PATENT LICENSE AGREEMENT
Effective on the 19th day of March, 1998, by and between:
THE UNIVERSITY OF CHICAGO
OPERATOR OF ARGONNE NATIONAL LABORATORY
UNDER ITS U.S. DEPARTMENT OF ENERGY CONTRACT NO. W-31-109-ENG-38
&
PACKARD INSTRUMENT CO., INC.
This Agreement is between the University of Chicago as Operator of Argonne
National Laboratory under its U.S. Department of Energy (DOE) Contract No.
W-31-109-ENG-38 (hereinafter "Licensor") and Packard Instrument Co., Inc., a
corporation organized and existing under the laws of the State of Delaware with
its principal office at 800 Research Parkway, Meriden, CT 06450 (hereinafter
"Licensee").
1. BACKGROUND
1.1 Licensor, under the above identified DOE contract has a contractual
arrangement with the Engelhardt Institute of Molecular Biology, Russian Academy
of Sciences, Moscow, Russia under a Memorandum of Understanding dated December
8, 1994 and a subcontract identified as ANL Subcontract No. 943352403. Pursuant
to said Memorandum of Understanding and Subcontract and existing laws of the
United States, Licensor has acquired rights in and to certain inventions
identified in Exhibit A which is attached and incorporated herein.
1.2 Licensor, under the above identified DOE contract, has conceived or first
reduced to practice certain inventions identified in Exhibit A. Pursuant to the
terms of said DOE Contract and existing laws of the United States, Licensor has
acquired certain rights in and to these inventions.
1.3 The inventions described in Article 1.1 and 1.2 above and identified in
Exhibit A which is attached and incorporated herein are hereinafter collectively
referred to as "Background Inventions."
1.4 Licensee has an established commercial position in the drug discovery,
genomic research and biomedical market segments. Licensee markets a wide array
of imagers for the detection of samples on microchips and provides robotic
liquid handling equipment to effect DNA extraction, DNA purification, DNA
amplification (PCR) and sequence template preparation. Licensee wishes to
enhance its commercial position in DNA chip technology and, to effect this, is
entering into collaborative research agreement with Licensor and Motorola, Inc.,
Schaumburg, Illinois, identified as CRADA C9701902. The parties recognize that
Licensor may generate "Subject Inventions" under said CRADA C9701902 and acquire
rights thereto pursuant to the terms of said CRADA, said DOE Contract and
existing laws of the United States.
Licensee desires to acquire rights in and to said Background Inventions and
Licensor's Subject Inventions under CRADA C9701902.
Licensor is willing to grant rights in and to said Background Inventions and
Licensor's Subject Inventions under CRADA C9701902 so that the inventions may be
developed and used to the fullest extent for the benefit of Engelhardt Institute
of Molecular Biology, the benefit of the U.S. Economy and the general public.
2. DEFINITIONS
2.1 "Licensed Background Patents" shall mean the U.S. patents for inventions
identified and listed in Exhibit A. Such patents shall include all patents of
addition, reissues, reexaminations or extensions of the foregoing provided the
Licensor is the owner thereof or has the right to
sublicense. Further, such patent applications shall include any continuations,
continuations-in-part and divisions provided the Licensor is the owner thereof
or has the right to sublicense.
2.2 "Licensed Subject-Invention Patents" shall mean the patents issuing on the
Subject Inventions of Licensor under said CRADA C9701902 pursuant to Articles
XVIC and XVIF thereof.
2.3 "Licensed Patents" shall mean any Licensed Background Patents and/or
Licensed Subject-Invention Patents.
2.4 "Licensed Products" shall mean any and all products made, used, or sold by
the Licensee within the scope of one or more claims of Licensed Patents.
2.5 "Licensed Method" is any method, procedure or process whose use or practice
is within the scope of any claim of Licensed Patents.
2.6 "Licensee Affiliate" is defined as any entity in which Licensee, now or in
the future, owns or controls, directly or indirectly, greater than forty percent
(40%) of the stock carrying the right to vote for or appoint directors or
property or equity right in the entity. It further includes BioSignal, Inc.,
1744 William Street, Montreal, QC Canada H3J1R4 provided Licensee has and
maintains a nineteen and one half percentage (19.5%) interest right therein.
2.7 "Gross Sales of Licensed Products" shall mean [* * *]. In the case of
Licensed Products used or transferred internally or incorporated into another
product that does not infringe a Licensed Patent, Gross Sales of Licensed
Products shall mean the fair market value of Licensed Products as if they
were sold to an unrelated third party in similar quantities.
2.8 "Licensed Service" shall mean any service offered or performed by Licensee
wherein a Licensed Method is used or practiced other than to produce a Licensed
Product.
2.9 "Gross Sales of Licensed Services" shall mean [* * *]. In the case of
Licensed Services provided internally, Gross Sales of Licensed Services shall
mean the fair market value of Licensed Services as if they were provided to
an unrelated third party under similar circumstances.
2.10 "Life Science Research Field of Use" is defined in Exhibit E which is
attached and incorporated herein.
2.11 "Clinical Diagnostics Field of Use" is defined in Exhibit F which is
attached and incorporated herein.
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-2-
3. GRANTS
3.1
(a) Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee and each Licensee Affiliate in the United States the
nonexclusive right and license, to make, use, and sell Licensed Products and
practice the Licensed Method embodying said Licensed Patents. The nonexclusive
license to Licensee shall include the right to grant sublicenses pursuant to
Article 5 of the same scope in all fields.
However, it is expressly agreed and understood that the
aforedescribed right to Licensee to grant sublicenses pursuant to Article 5 does
not extend to Licensed Subject-Invention Patents for which Licensee has not
requested U.S. rights pursuant to Article XVC of CRADA C9701902. No right to
sublicense is granted to Licensee for Licensed Subject-Invention Patents for
which Licensee has not requested U.S. rights.
(b) Subject to the terms and conditions of this Agreement with respect to
Licensed Subject-Invention Patents to which Licensee has requested U.S. rights
pursuant to Article XVC of CRADA C9701902, Licensor hereby grants to Licensee
and each Licensee Affiliate in the United States a limited-exclusive right and
license, with the right to sublicense pursuant to Article 5, to make, use, and
sell Licensed Products and practice the Licensed Methods embodying said Licensed
Subject-Invention Patents in the Life Science Research Field of Use as defined
in Exhibit E. A limited-exclusive license to Licensee of paragraph 3.1(b) of
this Article is subject to a nonexclusive license in the Life Science Research
Field of Use of Exhibit E with the right to sublicense that Licensor may grant
to Motorola, Inc. pursuant to the terms of CRADA C9701902 and a license
agreement associated therewith.
Subject to the terms and conditions of this Agreement with respect
to Licensed Subject-Invention Patents to which Licensee has requested U.S.
rights pursuant to Article XVC of CRADA C9701902, Licensor hereby grants to
Licensee and each Licensee Affiliate in the United States a nonexclusive right
and license, with the right to sublicense pursuant to Article 5, to make, use,
and sell Licensed Products and practice the Licensed Methods embodying said
Licensed Subject-Invention Patents in the Clinical Diagnostics Field of Use as
defined in Exhibit F. The nonexclusive license to Licensee of paragraph 3.1(b)
of this Article is subject to a limited-exclusive license in the Clinical
Diagnostics Field of Use of Exhibit F with the right to sublicense that Licensor
may grant to Motorola, Inc. pursuant to the terms of CRADA C9701902 and a
license agreement associated therewith.
(c) Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee and each Licensee Affiliate in each foreign country in which
Licensee has requested rights and in which a patent application has been filed
in accordance with Articles XV and XVI of CRADA C9701902, the nonexclusive right
and license, to make use and sell Licensed Products and practice the Licensed
Methods embodying said Licensed Subject-Invention Patents. The nonexclusive
license to Licensee shall include the right to grant sublicenses pursuant to
Article 5 of the same scope in all fields.
-3-
(d) Subject to the terms and conditions of this Agreement, Licensor hereby
grants to Licensee and each Licensee Affiliate, in each foreign country in which
Licensee has requested rights and in which a patent application has been filed
in accordance with Articles XV and XVI of CRADA C9701902, the limited-exclusive
right and license, with the right to sublicense pursuant to Article 5, to make
use and sell Licensed Products and practice the Licensed Methods embodying said
Licensed Subject-Invention Patents in the Life Science Research Field of Use as
defined in Exhibit E. The limited-exclusive license to Licensee of paragraph
3.1(d) of this Article is subject to a nonexclusive license in the Life Science
Research Field of Use of Exhibit E with the right to sublicense that Licensor
may grant to Motorola, Inc. pursuant to the terms of CRADA C9701902 and a
license agreement associated therewith.
Subject to the terms and conditions of this Agreement, Licensor
hereby grants to Licensee and each Licensee Affiliate, in each foreign country
in which Licensee has requested rights and in which a patent application has
been filed in accordance with Articles XV and XVI of CRADA C9701902, a
nonexclusive right and license, with the right to sublicense pursuant to Article
5, to make use and sell Licensed Products and practice the Licensed Methods
embodying said Licensed Subject-Invention Patents in the Clinical Diagnostics
Field of Use as defined in Exhibit F. The nonexclusive license to Licensee of
paragraph 3.1(d) of this Article is subject to a limited-exclusive license in
the Clinical Diagnostics Field of Use of Exhibit F with the right to sublicense
that Licensor may grant to Motorola, Inc. pursuant to the terms of CRADA
C9701902 and a license agreement associated therewith.
3.2 The license and right granted in Article 3.1 is subject to the following
U.S. Government rights:
THE U.S. GOVERNMENT HAS A PAID-UP, ROYALTY-FREE, NON-TRANSFERABLE, WORLDWIDE,
IRREVOCABLE LICENSE FOR GOVERNMENT USE TO PRACTICE OR HAVE PRACTICED BY OR ON
BEHALF OF THE U.S. GOVERNMENT THE LICENSED PATENTS. THE U.S. GOVERNMENT HAS
CERTAIN OTHER RIGHTS UNDER 35 USC 200 ET SEQ. AND APPLICABLE REGULATIONS.
3.3
(a) Licensee may, within [* * *] after the last party executed this
Agreement, request in writing foreign rights in and to a Licensed Background
Patent. Such request shall identify each country in which Licensee requests
license rights.
(b) Licensor, to the extent it has the right at the time of Licensee's
written request and to the extent that no patent application has been filed
thereon in the identified country, will cause to be filed on the Licensed
Background Patent, a patent application in each country identified by Licensee.
(c) Licensee agrees that it shall be responsible for and pay, as directed
by Licensor, for all external costs associated with the drafting, filing,
prosecuting, issuance and maintenance fees of each Licensed Background Patent
for which a patent application is filed in each country at Licensee's request
pursuant to paragraphs 3.3 (a) and (b) above of this Article.
(d) Licensor shall provide copies of documents to be filed, filed and
received in the prosecution of patent applications filed by Licensor pursuant to
paragraph 3.3 (b) above on each
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-4-
Licensed Background Patent and shall afford Licensee an opportunity to comment
thereon. It is expressly understood and agreed that Licensor shall control the
prosecution of patent applications on Licensed Background Patent patent
applications, taking into account any comments provided by Licensee.
(e) Licensee agrees to pay its costs obligated under this Article within
thirty (30) days after receipt of billing. Failure to pay such costs by Licensee
shall terminate any license to Licensee granted under this Agreement to any
patent application covered by such costs.
(f) Licensor, to the extent that it has the right at the time of
Licensee's written request of paragraph 3.3(a), agrees to grant a nonexclusive
license to Licensee in each such patent application filed at Licensee's expense
in each country identified by Licensee, with the right to sublicense pursuant to
Article 5, to make use and sell Licensed Products and practice the Licensed
Method embodying said Licensed Background Patent.
(g) It is anticipated by the parties that Licensor shall enter into an
arrangement with Motorola, Inc., Schaumburg, IL, wherein Motorola, Inc. may
request nonexclusive foreign license rights in and to Licensed Background
Patents. Licensor agrees that to the extent that such rights are granted to
Motorola, Inc. in and to a patent application on a Licensed Background Patent in
a country for which Licensee has an obligation to pay the costs thereon pursuant
to paragraph 3.3 (c) of this Article, Licensee's obligation thereto shall be
reduced to fifty percent (50%) of such costs.
(h) Licensor agrees that, if Licensor grants any license to a third
party in and to a patent application or patents on a Licensed Background
Patent in a country for which Licensee has an obligation to pay all the costs
thereon pursuant to paragraph 3.3(c) of this Article (other than to the U.S.
Government or Motorola, Inc. under a collaborative research agreement with
Licensor), Licensor agrees to pay Licensee [* * *] of the gross royalties from
such license attributable to said patent application until a sum equal to[* * *]
times the amount paid by Licensee as costs under this Article 3.3 is
attained. For patent applications or patents on a Licensed Background Patent
wherein Licensee's obligation to pay the costs therefor is [* * *]of such
costs, Licensee's share of the gross royalties attributable to such patent
application or patent shall be [* * *] of the gross royalties until a sum equal
to [* * *] the amount paid by Licensee as costs under this Article 3.3 is
attained.
4. U.S. COMPETITIVENESS
Licensee agrees that any Licensed Product(s) for use or sale in the United
States shall be manufactured substantially in the United States. Further,
Licensee agrees that if Licensee is a CRADA Participant with Licensor, then the
U.S. Competitiveness terms and conditions of said CRADA shall apply to Licensed
Subject-Invention Patents under this License Agreement.
5. SUBLICENSES
5.1 Licensee may grant sublicenses only under the following conditions:
(a) Licensed Products sold or used in the U.S. will be substantially
manufactured in the U.S., and
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-5-
(b) Significant economic and technical benefits will flow to the U.S. as
a result of the sublicense agreement.
If these conditions cannot be met, then the Licensee must obtain written
approval from the Licensor before granting a sublicense.
5.2 Any sublicenses that the Licensee grants to a third party must include all
the applicable rights and obligations due the Licensor that are contained in
this Agreement. Licensee will not sublicense at rates lower than those set forth
in Exhibit C, paragraphs B and C, without prior written consent of Licensor. The
sublicenses granted under this Agreement are subject to the license to the U.S.
Government and the rights reserved by the Licensor.
5.3 Licensee will provide the Licensor with a copy of each sublicense entered
into with a third party within thirty (30) days of execution. All sublicense
royalties due the Licensor pursuant to Exhibit C, Paragraph D from the sale of
Licensed Products and the practice of Licensed Methods by a Sublicensee shall be
paid to Licensor by Licensee.
5.4 Licensee will pay Licensor the amounts due from sublicensees and deliver all
reports due the Licensor from sublicensees according to the schedule set forth
in Article 7 (Records and Reports).
5.5 If this Agreement is terminated for any reason or abated pursuant to Article
8.2, Licensor will automatically succeed to all rights of Licensee arising from
sublicenses granted under this Agreement. Any sublicensee who is not in default
of the terms and conditions of its sublicensee agreement with Licensee may make
a written request to continue such sublicense agreement as a license agreement
with the Licensor, which request will not be unreasonably withheld.
6. ROYALTIES AND COMMERCIALIZATION PLAN
6.1 In consideration of the rights and licenses granted herein, Licensee agrees
to the provisions of Exhibit B and Exhibit C attached hereto and hereby
incorporated into this Agreement.
6.2 No royalties shall be owed on any Licensed Product(s) produced or any
Licensed Method practiced for or under any Federal governmental agency contract
pursuant to the DOE nonexclusive license for Federal governmental purposes but
only to the extent the Federal government received a discount on Licensed
Product or Licensed Service sales which discount is equivalent to or greater
than the amount of any such royalty that would otherwise be due.
6.3 No royalties shall be owed on any Licensed Product(s) produced or Licensed
Method practiced for or on behalf of Motorola, Inc. to the extent that Motorola,
Inc. has a license thereto granted by Licensor and is obligated to pay royalties
thereon to Licensor. However, such must be reported pursuant to Article 7.
6.4 Upon termination of this Agreement for any reason whatsoever, any royalties
that remain unpaid shall be promptly reported and paid to Licensor within thirty
(30) days of any such termination.
-6-
6.5 Licensed Products are considered sold when invoiced, if not invoiced, when
delivered to a third party. If any patent covering Licensed Products expires, or
if the license terminates, then all shipments made on or before the date of
expiration or termination that have not been billed are considered sold and
subject to royalty. Royalties paid on Licensed Products which are not accepted
by the customer are credited to Licensee.
6.6 Licensed Services are considered sold when invoiced, if not invoiced, when
provided to a third party.
6.7 When the Gross Sales of Licensed Products and Services by Licensee attain
[***], Licensee may request in writing that the royalty terms of this license
as set forth in Appendix C be renegotiated. Licensor and Licensee agree, upon
receipt by Licensor of such written request, to renegotiate such royalty
terms in good faith and that such terms shall reflect customary Government
and industry licensing practices at that time.
7. RECORDS AND REPORTS
7.1 Licensee agrees to keep adequate and sufficiently detailed records of
Licensed Product(s) and Licensed Services to enable royalties payable hereunder
to be determined and to provide such records for inspection at Licensee's
facilities in the U.S. by authorized representatives of Licensor at any time
upon reasonable advance notice during the regular business hours of Licensee.
Licensee agrees that any extant additional records of Licensee, as Licensor may
reasonably determine are necessary to verify the above records, shall also be
provided to Licensor for inspection at Licensee's facilities in the U.S.
7.2 Licensor will pay the costs incurred by its representatives to examine
the Licensee's books and records. If there is any error in the royalty
accounting of more than [* * *] of the total royalties due for any year or
[* * *]whichever is greater, then Licensee will pay the reasonable costs
incurred for the Licensor's examination.
7.3 Within thirty (30) calendar days after the close of each calendar year
during the term of this Agreement (i.e. January 31), Licensee will furnish
Licensor a written report providing: (a) the aggregate amount of all sales in
U.S. Dollars during the preceding calendar year period of Licensed Product(s)
(if none, Licensee will so indicate) and (b) the aggregate amount of royalties
due in U.S. Dollars for the preceding calendar year period pursuant to the
provisions hereof. (See Exhibit D part B)
7.4 Licensee will pay Licensor royalties due hereunder on a quarterly basis for
quarters ending March 3l, June 30, September 30 and December 3l. Such quarterly
payments shall be paid to Licensor no later than thirty (30) days following each
quarterly period. (See Exhibit D part C)
7.5 Should Licensee fail to make any payment to Licensor within the time period
prescribed for such payment, then the unpaid amount shall bear interest at the
rate of one and one-half percent (1.5%) per month or, if less, the greatest
amount permitted by law, from the date when payment was due until payment in
full, with interest, is made.
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-7-
8. DUE DILIGENCE
8.1 Licensee will proceed diligently to develop, manufacture, sell, and provide
Licensed Products and Licensed Services. Licensee will market Licensed Products
or Licensed Services diligently within a reasonable time after this Agreement is
executed. Licensee must demonstrate a continuing effort to market Licensed
Products and Licensed Services following Licensee's first offer of Licensed
Products and Licensed Services for sale.
8.2 If Licensee is unable to perform the schedule and conditions set forth in
Exhibit B, and the diligence of Article 8.1 above, as its sole and exclusive
remedy for such inability to perform, Licensor may abate Licensee's license
of Article 3.1 to a nonexclusive license with no right to sublicense with the
royalties of Exhibit C applicable thereto, except that the minimum annual
royalties of Exhibit C shall be [* * *] per year for the year 2001 and each
calendar year thereafter.
9. TECHNICAL ASSISTANCE
Licensor agrees, upon the written request of Licensee and within the policies
and rules of the Department of Energy then in effect, to assist Licensee in
seeking necessary DOE approvals for Licensor to provide technical assistance to
Licensee at Licensor's facilities under appropriate agreements. The cost of such
technical assistance shall be paid by the Licensee.
10. INFRINGEMENT BY THIRD PARTIES
10.1 If Licensee learns of the infringement of any patent licensed under this
Agreement, Licensee will inform Licensor in writing within thirty (30) days and
provide all known evidence of the infringement. Licensee will not contact the
potential infringer concerning the infringement without prior written approval
of the Licensor. The parties will use their best efforts to cooperate with each
other to terminate the infringement without litigation.
10.2 Licensee may request in writing that Licensor take legal action against
infringement of a Licensed Patent. This request must include reasonable evidence
of the infringement and damages to Licensee.
10.3 Within one hundred and eighty (180) days of Licensee's request, if the
infringement continues, the Licensor will:
(a) commence suit on its own account; or
(b) agree to bring suit jointly with Licensee; or
(c) notify Licensee that the Licensor will not bring suit and agrees to
the extent Licensee has a limited-exclusive license in the infringed
patent and standing in a court of competent jurisdiction, Licensee
may bring suit on its own account.
10.4 If Licensee elects to bring suit in accordance with this Article, the
Licensor may join such suit later at the Licensor's expense.
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-8-
10.5 Legal action brought by one party will be at the expense of that party, who
will be entitled to all recoveries from that suit. If Licensor and Licensee
bring a joint legal action, the parties will share the expenses and recoveries
in proportion to the costs incurred by each party.
10.6 Each party will cooperate with the other in litigation proceedings brought
under this Agreement, but at the expense of the party bringing suit, except that
each party may be represented by counsel of its choice in any suit brought by
the other party.
11. REPRESENTATIONS AND WARRANTIES
11.1 Licensor represents and warranties that Licensor has the right to grant the
rights, licenses, and privileges granted herein.
11.2 Nothing in this Agreement will be interpreted as:
(a) A warranty or representation by the Licensor as to the validity or
scope of any of the Licensor's rights in Licensed Patents; or
(b) A warranty or representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents or copyrights of third parties; or
(c) Any obligation to bring suit against a third party for patent or
copyright infringement; or
(d) Conferring by implication, estoppel, or otherwise any license or
rights under any patents of the Licensor other than Licensed Patents as defined
in this Agreement, regardless of whether such patents are dominant or
subordinate to Licensed Patents; or
(e) An obligation to furnish any know-how or improvements not specifically
provided in this Agreement.
11.3 Licensor represents and warranties that Licensor has no knowledge of any
claims of infringement filed against Licensor for practicing the Licensed
Patents.
12. EXPORT CONTROL
LICENSEE ACKNOWLEDGES THAT THE EXPORT OF ANY PRODUCTS AND/OR TECHNICAL DATA FROM
THE UNITED STATES MAY REQUIRE SOME FORM OF EXPORT CONTROL LICENSE FROM THE U.S.
GOVERNMENT. FAILURE TO OBTAIN ANY REQUIRED EXPORT LICENSES BY LICENSEE MAY
RESULT IN LICENSEE SUBJECTING ITSELF TO CRIMINAL LIABILITY UNDER U.S. LAWS.
13. DISCLAIMER
NEITHER LICENSOR, THE DOE, NOR PERSONS ACTING ON THEIR BEHALF MAKE ANY WARRANTY,
EXPRESS OR IMPLIED: (1) WITH RESPECT TO THE MERCHANTABILITY, ACCURACY,
COMPLETENESS, OR USEFULNESS OF ANY
-9-
SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER; (2) THAT THE USE OF ANY
SUCH SERVICES, MATERIALS, OR INFORMATION WILL NOT INFRINGE PRIVATELY OWNED
RIGHTS; (3) THAT THE SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER
WILL NOT RESULT IN INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE; OR (4) THAT THE
SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER WILL ACCOMPLISH THE
INTENDED RESULTS OR ARE SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR
PARTICULAR PURPOSE. FURTHERMORE, LICENSOR AND THE DOE HEREBY SPECIFICALLY
DISCLAIM ANY AND ALL WARRANTIES, EXPRESS OR IMPLIED, FOR ANY PRODUCTS
MANUFACTURED, USED, OR SOLD BY LICENSEE. NEITHER LICENSOR NOR THE DOE SHALL BE
LIABLE FOR CONSEQUENTIAL OR INCIDENTAL DAMAGES IN ANY EVENT.
14. PRODUCT LIABILITY
Except for any liability resulting from any negligent act or omission of the
U.S. Government or the Licensor, Licensee indemnities the U.S. Government and
the Licensor, and their officers, employees, and agents, for all damages, costs,
and expenses, including attorneys' fees, arising from personal injury or
property damage to third parties occurring as a result of the commercialization
and utilization of the Licensed Patents by Licensee, including but not limited
to, the making, using, selling, or exporting of products, processes, or services
derived therefrom. This indemnification shall include, but not be limited to,
indemnification for any product liability resulting from the commercialization
and utilization or the Licensed Patents by Licensee. The indemnity set forth in
this Paragraph 14 shall apply only if Licensee shall have been informed as soon
and as completely as practical by the Licensor and/or the U.S. Government of the
action alleging such claim and shall have been given an opportunity, to the
maximum extent afforded by applicable laws, rules, or regulations, to
participate in and control its defense, and the Licensor and/or the U.S.
Government shall have provided reasonably available information and reasonable
assistance requested by Licensee. No settlement for which Licensee shall be
responsible shall be made without Licensee's consent unless required by final
decree of a court of competent jurisdiction.
15. TERM OF AGREEMENT AND EARLY TERMINATION OR ABATEMENT
15.1 Unless previously terminated by operation of law or by acts of the Parties
under this Agreement, this Agreement is binding upon the date of execution by
the last signing party ("Effective Date") and will run to and terminate upon the
expiration of the last-to-expire issued patent covered by Licensed Patents.
15.2 A party shall have the right to terminate this Agreement (without judicial
resolution) upon notice to the other party after a breach of any material
provision by the other party has gone uncorrected for sixty (60) days after the
other party has been notified of such breach by the terminating party.
15.3 [* * *]
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-10-
[* * *] If agreement is not reached within ninety (90) days after the issuance
of such injunctive relief, Licensee may terminate this license prospectively
without charge by written notice to Licensor. Such termination shall be
effective upon receipt by Licensor of said notice.
15.4 Licensee may terminate this License Agreement prospectively by giving
written notice to Licensor any time subsequent to November 1, 2000. Such
termination by Licensee shall be subject to a termination fee payable by
Licensee to Licensor of [* * *] payable thirty (30) days after the effective
date of such termination. Further, such termination shall be effective thirty
(30) days from the date of delivery of such notice and all of Licensee's
rights under this Agreement shall cease as of that date.
15.5 Licensor agrees that the minimum royalty payments of Exhibit C, Paragraph
E.1. shall be abated a pro rata amount of any delay in completion of task 2B in
the Scope of Work of CRADA C9701902.
15.6 Commencing January 1, 2001, Licensee, upon six (6) month written notice
to Licensor, may prospectively abate Licensee's license of Article 3.1 to a
nonexclusive license with no right to sublicense with the royalties of
Exhibit C applicable thereto except that the minimum annual royalty of
Exhibit C shall be [* * *] per calendar year thereafter. Further, such
abatement shall be subject to Licensee paying Licensor a license abatement
fee of [* * *] payable thirty (30) days after the effective date of such
abatement.
16. ASSIGNABILITY
The Parties agree that Licensor, at its sole discretion, may immediately
terminate this Agreement upon any attempt by Licensee to transfer its interest
in whole or in part in this Agreement to any other party without the written
permission of the Licensor, unless such transfer is to an acquirer of all or
substantially all of Licensee's business and that such acquirer shall agree to
the U.S. Competitiveness clause of this license and CRADA C9701902 as though it
were a Participant therein. With respect to a transfer to a successor to
Licensee's business, Licensor's permission shall be required, if acquirer is not
a U.S. corporation.
17. RIGHTS OF PARTIES AFTER TERMINATION
17.1 Neither party shall be relieved of any obligation or liability under this
Agreement arising from any act or omission committed prior to the effective date
of termination. All licensed rights granted under this agreement shall terminate
as of the effective date of any termination.
17.2 From and after any termination of this Agreement, Licensee shall have the
right to sell any Licensed Products that Licensee had already manufactured prior
to termination, provided
[* * *] Indicates information omitted pursuant to a request for confidential
treatment and filed separately with the Securities and Exchange Commission
pursuant to Rule 24b-2 under the Securities Exchange Act of 1934,
as amended.
-11-
that all royalties and reports required hereinabove shall be submitted to
Licensor. Licensee will provide the Licensor with a written inventory of all
Licensed Products in stock within thirty (30) days of the effective date of
termination by either party. All sales of such inventoried Licensed Products are
subject to the terms of this Agreement.
17.3 Except as provided in Article 8.2, the rights and remedies granted herein,
and any other rights or remedies which the parties may have, either at law or in
equity, are cumulative and not exclusive of others. On any termination, Licensee
shall duly account to Licensor and transfer to them all rights to which Licensor
may be entitled under this Agreement.
18. FORCE MAJEURE
No failure or omission by Licensor or by Licensee in the performance of any
obligation under this Agreement shall be deemed a breach of this Agreement or
create any liability if the same shall arise from acts of God; acts or omissions
of any government or agency thereof, compliance with rules, regulations, or
orders of any governmental authority; fire; storm; flood; earthquake; accident;
acts of the public enemy; war; rebellion; insurrection; riot; sabotage;
invasion; quarantine; restriction; or failures or delays in transportation.
19. USE OF NAMES, TRADENAMES, AND TRADEMARKS
Nothing contained in this License Agreement shall be construed as conferring any
right to use in advertising, publicity, or other promotional activities any
name, tradename, trademark, or other designation of any Licensor or Licensee or
of the U.S. Department of Energy or the U.S. Government, or any of their
employees or officers, and any contraction, abbreviation, or simulation of any
of the foregoing.
20. NOTICES
20.1 All notices and reports shall be addressed to the parties hereto as
follows:
If to Licensor:
Argonne National Laboratory Facsimile No.
9700 S. Cass Avenue 708/252-4517
Argonne, IL 60439 Verify No.
ATTN: R. Jeffrey Geouque 708/252-3023
OCF-PRO/201
If to Licensee:
Packard Instrument Co., Inc. Facsimile No.
800 Research Parkway 203/238-7593
Meriden, CT 06450 Verify No.
ATTN: Staf van Cauter 203/639-2202
20.2 Any notice, report or any other communication required or permitted to be
given by one party to the other party by this Agreement shall be in writing and
either (a) served personally on
-12-
the other party, (b) sent by express, registered or certified first-class mail,
postage prepaid, addressed to the other party at its address as indicated above,
or to such other address as the addressee shall have previously furnished to the
other party by proper notice, (c) delivered by commercial courier to the other
party, or (d) sent by facsimile to the other party at its facsimile number
indicated above or to such other facsimile number as the party shall have
previously furnished to the other party by proper notice, with machine
confirmation of transmission. Such notice shall be effective when received by
the receiving party.
21. NON-ABATEMENT OF ROYALTIES
Licensor and Licensee acknowledge that certain of the Licensed Patents may
expire prior to the conclusion of the term of this Agreement; however, Licensor
and Licensee agree that the royalty rates provided for hereinabove shall be
uniform and undiminished, except as otherwise provided pursuant to this
Agreement.
22. WAIVERS
22.1 No provision of this Agreement is deemed waived and no breach excused
unless such waiver or consent is made in writing and signed by the party to have
waived or consented.
22.2 Failure on the part of any party to exercise or enforce any right under
this Agreement will not be a waiver of any right, or operate to bar the
enforcement or exercise of the right at any time thereafter.
23. LICENSE PATENT MARKING
Licensee agrees to affix appropriate markings of the applicable Licensor
Licensed Patents upon or in association with Licensee's Licensed Products or
Services.
24. ENTIRE AGREEMENTS AND MODIFICATIONS
It is expressly understood and agreed by the parties hereto that this instrument
and CRADA C9701902 contains the entire agreement between the parties with
respect to the subject matter hereof and that all prior representations,
warranties, or agreements relating hereto have been merged into this document
and CRADA C9701902 and are thus superseded in totality by this Agreement and
CRADA C9701902. This Agreement may be amended or modified only by a written
instrument signed by the duly authorized representatives of the parties.
25. HEADINGS
The headings for the sections set forth in this Agreement are strictly for the
convenience of the parties hereto and shall not be used in any way to restrict
the meaning or interpretation of the substantive language of this Agreement.
26. DISPUTES AND GOVERNING LAWS
26.1 The Parties will attempt to jointly resolve any disputes arising from this
Agreement. Such joint resolution may include non-binding arbitration. If the
Parties are unable to resolve a
-13-
dispute within a reasonable time, then either party may commence proceedings in
a court of competent jurisdiction. United States federal law will govern this
Agreement to the extent that there is such law. To the extent there is no
applicable federal law, this Agreement and performance hereunder will be
governed by the laws of the State of Illinois, USA, without regard to the
state's conflict of laws provisions.
26.2 If any provisions of this Agreement are held to be invalid, illegal, or
unenforceable in any respect, that invalidity, illegality, or unenforceability
will not affect any other provisions of the Agreement. This Agreement will be
construed as if the invalid, illegal, or unenforceable revision were never in
this Agreement.
26.3 The Licensor will release information concerning this Agreement if required
by law.
27. THIRD PARTY LICENSES
27.1 Licensor agrees that to the extent that it grants a nonexclusive license to
a third party to Licensed Patents identified in Exhibit A of the same scope
granted to Licensee, such shall be at no more favored terms than those granted
to Licensee in Exhibit C.
27.2 To the extent that Licensee or Motorola, Inc. declines to commercialize the
intellectual property of a third party under reasonable terms and conditions in
the Clinical Diagnostics Field of Use of Exhibit F, Licensee agrees to
nonexclusively sublicense such third party under reasonable terms and conditions
to the extent that such sublicense, as necessary, provides substantial benefit
to the public health or safety.
-14-
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed in their respective names by their duly authorized
representatives.
"Licensor"
By: /s/ Dennis E. Bugielski
Name: (typed) Dennis E. Bugielski
Title: Manager, ANL Procurement
Date:
"Licensee"
By: /s/ Richard T. McKernan
--------------------
Name: (typed)
--------------------
Title:
--------------------
Date: 3/19/98
-15-