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 10.113
COMBINATORIAL CHEMISTRY AGREEMENT
THIS COMBINATORIAL CHEMISTRY AGREEMENT (this "Agreement") is made and
entered into effective as of September 27, 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 ("AAT"), a
subsidiary of Axys Pharmaceuticals, Inc., a Delaware corporation having a place
of business at 180 Kimball Way, South San Francisco, CA 94080, and ALLERGAN,
INC., a Delaware corporation, having a place of business at 2525 Dupont Drive,
Irvine, CA 92612. AAT and Allergan may be referred to herein individually as a
"Party" or, collectively, as the "Parties."
RECITALS
A. AAT 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. Allergan desires to purchase from AAT [ * ] compounds synthesized by
AAT, to obtain related combinatorial software, to receive training and technical
support in conjunction with the transfer of certain AAT technology and know-how
and to obtain from AAT certain non-exclusive licenses to use such technology and
intellectual property for Allergan's drug discovery, development and
commercialization programs.
C. AAT is willing, pursuant to the following terms and conditions, to
synthesize and sell to Allergan such compound libraries, and to train Allergan'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 "AAT KNOW-HOW" means Information that is Controlled by AAT during
this Agreement and comprises general combinatorial chemistry techniques
proprietary to AAT that are useful to Allergan in making Derivatives or other
compounds based on the Compounds, such as computational methods, library
development methods, library production methods, analytical methods and
instrumentation know-how, but excluding the specific protocols and detailed set
of combinatorial chemistry synthetic methods and operating procedures used for
synthesizing the set of Compounds in each Library.
2
1.2 "AAT PATENTS" means all patents and patent applications Controlled
by AAT during this Agreement that claim inventions within the AAT Know-How or
any part or aspect thereof.
1.3 "AAT RESTRICTED INFORMATION" means all Confidential Information of
AAT, other than AAT Know-How and AAT Patents, that is learned by the employees
of Allergan who work at AAT as permitted under Section 3.1 at any time they are
at an AAT facility.
1.4 "AAT TECHNOLOGY" means the AAT Know-How, AAT Patents, and/or
Software Programs, or any part or aspect thereof.
1.5 "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.
1.6 "COMBINATORIAL CHEMISTRY LIBRARY" means the aggregate of all the
physical samples of the Compounds in the Libraries provided to Allergan
hereunder.
1.7 "COMPOUND" means any individual [ * ] chemical compound [ * ], a
physical sample of which AAT synthesizes and provides to Allergan under the
terms of Article 2 of this Agreement.
1.8 "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 AAT 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 AAT to
Allergan hereunder. The disclosing Party shall make reasonable efforts to
summarize in writing all oral disclosures of Confidential Information.
1.9 "CONTROLLED" means, with respect to any material, item of
Information or intellectual property right, that the applicable Party owns or
has a license or other 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.
[ * ] = 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.
2.
3
1.10 "DERIVATIVE" means a compound (other than a Compound) made by
Allergan based upon the use of AAT Know-How or any Compound or
structure-activity Information relating to Compounds.
1.11 "GENERAL SCREENING" means use of any Library or any group of
Compounds in assays to screen for activity [ * ], 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
Compounds synthesized by AAT and provided to Allergan as a single library, which
Compounds are related to each other by a common Scaffold and the specific
synthetic techniques that AAT used to make such group of Compounds.
1.14 "PROTOCOL" means a detailed set of combinatorial chemistry
synthetic methods and standard operating procedures designed to be used for
synthesizing a Library.
1.15 "SCAFFOLD" means the chemical substructure common to a set of
Compounds in a particular Library.
1.16 "SOFTWARE PROGRAMS" means the software programs provided to
Allergan by AAT pursuant to this Agreement related to [ * ] and defined in
Exhibit B attached hereto and made a part hereof, [ * ], accompanying
documentation and other material related to such software programs and provided
by AAT hereunder.
1.17 "TECHNOLOGY COMMITTEE" means the committee formed by the Parties
under Section 2.1 of this Agreement.
1.18 "UPDATES" means any improvements, extensions and other changes to
the Software Programs that are [ * ] and are provided to Allergan by AAT as set
forth in Section 3.2.
2. DEVELOPMENT AND TRANSFER OF LIBRARIES
2.1 TECHNOLOGY COMMITTEE. Within thirty (30) days of the Effective
Date, AAT and Allergan will form a committee consisting of two (2)
representatives of each Party (the "Technology Committee"). Each Party's
representatives on the Technology Committee may be changed by the Party with the
approval of the Technology Committee. The Technology Committee shall meet as
needed at times as agreed upon by the members of the Technology Committee (on a
quarterly basis in principle) (a) to discuss proposals for Libraries proposed by
either Party, (b) to discuss and establish the technology transfer to Allergan
contemplated under Section 3.1, including appropriate schedules and mechanisms
therefor, (c) to establish and supervise the training of Allergan employees with
respect to use of the AAT Technology as
[ * ] = 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.
3.
4
provided in Section 3.1 and (d) 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.
2.2 LIBRARY SYNTHESIS; SCAFFOLD REVIEW.
(a) Commencing promptly after the Effective Date, AAT will use
[ * ] to synthesize the Compounds comprising the [ * ] Libraries to be provided
to Allergan under this Agreement pursuant to the delivery schedule in Section
2.3. AAT will ensure that each Library will be composed of an average of
approximately [ * ] Compounds and that [ * ] or more than [ * ], unless
otherwise agreed by the Parties.
(b) During the period when AAT is delivering the Library Compounds
to Allergan under Section 2.3, Allergan shall have the right, as provided below,
to review Scaffolds that AAT proposes to use in creating each Library, in
advance of AAT delivering each such Library based on such Scaffolds. AAT shall
provide the proposed Scaffolds to Allergan in confidence prior to preparing the
Library based on such Scaffolds, and will use [ * ] to provide such Scaffolds as
soon as AAT can reasonably do so in light of AAT's delivery schedule and in no
event [ * ] in advance of starting the preparation of the related Library.
Allergan shall have the right to review such Scaffolds and shall have the right
to reject certain of such Scaffolds for [ * ] reason, including without
limitation if Allergan determines that any Library based on or including such
Scaffolds will overlap with or are substantially identical to compounds that
Allergan has manufactured or plans to manufacture; provided, that Allergan shall
have the right to reject up to [ * ] to be provided under this Agreement) during
the term of this Agreement and AAT shall use [ * ] to replace said rejected
Scaffolds with Scaffolds [ * ] to Allergan. Allergan shall notify AAT of its
desire to accept or reject a particular Scaffold as soon as reasonably
practicable and in no event [ * ] of receipt of the proposed Scaffold. Failure
to notify AAT of its desire to reject a particular Scaffold within such [ * ]
shall be deemed to be acceptance of such Scaffold by Allergan. AAT shall use
[ * ] to make and deliver such Library in accordance with the delivery schedule
set forth in Section 2.3.
2.3 DELIVERY OF COMPOUNDS. Subject to Section 2.2(b), AAT shall use
[ * ] to deliver the Compounds to Allergan according to the following schedule:
[ * ] to be delivered by [ * ]; an additional [ * ] to be delivered by [ * ]
(with such deliveries to be made on a quarterly basis as determined by the
Technology Committee); and an additional [ * ] to be delivered by [ * ] (with
such deliveries to be made on a quarterly basis as determined by the Technology
Committee). The Compounds shall be delivered in [ * ], or any other [ * ]. Risk
of loss for and title to the Compounds provided by AAT to Allergan under this
Agreement shall pass from AAT to Allergan [ * ]. AAT shall deliver a certificate
of analysis with each Library specifying the results of analysis to show
conformance with the specifications set forth in Exhibit A.
2.4 USE OF COMPOUNDS BY ALLERGAN. Subject to the terms of this
Agreement, Allergan shall have the right to use the Combinatorial Chemistry
Library and the Compounds
[ * ] = 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.
4.
5
therein solely [ * ]. Except as expressly permitted in the foregoing or as
permitted in Section 6.3, Allergan covenants that it shall not transfer or
disclose the Libraries or the Compounds, or the structures thereof to any third
party for any purpose. Allergan may use the Information generated by the
permitted uses of the Libraries and the Compounds, for any purpose in
conjunction with the permitted use of the Compounds, subject to and in
compliance with the limitations in this Agreement. Allergan further covenants
that it is only permitted to transfer or disclose the Libraries, the Compounds
or the structures thereof to any of its Affiliates subject to all relevant
restrictions in this Agreement, including without limitation, the restrictions
set forth in this Section 2.4. Allergan hereby guarantees the compliance of each
of its Affiliates with all such restrictions regarding the Libraries, the
Compounds or the structures thereof transferred or disclosed to such Affiliate.
2.5 ALLERGAN'S RIGHT TO DERIVATIVES. Allergan and its Affiliates shall
have a worldwide, royalty-free, irrevocable (except for uncured material breach
by Allergan) right to synthesize and use Derivatives for [ * ].
2.6 USE OF COMPOUNDS BY AAT. AAT may sell or provide the Combinatorial
Chemistry Library or Compounds therein to other companies or third parties for
their uses, including without limitation General Screening, provided that AAT
covenants that prior to or during the term of this Agreement, it shall not
provide any Library to [ * ] for use in General Screening. During the term of
this Agreement, AAT agrees that it will not provide [ * ] of the Combinatorial
Chemistry Library [ * ]. AAT also agrees that, during the term of this
Agreement, if [ * ]. Without limiting the generality of AAT's retained rights,
AAT and its Affiliates shall retain full rights to use the Combinatorial
Chemistry Library and the Compounds for all internal purposes, including without
limitation General Screening, combinatorial chemistry and medicinal chemistry,
and drug discovery, development and commercialization activities of AAT and its
Affiliates, and to sell such Compounds to third parties for any uses, subject
only to the foregoing covenant. Further, it is understood that AAT and its
Affiliates retain the right to use the Combinatorial Chemistry Library and the
Compounds in screening for [ * ], and to provide the Combinatorial Chemistry
Library, specific Compounds and the specifications for such Compounds to third
party corporate partners of AAT or its Affiliates for use by such partner in
screening for [ * ]. For purposes of clarity, it is understood and agreed that
in the third party collaborations described in the immediately preceding
sentence, [ * ].
2.7 ALLERGAN OPTIONS.
(a) CHEMISTRY SERVICES. AAT agrees to provide Allergan with [ * ].
If Allergan is interested in pursuing such a project at AAT, Allergan shall give
AAT 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 AAT
conducting such a project, [ * ].
(b) PROTOCOLS. Subject to the terms and conditions set forth
herein, AAT hereby grants Allergan the option to license non-exclusively [ * ]
Protocols during the period commencing on the Effective Date and ending [ * ] at
the applicable price set forth in Section 4.4. In the event that Allergan
exercises this option for the first time [ * ], the Parties agree to amend this
Agreement in writing to add AAT's customary licensing provisions for Protocols
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.
5.
6
to provide for [ * ]. In the event that Allergan exercises this option for the
first time [ * ], the Parties agree to execute a new written agreement that
contains AAT's customary licensing provisions for Protocols. AAT agrees that,
[ * ].
3. TECHNOLOGY TRANSFER AND LICENSE
3.1 TRANSFER OF COMBINATORIAL CHEMISTRY TECHNOLOGY. AAT shall transfer
to Allergan, on an orderly basis, the AAT Know-How and copies of the AAT Patents
[ * ]. The schedule for such transfer will be reasonable and orderly, as
established by the Technology Committee. In addition, Allergan may provide, at
its cost and expense, [ * ] Allergan scientists to work at AAT at any one time
during [ * ] to assist and direct the transfer to Allergan of the AAT Know-How
and Software Programs and to receive related technical training; provided that
access or exposure to AAT Restricted Information by the Allergan scientists
shall be subject to the provisions of Article 6. Such training shall be provided
at AAT's facilities, unless otherwise agreed by the Parties. Any such Allergan
scientists that work at AAT under the terms of this Section 3.1 shall be
restricted from access to any AAT facilities or locations other than those
necessary for completing the technology transfer and training as provided above.
Further, AAT shall use reasonable efforts to limit and restrict such Allergan
scientists from access or exposure to any confidential information of AAT that
is not AAT Know-How. AAT agrees to [ * ] Allergan on the use of the AAT
Technology to [ * ] the purpose of this Agreement. Therefore, AAT agrees to
provide, when requested by Allergan, time during the term of the Agreement for
[ * ] to be scheduled at such times as are mutually convenient to the Parties.
3.2 DELIVERY OF SOFTWARE PROGRAMS AND UPDATES. Commencing [ * ] and
according to the delivery schedule therefor established by the Technology
Committee, AAT will, [ * ], deliver to and help install [ * ] copies of each of
the Software Programs at Allergan's facilities. The Software Programs shall be
delivered in electronic format, or in such other mutually agreeable format. Each
Software Program [ * ]. AAT 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, AAT hereby grants
Allergan a limited, non-exclusive, non-transferable, worldwide, perpetual
(subject to termination under Article 8) license to use and practice the AAT
Know-How and AAT Patents solely for Allergan to make and use Compounds and
Derivatives for any purpose permitted under this Agreement, and subject to the
limitations in Sections 3.4 and 3.5 of this Agreement.
(b) Subject to the terms of this Agreement, AAT hereby grants to
Allergan a limited, non-exclusive, non-transferable, world-wide, perpetual
(subject to termination under Article 8) license, solely within Allergan'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 AAT, which consent shall not be unreasonably withheld,
and any such permitted sublicense shall only be in conjunction with and in
compliance with Allergan's permitted use of
[ * ] = 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.
6.
7
Compounds and Derivatives as described in Sections 2.4 and 2.5 and only to the
extent needed to accomplish such permitted purposes. Allergan covenants that it
will not transfer or disclose any such AAT Know-How, AAT Patents or Software
Programs, or any part thereof, to any third party except as part of such
permitted sublicenses and only subject to limitations consistent with the above
restrictions and those in Section 3.5. Allergan further covenants that it will
only transfer or disclose any such AAT Know-How, AAT Patents or Software
Programs or any part thereof, 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
Compounds as described in Sections 2.4, 2.5, 3.2, 3.3, 3.4 and 3.5. Allergan
hereby guarantees the compliance of each of its Affiliates with all such
restrictions and limitations on the use of the AAT Know-How, AAT Patents or
Software Programs transferred or disclosed to such Affiliate.
3.4 LIMITED COMMERCIAL LICENSES. Subject to the terms of this
Agreement, AAT hereby grants Allergan a limited, non-exclusive, worldwide,
perpetual (subject to termination under Article 8) license, with the right to
sublicense, under the AAT Know-How, and AAT Patents, solely for Allergan to
offer for sale, sell and manufacture [ * ].
3.5 LIMITATIONS.
(a) Allergan understands and agrees that AAT 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 Allergan in Sections 2.4, 2.5, 3.3, 3.4
and 3.5 of this Agreement. Allergan covenants that it and its Affiliates shall
not use or practice the AAT Know-How, AAT Patents, Software Programs, Libraries,
Compounds for any use or purpose except as expressly permitted in Sections 2.4,
2.5, 3.3, 3.4 and 3.5. Allergan further covenants that Allergan and its
Affiliates will not [ * ], except as expressly permitted in Sections 2.4, 2.5,
3.3 and 3.4, but excluding from the foregoing limitation [ * ].
(b) Allergan 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. Allergan
acknowledges and agrees that [ * ] is highly confidential and warrants the
imposition of appropriate security precautions.
4. PAYMENTS
4.1 PAYMENTS FOR COMPOUNDS. Allergan shall pay AAT a purchase price for
[ * ] Compounds delivered hereunder equal to [ * ] for each such Compound.
Allergan shall make such payment within [ * ] of its receipt of a Library from
AAT. [ * ]. Allergan shall be responsible for payment of all shipping or other
transportation charges and insurance costs and any sales, transfer, excise,
export or other tax and of any customs tax or duties assessed on the
[ * ] = 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.
8
sale or transfer of such samples under the terms of this Agreement, but
excluding taxes based upon net income of AAT.
4.2 LICENSE FEE. In consideration for the grant of license rights under
Article 3 hereof, Allergan shall pay to AAT a non-refundable license fee of
[ * ]. Allergan shall make such license payment [ * ].
4.3 TECHNOLOGY TRANSFER FEE. In consideration for the technology
transferred under Article 3 hereof, Allergan shall pay to AAT a technology
transfer fee of [ * ]. Allergan shall make the [ * ].
4.4 PAYMENTS FOR PROTOCOLS. For each Protocol licensed non-exclusively
pursuant to Section 2.7(b) [ * ], Allergan shall pay AAT [ * ]. For each
Protocol licensed non-exclusively pursuant to Section 2.7(b) [ * ], Allergan
shall pay AAT [ * ]. For each Protocol licensed non-exclusively [ * ]. Allergan
shall make all payments under this Section 4.4 within [ * ] of its receipt of a
Protocol from AAT.
4.5 BANK ACCOUNT. All payments payable by Allergan to AAT under this
Agreement shall be made by wire transfer remittance to the bank account
designated by AAT.
5. INTELLECTUAL PROPERTY MATTERS
5.1 OWNERSHIP. All intellectual property rights, including but not
limited to all copyrights, patent rights, moral rights, and trade secrets, in
and to the AAT Know-How, AAT Patents, and the Software Programs that are
Controlled by AAT as of the Effective Date or during this Agreement shall remain
exclusively with AAT, subject only to the license rights granted to Allergan
under Sections 2.4, 2.5, 3.3, 3.4 and 3.5. The sale to Allergan of the Compounds
hereunder does not involve the sale or transfer of AAT intellectual property
rights (if any) relating thereto, which AAT retains. AAT 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
AAT or its Affiliates in the course of this Agreement. Allergan 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 Allergan 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 employees or agents of AAT or its Affiliates and employees
or agents of Allergan or its Affiliates in the course of this Agreement.
5.2 LIMITATION ON PATENT APPLICATIONS. If Allergan or its Affiliate or
AAT or its Affiliate or licensee [ * ]. Except as provided in the preceding
sentence, the Parties agree that each Party and its Affiliates shall [ * ]
filing or prosecuting any patent applications that [ * ].
5.3 LIMITED CROSS-LICENSES.
(a) Allergan hereby grants to AAT a non-exclusive, world-wide,
perpetual (subject to termination by Allergan under Section 8.2), royalty-free
license, with right to sublicense, under issued patents Controlled by Allergan
or its Affiliate that [ * ] solely for AAT
[ * ] = 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.
9
and its Affiliates and sublicensees to make, have made, import, use, offer for
sale and sell such Compound as permitted in Section 2.6 of this Agreement, but
excluding from the foregoing license (i) [ * ], and (ii) any license right to
use or sell, for any purpose other than screening or creating derivatives, [ * ]
being demonstrated by an active and ongoing program of preclinical or clinical
development or marketing for which funds and personnel have been allocated.
(b) AAT hereby grants to Allergan a non-exclusive, world-wide,
perpetual (subject to termination by AAT under Section 8.2), royalty-free
license, with right to sublicense, under issued patents Controlled by AAT or its
Affiliate that [ * ] solely for Allergan and its Affiliates and sublicensees to
make, have made, import, use, offer for sale and sell such Compound as permitted
in Sections 2.4 and 2.5 of this Agreement, but excluding from the foregoing
license any license right to use or sell for any purpose other than screening
and derivatization [ * ] with written notification of its intent to file within
a reasonable period a patent application claiming [ * ] an active and ongoing
program of preclinical or clinical development or marketing for which funds and
personnel have been allocated, and [ * ].
5.4 ENFORCEMENT OF PATENTS. If Allergan becomes aware of any actions of
a third party that it considers infringing upon any AAT Patent, it shall notify
AAT and provide all evidence of such infringement that is reasonably available.
AAT 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 AAT, whether by settlement or judgment, shall be
retained by AAT.
5.5 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, Compound or use or practice of the
AAT Know-How, or AAT Patents or Software Programs as permitted herein, [ * ].
6. CONFIDENTIALITY
6.1 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:
(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;
[ * ] = 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.
10
(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: (i) for filing
patent applications or obtaining patents, provided the disclosing Party receives
the other Party's prior written consent for any disclosure under this subsection
(i), which consent shall not be unreasonably withheld; (ii) for filing and
obtaining approval of applications with regulatory authorities to sell
pharmaceutical products; or (iii) for 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 under (iii), above, 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).
6.2 PRESS RELEASES. Except to the extent required by law or as
otherwise permitted in accordance with this Section 6.2 or Section 6.3, 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 other 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 AAT and Allergan in public
disclosures with respect to this Agreement shall be: accuracy, the requirements
of confidentiality under this Article 6, and the normal business practice in the
pharmaceutical and biotechnology industries for disclosures by companies
comparable to AAT and Allergan. Except as set forth in Section 6.3 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 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.
[ * ] = 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.
11
Commencing upon the expiration or termination of this Agreement, each Party may
freely disclose, without the permission of the other Party, [ * ], provided no
Confidential Information of the other Party or terms of this Agreement are
disclosed thereby or therein without prior written consent of the other Party.
6.3 PUBLICATIONS. Notwithstanding the terms of Section 6.2, either
Party may publish Information that such Party discovered or developed in its
research, development or commercialization activities derived from use of any
Library, Compound or AAT Know-How 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 Compound or
Information that reasonably may be interpreted to disclose the structure of a
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 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 [ * ].
7. INDEMNIFICATION
7.1 INDEMNIFICATION BY ALLERGAN. Allergan shall indemnify, defend and
hold AAT and its agents, employees, officers and directors (the "AAT
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) Allergan's or its Affiliate's negligence,
willful misconduct or breach of this Agreement; or (b) the manufacture or use of
Compounds by Allergan, its Affiliates or any permitted third party sublicensee
of Allergan, or the manufacture, use or sale, by Allergan and its Affiliates,
distributors and agents, of Derivatives or compounds that are based upon or
derived from a 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 AAT Indemnitees or (ii) the manufacture, use or sale to third parties by
AAT, its Affiliates, third party licensees, distributors or agents (provided
such party is not Allergan or an Affiliate, sublicensee, distributor or agent of
Allergan) of compounds having the same structure as Compounds made by AAT, 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 AAT Indemnitees shall promptly notify Allergan
thereof, and Allergan shall appoint counsel reasonably acceptable to the AAT
Indemnitees to represent the AAT Indemnitees with respect to any claim or suit
for which indemnification is sought, provided that Allergan shall have sole
control over the defense and settlement of such claim or suit. AAT may
nevertheless retain co-counsel at its own expense. As a condition to obtaining
indemnification hereunder, the AAT 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 Allergan, unless they shall have first waived their rights to
indemnification hereunder; provided that the foregoing shall in no way limit
AAT's right to
[ * ] = 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.
12
challenge or defend against a claim (whether by Allergan or any third party)
that the claim or suit that is the subject of a claim for indemnification by AAT
hereunder results from negligence or willful misconduct of or breach of the
Agreement by any of the AAT Indemnitees.
7.2 INDEMNIFICATION BY AAT. AAT shall indemnify, defend and hold
Allergan and its agents, employees, officers and directors (the "Allergan
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) AAT's or its Affiliates', negligence,
willful misconduct or breach of this Agreement, (b) the manufacture, use or sale
to third parties by AAT, its Affiliates, third party licensees, distributors or
agents (provided such party is not Allergan or an Affiliate, distributor or
agent of Allergan) of compounds having the same structure as Compounds or
products containing such compounds or any compound based upon or derived
therefrom, or (c) personal or property damage arising directly from the
manufacturing of the Compounds by Axys, except to the extent that such claims or
suits result from (i) the manufacture, use, or sale by Allergan and its
Affiliates, sublicensees, distributors and agents of Compounds, Derivatives or
compounds that are based upon or derived from a Compound, or (ii) negligence or
willful misconduct of or breach of this Agreement by any of the Allergan
Indemnitees. Upon the assertion of any such claim or suit, the Allergan
Indemnitees shall promptly notify AAT thereof, and AAT shall appoint counsel
reasonably acceptable to the Allergan Indemnitees to represent the Allergan
Indemnitees with respect to any claim or suit for which indemnification is
sought, provided that AAT shall have sole control over the defense and
settlement of such claim or suit. Allergan may nevertheless retain co-counsel at
its own expense. As a condition to obtaining indemnification hereunder, the
Allergan 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 AAT,
unless they shall have first waived their rights to indemnification hereunder;
provided that the foregoing shall in no way limit Allergan's right to challenge
or defend against a claim (whether by AAT or any third party) that the claim or
suit that is the subject of a claim for indemnification by Allergan hereunder
results from negligence or willful misconduct of or breach of the Agreement by
any of the Allergan Indemnitees.
8. TERMINATION AND EXPIRATION
8.1 TERM. This Agreement shall commence upon the Effective Date and,
unless earlier terminated as provided herein, shall expire on the later to occur
of one year from the delivery to Allergan of all of the Libraries, or the third
anniversary of the Effective Date.
8.2 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,
[ * ] = 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.
12.
13
during such [ * ], the Party alleged to have been in default shall have
initiated dispute resolution proceedings in accordance with Section 9.11 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.
8.3 CONSEQUENCES OF TERMINATION.
(a) Upon termination of this Agreement by Allergan pursuant to
Section 8.2 for the uncured material breach of AAT, then: without prejudice to
any other remedy of Allergan, (i) the sections set forth in Section 8.4(d) shall
survive; (ii) AAT shall promptly return all Confidential Information of Allergan
in its possession; (iii) all obligations and rights of AAT to provide additional
Compounds shall terminate; (iv) [ * ]; and (v) all obligations of Allergan to
make future payments [ * ] shall terminate.
(b) Upon termination of this Agreement by AAT pursuant to Section
8.2 for the uncured material breach of Allergan, then: (i) all rights granted to
Allergan under this Agreement, except for those referred to in the sections set
forth in Section 8.4(e), shall terminate; (ii) with respect to any physical
sample of a Compound delivered by AAT but not paid for by Allergan within [ * ]
of delivery, Allergan shall return all existing physical samples of such
Compound and Allergan may not further use such Compounds; (iii) all obligations
of AAT to provide additional Compounds shall terminate; (iv) Allergan shall
promptly return to AAT or destroy all copies of Confidential Information of AAT,
including without limitation all Software Programs; and (v) all obligations of
AAT to provide additional AAT Technology shall terminate.
8.4 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, 5.1, 5.2, 5.3,
5.4 and 5.5 and Articles 1, 6, 7 and 8 of this Agreement shall survive the
expiration or termination of this Agreement for the following periods of time:
Sections 5.2, 5.4 and 5.5 and Article 6 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.
(c) In addition to those sections set forth in subsection (b),
Sections 2.4, 2.5, 3.3 and 3.4 shall survive indefinitely the expiration of this
Agreement, subject to compliance 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.
13.
14
Allergan, its Affiliates and any permitted sublicensees with all limitations on
the practice of such rights set forth in Sections 2.4, 3.5 and Article 6, and
[ * ].
(d) In addition to those sections set forth in subsection (b), upon
termination of this Agreement by Allergan pursuant to Section 8.2 for the
uncured material breach of AAT, (i) Section 2.4 and 2.5 shall indefinitely
survive termination for Compounds delivered and paid for by Allergan within
[ * ] of delivery, subject to compliance by Allergan (and any permitted
Affiliates) with the limitations set forth in Sections 2.4, 3.5 and Article 6,
(ii) [ * ], and (iii) the rights and licenses granted under Sections 3.3 and 3.4
shall indefinitely survive termination, subject to compliance by Allergan and
its Affiliates with all limitations on the practice of such rights set forth in
Section 3.5 and Article 6.
(e) In addition to those sections set forth in subsection (b), upon
termination of this Agreement by AAT pursuant to Section 8.2 for the uncured
material breach of Allergan, Sections 2.4 and 3.3 shall survive indefinitely
solely with respect to those Compounds delivered and paid for by Allergan within
[ * ] of delivery and for which Allergan (and any permitted Affiliates) has
complied and continues to fully comply with the limitations set forth in
Sections 2.4, 3.5 and Article 6.
9. MISCELLANEOUS PROVISIONS
9.1 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.
9.2 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 9.2 shall be void.
9.3 DISCLAIMER OF WARRANTIES. EXCEPT FOR THE WARRANTIES SET FORTH IN
SECTION 9.4, THE PARTIES DO NOT GRANT, AND HEREBY EXPRESSLY DISCLAIM, ALL
WARRANTIES, EXPRESS, STATUTORY OR IMPLIED, INCLUDING WITHOUT LIMITATION,
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR
NON-INFRINGEMENT OF THIRD PARTY RIGHTS. AXYS DOES NOT WARRANT, AND HEREBY
DISCLAIMS ANY WARRANTY, THAT ANY SOFTWARE PROGRAM OR ANY SOFTWARE PROGRAM
GENERATED FROM THE SOURCE CODE WILL MEET ALLERGAN'S SPECIFIC NEEDS OR THAT
ALLERGAN'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 [ * ].
[ * ] = 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.
15
9.4 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) AAT represents and warrants to Allergan 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 5.3 hereof;
(ii) the execution, delivery and performance of this Agreement
by AAT does not constitute a material breach under, and is not precluded by the
terms of, any agreement to which AAT is a party or by which AAT is bound;
(iii) [ * ]; and
(iv) [ * ]; and
(v) [ * ].
(c) Allergan represents and warrants to AAT that as of the date 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.
15.
16
(i) it has the full right, power and authority to enter into
this Agreement; and
(ii) the execution, delivery and performance of this Agreement
by Allergan does not constitute a material breach under, and is not precluded by
the terms of, any agreement to which Allergan is a party or by which Allergan is
bound.
9.5 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.
9.6 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.
9.7 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.
9.8 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.
9.9 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.
9.10 APPLICABLE LAW. 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. This Agreement is made and
shall be interpreted solely in English, and all proceedings to enforce this
Agreement shall be in English.
9.11 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
President of AAT and the President of Research & Development of Allergan or his
or her delegate 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
[ * ] = 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.
17
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 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.
9.12 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 Allergan, addressed to:
Frances R. Tunney, Jr.
Corporate Vice President-Administration,
General Counsel and Secretary
2525 Dupont Drive
Irvine, CA 92612
If to AAT, 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
9.13 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, PUNITIVE 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
[ * ] = 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.
18
damages, but excluding from the foregoing liabilities arising from breach of the
limitations in Sections 2.5, 3.4, 3.5 or Article 6.
9.14 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.
9.15 COMPLIANCE WITH LAW. Nothing in this Agreement shall be deemed to
permit a Party to export, reexport or otherwise transfer any Compound or any
Confidential Information of AAT provided under this Agreement without compliance
with all applicable laws.
9.16 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.
9.17 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.
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.
ALLERGAN, INC.
By: /s/ Lester J. Kaplan
-------------------------------------
Name: Lester J. Kaplan
-----------------------------------
Title: Corporate Vice President
----------------------------------
AXYS ADVANCED TECHNOLOGIES, INC.
By: /s/ John P. Walker
-------------------------------------
Name: John P. Walker
-----------------------------------
Title: Chairman
----------------------------------
[ * ] = 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.
19
[ * ]. [ * ]
[ * ] = 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.
20
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
EXHIBIT B
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.
ii.