaborate with third parties on [ * ], subject
in all cases to Section 6.1 and the other terms of this Agreement.
Notwithstanding the foregoing, neither Caliper nor any of its Affiliates shall
use, directly or indirectly, on behalf of itself, its Affiliates or any third
party, any information with respect to MPI's or its Affiliates' targets, target
selection process, development priorities, background intellectual property, any
other intellectual property not expressly licensed to Caliper hereunder or any
other Confidential Information of MPI or its Affiliates, in connection with the
development of drugs or for any other purpose that is not expressly permitted
hereunder.
2.6 SPECIAL PROJECTS. Either party may propose to the other special
product development projects related to Screening applications or other LabChip
Assays under sTAP. Such special projects may be conducted by the parties under
the NAP program or under different terms to be negotiated by the parties on a
case-by-case basis.
2.7 RESTRICTIONS ON USE OF sTAP PRODUCTS. MPI agrees that it will use
all sTAP Products only in the MPI Business. This provision shall expire with
regard to each sTAP Product to the extent that such product is offered to
Persons on a general commercial basis without such restriction.
2.8 COMMERCIALIZATION OF sTAP PRODUCTS. Caliper represents and warrants
to MPI that, as of the Effective Date, Caliper has no plans to sell to parties
other than Participants any existing sTAP Products or any other sTAP Products
that are currently in development for performing LabChip Assays for Screening
(i.e., assays for targets selected by the user, rather than by Caliper);
however, Caliper reserves the right to do so should Caliper determine that
technical or business reasons warrant such a change in plans. However, with
respect to any sTAP Product offered to MPI in the first [ * ] for performing
such LabChip Assays, if Caliper sells, within [ * ] of the date such sTAP
Product is first offered to MPI, such sTAP Product to any party other than a
Participant, then (a) the parties shall mutually agree in good faith on an
appropriate payment by Caliper or credit of a portion of the Subscription Fees
due under this Agreement, but in no event shall such payment or credit exceed
the [ * ] during the Term (including any extensions thereof), and (b) the
parties shall mutually agree on a [ * ], from which MPI may thereafter [ * ].
2.9 OTHER PRODUCTS. During the course of this Agreement, Caliper may
offer MPI the opportunity to receive products other than sTAP Products or NAP
Products. For example, MPI may be offered products being developed or
commercialized through Caliper's research products collaboration with Agilent
Technologies. Terms related to such transactions shall be
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agreed upon separately or established for all customers by Caliper or Agilent
Technologies and are not covered by this Agreement.
3. NEW APPLICATIONS PROGRAM
3.1 NAP LICENSES.
3.1.1 GRANT TO MPI.
(a) DEVELOPMENT OF NAP PRODUCTS.
(i) Subject to Section 3.8.2, Caliper hereby grants to MPI
and its Affiliates a fully-paid, worldwide, internal, non-exclusive,
non-transferable (except as provided in Section 10.4) right and license, under
the Caliper Technology, to develop, make and use NAP Products (but not to make
Chips) for the purpose of developing NAP Systems jointly with Caliper pursuant
to NAP Plans, and to practice the Caliper Know-How with respect thereto, during
the Term and pursuant to this Agreement.
(ii) Subject to Sections 3.4 and 3.8.2, Caliper hereby
grants to MPI and its Affiliates, a fully-paid, worldwide, internal,
non-exclusive, non-transferable (except as provided in Section 10.4) right and
license, under Caliper Technology, to use, copy, make, modify, enhance and
create derivative works of, but not to distribute, Source Code Form and Object
Code Form of Caliper Product Software and, to the extent owned by Caliper or its
Affiliates, NAP Program Software, in each case, solely to develop NAP Program
Software pursuant to Approved NAP Plans. Such right and license shall exist for
the duration of each NAP Plan under which NAP Program Software is to be
developed.
(b) USE OF NAP PRODUCTS.
(i) Subject to Section 3.8.2, Caliper hereby grants to MPI
and its Affiliates a worldwide, non-exclusive, non-transferable (except as
provided in Section 10.4) right and license, with no right to sublicense under
the Caliper Technology, to use, modify and enhance NAP Systems and NAP Products
(but not to modify and enhance Chips) for which a Development NAP Plan has been
approved pursuant to Section 3.3, or are otherwise offered by Caliper or its
Affiliates, and to practice Caliper Know-How with respect thereto, for all
purposes in the MPI Business. Notwithstanding the foregoing, this license grant
shall [ * ].
(ii) Subject to Sections 3.4, 3.8.2 and 4.3.7, for all NAP
Products purchased or otherwise acquired by MPI or its Affiliates, Caliper
hereby grants to MPI and its Affiliates a worldwide, non-exclusive,
non-transferable (except as provided in Section 10.4) right and license, under
Caliper Technology, (i) to use, copy, make, modify, enhance and create
derivative works of the Source Code Form and Object Code Form of the Caliper
Product Software for all purposes in the MPI Business, and (ii) to distribute
the Object Code Form of Caliper Product Software and any derivative works
thereof, to collaborators of MPI to use, modify and enhance such Caliper Product
Software and derivative works, [ * ]. If MPI modifies any Caliper Product
Software, Caliper shall have no obligation to support such software or
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incorporate it into subsequent versions of Caliper Product Software. MPI
acknowledges that any such modified software may be incompatible with subsequent
versions of Caliper Product Software. In the event the parties mutually agree in
writing to incorporate such modification into the Caliper Product Software then
such modification shall be supported by Caliper to the same extent as any
unmodified Caliper Product Software.
(iii) With respect to each NAP Product included in a NAP
System and any Caliper Product Software with respect thereto, the license grants
in Sections 3.1.1(b)(i) and 3.1.1(b)(ii) shall become fully-paid, irrevocable
and perpetual upon the approval of a Development NAP Plan for such NAP System
pursuant to Section 3.3.
3.1.2 GRANTS TO CALIPER.
(a) DEVELOPMENT OF NAP PRODUCTS.
(i) Subject to the terms and conditions of each NAP Plan,
MPI hereby grants to Caliper with regard to such NAP Plan a fully-paid,
worldwide, internal, non-exclusive, non-transferable (except as provided in
Section 10.4) right and license under the MPI NAP Technology to develop, make
and use NAP Products for the purpose of developing NAP Systems pursuant to such
NAP Plan jointly with MPI during the term of such NAP Plan and pursuant to this
Agreement.
(ii) Subject to the terms and conditions of each Approved
NAP Plan and Section 3.4, MPI hereby grants to Caliper with regard to such
Approved NAP Plan a fully-paid, worldwide, internal, non-exclusive,
non-transferable (except as provided in Section 10.4) right and license, under
the MPI Software Rights, to use, copy, make, modify, enhance and create
derivative works of, but not to distribute, the Object Code Form and the Source
Code Form of MPI Program Software for use solely to develop NAP Program Software
pursuant to such Approved NAP Plan. Such license shall exist for the duration of
the NAP Plan under which the NAP Program Software is developed.
(b) COMMERCIALIZATION OF NAP PRODUCTS.
(i) MPI hereby grants to Caliper a worldwide, non-exclusive,
fully-paid, non-transferable (except as provided in Section 10.4) right and
license, with the right to sublicense, under MPI NAP Technology to make, use,
sell, offer for sale and import NAP Products for which Development NAP Plans
have been approved pursuant to Section 3.3. The parties recognize that this
grant does not include rights with respect to MPI Program Software and NAP
Program Software, which, with respect to each NAP System, shall be governed by
Sections 3.1.2(a)(ii), and 3.1.2(b)(ii) and 3.1.2(b)(iii), respectively.
Further, the parties recognize that this grant does not include rights with
respect to other MPI Software or MPI Materials, which, with respect to each NAP
System, shall be governed by the specific terms and conditions with respect
thereto, if any, set forth, in the Approved NAP Plan with respect such NAP
System.
(ii) Subject to Section 3.4, MPI hereby grants to Caliper a
fully-paid, worldwide, internal, non-exclusive, non-transferable (except as
provided in Section 10.4) right and license under MPI Software Rights with
respect to NAP Program Software, to
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use, copy, modify and enhance, but not to distribute, the Object Code Form and
the Source Code Form of NAP Program Software, to the extent owned by MPI or its
Affiliates, solely to develop, use, support and make NAP Systems for which
Development NAP Plans have been approved pursuant to Section 3.3. Further,
Caliper shall have the right to sublicense the right to use (but not to enhance,
modify or distribute) the Object Code Form of the NAP Program Software, to the
extent owned by MPI or its Affiliates, to [ * ] commercial partners who are
authorized distributors and support providers of such NAP Systems, for the sole
purpose of permitting such commercial partners to support such NAP Systems;
provided, however, such commercial partners agree to abide in writing by all the
terms and conditions of this Agreement with respect to such NAP Program
Software.
(iii) Subject to Section 3.4, MPI hereby grants to Caliper a
worldwide, non-exclusive, royalty-bearing, perpetual, non-transferable (except
as provided in Section 10.4) right and license, with the right to grant
sublicenses, under MPI Software Rights with respect to NAP Program Software, to
use the Object Code Form of NAP Program Software to use solely in connection
with, the making, selling, offering for sale, and importing of NAP Systems for
which Development NAP Plans have been approved pursuant to Section 3.3. Any such
sublicenses shall include written terms that are sufficient to protect MPI's
intellectual property rights in NAP Program Software and are consistent with
Caliper's rights and obligations set forth in this Agreement. This right and
license shall be royalty-bearing only to the extent the NAP Program Software
incorporates any MPI Software which exists prior to, or is created or acquired
by MPI or its Affiliates independent of this Agreement as provided in Section
3.4.6.
(iv) Subject to Section 3.4, MPI hereby grants to Caliper a
worldwide, non-exclusive, fully-paid, perpetual, non-transferable (except as
provided in Section 10.4) right and license, with the right to grant
sublicenses, under MPI Software Rights with respect to NAP Program Software
developed pursuant to each Approved NAP Plan and which is first created by MPI
or its Affiliates and which is not a derivative work of or does not otherwise
incorporate any pre-existing MPI Software or independently developed MPI
Software, to (i) use the Object Code Form of such NAP Program Software solely in
connection with the making, selling, offering for sale, and importing of any
system which consists of Instruments, Chips, reagents and software, owned or
controlled by Caliper and which incorporates Caliper Technology; and (ii) use,
copy, modify and enhance, but not to distribute, the Object Code Form and the
Source Code Form of such NAP Program Software, solely to develop, use, support
and make any system which consists of Instruments, Chips, reagents and software,
owned or controlled by Caliper and which incorporates Caliper Technology.
Further, Caliper shall have the right to sublicense the right to use, but not to
modify, enhance or distribute, solely the Object Code Form of such NAP Program
Software to [ * ] commercial partners who are authorized distributors and
support providers of such system; provided, however, any sublicenses shall
include written terms that are sufficient to protect MPI's intellectual property
rights in NAP Program Software and are consistent with Caliper's rights and
obligations set forth in this Agreement. Notwithstanding the foregoing, the
right and license set forth in this Section 3.1.2(b)(iv) shall be effective for
each NAP Program Software developed pursuant to an Approved NAP Plan when such
NAP Program Software is used by Caliper in accordance with
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the right and license granted in Section 3.1.2(b)(iii) with respect to the NAP
System described therein.
3.2 NAP LEADERS. Caliper and MPI shall each designate a leader (each, a
"NAP Leader") who together shall jointly plan and oversee all NAP activities
carried out under this Agreement and monitor the progress of such activities.
The Caliper NAP Leader shall be responsible for the transfer to MPI of all NAP
Products, development tools and systems and other Chips, Instruments, Caliper
Reagents, Caliper Product Software and other materials, as well as the support,
training and other services required under the NAP Plans. The NAP Leaders shall
meet once each Contract Quarter, or as they may otherwise agree, in person, with
such meetings alternating between Caliper and MPI facilities, or by such other
means as the NAP Leaders may agree. At the request of a NAP Leader, the other
NAP Leader shall provide the requesting NAP Leader with a quarterly confidential
written report, within thirty (30) days after the end of each Contract Quarter,
summarizing the activities undertaken and the results achieved under each NAP
Plan during such quarter, provided that neither party shall be obligated to
disclose any information that it is precluded from disclosing under an agreement
or arrangement with a third party or that it is not otherwise required to
disclose hereunder. The initial NAP Leader of MPI shall be [ * ], and the
initial NAP Leader from Caliper shall be [ * ]. Either party, in its sole
discretion, may replace its NAP Leader by delivering written notice to the other
party.
3.3 NAP PLAN.
3.3.1 INITIAL NAP SYSTEMS. The parties acknowledge and agree that
they are committed to initiating and proceeding diligently in the first Contract
Year with the development of NAP Systems with respect to the projects set forth
in an exhibit entitled, Summary of Initial Projects, attached to that certain
letter between the parties hereto dated March 24, 2000. With respect to such
projects, the NAP Leaders shall finalize each Feasibility NAP Plan and initiate
activities thereunder within [ * ] after the Effective Date. Upon completion of
the activities under the Feasibility NAP Plan for each project, the NAP Leaders
shall immediately prepare a Development NAP Plan for the applicable NAP System
for review and approval by the Chief Technology Officer and the Vice President
of Research and Technology Operations of MPI and the Vice President of Science
and Technology of Caliper. No NAP Plan shall become effective with respect to
any Excluded MPI Property that is included in a NAP Plan unless and until such
NAP Plan is executed by the Vice President of Research and Technology Operations
of MPI.
3.3.2 SUBSEQUENT NAP SYSTEMS. From time to time, the NAP Leaders
shall meet to discuss potential NAP Systems to be developed hereunder. [ * ].
Caliper's NAP Leader shall provide good faith estimates of the necessary
personnel resources and the projected FTEs needed to perform Caliper's tasks and
the cost of any development systems and other materials necessary for the
development of NAP Systems, and advise as to the technical feasibility of
various tasks. MPI's NAP Leader shall provide similar information with respect
to MPI's activities. With respect to NAP projects identified by MPI, the NAP
Leaders shall develop a plan to evaluate the feasibility of a NAP System in
light of the considerations which constitute a Development NAP Plan, which plan
shall set forth specific details of any activities to be performed to determine
the technical feasibility of such NAP System as well as a timeline therefor (a
"Feasibility NAP Plan"). The parties shall perform the feasibility study and
shall
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report the results in accordance with the Feasibility NAP Plan, whereupon the
parties shall meet to discuss such results. The parties anticipate that each
Feasibility NAP Plan shall be for a period of [ * ] or less. If and when the
parties decide to proceed with the development and commercialization of a NAP
System, the NAP Leaders shall prepare a Development NAP Plan for such NAP System
for review and approval of the Vice President of Science and Technology of
Caliper and both the Chief Technology Officer and the Vice President of Research
and Technology Operations of MPI. No Development NAP Plan shall become effective
with respect to any Excluded MPI Property that is included in a Development NAP
Plan unless and until such Development NAP Plan is executed by the Vice
President of Research and Technology Operations of MPI. Prior to the
commencement of any Development NAP Plan, if Caliper sets forth in writing that
it withholds its approval of NAP Plans for one or more NAP Systems or otherwise
fails to agree to such NAP Plan within [ * ] days after a written request by MPI
that Caliper do so, for reasons other than technical feasibility, [ * ] the [ *
] to [ * ] such NAP Plans, provided that such NAP Plans do not require Caliper
to commit more than [ * ] of its FTEs pursuant to Section 4.2.2 to the
development of all such NAP System(s) in any Contract Year.
3.3.3 AMENDMENT AND DISPUTES. The NAP Leaders shall review the
progress of the NAP Plans annually to assess the progress of each plan in light
of the goals set forth therein and discuss proposed amendments to the NAP Plans
as necessary; provided, however, that a NAP Plan may only be amended by the
agreement of [ * ] parties that approved such NAP Plan pursuant to Section 3.3.1
or 3.3.2. Except with respect to [ * ] to [ * ] NAP Systems pursuant to [ * ],
disputes with respect to inclusion of specific NAP Systems in a NAP Plan shall
be escalated to senior officers of the parties in accordance with Section 10.2,
but shall not be subject to arbitration or any other judicial or other dispute
resolution mechanism. In the event of any inconsistency between the terms of a
NAP Plan and the terms of this Agreement, the terms of this Agreement shall
control.
3.3.4 ACCESS TO MPI NAP TECHNOLOGY DEVELOPED UNDER A FEASIBILITY NAP
PLAN. With respect to any MPI NAP Technology developed under a Feasibility NAP
Plan and licensed to Caliper pursuant to Section 3.1.2(a)(i), in the event the
parties decide not to proceed with the development and commercialization of such
NAP System pursuant to an Approved NAP Plan, then the parties agree to negotiate
in good faith, the terms and conditions under which Caliper will be granted
rights to such MPI NAP Technology for use in the development and
commercialization of such NAP System.
3.4 PROGRAM AND PRODUCT SOFTWARE. Each Development NAP Plan shall set
forth any rights and obligations of the parties with respect to the development
of any NAP Program Software to be developed in connection therewith. The rights
and obligations of the parties with respect to any such NAP Program Software
shall be governed by this Agreement. Except as provided in Sections 2.1 and 3.1,
no other rights are granted hereunder with respect to any software of the
parties, including, without limitation, any MPI Software.
3.4.1 SUBLICENSES. With respect to any sublicense permitted under
this Agreement, the sublicensing party shall be responsible for the operations
of any sublicensee relevant to this Agreement as if the operations were carried
out by such sublicensing party itself.
3.4.2 RESTRICTIONS. Neither party shall:
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(a) except as permitted under this Agreement, decompile,
disassemble or otherwise reverse engineer any software code licensed hereunder;
(b) use, copy or distribute any software code licensed hereunder
or any documentation thereof, directly or indirectly, except as expressly
permitted under this Agreement;
(c) enhance, modify or create derivative works of any software
code licensed hereunder, except as permitted under this Agreement; or
(d) export the software code, except in compliance with U.S. and
other applicable export laws and regulations.
3.4.3 TREATMENT OF SOURCE CODE FORM. Each party shall store the
Source Code Form of any software it receives from the other party on [ * ]
client computers at the recipient's facility and in files on each computer which
are password protected and which can only be accessed by authorized people
having a need to access such source code solely for use in accordance with the
license grants set forth in this Agreement.
3.4.4 SUPPORT. Nothing in this Agreement shall obligate MPI or its
Affiliates to provide any support, updates and/or upgrades for any software code
licensed hereunder unless expressly provided in an Approved NAP Plan. Caliper
and its Affiliates shall provide support, updates and/or upgrades for any
Caliper Product Software licensed hereunder in accordance with its standard
commercial practices, except as otherwise provided under Sections 2.1.2 and
3.1.1(b)(ii).
3.4.5 THIRD PARTY SOFTWARE. Neither party shall use or incorporate
any third party software into the NAP Program Software without the prior written
consent of the other party to this Agreement. In the event the parties agree to
incorporate any third party software into the NAP Program Software, a
description of such software shall be attached to the Development NAP Plan with
respect to such NAP Program Software and Caliper shall be responsible for the
payment of any fees associated with such third party software. Neither party
shall include any [ * ] software that could adversely affect a party's
intellectual property rights in the NAP Program Software unless expressly agreed
upon in writing.
3.4.6 ROYALTY BEARING MPI LICENSED SOFTWARE. Any [ * ] associated
with the license grant by MPI to Caliper pursuant to Section 3.1.2(b)(iii) shall
be negotiated in good faith by the parties prior to Caliper exercising its right
and license thereunder. In determining the amount of such [ * ], the parties
shall consider [ * ]. In the event the parties are unable to agree on the amount
of such [ * ], the license grant pursuant to Section 3.1.2(b)(iii) shall be null
and void with respect to the royalty-bearing software for such NAP System unless
and until an agreement is reached.
3.4.7 DISCLAIMER OF WARRANTY. Nothing in this Agreement shall be
construed as a representation made or warranty given by any party hereto that
any Patents will issue based on pending applications with respect to any
software or that any such pending applications or
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Patents issued thereon will be valid or that any software code will be operated
without interruption or will be error-free.
3.5 NAP PRODUCT DEVELOPMENT.
3.5.1 GENERAL. Each NAP Plan shall include a plan and budget for
activities of both Caliper and MPI personnel to develop NAP Products thereunder.
Such activities may include research and development of Instruments, Chips,
reagents or NAP Program Software, as well as manufacture and testing of
prototype systems. In general, MPI will focus on identifying, prioritizing and
testing new applications in genomics or related areas, on providing biology
expertise and on developing NAP Program Software. In general, Caliper will focus
on assessing feasibility and resource requirements for NAP projects and on
developing Instruments and Chips. However, either party may perform any function
for a given project, as set forth in the applicable NAP Plan. The parties shall
fund work under each NAP Plan in accordance with the budget set forth therein.
FTE activities shall be funded pursuant to Section 4.2.2. Caliper shall offer
development systems, including, without limitation, Instruments and Caliper
Product Software, Chips and Caliper Reagents, for sale to MPI for its use in NAP
Product development [ * ]. Further, Caliper shall install such development
systems, Chips and Caliper Reagents and provide initial training with respect
thereto [ * ] to MPI.
3.5.2 TERMINATION OF NAP PROJECTS. The NAP Leaders shall endeavor to
stage NAP Product development projects in reasonable phases, so that the parties
may each make informed decisions about whether to continue each project based on
the prospects for successful development and commercialization. Once a
Development NAP Plan is approved pursuant to Section 3.3, each party shall be [
* ] with the development and commercialization of each NAP Product in accordance
with such Development NAP Plan, unless such Development NAP Plan expressly
provides otherwise. If at any time a party reasonably determines that the
development of a NAP Product is [ * ], it shall promptly notify the other party
in writing setting forth the basis for its determination. The parties shall
promptly meet to discuss how to proceed with respect to such project taking into
consideration the contributions and expectations of the parties with respect to
the project, but shall be under no obligation to reach agreement with respect
thereto. If the parties are unable to agree on an alternative course of action,
they shall be [ * ] with the Development NAP Plan for such NAP Product. If
either party should fail to substantially perform under and in accordance with
an Approved NAP Plan, the other party may terminate such NAP Plan as provided in
Section 8.4. Notwithstanding anything in this Agreement to the contrary, either
party may elect at any time to cease developing, manufacturing, using or selling
any Product that such party reasonably determines on advice of independent
patent counsel approved by both parties, poses a substantial risk of infringing
third party intellectual property rights.
3.6 NON-EXCLUSIVITY. The NAP is a mutually non-exclusive collaboration.
MPI and Caliper are each free to work with any other company in any area. NAP
Products shall be sold by and on behalf of Caliper and its Affiliates on a
non-exclusive basis.
3.7 SPECIAL PROJECTS. Either MPI or Caliper may propose special product
development projects to be conducted under different terms than the NAP. Any
such terms shall be negotiated by the parties on a project-by-project basis.
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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3.8 RIGHTS AND RESTRICTIONS REGARDING NAP PRODUCTS.
3.8.1 SALE OF NAP PRODUCTS. Subject to the rights set forth in
Section 3.1 and except as otherwise provided herein, Caliper shall have the
exclusive, transferable right under the Caliper Technology to manufacture and
sell NAP Systems. Caliper shall supply all of MPI's requirements of any NAP
Products that are included in an Approved NAP Plan on the terms set forth in
such Approved NAP Plan, Section 4.3 and such other commercially reasonable terms
as the parties shall agree. With respect to any NAP Products developed in whole
or part by MPI, MPI shall have the right pursuant to the terms of a separate
agreement between the Parties hereto to have its trade name and trade mark and,
as applicable, its copyright notice included thereon, which placement shall be
based on the relative contributions of the parties with respect to the
development of such product.
3.8.2 RESTRICTIONS ON USE AND TRANSFER. MPI agrees that it will use
all NAP Products only in the MPI Business. This provision shall expire with
regard to each NAP Product to the extent such product is offered to Persons on a
general commercial basis without such restriction.
3.9 [ * ] ASSAYS. With respect to the development of NAP Systems for [ *
] assays as described in an exhibit entitled, Summary of Initial Projects
attached to that certain letter agreement between the parties hereto dated March
24, 2000, Caliper shall be solely responsible for the cost of all of its FTEs
working under the mutually agreed Feasibility NAP Plan for such project until
the earlier of (i) the date a Development NAP Plan is approved pursuant to
Section 3.3, or (ii) the date [ * ] months following the Effective Date.
4. FINANCIAL AND COMMERCIAL TERMS
4.1 TECHNOLOGY DEVELOPMENT FEES. In exchange for the rights granted to
MPI under this Agreement to develop and use Products, MPI shall make the
following payments to Caliper.
4.1.1 CORE TECHNOLOGY DEVELOPMENT FUNDING PAYMENT. MPI shall pay to
Caliper a non-refundable Core Technology Development Funding Payment of [ * ]
for each Contract Quarter during the first two Contract Years for a total of [ *
] in the aggregate. The first such Core Technology Development Funding Payment
shall be due within [ * ] days of the Effective Date. Subsequent Core Technology
Development Funding Payments shall be due within [ * ] days after the end of
each Contract Quarter.
4.1.2 SUBSCRIPTION FEES. MPI shall pay to Caliper a non-refundable
Subscription Fee of [ * ] for each Contract Quarter for a total of [ * ] per
Contract Year. The first such Subscription Fee shall be due within [ * ] days of
the Effective Date. Subsequent Subscription Fees shall be due within [ * ] days
after the end of each Contract Quarter.
4.2 CALIPER FTE FUNDING.
4.2.1 sTAP SUPPORT FUNDING. MPI shall provide funding for MPI sTAP
support activities provided by Caliper under Section 2.4 at the rate of [ * ]
per FTE per year. Caliper agrees to provide [ * ] FTEs for MPI sTAP support
activities during each Contract Year,
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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or such other number of FTEs as the parties may agree in the sTAP Plan for such
Contract Year. The parties may change this FTE commitment only by mutual
agreement, and may mutually agree to modify the number of FTEs for the first
Contract Year within thirty (30) days after the approval of the sTAP Plan for
such Contract Year. Neither [ * ] nor the cost of installation of Instruments
and other sTAP Products are intended, or shall be construed, to be FTEs
hereunder. MPI shall have no obligation to reimburse Caliper or its Affiliates
for FTE activities in connection with [ * ].
4.2.2 NAP DEVELOPMENT FUNDING. Except as otherwise provided in a NAP
Plan, MPI shall bear all [ * ] of participating in the NAP. Except as provided
in Sections 2.10 and 3.9 or as otherwise provided in a NAP Plan, MPI shall fund
[ * ] of the cost of [ * ] in any project under the NAP Plan at the rate of [ *
]. Caliper agrees to provide [ * ] to support the NAP during each Contract Year,
or such other number [ * ] as may be required under the various NAP Plans
approved pursuant Section 3.3 that are in effect in such Contract Year. The
parties may change this [ * ] commitment only by mutual agreement. Neither [ * ]
nor the cost of installation of Instruments and other NAP Products or [ * ] with
respect thereto are intended, or shall be construed, to be [ * ] hereunder. MPI
shall have no obligation to reimburse Caliper or its Affiliates for [ * ]
activities [ * ].
4.2.3 ADVANCE APPROVAL OF [ * ] COSTS. MPI shall not be responsible
for any [ * ] costs incurred by Caliper that have not been approved in advance
in writing by MPI's NAP Leader or sTAP Leader, as applicable, and Caliper shall
not be obligated to perform any activities under a Program unless such
activities have been approved by MPI in writing.
4.2.4 REPORTING AND RECONCILIATION OF FTES. MPI funding for Caliper
FTEs shall be paid in advance in quarterly installments due [ * ] days after the
beginning of each Contract Quarter. The funding for each Contract Quarter shall
be based on the number of Caliper FTEs scheduled in the sTAP Plan and the NAP
Plan(s) for such quarter. Within thirty (30) days after the end of each Contract
Quarter, Caliper shall deliver a reasonably detailed report to MPI describing
the actual time applied to MPI tasks for each Program during such quarter. MPI's
sTAP Leader and NAP Leader, as applicable, shall have the right to reallocate
the goals and activities of Caliper FTEs scheduled for particular projects or
activities or quarters in a Contract Year within the sTAP or under any NAP Plans
approved unilaterally by MPI pursuant to Section 3.3.2, provided that the total
Caliper FTEs do not exceed the aggregate amount budgeted for the sTAP or such
NAP Plans for such year, as applicable. Requests at any time for Caliper FTE
support for a Program in excess of the amounts set forth in the Plan(s) for such
Program for a Contract Year shall be subject to mutual agreement. In any event,
the parties shall reconcile any discrepancy between funding and actual Caliper
FTE time provided for each Contract Year within thirty (30) days after the last
quarter's report has been delivered to MPI for such year. If actual Caliper FTE
time is less than the funding provided, Caliper shall refund the difference or
credit it towards the next year's funding, at MPI's option. If actual Caliper
FTE time exceeds the funding provided, Caliper may invoice MPI for the
difference but MPI shall not be obliged to pay such amount unless such time was
previously authorized by MPI in writing.
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4.3 PRODUCT SALES AND MATERIAL TRANSFER.
4.3.1 sTAP PRODUCTS. Caliper shall notify MPI in writing when
Caliper is prepared to offer a sTAP Product to any Participant or Person,
together with standard commercial terms to be established by Caliper, such as
price, warranty, service arrangements and the like. Upon request, Caliper shall
provide MPI with a description of sTAP Products due to be released in the
following [ * ] and good faith price estimates therefor. MPI shall have the
right to purchase sTAP Products [ * ]. Notwithstanding the foregoing, Caliper
shall have the right [ * ] on sTAP Products to [ * ]. Caliper shall offer MPI
and its Affiliates [ * ] with respect to [ * ] with respect to sTAP Products in
addition to those provided in Section 4.4.
4.3.2 NAP PRODUCTS. MPI and its Affiliates shall have the right to
acquire NAP Products [ * ] of any other Person. MPI and its Affiliates shall
have the right to purchase NAP Products on the terms set forth in the
Development NAP Plan with respect to such Products [ * ]. Further, as partial
consideration for MPI's participation in and funding of NAP, [ * ], which shall
be adjusted to take into consideration the relative contributions of the parties
with respect to the development of such NAP Products as well as the costs of
competing products and alternative technologies. Caliper shall offer MPI and its
Affiliates [ * ] with respect to [ * ] with respect to NAP Products in addition
to those provided in Section 4.4. MPI's rights under this Section 4.3.2 with
respect to NAP Products, shall only apply to NAP Products (i) for which
development work under the Development NAP Plans for such NAP Products is [ * ]
(as mutually determined by the Chief Technology Officers of Caliper and MPI),
(ii) which were first offered to MPI under the terms of this Section 4.3.2, or
(iii) for which the Approved NAP Plan is terminated by MPI pursuant to Section
8.4 as a result of a material breach by Caliper.
4.3.3 PRODUCT PURCHASE. MPI shall not be obligated to purchase any
Product under this Agreement until it has issued to Caliper a purchase order for
such Product.
4.3.4 IMPROVEMENTS AND ENHANCEMENTS. With respect to Instruments
provided to MPI under the NAP or any prototypes provided to MPI or its
Affiliates under this Agreement, MPI or its Affiliates, as applicable, shall
have the [ * ], when and as available [ * ] Moreover, MPI and its Affiliates
shall have the right to exchange any [ * ], as reasonably agreed by the parties.
4.3.5 PRODUCT AVAILABILITY. Caliper and its Affiliates shall make
Products (including, without limitation, any enhancements or modifications to
those Products, or any derivatives thereof, that are made available to MPI and
its Affiliates hereunder) available to [ * ] of MPI or its Affiliates, including
but not limited to [ * ], and shall use good faith efforts to [ * ] of MPI as
necessary to make such Products available. Further, upon request by Millennium,
Caliper agrees to offer to [ * ], any customized sTAP Products or NAP Products
(including beta-staged products) developed jointly by the parties hereunder.
4.3.6 NAP PRODUCTS. All prototype systems transferred to MPI under,
or identified in, a mutually agreed NAP Plan will be transferred to MPI and its
Affiliates at [ * ].
4.3.7 CALIPER PRODUCT SOFTWARE FOR NAP SYSTEMS. Caliper Product
Software licensed to MPI under Section 3.1.1(b)(ii) shall be provided to MPI by
Caliper [ * ]. Otherwise,
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such Caliper Product Software shall be included as part of a purchased NAP
System or in the case of an upgrade shall be purchased in accordance with
Section 4.3.2.
4.4 CREDITS.
4.4.1 AGGRESSIVE IMPLEMENTATION CREDIT. If MPI runs [ * ] high
throughput screens through the implementation of sTAP Products at MPI within [ *
] months after Caliper delivers to MPI the relevant sTAP Products and
demonstrates the relevant assay capabilities in accordance with the sTAP Plan, a
credit equal to [ * ] of the total costs of the Chips purchased for such [ * ]
screens shall be applied to reduce the Core Technology Development Funding
Payment owed by MPI to Caliper in the first Contract Quarter following the
achievement of the implementation objective.
4.4.2 TECHNOLOGY VALIDATION CREDIT. If MPI or one of its Affiliates
[ * ] between Caliper and a Person (together with its Affiliates, a "Customer")
granting such Customer access to any product or technology of Caliper or its
Affiliates that is not generally available except under a contract with Caliper,
Caliper shall provide MPI with the following credit. Caliper shall credit [ * ]
by each Customer in the [ * ] of such [ * ], up to a maximum of [ * ] per
Customer, against MPI's ongoing payments to Caliper under this Article 4 or any
purchase order entered into by MPI and Caliper during the Term (or any extension
thereof); provided, however, Caliper shall be obligated to provide such credit
(i) only once for each Customer and only with respect [ * ] for such Customer,
(ii) solely with regard [ * ] that are executed during the Term (or any
extension thereof), and (iii) only with respect to value actually received from
such Customer. With respect to [ * ], Caliper shall provide MPI with a credit
for up to [ * ] beginning in the first full Contract Quarter after [ * ] is
executed. The remaining balance of such credit shall be applied to any ongoing
payments owed by MPI under this Agreement or pursuant to any purchase order
entered into by MPI or Caliper during the Term (or any extension thereof),
provided that any payment owed by MPI shall not be reduced by more than [ * ] of
the amount owed at any given time. For the purposes of this Section 4.4.2, [ * ]
shall mean any one of the following [ * ] manner to the [ * ] to a Customer;
(ii) using Caliper Technology [ * ]; or (iii) providing Customer [ * ] other
technology that [ * ]. In order for the parties to determine whether a [ * ] has
been achieved, Caliper agrees to promptly notify MPI in writing upon the [ * ].
Similarly, MPI agrees to notify Caliper in writing if it believes in good faith
that a [ * ] has occurred. For each such notice described above, the parties
shall discuss in good faith whether a [ * ] has occurred.
4.4.3 FIRM PURCHASE ORDER VOLUME DISCOUNT. If, within sixty (60)
days after the sTAP Plan and the Feasibility NAP Plans have been approved for
the first Contract Year, MPI submits to Caliper firm purchase orders for any
combination of Products (subject only to each such Product meeting pre-agreed
product specifications when delivered) (a) with a cumulative value greater than
[ * ], then Caliper shall discount such Products by [ * ], and (b) with a
cumulative value greater than [ * ], then Caliper shall discount such Products
by [ * ].
5. INTELLECTUAL PROPERTY.
5.1 Ownership of Inventions and Software.
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5.1.1 OWNERSHIP OF INVENTIONS. Except as provided in Section 5.2,
each party shall own all inventions, whether patentable or not, conceived and
reduced to practice solely by its employees, consultants or agents during the
course of the Programs. Except as provided in Section 5.2, Caliper and MPI shall
jointly own all inventions conceived and reduced to practice jointly by
employees, consultants or agents of both parties during the course of the
Programs. Each party shall execute all documents and take all actions reasonably
necessary to perfect such ownership rights of the other party and to enable the
filing of Patent applications. Inventorship shall be determined under U.S.
patent laws. The parties shall reasonably cooperate with one another in
connection with the prosecution and defense of Patents and applications with
respect to jointly owned inventions, and shall share equally in any costs and
expenses incurred in connection therewith. If at any time one party declines to
fund the prosecution or maintenance of a Patent pursued by the other party with
respect to a joint invention, the declining party shall immediately, and does
hereby, assign all of its right, title and interest in and to such joint
invention to the other party.
5.1.2 OWNERSHIP OF SOFTWARE. Each party shall own all software code
(in Object Code Form and Source Code Form) that is conceived and reduced to
practice or otherwise developed in the course of performing the NAP solely by
its employees, consultants or agents. Caliper and MPI shall jointly own all
software code (in Object Code Form and Source Code Form) conceived and reduced
to practice, or otherwise developed, jointly by employees, consultants or agents
of both parties during the course of performing the NAP Program. Notwithstanding
the foregoing, any software code conceived and reduced to practice, or otherwise
developed, by any party or its consultants or agents in the course of performing
the NAP that comprises an enhancement or modification to software owned solely
by Caliper or its Affiliates shall be owned solely by Caliper and MPI hereby
assigns and agrees to assign to Caliper all of MPI's right, title and interest
to such enhanced or modified software. Likewise, any software code conceived and
reduced to practice, or otherwise developed, by a party or its consultants or
agents in the course of performing the NAP which comprises an enhancement or
modification to MPI Software shall be owned solely by MPI and Caliper hereby
assigns and agrees to assign all of Caliper's right, title and interest to such
enhanced or modified software. Each party shall execute all documents and take
all actions reasonably necessary to perfect such ownership rights of the other
party and to enable the filing of any copyright registrations or Patent
applications, as the case may be, with respect thereto.
5.2 INVENTIONS RELATED TO A PARTY'S CORE TECHNOLOGY.
5.2.1 LABCHIP IMPROVEMENTS.
(a) PATENTED IMPROVEMENTS. MPI [ * ] Caliper all of MPI's [ * ]
LabChip Improvements for which Patent applications are filed. MPI shall give
Caliper thirty (30) days' advance written notice before filing any Patent
application with respect to a LabChip Improvement. If requested by Caliper, MPI
agrees to cooperate in patenting activities for such LabChip Improvements, at
Caliper's expense, and agrees to [ * ]. In consideration for this [ * ];
provided that no rights in any other Caliper Technology (e.g. background
Patents) are [ * ] pursuant to this Section 5.2.1(a).
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(b) UNPATENTED IMPROVEMENTS. For any LabChip Improvement with
respect to which MPI elects not to file a Patent application, MPI may elect
either to disclose information regarding such LabChip Improvement to Caliper or
to retain such information as confidential to MPI. In the event that MPI elects
to disclose any such information to Caliper, Caliper may use or disclose freely
in the course of its business, without restriction under Article 6 below, such
information. Such use or disclosure may include, without limitation, inclusion
of such information in any Patent application filed by Caliper. If MPI would
like to work with Caliper on an unpatented LabChip Improvement but retain a
proprietary interest in such LabChip Improvement, it may propose a special
project to Caliper as described in Sections 2.6 and 3.6 by first providing
Caliper with a non-confidential summary of the LabChip Improvement for
discussion.
5.2.2 MPI-RELATED INVENTIONS.
(a) PATENTED INVENTIONS. Caliper [ * ] MPI all of Caliper's and
its Affiliates' [ * ] MPI-Related Inventions. Caliper shall promptly notify MPI
of the conception, reduction to practice or making of any such MPI-Related
Invention by Caliper or any of its Affiliates. MPI shall have the sole right to
determine whether to file any Patents with respect to a MPI-Related Invention
and to control the prosecution and defense of any Patents and applications with
respect thereto. If requested by MPI, Caliper agrees to cooperate in patenting
activities for such MPI-Related Inventions, at MPI's expense, and agrees to [ *
]. In consideration for this assignment, [ * ] MPI-Related Inventions [ * ];
provided, however, that Caliper shall have the limited right [ * ] MPI-Related
Inventions solely in the field of Chip-based microfluidics (i) to [ * ]
commercial partners who are authorized distributors or manufacturers of Chips or
Instruments on behalf of Caliper, (ii) for use solely in connection with such
manufacturing and distribution activities, and (iii) only when [ * ] generally;
and provided further that no rights in any other MPI Patents, trade secrets,
know-how or other intellectual property (e.g. background Patents) are granted
pursuant to this Section 5.2.2(a).
(b) UNPATENTED INVENTIONS. Any MPI-Related Invention that is not
subject to an MPI Patent shall be treated as Confidential Information of MPI by
Caliper and its Affiliates.
5.3 ASSAY DATA. MPI shall own all information and data resulting from or
arising out of any LabChip Assay that (a) MPI or its Affiliates may perform, or
(b) Caliper or its Affiliates may perform with respect to any MPI Material
(collectively, "Assay Data") [ * ]. Assay Data shall not include any information
and data [ * ] that result from or arise out of any LabChip Assay performed by
Caliper or its Affiliates. Notwithstanding anything in this Agreement to the
contrary, Assay Data shall be deemed to be Confidential Information of MPI for
all purposes under this Agreement (even if such Assay Data is disclosed by
Caliper to MPI), except to the extent that such Assay Data becomes generally
available or known to Persons reasonably skilled in the field to which such
Assay Data pertains or otherwise part of the public domain through no fault of
Caliper or its Affiliates.
5.4 NO IMPLIED LICENSES. Notwithstanding any other provisions of this
Agreement and the negotiations that led to this Agreement, the parties agree
that no right or license, other than those expressly granted in this Agreement,
shall be implied or imputed.
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6. CONFIDENTIALITY; MATERIALS; PUBLICITY; PUBLICATIONS
6.1 CONFIDENTIAL INFORMATION. During the Term, and for a period of five
(5) years following the expiration or termination of this Agreement, each party
shall maintain in confidence any and all Confidential Information of the other
party, provided, however that any Source Code Form of any software provided by
either party hereunder shall be maintained in confidence in perpetuity. Each
party further agrees that it shall not use for any purpose not authorized under
this Agreement or disclose to any third party the Confidential Information of
the other party, except that either party may disclose Confidential Information
of the other party on a need-to-know basis to its directors, officers,
employees, consultants and agents, and MPI may disclose such information to its
Affiliates [ * ], if the disclosing party shall have first required such
recipients to undertake an obligation of confidentiality and non-use similar to
this Section 6.1. Upon request from a party, the other party shall return to
such party any and all tangible embodiments of the Confidential Information of
such other party or its Affiliates except to the extent that a party is
expressly permitted to use such Confidential Information pursuant to a license
grant set forth in this Agreement or otherwise.
6.2 MATERIALS. Caliper acknowledges and agrees that the MPI Materials
are and shall remain the sole property of MPI. Any information provided or
developed in connection with the MPI Materials shall be treated as Confidential
Information. The provision or use of MPI Materials under this Agreement does not
grant Caliper, its Affiliates or any other Person any license or other right to
such MPI Materials, except the limited right of Caliper to use the MPI Materials
for the sole purpose for which MPI provided such material to Caliper (as set
forth in the applicable sTAP Plan or NAP Plan or in such other writing) and for
no other purpose. Caliper shall use the MPI Materials only at its own research
facilities and shall not transfer any MPI Material to any other Person or
location, including, without limitation, any of its Affiliates. Caliper
understands that the MPI Materials are experimental and may have unpredictable
or unknown biological and/or chemical properties and that they should be used
with caution. Caliper shall comply with all laws and regulations, and any
written instructions of MPI, applicable to the handling and use of the material.
In no event shall Caliper use the MPI Materials for testing in or treatment of
human subjects. Upon request by MPI, Caliper shall promptly return to MPI or
destroy, in accordance with MPI's instructions, any remaining MPI Materials.
6.3 PUBLICITY. Neither party shall originate any news release or other
public announcement relating to the contents of this Agreement without the prior
written approval of the other party, which approval shall not be unreasonably
withheld, or delayed for longer than [ * ] business days. Notwithstanding the
foregoing, either party may disclose the existence and/or the provisions of this
Agreement (a) under standard obligations of confidentiality and non-use on a
need-to-know basis, to investors and their representatives in a private or
public financing transaction, or to potential acquirers or targets and their
representatives in a corporate change of control transaction; provided, however,
that no such disclosure shall be permitted to the extent it would constitute a
violation of Section 6.1, or (b) as required by law (including but not limited
to the filing of this Agreement as an exhibit to a document filed with the
Securities and Exchange Commission), order or regulation of a governmental
agency. The disclosing party shall provide written notice to the other party of
any such disclosure required by law, order or regulation of a governmental
agency, reasonably in advance of such disclosure if practical. If either party
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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intends to file this Agreement with the Securities and Exchange Commission, it
shall provide the other party with the opportunity to review and comment on the
proposed filing, and the filing party will incorporate the comments of the other
party subject only to securities law requirements.
6.4 PUBLICATIONS. Each party shall have the right to publish and
disclose any non-Confidential Information developed collaboratively under this
Agreement that it owns, provided that such party ("Publishing Party") shall
submit any proposed disclosure to the other party ("Other Party") for its
review, in the case of manuscripts, at least [ * ] days prior to the earlier of
the date of submission to any journal for review or the date of publication or
disclosure, and in the case of public presentations or abstracts, at least [ * ]
days prior to publication or disclosure. The Other Party shall complete its
review of (a) any manuscript within [ * ] days of receipt of the submitted
document and (b) any presentation or abstract within [ * ] days of receipt of
the submitted document. The Other Party may require that the Publishing Party
delete from its documents any reference to the Other Party's Confidential
Information. If, during the applicable review period, the Other Party notifies
the Publishing Party that it desires to file a Patent application on any
inventions disclosed in the documents to which it has rights, the Publishing
Party shall defer publication/disclosure for up to [ * ] additional days from
the date of such notice to permit the Other Party to prepare and file a Patent
application. Authorship of any publication hereunder shall be determined in
accordance with scientific custom.
7. INDEMNIFICATION; DISCLAIMERS; LIMITATION OF LIABILITY
7.1 INDEMNIFICATION BY CALIPER. Caliper shall defend, indemnify and hold
harmless MPI and its Affiliates and all their officers, directors, employees and
agents (collectively, the "MPI Indemnitees") from and against any and all
damages, awards, costs and expenses (including court and arbitration costs,
witness fees and reasonable attorneys' fees) (collectively, "Losses") incurred
by any MPI Indemnitee in connection with any claim, demand, law suit or other
legal action by any third party against such MPI Indemnitee: (a) that arises
from or occurs as a result of (i) any breach of this Agreement by Caliper or its
Affiliates or any act, whether of omission or commission, by Caliper or its
Affiliates with respect to their activities under this Agreement, (ii) the sale
of Products by Caliper and its Affiliates to Persons other than MPI and its
Affiliates or the conduct by Caliper or its Affiliates of their other
businesses, or (iii) any personal injury in connection with the use or handling
by any Caliper employees or agents of any MPI Material; or (b) subject to
Section 7.4 below, that alleges infringement of any Patent claim or other
intellectual property right of a third party with respect to MPI's purchase,
possession or use of any Product; except for those Losses for which MPI has an
obligation to indemnify Caliper Indemnitees pursuant to Section 7.2, as to which
Losses each party shall indemnify the other to the extent of their respective
liability for the Losses; provided, however, that no such indemnification shall
apply to the extent that such Losses arise from or occur as a result of (i) the
gross negligence or intentional misconduct of MPI or its Affiliates, (ii) MPI's
use of Products in violation of this Agreement, (iii) MPI's combination of
Products with technology other than Caliper Technology, or (iv) MPI's
unauthorized modification of Products,.
7.2 INDEMNIFICATION BY MPI. MPI shall defend, indemnify and hold
harmless Caliper, its Affiliates and sublicensees, and all their officers,
directors, employees and agents (collectively, the "Caliper Indemnitees") from
any Losses (as defined in Section 7.1) incurred by
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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any Caliper Indemnitee in connection with any claim, demand, law suit or other
legal action by any third party against any Caliper Indemnitee that arises from
or occurs as a result of (a) any breach of this Agreement by MPI or its
Affiliates or any act, whether of omission or commission, by MPI or its
Affiliates with respect to their activities under this Agreement, or (b) the use
by Caliper of any MPI Materials in sTAP Products as directed by MPI pursuant to
Sections 2.4.2 or 2.4.4, except for those Losses for which Caliper has an
obligation to indemnify MPI Indemnitees pursuant to Section 7.1, as to which
Losses each party shall indemnify the other to the extent of their respective
liability for the Losses; provided, however, that no such indemnification shall
apply to the extent that such Losses arise from or occur as a result of (i) the
gross negligence or intentional misconduct of Caliper or its Affiliates, (ii)
Caliper's use of MPI Materials in violation of this Agreement or in violation of
any reasonable restrictions on use imposed by MPI in accordance with Section 6.2
above, (ii) Caliper's combination of MPI Materials with Caliper Technology or
other technology, or (iii) Caliper's unauthorized modification, transfer or use
of MPI Materials.
7.3 INDEMNIFICATION PROCEDURE. The party seeking indemnification under
this Article 7 (the "Indemnified Party") shall (i) give the other party (the
"Indemnifying Party") notice of the relevant claim and the related facts with
reasonable promptness after becoming aware of same, (ii) reasonably cooperate
with the Indemnifying Party, at the Indemnifying Party's expense, in the defense
of such claim, and (iii) permit the Indemnifying Party to control the defense
and settlement of any such claim, except that the Indemnifying Party shall not
enter into any settlement without the Indemnified Party's prior written
approval, not to be unreasonably withheld or delayed. The Indemnified Party
shall have no authority to settle any claim on behalf of the Indemnifying Party.
In the event the Indemnifying Party controls the defense of a claim hereunder,
the Indemnified Party, at its own expense, shall have the right to participate
in such defense through counsel of its own choosing.
7.4 INTELLECTUAL PROPERTY. Caliper's obligation to indemnify MPI for
claims under Section 7.1 above shall be subject to the following conditions.
Caliper shall determine which sTAP Products to offer and when they will be
offered. Caliper may impose reasonable restrictions upon the use of any Product
for intellectual property reasons, provided it notifies MPI of such restrictions
at the time of sale. Following sale of any Product, if Caliper reasonably
determines that third party intellectual property concerns warrant, Caliper may,
in its sole discretion, (i) obtain for MPI a license to continue to use the
relevant Product, or (ii) replace or modify the relevant Product so as to make
the Product non-infringing. If (i) and (ii) are not commercially and technically
reasonable, Caliper shall have the right to terminate MPI's rights to use the
relevant Product or restrict MPI from using it in a manner Caliper reasonably
believes may be infringing, in which case MPI may elect to have the purchase
price paid by MPI for such Product refunded. With respect to the loss of use of
such Product pursuant to this Section, such a refund shall be MPI's sole remedy
against Caliper.
7.5 CALIPER DISCLAIMER. EXCEPT AS SPECIFICALLY PROVIDED IN ARTICLE 9 OR
ELSEWHERE IN THIS AGREEMENT, CALIPER MAKES NO REPRESENTATION AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO ANY CALIPER
TECHNOLOGY, CALIPER PRODUCT SOFTWARE, NAP PROGRAM SOFTWARE, sTAP PRODUCT OR
OTHER
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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PRODUCTS DEVELOPED OR PROVIDED PURSUANT TO THIS AGREEMENT. MPI acknowledges that
some of the Products to be provided to MPI pursuant to this Agreement are
prototype units, and as such are neither equipped with standard safety features
nor completely tested for defects. MPI acknowledges that such products require a
greater degree of caution than other standard laboratory equipment. Caliper
shall not be liable to MPI for any personal injury or property damage resulting
from use of such equipment in a manner other than that recommended by Caliper.
7.6 MPI DISCLAIMER. EXCEPT AS SPECIFICALLY PROVIDED IN ARTICLE 9 OR
ELSEWHERE IN THIS AGREEMENT, MPI MAKES NO REPRESENTATION AND EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO ANY NAP
PROGRAM SOFTWARE OR ANY OTHER MPI SOFTWARE, TARGETS, MPI MATERIALS, THE PRODUCTS
OR OTHER MATERIALS OR TECHNOLOGY DEVELOPED OR PROVIDED PURSUANT TO THIS
AGREEMENT. Caliper acknowledges that the MPI Materials to be provided to Caliper
pursuant to this Agreement are experimental, and as such may have unpredictable
or unknown biological or chemical properties and are not completely tested for
defects. Caliper acknowledges that such products require a greater degree of
caution than approved pharmaceutical products. MPI shall not be liable to
Caliper for any personal injury or property damage resulting from use of such
Materials in a manner other than as directed by MPI pursuant to Section 6.2.
7.7 LIMITATION OF LIABILITY. EXCEPT IN CIRCUMSTANCES OF GROSS NEGLIGENCE
OR INTENTIONAL MISCONDUCT, AND EXCEPT WITH RESPECT TO THE PARTIES'
INDEMNIFICATION OBLIGATIONS UNDER SECTIONS 7.1 AND 7.2, IN NO EVENT SHALL EITHER
PARTY BE LIABLE TO THE OTHER FOR ANY INDIRECT OR CONSEQUENTIAL DAMAGES
(INCLUDING, WITHOUT LIMITATION, LOST PROFITS) SUFFERED BY THE OTHER PARTY, EVEN
IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY THEREOF. Each party
acknowledges that the foregoing limitations are an essential element of the
Agreement between the parties and that in the absence of such limitations the
pricing and other terms set forth in this Agreement would be substantially
different.
8. TERM AND TERMINATION
8.1 TERM. The term of this Agreement shall commence on the Effective
Date and, unless terminated earlier pursuant to this Article 8 or extended by
MPI pursuant to Section 8.2, shall expire on the second anniversary of the
Effective Date. The Agreement may be further extended by mutual written
agreement of the parties hereto pursuant to Section 10.5.
8.2 EXTENSION BY MPI. MPI shall have the right, in its sole discretion,
to extend the term of this Agreement until the third anniversary of the
Effective Date by written notice to Caliper at least [ * ] days prior to the
second anniversary of the Effective Date. Upon such extension by MPI, all terms
and conditions of this Agreement shall remain in force through the third
anniversary of the Effective Date, provided that MPI shall have no obligation to
make any
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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Core Technology Development Funding Payments after the second anniversary of the
Effective Date.
8.3 TERMINATION OF A PROGRAM FOR MATERIAL BREACH. Either party may
terminate a Program under this Agreement prior to the expiration of the Term
upon any material breach of such Program by the other party if the other party
has not cured such breach within [ * ] days after written notice thereof by the
non-breaching party; provided, however, that a breach of a Program shall not, in
and of itself, be deemed a breach of the other Program; and provided further
that the termination of an Approved NAP Plan shall not constitute a per se
material breach of the NAP or this Agreement. In addition to any other rights
and remedies available to the non-breaching party under this Agreement or
otherwise, the non-breaching party shall be entitled to terminate any or all
Approved NAP Plans on the terms set forth in Section 8.4 below in connection
with any termination of the entire Agreement pursuant to this Section 8.3;
however, the parties agree that failure by one party to substantially perform
under an Approved NAP Plan may or may not constitute a material breach of this
Agreement.
8.4 TERMINATION OF A NAP PLAN.
8.4.1 GENERAL. If any party fails to substantially perform under and
in accordance with an Approved NAP and if, within [ * ] days after written
notice of such substantial non-performance by the performing party, the
non-performing party fails to remedy such non-performance, the performing party
shall have the right to terminate such Approved NAP Plan and, in addition to any
other rights and remedies available to the performing party under this Agreement
or otherwise, the performing party shall be entitled to the following unless
otherwise agreed in writing by the parties in the Approved NAP Plan or otherwise
agreed in writing by the parties:
(a) If the non-performing party is MPI, MPI shall (i) pay to
Caliper within [ * ] days of such termination, [ * ], and (ii) furnish Caliper
with all [ * ] and other [ * ] with respect to such Development NAP Plan.
Further, the [ * ] and the provisions of [ * ] with respect thereto, and any [ *
] to Caliper with respect to Excluded MPI Property for the purpose of [ * ] such
NAP System pursuant to such Approved NAP Plan, [ * ]. MPI shall also provide
such technical assistance as is reasonably necessary for Caliper to exercise
such rights, for a period of up to [ * ] days from the effective date of
termination.
(b) If the non-performing party is Caliper, Caliper (i) shall
pay to MPI within [ * ] days of such termination, [ * ], (ii) shall furnish MPI
with [ * ] with respect to such Development NAP Plan, and (iii) does hereby
grant to MPI and its Affiliates a [ * ] license, with rights to sublicense as
described below, under the [ * ] all purposes in the MPI Business, and to use
the Caliper Know-how in connection therewith; provided, however, that MPI and
its Affiliates shall have [ * ] by any third party and may sublicense the rights
granted above only for the purpose of having [ * ] manufactured by a third party
for use by MPI. Notwithstanding any termination of this Agreement, Caliper shall
supply MPI, and MPI shall purchase from Caliper, MPI's requirements for such
Chips on the terms set forth in Sections 3.8.1 and 4.3.2 and the relevant
Approved NAP Plan(s). Further, Caliper shall provide MPI with [ * ] pursuant to
Section 4.3.6, such materials pursuant to Section 3.5.1 and, for a period of up
to [ * ] days from the effective date of termination, such technical assistance,
in each case as is reasonably
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necessary for MPI to exercise such rights. The license grants to MPI and its
Affiliates in Section 3.1.1 and the provisions of Section 3.4 with respect
thereto, and the rights of MPI and its Affiliates under Sections 4.3.2, 4.3.4,
4.3.5, 4.3.6 and 4.3.7 shall survive such termination.
(c) In the event that the non-breaching party elects to proceed
with the [ * ] under such Development NAP Plan, it shall defend, indemnify and
hold harmless the breaching party and its Affiliates and all their officers,
directors, employees and agents from and against any and all damages, awards,
costs and expenses (including court and arbitration costs, witness fees and
reasonable attorneys' fees) (collectively, "Losses") incurred by any indemnified
party in connection with any claim, demand, law suit or other legal action by
any third party against such indemnified party that arises from or occurs as a
result of [ * ] of such NAP System or NAP Product after termination of the NAP
Plan with respect thereto; provided, however, that no such indemnification shall
apply to the extent that such Losses arise from or occur as a result of the
negligence or intentional misconduct of an indemnified party.
8.4.2 SPECIFIC PERFORMANCE. The parties acknowledge and agree that
because of the special equipment and expertise required to develop and
manufacture Chips, it would not be possible for MPI to manufacture Chips
independently. Failure of Caliper to substantially perform its obligations under
an Approved NAP Plan will result in irreparable harm to MPI that cannot be
compensated by monetary damages. Therefore, in addition to the other rights and
remedies available to the MPI under this Agreement or otherwise, in the event
that MPI terminates this Agreement or one or more Approved NAP Plans pursuant to
this Section 8.3, MPI shall have the right to obtain from any court of competent
jurisdiction specific performance to compel Caliper and its Affiliates to
manufacture (a) in the event [ * ], any Chips in accordance with any Development
NAP Plan approved pursuant to Section 3.3 prior to such termination, and (b) in
the event that [ * ], any Chips in accordance with such NAP Plans, in each case
for sale to MPI in accordance with Sections 3.5.1 and 4.3.2 and the relevant
Approved NAP Plan(s).
8.5 SURVIVING OBLIGATIONS. No expiration or termination of this
Agreement shall relieve either party of any obligation accruing prior to such
expiration or termination. The provisions of Sections [ * ], together with any
provisions required for their enforcement, shall survive the expiration or
termination of this Agreement.
8.6 POST-TERM LICENSE. Following expiration or termination of this
Agreement, the licenses granted to MPI under Sections 2.1 and 3.1.1(b) shall
continue with respect to the sTAP Products and NAP Products, respectively, for
which the licenses have been fully-paid pursuant to Sections 2.1 and 3.1.1(b),
as applicable. Except as otherwise provided in Sections 8.3 and 8.4.1(b), MPI
shall be entitled to continue to purchase such Instruments, Chips and other
Products on the terms provided herein for so long as Caliper continues to offer
such items for sale to third parties. Caliper shall notify MPI before ceasing
production of any Product that MPI has purchased in the [ * ] before production
is due to cease, to enable MPI to place an order to meet future needs.
9. REPRESENTATIONS AND WARRANTIES.
9.1 GENERAL. Each party hereby represents and warrants to the other
party as of the Effective Date as follows:
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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9.1.1 ORGANIZATION. Such party is a corporation duly organized,
validly existing and in good standing under the laws of the state in which it is
incorporated, and has full corporate power and authority and the legal right to
own and operate its property and assets and to carry on its business as it is
now being conducted and as it is contemplated to be conducted by this Agreement.
9.1.2 AUTHORITY. Such party (a) has the power and authority and the
legal right to enter into this Agreement and perform its obligations hereunder,
and (b) has taken all necessary action on its part required to authorize the
execution and delivery of this Agreement and the performance of its obligations
hereunder. This Agreement has been duly executed and delivered on behalf of such
party and constitutes a legal, valid and binding obligation of such party and is
enforceable against it in accordance with its terms subject to the effects of
bankruptcy, insolvency or other laws of general application affecting the
enforcement of creditor rights and judicial principles affecting the
availability of specific performance and general principles of equity, whether
enforceability is considered a proceeding at law or equity.
9.1.3 LITIGATION. Except, with respect to Caliper, as disclosed in
Caliper's prospectus dated December 14, 1999, and, with respect to MPI, as
disclosed in MPI's most recent Annual Report on Form 10-K, such party is not
aware of any pending or threatened litigation (and has not received any
communication) that alleges that such party's activities related to this
Agreement have violated, or that by conducting the activities as contemplated
herein such party would violate, any of the intellectual property rights of any
other Person.
9.1.4 CONSENTS. All necessary consents, approvals and authorizations
of all regulatory and governmental authorities and other Persons required to be
obtained by such party in connection with the execution and delivery of this
Agreement and the performance of its obligations hereunder have been obtained.
9.1.5 NO CONFLICTS. The execution and delivery of this Agreement and
the performance of such party's obligations hereunder (a) do not conflict with
or violate any requirement of applicable law or regulation or any provision of
the articles of incorporation or bylaws of such party in any material way, and
(b) do not conflict with, violate, or breach or constitute a default or require
any consent under, any contractual obligation or court or administrative order
by which such party is bound.
9.1.6 CONFIDENTIALITY AGREEMENTS. All of the employees, officers,
and consultants of such party have executed agreements or have existing
obligations under law requiring assignment to such party of all inventions made
during the course of and as the result of their association with such party and
obligating the individual to maintain as confidential such party's Confidential
Information as well as confidential information of a third party which such
party may receive, to the extent required to support such party's obligations
under this Agreement.
9.2 YEAR 2000 COMPLIANCE. Caliper represents, warrants and covenants to
MPI that none of the Products, Instruments, Chips, or other hardware or software
provided by or on behalf of Caliper under this Agreement (collectively,
"Deliverables") shall, with respect to any date data which the Deliverables use
in any manner and any system date which the Deliverables use
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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as its current date, malfunction, cease to function, generate incorrect data or
produce incorrect results and that all of the Deliverables shall function with
respect to leap year calculations. Caliper further represents, warrants and
covenants that in connection with providing date data to, and accepting date
data from, other automated, computerized and/or software systems and users via
user interfaces, electronic interfaces and data storage, the Deliverables shall
represent dates without ambiguity as to century. In the event the Deliverables
are century non-compliant in any respect, Caliper shall, at no cost to MPI and
within fifteen (15) days of notice to Caliper, correct the non-compliance. Any
such century noncompliance shall not constitute a force majeure.
10. MISCELLANEOUS
10.1 NOTICES. Any consent, notice or report required or permitted to be
given or made under the Agreement by one party to the other party shall be in
writing, delivered personally or by confirmed facsimile, first class mail
postage prepaid, courier, or nationally-recognized delivery service, and
addressed to the other party at its address indicated below, or to such other
address as the addressee shall have last furnished in writing to the addresser.
Such consent, notice or report shall be effective upon delivery to the
addressee.
If to Caliper: Caliper Technologies Corp.
605 Fairchild Drive
Mountain View, California 94043-2234
Attention: Chief Executive Officer
If to MPI: Millennium Pharmaceuticals, Inc.
75 Sidney Street
Cambridge, Massachusetts 02139
Attention: General Counsel
10.2 DISPUTE RESOLUTION.
10.2.1 PROCEDURES. Except with respect to disputes arising under
Articles 5 or 6 or as otherwise provided in this Agreement, if a dispute arises
between the parties in connection with or relating to this Agreement or any
document or instrument delivered in connection herewith that cannot be resolved
by the sTAP Leaders or the NAP Leaders, as applicable, the parties shall use the
following procedure in good faith:
(a) With respect to disputes arising between the sTAP Leaders or
the NAP Leaders under a sTAP Plan or a NAP Plan, as applicable,, either sTAP
Leader or NAP Leader, as applicable, shall have the right to refer the dispute
to the Chief Technology Officer of MPI and the Vice President of Science and
Technology of Caliper, who shall attempt in good faith to negotiate a resolution
of such dispute within thirty (30) days. Any written resolution of the dispute
agreed to by such officers shall be final and binding on the parties.
(b) Any dispute that the Chief Technology Officer of Millennium
and Vice President of Science and Technology of Caliper are unable to resolve
pursuant to Section 10.2.1(a) within thirty (30) days after the matter is
referred to them or any other dispute subject to this Section 10.2.1 shall be
referred to MPI's President, Pharmaceutical Research and
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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Development of MPI or its Chief Business Officer and Caliper's Chief Executive
Officer, who shall attempt in good faith to negotiate a resolution of the
dispute within thirty (30) days of such referral or such longer period as they
may agree. Each such officer shall have the right to engage the services of any
number of independent experts in the field in question (the Person so engaged by
each officer to be reasonably acceptable to the other officer in terms of
independence and expertise and shall be engaged under obligations of
confidentiality) to assist the officers in making a joint determination in the
best interests of the collaboration, and each officer shall be obligated to
consider in good faith the analyses and opinions of any such independent experts
engaged by either of them in making a determination. Any written resolution of
the dispute agreed to by such officers shall be final and binding on the
parties.
(c) If the executive officers have not succeeded in negotiating
a written resolution of the dispute within the time allotted therefor, either
party shall have the right to refer the dispute for resolution by compulsory
arbitration in accordance with the then current Commercial Arbitration Rules of
the American Arbitration Association by a single arbitrator appointed in
accordance with such rules or by such other dispute resolution procedure as the
parties may agree. Judgment on any award rendered by the arbitrator may be
entered in any court having jurisdiction thereof. The parties agree that, any
provision of applicable law notwithstanding, they shall not request, and the
arbitrator shall have no authority to award, punitive or exemplary damages
against any party. The losing party shall pay the reasonable attorneys' fees,
costs and other expenses (including expert witness fees) of the prevailing party
in connection with any such dispute resolution proceeding. The decision of the
arbitrator shall be final and binding absent manifest error.
10.2.2 INTERIM RELIEF. Notwithstanding anything herein to the
contrary, nothing in this Section shall preclude either party from seeking
interim or provisional relief, including a temporary restraining order,
preliminary injunction or other interim equitable relief concerning a dispute,
either prior to or during the arbitration or other dispute resolution
proceeding, if necessary to protect the interests of such party. This Section
shall be specifically enforceable.
10.3 GOVERNING LAW. The Agreement shall be governed by and construed in
accordance with the laws of the State of New York, without regard to the
conflicts of law principles thereof.
10.4 ASSIGNMENT. This Agreement is personal in its character, and
neither party shall assign its rights or obligations under this Agreement, in
whole or in part, without the prior written consent of the other party;
provided, however, that either party may assign this Agreement (i) to any
successor by merger or sale of substantially all of the line of business to
which this Agreement relates, or (ii) to any Affiliate, in each case so long as
such successor, acquirer or Affiliate expressly agrees to be bound by the terms
of this Agreement. This Agreement shall be binding on and inure to the benefit
of the successors or permitted assigns of the parties hereto, and all entities
controlled by them. Notwithstanding the foregoing, in the event either party
(the "Merged Party") is acquired by or merged into, or transfers substantially
all of its assets to, [ * ], then the Other Party shall have the right to
terminate this Agreement in its entirety with thirty (30) days written notice,
but not pursuant to Section 8.3 or 8.4 unless such sections otherwise apply by
their terms, or (b) another Person, [ * ], then the Other Party shall
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COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
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have the right to terminate the NAP in its entirety with thirty (30) days
written notice, but not pursuant to Section 8.3 or 8.4 unless such sections
otherwise apply by their terms.
10.5 WAIVERS AND AMENDMENTS. No waiver shall be deemed to have been made
by any party hereto of any of its rights under this Agreement unless such waiver
is in writing and is signed on behalf of such party by its duly authorized
officer. Any such waiver shall constitute a waiver only with respect to the
specific matter described in such writing and shall in no way impair the rights
of the waiving party in any other respect or at any other time. No change or
modification of this Agreement, or any of the provisions herein contained, shall
be valid unless made in writing and signed by duly authorized representatives of
the parties hereto.
10.6 ENTIRE AGREEMENT. This Agreement, together with the exhibits and
schedules hereto, embodies the entire understanding between the parties and
supersedes any prior understanding and agreements between and among Caliper and
MPI with respect to the subject matter of this Agreement.
10.7 SEVERABILITY. If a court of competent jurisdiction declares any
provision of this Agreement invalid or unenforceable, or if any government or
other agency having jurisdiction over either party deems any provision to be
contrary to any laws, then that provision shall be severed and the remainder of
the Agreement shall continue in full force and effect. To the extent possible,
the parties shall revise such invalidated provision in a manner that will render
such provision valid without impairing the parties' original intent.
10.8 DISCLAIMER OF AGENCY OR EMPLOYMENT. The relationship between
Caliper and MPI is that of independent contractors. Caliper and MPI are not
joint venturers, partners, principal and agent, master and servant, employer or
employee, and have no relationship other than that of independent contracting
parties. Neither party shall have the right or authority to assume, create, or
incur any third party liability or obligation of any kind, express or implied,
against or in the name of or on behalf of another. All persons employed by a
party shall be employees of such party and not of the other party and all costs
and obligations incurred by reason of any such employment shall be for the
account and expense of such party.
10.9 NON-SOLICITATION. Neither party may actively solicit any employee
of the other party to leave the employ of that party during the term of this
Agreement. If either party receives an unsolicited employment inquiry from an
employee of the other party, it shall not make any written offer of employment
to such individual without notifying the other party in writing at least five
(5) days before making such an offer.
10.10 THIRD-PARTY RIGHTS. This Agreement is not intended to confer any
benefit upon, or create any right in favor of, any Person other than the parties
hereto and, where expressly provided, their Affiliates.
10.11 REFERENCES. Unless otherwise specified, (a) references in this
Agreement to any Article, Section, Schedule or Exhibit shall mean references to
such Article, Section, Schedule or Exhibit of this Agreement, (b) references in
any section to any clause are references to such clause of such section, and (c)
references to any agreement, instrument or other document in this Agreement
refer to such agreement, instrument or other document as originally executed or,
if
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
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subsequently varied, replaced or supplemented from time to time, as so varied,
replaced or supplemented and in effect at the relevant time of reference
thereto.
10.12 CONSTRUCTION OF AGREEMENT. Except where the context otherwise
requires, wherever used, the singular shall include the plural, the plural the
singular, the use of any gender shall be applicable to all genders and the word
"or" is used in the inclusive sense. The captions of this Agreement are for
convenience of reference only and in no way define, describe, extend or limit
the scope or intent of this Agreement or the intent of any provision contained
in this Agreement. This Agreement was prepared as a result of negotiation and
mutual agreement between the parties. Accordingly, no provision of this
Agreement shall be construed against any party on the basis that such party
drafted this Agreement or such provision.
10.13 FURTHER ASSURANCES. The parties covenant and agree that,
subsequent to the execution and delivery of this Agreement, and without any
additional consideration therefor, each party shall execute and deliver any
further legal instruments and perform any further acts that are or may become
necessary to effectuate the purposes of this Agreement.
10.14 COUNTERPARTS. The Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
[THIS SPACE INTENTIONALLY LEFT BLANK]
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[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.
37
IN WITNESS WHEREOF, the parties have executed the Agreement as of the
Effective Date.
CALIPER TECHNOLOGIES CORP. MILLENNIUM PHARMACEUTICALS, INC.
By: /s/ Michael R. Knapp By: /s/ Steven H. Holtzman
---------------------------------- ----------------------------------
Name: Michael R. Knapp Name: Steven H. Holtzman
-------------------------------- --------------------------------
Title: V.P. Science and Technology Title: Chief Business Officer
-------------------------------- -------------------------------
37
[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS
AMENDED.