InvaderCreator Access Agreement - Third Wave Technologies Inc. and ACLARA BioSciences Inc.
INVADERCREATOR ACCESS AGREEMENT
This InvaderCreator Access Agreement ("Agreement"), effective as of October
15, 2002 (the "Effective Date"), is entered into by and between Third Wave
Technologies, Inc., organized under the laws of Delaware and having its
principal place of business at 502 S. Rosa Road, Madison, Wisconsin 53719
("TWTI"), and Aclara Biosciences, Inc., organized under the laws of Delaware and
having its principal place of business at 1288 Pear Avenue, Mountain View,
California 94043 ("ACLA").
BACKGROUND
A. TWTI and ACLA have entered into that certain License Agreement of even
date herewith (the "License Agreement") and Supply Agreement of even date
herewith (the "Supply Agreement").
B. As contemplated in and in connection with the License Agreement, TWTI
will provide access to the InvaderCreator Software (as defined below) in order
to enable the exercise of rights with respect to Licensed Products in accordance
with the License Agreement, all as set forth in more detail below.
NOW, THEREFORE, for and in consideration of the covenants, conditions and
undertakings hereinafter set forth, TWTI and ACLA each agree as follows:
ARTICLE 1
DEFINITIONS
As used in this Agreement, the following terms shall have the meanings
indicated:
1.1. Terms from the License Agreement. Each of the terms "Cleavage Enzyme,"
"Development and Commercialization Agreement," "Enabled Customer," "Gene
Expression Field," "Genotyping Field," "Intellectual Property Rights," "Invader
Probe," "Licensed Product," "Manufacturing Distributor," "Party," "Parties,"
"Patent," "Primary Probe," "Target," "Technology," "Technology Access Partner,"
"Third Party" and "Value Added Distributor" shall have the meaning given to the
particular term in the License Agreement. Invader(R) and Cleavase(R) are
registered trademarks of TWTI, but are printed in this Agreement without the
registration mark for convenience. Similarly, InvaderCreator is a trademark of
TWTI, but is printed in this Agreement without the TM mark for convenience.
Confidential treatment has been requested for portions of this exhibit. The copy
filed herewith omits the information subject to the confidentiality request.
Omissions are designated as * * *. A complete version of this exhibit has been
filed separately with the Securities and Exchange Commission.
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1.2. "Applet" shall mean a Java application that runs Invader Probe and
Primary Probe selection and design algorithms in the context of an applet
viewer, such as a web browser, and has been downloaded by the Host Software to a
user's local computer when the user accesses the Host Software over a network,
including any updates, improvements, enhancements, and modifications that are
downloaded (whether made by TWTI or made by ACLA in accordance with Section
4.3). Except to the extent otherwise expressly stated in this Agreement, Applet
shall mean software only in machine readable format.
1.3. "Authorized Designee" shall mean a Manufacturing Distributor, Value
Added Distributor, Technology Access Partner, or Enabled Customer under the
License Agreement, appointed by ACLA and authorized in accordance with the
License Agreement.
1.4. "Authorized User" shall mean an employee of ACLA or an Authorized
Designee under whose name a Username and Password have been issued by TWTI or
ACLA in accordance with this Agreement.
1.5. "Control" means, (A) with respect to an item of Technology or an
Intellectual Property Right, possession by TWTI of the power and authority,
whether arising by ownership, license, or other authorization, to disclose and
deliver the particular Technology to ACLA, and to grant and authorize the
licenses, and sublicenses, as applicable, of or within the scope granted to ACLA
in Article 4 of this Agreement without giving rise to any of the following: (i)
a violation of the terms of any written agreement with any Third Party; (ii) a
violation or infringement of any Patent, copyright, trade secret, or other
Intellectual Property Right of any Third Party; (iii) TWTI being required to pay
any royalty or other consideration to any Third Party that would not have been
required had a license not been provided under this Agreement; (iv) a violation
of any law, regulation, rule, code, order or other requirement of any federal,
state, foreign, local, or other government body or the need for any additional
permits, payments, authorizations, or approvals under any such law, regulation,
rule, code, order or requirement. Notwithstanding, the provisions of clause
(iii) of this Section 1.5, an item of Technology or an Intellectual Property
Right shall be deemed to be Controlled by TWTI for purposes of clause (iii)
above, if ACLA agrees in writing to (A) reimburse TWTI for all amounts payable
to a Third Party that would not have been required had a license not been
provided under this Agreement or pay such amounts directly to such Third Party,
at the election of TWTI, and (B) reimburse TWTI for fifty percent (50%) of any
upfront, licensing, milestone or other consideration payable to such Third
Party, (but excluding from this clause (B): (1) consideration payable as a
result solely of the exercise of rights under such item of Technology or
Intellectual Property Rights by other than entities acting by or under authority
of the ACLA (i.e. running royalties) and (2) amounts included in clause (A)
above).
1.6. "Hosting Environment" shall mean the servers, and associated hardware,
operated by TWTI or its hosting contractor at the facilities of TWTI or such
contractor to host the Host Software. For clarity, the Hosting Environment shall
be limited to the local area network of TWTI or its contractor at such
facilities used to make the Host Software available, extending
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only to the routers of TWTI or its contractor used to host the Host Software,
and excluding services performed by any party other than TWTI or its hosting
contractor.
1.7. "Host Software" shall mean the software, including any updates,
improvements, enhancements, and modifications to such software, (i) made
available by TWTI hereunder during the Term at the web address specified by TWT
for "Host Software" or (ii) made by ACLA in accordance with Section 4.3; all of
the foregoing to the extent all of the following is true: (A) it is directed at
designing Invader Probes and Primary Probes for use in an Invader Reaction to
detect and/or quantify deoxyribonucleic acid or ribonucleic acid; (B) it is
designed to be hosted on servers for access over the Internet in the manner
contemplated in this Agreement; and (C) it is reasonably necessary in order for
ACLA to exercise its licenses in accordance with the License Agreement. For
clarity, the Host Software shall not include any functionality or features to
the extent not reasonably necessary for ACLA to exercise its rights under the
License Agreement.
1.8. "InvaderCreator Seat" shall mean a single Username, and associated
Password, for access to or use of the InvaderCreator Software.
1.9. "InvaderCreator Software" shall mean the Host Software, the Servlet
and the Applet. Except to the extent otherwise expressly stated in this
Agreement, InvaderCreator Software shall mean software only in machine readable
format.
1.10. "Password" shall mean a password issued by TWTI or ACLA in accordance
with this Agreement for access to and use of the Host Software and Applet solely
under the Username, and by the particular user, for which the password is
issued.
1.11. "Servlet" shall mean a Java class provided by TWTI that runs on a
server in a Java Virtual Machine, that receives the design output sequences from
the Applet, and which may be programmed to store such output on the server or at
a storage location accessible to the server, including any updates,
improvements, enhancements, and modifications that are provided by TWTI for
purposes of providing such functionality or that are made by ACLA in accordance
with this Agreement. Except to the extent otherwise expressly stated in this
Agreement, Servlet shall mean software only in machine readable format.
1.12. "TWTI Marks" shall mean the trademarks, trade names, and logos that
are displayed by the InvaderCreator Software prior to release of the Source Code
under Article 4, as updated by TWTI in accordance with this Agreement.
1.13. "Release Condition" shall mean the occurrence of any of the
following:
1.13.1 the Host Software and/or Applet have been continuously
unavailable under this Agreement at the web address specified by TWTI for a
period of one (1) week due to the fault of TWTI and not due to an event of the
type described in Section 9.3; or
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1.13.2 the Host Software and/or Applet have been continuously
unavailable under this Agreement at the web address specified by TWTI for a
period of one (1) week due to an event of the type described in Section 9.3, and
TWTI has failed to resume availability within thirty (30) days after receiving
written notice from ACLA after the occurrence of such unavailability; or
1.13.3 TWTI has materially breached its representation and warranty
set forth in Section 7.1.1 and has failed to cure the breach within ninety (90)
days after receiving written notice thereof from ACLA; or
1.13.4 TWTI has provided written notice to ACLA in which TWTI
indicates that it plans discontinue its efforts to make the InvaderCreator
Software available in accordance with this Agreement and that ACLA is free to
exercise its rights in accordance with Article 4; or
1.13.5 (i) TWTI has made a change to the InvaderCreator Software
that it makes available under this Agreement which ACLA reasonably believes
materially adversely affects the performance or compatibility of the Invader
Probe or Primary Probe designs generated by the InvaderCreator Software for use
in Licensed Products, or has made a material change to its requirements for the
computers or software needed to access the InvaderCreator Software over the
Internet that would require ACLA and Authorized Designees to incur substantial
additional cost, (ii) ACLA has notified TWTI of such belief and its desire to
have TWTI continue to make the prior version of the InvaderCreator Software
available under this Agreement, and (iii) TWTI has failed to notify ACLA in
writing within one (1) week after TWTI's receipt of such notice from ACLA that
TWTI agrees to make the prior version so available or has failed to continue to
make such prior version so available within one (1) week after TWTI's receipt of
such notice from ACLA.
Notwithstanding anything to the contrary, unavailability arising out of or
related to any hardware, software, facilities, or Technology other than the Host
Environment and the InvaderCreator Software made available by TWTI shall not be
considered to be unavailability within the meaning of this Section 1.11.
1.14. "Source Code" means (i) any human perceivable form of the Invader
Creator Software made available by TWTI under this Agreement, or the associated
databases, and programmers' comments, technical specifications, flowcharts,
written bug reports, and logic diagrams concerning such human perceivable code,
each to the extent existing at TWT at the time of deposit; (ii) any human
perceivable code or documentation made by ACLA based upon or derived from the
foregoing Technology of TWTI, including without limitation all derivative works;
and (iii) any portion or human perceivable derivatives or copies of any of the
foregoing.
1.15. "Term" shall mean the term of this Agreement as set forth in Section
8.1 below.
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1.16. "Username" shall mean a username issued by TWTI or ACLA in
accordance with this Agreement for access to and use of the InvaderCreator
Software solely by the particular user of ACLA, or the Authorized Designee, for
which the username is issued.
ARTICLE 2
Network and Software
2.1. Environment and Software. The Host Software operates on servers
located at the facilities of TWTI or its contractor (except to the extent set
forth in Article 4), the Applet operates on the Authorized User's local
computer, and the Servlet operates on a server located at the facility of ACLA,
its hosting contractor, an Enabled Customer, or a Manufacturing Distributor,
provided that no more than a total aggregate amount of twenty five (25) Servlets
will be installed on servers of Enabled Customers and Manufacturing
Distributors. Access to and use of the Host Software, Applet and Servlet is
limited to access and use in accordance with Articles 2 and 3 of this Agreement,
except for backup rights of ACLA to the extent expressly set forth in Article 4
of this Agreement. The Applet may be accessed only at the web address specified
by TWTI using a valid Username and Password; it being acknowledged and agreed
that ACLA may include a link to such web address on ACLA's web site. TWTI may
change the web addresses from time to time by providing ten (10) days advance
written notice of the change to ACLA. Although the Applet can be operated only
within such web site, it presents the web site to the Authorized User and
processes the designs for Invader Probes and Primary Probes on the Authorized
User's local computer. In order to create probe designs, the Authorized User
will log in on such web site using the Username and Password and, after the Host
Software downloads the Applet to the Authorized User's local computer, the
Authorized User will enter input sequence information for generating the
designs. The Applet creates the designs using such information and sends the
designs to the Host Software or the Servlet as described in this Section 2.1
below. The sequence information entered by the Authorized User will not be sent
to the Host Software, but the designs generated by the Applet will be sent to
the Host Software unless the Applet is configured to send the output to a
Servlet rather than the Host Software. Subject to the terms and conditions of
this Agreement, ACLA and its Enabled Customers and Manufacturing Distributors
may program the Servlet to store the designs on the server on which the Servlet
is installed or at a location that ACLA or the applicable Authorized Designee
makes accessible to the server and Servlet all as more fully described in
Section 2.4.2 below. ACLA shall provide to TWTI in advance the compatible
network address of the server on which the Servlet will be installed so that the
Applet may be configured to send its output to the Servlet consistent with
TWTI's then current lead time. Nothing shall prevent TWTI from displaying its
trademarks, trade names and logos on and through the InvaderCreator Software.
2.2. Other Equipment and Software. Other than the Hosting Environment,
the InvaderCreator Software, and the support described in Section 2.4, ACLA and
its Authorized Designees shall be solely responsible for obtaining, configuring,
maintaining, and operating at their sole cost and expense, all hardware,
software, services, and other Technology that may be
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necessary or desirable for accessing or using the InvaderCreator Software in
accordance with TWTI's technical specifications as updated by TWT from time to
time in its sole discretion, including computers, servers, web browsing
software, Internet connections and accounts, and the like, or necessary to
comply with ACLA's security obligations under this Agreement. For clarity, other
than the support described in Section 2.4, ACLA shall be solely responsible for
installing, configuring, programming, modifying, maintaining, and operating at
its facilities, and the facilities of its Enabled Customers and Manufacturing
Distributors described in Section 2.1, the Servlet provided by TWTI, including
without limitation to program the Servlet to store output at desired storage
locations and assisting and training its Manufacturing Distributors and Enabled
Customers to install, configure, modify, program, maintain and operate the
Servlet in accordance with the terms and conditions of this Agreement. ACLA may
modify the Servlet, provided that no modifications to the Servlet shall be made
that affect compatibility, interoperability, or operation with the Applet or
Host Software, and TWT shall have no responsibility or obligation with respect
to any Servlet that has been modified by ACLA.
2.3. Availability.
2.3.1 Notwithstanding anything to the contrary, but subject to
ACLA's rights in accordance with this Agreement under Article 4, TWTI shall have
the right to make the InvaderCreator Software unavailable at any time for
maintenance, updates, upgrades, or performance or other similar concerns. TWTI
will attempt in good faith to provide ACLA with notice of such scheduled
unavailability. ACLA acknowledges and agrees, however, that the InvaderCreator
Software may also become unavailable from time to time as a result of events or
factors that are beyond TWTI's reasonable control, including problems with
hardware, networks, or software at the facilities of, and/or operated by, TWTI
or its contractor; and force majeure events of the type contemplated in Section
9.3.
2.3.2 NO INTERRUPTION, DISRUPTION, OR UNAVAILABILITY OF THE
INVADERCREATOR SOFTWARE SHALL BE CONSIDERED TO BE A BREACH BY TWTI, AND TWTI
SHALL HAVE NO LIABILITY OR RESPONSIBILITY ARISING OUT OF OR RELATING TO ANY SUCH
EVENT, IT BEING ACKNOWLEDGED AND AGREED THAT ACLA'S BACKUP RIGHTS IN ARTICLE 4
BELOW SHALL BE ACLA'S SOLE REMEDY, AND TWTI'S SOLE AND EXCLUSIVE LIABILITY,
ARISING OUT OF ANY INTERRUPTION, DISRUPTION, OR UNAVAILABILITY AND FOR ANY
BREACH OF THIS AGREEMENT BY TWTI.
2.3.3 The Host Software and Applet shall be deemed to be available,
except during each period of time commencing with TWTI's receipt of written
notice from ACLA that the Host Software and Applet is unavailable at the web
address specified by TWTI under Section 2.1 and ending at such time as the Host
Software and Applet are again available.
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2.4. Support.
2.4.1 General. Other than providing to ACLA in accordance with
TWTI's standard practices from time to time a copy of any end user documentation
for the InvaderCreator Software that TWTI may provide under this Agreement and
providing the assistance described in Section 2.4.2 in connection with an
initial Servlet, TWTI shall have no obligation or responsibility for providing
any assistance, support or documentation, whether to ACLA or otherwise, in
connection with this Agreement or any InvaderCreator Software. ACLA shall ensure
that all Authorized Users and Authorized Designees contact ACLA, and not TWTI,
with questions or concerns regarding access to or use of the InvaderCreator
Software, including the Servlet.
2.4.2 Servlet. The Servlet will be a Java class that ACLA may
program to store probe designs output by the Applet on the server on which the
Servlet is installed or at other compatible network addresses that ACLA or its
Enabled Customer or Manufacturing Distributor, as applicable, make available to
such server and Servlet. TWTI will provide the Servlet to ACLA and will provide
assistance and information that is reasonably necessary to enable a software
engineer employed by ACLA to install and operate one initial Servlet on a server
on a local area network at ACLA's facilities to receive output from Applets used
on computers also on such local area network. Such engineer shall be of ordinary
skill in programming Java and other applicable software.
2.5. InvaderCreator Updates and Upgrades. Subject to the terms and
conditions in this Agreement, including this Section 2.5 below and Section 1.13,
it is acknowledged and agreed that TWTI may update, upgrade, and otherwise
modify the InvaderCreator Software at any time in its sole discretion, and that
such modifications may result in materially different functionality, features,
performance, or compatibility. Subject to the terms and conditions of this
Agreement, TWTI agrees that it will include in the InvaderCreator Software
updates, upgrades and other modifications created by or on behalf of TWTI to the
InvaderCreator Software previously available hereunder, provided that the
updates, upgrades, and modifications have been made generally commercially
available by TWTI to its customers in the manner described in this Agreement,
are Controlled by TWTI, and are primarily directed at designing Primary Probes
and Invader Probes for Invader Reactions that detect and/or quantify
deoxyribonucleic acid or ribonucleic acid.
2.5.1 Particular Updates. TWTI is in the process of modifying the
InvaderCreator Software to include functionality for batch processing of input
sequences and for output in text format. Additionally, while the Applet
currently performs probe design processing on the local computer on which the
Applet is installed, TWTI understands that ACLA desires that a Servlet be
provided that includes additional functionality that would enable the user to
save output files directly to a programmable location, rather than being sent to
the Host Software. TWTI anticipates that the InvaderCreator Software will be
updated to include functionality for batch processing of input sequences, and to
allow text output to be saved to a programmable location, by the end of the
first calendar quarter of calendar year 2003, and TWTI
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agrees to use its commercially reasonable efforts to make such functionality
available by such time. It is understood and agreed, however, that such timing
is an estimate only and that TWTI shall not be considered to be in breach of
this Agreement as a result of any updates not being completed or included by
such timing provided that TWTI used and continues to use its commercially
reasonable efforts to complete and make such updates available by such time or
as soon as practicable thereafter. Because the development will require
collaboration with ACLA, ACLA shall provide assistance and cooperation as
reasonably requested by TWTI in connection with the development, including
providing access to ACLA's facilities as reasonably requested by TWTI in order
to install and test the updates and software, or otherwise for purposes of the
development, and making available qualified technical employees to assist TWTI
in the development. TWTI shall not be responsible for any delays or incomplete
development as a result of any failure by ACLA to provide assistance or
cooperation.
2.5.2 Limitations. Notwithstanding anything to the contrary, TWTI
shall have no obligation to include in the InvaderCreator Software any software
that TWTI reasonably determines (i) provides or includes functionality or
features not reasonably necessary for designing Invader Probes or Primary Probes
for Invader Reactions in the Gene Expression Field or Genotyping Field; (ii) is
not Controlled by TWTI or will not be made generally available by TWTI to its
end user customers as part of TWTI"s software for designing such Invader Probes
and Primary Probes in the manner described in this Agreement; or (iii) is in a
beta, test, or other form that may not be suitable for general
commercialization. Subject to the terms and conditions of this Section 2.5, TWTI
shall have no obligation to make any updates, upgrades or modifications to the
InvaderCreator Software or perform any custom development. EXCEPT FOR RELEASE OF
THE SOURCE CODE IN ACCORDANCE WITH THIS AGREEMENT AND THE ESCROW AGREEMENT, TWTI
SHALL HAVE NO RESPONSIBILITY OR LIABILITY ARISING OUT OF ANY CHANGES TO THE
INVADERCREATOR SOFTWARE.
ARTICLE 3
ACCESS AND USE
3.1. Administrators. Each of ACLA and TWTI will appoint an
administrator ("Administrator") who will serve as the primary point of contact
with the other Party with regard to access to and use of the InvaderCreator
Software under this Agreement. ACLA's Administrator will be responsible for
requesting Usernames and Passwords from TWTI as set forth in Section 3.3 below,
for coordinating with TWTI's Administrator with respect to all other
communications regarding the InvaderCreator Software hereunder, and for ensuring
that ACLA provides assistance needed by TWTI in connection with the development
as described in Section 2.5.1. The initial Administrator for each Party shall be
as follows and may be changed, subject to the foregoing, by providing written
notice of the change to the other Party:
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TWTI: ACLA:
Name: Steve Ray Name: Mary Stepp
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Position: Director of IT Position: IT Manager
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Voice: 608-273-8933 Voice: 650 210 2966
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E-mail: sray@twt.com E-mail: mstepp@aclara.com
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3.2. Access and Use Rights. Subject to the terms and conditions of this
Agreement, TWTI hereby grants to ACLA a non-exclusive, non-transferable (except
as set forth in Section 9.2), fee bearing license, without the right to grant or
authorize sublicenses except as expressly set forth in Sections 3.3 and 3.4, to
access and use the InvaderCreator Software made available by TWTI hereunder in
the manner described in Section 2.1 solely to generate designs for eTag Probes
and Invader Probes manufactured and distributed, and used in License Product, in
accordance with the License Agreement. It is acknowledged and agreed that the
InvaderCreator Software outputs Primary Probe designs, rather than eTag Probe
designs, and that ACLA will be responsible for using the Primary Probe designs
output by the InvaderCreator Software to create eTag Probe designs. There shall
be no access to or use of the Host Software or Applet under this Section 3.2,
except for (i) access by the Authorized User, logged in under the Username and
Password issued to the Authorized User, to the Host Software hosted by TWTI (or
hosted by ACLA under Article 4); and (ii) use by such logged in Authorized User
of the InvaderCreator Software; each only as contemplated and allowed by the
user interface displayed by the InvaderCreator Software. There shall be no
access to or use of the Servlet except for access and use by ACLA, and its
Manufacturing Distributors and Enabled Customers, of the Servlet installed on
the servers of ACLA, its hosting contractor, Enabled Customer, or Manufacturing
Distributor, to the extent allowed and described in this Agreement. If ACLA, or
a Manufacturing Distributor or Enabled Customer, desires to use a contractor to
host the Servlet, ACLA, or the Manufacturing Distributor or Enabled Customer, as
applicable shall first enter into a written agreement with the contractor that
is at least as protective of TWTI and the Servlet as the terms and conditions of
this Agreement.
3.3. Usernames and Passwords.
3.3.1 Issuer. Usernames and Passwords will be issued by either ACLA
or TWTI in accordance with this Section 3.3. To the extent that TWTI maintains
remote access for ACLA to issue Usernames and Passwords, ACLA's Administrator
shall be responsible for such issuance; it being acknowledged that TWTI will
have the right to monitor Usernames and Passwords on its system. If TWTI does
not maintain such access for ACLA, TWTI will issue Usernames and Passwords,
subject to the terms and conditions of this Agreement, based upon written
requests provided by ACLA's Administrator to TWTI's Administrator.
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3.3.2 Users. Usernames and Passwords shall be issued only for
employees of ACLA and its Authorized Designee that have responsibilities in the
ordinary course of such employment that include Invader Probe design and/or eTag
Probe design for Licensed Product, and for which access is reasonably necessary
to exercise the rights of ACLA or the Authorized Designee, as applicable, all in
accordance with the License Agreement.
3.3.3 Restricted Disclosure and Use. Usernames and Passwords will
be used only by the Authorized User for which they are issued by TWTI or ACLA.
Any unauthorized use or disclosure of a Username or Password shall be deemed to
be an unauthorized use or disclosure by ACLA and the Authorized Designee that
employs the Authorized User for which the Username and Password were issued;
provided that TWTI agrees that it will not terminate this Agreement for such a
breach by Authorized Users employed by an Authorized Designee not Affiliated
with ACLA unless there has been a material breach by ACLA of Section 3.4 below.
3.3.4 Termination and Expiration. Each Username and Password shall
expire automatically one (1) year after activation; provided that Usernames and
Passwords may be renewed in accordance with this Section 3.3 in the same manner
as set forth above. TWTI shall have the right to deny the issuance of, and
terminate, Usernames and Passwords for any Authorized Designee, or individual,
which has been responsible for an unauthorized use, disclosure, or other
exploitation, whether of InvaderCreator Software, License Product, Invader
Probes, Primary Probes (including eTag Probes), Cleavage Enzyme, or otherwise,
under this Agreement or the License Agreement.
3.4. Authorized Users and Designees. Each of ACLA and its contractors and
Authorized Designees shall be responsible for all actions and inactions of its
employees. Additionally, ACLA shall use all reasonable commercial efforts to
limit the use of the InvaderCreator Software and TWTI's Confidential Information
to access and use in accordance with this Agreement, to terminate and cure
promptly any unauthorized use or other exploitation that comes to ACLA's
attention, and to obtain terms consistent therewith in its agreements with
others pursuant to this Agreement, including without limitation the right to
terminate the applicable party's rights upon notice and failure to cure within
thirty (30) days. Prior to requesting or issuing a Username or Password under
this Agreement for an employee of an Authorized Designee, providing a Servlet to
a Manufacturing Distributor or Enabled Customer, or otherwise providing the
Authorized Designee with access to the InvaderCreator Software, ACLA shall enter
into a written agreement with the Authorized Designee that is materially as
protective of TWTI, the InvaderCreator Software, and TWTI's other Confidential
Information as the terms and conditions of Articles 2, 3, 5.6, 5.7, 6, 7, and 8
of this Agreement.
3.5. Other Restrictions. None of ACLA, and the Authorized Users and
Authorized Designees, shall interfere with the operation of the InvaderCreator
Software, TWTI's networks or servers, or any other Technology, equipment or
facilities of TWTI, including data and applications. ACLA acknowledges and
agrees that the Technology used in or by the InvaderCreator Software is
sensitive trade secret information of TWTI. Accordingly, in order to protect
such trade secrets and TWTI's other rights in and to the InvaderCreator Software
and the
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related Technology, none of ACLA, or the Authorized Users or Authorized
Designees, shall, except to the extent that such restrictions are prohibited by
applicable law:
3.5.1 attempt to delete, disable, or otherwise circumvent any
security measures implemented by TWTI with respect to the InvaderCreator
Software, or TWTI's networks or servers, or other Technology, equipment or
facilities;
3.5.2 except to the extent expressly authorized in Article 4,
reproduce, alter, create derivative works of, disassemble, de-compile,
interrogate, translate, transmit, decode, or otherwise reverse engineer any
portion of the InvaderCreator Software, or attempt to derive the source code of
or the algorithms or Technology (including data and databases) used in or by any
portion of the InvaderCreator Software;
3.5.3 except to the extent expressly authorized in Article 4, write
or develop any software based upon or developed with reference to (i) the
InvaderCreator Software, (ii) any Technology embodied in the InvaderCreator
Software or the Source Code, or (iii) any other Confidential Information of
TWTI;
3.5.4 allow access to or use of the InvaderCreator Software by or
for the benefit of any party other than ACLA or the applicable Authorized
Designee; or
3.5.5 assist, permit or authorize any entity to perform any of the
activities prohibited by this Agreement.
3.6. License to TWTI. Subject to the terms and conditions of this
Agreement, ACLA hereby grants to TWTI a worldwide, perpetual, non-terminable,
royalty-free, fully paid up, non-exclusive license under all issued Patent
claims for inventions based upon or arising out of the Source Code or the
exercise of rights under Article 4, with the right to grant and authorize
sublicenses solely in connection with the license or sublicense of other
material Intellectual Property Rights owned or controlled by TWTI, to make, have
made, use, sell, have sold, offer for sale, import, distribute, disclose,
reproduce, and otherwise exploit any and all products, components and services.
3.7. No Other Rights. No access or use shall be made or attempted under
the licenses granted by TWTI in this Agreement, except as necessary to exercise
rights of ACLA or the Authorized Designee, as applicable, in accordance with the
License Agreement, and all other access and use is unlicensed and hereby
prohibited. ACLA acknowledges and agrees that the authorizations provided herein
do not provide ACLA with any ownership of the InvaderCreator Software, but only
an authorization for limited access and use in accordance with this Agreement.
ALL RIGHTS NOT EXPRESSLY GRANTED HEREIN ARE RESERVED TO TWTI.
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ARTICLE 4
BACK-UP RIGHTS
4.1. Escrow. ACLA and TWTI will agree upon a mutually acceptable escrow
agent and escrow agreement within thirty (30) days after the Effective Date,
such agreement not to be unreasonably withheld by either Party. Within fifteen
(15) days after the Parties agree upon the escrow agent and an escrow agreement
in accordance with this Section 4.1, TWTI shall place in escrow the Source Code
for the InvaderCreator Software.
4.1.1 Updates. TWTI shall update the Source Code no less often than
once per calendar year prior to release if material changes have been made,
provided that the updated Source Code and the immediately preceding Source Code
shall both be maintained in escrow.
4.1.2 Release. The Source Code deposited in escrow will be released
to ACLA only upon the occurrence of a Release Condition, provided that a Release
Condition shall be deemed to have not occurred if attributable to the actions of
any Third Party with respect to the Hosting Environment or InvaderCreator
Software and TWTI is using all reasonable commercial efforts to work with the
Third Party to remedy the cause of the unavailability. Deposit and release under
the escrow agreement will be subject to the terms and conditions of the escrow
agreement. All Source Code released to ACLA, and the Technology used by or
incorporated in the Source Code, shall be treated as the Confidential
Information of TWTI under this Agreement and not the License Agreement, and
shall be used only by ACLA in accordance with this Article 4. TWTI shall have no
further obligations under this Agreement upon any release of the Source Code to
ACLA, including no further obligations to provide updates or improvements.
4.1.3 Audits. ACLA shall have the right to have an independent
technical auditor that is approved by TWT, which approval will not be
unreasonably withheld, inspect the Source Code to confirm that it has been
deposited for purposes of ACLA's exercise of its rights under this Section 4.1;
provided that the auditor shall be required to enter into a reasonable
confidentiality agreement with TWT.
4.1.4 Fees. ACLA shall be solely responsible for, and will
indemnify TWTI from and against, the fees payable to the escrow agent(s) in
connection with this Agreement or the escrow agreement described in this Section
4.1.
4.2. Source Code Protections. ACLA shall not copy, duplicate or otherwise
reproduce the Source Code in any manner except that ACLA shall have the right to
make one (1) backup copy of the Source Code, additional copies solely as
reasonably necessary to exercise its rights under Section 4.3, and the
executable code copies authorized in Section 4.3; provided that all such copies
shall be destroyed upon termination or expiration of this Agreement. ACLA agrees
to limit access to the Source Code twenty four (24) hours a day strictly to
those employees of ACLA, and its contractors authorized in accordance with
Section 4.3, for which access is necessary in order to carry out the permitted
uses of such Source Code under this Article 4. The
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Source Code, including copies, shall be marked as the confidential and
proprietary property of TWTI to which access is restricted, and shall be kept
and used solely at ACLA's facilities first identified in this Agreement above.
ACLA shall ensure that the Source Code cannot be accessed in any insecure manner
from any network, computer or similar device outside of such facilities of ACLA.
ACLA shall inform such employees and contractors of ACLA's obligation to
maintain the confidentiality of the Source Code and other confidential
information. ACLA shall keep records of all person who have access to the Source
Code and shall use all reasonable commercial efforts to ensure that such
employees and contractors abide by the terms of such obligations. No later than
five (5) days after TWTI's written request, ACLA shall provide such records to
TWTI for review; provided that ACLA shall not be required to provide such
records to TWTI more than one (1) time in any thirty (30) day period. In no
event shall the Source Code be used in any way, either directly or indirectly,
for the development of products, software, or Technology not contemplated in
Section 4.3.
4.3. Source Code License. Subject to the terms and conditions of this
Agreement, including Section 4.5 and Article 6 below, TWTI hereby grants to ACLA
a non-exclusive, non-transferable (except as set forth in Section 9.2) license,
without the right to grant or authorize sublicenses, to use the Source Code
released from escrow as necessary to create during the Term derivative works of
the InvaderCreator Software made available by TWTI under this Agreement that are
reasonably necessary for ACLA to exercise its rights under the License
Agreement. For clarity, derivative works of the Host Software shall be limited
to those that are within the scope of subparagraphs (A), (B), and (C) of Section
1.7 above. ACLA shall have the right to exercise the foregoing license using
contractors that have been approved in advance by TWTI in writing, such approval
not to be unreasonably withheld, provided that ACLA has entered into a written
agreement with the contractor that is at least as protective of TWTI and such
Source Code as the terms and conditions of this Agreement. ACLA shall make TWTI
a third party beneficiary with the power to enforce such agreements against the
contractor. The resulting modified Source Code shall be used solely as necessary
to compile such Source Code into machine readable format, and the resulting
machine readable code shall be used solely in accordance with Section 4.4. ACLA
shall have the right to make a reasonable number of copies of the Source Code in
machine readable format as necessary to host the InvaderCreator Software in
accordance with Section 4.4.
4.4. Hosting License. Subject to the terms and conditions of this
Agreement, including Section 4.5 below, TWTI hereby grants to ACLA a
non-exclusive, non-transferable (except as set forth in Section 9.2) license,
without the right to grant or authorize sublicenses, to use a machine readable
version of the Source Code released from escrow, as may be modified under
Section 4.3, installed on servers located at the facilities of ACLA or its
hosting contractor as necessary to host during the Term the InvaderCreator
Software in the same manner as hosted by TWTI or TWTI's contractor. For clarity,
ACLA shall have the right to exercise its rights under this Section 4.4 by
having its contractor host the InvaderCreator Software for ACLA; provided that
ACLA has entered into a written agreement with the contractor that is at least
as protective of TWTI and the InvaderCreator Software as the terms and
conditions of this
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Agreement. Notwithstanding anything to the contrary, access to and use of the
InvaderCreator Software, when hosted by ACLA or its contractor, shall be in
accordance with the terms and conditions of this Agreement, including the
license under Article 3 and associated restrictions, excepting only that ACLA or
its contractor shall host the Host Software, rather than TWTI or TWTI's
contractor. For clarity, access and use shall be username and password
restricted in no less protective of a manner as was followed by TWTI. ACLA shall
implement security and other procedures and precautions reasonably requested by
TWTI, provided that the procedures or precautions were implemented by TWTI
during the Term or are otherwise consistent at the then current time with
reasonable procedures or precautions taken by software companies hosting, and
making available to third parties, software that contains their most sensitive
trade secrets.
4.5. Restrictions. ACLA agrees that it will not exercise any rights under
Section 4.3 or 4.4 except during the Term after both the occurrence of a Release
Condition and release of the Source Code to ACLA in accordance with this
Agreement.
4.6. Fees. After the occurrence of a Release Condition and release of the
Source Code in accordance with this Agreement, fees for each InvaderCreator Seat
shall continue to be payable to TWTI in accordance with Article 5, except that
the amount of the payment to TWTI shall be a one time payment of *** for each
new InvaderCreator Seat in the event that the Source Code is released to ACLA
and TWTI has no further obligations under this Agreement. For clarity, a ***
payment shall be made for each individual that accesses or uses the
InvaderCreator Software, but no additional payment shall be required for the
same individual.
4.7. Trademarks.
4.7.1 Trademark License. All InvaderCreator Software created under
Section 4.3 and hosted under Section 4.4 shall continue to display the TWTI
Marks, and other proprietary markings of TWTI, in no less desirable a manner
than was displayed by TWTI prior to release of the Source Code, and no
additional trademarks, trade names, or logos, other than those of ACLA shall be
added or displayed. TWTI hereby grants to ACLA a non-exclusive,
non-transferable, royalty free license to display the TWTI Marks during the Term
in such manner after release of the Source Code in accordance with this
Agreement. ACLA agrees to conduct business related to the InvaderCreator
Software in a manner that reflects favorably at all times on the products,
goodwill, and reputation of TWTI. All ownership and goodwill arising out of the
use of the TWTI Marks shall vest in and inure solely to the benefit of TWTI.
TWTI reserves all rights regarding its trademarks, trade names, and logos not
expressly granted to ACLA.
_____________
***Certain information on this page has been omitted and filed separately
with the Securities and Exchange Commission. Confidential treatment has been
requested with respect to the omitted portions.
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4.7.2 Guidelines for use of Marks. All representations of TWTI
Marks that ACLA intends to use shall first be submitted to TWTI for approval
(which shall not be unreasonably withheld) of design, color, and other details
or shall be exact copies of those used by TWTI and shall in any event comply
with usage guidelines as established by TWTI from time to time. After written
request of ACLA following release of the Source Code from escrow, TWTI will
deliver to ACLA the then current version of such guidelines. TWTI may change its
trademarks, trade names, and logos, and usage guidelines, to be used hereunder
only upon ninety (90) days prior written notice to ACLA, setting forth in such
notice the changes. Changes shall be limited to changes that are generally
applicable to other uses of the trademarks, trade names, and logos by TWTI and
its licensees thereof. From and after the end of such ninety (90) day period, as
so designated in the notice, any trademarks, trade names, and logos that are to
be deleted shall cease to be a TWTI Mark, any trademarks, trade names, and logos
that are to be added shall thereafter be deemed to be a TWTI Mark and changes to
the usage guidelines shall take effect. ACLA shall solely bear all costs and
expenses that result from a change requested by TWTI.
4.7.3 Quality Control and Other Restrictions. To enable TWTI to
monitor the quality of the InvaderCreator Software in connection with which its
trademarks, trade names, and logos are used, and the manner in which it is made
available, ACLA shall provide to TWTI, as reasonably requested by TWTI from time
to time, reasonable access to and use of the InvaderCreator Software made
available by ACLA under this Agreement, without charge, for such purposes as
well as documentation showing the amount of down time and other access and
performance issues and customer complaints. Without limiting the foregoing, all
InvaderCreator Software created by ACLA, and the manner in which it is made
available, shall be of at least the quality of the software that TWTI makes
available, and the availability provided by TWTI, under the TWTI Marks, and no
less than reasonable quality. In addition, ACLA shall maintain reasonable
quality control procedures consistent with industry standards for all such
InvaderCreator Software and availability.
4.7.4 Recordation. In those countries where a license to use
trademarks, trade names, or logos must be recorded, TWTI shall have the right to
provide and record a separate license for such licenses to ACLA hereunder. ACLA
shall cooperate in the preparation and execution of such documents. Upon
termination of a license, ACLA shall cooperate in the cancellation of any such
licenses recorded or entered into in applicable countries.
4.7.5 Mark Infringement. ACLA shall notify TWTI promptly upon
learning of any actual, alleged, or threatened infringement of, or of any unfair
trade practices, trade dress imitation, passing off of counterfeit goods, or
similar offenses relating to, the trademarks, trade names, or logos of TWTI.
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ARTICLE 5
FEE, PAYMENT, AND RECORD KEEPING PROVISIONS
5.1. Fee. Except as set forth in Section 4.6, ACLA, shall pay to TWTI a
one time payment of *** for each InvaderCreator Seat. For clarity, a *** payment
shall be made for each individual that accesses or uses the InvaderCreator
Software, but no additional payment shall be required for the same individual.
5.2. Payment. ACLA shall make full payment to TWTI for all InvaderCreator
Seats issued in a calendar quarter no later than thirty (30) days after then end
of the calendar quarter. Concurrent with each payment, ACLA provide a written
report to TWTI setting forth the total number of Authorized Users for which
Usernames and Passwords have been issued in such calendar quarter.
5.3. Mode of Payment. All payments shall be made by check or direct wire
transfer of United States Dollars in immediately available funds in the
requisite amount to such bank account as TWTI may from time to time designate by
written notice to ACLA.
5.4. Taxes. Fees do not include, and payments will be made without
reduction for, taxes (such as, without limitation, sales and withholding taxes),
fees or charges. If TWTI has the legal obligation to collect and/or pay any
sales, use, excise, value added, or similar taxes in connection with this
Agreement, or rights granted hereunder, then the appropriate amount shall be
invoiced to and paid by ACLA, unless ACLA provides TWTI with a valid tax
exemption certificate authorized by the appropriate taxing authority. Any taxes,
duties, fees, and charges shall otherwise be the sole responsibility of, and
shall be paid by, ACLA, and ACLA shall indemnify TWTI from and against all such
amounts, other than taxes on TWTI's income. ACLA shall provide TWTI with
official receipts issued by the appropriate taxing authority, or such other
evidence, each as is reasonably requested by TWTI to establish that such amounts
have been properly paid.
5.5. Late Payment. Any payments or portions thereof due hereunder which
are not paid when due shall bear interest equal to the lesser of the prime rate
as reported by the Chase Manhattan Bank, New York, New York, on the date such
payment is due, plus an additional two percent (2%), or the maximum rate
permitted by law, calculated on the number of days such payment is delinquent.
This Section 5.4 shall in no way limit any other remedies available to either
Party.
5.6. Records. ACLA shall keep, and shall cause its Authorized Designees
and contractors to keep, complete, true and accurate books of account and
records sufficient to
_________________
*** Certain information on this page has been omitted and filed
separately with the Securities and Exchange Commission. Confidential treatment
has been requested with respect to the omitted portions.
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determine and establish compliance with the terms and conditions of this
Agreement. For clarity, such records shall show the identity of all individuals
that have accessed the InvaderCreator Software, the Username and Password
associated with each individual, and the identity of the corresponding
Authorized Designee. Such books and records shall be kept reasonably accessible
for three (3) years following the end of the calendar quarter to which they
pertain and shall be made available for inspection throughout such three (3)
year period by an independent third party auditor selected by TWTI for such
purposes in accordance with Section 5.4 below.
5.7. Audits.
5.7.1 Audit Rights; Procedure. Upon the written request of TWTI,
and not more than twice in each calendar year (for each entity), ACLA and its
Authorized Designees shall permit an independent auditor of an internationally
recognized standing selected by TWTI, and reasonably acceptable to ACLA, at
TWTI's expense, to have access during normal business hours, and upon reasonable
prior written notice, only to such of the records of ACLA and the Authorized
Designees as may be reasonably necessary to confirm compliance with license
restrictions. For clarity, the auditor appointed by TWTI shall have the right to
inspect ACLA's agreements with Authorized Designees to confirm compliance with
license restrictions. The auditor, as applicable, will disclose to TWTI whether
the license restrictions have been complied with and, if the auditor believes
there may be a non-compliance, all information relevant to the non-compliance.
5.7.2 Cost Reimbursement. If such auditor concludes that there was
a material non-compliance with a license restriction or a material breach of a
material term of this Agreement, then ACLA shall reimburse TWTI for its
reasonable costs related to such audit and TWTI shall be entitled to an
additional audit in such calendar year.
5.7.3 Confidentiality. TWTI shall treat all information subject to
review under this Section 5.5 as Confidential Information of ACLA in accordance
with the confidentiality provisions of the License Agreement, and will cause its
accounting firm to enter into a confidentiality agreement consistent with the
License Agreement, obligating such firm to retain all such information in
confidence pursuant to such confidentiality agreement.
5.7.4 Audit Disputes. If ACLA in good faith disputes the conclusion
of the auditor under Section 5.7.2 above, then ACLA will inform TWTI by written
notice within ten (10) business days of receiving a copy of the audit containing
such conclusion, specifying in detail the reasons for disputing such conclusion.
The Parties shall promptly thereafter meet and negotiate in good faith a
resolution to such dispute. In the event that such Parties are unable to resolve
such dispute within thirty (30) days after the audit, the matter will be
resolved in accordance with Section 9.7 regarding dispute resolution.
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ARTICLE 6
CONFIDENTIALITY AND SECURITY
6.1. Confidential Information. "Confidential Information" means any and
all information that is disclosed by TWTI in written or other similar form, by
inspection of tangible objects, orally, or otherwise in connection with this
Agreement that if disclosed in tangible form is marked "Confidential" or with
other similar designation to indicate its confidential or proprietary nature and
that, if orally disclosed, is indicated orally by TWTI at the time of such
disclosure to be confidential or proprietary and is confirmed as being
confidential or proprietary by TWTI in a writing, designated as "Confidential"
or with similar designation, and delivered to the receiving Party within thirty
(30) days of such oral disclosure.
6.1.1 License Agreement. For clarity, information disclosed by
ACLA in connection with this Agreement, including any probe designs created by
the InvaderCreator Software which are transmitted to TWTI prior to
implementation of the changes described in Section 2.5.1, shall be treated as
"Confidential Information" of ACLA under, and to the extent set forth in, the
License Agreement. Information disclosed by TWTI in connection with this
Agreement, or in connection with the InvaderCreator Software or use or access
thereof, shall be treated as Confidential Information of TWTI under, and to the
extent set forth in, this Agreement and not under the License Agreement. In the
case of doubt as to whether or not information disclosed by TWTI is Confidential
Information under this Agreement or under the License Agreement, it shall be
deemed to be Confidential Information under this Agreement and not the License
Agreement.
6.1.2 InvaderCreator Information. Notwithstanding anything to the
contrary, and whether or not marked or designated as such, the InvaderCreator
Software itself and the Source Code, and all information embodied in the
InvaderCreator Software or the Source Code, such as information concerning the
algorithms, processes, procedures or other Technology incorporated in or used by
the InvaderCreator Software, or the manner in which the InvaderCreator Software
operates, shall be deemed to be the Confidential Information of TWTI under this
Agreement and not under the License Agreement.
6.2. Obligations. ACLA and each contractor and Authorized Designee shall
keep, and will ensure that its officers, directors, employees and agents keep,
completely confidential and will not publish or otherwise disclose and will not
use except as expressly permitted in this Agreement any Confidential Information
of TWTI. The foregoing obligations will not apply to any information to the
extent that it can be established by the receiving Party that such information:
6.2.1 was already known to the receiving Party as evidenced by its
written records, other than under an obligation of confidentiality, at the time
of disclosure;
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6.2.2 was generally available to the public or was otherwise part
of the public domain at the time of its disclosure to the receiving Party;
6.2.3 became generally available to the public or otherwise
becomes part of the public domain after its disclosure and other than through
any act or omission of the receiving Party in breach of this Agreement;
6.2.4 was subsequently lawfully disclosed to the receiving Party
by a Third Party other than under an obligation of confidentiality and other
than in contravention of a confidentiality obligation of such Third Party; or
6.2.5 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 as evidenced by the written records of the receiving Party.
Each of ACLA and its contractors and Authorized Designees shall obtain written
agreements from each of its employees and contractors having access to TWTI's
Confidential Information under this Agreement materially as protective of the
Confidential Information as the terms and conditions of this Article 6.
6.3. Other Permitted Use and Disclosures. Notwithstanding the provisions
of Section 6.2, the Confidential Information of TWTI may be disclosed to the
extent such disclosure is reasonably necessary to comply with applicable
governmental laws, regulations, or orders; provided that if a party is required
to make any such disclosure, it will, to the extent it may legally do so, give
reasonable advance notice to TWTI of such disclosure and will use its reasonable
efforts to secure confidential treatment of such information prior to its
disclosure (whether through protective orders or otherwise).
6.4. Terms of Agreement. Neither Party shall disclose or make any public
announcements concerning this Agreement or the terms hereof, including, without
limitation, the existence and terms or conditions of this Agreement, without the
prior written consent of the other Party. Notwithstanding the foregoing, each
Party shall have the right to issue a press release accordance with the License
Agreement and shall have the right to disclose the existence and terms and
conditions of this Agreement: (i) to advisors and investors on a need-to-know
basis under conditions which reasonably ensure the confidentiality thereof; (ii)
as required by any court or other governmental body; (iii) as otherwise required
by law; (iv) in confidence to legal counsel of such parties; (v) in confidence,
in connection with the enforcement of this Agreement or rights under this
Agreement; (vi) in confidence, in connection with a merger, acquisition of stock
or assets, proposed merger or acquisition, or the like; or (vii) as required in
connection with any government or regulatory filings, including without
limitation filings with the SEC, provided that such disclosing Party shall: (i)
give reasonable advance written notice to the non-disclosing Party of the
proposed disclosure and the reason for such disclosure; (ii) consider in good
faith comments and requests of the non-disclosing Party regarding such proposed
disclosure that are received by the disclosing Party within two (2) business
days after
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the non-disclosing Party's receipt of the proposed disclosure; and (iii) use
reasonable efforts to secure confidential treatment of such disclosed
information.
6.5. Markings. ACLA and its Authorized Designees shall not remove or
obscure any trademark, trade name, copyright notice, patent marking or other
proprietary notice from the InvaderCreator Software, Source Code, or any
materials provided or made available by TWTI in connection with this Agreement.
In addition, ACLA shall use reasonable commercial efforts to mark Source Code
created under Article 4 as the Confidential Information of TWTI and ACLA and
shall mark such Source Code and the resulting InvaderCreator Software with
appropriate markings as reasonably necessary to protect and preserve TWTI's and
ACLA's rights with respect to their Intellectual Property Rights under
applicable law.
6.6. Security. ACLA shall immediately notify TWTI in writing if ACLA
becomes aware of any circumstances under which any unauthorized access or use of
the InvaderCreator Software or Source Code may have occurred, or the
InvaderCreator Software, or TWTI's other Technology, otherwise may have been
exposed to prejudice or loss. Without limiting the foregoing, ACLA shall, at its
sole cost and upon TWTI's request, take all actions necessary to remedy and cure
any unauthorized use and disclosure that may have occurred under such
circumstances.
ARTICLE 7
DISCLAIMERS/LIMITATION OF LIABILITY
7.1. InvaderCreator Software.
7.1.1 TWTI represents and warrants to ACLA that the InvaderCreator
Software does not (i) to its knowledge as of the Effective Date infringe the
Patent rights of any Third Party; or (ii) infringe the copyright or trade secret
rights of any Third Party.
7.1.2 ACLA'S SOLE AND EXCLUSIVE REMEDY, AND TWTI'S SOLE AND
EXCLUSIVE LIABILITY, FOR BREACH OF THE REPRESENTATION OR WARRANTY IN SECTION
7.1.1 SHALL BE RELEASE OF THE SOURCE CODE FROM ESCROW IN ACCORDANCE WITH THIS
AGREEMENT.
7.2. No Other Warranties. Except as set forth in Section 7.1.1, THE
INVADERCREATOR SOFTWARE IS MADE AVAILABLE "AS IS" AND ON AN "AS AVAILABLE"
BASIS, AND ALL ACCESS AND USE IS AT THE RISK OF ACLA, ITS AUTHORIZED DESIGNEES,
AND USERS. TWTI DOES NOT MAKE, AND HEREBY DISCLAIMS, ANY AND ALL OTHER
REPRESENTATIONS AND WARRANTIES, WHETHER EXPRESS, IMPLIED, STATUTORY, OR
OTHERWISE, INCLUDING WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, NONINFRINGEMENT, AND TITLE, AND ANY AND ALL WARRANTIES ARISING FROM A
COURSE OF DEALING, USAGE OR TRADE PRACTICE. TWTI DOES NOT
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REPRESENT OR WARRANT THAT ACCESS TO OR USE OF THE INVADERCREATOR SOFTWARE WILL
BE UNINTERRUPTED, ERROR-FREE, USEFUL, OR SECURE, OR THAT THE INVADERCREATOR
SOFTWARE WILL BE ACCESSIBLE AT ANY PARTICULAR TIME.
7.3. Loss of Data. TWTI SHALL HAVE NO LIABILITY OR RESPONSIBILITY
ARISING OUT OF OR AS A RESULT OF ANY LOSS OF DATA OR INFORMATION, WHETHER OR NOT
STORED BY TWTI. ACLA and its Authorized Designees shall be solely responsible
for maintaining and backing up all data and other information related to or in
connection with the use of the InvaderCreator Software, even if the user chooses
to have TWTI maintain data on TWTI's systems.
7.4. Output. TWTI DOES NOT MAKE ANY REPRESENTATIONS OR WARRANTIES
REGARDING THE QUALITY, RELIABILITY, USEFULNESS, OR SAFETY OF THE OUTPUT OR
RESULTS GENERATED BY THE INVADERCREATOR SOFTWARE OR ANY PRODUCTS OR PROBES BASED
THEREON. TWTI HEREBY DISCLAIMS ALL RESPONSIBILITY, AND SHALL HAVE NO LIABILITY,
WHETHER TO ACLA OR OTHERWISE, DUE TO ANY SUCH OUTPUT, PRODUCTS, OR PROBES,
WHETHER FOR INFRINGEMENT OR OTHERWISE, except to the extent set forth in the
License Agreement.
7.5. Disclaimer of Liability. IN NO EVENT SHALL TWTI BE LIABLE FOR ANY
LOST PROFITS OR REVENUE, LOSS OF USE, BUSINESS INTERRUPTION, LOSS OF DATA, COST
OF SUBSTITUTE GOODS OR SERVICES, OR FOR ANY INDIRECT, SPECIAL, INCIDENTAL,
EXEMPLARY, PUNITIVE OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR RELATING TO THIS
AGREEMENT, ACCESS TO OR USE OF THE INVADERCREATOR SOFTWARE, OR THE RESULTS
GENERATED THEREBY, HOWEVER CAUSED, ON ANY THEORY OF LIABILITY, WHETHER IN
CONTRACT, WARRANTY, TORT, NEGLIGENCE, STRICT LIABILITY OR OTHERWISE, OR BASED
UPON CLAIMS OF CUSTOMERS OR OTHER THIRD PARTIES AND WHETHER OR NOT EITHER PARTY
HAS BEEN ADVISED OR IS AWARE OF THE POSSIBILITY OF SUCH DAMAGES AND
NOTWITHSTANDING THE FAILURE OF ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
ARTICLE 8
TERM AND TERMINATION
8.1. Term. The term of this Agreement shall commence on the Effective
Date and shall continue in full force and effect until expiration or termination
of the License Agreement for any reason, unless this Agreement is earlier
terminated in accordance with its terms; provided that if the Source Code was
properly released to ACLA in accordance with Article 4, and the escrow agreement
described in Section 4.1, at least twelve (12) calendar months prior to
expiration of the License Agreement, then this Agreement will not terminate as a
result of
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expiration of the License Agreement, but shall remain subject to termination as
set forth in this Agreement.
8.2. Termination for Cause. Either Party shall have the right to
terminate this Agreement upon final determination, in accordance with Section
9.7 below, of material failure by the other Party to comply with any material
term or condition of this Agreement. Subject to the foregoing, a failure of ACLA
to make payment shall be considered such a material failure if not cured within
thirty (30) days after receiving written notice thereof.
8.3. Effect of Termination.
8.3.1 Return of Materials. Within thirty (30) days after any
termination or expiration of this Agreement, ACLA and its Authorized Designee's
shall return or destroy any and all copies of the InvaderCreator Software and
Source Code in the possession of ACLA or any other party pursuant to this
Agreement.
8.3.2 Accrued Liability. Termination or expiration of this
Agreement for any reason shall not release either Party hereto from any
liability which at the time of such termination or expiration has already
accrued to the other Party prior to such time. Such termination or expiration
will not relieve a Party from accrued payment obligations or from obligations
which are expressly indicated in this Agreement to survive termination or
expiration of this Agreement.
8.3.3 Survival. Articles 1, 5, 6, 7 and 9, and Sections 2.3.2,
2.5.2 (last sentence), 3.3.3, 3.4 (first two sentences), 3.5, 3.6, 4.2, 4.6,
4.7.1 (last two sentences), 4.7.4, and 8.3 shall survive any termination or
expiration of this Agreement. All other terms and conditions shall be deemed
terminated and of no further force or effect. For avoidance of doubt, all access
and use authorizations under this Agreement shall terminate immediately upon
termination or expiration of this Agreement. All rights and licenses based upon
the licenses to ACLA in this Agreement shall be terminated, and of no further
force or effect.
ARTICLE 9
GENERAL
9.1. Relationship of the Parties. The Parties are independent
contractors. Nothing in this Agreement is intended or will be deemed to
constitute a partnership, agency or employer-employee relationship between the
Parties. Neither Party will incur any debts or make any commitments for the
other Party.
9.2. Assignments. Except as expressly provided herein, neither this
Agreement nor any interest hereunder will be assignable, nor any other
obligation delegable, by a Party without the prior written consent of the other
Party; provided, however, that a Party shall have the right to assign and
otherwise transfer this Agreement as a whole without consent to any successor
that
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acquires all or substantially all of the business or assets of such Party by way
of merger, consolidation, other business reorganization, or the sale of stock or
assets, provided that the assigning Party notifies the other Party in writing of
such assignment, both the License Agreement and the Supply Agreement are
concurrently transferred in their entirety to such successor in accordance with
their terms, and such successor agrees in writing to be bound by the terms and
conditions of this Agreement, the License Agreement, and the Supply Agreement.
This Agreement shall be binding upon successors and permitted assigns of the
Parties. Any assignment not in accordance with this Section 9.2 will be null and
void.
9.3. Force Majeure. Except with respect to payment of money, no Party
shall be liable to the other for failure or delay in the performance of any of
its obligations under this Agreement for the time and to the extent such failure
or delay is caused by earthquake, riot, civil commotion, war, terrorist acts,
strike, flood, or governmental acts or restriction, or other cause that is
beyond the reasonable control of the respective Party. The excused Party shall
be excused for a time period reasonably sufficient to remedy the effects of such
an event. The Party affected by such force majeure will provide the other Party
with full particulars thereof as soon as it becomes aware of the same (including
its best estimate of the likely extent and duration of the interference with its
activities), and will use commercially reasonable efforts to overcome the
difficulties created thereby and to resume performance of its obligations as
soon as practicable. If the performance of any such obligation under this
Agreement is delayed owing to such a force majeure for any continuous period of
more than one hundred thirty (30) days, the Parties hereto will consult with
respect to an equitable solution.
9.4. Entire Agreement of the Parties; Amendments. This Agreement, the
Supply Agreement, the License Agreement, the Letter related to the Transition
Manufacturing Plan, and the Letter related to InvaderCreator Access Prior to
Implementation of Updates, all entered into concurrently, constitutes and
contains the entire understanding and agreement of the Parties respecting the
subject matter hereof and except as expressly provided in Section 2.1 of the
License Agreement cancels and supersedes any and all prior and contemporaneous
negotiations, correspondence, understandings and agreements between the Parties,
whether oral or written, regarding such subject matter, including, without
limitation, the Development and Commercialization Agreement. No waiver,
modification or amendment of any provision of this Agreement will be valid or
effective unless made in writing and signed by the Parties.
9.5. Captions. The captions 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.
9.6. Governing Law. This Agreement will be governed by and interpreted
in accordance with the laws of the State of California, applicable to contracts
entered into and to be performed wholly within the State of California,
excluding conflict of laws principles.
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9.7. Dispute Resolution.
9.7.1 General. Except as otherwise provided in this Section 9.7
below, 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, either Party shall have the right to initiate dispute
resolution by sending written notice of the dispute, and an intent to arbitrate
such dispute, to the other Party; provided, however, that any dispute concerning
the scope, construction, validity, enforceability or infringement of any Patent
within the TWTI IP shall be heard and decided in a court of competent
jurisdiction under the local patent laws of the jurisdictions having issued the
Patent or Patents in question. Within twenty (20) days after such notice
(either, a "Dispute Notice"), each Party shall cause its Chief Executive Officer
or the Chief Executive Officer's high-level executive (at the senior vice
president level or higher) to meet in person to negotiate in good faith a
resolution to the dispute within twenty (20) days of the first such meeting. If
the dispute is unresolved during such period, then any Party may initiate
arbitration in accordance with the commercial arbitration rules of the American
Arbitration Association ("AAA") then in force. The Parties shall use their
commercially reasonable efforts to conclude the arbitration within six (6)
months after the arbitrator has been appointed. The venue of such arbitration
shall be in Madison, Wisconsin for disputes brought by ACLA and Santa Clara
County, California for disputes brought by TWTI.
9.7.2 Judgments. An award rendered pursuant to this Section 9.7
shall be final and binding upon all parties participating in such arbitration.
The arbitrator may, upon competent proof, grant any remedy or relief that the
arbitrator deems just and equitable under the terms and conditions of this
Agreement. Nothing in this Agreement shall be deemed as preventing any Party
from seeking injunctive relief (or any other provisional remedy) from any court
having jurisdiction over the Parties and the subject matter of the dispute.
Judgment upon the award may be entered in any court having jurisdiction, or
application may be made to such court for judicial acceptance of the award
and/or an order of enforcement as the case may be.
9.7.3 Preliminary Injunctions. Notwithstanding anything to the
contrary in this Section 9.7, a Party shall have the right to seek a temporary
restraining order or preliminary injunction from any court of competent
jurisdiction in order to prevent immediate and irreparable injury, loss or
damage on a provisional basis, pending the decision of the arbitrator(s) on the
merits under this Section 9.7.
9.8. Notices and Deliveries. Any notice, request, delivery, approval or
consent required or permitted to be given under this Agreement will be in
writing and will be deemed to have been sufficiently given if delivered in
person, transmitted by telecopier (receipt verified) or by express courier
service (signature required) or five (5) days after it was sent by registered
letter, return receipt requested (or its equivalent), provided that no postal
strike or other disruption is then in effect or comes into effect within two (2)
days after such mailing, to the Party to which it is directed at its address or
facsimile number shown below or such other address or facsimile number as such
Party will have last given by notice to the other Party.
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If to TWTI, addressed to:
Third Wave Technologies, Inc.
502 South Rosa Road
Madison, Wisconsin 53719
Attn.: President
Fax: 608-273-8618
With a copy to:
Wilson Sonsini Goodrich & Rosati
650 Page Mill Road
Palo Alto, California 94304-1050
Attn.: Ian B. Edvalson, Esq.
Fax: 650-493-6811
If to ACLARA, addressed to:
ACLARA BioSciences, Inc.
1288 Pear Avenue
Mountain View, California 94043
Attn.: President and CEO
Fax: 650-210-9271
With a copy to:
Latham & Watkins
135 Commonwealth Drive
Menlo Park, California 94025
Attn.: Michael W. Hall, Esq.
Fax: 650-463-2600
9.9. Waiver. A waiver by any Party of any of the terms and conditions of
this Agreement in any instance will 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 will be cumulative and none of them will be in limitation of any other
remedy, right, undertaking, obligation or agreement of either Party.
9.10. 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, or causes an Intellectual Property Right of either Party
to be unenforceable, such provision will be ineffective
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only to the extent of such prohibition, unenforceability, or invalidity, without
invalidating the remainder of this Agreement. The Parties will make a good faith
effort to replace the applicable provision with a valid one which the Parties
agree has effect that is consistent with the original provision. In the event
the Parties do not agree upon such a substitute provision, either Party shall
have the right to terminate this Agreement by providing sixty (60) days written
notice of termination to the other.
9.11. Compliance with Laws. Notwithstanding anything to the contrary
contained herein, all rights and obligations of ACLA and TWTI are subject to
prior compliance with, and each Party shall comply with, all United States and
foreign export and import laws, regulations, and orders, and such other United
States and foreign laws, regulations, and orders as may be applicable, including
obtaining all necessary approvals required by the applicable agencies of the
governments of the United States and foreign jurisdictions.
9.12. Counterparts. This Agreement may be executed simultaneously in any
number of counterparts, any one of which need not contain the signature of more
than one Party but all such counterparts taken together will constitute one and
the same agreement.
IN WITNESS WHEREOF, the Parties hereto have caused their duly authorized
representatives to execute this Agreement.
THIRD WAVE TECHNOLOGIES, INC. ACLA BIOSCIENCES, INC.
("TWTI") ("ACLA")
By: ___________________________ By: ________________________________
Name: _________________________ Name: ______________________________
Title: ________________________ Title: _____________________________
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