Exhibit 10.33
SUBLICENSE AGREEMENT
This Sublicense Agreement (the "Agreement") is entered into as of July
28th, 2003 (the "Effective Date") by and between Beckman Coulter, a Delaware
corporation, having a principal place of business at 4300 North Harbor
Boulevard, Fullerton, California 92835 ("BECKMAN"), and EXACT Sciences
Corporation, a Delaware corporation having a principal place of business at 100
Campus Drive, Marlborough, Massachusetts 01754 ("EXACT").
In consideration of the mutual promises and conditions contained in
this Agreement, BECKMAN and EXACT agree as follows:
ARTICLE 1 - DEFINITIONS
1.1 "Affiliate" shall mean any company, corporation or other business
entity that is controlled by, controlling, or under common control with
the subject company, corporation or other business. For this purpose
"control" means direct or indirect beneficial ownership of at least
fifty percent (50%) interest in the voting stock (or the equivalent) of
the company, corporation or other business or having the right to
direct, appoint or remove a majority of members of its board of
directors (or their equivalents) or having the power to control the
general management of the company, corporation or other business, by
law or contract.
1.2 "EXACT Net Revenues" shall mean:
(i) gross royalties received by EXACT from its Sublicensee
relating to the Third Party's sale or provision of Licensed
Services, and
(ii) gross revenues received by EXACT relating to EXACT's direct
provision of Licensed Services, less the following deductions:
(a) Trade, quantity, cash or other discounts, if any,
actually allowed and taken;
(b) Credits or allowances, not to exceed two percent of
EXACT Net Revenues, made or given on account of
defective services or
PAGE 1
disputed services that are specifically identifiable
to Licensed Services sold to a Third Party; and
(c) Any tax or governmental charge received by EXACT from
its customer with respect to the sale, use or
delivery of Licensed Services to the customer and
paid by EXACT to a governmental entity.
1.3 "Field" shall mean /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ used for
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
Notwithstanding the foregoing, the "Field" shall not include:
the provision of /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ or
the /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ for the provision
of /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ that consist of
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ for the
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ of samples of
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ to produce
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
For the sake of clarity, the parties confirm that the limitation set
forth in paragraph (b) of this definition in conjunction with the
definition of Specialty Testing operates within the Field to:
(i) INCLUDE within the scope of this license the ability of EXACT
and its Sublicensee to provide to /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ for which the /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ does not require a /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ or a /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
(including those laboratory services performed as
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ or that are based on
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/), and
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(ii) EXCLUDE from the scope of this license the ability of EXACT
and its Sublicensee to sell products or services for which
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ requires a
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
1.4 "Licensed Patents" shall mean, individually and collectively, (i) the
U.S. patent(s) identified on Exhibit 1, attached hereto, and any
reissues, reexaminations, and extensions thereof, and all Canadian
patents or applications corresponding to any of the foregoing; (ii) the
U.S. patent applications identified on Exhibit 1, and all Canadian
patents or applications corresponding thereto; (iii) all
non-provisional, continuation, continuation-in part, divisional and
Canadian applications that claim the priority, either directly or
indirectly, to any Licensed Patents described in subsection (i) or (ii)
above; and (iv) all United States and Canadian patents issued on the
Licensed Patents described in subsection (ii) or (iii) above, and all
reissues, reexaminations and extensions thereof.
1.5 "Licensed Services" shall mean services that but for this Agreement
would infringe a valid and enforceable claim in the Licensed Patents.
1.6 "Intellectual Property" shall mean rights to patents, copyrights,
trademarks, trade secrets, proprietary information, know-how and
technical data (whether or not patentable) and all other intellectual
property rights, in each case whether registered or unregistered and
including applications for the grant of any of the foregoing and all
rights or forms of protection having equivalent or similar effect to
any of the foregoing which may subsist anywhere in the world.
1.7 "License Term" shall mean the period of time from the Effective Date of
the Agreement through expiration of the last to expire of the Licensed
Patents.
1.8 "Party" or "Parties" shall mean BECKMAN and/or EXACT, as the context
requires.
1.9 "Sublicensee" shall mean any entity to which EXACT has granted a
sublicense of some or all of the rights conveyed to EXACT under this
Agreement.
PAGE 3
1.10 "Territory" shall mean the United States and Canada.
1.11 "Test" shall mean a test result per single patient derived from the
provision of Licensed Services.
1.12 "Third Party" means any person or entity other than EXACT or BECKMAN.
1.13 /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ means that patent license
agreement signed by BECKMAN and /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ on /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
1.14 "Fluorescence Polarization" means the process by which a fluorescent
sample is irradiated with plane-polarized excitation radiation and
components of a resultant fluorescent signal are separately detected
from the sample which are polarized respectively parallel to and
perpendicular to the plane of polarization of the excitation radiation,
either on a steady state or time resolved basis relative to the
excitation radiation, as and to the extent claimed in any valid,
maintained and enforceable U.S. or foreign patent issuing from or
claiming priority from U.S. Patent Application Serial No. 09/137,826
entitled Fluorescence Polarization in Nucleic Acid Analysis, filed
August 20, 1998, owned or licensed by NEN Life Science Products, Inc.
1.15 "Fluorescence Resonance Energy Transfer" means the process by which a
fluorescent sample containing two distinct dyes wherein the sample is
irradiated with light energy optimal to excite the first of the two
dyes and wherein that first dye upon excitation transfers the energy to
the second dye specifically when both dyes are attached to the same
primer through a process whereby a nucleic acid template-dependent
primer extension reaction determines the identity of a single
nucleotide base at a specific position in a nucleic acid of interest,
which process is covered by U.S. Patent No. 5,888,819 and 6,004,744 and
any divisionals, continuation, reissues and foreign counterparts
thereof, and the fluorescence emission of the second dye is detected at
second wavelength, as and to the extent claimed in U.S. Patent No.
5,945,283 entitled Methods and Kits for Nucleic Acid Analysis Using
Fluorescence Resonance Energy Transfer, issued on December
PAGE 4
17, 1996 and owned or licensed by NEN Life Science Products, Inc., and
any divisionals, continuations, reissues and foreign counterparts
thereof and as and to the extent such NEN patents are valid, maintained
and enforceable.
1.16 "Specialty Testing" means:
(a) products and processes for the /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ of samples of human, animal or vegetable origin,
and
(b) /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ specific receptor
proteins, ligands, nucleic acid sequences, and similar
reagents which /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ are
intended for use in a diagnostic application for
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
1.17 /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ means:
(a) in the case of the /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
and
(b) in the case of countries outside of the United States,
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ with similar
responsibilities.
1.18 "Colorectal Cancer Assay" means any /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ (including but not limited to /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ testing).
ARTICLE 2 - GRANT OF LICENSES; OWNERSHIP
2.1 LICENSE GRANT. Subject to the terms and conditions of this Agreement,
BECKMAN grants to EXACT a non-exclusive, royalty-bearing license under
the Licensed Patents in the Field in the Territory during the License
Term, to make, have made, use, offer to sell, sell and import Licensed
Services. This license
PAGE 5
granted hereunder shall include a limited right to sublicense as herein
provided. Nothing in this Agreement will be construed to grant to EXACT
any license or rights except under the Licensed Patents and within the
Field.
2.2 SUBORDINATION TO /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/. This
Agreement will not be construed to grant EXACT (i) any rights that are
broader then the rights granted to BECKMAN under the /*/[CONFIDENTIAL
TREATMENT REQUESTED]/*/ with regard to /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ (as that term is defined in the /*/[CONFIDENTIAL
TREATMENT REQUESTED]/*/; or (ii) a term of license that is longer than
the term of the /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
2.3 SUBLICENSING. EXACT shall have the right to sublicense the rights
granted in Paragraph 2.1 above only to Laboratory Corporation of
America Holdings ("LabCorp"), provided however, that no such sublicense
shall be effective until LabCorp executes a written sublicense
agreement (the "Sublicense Agreement") with EXACT with respect to the
Licensed Services and provided that the terms of the Sublicense
Agreement are not inconsistent with and are subordinate to the rights
afforded EXACT hereunder. The Sublicense Agreement will include the
following provisions of this Agreement: Article 4 - Royalty Reports;
Records; Article 7 - Indemnification and Insurance; and, Article 8 -
Disclaimer of Warranties; and, Section 10.12 - References to BECKMAN;
and further will provide that those provisions are for the benefit of
and may be enforced by BECKMAN. EXACT will provide BECKMAN with a copy
of the Sublicense Agreement within sixty (60) days after it is
executed.
2.4 NO IMPLIED LICENSES. Nothing in this Agreement shall be construed as
granting any Party any right or license under any Intellectual Property
of the other Party by implication, estoppel or otherwise, except as
expressly provided otherwise in this Agreement.
2.5 EXCLUDED FIELD. Notwithstanding anything to the contrary in this
Agreement, the licenses granted therein shall not extend to
/*/[CONFIDENTIAL TREATMENT
PAGE 6
REQUESTED]/*/ or to /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ provided
that the foregoing limitation shall (i) only be in force during the
shorter of the term of the /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
specified in the definitions thereof, or during such time as such
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ are valid, enforceable and
maintained and (ii) not limit or restrict EXACT's right to use the
Licensed Patents in connection with /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ and /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ to the
extent EXACT has obtained license rights to /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ and /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ from an
appropriate Third Party.
ARTICLE 3 - ROYALTIES
3.1 ROYALTIES. During the License Term, EXACT shall pay BECKMAN a
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ percent /*/[CONFIDENTIAL
TREATMENT REQUESTED]/*/ royalty on EXACT Net Revenues. EXACT shall pay
royalties due with respect to each calendar quarter hereunder within
forty-five (45) days after the last day of such calendar quarter.
ARTICLE 4 - ROYALTY REPORTS; RECORDS
4.1 ROYALTY REPORTS. Within forty-five (45) days after March 31, June 30,
September 30 and December 31 of each year during the Term, EXACT shall
deliver to BECKMAN the royalty payment due pursuant to Section 3.1
hereof and a corresponding royalty report relating to the calendar
quarter to which the royalty paid relates. If EXACT Net Revenue
includes revenue denominated in a currency other than the currency of
the United States of America, those foreign currency sales for each
calendar quarter will be converted to the currency of the United States
of America at the prevailing rate for the last business day of the
quarter as quoted by THE WALL STREET JOURNAL (or if THE WALL STREET
JOURNAL is not available
PAGE 7
then a comparable publication) or such conversion shall be accomplished
by a procedure mutually agreed upon by EXACT and BECKMAN.
4.2 REPORTS. Each royalty report shall include the following:
(a) Identification of the Licensed Services performed by EXACT
during the relevant calendar quarter;
(b) The quantity of each Licensed Services performed by EXACT
during the relevant calendar quarter;
(c) The Exact Net Revenues for each of the Licensed Services
performed by EXACT during the relevant calendar quarter;
(d) Deductions applicable to determining EXACT Net Revenues during
the relevant calendar quarter;
(e) Identification of the Licensed Services performed by
Sublicensee during the relevant calendar quarter;
(f) The quantity of each Licensed Services performed by
Sublicensee during the relevant calendar quarter;
(g) The Exact Net Revenues for each of the Licensed Services
performed by Sublicensee during the relevant calendar quarter;
(h) Total royalties due to EXACT from Sublicensee under the
sublicense granted under this Agreement during the relevant
calendar quarter; and
(i) Total royalties due to BECKMAN for the calendar quarter.
With each report, EXACT shall pay to BECKMAN the royalties due and
payable for such calendar quarter in accordance with paragraph 3.1.
PAGE 8
4.3 RECORD KEEPING.
4.3.1 BOOKS AND RECORDS. EXACT shall keep complete and accurate
records for the latest five (5) years as necessary to
establish from source documents and data the EXACT Net
Revenues for each Licensed Service. EXACT will maintain such
records in sufficient detail and in a manner and context to
enable the determination of the amount of royalties due
hereunder to BECKMAN.
4.3.2 INSPECTIONS. Upon thirty (30) days' written notice, EXACT
agrees to permit one or more auditors appointed by BECKMAN
(except any to whom EXACT has a reasonable objection) to enter
upon the premises of EXACT during usual business hours of
EXACT in order to examine records pertaining to this Agreement
for previous quarter(s) and to make on EXACT's premises and
retain copies of any and all parts of the records and accounts
kept by EXACT pursuant to this Article 4, including invoices
and Sublicense payment records and reports which are relevant
to any report required to be rendered by EXACT. Said copies
shall be provided to the auditor(s) at no expense to the
auditor(s) or to BECKMAN. Said auditor(s) shall provide
BECKMAN with the amount of the EXACT Net Revenue and the
application of the appropriate royalty rate so that royalties
due BECKMAN may be calculated for each Licensed Service. In
the event such audit establishes that EXACT has underpaid its
royalty obligations by /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ or more during any calendar quarter, any amounts
found to have been owed but not paid shall be paid to BECKMAN
promptly with nine percent (9%) interest per annum. In the
event such audit establishes that EXACT has underpaid its
royalty obligations by /*/[CONFIDENTIAL TREATMENT
REQUESTED]/*/ or more during any calendar quarter, EXACT shall
reimburse BECKMAN for the out-of-pocket expense of such audit.
BECKMAN shall not make more than one audit request annually.
PAGE 9
4.4 FORM OF PAYMENTS. EXACT shall make all payments due under this
Agreement by check or wire transfer in United States funds.
4.5 LATE PAYMENT. If EXACT does not make any payment under this Agreement
when due, the payment will accrue interest from the date due at the
rate of one percent 0.75% per month; PROVIDED, HOWEVER, that in no
event shall such rate exceed the maximum legal annual interest rate.
The payment of such interest shall not limit BECKMAN from exercising
any other rights it may have as a consequence of the lateness of such
payment.
ARTICLE 5 - CONFIDENTIALITY
5.1 CONFIDENTIAL INFORMATION. During the Term, the Parties may exchange
information from time to time that they consider to be confidential.
"Confidential Information" hereunder shall, subject to Article 5.3,
mean the substance of this Agreement, the Sublicense Agreement and any
information or materials that are disclosed by EXACT to BECKMAN or
auditors for BECKMAN under Article 4, Royalty Reports; Records, whether
orally, visually, or in tangible form, and all copies thereof. Tangible
materials that disclose or embody Confidential Information shall be
marked by the disclosing party as "Confidential," "Proprietary" or the
substantial equivalent thereof. Confidential Information that is
disclosed orally or visually shall be identified by the disclosing
Party as confidential at the time of disclosure and reduced to a
written summary by the disclosing Party, which shall mark such summary
as "Confidential," "Proprietary" or the substantial equivalent thereof,
and deliver it to the receiving Party by the end of the month following
the month in which disclosure occurs. Such information shall be treated
as Confidential Information pending receipt of such summary.
5.2 TREATMENT OF CONFIDENTIAL INFORMATION. The Party receiving Confidential
Information shall employ all reasonable efforts to maintain the secrecy
and confidentiality of such Confidential Information, such efforts to
be no less than the degree of care employed by the receiving Party to
preserve and safeguard its
PAGE 10
own Confidential Information. The information shall not be disclosed or
revealed to anyone except employees of the recipient who have a need to
know the information and who are required to maintain confidential the
proprietary information of the receiving Party and such employees shall
be advised by the receiving Party of the confidential nature of the
Confidential Information and that the Confidential Information shall be
treated accordingly. Each Sublicensee shall be bound, as a receiving
Party, not to disclose the Confidential Information of BECKMAN, whether
such Confidential Information is provided by BECKMAN or by EXACT; and
both the Sublicensee and EXACT shall be jointly and severally liable
for any breach of such obligation by the Sublicensee.
5.3 EXCEPTIONS. The receiving party's obligations under this Article 5
shall not extend to any part of the information that:
(i) can be demonstrated to have been in the public domain
or publicly known prior to the date of the
disclosure; or
(ii) can be demonstrated from written records to have been
in the possession of the receiving Party or readily
available to the receiving Party from another source
not under obligation of secrecy to the disclosing
Party prior to the disclosure; or
(iii) becomes part of the public domain or publicly known
other than as a result of any unauthorized act by the
receiving Party; or
(iv) is demonstrated from contemporaneous written records
to have been developed by or for the receiving Party
without reference to confidential information
disclosed by the disclosing Party; or
(v) is required to be disclosed by law, government
regulation or court order.
However, the exception set forth in Section 5.3(v) shall only apply if,
prior to making any legally required disclosure of the disclosing
Party's Confidential Information, the receiving Party notifies the
disclosing Party and affords the
PAGE 11
disclosing Party a reasonable opportunity to defend against or limit
such required disclosure.
5.4 INJUNCTION. In view of the difficulties of placing a monetary value on
the Confidential Information, the disclosing Party shall be entitled to
a preliminary and final injunction without the necessity of posting any
bond or undertaking in connection therewith to prevent further breach
of this Article 5 or further unauthorized use of its Confidential
Information. This remedy is separate from any other remedy the
disclosing Party may have.
5.5 TREATMENT UPON TERMINATION OF THE AGREEMENT. Upon the expiration or
termination, for any reason, of this Agreement, or upon the demand of
the disclosing Party at any time, the receiving Party shall return
promptly to the disclosing Party or destroy, at option of the
disclosing Party, all tangible materials that disclose or embody
Confidential Information of the disclosing Party, unless otherwise
prohibited by law. Notwithstanding the foregoing, BECKMAN may retain
all EXACT royalty reports, royalty payment records and communications
concerning royalties paid or payable by EXACT or Sublicensee.
ARTICLE 6 - REPRESENTATIONS AND WARRANTIES
6.1 BECKMAN REPRESENTATIONS AND WARRANTIES. BECKMAN hereby represents and
warrants to EXACT that:
6.1.1 BECKMAN is a corporation duly organized and validly existing
in the State of Delaware, and has all requisite power and
authority to execute, deliver and perform its obligations
under this Agreement and to consummate the transactions
contemplated hereby;
6.1.2 This Agreement does not contravene or constitute a default
under or violation of any provision of applicable law binding
upon BECKMAN or any agreement, commitment, instrument or other
arrangement to which BECKMAN is a party;
PAGE 12
6.1.3 To the knowledge of BECKMAN, all necessary consents, approvals
and authorizations of all governmental authorities and other
persons required to be obtained in connection with entry into
this Agreement have been obtained;
6.1.4 The /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ has been fully
executed, is in effect as of the date that BECKMAN signs this
Agreement and includes the right for BECKMAN to convey the
rights provided in this Agreement herein, and;
6.1.5 BECKMAN has no actual knowledge of any claim brought by a
Third Party in a federal court or before the U.S. Patent
Office that asserts that the Licensed Patents are invalid.
6.2 EXACT REPRESENTATIONS AND WARRANTIES. EXACT hereby represents and
warrants to BECKMAN that:
6.2.1 EXACT is a corporation duly organized and validly existing
under the laws of the State of Delaware and has all requisite
corporate power and authority to execute, deliver and perform
its obligations under this Agreement and to consummate the
transactions contemplated hereby;
6.2.2 This Agreement does not contravene or constitute a default or
violation of any provision of applicable law binding upon
EXACT or any agreement, commitment or instrument to which
EXACT is a party; and,
6.2.3 EXACT has conducted its own analysis of the Licensed Patents
and the Licensed Services in assessing whether any product or
process made, used, sold or imported under any Licensed
Patents will be free from infringement of patents, copyrights
or other rights not licensed hereunder or patents, copyrights
or other rights of any Third Party and has obtained such legal
opinions as necessary or appropriate.
PAGE 13
ARTICLE 7 - INDEMNIFICATION & INSURANCE
7.1 INDEMNIFICATION OF BECKMAN. EXACT will save, defend, indemnify and hold
harmless BECKMAN and its Affiliates, and the officers, directors and
employees of any of them ("BECKMAN INDEMNITEES") from and against any
and all losses, damages, liabilities, expenses and costs, including
reasonable legal expense and attorneys' fees, ("LOSSES") to which any
of them may become subject as a result of any claim, demand, action or
proceeding by any Third Party to the extent such Losses arise out of
(i) the research, development, manufacture, production, supply,
promotion, import, sale or use by EXACT or its sublicensees,
contractors or customers of any products or services, (ii) the conduct
of any research and development by EXACT or its sublicensees,
including, without limitation, clinical trials, conducted with respect
to the products, processes or services licensed under this Agreement,
or (iii) a breach by EXACT of any of its representations and warranties
contained in this agreement, except to the extent such Losses result
from the gross negligence or willful misconduct of Beckman Indemnitees
or the breach of this Agreement by BECKMAN. If BECKMAN seeks
indemnification hereunder, it will inform EXACT of the claim as soon as
reasonably practicable after it receives notice of the claim, will
permit EXACT to assume direction and control of the defense of the
claim (including the right to settle the claim solely for monetary
consideration), and will cooperate as requested (at the expense of
EXACT) in the defense of the claim.
7.2 INSURANCE. During the term of this Agreement, EXACT, at its own
expense, will maintain commercial general liability insurance,
including products liability and, if necessary, commercial umbrella
insurance, related to and covering the development, production, use,
and sale of the Licensed Services. The limits of insurance maintained
by EXACT for bodily injury and/or death and property damage for any one
occurrence shall be at least Four Million U.S. Dollars (U.S.
$4,000,000), and for the products and completed operations aggregate,
shall be at least Two Million U.S. Dollars (U.S.$2,000,000). Such
insurance will be written by companies having an A.M. Best rating of no
lower than A - "X". BECKMAN
PAGE 14
and its Affiliates will be named as additional insureds under such
insurance policies. Such insurance shall be written to cover claims
incurred, discovered, manifested, or made during or after the
expiration of this Agreement. EXACT will provide a certificate of
insurance evidencing such coverage as primary coverage and requiring
thirty (30) days prior written notice to BECKMAN of cancellation or
material change. All such insurance of BECKMAN and its Affiliates shall
be noncontributory.
7.3 INDEMNIFICATION OF EXACT. BECKMAN will save, defend, indemnify and hold
harmless EXACT and its officers, directors and employees ("EXACT
INDEMNITEES") from and against Losses to which any of them may become
subject as a result of any claim, demand, action or proceeding by any
Third Party to the extent such Losses arise from the breach by BECKMAN
of the warranty and representations made by BECKMAN in section 6.1,
"BECKMAN Warranties and Representations." Without limiting the
foregoing, BECKMAN will not be obligated under this paragraph to the
extent such Losses result from the acts or omissions of Exact
Indemnitees or the breach of this Agreement, including the
representations and warranties made by EXACT within it, by EXACT.
7.4 INDEMNIFICATION OF EXACT IF /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
this Sublicense. BECKMAN will save, defend, indemnify and hold harmless
Exact Indemnitees from and against Losses to which any of them may
become subject as a result of a action or proceeding by
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/, a corporation organized under
the laws of the State of Delaware and having a place of business
located at /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ to the extent
relating to (i) BECKMAN's rights to grant sublicenses under
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ or (ii) the right of BECKMAN
to enter this Agreement with EXACT, and seeking to invalidate this
Agreement on that basis, except to the extent such Losses result from
the acts or omissions of Exact Indemnitees or the breach of this
Agreement, including the representations and warranties made by EXACT
within it, by EXACT.
PAGE 15
7.5 EXACT INDEMNIFICATION PROCESS. If EXACT seeks indemnification under
paragraph 7.3 or 7.4 above, it will inform BECKMAN of the claim as soon
as reasonably practicable after it receives notice of the claim, will
permit BECKMAN to assume direction and control of the defense of the
claim (including the right to settle the claim solely for monetary
consideration), and will cooperate as requested (at the expense of
BECKMAN) in the defense of the claim.
ARTICLE 8 - DISCLAIMERS
8.1 DISCLAIMERS. Nothing in this Agreement will be construed as:
(i) a warranty or representation by BECKMAN as to the validity or
scope of Licensed Patents;
(ii) a warranty or representation by BECKMAN that the Licensed
Services or any product or process made, used, sold or
imported under any Licensed Patents is or will be free from
infringement of patents, copyrights or other rights not
licensed hereunder or patents, copyrights or other rights of
any Third Party;
(iii) conferring by implication, estoppel or otherwise any license
or rights under any Intellectual Property belonging to BECKMAN
other than the Licensed Patents as defined in this Agreement;
or
(iv) an obligation by BECKMAN to furnish know-how or any other
information to EXACT not provided in the Licensed Patents.
8.2 NO OTHER WARRANTIES. EXCEPT AS EXPRESSLY PROVIDED HEREIN, NEITHER PARTY
MAKES ANY WARRANTIES WITH RESPECT TO THE LICENSED SERVICES AND
DISCLAIMS ALL OTHER WARRANTIES AND CONDITIONS, EXPRESS OR IMPLIED,
INCLUDING THOSE OF MERCHANTABILITY, AND FITNESS FOR A PARTICULAR
PURPOSE, OR ARISING FROM A COURSE OF DEALING, USAGE OR TRADE PRACTICE,
TO THE EXTENT PERMITTED BY APPLICABLE LAW.
PAGE 16
8.3 THIRD PARTY INFRINGEMENTS. Neither Party shall have any obligation with
respect to the abatement of infringement of the Licensed Patents by
third parties. However, if at any time a Third Party shall infringe any
unexpired Licensed Patents and if such infringement shall come to the
attention of a Party, that Party will give notice in writing to the
other Party of the existence of such infringement. BECKMAN will decide
on an appropriate course of action to take with respect to the
infringement in view of all of the circumstances then existing.
ARTICLE 9 - TERM AND TERMINATION
9.1 TERM. This Agreement shall commence on the Effective Date and shall
remain effective for the period of the License Term, unless earlier
terminated as provided by this Agreement.
9.2 TERMINATION FOR BREACH. Either Party may terminate this Agreement if
the other Party materially breaches its obligations hereunder, and such
breach is not cured within sixty (60) days after written noticed
thereof to such other Party.
9.3 EFFECT OF TERMINATION ON SUBLICENSE. Upon early termination of this
Agreement for any reason, all sublicenses granted under it shall
terminate. EXACT shall notify each Sublicensee of the termination and
each Sublicensee shall have the rights to request BECKMAN to continue
the sublicense. The request by the Sublicensee must be received by
BECKMAN no later than thirty days after the termination date of this
Agreement. Upon receipt of such request and receipt of proof from the
Sublicensee, if reasonably requested by BECKMAN, of the Sublicensee's
ability to pay BECKMAN royalties when due, BECKMAN will continue the
Sublicensee's sublicense for the period equal to the shorter of the
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ of this Agreement or the
unexpired term of /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ on condition
that /*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ remains in
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ and continues its
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ In the event of continuation
of the sublicense, Sublicensee shall pay BECKMAN
PAGE 17
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ received by Sublicensee (less
the deductions described in 1.2(ii) above) relating to Sublicensee's
direct provision of Licensed Services. For the avoidance of confusion,
Sublicensee's Licensed Services under such circumstances shall mean the
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ received by Sublicensee for
the particular test being provided (of which the Licensed Service is
comprised). Unless BECKMAN expressly elects to assume obligations of
EXACT to Sublicense arising under the sublicense agreement, those
obligations will remain the responsibility of EXACT to satisfy and
EXACT will defend, indemnify and hold BECKMAN harmless from any claim
arising with regard to those obligations.
9.4 SUBLICENSEE DUTIES AT TERMINATION. Except if termination resulted from
expiration of the License Term, upon termination of this Agreement:
9.4.1 EXACT immediately will cease and then shall not engage in any
activity that would infringe the Licensed Patents;
9.4.2 Subject to Section 9.3, Effect of Termination on Sublicense,
Sublicensee immediately will cease and then shall not engage
in any activity that would infringe the Licensed Patents.
9.5 OUTSTANDING PAYMENTS AND REPORTS AT TERMINATION. Termination of this
Agreement for any reason shall be without prejudice to BCI's right to
receive all payments and reports that may be or become due under
Article 3 - Royalties, and Article 4 - Royalty Reports; Records.
9.6 SURVIVAL. The following Articles shall survive the termination of this
Agreement for any reason: Article 1 - Definitions; Article 4 - Royalty
Reports; Records; Article 5 - Confidentiality; Article 7 -
Indemnification; and, Article 10 - Miscellaneous.
PAGE 18
ARTICLE 10 - MISCELLANEOUS
10.1 NOTICES TO BECKMAN. Unless otherwise specified in this Agreement,
reports, notices and other communications from EXACT to BECKMAN as
provided hereunder must be sent to:
Beckman Coulter, Inc.
President, Biomedical Research Division
4300 N. Harbor Boulevard,
Fullerton, California 92835
Telephone: (714) 871-4848
Facsimile: (714) 773-8543
WITH A COPY TO:
Beckman Coulter, Inc.
General Counsel
4300 N. Harbor Boulevard,
Fullerton, California 92835
Telephone: (714) 773-6973
Facsimile: (714) 773-7936
or other individuals or addresses as BECKMAN subsequently furnish by
written notice to EXACT.
10.2 NOTICES TO EXACT. Unless otherwise specified in this Agreement,
reports, notices and other communications from BECKMAN to EXACT as
provided hereunder must be sent to:
EXACT Sciences Corporation
100 Campus Drive
Marlborough, MA 01752
Attention: President
PAGE 19
WITH A COPY TO:
EXACT Sciences Corporation
100 Campus Drive
Marlborough, MA 01752
Attention: General Counsel
or other individuals or addresses as EXACT subsequently furnish by
written notice to BECKMAN.
10.3 INDEPENDENT CONTRACTORS. The Parties agree that, in the performance of
this Agreement, they are and shall be independent contractors. Nothing
herein shall be construed to constitute a partnership or joint venture
between the Parties nor shall any Party be construed as the agent of
any other Party for any purpose whatsoever, and no Party shall bind or
attempt to bind any other Party to any contract or the performance of
any obligation, or represent to any third party that it has any right
to enter into any binding obligation on the other Party's behalf.
10.4 SEVERABILITY. If any one or more of the provisions of this Agreement is
held to be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this Agreement will not
in any way be affected or impaired thereby.
10.5 NON-ASSIGNABILITY.
10.5.1 PERMITTED ASSIGNMENTS. Either Party may assign this Agreement
and its rights and obligations hereunder to an acquirer of all
or substantially all of such Party's business or assets,
whether by merger, sale, acquisition or other change of
control transaction, but only if it has notified the other
party of the proposed permitted assignment not less than
thirty (30) days prior to the effective date of the
assignment. In the case of a permitted assignment by EXACT,
BECKMAN may require EXACT to provide
PAGE 20
BECKMAN with a written agreement that the assignee accepts and
will comply with all terms and conditions of this Agreement
and with reasonable evidence of the capability of the assignee
to satisfy the obligations of EXACT under this Agreement. In
addition, BECKMAN may require that any breach by EXACT be
cured prior to the assignment. For the avoidance of confusion
and for the purposes of calculating EXACT Net Revenues
following an assignment, Licensed Services shall mean the
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/ received by a Third
Party assignee (under section 1.2(i) above) or received by the
assignee (under section 1.2(ii) above) for the particular test
being provided (of which the Licensed Service is comprised).
10.5.2 RESTRICTED ASSIGNMENTS. Except as allowed in the paragraph
10.5.1, "Permitted Assignments," neither this Agreement nor
any part of the Agreement is assignable or in any way
transferable by either Party without the express written
consent of the other Party, which shall not be unreasonably
withheld, delayed or conditioned, and any attempted or
purported assignment or other transfer made without consent
will be void and without effect.
10.5.3 BINDING EFFECT. This Agreement shall be binding upon and inure
to the benefit of the Parties hereto and their respective
successors and assigns.
10.6 ENTIRE AGREEMENT. This instrument contains the entire Agreement between
the Parties. No verbal agreement, conversation or representation
between any officers, agents, or employees of the Parties either before
or after the execution of this Agreement may affect or modify any of
the terms or obligations herein contained.
PAGE 21
10.7 MODIFICATIONS IN WRITING. No change, modification, extension, or waiver
of this Agreement, or any of the provisions herein contained is valid
unless made in writing and signed by a duly authorized representative
of each Party.
10.8 GOVERNING LAW. The validity and interpretation of this Agreement and
the legal relations of the Parties to it are governed by the laws of
the State of Delaware without regard to any choice of law principal
that would dictate the application of the law of another jurisdiction.
The Parties agree that any legal action arising out of or in connection
with this Agreement shall be brought in the federal or state courts for
the Orange County, California, and the Parties irrevocably submit for
all purposes to the jurisdiction of each such court.
10.9 CAPTIONS. The captions are provided for convenience and are not to be
used in construing this Agreement.
10.10 COUNTERPARTS. This Agreement may be executed in counterparts, each of
which shall be deemed an original and all of which when taken together
shall be deemed but one instrument.
10.11 FORCE MAJEURE. If either Party fails to fulfill its obligations
hereunder (other than an obligation for the payment of money), when
such failure is due to an act of God, or other circumstances beyond its
reasonable control, including but not limited to fire, flood, civil
commotion, riot, war (declared and undeclared), acts of terrorism,
revolution, or embargoes, then said failure shall be excused for the
duration of such event and for such a time thereafter as is reasonable
to enable the Parties to resume performance under this Agreement.
PAGE 22
10.12 REFERENCES TO BECKMAN. EXACT agrees not to identify BECKMAN or its
Affiliates in any promotional advertising or other promotional
materials to be disseminated to the public or any portion thereof or to
use the name of BECKMAN or any of its Affiliates, or any trademark,
service mark, trade name or symbol of BECKMAN or its Affiliates,
without BECKMAN's prior written consent, unless otherwise required by
law.
10.13 NONDISCLOSURE OF AGREEMENT & PRESS RELEASES. EXACT may disclose this
Agreement to its Sublicensee under a requirement to maintain it in
confidence. Except as required by law, neither Party otherwise shall
disclose the terms of this Agreement to any Third Party without the
written consent of the other Party. Neither Party shall issue any press
release or other statement to the media concerning the existence of
this Agreement.
IN WITNESS WHEREOF, the Parties hereto have caused this agreement to be executed
in quadruplicate by their duly authorized representatives as of the date first
above written.
BECKMAN COULTER, INC. EXACT SCIENCES CORPORATION
By: /s/ Elias Caro By: /s/ Don Hardison
---------------------------- --------------------------------
Name: Elias Caro Name: Don Hardison
Title: President, BMR Division Title: President, CEO
Date: July 31, 2003 Date: July 28, 2003
PAGE 23
EXHIBIT 1
LICENSED PATENTS
/*/[CONFIDENTIAL TREATMENT REQUESTED]/*/
PAGE 24