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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 AND EXCHANGE ACT
OF 1934, AS AMENDED.
EXHIBIT 10.106
TERMINATION AGREEMENT
THIS TERMINATION AGREEMENT (the "Agreement") is made and entered into as
of February 5, 1999 , by and between AXYS PHARMACEUTICALS, INC. (formerly known
as Arris Pharmaceutical Corporation), a Delaware corporation having a place of
business at 180 Kimball Way, South San Francisco, CA 94080 ("Axys"), and
PHARMACIA AND UPJOHN AB, a corporation organized and existing under the laws of
Sweden having a place of business at Lindhagensgatan 133, Stockholm, Sweden
("P&U"). Axys and P&U may be referred to herein as a "Party" or, collectively,
as "Parties."
RECITALS
A. Axys (under its former name Arris Pharmaceutical Corporation) and
Pharmacia AB (a precursor corporation to P&U) entered into a collaboration
agreement August 29, 1995, regarding inter alia use of Axys technology to
identify orally active inhibitors of specific coagulation cascade enzymes (as
amended, the "Collaboration Agreement").
B. Axys and P&U now desire to terminate the Collaboration Agreement and to
set forth specific the terms regarding each Party's rights and obligations upon
such termination, as provided below in this Agreement.
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
Capitalized terms used in this Agreement, unless otherwise defined
herein, shall have the same meanings as defined in the Collaboration Agreement.
2. TERMINATION OF THE COLLABORATION AGREEMENT
Effective as of March 1, 1998 the ("Termination Date"), the
Collaboration Agreement is terminated, and all rights and obligations of the
Parties under the Collaboration Agreement are terminated except for those rights
specifically identified below in this Agreement which shall survive such
termination. Specific consequences of such termination are set forth below.
3. CONSEQUENCES OF TERMINATION
3.1 Axys hereby agrees that all obligations of P&U under the
Collaboration Agreement to pay Axys research support or other amounts, including
without limitation any amounts that are owed to Axys under the Collaboration
Agreement, are hereby terminated, and P&U shall not be obligated to pay Axys any
amounts pursuant to obligations under the Collaboration Agreement. Further, any
and all obligations of P&U
1.
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to use diligence to conduct any work under the Collaboration Agreement
terminate. P&U hereby agrees that all obligations of Axys under the
Collaboration Agreement to conduct Research are hereby terminated, and Axys
shall not be obligated to account to P&U for any expenditures of any amounts
paid by P&U to Axys or to make any payments to P&U based upon or under the
Collaboration Agreement. Further, any and all obligations of Axys to use
diligence to conduct any work under the Collaboration Agreement terminate.
3.2 As of the Termination Date, any and all rights of P&U to use or
practice the Arris Know-How, Arris Delta Technology, Arris Improvement
Technology and Arris Patents shall immediately terminate and revert exclusively
and solely to Axys. Commencing on the Termination Date and continuing
thereafter, Axys shall have, and P&U hereby grants to Axys, the sole and
exclusive right and license, with full rights to sublicense, to use and practice
all Research Technology, Joint Patents, Pharmacia Patents and Pharmacia Know-How
to develop, make, have made, use, import, sell and offer for sale Collaboration
Products, and after the Termination Date P&U shall have no further rights
thereto except as provided below. In addition, for clarity it is understood and
agreed that all obligations of and limitations on the Parties under Section 2.10
of the Collaboration Agreement terminate immediately upon the Termination Date,
and each Party shall be free to do research, development and commercialization
work in the Field independent of and without obligation to the other Party
except as specifically provided in this Agreement.
3.3 As soon as practicable, P&U shall provide to Axys copies of all
data, results, and internal study reports resulting from or developed under
P&U's activities in the Research that are reasonably required by Axys to
continue the work in the Field, and all compounds, reagents and physical samples
that are in P&U's possession resulting from or developed under the Research and
that are reasonably required by Axys to continue the work in the Field. Further,
Axys shall have reasonable access to review and copy the laboratory notebooks
that contain the data and results of P&U's work under the Research, to the
extent reasonably required by Axys to continue the work in the Field.
3.4 Axys hereby agrees that Axys shall pay P&U a royalty equal to [*]
sales of Axys Products (as defined below) by Axys or its Affiliates or
sublicensees, provided that for sales by sublicensees, such royalty shall not in
any event exceed [*] of the royalties paid to Axys by such sublicensees based on
sales of such Axys Products. Such royalty amounts shall be calculated and
payable in the manner and for the time period comparable to that required of P&U
for such Collaboration Products under the Collaboration Agreement.
3.5 As used above, the term "Axys Products" shall mean a Collaboration
Product that:
[*] = 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 AND EXCHANGE ACT
OF 1934, AS AMENDED.
2.
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(a) contains a Collaboration Compound that was identified prior
to [*] and
(b) is sold in a country where there is an issued patent in the
Arris Patents, Joint Patents or Pharmacia Patents that claims an invention that
is made in the course of the Research and that relates directly to such
Collaboration Product or its manufacture or use.
For clarity, it is understood and agreed that products sold in countries that do
not have an issued patent as required in subsection (b) shall not be royalty
bearing under Section 3.5.
3.6 P&U shall have the right to publish or present the results of P&U's
work on the Research, subject to the prior review by Axys for patentability and
protection of Confidential Information. P&U shall provide Axys the opportunity
to review any proposed abstracts, manuscripts or presentations that cover or
include the results of the Research (the "Proposed Publication"), prior to any
publication or disclosure of the information in the Proposed Publication. Axys
shall respond in writing promptly and in no event later than thirty (30) days
after its receipt of the Proposed Publication with either approval of the
Proposed Publication or a specific statement of concern, based upon either the
need to seek patent protection covering, or concern regarding competitive
disadvantage arising from publication of, information in the Proposed
Publication. In the event of such concern, P&U agrees not to submit such
Proposed Publication for publication or make other disclosure thereof until Axys
is given a reasonable period of time (not to exceed an additional thirty (30)
days) to seek patent protection for any material therein and to delete from the
Proposed Publication any Confidential Information upon reasonable request based
upon the commercial value of the secrecy of such information. Axys shall have
full rights to publish all results and information relating to the Research,
subject to Axys agreement to give P&U appropriate recognition in such
publications of P&U Research work or results to extent included in such
publication.
3.7 Sections 3.5, 8.1 and 10.6 and Articles 1, 7, 9 and 11 of the
Collaboration Agreement shall survive the termination of the Collaboration
Agreement.
4. MISCELLANEOUS
4.1 This Agreement shall be governed by and interpreted in accordance
with the laws of the State of California, USA, applicable to contracts entered
into and to be performed wholly within the State of California, excluding
conflict of laws principles.
4.2 Any dispute arising under this Agreement shall be resolved in
accordance with Section 11.12 of the Collaboration Agreement.
[*] = 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 AND EXCHANGE ACT
OF 1934, AS AMENDED.
3.
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4.3 Each Party agrees to execute, deliver and acknowledge such further
instruments and to do all such other acts as may be necessary or appropriate in
order to carry out the purposes and intent of this Agreement.
4.4 This 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.
IN WITNESS WHEREOF, the Parties have executed this Agreement in duplicate
originals by their authorized officers as of the date and year first above
written.
PHARMACIA AND UPJOHN AB
By: /s/ Ulf Lindqvist /s/ Fredrik Berg
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Title: Director R.D. Operations Fredrik Berg
------------------------ VP, Asst. Gen. Counsel
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AXYS PHARMACEUTICALS, INC.
By: /s/ John P. Walker
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Title: Chairman/CEO
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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 AND EXCHANGE ACT
OF 1934, AS AMENDED.