1
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 10.107
COMBINATORIAL CHEMISTRY AGREEMENT
THIS COMBINATORIAL CHEMISTRY AGREEMENT (this "Agreement") is made and
entered into effective as of June 30, 1999 (the "Effective Date"), by and
between AXYS ADVANCED TECHNOLOGIES, INC., a Delaware corporation having a place
of business at 180 Kimball Way, South San Francisco, CA 94080 ("Axys"), a
wholly-owned subsidiary of Axys Pharmaceuticals, Inc., a Delaware corporation
having a place of business at 180 Kimball Way, South San Francisco, CA 94080,
and DAIICHI PHARMACEUTICAL CO., LTD., a corporation organized and existing under
the laws of Japan, having a place of business at 14-10 Nihonbashi 3-chome,
Chuo-ku, Tokyo 103-8234, Japan ("Daiichi"). Axys and Daiichi may be referred to
herein individually as a "Party" or, collectively, as the "Parties."
RECITALS
A. Axys has developed and owns certain capabilities, technology, and
intellectual property relating to combinatorial chemistry and the synthesis of
diverse chemistry libraries using combinatorial techniques.
B. Daiichi desires to purchase from Axys physical samples of [ * ]
custom-designed compounds synthesized by Axys, and learn how to practice such
technology and to obtain from Axys certain non-exclusive licenses to use such
technology and intellectual property for Daiichi's internal drug discovery,
development and commercialization programs.
C. Axys is willing, pursuant to the following terms and conditions, to
synthesize and sell to Daiichi such compound libraries, and to train Daiichi's
employees and grant such licenses.
NOW, THEREFORE, the Parties agree as follows:
1. DEFINITIONS
The following capitalized terms shall have the meanings ascribed to such
terms in the following definitions when used in this Agreement.
1.1 "AFFILIATE" means, with respect to a Party, any individual or entity
that controls, is controlled by, or is under common control with, such Party.
For this definition, the term "control" shall refer to (a) the ownership,
directly or indirectly, of at least 50% of the voting securities or other
ownership interest of an entity, or (b) the possession, directly or indirectly,
of the power to direct the management or policies of an entity, whether through
the ownership of voting securities, by contract or otherwise.
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1.2 "AXYS KNOW-HOW" means Information that is Controlled by Axys during
this Agreement and comprises general combinatorial chemistry techniques
proprietary to Axys (other than Protocols) that are necessary to enable Daiichi
to make compounds, and to conduct accelerated medicinal chemistry, based on the
Custom Compounds, including without limitation, relevant computational methods,
library development method, library production method, analytical method and
instrumentation know-how, except for Information that was already known to
Daiichi at the time of its disclosure to Daiichi by Axys.
1.3 "AXYS PATENTS" means all patents and patent applications Controlled
by Axys during this Agreement that claim inventions which constitute Axys
Know-How or any part or aspect thereof.
1.4 "AXYS RESTRICTED INFORMATION" means all Confidential Information of
Axys, other than Axys Know-How, Axys Patents, Protocol Know-How and Protocol
Patents, that is learned by the employees of Daiichi who work at Axys as
permitted under Section 5.1 at any time they are at an Axys facility.
1.5 "AXYS TECHNOLOGY" means the Axys Know-How, Axys Patents, Protocol
Know-How, Protocol Patents and/or Software Programs, or any part or aspect
thereof.
1.6 "COMBINATORIAL CHEMISTRY LIBRARY" means the aggregate of all the
physical samples of the Custom Compounds in the Libraries provided to Daiichi
hereunder.
1.7 "CONFIDENTIAL INFORMATION" means the Information of a Party that it
considers proprietary and/or confidential, and that, if disclosed under this
Agreement to the other Party in written, graphic or electronic form, is marked
or otherwise designated as "confidential" or "proprietary" or the equivalent
and, if disclosed orally, is characterized as "confidential" or "proprietary" by
the disclosing Party at the time of such disclosure. "Confidential Information"
of Axys shall include, without limitation, (a) those portions of the Software
Programs along with associated documentation, if any, whether in source or
object code form, along with any Information pertaining to the design of
Software Programs, and (b) any Information, including but not limited to, design
specifications, schematics, algorithms, API's, interfaces, procedures and code
examples, relevant to any of the foregoing which may be provided by Axys to
Daiichi hereunder. The disclosing Party shall make reasonable efforts to
summarize in writing all oral disclosures of Confidential Information.
1.8 "CONTROLLED" means, with respect to any material, item of
Information or intellectual property right, that the applicable Party owns or
has a license or right to such material, item of Information or intellectual
property right, and has the ability to grant to the other Party access to and a
right and license as provided for herein under such material, item of
Information or intellectual property right without violating the terms of any
agreement or other arrangements with or the rights of any third party.
1.9 "CUSTOM COMPOUND" means any individual [ * ] chemical compound, a
physical sample of which Axys synthesizes and provides to Daiichi under the
terms of Article 2 of this 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 EXCHANGE ACT OF 1934, AS
AMENDED.
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1.10 "DAIICHI MODIFICATIONS" means any modification or derivative work of
the Software Programs developed by or for Daiichi in any form in accordance with
Section 3.3(b) based on or incorporating any Confidential Information of Axys.
1.11 "GENERAL SCREENING" means use of any Library or any group of Custom
Compounds or Program Compounds in assays to screen for activity against targets
in the pursuit of the identification of lead compounds or structures in drug
discovery and development programs, where the party conducting such screening is
not expressly limited to [ * ].
1.12 "INFORMATION" means information and data of any type and in any
tangible or intangible form, including without limitation inventions, practices,
methods, techniques, specifications, formulations, formulae, knowledge,
know-how, skill, experience, test data, analytical and quality control data,
stability data, results of studies and patent and other legal information or
descriptions.
1.13 "LIBRARY" means a collection of approximately [ * ] different
physical samples of Custom Compounds synthesized by Axys and provided to Daiichi
as a single library, which Custom Compounds are related to each other by the
specific synthetic techniques that Axys used to make such group of Custom
Compounds.
1.14 "PROGRAM COMPOUND" means any compound, including without limitation
a Custom Compound, that is made by Daiichi or a permitted sublicensee of Daiichi
by directly practicing or utilizing any of the Axys Know-How, Axys Patents,
Protocols, Protocol Know-How and/or Protocol Patents licensed under this
Agreement.
1.15 "PROTOCOL" means, with respect to a particular Library, the detailed
set of combinatorial chemistry synthetic methods and operating procedures
designed to be used for synthesizing the set of compounds in such Library using
combinatorial chemistry techniques, and Information relating to the Custom
Compounds in such Library comprising the structure and well locations of each
physical sample of Custom Compound in such Library, the physicochemical
properties (distribution of MW and ClogP) of such Library and the results of the
analysis on such Library performed by Axys according to the methods of analysis
set forth in Exhibit A attached hereto, and the related analytical data.
1.16 "PROTOCOL KNOW-HOW" means Information that is Controlled by Axys
during this Agreement and comprises Protocols, which shall include any
intellectual property of Axys relating to the Custom Compound in a Library.
1.17 "PROTOCOL PATENTS" means all patents and patent applications
Controlled by Axys during this Agreement that claim inventions which constitute
Protocol Know-How or any part or aspect thereof.
1.18 "SOFTWARE PROGRAMS" means the software programs provided to Daiichi
by Axys pursuant to this Agreement related to [ * ] and defined in Exhibit C
attached hereto and made a part hereof, [ * ], accompanying documentation and
other material related to such software programs and provided by Axys hereunder,
and including any part or aspect of any of the foregoing, and [ * ].
[ * ] = 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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1.19 "TECHNOLOGY COMMITTEE" means the committee formed by the Parties
under Article 4 of this Agreement.
1.20 "UPDATES" means any improvements, extensions and other changes to
the Software Programs that are [ * ] and are provided to Daiichi by Axys as set
forth in Section 3.2.
2. DEVELOPMENT AND TRANSFER OF LIBRARIES
2.1 LIBRARIES SYNTHESIS. Commencing promptly after the Effective Date,
Axys will use [ * ] to synthesize the physical samples of the Custom Compounds
comprising the [ * ] Libraries to be provided to Daiichi under this Agreement.
Axys will ensure that each Library will be composed of physical samples of an
average of approximately [ * ] of the Custom Compounds.
2.2 DELIVERY OF PHYSICAL SAMPLES OF CUSTOM COMPOUNDS. Axys shall
synthesize and sell to Daiichi and Daiichi shall purchase, subject to the terms
of this Agreement, quantities of physical samples of the Custom Compounds [ * ].
Axys shall use [ * ] to deliver the physical samples of the Custom Compounds to
Daiichi according to the following schedule: physical samples of [ * ] Custom
Compounds to be delivered by [ * ]; physical samples of [ * ] additional Custom
Compounds to be delivered by [ * ]; physical samples of [ * ] additional Custom
Compounds to be delivered [ * ]; and physical samples of the remaining Custom
Compounds (to bring the total delivered physical samples of the Custom Compounds
to [ * ]) to be delivered [ * ]. The physical samples of the Custom Compounds
shall be delivered in accordance with Section 2.3 and either in [ * ] or in
another [ * ]. Within [ * ] of the delivery of a Library to Daiichi, Axys shall
provide Daiichi with the Protocol for such Library. Such Protocol shall be
provided to Daiichi in written form, CD-ROM, microfilm or other appropriate
medium and format as reasonably selected by Axys in consultation with Daiichi.
2.3 DELIVERY AND RISK OF LOSS. Delivery of the physical samples of the
Custom Compounds shall be [ * ]. The physical samples of the Custom Compounds
shall be appropriately packaged by Axys, [ * ], for export shipment. Axys shall
provide Daiichi, [ * ], with information concerning the structure and well
locations of physical samples of the Custom Compounds to be delivered on a
Library basis prior to such shipment. Axys shall also provide to the shipper,
for compliance with exportation and importation laws and regulations, such
information as reasonably requested by the shipper for such shipment. The
physical samples of the Custom Compounds shall be [ * ]. Daiichi shall be
responsible for obtaining all customs clearances required and for compliance
with all exportation and importation laws and regulations.
2.4 [ * ]. Within [ * ] of physical samples of the Custom Compounds,
Daiichi may provide Axys with written notification that (a) [ * ], and (b)
[ * ].
2.5 USE OF THE PHYSICAL SAMPLES OF THE CUSTOM COMPOUNDS BY DAIICHI.
Subject to the terms of this Agreement, Daiichi shall have the right, under the
Protocol Know-How and the Protocol Patent, to use the Combinatorial Chemistry
Library and the physical samples of the Custom Compounds therein solely [ * ].
Except as expressly permitted in the foregoing or as permitted in Section 8.3,
Daiichi covenants that it shall not transfer or disclose the Libraries or
[ * ] = 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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the physical samples of the Custom Compounds, or the structures thereof, or
Protocols to any third party for any purpose. Daiichi may use the Information
generated by the permitted uses of the Libraries and the physical samples of the
Custom Compounds, for any purpose in conjunction with the permitted use of the
physical samples of the Custom Compounds, subject to and in compliance with the
limitations in this Agreement. Daiichi further covenants that it is only
permitted to transfer or disclose the Libraries, the physical samples of the
Custom Compounds or the structures thereof, or Protocols to any of its
Affiliates subject to all relevant restrictions in this Agreement, including
without limitation, the restrictions set forth in this Section 2.5. Daiichi
hereby guarantees the compliance of each of its Affiliates with all such
restrictions regarding the Libraries, the physical samples of the Custom
Compounds or the structures thereof, or Protocols transferred or disclosed to
such Affiliate.
2.6 USE OF CUSTOM COMPOUNDS BY AXYS. Axys may sell or provide the
Combinatorial Chemistry Library or Custom Compounds therein to other companies
for their uses, including without limitation General Screening, provided that
Axys may not provide the Combinatorial Chemistry Library and the Protocols to [
* ] for use in General Screening. Axys covenants that during the term of this
Agreement, it shall not provide the Combinatorial Chemistry Library, a
substantial portion thereof or the Protocols to [ * ] for use in General
Screening. Without limiting the generality of Axys' retained rights, Axys and
its Affiliates shall retain full rights to use the Combinatorial Chemistry
Library, the Custom Compounds and their Protocols for all internal purposes,
including without limitation General Screening, combinatorial chemistry and
medicinal chemistry, and drug discovery, development and commercialization
activities of Axys and its Affiliates, and to sell such Custom Compounds to
third parties for any uses, subject only to the foregoing covenant. Further, it
is understood that Axys and its Affiliates retain the right to use the
Combinatorial Chemistry Library and the Custom Compounds in screening for
activity in assays for specific targets covered by research, development or
commercialization programs pursuant to collaborative research agreements with
third parties, and to provide the Combinatorial Chemistry Library, specific
Custom Compounds and the specifications for such Custom Compounds and related
Protocols to third party corporate partners of Axys or its Affiliates for use by
such partner in screening for activity in specific assays for targets, pursuant
to a collaborative research agreement between such corporate partner and Axys
(or its Affiliate, as applicable).
2.7 OPTIONAL CHEMISTRY SERVICES. Axys agrees to provide Daiichi with [ *
]. If Daiichi is interested in pursuing such a project at Axys, Daiichi shall
give Axys written notice of the desired project and details thereof, the Parties
shall meet to negotiate in good faith the economic and other relevant terms of
Axys conducting such a project, [ * ].
3. TECHNOLOGY TRANSFER AND LICENSE
3.1 TRANSFER OF COMBINATORIAL CHEMISTRY TECHNOLOGY. Axys shall transfer
to Daiichi, on an orderly basis, the Axys Know-How, Protocol Know-How, copies of
the Axys Patents or Protocol Patents [ * ], and copies of the Protocols. [ * ].
Within [ * ] after the Effective Date, Axys shall complete the transfer to
Daiichi of the Axys Patents Controlled by Axys on the Effective Date and shall
commence the transfer to Daiichi of the Axys Know-How. Such transfer will be
managed and coordinated by the Technology Committee, as provided in Article 4
below, in accordance with Exhibit D. The schedule for such transfer will be
reasonable
[ * ] = 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 orderly, as established by the Technology Committee. In addition, Daiichi
may provide, at its cost and expense, [ * ] Daiichi scientists to work at Axys
at any one time during [ * ] to assist and direct the transfer to Daiichi of the
Axys Know-How, Protocols, Protocol Know-How and Software Programs and the
related technical training; provided that access or exposure to Axys Restricted
Information by the Daiichi scientists shall be subject to the provisions of
Article 8. The total number of such Daiichi scientists that may work at Axys
hereunder shall be [ * ]. Any such Daiichi scientists that work at Axys under
the terms of this Section 3.1 shall be restricted from access to any Axys
facilities or locations other than those necessary for completing the technology
transfer and training as provided above. Further, Axys shall use reasonable
efforts to limit and restrict such Daiichi scientists from access or exposure to
any confidential information of Axys that is not Axys Know-How or Protocol
Know-How.
3.2 DELIVERY OF SOFTWARE PROGRAMS AND UPDATES. Commencing [ * ], Axys
will deliver to Daiichi and install each of the Software Programs [ * ],
according to the delivery schedule therefor established by the Technology
Committee. The Software Programs shall be delivered in electronic format, or in
such other suitable format as selected by Axys and reasonably acceptable to
Daiichi. All Software Programs (including Updates) [ * ]. Axys may make Updates
during the term of this Agreement [ * ]. [ * ]
3.3 TECHNOLOGY AND SOFTWARE PROGRAMS LICENSE RIGHTS.
(a) Subject to the terms of this Agreement, Axys hereby grants
Daiichi a limited, non-exclusive, non-transferable, worldwide, perpetual
(subject to termination under Article 10) license to use and practice the Axys
Know-How, Protocol Know-How, Protocol Patents and Axys Patents solely for
Daiichi to make and use Custom Compounds and Program Compounds for any purpose
permitted under this Agreement, and subject to the limitations in Section 3.6 of
this Agreement.
(b) Subject to the terms of this Agreement, Axys hereby grants to
Daiichi a limited, non-exclusive, non-transferable, world-wide, perpetual
(subject to termination under Article 10) license, solely within Daiichi's
organization and facilities: to use, [ * ] the Software Programs, and to [ * ],
provided that all such uses of the Software Programs are solely for [ * ]. The
foregoing license includes [ * ].
The foregoing license rights may not be sublicensed to a third party without the
prior written consent of Axys, and any such permitted sublicense shall only be
in conjunction with and in compliance with Daiichi's permitted use of Program
Compounds as described in Section 3.5 and only to the extent needed to
accomplish such permitted purposes. Daiichi covenants that it will not transfer
or disclose any such Axys Know-How, Protocol Know-How, Protocol Patents, Axys
Patents or Software Programs to any third party except as part of such permitted
sublicenses and only subject to limitations consistent with the above
restrictions and those in Sections 3.5 and 3.6. Daiichi further covenants that
it will only transfer or disclose any such Axys Know-How, Protocol Know-How,
Protocol Patents, Axys Patents or Software Programs to any of its Affiliates
pursuant to agreements that subject such Affiliates to all relevant limitations
in this Agreement, including without limitation, the restrictions regarding
permitted use of Custom Compounds or Program Compounds as described in Sections
2.5, 3.2, 3.3, 3.4, 3.5 and 3.6. Daiichi hereby guarantees the compliance of
each of its Affiliates with all such restrictions and
[ * ] = 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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limitations on the use of the Axys Know-How, Protocol Know-How, Protocol
Patents, Axys Patents or Software Programs transferred or disclosed to such
Affiliate.
3.4 LIMITED COMMERCIAL LICENSES. Subject to the terms of this Agreement,
Axys hereby grants Daiichi the limited, non-exclusive, worldwide, perpetual
(subject to termination under Article 10) license, with the right to sublicense,
under the Axys Know-How, Protocol Know-How, Protocol Patents and Axys Patents,
solely for Daiichi to offer for sale, sell and manufacture (a) any products
containing Custom Compounds or Program Compounds [ * ], or (b) any such Custom
Compounds or Program Compounds in bulk material for use in manufacturing such
products.
3.5 RIGHT TO USE PROGRAM COMPOUNDS. Daiichi shall have the right to use
the Program Compounds and the Protocols solely in [ * ]. Daiichi shall be
permitted to transfer the Program Compounds only (a) [ * ], or (b) [ * ] and are
subject to written confidentiality agreements at least as restrictive as the
provisions of Article 8. Except as expressly permitted in the foregoing, Daiichi
covenants that it and its Affiliates shall not transfer or disclose Program
Compounds, or the structures thereof, or the Protocols to any third party for
any purpose. Daiichi and its Affiliates may use the Protocols, and Information
generated by the permitted use of the Program Compounds, for any purpose in
conjunction with the permitted use of Program Compounds, subject to and in
compliance with the limitations in this Agreement.
3.6 LIMITATIONS.
(a) Daiichi understands and agrees that Axys retains all its
rights to use all technology, Information and intellectual property rights for
its own purposes and to license or disclose such technology, Information and
intellectual property rights to third parties without restriction, subject only
to the right and the licenses granted to Daiichi in Sections 2.5, 3.3, 3.4 and
3.5 of this Agreement. Daiichi covenants that it and its Affiliates shall not
use or practice the Axys Know-How, Protocol Know-How, Protocol Patents, Axys
Patents, Software Programs, Libraries, Custom Compounds or Program Compounds for
any use or purpose except as expressly permitted in Sections 2.5, 3.3, 3.4 and
3.5. Daiichi further covenants that Daiichi and its Affiliates will not [ * ],
except as expressly permitted in Sections 2.5, 3.3, 3.4 and 3.5, but excluding
from the foregoing limitation [ * ]. It is understood that the foregoing
sentence shall not be interpreted to prevent Daiichi or its Affiliate or
sublicensee from [ * ].
(b) Daiichi may not: (i) distribute in any manner any of the
Software Programs or any derivative work of any portion of the Software
Programs, except as expressly permitted in this Agreement; (ii) publicly
disclose, publicly perform or publicly display the Software Programs; (iii) use,
copy, compile, adapt, translate the Software Programs except as expressly
permitted in this Agreement; (iv) sell, lease, loan, trade, transfer (including
over a network including the Internet), sublicense, market or publish the
Software Programs except as expressly permitted in this Agreement; or (v) copy
the documentation, except as expressly permitted in this Agreement. Daiichi
acknowledges and agrees that [ * ] is highly confidential and warrants the
imposition of appropriate security precautions above and beyond those
implemented for its own proprietary or confidential information.
[ * ] = 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.
7.
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4. TECHNOLOGY COMMITTEE
Within thirty (30) days of the Effective Date, Axys and Daiichi will form
a committee consisting of two (2) representatives of each Party (the "Technology
Committee"). Each Party's representatives on the Technology Committee are listed
on Exhibit E and may be [ * ] with the approval of the Technology Committee. The
Technology Committee shall meet as needed at times as agreed upon [ * ] (on a
quarterly basis in principle) (a) to discuss proposals for Libraries proposed by
either Party, (b) to review the diversity of Custom Compounds to be made in each
Library, (c) [ * ], (d) to discuss and establish the technology transfer to
Daiichi contemplated under Section 3.1, including appropriate schedules and
mechanisms therefor, (e) to establish and supervise the training of Daiichi
employees with respect to use of the Axys Technology as provided in Article 3
and (f) to discuss and resolve any non-business aspects of the relationship of
the Parties under this Agreement that require attention. The Technology
Committee shall act by unanimous consent, and may meet by telephone,
video-conference or in face-to-face meetings, as agreed upon by the members of
the Technology Committee. A chairperson shall be appointed for each meeting of
the Technology Committee by the members of the Technology Committee. Each Party
may send non-voting representatives to attend Technology Committee meetings as
observers.
5. TECHNOLOGY TRAINING
5.1 PROVISION OF TRAINING. Axys hereby agrees to provide specified
Daiichi employees with training regarding the use of the Axys Technology as
permitted under Sections 2.5, 3.3, 3.4 and 3.5 [ * ]. Such training shall be in
accordance with the custom training program set forth in Exhibit D attached
hereto, which exhibit may be modified as appropriate by the Technology
Committee. Such training shall be provided at Axys' facilities, unless otherwise
agreed by the Parties. All salary, benefits, costs and expenses of any Daiichi
employees who participate in such training program shall be paid for by Daiichi.
All Daiichi employees who attend Axys' facilities shall be subject to
appropriate and reasonable limitations and restrictions to protect access to any
Axys' proprietary or confidential information not related to this Agreement.
5.2 TRAINING EFFORTS. Axys agrees to use [ * ], to provide the training
set forth in Section 5.1.
6. PAYMENTS
6.1 PAYMENTS FOR PHYSICAL SAMPLES OF CUSTOM COMPOUNDS. Daiichi shall pay
Axys a purchase price for each physical sample of Custom Compound delivered
hereunder equal to [ * ] for each physical sample of Custom Compound delivered.
6.2 PROTOCOL FEE. In consideration for Axys' grant of license rights to
the Protocol Know-How and Protocol Patents under Article 3, Daiichi shall pay to
Axys [ * ] for each Protocol delivered to Daiichi as the non-refundable Protocol
fee for such Protocol.
6.3 PAYMENT PROCEDURES. Payment of the purchase price set forth in
Section 6.1 for physical samples of Custom Compounds delivered shall be made
within [ * ] of delivery of an invoice from Axys regarding such samples, which
invoice shall be submitted promptly upon
[ * ] = 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.
8.
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receipt of delivery of such samples under the terms of Section 2.2. Payment of
the Protocol fee set forth in Section 6.2 shall be made within [ * ] of receipt
of delivery of an invoice from Axys regarding such Protocol, which invoice shall
be submitted promptly upon delivery of such Protocol by Axys under the terms of
Section 2.2. Daiichi shall be responsible for payment of all shipping and
insurance costs and any sales, transfer, excise, export or other tax and of any
customs tax or duties assessed on the sale or transfer of such samples under the
terms of this Agreement, but excluding taxes based upon net income of Axys.
6.4 LICENSE FEE. Daiichi shall pay to Axys the following amounts as the
non-refundable license fee for the grant of license rights under the Axys
Know-How, Axys Patents and Software Programs under Article 3 hereof:
(a) [ * ],
(b) [ * ], and
(c) [ * ].
It is expressly understood that Axys shall in no way require Daiichi any
additional payment other than [ * ] for the grant of the license right by Axys
to Daiichi under Article 3.
6.5 BANK ACCOUNT. All payments payable by Daiichi to Axys under this
Agreement shall be made by wire transfer remittance to the bank account
designated by Axys.
6.6 WITHHOLDING TAX. Any tax required to be withheld in Japan on any
payment payable to Axys under Section 6.2 or 6.4 of this Agreement shall be
withheld and promptly paid by Daiichi for and on behalf of Axys to the competent
authorities. Daiichi shall procure official tax certificate(s) proving payment
of the tax withheld and pass the original(s) on to Axys. In addition, Axys shall
[ * ] under strict confidentiality, with [ * ] may require [ * ], and [ * ]. If,
as a result of [ * ], then [ * ]. Daiichi shall procure official tax
certificate(s) proving payment of the tax withheld and pass the original(s) on
to Axys.
7. INTELLECTUAL PROPERTY MATTERS
7.1 OWNERSHIP. All intellectual property rights, including but not
limited to all copyrights, patent rights, moral rights, and trade secrets, in
and to the Protocols, Axys Know-How, Protocol Know-How, Protocol Patents, Axys
Patents, and the Software Programs that are Controlled by Axys as of the
Effective Date or during this Agreement shall remain exclusively with Axys,
subject only to the license rights granted to Daiichi under Sections 2.5, 3.3,
3.4 and 3.5. The sale to Daiichi of the physical samples of Custom Compounds
hereunder does not involve the sale or transfer of Axys intellectual property
rights (if any) relating thereto, which Axys retains. Axys shall own the entire
right, title and interest in and to any inventions and Information, and all
intellectual property rights therein, developed solely by employees or agents of
Axys or its Affiliates in the course of this Agreement. Daiichi shall own the
entire right, title and interest in and to any inventions and Information, and
all intellectual property rights therein, developed solely by employees or
agents of Daiichi or its Affiliates in the course of this Agreement. The Parties
shall own jointly the entire right, title and interest in and to any inventions
and Information, and all intellectual property rights therein, developed jointly
by
[ * ] = 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.
9.
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employees or agents of Axys or its Affiliates and employees or agents of Daiichi
or its Affiliates in the course of this Agreement.
7.2 LIMITATION ON PATENT APPLICATIONS. The Parties agree that each Party
and its Affiliates shall [ * ] filing or prosecuting any patent applications
that [ * ]. Each Party and its Affiliates shall also [ * ] filing or prosecuting
any patent application that [ * ]. In addition, it is understood and agreed
that, notwithstanding the foregoing, if Daiichi or its Affiliate or Axys or its
Affiliate or licensee [ * ].
7.3 LIMITED CROSS-LICENSES.
(a) Daiichi hereby grants to Axys a non-exclusive, world-wide,
perpetual (subject to termination by Daiichi under Section 10.2), royalty-free
license, with right to sublicense, under issued patents Controlled by Daiichi or
its Affiliate that [ * ] solely for Axys and its Affiliates and sublicensees to
make, have made, import, use, offer for sale and sell such Custom Compound as
permitted in Section 2.6 of this Agreement, but excluding from the foregoing
license (i) [ * ], and (ii) [ * ].
(b) Axys hereby grants to Daiichi a non-exclusive, world-wide,
perpetual (subject to termination by Axys under Section 10.2), royalty-free
license, with right to sublicense, under issued patents Controlled by Axys or
its Affiliate that [ * ] solely for Daiichi and its Affiliates and sublicensees
to make, have made, import, use, offer for sale and sell such Custom Compound as
permitted in Section 2.5 of this Agreement, but excluding from the foregoing
license any [ * ].
7.4 ENFORCEMENT OF PATENTS. If Daiichi becomes aware of any actions of a
third party that it considers infringing upon any Axys Patent or Protocol
Patent, it shall notify Axys and provide all evidence of such infringement that
is reasonably available. Axys shall have the sole and exclusive right, at its
own expense, to attempt to terminate such infringement by commercially
appropriate steps, including suit. Any amounts recovered by Axys, whether by
settlement or judgment, shall be retained by Axys.
7.5 THIRD PARTY PATENT RIGHTS. If any warning letter or other notice of
infringement is received by a Party, or action, suit or proceeding is brought
against a Party alleging infringement of a patent right of any third party in
the manufacture, use or sale of a Library, Custom Compound or Program Compound
or use or practice of the Axys Know-How, Protocol Know-How, Protocol Patents or
Axys Patents or Software Programs as permitted herein, the Parties shall
promptly discuss and decide the best way to respond.
8. CONFIDENTIALITY
8.1 CONFIDENTIALITY OBLIGATIONS. Each Party agrees that, for the term of
this Agreement and for [ * ] thereafter, such Party shall keep, and shall ensure
that its officers, directors, employees and agents keep, completely confidential
and shall not publish or otherwise disclose and shall not use for any purpose
except as expressly permitted hereunder any Confidential Information furnished
to it by the other Party pursuant to this Agreement; except that the foregoing
obligations shall not apply to any Information to the extent that it can be
established by such receiving Party that such Information:
[ * ] = 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.
10.
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(a) was already known to the receiving Party or any of its
Affiliates, other than pursuant to an obligation of confidentiality owed to the
disclosing Party, at the time of disclosure;
(b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving Party;
(c) became generally available to the public or otherwise part of
the public domain after its disclosure other than through any act or omission of
the receiving Party in breach of this Agreement;
(d) was subsequently lawfully disclosed to the receiving Party or
its Affiliates by a third party other than in contravention of a confidentiality
obligation of such third party to the disclosing Party; or
(e) was developed or discovered by employees of the receiving
Party or its Affiliates who had no access to the Confidential Information of the
disclosing Party.
Notwithstanding the foregoing, each Party may disclose the other's Confidential
Information only to the extent such disclosure is necessary in prosecuting or
defending litigation or complying with applicable governmental laws or
regulations, provided that if a Party is required to make any such disclosure of
the other Party's Confidential Information, it will, whenever reasonably
possible, give advance notice to the latter Party of such disclosure
requirement, will cooperate with the other Party in its efforts to secure
confidential treatment of such Confidential Information prior to its disclosure
(whether through protective orders or confidentiality agreements or otherwise),
and will use reasonable efforts to limit the extent of such disclosure and, if
requested by the other Party because of an inability of such other Party to seek
confidential treatment, to secure confidential treatment of such Confidential
Information prior to its disclosure (whether through protective orders or
confidentiality agreements or otherwise).
8.2 PRESS RELEASES. Except to the extent required by law or as otherwise
permitted in accordance with this Section 8.2 or Section 8.3, neither Party
shall make any public announcements concerning this Agreement or the subject
matter hereof without the prior written consent of the other, which shall not be
unreasonably withheld. Notwithstanding the foregoing, the Parties agree that
each Party may desire or be required to issue press releases relating to this
Agreement or activities thereunder, and the Parties agree to consult with each
reasonably and in good faith with respect to the text of such press releases
prior to the issuance thereof, provided that a Party may not unreasonably
withhold consent to such releases, and that either Party may issue such press
releases as it determines are reasonably necessary to comply with laws or
regulations or, based on advice of counsel, for appropriate market disclosure.
The principles to be observed by Axys and Daiichi in public disclosures with
respect to this Agreement shall be: accuracy, the requirements of
confidentiality under this Article 8, and the normal business practice in the
pharmaceutical and biotechnology industries for disclosures by companies
comparable to Axys and Daiichi. Except as set forth in Section 8.3 hereof, in
the event of a required or desired public announcement, such Party shall provide
the other Party with a reasonable opportunity and the right to approve the
content of such announcement prior to its being made, which approval shall not
be delayed or unreasonably withheld. Each Party agrees
[ * ] = 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.
11.
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that any filings it makes with the Securities and Exchange Commission describing
the terms of this Agreement shall be consistent with the prior press releases
and other public disclosures of such terms.
[ * ].
8.3 PUBLICATIONS. Notwithstanding the terms of Section 8.2, either Party
may publish Information that such Party discovered or developed in its research,
development or commercialization activities derived from use of any Library,
Custom Compound, Axys Know-How, Protocol, Protocol Know-How or Program Compound
without the consent of or notice to the other Party, provided, however, that no
such publication may contain the Confidential Information of the other Party, or
may disclose the structure of a Program Compound or Information that reasonably
may be interpreted to disclose the structure of a Custom Compound or Program
Compound unless:
(a) such structure is in the public domain at the time of such
publication;
(b) such structure was independently discovered by employees of
the publishing Party who had no access to the Libraries, the Custom Compounds or
the Program Compounds or any Confidential Information of the other Party; or
(c) the other Party has consented in writing to such disclosure;
or
(d) such Party has filed, in compliance with the terms of this
Agreement, a patent application covering such Custom Compound or Program
Compound.
[ * ].
9. INDEMNIFICATION
9.1 INDEMNIFICATION BY DAIICHI. Daiichi shall indemnify, defend and hold
Axys and its agents, employees, officers and directors (the "Axys Indemnitees")
harmless from and against any and all liability, damage, loss, cost or expense
(including reasonable attorneys' fees) arising out of third party claims or
suits related to (a) Daiichi's or its Affiliate's negligence, willful misconduct
or breach of this Agreement; or (b) the manufacture or use of Custom Compounds,
or the manufacture, use or sale, by Daiichi and its Affiliates, distributors and
agents, of Program Compounds or products containing Program Compounds or
compounds that are based upon or derived from a Custom Compound or Program
Compound, except to the extent such claims or suits result from (i) negligence
or willful misconduct of or breach of this Agreement by any of the Axys
Indemnitees or (ii) the manufacture, use or sale to third parties by Axys, its
Affiliates, third party licensees, distributors or agents (provided such party
is not Daiichi or an Affiliate, sublicensee, distributor or agent of Daiichi) of
compounds having the same structure as Custom Compounds made by Axys, its
Affiliates, third party licensees, or agents or products containing such
compounds or any compound based upon or derived therefrom. Upon the assertion of
any such claim or suit, the Axys Indemnitees shall promptly notify Daiichi
thereof, and Daiichi shall appoint counsel reasonably acceptable to the Axys
Indemnitees to represent the Axys Indemnitees with respect to any claim or suit
for which indemnification is sought, provided that Daiichi shall have sole
control over the defense and settlement of such claim or suit. Axys may
[ * ] = 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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nevertheless retain co-counsel at its own expense. As a condition to obtaining
indemnification hereunder, the Axys Indemnitees shall not settle or attempt to
settle or defend or attempt to defend any such claim or suit without the prior
written consent of Daiichi, unless they shall have first waived their rights to
indemnification hereunder; provided that the foregoing shall in no way limit
Axys' right to challenge or defend against a claim (whether by Daiichi or any
third party) that the claim or suit that is the subject of a claim for
indemnification by Axys hereunder results from negligence or willful misconduct
of or breach of the Agreement by any of the Axys Indemnitees.
9.2 INDEMNIFICATION BY AXYS. Axys shall indemnify, defend and hold
Daiichi and its agents, employees, officers and directors (the "Daiichi
Indemnitees") harmless from and against any and all liability, damage, loss,
cost or expense (including reasonable attorney's fees) arising out of third
party claims or suits related to (a) Axys' negligence, willful misconduct or
breach of this Agreement, or (b) the manufacture, use or sale to third parties
by Axys, its Affiliates, third party licensees, distributors or agents (provided
such party is not Daiichi or an Affiliate, distributor or agent of Daiichi) of
compounds having the same structure as Custom Compounds or products containing
such compounds or any compound based upon or derived therefrom, except to the
extent that such claims or suits result from (i) the manufacture, use, or sale
by Daiichi and its Affiliates, sublicensees, distributors and agents of Custom
Compounds, Program Compound or products containing Program Compound or compounds
that are based upon or derived from a Custom Compound or Program Compound, or
(ii) negligence or willful misconduct of or breach of this Agreement by any of
the Daiichi Indemnitees. Upon the assertion of any such claim or suit, the
Daiichi Indemnitees shall promptly notify Axys thereof, and Axys shall appoint
counsel reasonably acceptable to the Daiichi Indemnitees to represent the
Daiichi Indemnitees with respect to any claim or suit for which indemnification
is sought, provided that Axys shall have sole control over the defense and
settlement of such claim or suit. Daiichi may nevertheless retain co-counsel at
its own expense. As a condition to obtaining indemnification hereunder, the
Daiichi Indemnitees shall not settle or attempt to settle or defend or attempt
to defend any such claim or suit without the prior written consent of Axys,
unless they shall have first waived their rights to indemnification hereunder;
provided that the foregoing shall in no way limit Daiichi's right to challenge
or defend against a claim (whether by Axys or any third party) that the claim or
suit that is the subject of a claim for indemnification by Daiichi hereunder
results from negligence or willful misconduct of or breach of the Agreement by
any of the Daiichi Indemnitees.
10. TERMINATION AND EXPIRATION
10.1 TERM AND TERMINATION. This Agreement shall commence upon the
Effective Date and, unless earlier terminated as provided herein, shall expire
on the latest to occur of the following: (i) the third anniversary of the
Effective Date, (ii) the completion of delivery of the Libraries to Daiichi
under Article 2, (iii) completion of transfer to Daiichi of the Axys Technology
under Article 3 or (iv) the completion of the training program under Articles 3
and 5. Sections 2.5, 3.3 and 3.4 shall survive such expiration, subject to
compliance by Daiichi, its Affiliates and any permitted sublicensees with all
limitations on the practice of such rights set forth in Sections 2.5, 3.5, 3.6
and Article 8.
[ * ] = 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.
13.
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10.2 TERMINATION UPON MATERIAL BREACH.
(a) Failure by a Party to comply with any of its material
obligations contained herein shall entitle the Party not in default to give to
the Party in default notice specifying the nature of the default, requiring it
to make good or otherwise cure such default, and stating its intention to
terminate if such default is not cured. If such default is not cured within [ *
] after the date of such notice (or, if such default cannot be cured within such
[ * ], if the Party in default does not commence and diligently continue actions
to cure such default), the Party not in default shall be entitled, without
prejudice to any of its other rights conferred on it by this Agreement, and in
addition to any other remedies available to it by law or in equity, to terminate
this Agreement; provided, however, that such right to terminate shall be stayed
in the event that, during such [ * ], the Party alleged to have been in default
shall have initiated dispute resolution proceedings in accordance with Section
11.11 with respect to the alleged default, which stay shall last so long as the
initiating Party diligently and in good faith pursues the prompt resolution of
such proceedings.
(b) The right of a Party to terminate this Agreement, as provided
above, shall not be affected in any way by its waiver or failure to take action
with respect to any prior default. A Party may waive its right to terminate this
Agreement with respect to a particular default, provided that any such waiver
shall not constitute a waiver of, and such Party shall retain all rights to
pursue, any and all other remedies it may have at law or in equity of such
default by the other Party.
10.3 CONSEQUENCES OF TERMINATION.
(a) Upon termination of this Agreement by Daiichi pursuant to
Section 10.2 for the uncured material breach of Axys, then: (i) Section 2.5
shall survive termination for physical samples of the Custom Compounds delivered
and paid for by Daiichi, subject to compliance by Daiichi (and any permitted
Affiliates) with the limitations set forth in Sections 2.5 and 3.6; (ii) the
rights granted under Sections 3.3 and 3.4 shall survive termination, subject to
compliance by Daiichi and its Affiliates with all limitations on the practice of
such rights set forth in Sections 3.5 and 3.6; (iii) Axys shall promptly return
all Confidential Information of Daiichi in its possession; and (iv) all
obligations and rights of Axys to provide additional physical samples of the
Custom Compounds shall terminate.
(b) Upon termination of this Agreement by Axys pursuant to Section
10.2 for the uncured material breach of Daiichi, then: (i) all rights granted to
Daiichi under this Agreement shall terminate, except that Sections 2.5 and 3.3
shall survive solely with respect to those physical samples of the Custom
Compounds and the Protocols already paid for by Daiichi and for which Daiichi
(and any permitted Affiliates) has complied and continues to fully comply with
the limitations set forth in Sections 2.5 and 3.6; (ii) with respect to any
physical sample of a Custom Compound not covered by subsection (i) above,
Daiichi shall return all existing physical samples of such Custom Compound and
Daiichi may not further use such compounds; (iii) all obligations of Axys to
provide additional physical samples of the Custom Compounds shall terminate;
(iv) Daiichi shall promptly return to Axys or destroy all copies of Confidential
Information of Axys, including without limitation all Software Programs; and (v)
all obligations of Axys to provide additional Axys Technology shall terminate.
[ * ] = 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.
14.
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10.4 ACCRUED RIGHTS; SURVIVING OBLIGATIONS.
(a) Termination or expiration of this Agreement for any reason
shall be without prejudice to any rights which shall have accrued to the benefit
of a Party prior to such termination or expiration. Such termination or
expiration shall not relieve a Party from obligations which are expressly
indicated to survive termination or expiration of this Agreement.
(b) Without limiting the foregoing, Sections 2.6, 7.1, 7.2, 7.3,
7.4 and 7.5 and Articles 1, 8, 9 and 10 of this Agreement shall survive the
expiration or termination of this Agreement for the following periods of time:
Sections 7.2, 7.4 and 7.5 and Article 8 shall survive for [ * ] after the
effective date of expiration or termination, and all other Sections and Articles
referred to in this subsection (b) shall survive indefinitely.
11. MISCELLANEOUS PROVISIONS
11.1 RELATIONSHIP OF THE PARTIES. Nothing in this Agreement is intended
or shall be deemed to constitute a partnership, agency or employer-employee
relationship between the Parties. Neither Party shall incur any debts or make
any commitments for the other.
11.2 ASSIGNMENTS. Except as expressly provided herein, neither this
Agreement nor any interest hereunder shall be assignable, nor any other
obligation delegable, by a Party without the prior written consent of the other;
provided, however, that a Party may assign this Agreement to any Affiliate or to
any successor in interest by way of merger, acquisition or sale of all or
substantially all of its assets in a manner such that the assignee shall be
liable and responsible for the performance and observance of all such Party's
duties and obligations hereunder, but provided that if such assignee is an
Affiliate of the assigning Party, such Party shall guarantee the performance by
such Affiliate of all its obligations under this Agreement. This Agreement shall
be binding upon the successors and permitted assigns of the Parties. Any
assignment not in accordance with this Section 11.2 shall be void.
11.3 DISCLAIMER OF WARRANTIES. EXCEPT FOR THE WARRANTIES SET FORTH IN
SECTION 11.4, AXYS DOES NOT GRANT, AND HEREBY EXPRESSLY DISCLAIMS ALL
WARRANTIES, EXPRESS, STATUTORY OR IMPLIED, INCLUDING WITHOUT LIMITATION
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR
NON-INFRINGEMENT OF THIRD PARTY RIGHTS. DAIICHI ACKNOWLEDGES THAT THE SOFTWARE
PROGRAMS ARE SUPPLIED HEREUNDER ON AN "AS IS" BASIS. AXYS DOES NOT WARRANT, AND
HEREBY DISCLAIMS ANY WARRANTY, THAT ANY SOFTWARE PROGRAM OR ANY SOFTWARE PROGRAM
GENERATED FROM THE SOURCE CODE WILL MEET DAIICHI'S SPECIFIC NEEDS OR THAT
DAIICHI'S USE OF SUCH PROGRAMS WILL BE UNINTERRUPTED OR ERROR-FREE. AXYS
EXPRESSLY DISCLAIMS ANY AND ALL EXPRESS, IMPLIED OR STATUTORY WARRANTIES
RELATIVE TO THE SOFTWARE PROGRAMS INCLUDING WITHOUT LIMITATION THE IMPLIED
WARRANTIES OF TITLE, NON-INFRINGEMENT, MERCHANTABILITY, AND FITNESS FOR A
PARTICULAR PURPOSE.
[ * ] = 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.
15.
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11.4 REPRESENTATIONS AND WARRANTIES.
(a) Each Party represents and warrants to the other Party that, as
of the date of this Agreement:
(i) such Party is duly organized and validly existing under
the laws of the state of its incorporation and has full corporate power and
authority to enter into this Agreement and to carry out the provisions hereof;
(ii) such Party has taken all corporate action necessary to
authorize the execution and delivery of this Agreement and the performance of
its obligations under this Agreement;
(iii) this Agreement is a legal and valid obligation of such
Party, binding upon such Party and enforceable against such Party in accordance
with the terms of this Agreement, except as such enforcement may be limited by
applicable bankruptcy, insolvency, reorganization, arrangement, moratorium or
other similar laws affecting creditors' rights, and subject to general equity
principles and to limitations on availability of equitable relief, including
specific performance. All consents, approvals and authorizations from all
governmental authorities or other third parties required to be obtained by such
Party in connection with this Agreement have been obtained; and
(iv) such Party has obtained written confidentiality
agreements from each of its employees and consultants who have access to the
Confidential Information of the other Party hereunder, whether in the form of
general confidentiality agreements from the employees obtained at the time of
commencement of such employees' employment by such Party or otherwise, which
agreements obligate such persons to maintain as confidential all confidential
information obtained by such Party in confidence from a third party.
(b) Axys represents and warrants to Daiichi that as of the date of
this Agreement:
(i) it has the full right, power and authority to enter into
this Agreement and to grant the right and licenses granted under Articles 2 and
3 and Section 7.3 hereof;
(ii) the execution, delivery and performance of this
Agreement by Axys does not constitute a material breach under, and is not
precluded by the terms of, any agreement to which Axys is a party or by which
Axys is bound; and
(iii) [ * ].
(c) Daiichi represents and warrants to Axys that as of the date of
this Agreement:
(i) it has the full right, power and authority to enter into
this Agreement; and
[ * ] = 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.
16.
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(ii) the execution, delivery and performance of this
Agreement by Daiichi does not constitute a material breach under, and is not
precluded by the terms of, any agreement to which Daiichi is a party or by which
Daiichi is bound.
11.5 FURTHER ACTIONS. Each Party agrees to execute, acknowledge and
deliver 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.
11.6 FORCE MAJEURE. The failure of a Party to perform any obligation
under this Agreement by reason of acts of God, acts of governments, riots, wars,
strikes, accidents or deficiencies in materials or transportation or other
causes of any nature (whether similar or dissimilar) beyond its control for the
duration thereof and for [ * ] thereafter shall not be deemed to be a breach of
this Agreement.
11.7 NO TRADEMARK RIGHTS. No right, express or implied, is granted by
this Agreement to a Party to use in any manner the name or any other trade name
or trademark of a Party in connection with the performance of this Agreement.
11.8 ENTIRE AGREEMENT OF THE PARTIES; AMENDMENTS. This Agreement
constitutes and contains the entire understanding and agreement of the Parties
respecting the subject matter hereof and cancels and supersedes any and all
prior negotiations, correspondence, understandings and agreements between the
Parties, whether oral or written, regarding such subject matter. No waiver,
modification or amendment of any provision of this Agreement shall be valid or
effective unless made in writing and signed by a duly authorized officer of each
Party.
11.9 CAPTIONS. The captions and headings to this Agreement are for
convenience only, and are to be of no force or effect in construing or
interpreting any of the provisions of this Agreement.
11.10 APPLICABLE LAW. This Agreement shall be governed by and interpreted
in accordance with the laws of the [ * ] applicable to contracts entered into
and to be performed wholly within the [ * ] excluding conflict of laws
principles. This Agreement is made and shall be interpreted solely in English,
and all proceedings to enforce this Agreement shall be in English.
11.11 DISPUTES. In the event of any controversy or claim arising out of,
relating to or in connection with any provision of this Agreement, or the rights
or obligations of the Parties hereunder, the Parties shall try to settle their
differences amicably between themselves by referring the disputed matter to the
Chief Executive Officer of Axys and the Board Director (Basic Technology
Research Laboratory and New Product Research Laboratory) of Daiichi or another
Daiichi designee of similar management level for discussion and resolution.
Either Party may initiate such informal dispute resolution by sending written
notice of the dispute to the other Party, and within [ * ] after such notice
such representatives of the Parties shall meet for attempted resolution by good
faith negotiations. If such personnel are unable to resolve such dispute within
[ * ] of their first meeting of such negotiations, either Party may seek to have
such dispute resolved by mediation or arbitration conducted in the [ * ] in
accordance with, [ * ]. It is
[ * ] = 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.
17.
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understood and agreed by the Parties that, on showing of good cause, each Party
shall be entitled to such discovery as may be permitted by the arbitrator. Each
Party hereby consents to jurisdiction, for the foregoing purposes of enforcing
any award rendered by the arbitrator, in the [ * ]. Notwithstanding the
foregoing, all disputes relating to the validity, scope or enforceability of any
patent shall be submitted for resolution to a court of competent jurisdiction.
In any arbitration proceeding, the prevailing Party shall be entitled to recover
attorneys' fees and costs.
11.12 NOTICES AND DELIVERIES. Any notice, request, delivery, approval or
consent required or permitted to be given under this Agreement shall be in
writing and shall be deemed to have been sufficiently given if delivered in
person, transmitted by telecopier (receipt verified) or five (5) days after it
was sent by express courier service (signature required) or registered letter,
return receipt requested (or its equivalent), to the Party to which it is
directed at its address shown below or such other address as such Party shall
have last given by notice to the other Parties.
If to Daiichi, addressed to:
Daiichi Pharmaceutical Co., Ltd.
16-13, Kitakasai 1-Chome
Edogawa-ku, Tokyo 134-8630 Japan
Telecopier: +81-3-5696-8336
Attn: General Manager, Basic Technology Research Laboratory
If to Axys, addressed to:
Axys Advanced Technologies, Inc.
180 Kimball Way
South San Francisco, CA USA 94080
Telecopier: +1 (650) 829-1067
Attn: Chief Executive Officer
with a copy to:
Axys Pharmaceuticals, Inc.
180 Kimball Way
South San Francisco, CA USA 94080
Telecopier: +1 (650) 829-1067
Attn: General Counsel
11.13 NO CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL EITHER PARTY OR ANY OF
ITS RESPECTIVE AFFILIATES BE LIABLE TO THE OTHER PARTY OR ANY OF ITS AFFILIATES
FOR SPECIAL, INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES, WHETHER IN CONTRACT,
WARRANTY, TORT, NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, including, but not
limited to, loss of profits or revenue, or claims of customers of any of them or
other third parties for such or other damages, but excluding from the foregoing
liabilities arising from breach of the limitations in Sections 2.5, 3.4, 3.5,
3.6 or Article 8.
[ * ] = 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.
18.
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11.14 WAIVER. A waiver by either Party of any of the terms and conditions
of this Agreement in any instance shall not be deemed or construed to be a
waiver of such term or condition for the future, or of any subsequent breach
hereof. All rights, remedies, undertakings, obligations and agreements contained
in this Agreement shall be cumulative and none of them shall be in limitation of
any other remedy, right, undertaking, obligation or agreement of either Party.
11.15 COMPLIANCE WITH LAW. Nothing in this Agreement shall be deemed to
permit a Party to export, reexport or otherwise transfer any physical sample of
the Custom Compound or any Confidential Information of Axys provided under this
Agreement without compliance with all applicable laws.
11.16 SEVERABILITY. When possible, each provision of this Agreement will
be interpreted in such manner as to be effective and valid under applicable law,
but if any provision of this Agreement is held to be prohibited by or invalid
under applicable law, such provision will be ineffective only to the extent of
such prohibition or invalidity, without invalidating the remainder of this
Agreement.
11.17 COUNTERPARTS. This Agreement may be executed in two counterparts,
each containing the signature of one Party. Each counterpart shall be deemed an
original, and both counterparts together shall constitute one and the same
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 EXCHANGE ACT OF 1934, AS
AMENDED.
19.
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IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed
by their respective duly authorized officers as of the day and year first above
written, each copy of which shall for all purposes be deemed to be an original.
DAIICHI PHARMACEUTICAL CO., LTD.
By: /s/ Kiyoshi Morita
--------------------------------------------
Name: Kiyoshi Morita
------------------------------------------
Title: President
-----------------------------------------
AXYS ADVANCED TECHNOLOGIES, INC.
By: /s/ Frederick J. Ruegsegger
--------------------------------------------
Name: Frederick J. Ruegsegger
------------------------------------------
Title: Chief Financial Officer
-----------------------------------------
[ * ].
WITNESS:
AXYS PHARMACEUTICALS, INC.
By: /s/ William J. Newell
--------------------------------------------
Name: William J. Newell
------------------------------------------
Title: Senior Vice President/General Counsel
-----------------------------------------
[ * ] = 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.
20.
21
EXHIBIT A
METHODS OF ANALYSIS
[ * ]
[ * ] = 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.
21.
22
EXHIBIT B
CHARACTERISTICS OF LIBRARIES
[ * ]
[ * ] = 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.
22.
23
EXHIBIT C
SOFTWARE PROGRAMS
[ * ]
[ * ] = 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.
23.
24
EXHIBIT D
[ * ]
[ * ] = 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.
24.
25
EXHIBIT E
TECHNOLOGY COMMITTEE MEMBERS
Axys Representatives:
[*]
[*]
Daiichi Representatives:
[*]
[*]
[ * ] = 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.
25.
26
[ * ] = 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.
26.