Collaboration Agreement - Packard Bioscience Co. and ACLARA BioSciences Inc.
ACLARA - PACKARD
COLLABORATION AGREEMENT
THIS AGREEMENT ("Agreement") dated as of the 21st day of February, 2000,
between PACKARD BIOSCIENCE COMPANY, 800 Research Parkway, Meriden, CT 06540
(hereinafter "PACKARD") and ACLARA BIOSCIENCES, INC., 1288 Pear Avenue, Mountain
View, CA 94043 (hereinafter "ACLARA").
WHEREAS, PACKARD has certain skills, know-how and intellectual property
for products related to, reagents for homogeneous biochemical and cell-based
assays, automated fluid handling devices (including piezo electric dispensers),
plate tracking and stacking devices, detectors for measuring biological
reactions, software and the capability for the marketing, sales and support of
such products;
WHEREAS, ACLARA has certain skills, know-how and intellectual property
for products related to microfluidic analytic devices, dispensers and reagents
for use in such chips and the capability for the manufacture of such products;
WHEREAS, the parties to this Agreement desire to enter into a
collaboration for the development and distribution of systems employing
instruments, microfluidic analytic devices and reagents for use in drug
screening and life sciences research and allied purposes; and
WHEREAS, both parties recognize that each has rights to pre-existing
intellectual properties which may, directly or indirectly, contribute to the
commercialization of such systems and understand that in the process of
developing the systems contemplated by their collaboration, both parties will
reveal to each other relevant proprietary information that existed prior to the
effective date and during the term of the collaboration under appropriate
confidentiality and nondisclosure provisions;
NOW THEREFORE, in consideration of the mutual covenants and promises
contained in this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1. "Affiliates" means any corporation, firm, partnership or other entity,
whether de jure or de facto, which directly or indirectly owns, is
owned by or is under common ownership with a Party to this Agreement,
as the case may be, to the extent of at least fifty percent of the
equity (or such lesser percentage which is the maximum allowed to be
owned by a foreign corporation in a particular jurisdiction) having
the power to vote on or direct the affairs of the entity.
1.2. "Assay Reagents" means biochemical reagents and detection reagents
capable of performing Homogeneous Assays in Oasis LabCard chips.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.3. "Confidential Information" will include confidential knowledge,
know-how, practices, processes, equipment or information which (1) is
obtained from the other Party or generated by a Party during the course
of a Program and (2) is related thereto and (3) except for generated
information, is identified or should reasonably be assumed by the
recipient at the time of disclosure to be confidential and, in the case
of disclosures in non-written form, is identified in writing within
thirty days as confidential. Notwithstanding the above, Confidential
Information will not include, and nothing will in any way restrict the
rights of either ACLARA or PACKARD to use, disclose or otherwise deal
with, any information which:
1.3.1. can be demonstrated to have been in the public domain as of the
Effective Date or comes into the public domain during the term
of this Agreement through no act of the recipient; or
1.3.2. can be demonstrated to have been independently known to the
recipient prior to the receipt thereof by documents in the
possession of recipient at the time of the disclosure; or
1.3.3. can be demonstrated to have been rightfully received by the
recipient from a third party who did not require the recipient
to hold it in confidence or limit its use and who did not
acquire it, directly or indirectly, from the other Party to this
Agreement under a continuing obligation of confidentiality; or
1.3.4. will be required for disclosure to any governmental regulatory
agencies pursuant to approval for use; or
1.3.5. is independently conceived, invented or acquired by researchers
of the recipient who have not been personally exposed to the
information provided to the recipient hereunder.
1.4. "Commercialization Phase" with respect to a System or Component thereof,
shall mean the period of time beginning with the date that PACKARD makes
such System or Component generally available for commercial sale to
third parties (other than for testing purposes) and ending with the
termination of the commercial life of such System or Component as
determined by the JSC.
1.5. "Component" shall mean any of Instruments, Assay Reagents or Oasis
LabCard chips intended for use in a System.
1.6. "Development Phase" with respect to a System or Component thereof, shall
mean the period of time beginning with the date that the JSC approves a
Workplan for
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the development of such System or Component thereof and ending with the
beginning of the Commercialization Phase therefor.
1.7. "Effective Date" is February 21, 2000.
1.8. "Field" shall mean any application of an Oasis LabCard chip in
performing Homogeneous Assays [ * ].
1.9. "Homogeneous Assay" shall mean any assay technology that does not use a
separation step [ * ].
1.10. "Instruments" shall mean (i) automated fluid handling devices, plate
tracking devices and stacking devices useful in the Field and that are
sold in conjunction with one or more detectors sold by PACKARD to be
used primarily in combination with Oasis LabCard chips, and any computer
programs associated therewith or other devices connected by PACKARD
thereto, (ii) detectors sold by PACKARD to be used primarily in
combination with Oasis LabCard chips and useful in the Field and any
computer programs associated therewith, and (iii) [ * ].
1.11. "Intellectual Property" shall mean all technical know-how in the Field
owned or controlled by either Party, whether patentable or not, patent
applications and patents, copyrights, and trade secrets relating to
Instruments, Oasis LabCard chips, and Assay Reagents.
1.12. "Intellectual Property Rights" shall mean all rights derived from
Intellectual Property worldwide arising under statutory or common law,
and whether or not perfected, including, without limitation, all (1)
patents, patent applications and patent rights; (2) rights associated
with works of authorship including copyrights, copyright applications,
copyright registrations, mask works, mask work applications, mask work
registrations; (3) rights relating to the protection of trade secrets
and confidential information; (4) any right analogous to those set forth
in this definition and any other proprietary rights relating to
intangible property, including trade dress; and (5) divisions,
continuations, renewals, reissues, continuing prosecution, and
extensions of the foregoing (as and to the extent applicable) now
existing, hereafter filed, issued or acquired.
1.13. "Joint Intellectual Property" shall mean Intellectual Property jointly
developed by PACKARD and ACLARA under a Program.
1.14. "JSC" shall mean the Joint Steering Committee, which will be composed of
equal numbers of members from both PACKARD and ACLARA, not to exceed a
total of eight, which members may be changed from time to time by the
Party whom they represent, and to be chaired by the Project Leaders for
the Parties.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.15. "LOCI" shall mean the technology owned or licensed by PACKARD relating
to luminescent oxygen channeling assays and described in U.S. Patent
application Serial No. 704,569, filed May 22, 1991 and U.S. Patent
application Serial No. 718,490 filed June 20, 1991.
1.16. "Oasis LabCard chips" shall mean any microfluidic analytical device that
has [ * ] small reaction vessels [ * ].
1.17. "Net Sales" shall mean (1) with respect to sales by a Party, or an
Affiliate of a Party, to non-affiliated third party purchasers, 95% of
the actual amount of gross invoice price of Systems or Components sold
to process or measure samples in Oasis LabCard chips, less: quantity
discounts granted at the time of invoice, amounts refunded for faulty or
defective product, taxes (except income taxes), tariffs, duties and
similar governmental charges paid, (2) with respect to sales by a Party
made to any Affiliate or to any person, firm or corporation enjoying a
special course of dealing with a Party, the Net Sales will be determined
based on 95% of the first resale in a bona fide arms-length transaction
of the affected System or Component by such Affiliate, person, firm or
corporation to third parties, and (3) with respect to Systems, or
individual Components of Systems that are actually used to process or
measure samples in Oasis LabCard chips and are used by a Party, or an
Affiliate of a Party, to supply services or information to a third party
for commercial purposes, or are otherwise disposed of, excluding
demonstration or other marketing activities performed for no or de
minimis compensation, the Net Sales shall be determined as if such
System, Instrument or Assay Reagent had been sold at the average Net
Sales for such System or Component actually sold to non-affiliated third
parties during the past one hundred and twenty (120) days. Charges
associated with freight, insurance and other transportation costs, are
accounted for by a 5% pro-forma reduction in the basis of Net Sales, and
should therefore be included in determining the amount of gross invoice
price of Systems.
1.18. "Party" shall mean ACLARA or PACKARD, and when used in the plural, shall
mean both ACLARA and PACKARD.
1.19. "Program" with respect to each System, and each Component thereof
developed or to be developed under a Workplan, shall mean the
Development Phase and Commercialization Phase.
1.20. "Project Leader" shall mean someone who will dedicate at least fifty
percent (50%) of his/her time to the Programs. One Project Leader will
be designated from each Party. The Project Leaders will have primary
responsibility for the completion of each Workplan, which shall govern
the development and commercialization of the Systems. The Project
Leaders may be changed from time to time, at the sole discretion of each
Party, provided that, when feasible, reasonable advanced notice is given
to the other Party.
1.21. "Prototype" shall mean a development stage System meeting all or most of
the specifications set forth in the applicable Workplan, however, not in
a format useful for general sale and commercial distribution.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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1.22. "Residual Net Sales" shall mean, with respect to Oasis LabCard chips,
Net Sales minus the Transfer Price.
1.23. "System" shall mean a combination of Instruments, Assay Reagents and
Oasis LabCard chips that are developed in a Program or introduced by
either Party into a Program and useful in the Field.
1.24. "Third Party Instrumentation" shall mean (i) automated fluid handling
devices, plate tracking devices and stacking devices developed and sold
by a third party and capable of being used in combination with Oasis
LabCard chips for use in the Field, and (ii) detectors developed and
sold by a third party and capable of being used in combination with
Oasis LabCard chips for use in the Field
1.25. "Transfer Price" shall mean [ * ] of fully-loaded manufacturing costs
(including royalty or license payments owed to third-parties),
determined in accordance with GAAP.
1.26. "Workplan" shall mean a definitive plan to develop and commercialize
Systems and Components, and includes design specifications, timelines,
milestones, budgets, marketing strategy and estimated time to
commercialization. Each Workplan will set forth the activities to be
performed by each of the parties during the Development Phase and the
Commercialization Phase, indicating when a System will have completed
the Development Phase and will be moved to the Commercialization Phase.
Each Workplan will be agreed to and signed by both parties.
2. PROGRAMS, PURPOSES AND EXCLUSIVITY
2.1 Strategic Intent. The objective of the relationship between PACKARD and
ACLARA is to coordinate the development and marketing of one or more
Systems, as the Parties may agree, from time to time, as set forth in a
Workplan. Each System will be developed using a combination of PACKARD's
Instruments and Assay Reagents and ACLARA's Oasis LabCard chips. PACKARD
will use commercially reasonable efforts to adapt its existing
Instruments (including dispensers, detectors and software) and Assay
Reagents, including LOCI and other available Assay Reagents, for use
with Oasis LabCard chips. ACLARA will use commercially reasonable
efforts to adapt and develop Oasis LabCard chips for use in combination
with PACKARD's Instruments and PACKARD's Assay Reagents, including LOCI
and other available Assay Reagents. As part of the collaborative effort,
PACKARD and ACLARA will jointly evaluate Third Party Instrumentation for
use in the Field in combination with Oasis LabCard chips and PACKARD
Assay Reagents, including LOCI and other available Assay Reagents. As
part of such evaluation, the Parties will jointly make recommendations
to such third parties as to how the Third Party Instrumentation may be
modified to accommodate the Oasis LabCard chips and PACKARD Assay
Reagents. [ * ].
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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During the Development Phase of each Program, the parties will develop
one or more Prototypes and adapt or modify Assay Reagents, with the
objective of designing at least one commercializable version of a
System. During the Commercialization Phase, the parties will coordinate
the marketing, sale and support of each System in the Field.
2.2 Initial Programs. Within [ * ] of the Effective Date, each of the
Parties will designate, in writing, its representatives to the Joint
Steering Committee ("JSC") and, the parties shall jointly agree upon a
schedule of JSC meetings to be held over the next thirty days after the
date of designation of the JSC representatives. Within six weeks of the
Effective Date, the Parties will develop and agree upon a Workplan that
will define:
- customer validation, mutually targeted for [ * ]
- adaptation of LOCI and a maximum of other chemistries in the Field
- development timelines and milestones
- the makeup of the Instruments and Oasis LabCard
- marketing strategy and resource commitments.
Included in the Workplan will be a best estimate production schedule for
the delivery of Oasis LabCard chips and for the evaluation of the
Instruments, Assay Reagents and Oasis LabCard chips, which production
schedule shall be subject to modification by the JSC. Each Party shall
commit the necessary resources and diligently strive to achieve its
duties under the Workplan in order to facilitate the first commercial
sale of a System to a third party, by not later than [ * ]. Until [ * ],
neither Party shall divert resources to work on [ * ] for use in
combination with Oasis LabCard chips and PACKARD supplied Assay
Reagents, if such effort could reasonably be expected to delay the
planned commercial launch of a PACKARD supplied System prior to [ * ].
Each Party will bear the cost of its portion of the Development Phase.
2.3 Joint Steering Committee. The Development Phase and Commercialization
Phase for each Program will be governed by the JSC. The JSC shall
consist of at least one senior executive, one business director, and one
technical director from each Party. The JSC will meet at least once per
calendar quarter, alternating between locations selected by ACLARA and
PACKARD, respectively, to oversee activities under each Workplan and
other activities under this Agreement. In particular, the JSC will
monitor and support collaboration and/or supply relationships existing
between ACLARA and PACKARD, review, recommend modifications to, and
oversee the implementation of active Workplans, review the commercial
feasibility of Systems being developed under a Workplan, discuss new
commercial opportunities and develop the objectives and terms for
additional Programs between the Parties that may be pursued.
2.3.1 The JSC shall have the authority to make reasonable alterations or
amendments to Workplans, which will be considered final after reduction
to writing.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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2.3.2 The JSC shall have the authority to recommend alterations or
amendments to this Agreement, which shall not become final until reduced
to writing and signed by the authorized representatives of each of the
Parties.
2.3.3 Except as otherwise expressly provided herein, decisions of the
JSC will be made by consensus.
2.3.4 Should disputes arise, the Parties agree to negotiate in good
faith to resolve the disputes. Disputes that cannot be resolved by the
JSC within a reasonable period shall be submitted to the presidents of
the Parties. If agreement is still not reached, prior to seeking any
other remedy, the Parties agree to submit disputes to mediation in
accordance with Section 11.6 hereof.
2.3.5 At least once each year following the Effective Date, the JSC will
meet specifically to review the terms of this Agreement, and negotiate,
in good faith, appropriate amendments that would be equitable for both
Parties in light of current circumstances.
2.4 General Exclusivity.
2.4.1 Except as otherwise provided in this Agreement, during the term of
any Development Phase, Components specifically designed for a System
shall not be sold to or further developed for third parties for use in
the Field other than in furtherance of this Agreement
2.4.2 Notwithstanding the foregoing, neither Party shall be prohibited
from developing any Component for its own internal research purposes.
2.5 Field Exclusivity.
2.5.1 During the term of this Agreement, PACKARD shall have the right to
sell, and have sold, all versions of Oasis LabCard chips [ * ] for use
with Systems in the Field or for use with Third Party Instrumentation in
the Field. So long as PACKARD continues to satisfy the Due Diligence
Requirements described below, the foregoing right to sell, and have
sold, all versions of Oasis LabCard chips [ * ] for use with Systems in
the Field or for use with Third Party Instrumentation in the Field shall
be exclusive to PACKARD. For purposes of this Section 2.5.1, PACKARD
shall be deemed to have satisfied the "Diligence Requirement" during any
period if (1) PACKARD is diligent in promoting, distributing and selling
Oasis LabCard chips, and (2) PACKARD is demonstrably committed to
selling Oasis LabCard chips for use with Third Party Instrumentation as
well as for use with Instruments manufactured by PACKARD. During the [ *
] period following the first commercial sale of a System to a third
party, diligence shall be determined based on actual sales, reasonable
penetration into the Homogenous Assay market for the Field, and the
number of and volume
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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employed by pharmaceutical and biotechnology companies for the Field.
Thereafter, for each subsequent twelve (12) month period, diligence will
be determined based on PACKARD's demonstrated ability to generate Net
Sales for Oasis LabCard chips equal to [ * ] of the Net Sales of Oasis
LabCard chips generated during the previous twelve (12) month period;
provided, however, the JSC will meet annually to discuss, in good faith,
whether the [ * ] target is reasonable in light of market conditions and
other circumstances and, prior to converting PACKARD's exclusive right
into a non-exclusive right in accordance with the foregoing, ACLARA
shall give PACKARD sixty (60) days prior written notice of its
intentions, and will give PACKARD reasonable opportunity to present
arguments as to why PACKARD's right should remain exclusive.
2.5.2 ACLARA shall be the sole supplier to PACKARD of Oasis LabCard
chips, and [ * ] shall have the right to copromote the Oasis LabCard
chips.
2.5.3 If during the exclusive period as provided in Paragraph 2.5.1,
opportunities arise for the application of [ * ] in Oasis LabCard chips
for use in the Field, which application would use substantially
different assay formats from the then existing assays developed by the
Parties, severally or individually, for use in Oasis LabCard chips, the
Parties shall negotiate in good faith how such new formats may be
commercially developed and how income from such new formats shall be
divided.
2.5.4 If during the exclusive period as provided in Paragraph 2.5.1,
ACLARA elects to develop an Oasis LabCard chip [ * ], ACLARA shall offer
to enter into an agreement with PACKARD for the development and
distribution of such Oasis LabCard chips and compatible Instruments
[ * ].
3. DEVELOPMENT PHASE
3.1 Term of Development Phase. Unless terminated earlier in accordance with
Section 3.6 of this Agreement, the Development Phase for each Program shall
commence upon the execution and delivery of a Workplan by the JSC describing
the System and Components thereof to be developed and commercialized, and
shall end upon the date that PACKARD first makes such System generally
available for commercial sale to third parties (other than for testing
purposes).
3.2 Access. During the Development Phase of any Program, without the prior
written consent of the other Party, neither Party shall permit any third
party to have access to the subject System or any Components, except in
furtherance of this Agreement.
3.3 Party Responsibilities. Each of the parties will be given primary
responsibility as to Components of the Systems, as specifically set forth in
a Workplan. Generally,
3.3.1 PACKARD will be responsible for the development of Instruments,
assembly of Prototypes, and providing Prototypes and Assay Reagents to
ACLARA.
3.3.2 ACLARA will be responsible for development of Oasis LabCard chips
and providing Oasis LabCard chips to PACKARD. ACLARA will also be
responsible for the initial development of a Prototype [ * ] module. The
JSC will decide whether this [ * ] will be used in the System.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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3.3.3 Detailed written information regarding modifications by either
Party to Systems being developed or to their individual Components will
be transmitted to the other Party no later than the next JSC meeting.
3.4 Manufacturing Rights.
3.4.1 During the Development Phase for each Program, ACLARA shall use
commercially reasonable efforts to manufacture (or have manufactured)
and supply all Oasis LabCard chips and [ * ] used in any Prototype in
accordance with the applicable Workplan. Any changes to the Oasis
LabCard chips used in the System will be communicated promptly to
PACKARD, but not later than the next JSC meeting. ACLARA shall use
commercially reasonable efforts to support PACKARD's development
efforts.
3.4.2 During the Development Phase for each Program, PACKARD shall use
commercially reasonable efforts to manufacture (or have manufactured)
and supply all Prototypes [ * ] and Assay Reagents used in any
Prototype. Information relating to any modifications to Prototypes by
either Party will be communicated promptly to the other Party, but not
later than the next JSC meeting.
3.4.3 The Parties recognize the importance of achieving the milestones
set forth in each Workplan and delivering Prototypes, and Assay
Reagents, as required under a Workplan. If commercial launch of a System
occurs on or before [ * ], ACLARA shall credit PACKARD with [ * ], which
will be paid to PACKARD by reducing ACLARA's share of Residual Net Sales
for Oasis LabCard chips under Section 4.4.1.3 by [ * ]. If, solely as a
result of an Unexcused Failure by PACKARD, the commercial launch of the
System does not occur on or before [ * ], PACKARD shall credit ACLARA
with [ * ], which will be paid out by increasing ACLARA's share of
Residual Net Sales for Oasis LabCard chips under Section 4.3.1.1 by [ *
]. An "Unexcused Failure by PACKARD" means a failure by PACKARD to make
a reasonable commercial effort in relation to achieving the goals set
forth in the Work Place.
3.4.4 During the Development Phase for each Program, the Parties will
each have access to Prototypes and Assay Reagents. ACLARA will have the
right to have the most recent Prototypes developed by PACKARD at its
location. ACLARA will reimburse PACKARD for direct manufacturing and
transportation costs associated with producing such Prototypes,
including the cost of purchasing Components and assembly, as determined
in accordance with generally accepted accounting principles ("GAAP").
PACKARD will have the right to have reasonable quantities of Prototypes
developed by ACLARA (i.e. Oasis LabCard chips and [ * ]) at its location
to test, modify and use Prototypes. PACKARD will reimburse ACLARA for
direct manufacturing and transportation costs associated with producing
such Prototype Oasis LabCard chips and [ * ], as determined in
accordance with GAAP. Each Party will reimburse the other Party for the
direct manufacturing and transportation costs, including the cost of
purchasing Components, and royalty or license payments, of Assay
Reagents received from the other Party, as determined in accordance with
GAAP.
3.4.5 Both Parties will allow the other access to any Prototype or Oasis
LabCard chip, especially for the purpose of examining modifications
thereto. Both Parties will make reasonable efforts to explain the
purpose of any modification and the benefit so achieved. Significant
modifications should be documented 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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communicated promptly in writing to the other Party, but not later than
the next meeting of the JSC.
3.5 Intellectual Property.
3.5.1 Each of the parties will operate during the Development Phase for
each Program under a royalty-free, non-assignable license from the other
Party under the other Party's Intellectual Property Rights to the extent
reasonably necessary to satisfy its obligations under this Agreement.
The following are the Intellectual Property Rights of the Parties during
the Development Phase.
3.5.1.1 For the duration of the Development Phase for each Program,
each Party is granted a license under the Intellectual Property
Rights of the other Party to use Systems and Components to the extent
reasonably necessary to satisfy its obligations under this Agreement.
3.5.1.2 All Joint Intellectual Property specifically relating to
Oasis LabCard chips or [ * ] shall be the property of ACLARA and in
the event that an employee or consultant of PACKARD is an inventor,
PACKARD will have such inventor assign his/her rights to ACLARA and
cooperate with ACLARA in ACLARA perfecting its rights to such
invention. PACKARD shall have access to such Intellectual Property
for purposes of developing and commercializing Systems hereunder.
3.5.1.3 All Joint Intellectual Property specifically relating to
Instruments [ * ], up to the interface with the Oasis LabCard, and
Assay Reagents owned or controlled by PACKARD shall be the property
of PACKARD and in the event that an employee or consultant of ACLARA
is an inventor, ACLARA will have such inventor assign his/her rights
to PACKARD and cooperate with PACKARD in PACKARD perfecting its
rights to such invention. ACLARA shall have access to such
Intellectual Property for purposes of developing Systems hereunder.
3.5.1.4 All Joint Intellectual Property for improvements at the
interface between the Instrument and the Oasis LabCard chip will be
jointly and equally owned, with each Party retaining the right to
exploit such improvements without the obligation to account to the
other.
3.5.2 The parties will use reasonable efforts to report inventions
described above to each other using invention disclosure forms. The
Party owning the Intellectual Property shall make reasonable efforts to
protect such Intellectual Property at its own expense, reasonably
enforce the Intellectual Property Rights obtained and during the
Development Phase report to the other Party the progress of such
efforts. Jointly owned Intellectual Property shall be subject to the
mutual agreement of the parties and at their mutual expense.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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3.5.3 Nothing contained herein shall be inferred to grant a license to
one Party under the Intellectual Property Rights of the other Party,
except as explicitly set forth herein.
3.6 Termination of the Development Phase.
3.6.1 Breach. In the event of a material breach by either Party during
the Development Phase of any Program, the non-breaching Party shall give
the breaching Party written notice thereof (a "Notice of Breach"), which
notice must state the nature of the breach in reasonable detail and, in
the opinion of the non-breaching Party, the action that would cure the
breach. So long as a breach described in a Notice of Breach continues,
this Agreement may be terminated with respect to such Program by written
notice to the breaching Party delivered not earlier than [ * ] days
after receipt by the breaching Party of the Notice of Breach. In
addition, either Party shall have the right to terminate this Agreement
if the other Party has unreasonably failed to meet the design
specifications within the timelines as outlined in any Workplan, whether
or not such failure is a material breach and the JSC fails to reach a
mutually satisfactory solution after good faith negotiation within [ * ]
after written notice to the breaching party of such failure, in which
case, the terminating Party shall have the rights described in 3.6.3 or
3.6.4, as appropriate, as its sole recourse.
3.6.2 Termination for Convenience. During the Development Phase of any
Program, upon [ * ] prior written notice, either Party may elect, in its
sole discretion, to terminate its participation in such Program. A Party
may not terminate for convenience during an active Notice of Breach. In
the case of Termination for Convenience, the non-terminating Party shall
have the rights described in 3.6.3 or 3.6.4, as appropriate, as its sole
recourse; provided, however, if the JSC determines, in good faith, that
either Party is unable, after a good faith commercially reasonable
effort, to fulfill its obligations under this Agreement, the JSC may
elect to terminate this Agreement, without regard to Sections 3.6.3 or
3.6.4.
3.6.3 ACLARA Breach or Termination for Convenience. If termination of
the Development Phase of any Program results from a breach or
termination for convenience by ACLARA, then:
3.6.3.1 PACKARD may continue to use Oasis LabCard chips in its
possession;
3.6.3.2 With respect to Oasis LabCard chips [ * ] developed by
ACLARA, ACLARA shall, at its sole discretion, either i) supply said
Oasis LabCard chips [ * ] to PACKARD at a cost equal to the Transfer
Price for such Oasis LabCard chips [ * ], plus an amount equal to [ *
] of Residual Net Sales for
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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such Oasis LabCard chips [ * ] to end users (with an amount equal to
[ * ] of Residual Net Sales retained by PACKARD), payable in
accordance with Section 4.5.2 and 4.5.3, and otherwise on terms
substantially similar to the Supply Agreement attached as Exhibit A
hereto; or, ii) grant to PACKARD and its Affiliates a royalty-bearing
license (at a rate of [ * ] on Net Sales of Oasis LabCard chips,
payable quarterly) under ACLARA's Intellectual Property and
Intellectual Property Rights to make, have made, use, have used, sell
and have sold Oasis LabCard chips developed in the Development Phase
solely for incorporation into a System developed or proposed to be
developed under the affected Program and commercialization of the
System.
3.6.3.3 PACKARD shall have the exclusive right to make or have made
(subject to ACLARA's rights under 3.6.3.2), use, have used, sell and
have sold the affected System and Components designed specifically
for the System for use with Oasis LabCard chips in the Field.
3.6.4 PACKARD Breach or Termination for Convenience. If termination of
the Development Phase of any Program results from a material breach or
termination for convenience by PACKARD, then:
3.6.4.1 ACLARA may continue to use Prototypes in its possession;
3.6.4.2 With respect to Components of the System developed by PACKARD
to be used in a System in the Field, PACKARD shall at its sole
discretion, either i) supply said Components of the System at a cost
equal to the Transfer Price of said Components (payable net 30 days),
plus an amount equal to [ * ] of Residual Net Sales, as the
definition of Residual Net Sales would apply to Components (payable
quarterly) and otherwise on terms substantially similar to the Supply
Agreement attached as Exhibit A hereto; or ii), grant to ACLARA and
its Affiliates a royalty-bearing license, under PACKARD's
Intellectual Property and Intellectual Property Rights to make, have
made, use, have used, sell and have sold such Components developed in
the Development Phase solely for incorporation into a System
developed or proposed to be developed under the affected Program and
commercialization of the System. The royalty rate shall be [ * ] on
Net Sales of Components, plus direct royalties to third parties, if
any. The combination of all royalties in the preceding sentence shall
not exceed a total of [ * ] on Net Sales of Components.
3.6.4.3 ACLARA shall have the exclusive right to make or have made
(subject to PACKARD's rights under 3.6.4.2), use, have used, sell and
have sold the affected System and Components designed specifically
for the System for use with Oasis LabCard chips in the Field.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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4. COMMERCIALIZATION PHASE
4.1 Term of Commercialization Phase. The Commercialization Phase for each
Program shall commence on the date that PACKARD first makes the applicable
System, or Components therein, contemplated by the Program generally
available for commercial sale to third parties (other than for test
purposes), and shall continue for the commercial life of any Component
included in the System as determined by the JSC.
4.2 Manufacturing and Sales.
4.2.1 With respect to the supply, sale and distribution of Oasis LabCard
chips for use in the Field, PACKARD and ACLARA shall have the rights
described in Section 2.5
4.2.2 PACKARD shall have the exclusive right to make, have made, use,
have used, sell and have sold Instruments [ * ] developed during the
Development Phase or introduced into a Program and Assay Reagents,
including any mutually agreeable improvements or modifications thereto,
and support the Systems and Components.
4.2.3. PACKARD agrees to buy and ACLARA agrees to supply all of
PACKARD's requirements for Oasis LabCard chips for use with Systems in
the Field or for use with Third Party Instrumentation in the Field in
accordance with the terms of the Supply Agreement attached hereto as
Exhibit A and incorporated herein by reference.
4.2.4 If ACLARA is unable to reasonably fulfill PACKARD's requirements
forOasis LabCard chips, or if PACKARD is unable to reasonably fulfill
its orders for Systems or the Components thereof, then the parties shall
negotiate a reasonable royalty-bearing license under Intellectual
Property Rights of the Party failing to fulfill its obligation to allow
the other Party to fulfill such obligations, such license not to be
unreasonably withheld.
4.3 Revenue sharing.
Revenue from the transfer of Systems and Components, shall be shared as
follows:
4.3.1 ACLARA will transfer Oasis LabCard chips to PACKARD for marketing
and distribution to end-users at a price equal to the Transfer Price for
Oasis LabCard chips, plus [ * ] of Residual Net Sales from Oasis LabCard
chip sales to end-users.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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4.3.2 In the event that, after the Effective Date, the Parties agree in
writing to jointly develop Instruments dedicated for use with Oasis
LabCard chips, for such Instruments, ACLARA shall also receive a [ * ]
royalty on Net Sales of such Instruments, and the percentage of Residual
Net Sales from Oasis LabCard chip sales to end-users as set forth in
Section 4.4.1.1 will be reduced to [ * ]. If such Instrument, or
component thereof, is manufactured by ACLARA, ACLARA will also receive [
* ] of direct manufacturing costs for such Instruments or component, as
determined in accordance with generally accepted accounting principles.
In addition, if ACLARA's Intellectual Property covers such Instrument or
components, the royalty percentage for ACLARA shall increase from [ * ]
to [ * ] on Net Sales of such Instrument or components thereof.
4.4 Payments
4.4.1 Currency. All payments shall be made in United States dollars by
wire transfer to a bank account designated by ACLARA or PACKARD in full,
without deductions of taxes, charges, duties or any other offset. For
converting payments due on sales made in currencies other than United
States dollars into United States dollars, PACKARD or ACLARA will
convert such payments at the closing commercial sell rate of exchange
for United States dollars and each currency involved as quoted by
Citibank, N.A., or any successor thereto, in New York on the last
business day of the relevant period.
4.4.2 Transfer Price Payments. Following ACLARA's shipment of Oasis
LabCard chips to PACKARD, ACLARA shall submit to PACKARD an invoice
reflecting the Transfer Price for such Oasis LabCard chips. Within
thirty (30) days of receipt of a correct invoice, PACKARD will submit
payment for the Transfer Price of Oasis LabCard chips .
4.4.3 Estimated Residual Net Sales Payments.
4.4.3.1 For the first eighteen (18) months from the first commercial
sale of Oasis LabCard chips by PACKARD to third parties (or such
earlier date as PACKARD may elect at its sole discretion), estimated
payment for ACLARA's portion of Residual Net Sales shall be made
within thirty (30) days from the end of each month based upon an
estimate of Oasis LabCard chips shipped in the preceding month, as
calculated in Section 4.3.1. and 4.3.2, as applicable.
4.4.3.2 Thereafter, estimated payments for ACLARA's portion of
Residual Net Sales shall be made within thirty (30) days of the end
of each month, based on the average monthly sales booked during the
preceding six (6) months.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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4.4.4 Actual Residual Net Sales Adjustment Within forty-five (45) days
following the end of each fiscal quarter, PACKARD will provide ACLARA
with a report of actual Net Sales of Oasis LabCard chips during such
quarter. This report shall also document any adjustment of revenue share
based on the difference between the estimated Net Sales and actual Net
Sales. Any adjusted revenue share due to ACLARA will be due and payable
concurrent with the report of actual Net Sales. Any adjusted revenue
share due PACKARD will be due and payable within thirty (30) days of the
receipt of said report.
4.4.5 Instrument Royalties Within forty-five (45) days following the end
of each fiscal quarter, PACKARD will provide ACLARA with a report of
actual Net Sales of Instruments for which a royalty payment is due. The
revenue share due to ACLARA will be calculated as set forth in Section
4.4.1 above and will be due and payable concurrent with the report of
actual Net Sales of Instruments.
4.5 Intellectual Property.
4.5.1 For the duration of the Commercialization Phase for each Program,
each Party is granted a license under the Intellectual Property Rights
of the other Party to use Systems and the individual Components
incorporated into such Systems to the extent reasonably necessary to
exercise its rights and satisfy its obligations under this Agreement.
4.5.2 For the duration of the Commercialization Phase for each Program,
PACKARD is granted a license under the Intellectual Property Rights of
ACLARA to the extent reasonably necessary to commercialize the Systems
as contemplated above and to manufacture capillary pin dispensers.
ACLARA shall provide PACKARD with such assistance as may be necessary
and available, including without limitation, supplying ACLARA's
technical know-how, solely to permit PACKARD to develop the capability
to manufacture and supply [ * ] and effectively commercialize the
Systems as contemplated by this Agreement.
5. PATENT LITIGATION.
5.1 In the event of the institution of any suit by a third party against
ACLARA or PACKARD alleging that the manufacture, use, sale, distribution or
marketing of Systems or any component thereof infringes a third party
patent, the party sued will promptly notify the other Party in writing.
PACKARD shall defend, indemnify and hold harmless ACLARA from and against
any and all liability, loss, damages and expenses (including reasonable
attorneys' fees) and assume the primary responsibility and expense of
defending and paying any judgment or settlement with respect to such claim,
except to the extent such claim relates to Oasis LabCard chips [ * ]. ACLARA
shall defend, indemnify and hold harmless PACKARD from and against any and
all liability, loss, damages and expenses (including attorneys' fees) and
assume the primary responsibility and expense of defending and paying any
judgment 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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<PAGE> 16
settlement with respect such claim to the extent that such claim relates to
Oasis LabCard chips [ * ]. The other Party will have the right but not the
obligation to defend or participate in the defense of such suit at its own
expense. ACLARA and PACKARD will assist one another and cooperate in any
such litigation at the other's reasonable request, without expense to the
requesting Party. The Party conducting such action will have full control
over its conduct, including settlement thereof provided such settlement will
not be made without the prior written consent of the other Party if it would
adversely affect the rights of the other Party, such consent not to be
unreasonably withheld or delayed. The provisions of this Section will
survive and remain in full force and effect after any termination,
expiration or cancellation of this Agreement and each Party's obligations
hereunder will apply whether or not such claims are rightfully brought.
5.2 In the event that ACLARA or PACKARD becomes aware of actual or
threatened infringement of a patent coming within Intellectual Property
Rights of one of the Parties covering a Component of a System being sold,
that Party will promptly notify the other Party in writing. Either owner of
a patent coming within such Intellectual Property Rights will have the first
right but not the obligation to bring, at its own expense, an infringement
action against any such third party. It is understood that a more effective
action will result if both Parties agree to financially support such action
and the Party bringing the action may solicit financial support from the
other Party, such as using funds being received for sales of Systems or
Components thereof for such support. If an owner of the patent does not
abate such infringement within one-hundred and eighty (180) days of becoming
aware of such infringement and such infringement is having a significant
effect on the revenues being derived from Systems or any component thereof,
then the other Party may bring such action in the name of the owner of the
patent, in which case the owner of the paten will cooperate fully in
assigning such rights under the patent as are necessary to enable the other
Party to commence such an action. The Party conducting such action will have
full control over its conduct, including settlement thereof provided such
settlement will not be made without the prior written consent of the other
Party if it would adversely affect the rights of the other Party, such
consent not to be unreasonably withheld or delayed. In any event, ACLARA and
PACKARD will assist one another and cooperate in any such litigation at the
other's reasonable request without expense to the requesting Party.
5.3 ACLARA and PACKARD shall have the right to recover their respective
actual out-of-pocket expenses, or equitable proportions thereof, associated
with any litigation or settlement thereof from any recovery made by any
Party. Any excess amount will be shared between PACKARD and ACLARA in an
amount related to their anticipated income from the sale of Systems and/or
Components that would have been made, but for the infringement.
5.4 The Parties shall keep one another reasonably informed of the status of
their respective activities regarding any such litigation or settlement
thereof.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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6. TRADEMARKS AND NON-PROPRIETARY NAMES.
6.1 PACKARD, at its expense, will be responsible for the selection,
registration and maintenance of all trademarks, which it employs in
connection with Systems, except for Oasis LabCard chips, and will own and
control such trademarks.
6.2 PACKARD, at its expense, will be responsible for the selection of
non-proprietary names for Systems and Components thereof, except for Oasis
LabCard chips, sold by PACKARD.
6.3 PACKARD shall provide recognition of the use of ACLARA's Oasis LabCard
chips for the System by providing such indication on the outside of
Instruments and in the packaging of Instruments, such indication to be
reasonably acceptable to PACKARD.
6.4 ACLARA, at its expense, will be responsible for the selection,
registration and maintenance of all trademarks that it employs in connection
with Oasis LabCard chips, which will be prominently displayed on Oasis
LabCard chips sold by PACKARD and will own and control such trademarks.
Nothing in this agreement will be construed as a grant of rights, by license
or otherwise, to PACKARD to use such trademarks for any purpose other than
co-promotion as provided in this Agreement.
7. DUTIES OF CONFIDENTIALITY.
7.1 Because ACLARA and PACKARD will be cooperating with each other in this
collaboration, and each may reveal Confidential Information to the other in
the course of a Program, the Parties agree to use the same degree of care as
each uses for information of like importance, but not less than a reasonable
degree of care (1) to hold in confidence any Confidential Information
disclosed by the other Party hereunder, and (2) not to disclose same to any
third party without the express written consent of the other, or, except for
purposes of advancing the developing, manufacturing or marketing of Systems
or individual Components thereof, or to carry out any litigation concerning
the same, provided that each such third party is informed of the
confidentiality of such information and that each said third party agrees to
be bound to at least the same degree of confidentiality as the Parties are
bound under this Agreement. This confidentiality requirement will remain in
force for a period of three years following termination of this Agreement.
7.2 Each of the Parties agrees to assume individual responsibility for the
actions and omissions of its respective employees, agents and assigns in
conjunction with this research, and to inform same of the responsibilities
for confidentiality and disclosure under this Agreement, and to obtain their
agreement to be bound in the same manner that the Party is bound.
[*] 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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7.3 Nothing herein will be construed as preventing either Party from
disclosing any information to an Affiliate of PACKARD or ACLARA or to a
sub-licensee, distributor or joint venture or other associated company of
either Party for the purpose of developing or commercializing Systems,
provided such Affiliate, sub-licensee, distributor or joint venture or other
associated company has undertaken a similar obligation of confidentiality in
writing with respect to the Confidential Information.
7.4 All Confidential Information disclosed by one Party to the other will
remain the Intellectual Property Rights of the disclosing party. In the
event that a court or other legal or administrative tribunal, directly or
through an appointed master, trustee or receiver, assumes partial or
complete control over the assets of a Party to this Agreement based on the
insolvency or bankruptcy of such Party, the bankrupt or insolvent party will
promptly notify the court or other tribunal (1) that Confidential
Information received from the other Party under this Agreement remains the
property of the other Party and (2) of the confidentiality obligations under
this Agreement. In addition, the bankrupt or insolvent party will, to the
extent permitted by law, take all steps necessary or desirable to maintain
the confidentiality of the other Party's Confidential Information and to
ensure that the court, other tribunal or appointed master maintains such
information in confidence in accordance with the terms of this Agreement.
7.5 Neither PACKARD nor ACLARA will submit for written or oral publication
any manuscript, abstract or the like which includes data or other
information generated and provided by the other Party or otherwise developed
by either Party in the performance of activities in furtherance of this
Agreement without first obtaining the prior written consent of the other
Party, which will not be unreasonably withheld, except that the foregoing
will not apply to the customary literature which is prepared for marketing
and sales purposes.
7.6 Within seven (7) days following the Effective Date, the Parties will
agree on the form and language of a joint press release related to this
agreement.
7.7 For the avoidance of doubt, nothing in this Agreement will be construed
as preventing or in any way inhibiting either Party from complying with
statutory and regulatory requirements governing the development,
manufacture, use and sale or other distribution of products in any manner
which it reasonably deems appropriate, including, for example, by disclosing
to regulatory authorities Confidential Information or other information
received from a Party or third parties. The Parties will take reasonable
measures to assure that no unauthorized use or disclosure is made by others
to whom access to such information is granted.
8. REPRESENTATIONS, WARRANTIES AND COVENANTS
8.1 Each Party represents, warrants and covenants to the other Party 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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8.1.1 it has the corporate power and authority and legal right to enter
into this Agreement and to perform its obligations hereunder;
8.1.2 the execution and delivery of this Agreement and the performance
of the transactions contemplated thereby have been duly authorized by
all necessary corporate action of such Party;
8.1.3 the execution and delivery of this Agreement and the performance
by such Party of any of its obligations under this Agreement do not and
will not (1) conflict with, or constitute a breach or violation of, any
other contractual obligation to which it is a Party, any judgment of any
court or governmental body applicable to such Party or its properties
or, to such Party's knowledge, any statute, decree, order, rule or
regulation of any court or governmental agency or body applicable to
such Party or its properties, and (2) with respect to the execution and
delivery of the Agreement, require any consent or approval of any
governmental authority or other person;
8.1.4 such Party will to the best of its knowledge without undertaking a
special investigation, disclose to the other Party any material adverse
proceedings, claims or actions that arise, relating to their technology
which would materially interfere with that Party's performance of its
obligations under this Agreement; and
8.1.5 such Party's employees, consultants, advisors, contractors, and
other person or persons associated with the performance of this
agreement have executed or will execute agreements whereby all right,
title and interest in any technology and inventions will be assigned to
their respective employers.
9. INDEMNIFICATION
9.1 PACKARD Indemnification of ACLARA. PACKARD will defend, indemnify and
hold harmless ACLARA, Affiliates of ACLARA, and their respective directors,
officers, shareholders in their capacity as shareholders, agents and
employees, from and against any and all liability, loss, damages and
expenses (including attorneys' fees) as the result of claims, demands, costs
or judgments which may be made or instituted against any of them, severally
or collectively, by a third party arising out of (1) the untruth,
inaccuracy, breach or nonfulfillment of any representation or warranty or
any covenant or agreement of PACKARD contained in or made pursuant to this
Agreement or (2) the manufacture, distribution, sale or other disposition by
or through PACKARD or its Affiliates of Systems or component thereof, except
Components manufactured by or through ACLARA or its Affiliates. PACKARD's
obligation to defend, indemnify and hold harmless will include claims,
demands, costs or judgments, whether for money damages or equitable relief
by reason of alleged personal injury to any person or alleged property
damage; provided, however, the indemnity will not extend to any claims
against an indemnified Party which results (i) from the negligence or
willful misconduct of such indemnified Party, or (ii)
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a claim of patent infringement. PACKARD will have the exclusive right to
control the defense of any action which is to be indemnified in whole by
PACKARD hereunder, including the right to select counsel acceptable to
ACLARA to defend ACLARA and to settle any claim; provided that, without the
written consent of ACLARA (which will not be unreasonably withheld or
delayed), PACKARD will not agree to settle any claim against ACLARA to the
extent such claim has a material adverse effect on ACLARA. The provisions of
this Section will survive and remain in full force and effect after any
termination, expiration or cancellation of this Agreement and PACKARD' s
obligations hereunder will apply whether or not such claims are rightfully
brought.
9.2 ACLARA Indemnification of PACKARD. ACLARA will defend, indemnify and
hold harmless PACKARD, Affiliates of PACKARD and their respective directors,
officers, shareholders in their capacity as shareholders, agents and
employees, from and against any and all liability, loss, damages and
expenses (including attorneys' fees) as the result of claims, demands, costs
or judgments which may be made or instituted against any of them, severally
or collectively, by a third party arising out of (l) the untruth,
inaccuracy, breach, or nonfulfillment of any representation or warranty or
any covenant or agreement of ACLARA contained in or made pursuant to this
Agreement or (2) the manufacture by or through ACLARA or its Affiliates of
any Oasis LabCard chips or any part thereof or other components of a System.
ACLARA's obligation to defend, indemnify and hold harmless will include
claims, demands, costs or judgments, whether for money damages or equitable
relief by reason of alleged personal injury to any person or alleged
property damage; provided, however, the indemnity will not extend to any
claims against an indemnified Party which results (i) from the negligence or
willful misconduct of such indemnified party, or (ii) a claim of patent
infringement, or (iii) where such claims result from a modification of
Systems or Components thereof by PACKARD which was not approved by ACLARA.
ACLARA will have the exclusive right to control the defense of any action
which is to be indemnified in whole by ACLARA hereunder, including the right
to select counsel acceptable to PACKARD to defend PACKARD and to settle any
claim; provided that, with the written consent of PACKARD (which will not be
unreasonably withheld or delayed), ACLARA will not agree to settle any claim
against PACKARD to the extent such claim has a material adverse effect on
PACKARD. The provisions of this Section will survive and remain in full
force and effect after any termination, expiration or cancellation of this
Agreement and ACLARA's obligations hereunder will apply whether or not such
claims are rightfully brought.
9.3 Notice; Choice of Attorney. A Party that intends to claim
indemnification under this Section 9 (the "Indemnitee") will promptly notify
the other Party (the "Indemnitor") of any loss, claim, damage, liability or
action in respect of which the Indemnitee intends to claim such
indemnification, and the Indemnitor, after it determines that
indemnification is required of it, will assume the defense thereof with
counsel mutually satisfactory to the Parties; provided, however, that an
Indemnitee
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will have the right to retain its own counsel, with the fees and expenses to
be paid by the Indemnitor if Indemnitor does not assume the defense; or, if
representation of such Indemnitee by the counsel retained by the Indemnitor
would be inappropriate due to actual or potential differing interests
between such Indemnitee and any other Party represented by such counsel in
such proceedings. The failure to deliver notice to the Indemnitor within a
reasonable time after the commencement of any such action, if prejudicial to
its ability to defend such action, will relieve such Indemnitor of any
liability to the Indemnitee under this Section 9, but the omission so to
deliver notice to the Indemnitor will not relieve it of any liability that
it may have to any Indemnitee otherwise than under this Section 9.
9.4 Consent Required. The indemnity agreement in this Section 9 will not
apply to amounts paid in settlement of any loss, claim, damage, liability or
action if such settlement is effected without the consent of the Indemnitor,
which consent will not be withheld unreasonably.
9.5 Cooperation. The Indemnitee under this Section 9, its employees and
agents, will cooperate fully with the Indemnitor and its legal
representatives in the investigations of any action, claim or liability
covered by this indemnification. In the event that each Party claims
indemnity from the other and one Party is finally held liable to indemnify
the other, the Indemnitor will additionally be liable to pay the reasonable
legal costs and attorneys' fees incurred by the Indemnitee in establishing
its claim for indemnity.
10. TERM AND TERMINATION
10.1 Term. This Agreement will commence on the Effective Date and will
remain in full force until [ * ].
10.2 Termination. This Agreement may be terminated by mutual written
agreement of ACLARA and PACKARD, effective as of the time specified in such
written agreement, or as otherwise provided hereunder.
10.3 Survival of Obligations. Upon any termination of this Agreement,
neither Party will be relieved of any obligations incurred prior to such
termination. Notwithstanding any termination of this Agreement, the
obligations of the Parties under Sections 3.5, 3.6, 4, 5, 7, 9, 10.3 as well
as under any licenses which are maintained in effect and any other
provisions which by their nature are intended to survive any such
termination, will survive and continue to be enforceable.
11. MISCELLANEOUS
11.1 Force Majeure. If the performance of any part of this Agreement by
either Party, or of any obligation under this Agreement, is prevented,
restricted, interfered with or delayed by reason of any cause beyond the
reasonable control of the 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 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
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liable to perform, unless conclusive evidence to the contrary is provided,
the Party so affected will, upon giving written notice to the other Party,
be excused from such performance to the extent of such prevention,
restriction, interference or delay, provided that the affected Party will
use its reasonable best efforts to avoid or remove such causes of
non-performance and will continue performance with the utmost dispatch
whenever such causes are removed. When such circumstances arise, the Parties
will discuss what, if any, modification of the terms of this Agreement may
be required in order to arrive at an equitable solution.
11.2 Governing Law. This Agreement will be deemed to have been made in the
State of New York and its form, execution, validity, construction and effect
will be determined in accordance with the laws of the State of New York.
11.3 Separability.
11.3.1 In the event any portion of this Agreement will be held illegal,
void or ineffective, the remaining portions hereof will be interpreted
to maintain the intent of the Parties.
11.3.2 If any of the terms or provisions of this Agreement are in
conflict with any applicable statute or rule of law, then such terms or
provisions will be deemed inoperative to the extent that they may
conflict therewith and will be deemed to be modified to conform with
such statute or rule of law.
11.4 Entire Agreement. This Agreement (including Exhibits attached hereto,
and Workplans adopted pursuant hereto), and the Supply Agreement constitute
the sole agreements between the Parties relating to the subject matter
hereof and supersede all previous writings and understandings. It is
understood that the Parties will enter into a Supply Agreement, on
conventional commercial terms to be agreed upon, incorporating relevant
portions of this Agreement. Confidential disclosures made pursuant to
previously executed Confidentiality Agreements between ACLARA and PACKARD
will remain subject to the terms of those Confidentiality Agreements. No
terms or provisions of this Agreement will be varied or modified by any
prior or subsequent statement, conduct or act of either of the Parties,
except that the Parties may amend this Agreement by written instruments
specifically referring to and executed in the same manner as this Agreement.
11.5 Assignment. This Agreement and the licenses herein granted will be
binding upon and inure to the benefit of the successors in interest of the
respective Parties. Neither this Agreement nor any interest hereunder will
be assignable by either Party without the written consent of the other
provided, however, that PACKARD or ACLARA may assign this Agreement or any
of its rights or obligations hereunder to any Affiliate or to any third
party with which it may merge or consolidate, or to which it may transfer
all or substantially all of its assets to which this Agreement relates,
without obtaining the consent of the other Party, subject to the other Party
assuming all liabilities and obligations under the Agreement.
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11.6 Dispute Resolution. If the Parties are unable to resolve by negotiation
within forty-five days of the disputing party's written request for dispute
resolution (or such other time period expressly set forth in this
Agreement), or if the parties failed to meet within twenty (20) days after
such notice, the parties shall endeavor to settle the dispute by mediation
administered by the American Arbitration Association ("AAA") pursuant to the
Commercial Mediation Rules of the AAA the time of submission prior to
resorting to any other remedy. Mediation shall be held in either Hartford,
Connecticut or Mountain View, California, at the election of the party
receiving the request for mediation. Notwithstanding the foregoing, to the
extent that any controversy or claim hereunder gives rise to a prayer for
injunctive relief, equitable action or specific performance, the aggrieved
party shall have the right to commence such an action in any court of
competent jurisdiction.
11.7 Counterparts; Facsimile Signatures. This Agreement may be executed in
any number of counterparts, and each such counterpart will be deemed an
original instrument, but all such counterparts together will constitute but
one agreement. The Parties agree that signatures delivered via facsimile,
followed by originals, shall be binding as if they were original signatures.
11.8 Notices. Any notice required or permitted under this Agreement will be
sent by air mail, postage pre-paid, to the following addresses of the
Parties:
If to ACLARA:
ACLARA BioSciences, Inc.
3906 Trust Way
Hayward, CA 94545-
Attn: President
If to PACKARD:
PACKARD Bioscience Company
800 Research Parkway
Meriden, CT 06450
Attn: Tod O. White
11.9 Effect of Bankruptcy. All rights and licenses granted under or pursuant
to this Agreement by one party to the other Party are, and will irrevocably
be deemed to be, "intellectual property" as defined in Section 101(35A) of
the Bankruptcy Code. In the event of the commencement of a case by or
against either Party under any Chapter of the Bankruptcy Code, this
Agreement will be deemed an executory contract and all rights and
obligations hereunder will be determined in accordance with Section 365(n)
thereof.
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IN WITNESS WHEREOF, the Parties , through their authorized officers,
have executed this Agreement as of the date first written above.
ACLARA BIOSCIENCES, INC. PACKARD INSTRUMENT COMPANY
By: /s/ JOSEPH M. LIMBER By: /s/ STAF VAN CAUTER
-------------------------- --------------------------------
Name: Joseph M. Limber Name: Staf van Cauter
------------------------------- ------------------------------
Title: President, CEO Title: Vice President Business
------------------------------ Development
-----------------------------
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AMENDMENT TO THE ACLARA-PACKARD COLLABORATION AGREEMENT
The following is an amendment to the ACLARA-PACKARD COLLABORATION AGREEMENT
dated February 21, 2000.
All references to [ * ] are to be deleted from the ACLARA-PACKARD
COLLABORATION AGREEMENT. The following is to be added to the ACLARA-PACKARD
COLLABORATION AGREEMENT as new Section 2.6
The JSC will determine the choice of [ * ] to be used in the System,
where [ * ] If the JSC determines that the [ * ] is to be the [ * ] of choice,
then ACLARA agrees to develop [ * ] for the System. Alternatively, ACLARA may
develop [ * ] subsequently. In either event during the exclusive period
provided for in section 2.5, ACLARA shall offer to license to PACKARD, on a
non-exclusive basis, the right to manufacture, use, sell and have sold such
[ * ] for use in combination with a System, subject to commercially reasonable
terms and conditions to be negotiated by the Parties in good faith.
ACLARA PACKARD
BY: /s/ JOSEPH M. LIMER BY: /s/ STAF VAN CAUTER
------------------------------- -------------------------------
TITLE: President, CEO TITLE: Vice President Business
Development
---------------------------- ----------------------------
DATE: Feb. 21, 2000 DATE: Feb. 21, 2000
----------------------------- -----------------------------
[ * ] 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 406 OF THE SECURITIES ACT OF 1933,
AS AMENDED.