Settlement Agreement - Sequenom Inc. and Hubert Koster
SETTLEMENT AGREEMENT
This Settlement Agreement ("Agreement") is made and entered into by and between
Hubert Koster ("Dr. Koster") and Sequenom, Inc. (the "Company"), as of the
eighth day after this Agreement is signed by Dr. Koster as provided in Section
18 herein. Dr. Koster and the Company hereby agree as follows:
1. Separation Date. Dr. Koster's employment with the Company shall be
voluntarily terminated effective May 31, 2000 (the "Separation Date") and he
will resign as an executive officer and employee of the Company as of the
Separation Date. On or before the Separation Date, Dr. Koster will be appointed
to the office of Vice-Chairman of the Board of Directors with the duties and
responsibilities as set forth from time to time in the Company's Bylaws. Dr.
Koster shall not be an executive officer of the Company as of the Separation
Date. Dr. Koster will maintain his position as a member of the Company's Board
of Directors ("BOD") and the Company's Scientific Advisory Board ("SAB"). Dr.
Koster acknowledges and agrees that his positions with the BOD and the SAB will
expire at the Company's next annual shareholder's meeting, unless a majority of
the other members of the BOD at that time, in their sole discretion, elect to
renew Dr. Koster's position on the BOD and/or the SAB. The Employment Agreement
between Dr. Koster and the Company effective July 1, 1997 (the "Employment
Agreement"), attached hereto as Exhibit A, will terminate as of the Separation
Date and will no longer have any force or effect, except as expressly provided
in this Agreement.
2. Accrued Salary And Vacation. The Company agrees that it will pay Dr. Koster
all accrued salary, and all accrued and unused vacation benefits earned through
the Separation Date, if any, subject to standard payroll deductions, withholding
taxes and other obligations. Dr. Koster is entitled to this payment regardless
of whether or not he signs this Agreement
3. Expense Reimbursement. Within sixty (60) business days of his execution of
this Agreement, Dr. Koster agrees that he will submit his final documented
expense reimbursement statement reflecting all business expenses he incurred
prior to and including the Separation Date, if any, for which he seeks
reimbursement, pursuant to Company policy and regular business practice. After
the Separation Date, the Company will reimburse Dr. Koster for all reasonable
business expenses that he incurs in connection with his service as a Vice-
Chairman and member of the BOD, as a member of the SAB, as a consultant
(including his performance under Exhibit B), or in performing any obligation
under Section 14 of this Agreement, pursuant to Company policy and regular
business practice.
4. Severance. The Company agrees to make severance payments to Dr. Koster in
the amount of five hundred fifty thousand dollars ($550,000), less standard
deductions and withholdings, on the Effective Date of this Agreement. In
addition, the Company agrees to pay Dr. Koster thirty thousand dollars
($30,000), less standard deductions and withholdings, per month, as well as the
amount necessary to cover the lease payments on his Company car, through the
earlier of: one (1) year from the Separation Date or the date on which Dr.
Koster commences full-time employment with another employer or entity (the
"Severance Period"). The monthly payments during the Severance Period will be
made on the Company's ordinary payroll dates, and will be subject to standard
payroll deductions and withholdings.
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5. Consulting. Dr. Koster and the Company agree that during the Severance
Period and in partial consideration for severance payments provided in Section 4
herein, Dr. Koster shall serve as a consultant, subject to the terms herein.
(a) Consulting Services. During the Severance Period, Dr. Koster shall b
available to consult with the Company as requested by the Company's Chief
Executive Officer, Chief Scientific Officer, Chief Financial Officer or Chairman
of the Board of Directors. Dr. Koster's consulting services shall be performed
via telephone, computer communications, or facsimile unless he is specifically
requested, with reasonable advance notice, to come to Company premises; and Dr.
Koster will not have an office on Company premises during the Severance Period.
Dr. Koster agrees not to contact Company employees to discuss Company business,
except as necessary in the performance of his duties as a member of the BOD or
SAB. Dr. Koster agrees not to make any presentations regarding or relating to
the Company without the prior written approval of the Company's CEO.
(b) No Agency or Employment Relationship. During the Severance Period, Dr.
Koster will not be considered an agent or an employee of the Company, Dr. Koster
will not have authority to make any representation, contract, or commitment on
behalf of the Company and Dr. Koster agrees not to do so; and, except as
otherwise provided in this Agreement, he will not be entitled to any of the
benefits which the Company may make available to its employees, such as group
insurance, profit sharing, or retirement benefits.
(C) Other Work Activities. During the Severance Period, Dr. Koster may
engage in employment, consulting or other work relationships in addition to his
work for the Company, provided that they do not violate the terms of Section 10
herein; provided, however, that upon commencement of full-time employment with
another employer or entity, the Severance Period will end in accordance with
Section 4 herein. The Company agrees to make reasonable arrangements to enable
Dr. Koster to perform his consulting services for the Company at such times and
in such a manner so that it does not unreasonably interfere with other work
activities in which he may engage.
(d) Consulting Information. Dr. Koster and the Company will execute and
abide by the Consultant Proprietary Information and Inventions Agreement in the
form attached hereto as Exhibit B (the "Consultant Inventions Agreement").
6. Insurance Benefits. During the Severance Period, the Company will reimburse
Dr. Koster for the full amount of Dr. Koster's COBRA health insurance premium
necessary to obtain health insurance coverage equivalent to the coverage for Dr.
Koster and his family received during Dr. Koster's employment.
7. Company Stock.
(a) Terminated Stock Option. The Company and Dr. Koster agree that the
stock option to purchase 200,000 shares of the Company's Common Stock granted to
Dr. Koster on February 11, 2000 will be terminated as of the Effective Date of
this Agreement and will no longer have any force or effect.
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(b) Repurchased Shares. The Company and Dr. Koster agree that with respect
to 30,000 shares of Common Stock purchased by Dr. Koster, but subject to a right
of repurchase in favor of the Company, Dr. Koster's service will be deemed to
have been terminated, and pursuant to the Company's 1998 Stock Option/Stock
Issuance Plan and the governing Stock Option Agreements and Stock Purchase
Agreements, the Company will exercise its right to repurchase such thirty
thousand shares of Common Stock in exchange for a payment of ninety thousand
dollars ($90,000) which the Company will pay to Dr. Koster on the Effective
Date. This ninety thousand dollar ($90,000) payment is in addition to the
severance payments described in Section 4 of this Agreement.
(c) Unvested Shares. Thus, as of the Effective Date, Dr. Koster will have
218,929 exercised but unvested shares ("Unvested Exercised Shares") of the
Company's Common Stock and 541,071 vested shares of the Company's Common Stock,
for a total of 760,000 vested and unvested shares of the Company's Common Stock,
which will continue to be governed by the terms of the Company's 1998 Stock
Option/Stock Issuance Plan and the governing Stock Option Agreements and Stock
Purchase Agreements, except as expressly set forth in Section 7(d) herein. Dr.
Koster and the Company agree that in exchange for the promises and covenants set
forth herein and as long as Dr. Koster continues to provide services as a member
of the BOD, the vesting of Dr. Koster's Unvested Exercised Shares of Common
Stock shall continue in accordance with the terms of the Company's 1998 Stock
Option/Stock Issuance Plan and the governing Stock Option Agreements and Stock
Purchase Agreements. The Company retains its right to repurchase the Unvested
Exercised Shares pursuant to the terms of its 1998 Stock Option/Stock Issuance
Plan and the governing Stock Option Agreements and Stock Purchase Agreements.
(d) Special Accelerated Vesting. Notwithstanding the provisions of Section
7(c) herein, the Company and Dr. Koster agree that with respect to 60,000 shares
of Common Stock purchased by Dr. Koster upon early exercise of a stock option
granted to him on or about July 9, 1999 but subject to a right of repurchase in
favor of the Company, on the later of (i) the last day of Dr. Koster's service
as a member of the BOD or (ii) the last day of Dr. Koster's service as a member
of the SAB, the Company will relinquish all of its rights to repurchase any
remaining unvested position of such shares such that all 60,000 of those shares
will be held by Dr. Koster without being subject to a right of repurchase in
favor of the Company as of the applicable last day of service.
8. Company Car. In exchange for the promises and covenants set forth herein,
the Company agrees to transfer the lease on Dr. Koster's Company car to Dr.
Koster personally and to pay for the lease payments on the car as provided in
Section 4 herein.
9. Other Compensation And Benefits. Except as expressly provided herein, Dr.
Koster acknowledges and agrees that he is not entitled to and will not receive
any additional compensation, severance, stock options, stock or benefits from
the Company.
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10. Non-compete And Non-solicitation.
(a) Non-compete: In exchange for the promises and covenants herein, Dr.
Koster agrees that during the Severance Period:
(i) Dr. Koster will not engage, directly or indirectly, whether as an
owner, employee, officer, director, agent, consultant or otherwise, in a
business using DNA MassARRAY technology or other genomic activities conducted by
the Company, including, but not limited to determination of utility for genetic
materials, provided, however, that the ownership of two percent (2%) or less of
the stock of a company whose shares are listed on a national securities exchange
or are quoted on the National Association of Securities Dealers Automated
Quotation System shall not be deemed ownership or having an interest which is
prohibited hereunder; and
(ii) Dr. Koster will not solicit or accept any business from any
customer of the Company for products or services relating to DNA MassARRAY
technology or other genomic activities conducted by the Company, including, but
not limited to determination of utility for genetic materials, or request,
induce or advise customers of the Company to withdraw, curtail or cancel their
business with the Company.
(b) Nonsolicitation. Pursuant to Section 9 of the Employment Agreement,
Dr. Koster agrees that for one (1) year following the Separation Date, Dr.
Koster will not, either directly or indirectly: (1) call on, solicit, or take
away any of the customers of the Company on whom Dr. Koster called or with whom
he became acquainted or had any personal contact during his employment with the
Company, either for himself of for any other person or entity, or (2) solicit or
take away, or attempt to solicit or take away any employees of the Company,
either for himself or for any other person or entity.
11. Termination Of Company's Obligations. Notwithstanding any provisions in
this Agreement to the contrary, the Company's obligations, and Dr. Koster's
rights pursuant to Section 7 herein, regarding the continued or accelerated
vesting of Common Stock held by Dr. Koster may, at the Company's discretion,
cease if both: (a) Dr. Koster fails to comply with any of the provisions of
Section 10 herein; and (b) the Company notifies Dr. Koster in writing that he
has failed to comply. Unless and until both conditions are met, the Common Stock
held by Dr. Koster will continue to vest as provided in Section 7 herein.
12. No Further Employment With The Company. Dr. Koster understands and agrees
that, as a condition of this Agreement, Dr. Koster shall not be entitled to any
employment with the Company, its parents or subsidiaries, and Dr. Koster hereby
waives any right, or alleged right, of employment or re-employment with the
Company and any of its parents or subsidiaries. Dr. Koster further agrees that
he will only be eligible to apply for employment with the Company, its parents
or subsidiaries, if he obtains prior written consent from the Company, which
consent may be withheld for any reason or no reason.
13. Return Of Company Property. Dr. Koster acknowledges and agrees to comply
with Section 15 of the Employment Agreement, except to the extent that he
reasonably needs property
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described in that section to perform his duties as a member of the BOD or SAB,
or as a consultant.
14. Proprietary Information Obligations And Company Developments. Dr. Koster
acknowledges and agrees to comply with Sections 10 and 11 of the Employment
Agreement, as they govern Confidential Information and Developments made while
he was employed with the Company. In addition, Dr. Koster will assist the
Company in every proper way to obtain, and from time to time enforce, United
States and foreign proprietary rights relating to the Company's Developments
made before the Separation Date (as defined in Section 11 of the Employment
Agreement) in any and all countries. To that end Dr. Koster will execute, verify
and deliver such documents and perform such other acts (including appearances as
a witness) as the Company may reasonably request for use in applying for,
obtaining, perfecting, evidencing, sustaining and enforcing such Developments
and the assignment thereof. In addition, he will execute, verify and deliver
assignments of such Developments to the Company or its designee.
In the event the Company is unable for any reason, after reasonable effort, to
secure Dr. Koster's signature on any document needed in connection with the
actions specified in the preceding paragraph, Dr. Koster hereby irrevocably
designates and appoints the Company and its duly authorized officers and agents
as his agent and attorney in fact, which appointment is coupled with an
interest, to act for and in his behalf to execute, verify and file any such
documents and to do all other lawfully permitted acts to further the purposes of
the preceding paragraph with the same legal force and effect as if executed by
Dr. Koster. Dr. Koster hereby waives and quitclaims to the Company any and all
claims, of any nature whatsoever, which he now or may hereafter have for
infringement of any proprietary rights assigned hereunder to the Company.
15. Non-disparagement. Dr. Koster agrees on behalf of himself and his family
members and the Company agrees that each of them will not at any time disparage
the other party, and the other party's officers, directors, employees,
shareholders, agents or family members, in any manner likely to be harmful to
them or their business, business reputation or personal reputation; provided
that each party shall respond accurately and fully to any questions, inquiry or
request for information when required by legal process.
16. Confidentiality And Publicity. The provisions of this Agreement shall be
held in strictest confidence by Dr. Koster and the Company and shall not be
publicized or disclosed in any manner whatsoever; provided, however, that: (a)
Dr. Koster may disclose this Agreement, in confidence, to Dr. Koster's immediate
family; (b) the parties may disclose this Agreement in confidence to their
respective attorneys, accountants, auditors, tax preparers, and financial
advisors; (c) the Company may disclose this Agreement as necessary to fulfill
standard or legally required corporate reporting or disclosure requirements; and
(d) the parties may disclose this Agreement insofar as such disclosure may be
necessary to enforce its terms or as otherwise required by law. If either party
to this Agreement fails to comply with its obligations under this Section 16,
the other party will be relieved of its obligations under this Section 16.
17. Release Of Claims. In exchange for the promises and covenants set forth
herein, Dr. Koster hereby releases, acquits, and forever discharges the Company,
its parents and subsidiaries, and their officers, directors, agents, servants,
employees, attorneys, shareholders,
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partners, successors, assigns, affiliates, customers, and clients of and from
any and all claims liabilities, demands, causes of action, costs, expenses,
attorneys' fees, damages, indemnities and obligations of every kind and nature,
in law, equity, or otherwise, known and unknown, suspected and unsuspected,
disclosed and undisclosed ("Claims"), (including but not limited to any federal,
state or local law or cause of action including, but not limited to, the
California Fair Employment and Housing Act, the federal Civil Rights Act of
1964, as amended; the federal Age Discrimination in Employment Act of 1967, as
amended; the federal Americans With Disabilities Act; tort law; contract law;
wrongful discharge; discrimination; harassment; fraud; defamation; emotional
distress; and breach of the implied covenant of good faith and fair dealing),
but only to the extent that such Claims directly or indirectly arise out of or
are in any way connected with: (a) the Company's employment of Dr. Koster, (b)
the termination of that employment, (c) the Company's performance of its
obligations as Dr. Koster's former employer; (d) claims or demands related to
salary, bonuses, commissions, stock, stock options, or any other ownership
interests in the Company, or (e) vacation pay, fringe benefits, expense
reimbursements, severance pay, or any form of compensation.
Notwithstanding the foregoing, this release does not include, and Dr.
Koster expressly reserves, any Claims arising out of or in any way connected
with: (a) the Company's obligations under this Agreement, or (b) the Company's
obligations under law or the Company's Bylaws to indemnify, defend, or hold
harmless Dr. Koster.
18. ADEA Waiver. Dr. Koster further acknowledges that he is knowingly and
voluntarily waiving and releasing any rights he may have under the Age
Discrimination in Employment Act of 1967 ("ADEA"). Dr. Koster also acknowledges
that the consideration given for the waiver and release in the preceding
paragraphs hereof is in addition to anything of value to which Dr. Koster was
already entitled. Dr. Koster hereby provides the further acknowledgment that he
is advised by this writing, as required by the Older Workers Benefit Protection
Act, that: (a) his waiver and release do not apply to any rights or claims that
may arise after the Effective Date of this Agreement; (b) he has the right to
consult with an attorney prior to executing this Agreement (although Dr. Koster
may voluntarily choose not to do so); (c) Dr. Koster may have at least twenty-
one (21) days to consider this Agreement (although Dr. Koster may by his own
choice execute this Agreement earlier); (d) Dr. Koster has seven (7) days
following the execution of this Agreement to revoke this Agreement; and (e) this
Agreement shall not be effective until the date upon which the revocation period
has expired, therefore making the effective date the eighth day after this
Agreement is signed by Dr. Koster (the "Effective Date").
19. Section 1542 Waiver. The Company and Dr. Koster hereby acknowledge that
each has read and understands Section 1542 of the Civil Code of the State of
California which reads 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.
Dr. Koster and the Company hereby expressly waive and relinquish all rights and
benefits under this section to the extent it relates to the subject matter of
the releases granted by the parties
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herein and any law or legal principle of similar effect in any jurisdiction with
respect to claims released hereby.
20. Release Of Claims By The Company. The Company hereby releases, acquits and
forever discharges Dr. Koster and his agents, successors, assigns and affiliates
from any and all claims, liabilities, demands, causes of action, costs,
expenses, attorneys' fees, damages, indemnities and obligations of every kind in
nature, in law, equity or otherwise arising out of or in any way related to
agreements, events, acts or conduct at any time prior to and including the date
the Company executes this Agreement, relating to any act or omission by Dr.
Koster within the authorized course and scope of his employment with the
Company, with the exception of any claim arising out of his obligations under
this Agreement, including, but not limited to, any obligations relating to the
proprietary information of the Company. The Company, its officers, directors and
managerial employees acknowledge that as of the Separation Date they have no
knowledge, information or belief that Dr. Koster has performed any act or
omission outside the authorized course and scope of his employment.
21. No Admissions. The parties hereto hereby acknowledge that this is a
compromise settlement of various matters, and that the promised payments in
consideration of this Agreement shall not be construed to be an admission of any
liability or obligation by either party to the other party or to any other
person whomsoever.
22. Entire Agreement. This Agreement, including Exhibits A and B constitutes
the complete, final and exclusive embodiment of the entire Agreement between Dr.
Koster and the Company with regard to the subject matter hereof. It is entered
into without reliance on any promise or representation, written or oral, other
than those expressly contained herein. It may not be modified except in a
writing signed by Dr. Koster and a duly authorized officer of the Company. Each
party has carefully read this Agreement, has been afforded the opportunity to be
advised of its meaning and consequences by his or its respective attorneys, and
signed the same of his or its free will.
23. Successors And Assigns. This Agreement shall bind the heirs, personal
representatives, successors, assigns, executors, and administrators of each
party, and inure to the benefit of each party, its agents, directors, officers,
employees, servants, heirs, successors and assigns.
24. Applicable Law. This Agreement shall be deemed to have been entered into
and shall be construed and enforced in accordance with the laws of the State of
California as applied to contracts made and to be performed entirely within
California.
25. Arbitration. To ensure rapid and economical resolution of any disputes
which may arise under this Agreement or the Consultant Inventions Agreement
(Exhibit B hereto), Dr. Koster and the Company agree that any and all disputes
or controversies of any nature whatsoever, arising from or regarding the
interpretation, performance, enforcement or breach of this Agreement or the
Consultant Inventions Agreement shall be resolved by confidential, final and
binding arbitration (rather than trial by jury or court or resolution in some
other forum) to the fullest extent permitted by law. Any arbitration proceeding
pursuant to this Agreement shall be conducted by the American Arbitration
Association ("AAA") under the then-existing AAA
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employment-related arbitration rules. If for any reason all or part of this
arbitration provision is held to be invalid, illegal or unenforceable in any
respect under any applicable law or rule in any jurisdiction, such invalidity,
illegality or unenforceability will not affect any other portion of this
arbitration provision or any other jurisdiction, but this provision will be
reformed, construed and enforced in such jurisdiction as if such invalid,
illegal or unenforceable part or parts of this provision had never been
contained herein, consistent with the general intent of the parties insofar as
possible. The prevailing party in such arbitration proceeding shall be entitled
to recover from the other party reasonable attorneys' fees, arbitration expenses
and other recoverable costs incurred in connection with such arbitration
proceeding.
26. Severability. If a court of competent jurisdiction determines that any
term or provision of this Agreement is invalid or unenforceable, in whole or in
part, then the remaining terms and provisions hereof shall be unimpaired. Such
court will have the authority to modify or replace the invalid or unenforceable
term or provision with a valid and enforceable term or provision that most
accurately represents the parties' intention with respect to the invalid or
unenforceable term or provision.
27. Indemnification. Each party will indemnify and save harmless each other
party hereto from any loss incurred directly or indirectly by reason of the
falsity or inaccuracy of any representation made in Section 28 below.
Notwithstanding any other provision of this Agreement, the Company will to the
maximum extent required by law or the Company's Bylaws, indemnify, defend, and
hold harmless Dr. Koster from any loss or claim arising out of or related to Dr.
Koster's past or future service as an employee, consultant, officer, director or
scientific advisor.
28. Authorization. Each party warrants and represents that there are no liens
or claims of lien or assignments in law or equity or otherwise of or against any
of the claims or causes of action released herein and, further, that Dr. Koster
are fully entitled and duly authorized to give Dr. Koster complete and final
general release and discharge.
29. Counterparts. This Agreement may be executed in two counterparts, each of
which shall be deemed an original, all of which together shall constitute one
and the same instrument.
30. Section Headings. The section and paragraph headings contained in this
Agreement are for reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement.
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31. Press Release. The Company and Dr. Koster will agree upon a mutually
acceptable press release regarding the termination of Dr. Koster's employment.
In the event that such press release is not mutually agreed upon by the close of
the Nasdaq Stock Market on Wednesday, May 31, 2000, the Company may issue its
version of the press release without Dr. Koster's approval.
Hubert Koster,
an individual.
/s/ HUBERT KOSTER
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Hubert Koster
Dated: May 31, 2000
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Sequenom, Inc.
By: /s/ HELMUT SCHUHSLER
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Helmut Schuhsler
Chairman of the Board
Dated: June 6, 2000
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EXHIBIT A
EMPLOYMENT AGREEMENT
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EXHIBIT B
CONSULTANT PROPRIETARY INFORMATION
AND INVENTIONS AGREEMENT
In consideration of entering into a consulting relationship with Sequenom,
Inc. (the "Company") as described in the Settlement Agreement between the
Company and me signed on May 31, 2000 and the fees now and hereafter paid to me
during the Severance Period defined in that Settlement Agreement, I hereby agree
to the terms of this Consultant Proprietary Information and Inventions Agreement
(the "Agreement") as follows:
1. Recognition of Company's Rights; Nondisclosure. At all times during
the term of my consulting relationship and for three (3) years
thereafter, I will hold in strictest confidence and will not disclose,
use, lecture upon or publish any of the Company's Proprietary
Information (defined below), except as such disclosure, use or
publication may be required in connection with my work for the
Company, or unless an officer of the Company expressly authorizes such
in writing. I hereby assign to the Company any rights I may have or
acquire in such Proprietary Information and recognize that all
Proprietary Information shall be the sole property of the Company and
its assigns and the Company and its assigns shall be the sole owner of
all trade secret rights, patent rights, copyrights, mask work rights
and all other rights throughout the world (collectively, "Proprietary
Rights") in connection therewith.
The term "Proprietary Information" shall mean trade secrets, confidential
knowledge, data or any other proprietary information of the Company. By way of
illustration but not limitation, "Proprietary Information" includes (a) trade
secrets, inventions, mask works, ideas, processes, formulas, source and object
codes, data, programs, other works of authorship, know-how, improvements,
discoveries, developments, designs and techniques (hereinafter collectively
referred to as "Inventions"); and (b) information regarding plans for research,
development, new products, marketing and selling, business plans, budgets and
unpublished financial statements, licenses, prices and costs, suppliers and
customers; and information regarding the skills and compensation of employees or
other consultants of the Company.
2. Third Party Information. I understand, in addition, that the Company
has received and in the future will receive from third parties
confidential or proprietary information ("Third Party Information")
subject to a duty on the Company's part to maintain the
confidentiality of such information and to use it only for certain
limited purposes. During the term of my consulting relationship and
thereafter, I will hold Third Party Information in the strictest
confidence and will not disclose (to anyone other than Company
personnel who need to know such information in connection with their
work for the Company) or use, except in connection with my work for
Third Party Information. I understand, in addition, that the Company
has received and in the future will receive from third parties
confidential or proprietary information ("Third Party Information")
subject to a duty on the Company's part to maintain the
confidentiality of such information and to use it only for certain
limited purposes. During the term of my consulting relationship and
thereafter, I will hold Third Party Information in the strictest
confidence and will not disclose (to anyone other than Company
personnel who need to know such information in connection with their
work for the Company) or use, except in connection with my work for
the Company, Third Party Information unless expressly authorized by an
officer of the Company in writing.
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3. Assignment of Inventions.
3.1 Assignment. I hereby assign to the Company all my right, title
and interest in and to any and all Inventions (and all Proprietary Rights with
respect thereto) whether or not patentable or registrable under copyright or
similar statutes, made or conceived or reduced to practice or learned by me,
either alone or jointly with others, during the period of my consulting
relationship with the Company. Inventions assigned to or as directed by the
Company by this paragraph three (3) are hereinafter referred to as "Company
Inventions. " I recognize that this Agreement does not require assignment of any
invention which, if I was an employee of the Company, would fully qualify for
protection under Section 2870 of the California Labor Code (hereinafter "Section
2870"), which provides as follows:
(a) Any provision in an employment agreement which provides that
a employee shall assign, or offer to assign, any of his or her rights in an
invention to his or her employer shall not apply to an invention that the
employee developed entirely on his or her own time without using the employer's
equipment, supplies, facilities, or trade secret information except for those
inventions that either:
(i) Relate at the time of conception or reduction to
practice of the invention to the employer's business, or actual or demonstrably
anticipated research or development of the employer.
(ii) Result from any work performed by the employee for the
employer.
(b) To the extent a provision in an employment agreement
purports to require an employee to assign an invention otherwise excluded from
being required to be assigned under subdivision (i), the provision is against
the public policy of this state and is unenforceable.
3.2 Works for Hire. I acknowledge that all original works of
authorship which are made by me (solely or jointly with others) within the scope
of my consulting work and which are protectable by copyright are "works made for
hire, " as that term is defined in the United States Copyright Act (17 U.S.C.,
Section 101).
4. Enforcement of Proprietary Rights. I will assist the Company in every
proper way to obtain and from time to time enforce United States and
foreign Proprietary Rights relating to Company Inventions in any and
all countries. To that end I will execute, verify and deliver such
documents and perform such other acts (including appearances as a
witness) as the Company may reasonably request for use in applying
for, obtaining, perfecting, evidencing, sustaining and enforcing such
Proprietary Rights and the assignment thereof. In addition, I will
execute, verify and deliver assignments of such Proprietary Rights to
the Company or its designee. My obligation to assist the Company with
respect to Proprietary Rights relating to such Company Inventions in
any and all countries shall continue beyond the termination of my
consulting relationship, but the Company shall
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compensate me at a reasonable rate after my termination for the time
actually spent by me at the Company's request on such assistance.
In the event the Company is unable for any reason, after reasonable effort,
to secure my signature on any document needed in connection with the actions
specified in the preceding paragraph, I hereby irrevocably designate and appoint
the Company and its duly authorized officers and agents as my agent and attorney
in fact, which appointment is coupled with an interest, to act for and in my
behalf to execute, verify and file any such documents and to do all other
lawfully permitted acts to further the purposes of the preceding paragraph with
the same legal force and effect as if executed by me. I hereby waive and
quitclaim to the Company any and all claims, of any nature whatsoever, which I
now or may hereafter have for infringement of any Proprietary Rights assigned
hereunder to the Company.
5. Obligation to Keep Company Informed. During the period of my
consulting and for six (6) months after termination of my consulting
relationship with the Company, if the Company requests such disclosure
in writing, I will promptly disclose to the Company fully and in
writing any Inventions that could relate to the Company's Proprietary
Information authored, conceived or reduced to practice by me, either
alone or jointly with others. In addition, I will promptly disclose to
the Company all patent applications filed by me or on my behalf within
a year after termination of my consulting relationship. At the time of
each such disclosure, I will advise the Company in writing of any
Inventions that I believe fully qualify for protection under Section
2870 if I was an employee of the Company; and I will at that time
provide to the Company in writing all evidence necessary to
substantiate that belief. The Company will keep in confidence and will
not disclose to third parties without my consent any proprietary
information disclosed in writing to the Company pursuant to this
Agreement relating to Inventions that would qualify fully for
protection under the provisions of Section 2870 if I was an employee;
and I will preserve the confidentiality of any Invention that does not
fully qualify for protection under Section 2870.
I agree to keep and maintain adequate and current records (in the form of
notes, sketches, drawings and in any other form that may be required by the
Company) of all Proprietary Information developed by me and all Inventions made
by me during the period of my consulting relationship with the Company, which
records shall be available to and remain the sole property of the Company at all
times.
6. Prior Inventions. Inventions, if any, patented or unpatented, which I
made prior to the commencement of my consulting relationship with the
Company are excluded from the scope of this Agreement. To preclude any
possible uncertainty, I have set forth on Exhibit A attached hereto a
complete list of all Inventions that I have, alone or jointly with
others, conceived, developed or reduced to practice or caused to be
conceived, developed or reduced to practice prior to the commencement
of my consulting relationship with the Company, that I consider to be
my property or the property of third parties and that I wish to have
excluded from the scope of this Agreement. If disclosure of any such
Invention on Exhibit A would cause me to violate any prior
confidentiality agreement, I
3.
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understand that I am not to list such Inventions in Exhibit A but am
to inform the Company that all such Inventions have not been listed
for that reason.
7. Additional Activities. I agree that during the period of my consulting
relationship with the Company I retain the right to engage in
employment or business activities for entities other than the Company,
so long as such other work activities are not in competition with the
Company's business endeavors and do not raise a conflict of interest
with my obligations to the Company.
8. No Improper Use of Materials. During my consulting relationship with
the Company I will not improperly use or disclose any confidential
information or trade secrets, if any, of any former employer or any
other person or entity to whom I have an obligation of
confidentiality, and I will not bring onto the premises of the Company
any unpublished documents or any property belonging to any former
employer or any other person or entity to whom I have an obligation of
confidentiality unless consented to in writing by that former
employer, person or entity. I will use in the performance of my duties
only information which is generally known and used by persons with
training and experience comparable to my own, which is common
knowledge in the industry or otherwise legally in the public domain,
or which is otherwise provided or developed by the Company.
9. No Conflicting Obligation. I represent that my performance of all the
terms of this Agreement and as a Consultant for the Company does not
and will not breach any agreement to keep in confidence information
acquired by me in confidence or in trust prior to my independent
consulting relationship with the Company. I have not entered into, and
I agree I will not enter into, any agreement either written or oral in
conflict herewith.
10. Return of Company Documents. When my consulting relationship with the
Company terminates, I will deliver to the Company any and all
drawings, notes, memoranda, specifications, devices, formulas, and
documents, together with all copies thereof, and any other material
containing or disclosing any Company Inventions, Third Party
Information or Proprietary Information of the Company. I further agree
that any property situated on the Company's premises and owned by the
Company, including disks and other storage media, filing cabinets or
other work areas, is subject to inspection by Company personnel at any
time with or without notice.
11. Notices. Any notices required or permitted hereunder shall be given to
the appropriate party at the address specified below or at such other
address as the party shall specify in writing. Such notice shall be
deemed given upon personal delivery to the appropriate address or if
sent by recognized overnight courier two (2) days after the date of
mailing.
4.
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12. General Provisions.
12.1 Governing Law. This Agreement will be governed by and
construed according to the laws of the State of California.
12.2 Entire Agreement. This Agreement and the Settlement Agreement
between Dr. Koster and the Company represent the exclusive agreement of the
parties with respect to the subject matter hereof. No modification of or
amendment to this Agreement, nor any waiver of any rights under this Agreement,
will be effective unless in writing and signed by the party to be charged.
12.3 Severability. If one or more of the provisions in this
Agreement are deemed unenforceable by law, then such provision will be deemed
stricken from this Agreement and the remaining provisions will continue in full
force and effect.
12.4 Successors and Assigns. This Agreement will be binding upon my
heirs, executors, administrators and other legal representatives and will be for
the benefit of the Company, its successors, and its assigns.
12.5 Survival. Sections 1,2,3,4,5,13.1 of this Agreement shall
survive the termination of my consulting relationship and the assignment of this
Agreement by the Company to any successor in interest or other assignee.
12.6 Consulting Relationship. I agree and understand that nothing
in this Agreement shall confer any right with respect to continuation of my
consulting relationship by the Company, nor shall it interfere in any way with
my right or the Company's right to terminate my consulting relationship.
12.7 Waiver. No waiver by the Company of any breach of this
Agreement shall be a waiver of any preceding or succeeding breach. No waiver by
the Company of any right under this Agreement shall be construed as a waiver of
any other right. The Company shall not be required to give notice to enforce
strict adherence to all terms of this Agreement.
This Agreement shall be effective as of the first day of my work as a
Consultant with the Company, namely: June 8, 2000.
I HAVE READ THIS AGREEMENT CAREFULLY AND UNDERSTAND ITS TERMS. I HAVE
COMPLETELY FILLED OUT EXHIBIT A TO THIS AGREEMENT.
Dated: May 31, 2000 /s/ HUBERT KOSTER
-------------- ------------------------------------
Signature
Hubert Koster
ACCEPTED AND AGREED TO:
5.
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Dated: June 6, 2000 Sequenom, Inc.
----------------
/s/ HELMUT SCHUHSLER
--------------------------
Helmut Schuhsler
Chairman of the Board
6.
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Exhibit A
To: Sequenom, Inc.
From: Hubert Koster
Date: _____________
Re: Prior Inventions
________________________________________________________________________________
1. The following is a complete list of all inventions or improvements
relevant to the subject matter of my work as a Consultant with the Company that
have been made or conceived or first reduced to practice by me alone or jointly
with others prior to my engagement by the Company:
[_] No inventions or improvements.
[_] See below:
. 1. US Provisional Patent Application Serial No. 60/015,699, filed
April 17, 1996 and PCT/US97/06509, filed April 17, 1997. Title: A Combinatorial
Protecting Group Strategy for Multifunctional Molecules, Inventors: Hubert
Koster and Eckhart Leihkauf. This technology has relevance to the antisense
concept.
2. Development of large scale concepts for oligonucleotide synthesis
in solution. Patent to be filed: Title: A Solution Phase Large Scale Process for
the Synthesis of Biomolecules. Inventors: Hubert Koster and Ralf Worl. This
project again has relevance to the antisense concept.
3. Development of membrane immobilized enzymes as solid phase
enzymatic reagents. Inventors: Hubert Koster, Frank Barnekow, Claudia Pauk and
Andreas Ruppert.________________________________________________________________
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
[_] Due to confidentiality agreements with a prior employer or entity, I
cannot disclose certain inventions that would otherwise be included on
the above-described list.
[_] Additional sheets attached.
2. I propose to use during my consulting work for the Company the
following devices, materials and documents of a former employer or other person
or entity to whom I have an obligation of confidentiality that are not generally
available to the public, which materials and documents may be used in my
consulting work pursuant to the express written authorization of my former
employer or such other person or entity (a copy of which is attached hereto):
1.
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[_] No material.
[_] See below:
______________________________________________________________________
______________________________________________________________________
[_] Additional sheets attached.
2.