Cross-License Agreement [Assignment] - 3DLM Inc., the John Wayne Cancer Institute and CancerVax Corp.
ASSIGNMENT OF CROSS-LICENSE AGREEMENT
This Assignment of Cross-License Agreement (this "Agreement") is made
and entered into as of July 31, 2000 by and among 3DLM, Inc., a California
corporation formerly known as CancerVax, Inc., which is in the process of
changing its name to OncoVac, Inc. ("CancerVax-California"), the John Wayne
Cancer Institute, a California non-profit corporation ("JWCI"), and CancerVax
Corporation, a Delaware corporation ("CancerVax-Delaware").
RECITALS
A. CancerVax-California and JWCI are parties to a Cross-License
Agreement dated as of July 24, 1998 (the "JWCI Agreement").
B. At the time of entering into the JWCI Agreement, the parties
thereto recognized that further arrangements would need to be made with respect
to CancerVax-California, including the issuance of stock to JWCI and the
transfer to CancerVax-California of technology owned by its majority
shareholder, and that assignment of the JWCI Agreement and such technology to
another corporation was likely.
C. CancerVax-California desires to assign all of its rights and
obligations under the JWCI Agreement to CancerVax-Delaware, which is an
affiliate of CancerVax-California by virtue of having the same majority
shareholder, and CancerVax-Delaware desires to assume all such rights and
obligations, upon the terms and conditions set forth herein.
Now therefore, the parties agree as follows:
AGREEMENT
1. DEFINITIONS.
Unless otherwise defined herein, words used herein as defined words
shall have the meanings set forth in Section 1 of the JWCI Agreement.
2. ASSIGNMENT.
CancerVax-California hereby assigns, as of the date hereof, to
CancerVax-Delaware, all of CancerVax-California's right, title, interest and
obligations under the JWCI Agreement and CancerVax-Delaware hereby accepts such
assignment and assumes all of CancerVax-California's right, title, interest and
obligations under the JWCI Agreement. CancerVax-Delaware further agrees to keep,
perform, comply with
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and fulfill all of the terms and obligations of CancerVax-California under the
JWCI Agreement, as clarified by this Agreement. JWCI acknowledges, consents to
and agrees with the foregoing assignment.
3. UPFRONT AND PERIODIC PAYMENTS.
The parties acknowledge that two (2) payments, each in the amount of
one hundred twenty-five thousand dollars ($125,000.00), have been paid to JWCI
pursuant to Section 4.1 of the JWCI Agreement. Six (6) additional annual
payments of one hundred twenty-five thousand dollars ($125,000.00) each will be
due on the next six (6) anniversaries of June 25, 2000 commencing on June 25,
2001.
4. MILESTONE PAYMENT.
The parties acknowledge that CancerVax-Delaware has paid to JWCI five
hundred thousand dollars ($500,000.00) as a result of receiving equity financing
in the minimum amount of five million dollars ($5,000,000.00) and that such
payment satisfies the milestone payment obligation under Section 4.2 of the JWCI
Agreement.
5. STOCK.
With respect to the obligation under Section 4.2 of the JWCI Agreement
to deliver common stock to JWCI, it is agreed that, upon execution of
CancerVax-Delaware's standard form of stock subscription agreement by JWCI,
CancerVax-Delaware will promptly deliver to JWCI one million two hundred fifty
thousand (1,250,000) shares of common stock of CancerVax-Delaware, which shares
constituted five percent (5%) of the outstanding common stock of
CancerVax-Delaware as of the date of the JWCI Agreement. With the delivery of
such shares of common stock, all obligations under Section 4.2 of the JWCI
Agreement will be satisfied.
6. ROYALTY INCOME.
It is acknowledged that, with the payments made or to be made under
Sections 4.1 and 4.2 of the JWCI Agreement, the "Change Date" under Section 4.3
of the JWCI Agreement will be accomplished once CancerVax-Delaware has paid JWCI
an aggregate of three million five hundred thousand dollars ($3,500,000) from
fifty percent (50%) of any Net Royalties it receives.
7. DEADLINE FOR EQUITY FINANCING.
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Section 12 of the JWCI Agreement grants JWCI the right to terminate the
JWCI Agreement after notice and opportunity to cure if five million dollars
($5,000,000.00) in equity financing has not been raised or the Patent Rights
have not been licensed to a financially capable partner. By letter dated July
12, 2000, JWCI gave six (6) months' notice of intent to terminate the JWCI
Agreement for failure to comply with such provision. By virtue of
CancerVax-Delaware's receiving five million dollars ($5,000,000.00) in equity
financing on July 18, 2000, JWCI hereby agrees that such provision has been
satisfied and JWCI's notice of intent to terminate shall be null and void.
8. CONTINUATION OF JWCI AGREEMENT.
JWCI and CancerVax-Delaware hereby acknowledge that the JWCI Agreement,
as clarified hereunder, remains in full force and effect and there are no known
breaches or rights to terminate thereunder.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
3 DLM, INC., formerly known as
CANCERVAX, INC.
By: [ILLEGIBLE]
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Its: Chairman
JOHN WAYNE CANCER INSTITUTE
By: [ILLEGIBLE]
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Its: COO/Exec V.P.
CANCERVAX CORPORATION
By: [ILLEGIBLE]
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Its: President
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CONSIDERATION FOR ASSIGNMENT OF CROSS-LICENSE
AGREEMENT
As an inducement to 3DLM, Inc., a California corporation formerly known
as CancerVax, Inc., which is in the process of changing its name to OncoVac,
Inc. ("CancerVax-California"), to assign as to CancerVax Corporation, a Delaware
corporation ("CancerVax-Delaware"), the Cross-License Agreement between
CancerVax-California and the John Wayne Cancer Institute, a California
non-profit corporation ("JWCI"), dated as of July 24, 1998 (the "JWCI
Agreement") pursuant to an Assignment of Cross-License Agreement among
CancerVax-California, JWCI and CancerVax-Delaware (the "Assignment Agreement"),
CancerVax-Delaware hereby agrees, effective with the execution of the Assignment
Agreement, to issue to CancerVax-California preferred stock of
CancerVax-Delaware on the same terms and conditions, at the same time, and
having the same rights, preferences and privileges, as CancerVax-Delaware issues
to investors in its next preferred stock financing round following the execution
of the Assignment Agreement (and excluding the proposed recapitalization of
CancerVax-Delaware), the number of shares of such preferred stock to have an
aggregate value of $500,000 based on the acquisition price then paid by such
other investors; provided, however, that CancerVax-California shall execute
agreements and documents that are in substance the same as those executed by the
other preferred stock investors.
No provision of this Agreement may be waived or amended without the
prior written consent of the parties hereto. This Agreement constitutes the
entire agreement between the parties hereto with respect to the subject matter
hereof and supersedes all prior agreements of the parties relating to the
subject matter hereof. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective successors and assigns. This
Agreement shall be governed by, and construed in accordance with, the internal
laws of the State of California.
Dated as of July 31, 2000
CANCERVAX CORPORATION, a Delaware
corporation
By: [ILLEGIBLE]
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Its: President
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3DLM, INC.,
A California Corporation
f/k/a CancerVax, Inc., which is in the
process of changing its name to
OncoVac, Inc.
By: [ILLEGIBLE]
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Its: Chairman
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