Settlement Agreement and Mutual General Release - Ciphergen Biosystems Inc., IllumeSys Pacific Inc., Ciphergen Technologies Inc., Molecular Analytical Systems Inc., LumiCyte Inc. and T. William Hutchens
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Settlement Agreement |
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EXECUTION COPY |
SETTLEMENT AGREEMENT
AND
MUTUAL GENERAL RELEASE
This Settlement Agreement and Mutual General Release (“Settlement Agreement”) is made and entered into on May 28, 2003 (the “Execution Date”) and effective as of February 21, 2003 (the “Effective Date”) by and between Ciphergen Biosystems, Inc. (“CBI”), IllumeSys Pacific, Inc. (“IllumeSys”), and Ciphergen Technologies, Inc. (“CTI”), (collectively referred to herein as “Ciphergen”) on the one hand, and Molecular Analytical Systems, Inc. (“MAS”), LumiCyte, Inc. (“LumiCyte”), and T. William Hutchens (“Hutchens”), on the other. Ciphergen, MAS, LumiCyte, and Hutchens are sometimes referred to individually as a “Party” and collectively as the “Parties.”
RECITALS
WHEREAS, the Parties are presently engaged in a lawsuit entitled Ciphergen Biosystems, Inc. et al. v. Molecular Analytical Systems, Inc., et al. (and related cross-action) Civil Case No. 791094, and an arbitration proceeding entitled Ciphergen Biosystems, Inc. et al. v. T. William Hutchens, 74 181 01162 01 TNM (collectively, the “Litigation”); and
WHEREAS, without any admission of liability or fault, the Parties each desire to avoid the expense, uncertainties and distraction of the Litigation, and therefore, through their authorized representatives have agreed to settle all matters that were or could have been asserted by them in the Litigation, all as set forth herein below; and
WHEREAS, concurrently and in connection with the execution of this Settlement Agreement, the Parties are executing a certain Assignment Agreement, and MAS and CBI are executing a certain Exclusive License Agreement and LumiCyte and CBI are executing a certain
Stock Purchase Agreement.
NOW, THEREFORE, in consideration of the promises and the mutual covenants and agreements hereinafter set forth and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties hereto agree as follows:
As used in this Settlement Agreement, except where the context otherwise dictates, the following capitalized terms shall have the following meanings:
1.1 “Affiliate” shall mean any person, corporation, association or other entity that directly or indirectly controls, is controlled by or is under common control with a Party, but only so long as such control exists. As used in this definition, the term “control” shall mean direct or indirect beneficial ownership of more than fifty percent (50%) of the voting or income interest in such corporation or other business entity.
1.2 “Assigned Technology” shall mean any inventions, know-how, information, processes, formulae, patterns, compilations, programs, devices, methods, techniques, compounds, products, data preparations, and usage information or materials and sources thereof, whether or not patentable, which have been developed or otherwise acquired as of the Effective Date, the practice of which would infringe the Baylor Patent Rights.
1.3 “Assignment Agreement” shall mean that certain Assignment Agreement among MAS, LumiCyte, Hutchens and Ciphergen executed at the same time and effective as of even date herewith.
1.4 “Baylor” shall mean the Baylor College of Medicine, a Texas non-profit corporation having its principal place of business at One Baylor Plaza, Houston, Texas 77030.
1.5 “Baylor Agreement” shall mean that certain Technology Transfer Agreement dated September 14, 1993, between MAS and Baylor. A copy of the Baylor Agreement is attached hereto as Exhibit A.
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1.6 “Baylor Patent Rights” shall mean all U.S. patents or patent applications (including but not limited to the Disclosure of Invention) listed on Schedule 1.2 of the Baylor Agreement and all divisions, reissues re-examinations, renewals, continuations, continuations in-part, extensions and patents issued thereon, and any and all other counterpart applications in any other countries and patents and inventor’s certificates, utility models and the like issuing therefrom.
1.7 “Baylor Technology” shall mean the Baylor Patent Rights together with related know-how, information, processes, formulae, patterns, compilations, programs, devices, methods, techniques, compounds, products, data, preparations and usage information or materials and sources thereof, whether or not patentable, in each case that relate to the Baylor Patent Rights and are included within desorption and ionization strategies for the analysis of analytes and molecules and (A) have been developed in a laboratory at Baylor that was under the direct supervision of Hutchens or Tai-Tung Yip (“Yip”) or (B) that otherwise have been developed by Hutchens or Yip prior to September 14, 1993. The Baylor Technology includes, but is not limited to, biological, medical, mechanical, chemical, engineering and other scientific and practical information, drawings, specifications, notes, records, lab notebooks and other writings or compilations of information.
1.8 “CBI” shall mean Ciphergen Biosystems, Inc., a Delaware corporation.
1.9 “CTI” shall mean Ciphergen Technologies, Inc. (formerly ISP Acquisition Corporation), a California corporation and a wholly-owned subsidiary of CBI.
1.10 “CTI Agreement” shall mean that certain Technology Transfer Agreement between MAS and CTI dated April 7, 1997. A copy of the CTI Agreement is attached hereto as Exhibit B.
1.11 “Exclusive License Agreement” shall mean that certain Exclusive License Agreement between MAS and CBI executed at the same time and effective as of even date herewith.
1.12 “Hutchens” shall mean T. William Hutchens, an individual.
1.13 “IllumeSys” shall mean IllumeSys Pacific, Inc., a California corporation and a wholly-owned subsidiary of CBI.
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1.14 “IllumeSys Agreement” shall mean that certain Technology Transfer Agreement between MAS and IllumeSys dated April 7, 1997. A copy of the IllumeSys Agreement is attached hereto as Exhibit C.
1.15 “Improvement” shall mean any change or modification to an invention disclosed in the Baylor Patent Rights or comprising the Baylor Technology that, if unlicensed, would infringe one or more claims of any issued patent included within the Baylor Patent Rights and made in a laboratory at Baylor under the supervision of Hutchens and Yip during the four year period commencing on September 14, 1993.
1.16 “Licensed MAS Technology” shall mean the MAS Technology licensed to CBI and its Affiliates pursuant to Section 2.2(a) of the Exclusive License Agreement and the MAS Technology licensed pursuant to the MAS Agreements (as amended and assigned pursuant to Sections 2.1 through 2.4 of the Assignment Agreement).
1.17 “LumiCyte” shall mean LumiCyte, Inc., a California corporation.
1.18 “LumiCyte Agreement” shall mean that certain Technology Transfer Agreement II between MAS and LumiCyte, Inc. dated February 29, 2000, as amended November 6, 2001. The LumiCyte Agreement is attached hereto as Exhibit D.
1.19 “LumiGen” shall mean the predecessor name of LumiCyte.
1.20 “LumiGen Agreement” shall mean that certain Technology Transfer Agreement between MAS and LumiGen Corporation dated September 1, 1999, as amended November 6, 2001. The LumiGen Agreement is attached hereto as Exhibit E.
1.21 “MAS” shall mean Molecular Analytical Systems, Inc., a Texas corporation.
1.22 “MAS Agreements” shall mean, collectively, the CTI Agreement, the IllumeSys Agreement, the LumiCyte Agreement and the LumiGen Agreement.
1.23 “MAS Technology” shall mean all inventions, know-how, information, processes, formulae, patterns, compilations, programs, devices, methods, techniques, compounds, products,
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data, preparations and usage information or materials and sources thereof, whether or not patentable, which have been developed or otherwise acquired by MAS. MAS Technology shall not include the Baylor Technology and Improvements.
1.24 “Person” shall mean an individual, sole proprietorship, partnership, limited partnership, corporation, limited liability company, trust, unincorporated association, or other similar entity or organization, including a government or political subdivision, department or agency of a government.
1.25 “SEC” shall mean the United States Securities and Exchange Commission.
1.26 “Stock Purchase Agreement” shall mean that certain Stock Purchase Agreement between LumiCyte and CBI executed at the same time and effective as of even date herewith.
1.27 “Third Party” shall mean any Person other than the Parties and their Affiliates.
CBI shall pay LumiCyte Three Million Dollars ($3,000,000) within six (6) days after CBI has received fully-executed copies of each of this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement and the Stock Purchase Agreement, by wire transfer to the following account:
Silicon Valley Bank
ABA 121140399
Acct. No. 3300196374
Acct. Name LumiCyte, Inc.
3.1 Issuance. CBI shall issue One Million, Two Hundred Fifty Thousand (1,250,000) shares of CBI common stock to LumiCyte, all as described and set forth in more detail in the Stock Purchase Agreement.
3.2 Restrictions. Except as may be expressly provided for herein, for a period commencing with the Effective Date and ending on the earlier of (a) the date on which the
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Registration Statement (as defined in the Stock Purchase Agreement) is declared effective by the SEC and (b) sixty (60) days after the Execution Date, neither MAS, nor LumiCyte, nor Hutchens nor any of their affiliates (as defined in Securities and Exchange Act of 1934), if any, shall, without the prior written consent of CBI or its board of directors: (i) sell, offer for sale, short, make short sale of, loan, grant any options for the purchase of or otherwise dispose of, acquire, offer to acquire, or agree to acquire, directly or indirectly, by sale or purchase or otherwise, CBI common stock or any CBI voting securities or direct or indirect rights to acquire any voting securities of CBI or any subsidiary thereof, or of any successor to or person in control of CBI, or any assets of CBI or any subsidiary or division thereof or of any such successor or controlling person; (ii) make, or in any way participate, directly or indirectly, in any “solicitation” of “proxies” to vote (as such terms are used in the rules of the SEC), or seek to advise or influence any person or entity with respect to the voting of any voting securities of CBI; (iii) make any public announcement with respect to, or submit a proposal for, or offer of (with or without conditions) any extraordinary transaction involving CBI or any of its securities or assets; (iv) form, join or in any way participate in a “group” as defined in Section 13(d)(3) of the Securities Exchange Act of 1934, as amended, in connection with any of the foregoing; (v) otherwise act or seek to control or influence the management, board of directors or policies of CBI; (vi) take any action that could reasonably be expected to require CBI to make a public announcement regarding the possibility of any of the events described in clauses (i) through (v) above; or (vii) request CBI or any of its Affiliates or representatives, directly or indirectly, to amend or waive any provision of this Section 3.2.
4.1 Certain Representations and Covenants. Each of MAS, LumiCyte and Hutchens represents and covenants that, as of the Execution Date, upon execution and delivery of the Assignment Agreement and Exclusive License Agreement by all Parties, (i) CBI will exclusively own and control all right, title and interest of MAS, LumiCyte and Hutchens, respectively, in, under and to the Assigned Technology (including all of their respective patent, copyright and trade secret rights with respect thereto); (ii) Ciphergen, collectively, will be the exclusive licensee of the Licensed MAS Technology (including all patent, copyright and trade secret rights of MAS,
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LumiCyte, and Hutchens, respectively, with respect thereto); and (iii) Ciphergen, collectively, will be MAS’ exclusive sublicensee of the Baylor Technology and all Improvements.
4.2 Additional Representations and Covenants. Each of MAS, LumiCyte and Hutchens further represents and covenants that, after due inquiry by its directors and officers (in the case of MAS and LumiCyte), as of the Execution Date, upon execution and delivery of the Assignment Agreement and Exclusive License Agreement by all Parties, it (in the case of MAS and LumiCyte) or he (in the case of Hutchens), respectively, has not retained, does not have and shall not exploit any commercial or non-commercial rights in or under any Baylor Technology, Improvement, Licensed MAS Technology or Assigned Technology (including any patent, copyright and trade secret rights with respect to any of the foregoing). For clarity, nothing herein or in the Exclusive License Agreement, Assignment Agreement or any MAS Agreement (as amended pursuant to Article 2 of the Assignment Agreement) shall prevent MAS, LumiCyte or Hutchens from exploiting the Baylor Technology, any Improvement, or any Licensed MAS Technology, respectively, to the extent that a non-licensed Third Party would have the right to do so.
4.3 Retained Rights. Each of MAS, LumiCyte and Hutchens shall retain all right, title and interest in, to and under any technology and intellectual property rights not expressly granted to Ciphergen in the Exclusive License Agreement, Assignment Agreement or the MAS Agreements (as amended pursuant to Article 2 of the Assignment Agreement). Accordingly, CBI, CTI and IllumeSys agree that MAS, LumiCyte and Hutchens have not granted to CBI, CTI or IllumeSys any rights in, to or under any technology or intellectual property rights not included in the Baylor Technology, any Improvement, Licensed MAS Technology, or Assigned Technology (including all patent and trade secret rights with respect to any of the foregoing).
Each of MAS and LumiCyte (each on behalf of itself and its predecessors, successors, and parent and subsidiary corporations) and Hutchens hereby covenants and agrees not to challenge the validity or enforceability of any of the issued patents and patent applications naming Hutchens as an
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inventor or co-inventor allowed as of February 21, 2003, which patents and applications are identified in Exhibit F attached hereto.
Except to the extent required by applicable law or as otherwise permitted in accordance with this Article 6, no Party shall make any public announcements concerning this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement or the Stock Purchase Agreement or otherwise disclose the terms hereof or thereof, without the prior written consent of the other Parties; provided, however, that each Party shall have the right to disclose this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement and the Stock Purchase Agreement and the terms hereof and thereof (i) to existing or prospective advisors, investors, customers, collaborators, partners, joint venturers, and the like 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 Party; (v) in confidence, in connection with the enforcement of this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement or the Stock Purchase Agreement or rights hereunder or thereunder; or (vi) in confidence, in connection with a merger, acquisition of stock or assets, proposed merger or acquisition, licensing, distribution or other contractual relationship, proposed licensing, distribution or other contractual relationship, or the like.
7.1 Release. Each of CBI, IllumeSys, and CTI (for purposes of this Article 7, each a “Releasor”), on behalf of itself and its directors, officers, employees, predecessors, successors, heirs, assigns, agents, representatives, insurers, and attorneys, and each of them, releases MAS, LumiCyte, and Hutchens, and their respective past, present and future directors, officers, employees, successors, predecessors, heirs, assigns, agents, representatives, insurers, attorneys, and spouses (for purposes of this Article 7, each a “Releasee”) from any and all claims, demands, causes of action, obligations, liabilities, and damages, whether or not now known, fixed or contingent, suspected or claimed, which any of them ever had, now has, or claims to have had, from the beginning of time up to the Execution Date of this Settlement Agreement (collectively, “Plaintiffs’ Released Claims”). Notwithstanding the foregoing, no claims of any kind are being
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released for any acts, conduct or statements occurring after the Execution Date of this Settlement Agreement, including without limitation (i) any act or omission in breach of a Releasee’s obligations set forth in this Settlement Agreement, the Exclusive License Agreement, the Assignment Agreement or the Stock Purchase Agreement, even if the same or similar acts or omissions had occurred prior to the Execution Date; and (ii) any patent infringement that occurs after the Execution Date, notwithstanding that the same or similar acts may have occurred prior to the Execution Date (collectively, “Plaintiffs’ Unreleased Claims”).
7.2 Warranty of Authority. CBI, IllumeSys, and CTI each represents and warrants, after due inquiry by its directors and officers, that:
7.3 Unknown or Unanticipated Facts or Claims and Section 1542 Waivers. As concerns Plaintiffs’ Released Claims, CBI, IllumeSys, and CTI each expressly waives any rights or benefits available to it under Section 1542 of the California Civil Code, or of the provisions of any similar law of any other jurisdiction. Civil Code Section 1542 provides as follows:
“A general release does not extend to claims which the creditor does not know or suspect to exist in his favor at the time of executing the release, which if known by him must have materially affected his settlement with the debtor.”
CBI, IllumeSys and CTI each understands the statutory language of Section 1542 of the California Civil Code, but nevertheless elects to and hereby does release the Plaintiffs’ Released Claims, whether known or unknown, and specifically waives any rights that it has under Section 1542 as concerns Plaintiffs’ Released Claims. CBI, IllumeSys, and CTI each understands that if the facts with respect to this Settlement Agreement are found hereafter to be other than or
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different from the facts now believed to be true, it expressly accepts and assumes the risk of such possible difference in facts and agrees that this Settlement Agreement shall be and remain effective, notwithstanding any such difference.
8.1 Release. Each of MAS, LumiCyte, and Hutchens (for purposes of this Article 8, each a “Releasor”), on behalf of itself or himself and its or his directors, officers, employees, predecessors, successors, heirs, assigns, agents, representatives, insurers, and attorneys, and spouses, and each of them, releases CBI, IllumeSys, and CTI and their respective past, present and future directors, officers, employees, successors, predecessors, heirs, assigns, agents, representatives, insurers, and attorneys (for purposes of this Article 8, each a “Releasee”) from any and all claims, demands, causes of action, obligations, liabilities, and damages, whether or not now known, fixed or contingent, suspected or claimed, which any of them ever had, now has, or claims to have had, from the beginning of time up to the Execution Date of this Settlement Agreement (collectively, “Defendants’ Released Claims”). Notwithstanding the foregoing, no claims of any kind are being released for any acts, conduct or statements occurring after the Execution Date of this Settlement Agreement, including without limitation (i) any act or omission in breach of a Releasee’s obligations set forth in this Settlement Agreement, the License Agreement, the Assignment Agreement, or the Stock Purchase Agreement, even if the same or similar acts or omissions had occurred prior to the Execution Date; and (ii) any patent infringement that occurs after the Execution Date, notwithstanding that the same or similar acts may have occurred prior to the Execution Date (collectively, “Defendants’ Unreleased Claims”).
8.2 Warranty of Authority. MAS, LumiCyte, and Hutchens each represents and warrants, after due inquiry by its directors and officers (as appropriate), that:
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8.3 Unknown or Unanticipated Facts or Claims and Section 1542 Waivers. MAS, LumiCyte, and Hutchens each expressly waives any rights or benefits available to it under Section 1542 of the California Civil Code, or of the provisions of any similar law of any other jurisdiction. Civil Code Section 1542 provides as follows:
“A general release does not extend to claims which the creditor does not know or suspect to exist in his favor at the time of executing the release, which if known by him must have materially affected his settlement with the debtor.”
MAS, LumiCyte, and Hutchens each understands the statutory language of Section 1542 of the California Civil Code, but nevertheless elects to and hereby does release the Defendants’ Released Claims, whether known or unknown, and specifically waives any rights that it has under Section 1542. MAS, LumiCyte, and Hutchens each understands that if the facts with respect to this Settlement Agreement are found hereafter to be other than or different from the facts now believed to be true, it expressly accepts and assumes the risk of such possible difference in facts and agrees that this Settlement Agreement shall be and remain effective, notwithstanding any such difference.
9.1 MAS. MAS represents and warrants, after due inquiry by its directors and officers, and covenants that:
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9.2 LumiCyte. LumiCyte represents and warrants, after due inquiry by its directors and officers, and covenants that:
9.3 Ciphergen. CBI, IllumeSys, and CTI each represents and warrants, after due inquiry by its directors and officers, and covenants that it is a corporation duly organized, validly existing and in good standing under the laws of the State of Delaware in the case of CBI, and under the laws of California in the case of CTI and IllumeSys.
9.4 Disclaimers. EXCEPT FOR THOSE EXPRESS REPRESENTATIONS AND WARRANTIES IN THIS SETTLEMENT AGREEMENT, THE ASSIGNMENT AGREEMENT, THE EXCLUSIVE LICENSE AGREEMENT OR THE STOCK PURCHASE AGREEMENT, NO PARTY MAKES ANY REPRESENTATION OR WARRANTY, STATUTORY OR OTHERWISE IN SUCH AGREEMENTS.
The Parties agree that upon execution and delivery of this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement and the Stock Purchase Agreement they will execute and cause to be filed a stipulated judgment dismissing the Litigation with prejudice. The Parties agree that they waive and forego their right, if any, to challenge or appeal from the judgment of dismissal, the Court’s May 8, 2003 Order Re: Motion To Enforce Settlement Agreement, or any other order heretofore entered in the Litigation.
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MAS, LumiCyte, and Hutchens each expressly denies liability to CBI, IllumeSys, and CTI; and likewise, CBI, IllumeSys, and CTI each expressly denies liability to MAS, LumiCyte and Hutchens. The Parties agree that nothing about this Settlement Agreement, or its contents, constitutes any admission of wrongdoing or liability whatsoever.
Without limiting other possible assertions based on this Settlement Agreement, the Parties agree that this Settlement Agreement may be (i) asserted by any Party as a full and complete defense to any subsequent claim by a Releasor that constitutes either a Plaintiffs’ Released Claim or a Defendants’ Released Claim, as applicable, and (ii) asserted by CBI as a bar to any validity or enforceability challenge as described in Article 5 herein.
13.1 General. Except as otherwise expressly provided in Section 13.4 herein, any dispute concerning the interpretation or enforcement of the terms of this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement and the Stock Purchase Agreement shall be submitted for binding arbitration before the Judicial Arbitration and Mediation Service (“JAMS”) in San Francisco or San Jose, California, provided, however, that a Party initiating such arbitration shall first give written notice of the alleged dispute by facsimile and overnight mail, and shall allow forty-five (45) calendar days time thereafter to resolve such dispute before commencing arbitration.
13.2 Arbitrator. In the event of an arbitration, the Parties shall mutually cooperate to select a JAMS arbitrator, other than Hon. Edward A. Infante, who served as mediator for the Litigation settled herein.
13.3 Procedures. Any arbitration will be conducted in accordance with the then current JAMS Comprehensive Arbitration Rules. Nothing herein is intended to waive the provisions of
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California law pertaining to arbitration, including without limitation California Civil Procedure Code § 1283.05(A).
13.4 Other Disputes. Except as expressly set forth in Section 13.1, no dispute between the Parties need be submitted for binding arbitration, regardless of whether or not such dispute may arise out of or otherwise relate to this Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement, or the Stock Purchase Agreement. Without limiting the foregoing, it is understood that (i) no claim for patent infringement, and (ii) no Party’s assertion of this Settlement Agreement as provided in Article 12 above, need be submitted, in any circumstances, to binding arbitration.
14.1 Attorneys’ Fees and Costs. The Parties shall bear their own costs and attorneys’ fees incurred in the Litigation and settlement thereof, including negotiating and execution of this Settlement Agreement.
14.2 Notice and Service. All notices or correspondence to be given pursuant to this Settlement Agreement or relating to this Settlement Agreement shall be served at the following addresses:
All correspondence to CBI, IllumeSys, or CTI shall be mailed to:
Ciphergen Biosystems, Inc.
Attn: Vice President for Intellectual Property
6611 Dumbarton Circle
Fremont, CA 94555
(510) 505-2100 (tel.)
(510) 505-2101 (fax)
With a copy to:
Keker & Van Nest, LLP
Attn: Jeffrey R. Chanin, Esq.
710 Sansome Street
San Francisco, CA 94111
(415) 391-5400 (tel.)
(415) 397-7188 (fax)
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and
Wilson, Sonsini, Goodrich & Rosati
Attn: Michael J. O’Donnell, Esq.
650 Page Mill Road
Palo Alto, CA 94304-1050
(650) 493-9300 (tel.)
(650) 493-6811 (fax)
All correspondence to MAS, LumiCyte and Hutchens shall be mailed to:
LumiCyte, Inc.
Attn.: T. William Hutchens
48480 Lakeview Blvd.
Fremont, CA 94538
(510) 226-3990 (tel.)
(510) 226-4901 (fax)
With a copy to:
Thoits, Love, Hershberger & McLean
Attn.: Gregory Hull, Esq
and Terrence Connor, Esq.
245 Lytton Ave.
Palo Alto, CA 94301
(650) 327-4200 (tel.)
(650) 325-5572 (fax)
and
Ruby & Schofield
Attn.: Steve Ellenberg, Esq.
125 South Market St.
Suite 1001
San Jose CA 95113
(408) 998-8500 (tel.)
(408) 998-1952 (fax)
14.3 Governing Law. This Settlement Agreement shall be governed by and construed in accordance with the laws of the State of California, without reference to those provisions governing conflicts of law.
14.4 Compliance with Laws. Each Party shall comply with all applicable federal, state and local laws and regulations in connection with its activities pursuant to this Settlement Agreement.
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14.5 No Waiver. Failure of a Party to enforce a right under this Settlement Agreement shall not act as a waiver of that right or the ability to later assert that right relative to the particular situation involved.
14.6 Severability. The provisions of this Settlement Agreement are contractual, not mere recitals, and shall be construed severably such that, if any provision or part thereof shall at any time be prohibited by or invalid under applicable law, such provision or part shall remain in force to the fullest extent allowed by law and all other provisions shall remain in full force and effect.
14.7 Counterparts. This Settlement Agreement may be signed in any number of counterparts, each of which shall be an original, but all of which together shall constitute one instrument, and shall be binding and effective immediately upon the execution by all Parties of one or more counterparts.
14.8 Entire Agreement. This Settlement Agreement, the Assignment Agreement, the Exclusive License Agreement, the Stock Purchase Agreement, and the MAS Agreements as amended and assigned pursuant to Sections 2.1 through 2.4 of the Assignment Agreement together with the Exhibits and Schedules to all of the foregoing, constitute and contain the entire understanding and agreement of the Parties respecting the subject matter hereof and supersedes any and all other prior and contemporaneous negotiations, correspondence, understandings and agreements between the Parties, whether oral or written, regarding such subject matter, including, without limitation, that certain Stipulation for Settlement dated February 21, 2003; provided, however, that the MAS Agreements shall remain in effect as amended and assigned pursuant to Sections 2.1 through 2.4 of the Assignment Agreement. No agreements altering or supplementing the terms hereof may be made except by means of a written document signed by the duly authorized representatives of the Parties.
14.9 Construction and Joint Preparation.
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14.10 Authority. The undersigned representative for each Party certifies that he or she is fully authorized by the Party whom he or she represents to enter into the terms and conditions of this Settlement Agreement and to commit fully and bind such Party according to the provisions hereof.
14.11 Execution. This Settlement Agreement may be executed by facsimile signature, which shall be an equivalent to an original signature.
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IN WITNESS WHEREOF, the Parties have caused this Settlement Agreement to be executed by their respective duly authorized officers on the Execution Date, each copy of which will for all purposes be deemed to be an original.
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MOLECULAR ANALYTICAL SYSTEMS, INC. |
CIPHERGEN BIOSYSTEMS, INC. | ||||||||
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subsidiaries, CTI and IllumeSys) | ||||||||
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By: |
/s/ T. William Hutchens |
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By: |
/s/ William G. Rich |
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Name: |
T. William Hutchens |
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Name: |
William G. Rich |
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CEO |
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President & CEO |
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LUMICYTE, INC. |
T. WILLIAM HUTCHENS | ||||||||
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By: |
/s/ T. William Hutchens |
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/s/ T. William Hutchens |
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Name: |
T. William Hutchens |
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Title: |
CEO |
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EXEMPTED PATENTS
F-1
ISSUED PATENTS AND ALLOWED PATENT APPLICATIONS NAMING
T. WILLIAM HUTCHENS AS A CO-INVENTOR - CONFIDENTIAL
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Title |
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Status |
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Country |
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Serial No. |
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Filed |
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Patent No. |
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Issued |
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1 |
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METHOD AND APPARATUS FOR DESORPTION AND IONIZATION OF ANALYTES |
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ISSUED |
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AU |
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70483/94 |
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27-May-94 |
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676582 |
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07-Aug-97 |
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2 |
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METHOD AND APPARATUS FOR DESORPTION AND IONIZATION OF ANALYTES |
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ISSUED |
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NZ |
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267842 |
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27-May-94 |
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267842 |
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21-Jan-98 |
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3 |
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METHOD AND APPARATUS FOR DESORPTION AND IONIZATION OF ANALYTES |
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ISSUED |
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US |
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08/483,357 |
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07-Jun-95 |
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5,719,060 |
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17-Feb-98 |
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4 |
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SURFACE-ENHANCED NEAT DESORPTION FOR DESORPTION AND DETECTION OF ANALYTES |
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ISSUED |
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US |
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08/785,637 |
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17-Jan-97 |
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5,894,063 |
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13-Apr-99 |
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5 |
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SYSTEMS FOR SURFACE-ENHANCED AFFINITY CAPTURE FOR DESORPTION AND DETECTION OF ANALYTES |
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ISSUED |
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US |
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08/556,951 |
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27-Nov-95 |
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6,020,208 |
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01-Feb-00 |
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6 |
|
SURFACE-ENHANCED AFFINITY CAPTURE FOR DESORPTION AND DETECTION OF ANALYTES |
|
ISSUED |
|
US |
|
08/785,636 |
|
17-Jan-97 |
|
6,027,942 |
|
22-Feb-00 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
7 |
|
SURFACE-ENHANCED NEAT DESORPTION AND DETECTION OF ANALYTES |
|
ISSUED |
|
US |
|
09/095,407 |
|
10-Jun-98 |
|
6,124,137 |
|
26-Sep-00 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
8 |
|
USE OF RETENTATE CHROMATOGRAPHY TO GENERATE DIFFERENCE MAPS |
|
ISSUED |
|
US |
|
09/100,302 |
|
19-Jun-98 |
|
6,225,047 |
|
01-May-01 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
9 |
|
RETENTATE CHROMATOGRAPHY AND PROTEIN CHIP ARRAYS WITH APPLICATIONS IN BIOLOGY AND MEDICINE |
|
ISSUED |
|
SG |
|
9906243-2 |
|
19-Jun-98 |
|
69803 |
|
13-Jan-02 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
10 |
|
RETENTATE CHROMATOGRAPHY AND PROTEIN CHIP ARRAYS WITH APPLICATIONS IN BIOLOGY AND MEDICINE |
|
ISSUED |
|
JP |
|
11-504918 |
|
19-Jun-98 |
|
3287578 |
|
15-Mar-02 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
11 |
|
RETENTATE CHROMATOGRAPHY AND PROTEIN CHIP ARRAYS WITH APPLICATIONS IN BIOLOGY AND MEDICINE |
|
ISSUED |
|
NZ |
|
501837 |
|
19-Jun-98 |
|
501837 |
|
10-Jun-02 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
12 |
|
RETENTATE CHROMATOGRAPHY AND PROTEIN CHIP ARRAYS WITH APPLICATIONS IN BIOLOGY AND MEDICINE |
|
ISSUED |
|
NZ |
|
501838 |
|
19-Jun-98 |
|
501838 |
|
09-Dec-02 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
13 |
|
METHOD AND APPARATUS FOR DESORPTION AND IONIZATION OF ANALYTES |
|
ALLOWED |
|
US |
|
09/742,494 |
|
20-Dec-00 |
|
6,528,320 |
|
04-Mar-03 |
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
|
[*] |