License Agreement - Tyho Galileo Research Laboratory and ViaCell Inc.
LICENSE AGREEMENT
THIS AGREEMENT is dated as of the 1st day of September, 2004
(the "Effective Date"), between Tyho Galileo Research Laboratory, a LLC
organized under the laws of New York with a principal place of business at 101
Old Short Hills Road, Suite 501, West Orange, NJ 07052 ("Galileo") and ViaCell,
Inc., a corporation organized under the laws of Delaware with a principal place
of business at 245 First Street, Cambridge, MA 02142 ("ViaCell").
WHEREAS, Galileo has been engaged in research in the field of human gamete
cryopreservation;
WHEREAS, that research led to the United States patents, patent
applications and other inventions listed in Exhibit A, which have been assigned
to Galileo.
WHEREAS, ViaCell is desirous of obtaining, and Galileo wishes to grant to
ViaCell, an exclusive license to the Licensed Patent Rights (as defined in
Section 1.5), the Technology (as defined in Section 1.13) and the Improvements
(as defined in Section 1.3); and
WHEREAS, the parties are desirous of collaborating in the Field (as
defined in Section 1.2);
NOW, THEREFORE, the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.1. "AFFILIATE" means any corporation, limited liability company or other
legal entity which directly or indirectly controls, is controlled by, or is
under common control with ViaCell or its successors or assigns, or any successor
or assign of such an entity. For the purpose of this Agreement, "control" shall
mean the direct or indirect ownership of at least fifty-one percent (51%) of the
outstanding shares on a fully diluted basis or other voting rights of the
subject entity to elect directors, or if not meeting the preceding, any entity
owned or controlled by or owning or controlling at the maximum control or
ownership right permitted in the country where such entity exists.
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1.2. "FIELD" means human oocyte and human embryo cryopreservation with
reference to use of the Materials, as described in Exhibit B, or any
Improvements to the Materials.
1.3. "IMPROVEMENTS" means all inventions, discoveries, designs,
improvements and all other intellectual property rights made or perfected in the
performance of, or arising out of, the Research.
1.4. "LICENSED MEDIA" means cryopreservation media covered by, or made by
a process covered by, a Valid Claim included in the Licensed Patent Rights, or
which utilizes the Technology or Improvements in material part.
1.5. "LICENSED PATENT RIGHTS" means Galileo's rights under all patents and
patent applications listed in Exhibit A attached hereto, as well as all foreign
counterpart patents and patent applications (including future foreign
counterparts to the patents and patent applications listed in Exhibit A); any
patents which issue on the applications listed in Exhibit A; all reissues,
reexaminations, renewals, extensions, divisionals, continuations, and
continuations-in-part of the foregoing patents and patent applications; and any
foreign counterparts and any other forms of protection directed to the
inventions covered by the patents or patent applications listed in Exhibit A.
1.6. "LICENSED PRODUCT" means any product, device, service or system in
the Field which is covered by, or is made by a process covered by, a Valid Claim
included in the Licensed Patent Rights, or which utilizes the Technology or
Improvements in material part, but excluding Licensed Media.
1.7. "LICENSED TECHNOLOGY" means the Licensed Patent Rights, the
Technology and the Improvements.
1.8. "MATERIALS" means the CJ panel of media identified on Exhibit B
attached hereto.
1.9. "GROSS STORAGE REVENUES" means the combined amount received by
ViaCell, its Affiliates and its Sublicensees from the storage of human oocytes
or human embryos cryopreserved through the use of Licensed Products or Licensed
Media.
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1.10. "GROSS REVENUES" means the combined amount received by ViaCell, its
Affiliates and its Sublicensees from the sale to unrelated third parties of
Licensed Products or Licensed Media.
Such Gross Revenue received by ViaCell may include, but not be limited to, the
fees charged for hormone therapy, oocyte retrieval, oocyte cryopreservation and
transportation.
Notwithstanding the foregoing, in the event a Licensed Product or Licensed Media
is sold in conjunction with another active component so as to be a combination
product (whether packaged together or in the same therapeutic formulation),
Gross Revenues shall be calculated by multiplying the Gross Revenues of such
combination product by a fraction, the numerator of which shall be the fair
market value of the Licensed Product or Licensed Media as if sold separately
(determined in accordance with generally accepted accounting principles), and
the denominator of which shall be the aggregate fair market value of all the
active components of such combination product, including the Licensed Product or
Licensed Media, as if sold separately. In the event no such separate sales are
made by ViaCell, its Affiliates or its Sublicensees, Gross Revenues of the
combination product shall be calculated in a manner to be negotiated and agreed
upon by the parties, reasonably and in good faith, prior to any sale of such
combination product, which shall be based upon the respective estimated
commercial values of the active components of such combination product.
1.11. "RESEARCH" means the research and development of cryopreservation
media for human gamete and human embryo cryopreservation performed pursuant to
Section 5.4 hereof, as more fully described in Exhibit C attached hereto, as
such Exhibit C may be amended by mutual written consent of the parties.
1.12. "ROYALTY TERM" means the period described in Section 5.3.
1.13. "SUBLICENSEE" means any sublicensee of the rights granted to ViaCell
hereunder other than any Affiliate of ViaCell.
1.14. "TECHNOLOGY" means all proprietary information, know-how,
procedures, methods, prototypes, designs, technical data and reports owned by or
licensed to Galileo as of the Effective Date that are necessary or useful in the
development of Licensed Products or Licensed
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Media and which relate to the Licensed Products or Licensed Media, but which are
not the subject of the Licensed Patent Rights.
1.15. "TERRITORY" means worldwide.
1.16. "VALID CLAIM" means (a) an issued claim of an issued patent within
the Licensed Patent Rights, which has not (i) expired or been canceled, (ii)
been declared invalid by an unreversed and unappealable decision of a court or
other appropriate body of competent jurisdiction, (iii) been admitted to be
invalid or unenforceable through reissue, disclaimer or otherwise, and/or (iv)
been abandoned in accordance with or as permitted by the terms of this Agreement
or by mutual written agreement; or (b) a claim included in a pending patent
application within the Licensed Patent Rights that is being actively prosecuted
in accordance with this Agreement and which has not been (i) canceled or
withdrawn from consideration, (ii) finally determined to be unallowable by the
applicable governmental authority (and from which no appeal is or can be taken),
or (iii) abandoned in accordance with or as permitted by the terms of this
Agreement or by mutual written consent.
ARTICLE 2
LICENSE GRANT
2.1 Galileo hereby grants to ViaCell an exclusive, royalty-bearing license
under the Licensed Technology to research, develop, make, have made, import,
have imported, use, have used, sell, have sold, offer for sale, have offered for
sale, and otherwise exploit Licensed Products and Licensed Media throughout the
Territory.
2.2 This license is subject to the non-transferable, non-sublicenseable
reservation of Galileo's right to make, have made, and use Licensed Products or
Licensed Media for research at any clinic (Exhibit D) for which it is providing
services to ViaCell.
2.3 Sublicense Rights are granted to ViaCell to contract with a FDA
approved manufacturer to produce the media for commercial use. Such manufacturer
may only produce media for and sell media to ViaCell. Furthermore, such
manufacturer may not directly or indirectly refer to this License Agreement with
Galileo Technologies Inc. in any oral or written communication.
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2.4 Any sublicenses granted by ViaCell, including, without limitation, any
nonexclusive sublicenses, shall remain in effect and be assigned to Galileo in
the event this license terminates pursuant to Paragraph 8.2; provided, the
financial obligations of each Sublicensee to Galileo shall be limited to the
amounts that the Sublicensee shall be obligated to pay to ViaCell under the
terms of the respective sublicense. In such event and subject to the preceding
sentence, Galileo shall assume all the rights and obligations of ViaCell under
such sublicenses.
2.5 ViaCell shall use its commercially reasonable efforts to promote the
product development and commercial launch of a Licensed Product or Licensed
Media, such efforts to be commensurate with the efforts undertaken by similarly
situated companies developing products of similar commercial potential.
ARTICLE 3
TECHNOLOGY AND MATERIALS
3.1. With respect to all Technology and Materials existing as of the
Effective Date, Galileo shall disclose, transmit and deliver to ViaCell, orally,
in writing or by delivery thereof, as applicable, all of such Technology and
Materials on or before the expiration of one month from the Effective Date. Such
communication of information and transfer shall include, but not be limited to,
the delivery by Galileo to ViaCell of the patent applications for the Licensed
Patent Rights, all background and back-up information, patent prosecution
information, test results and other information relevant in any way to the
Licensed Patent Rights, the Technology and the Materials.
ARTICLE 4
PROSECUTION OF PATENT APPLICATIONS AND
PAYMENT OF PATENT COSTS
4.1. PROSECUTION. ViaCell shall have the right, at its own expense, to
prosecute and maintain in Galileo's name any and all patent applications and
patents included in the Licensed Patent Rights and to file for and maintain
patents in Galileo's name covering any Technology and Improvements licensed
hereunder for which a patent application has not already been filed. ViaCell
shall be entitled to select patent counsel for this purpose, subject to
Galileo's reasonable
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approval. Further, ViaCell shall have their patent counsel copy Galileo on all
correspondence and filings relating to the prosecution of such patents in
Galileo's name. Galileo agrees to fully cooperate with ViaCell in preparing,
filing, prosecuting, and maintaining any such patent applications and patents,
and Galileo agrees to execute any documents as shall be necessary for such
purpose and not to impair in any way the patentability of such Licensed Patent
Rights, Technology or Improvements.
4.2. PROSECUTION BY GALILEO. If ViaCell declines to file, prosecute and
maintain or continue the prosecution or maintenance of a patent application or
patent to obtain one or more patent(s) included in the Licensed Patent Rights or
covering the Technology or Improvements, then Galileo may elect to file or take
over the prosecution of any such patent application, and ViaCell shall be
relieved of any obligation to pay the expenses in connection with the
prosecution and maintenance of any such patent or patent application.
ARTICLE 5
PAYMENTS
5.1. LICENSE FEE. ViaCell shall pay Galileo a license fee of fifty
thousand dollars ($50,000), which includes a $10,000 exclusivity fee, which has
been previously paid, within five (5) business days of the Effective Date.
5.2. MILESTONE PAYMENT. ViaCell shall pay to Galileo a milestone payment
in connection with the commencement of commercial sales of Licensed Products or
Licensed Media in the amount of twenty-four thousand dollars ($24,000). Such
payment shall be paid in eight quarterly installments of three thousand dollars
($3,000) each, with the first such payment due within five (5) business days of
the first commercial sale of a Licensed Product or Licensed Media and subsequent
payments due on each of the next seven quarterly anniversaries of the first
payment.
5.3. ROYALTIES.
(a) ViaCell shall pay Galileo [*] percent ([*]%) of Gross Revenues
from the sale of Licensed Products and [*] percent ([*]%) of Gross
Storage Revenues.
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(b) ViaCell shall pay to Galileo annual minimum royalties equal to
thirty thousand dollars ($30,000), payable on each anniversary of the
Effective Date commencing with the first anniversary of the Effective
Date. The annual minimum royalties payable under this subsection (b) shall
be fully creditable against royalties paid by ViaCell to Galileo pursuant
to Section 5.3(a) during the year preceding the applicable anniversary of
the Effective Date.
(c) For the purpose of determining royalties payable under this
Agreement, any royalties or other revenues ViaCell receives from
Affiliates or Sublicensees in currencies other than U.S. dollars and any
Gross Revenues denominated in currencies other than U.S. dollars shall be
converted into U.S. dollars according to ViaCell's reasonable standard
internal conversion procedures, including ViaCell's standard internal
rates and conversion schedule.
(d) Royalties due under this Article 5 shall be payable on a
Licensed Product-by-Licensed Product or Licensed Media-by-Licensed Media
and country by country basis as follows:
(i) with respect to Licensed Products or Licensed Media for
which the manufacture or sale is not covered by a Valid Claim
included in the Licensed Patent Rights, for a period of ten (10)
years from the date of the first commercial sale of such Licensed
Product or Licensed Media in such country.
(ii) with respect to Licensed Products or Licensed Media for
which the manufacture or sale is covered by a Valid Claim included
in the Licensed Patent Rights, until the last to expire of the Valid
Claims included in the Licensed Patent Rights covering such Licensed
Product or Licensed Media in such country;
(iii) with respect to each Licensed Product or Licensed Media,
the foregoing applicable period is referred to herein as the
"Royalty Term".
(e) Except as otherwise provided in this Agreement, all royalty
payments due hereunder shall be paid quarterly within sixty (60) days
after the end of each calendar
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quarter. Each such payment shall be accompanied by a reasonably detailed
statement showing the basis for the calculation of royalties accompanying
each such report.
(f) ViaCell shall make all payments required under this Agreement to
Galileo, in U.S. Dollars (except as otherwise provided herein).
(g) ViaCell and its Affiliates shall keep complete and accurate
records pertaining to the sale of Licensed Products and Licensed Media in
the Territory for a period of not less than three (3) years.
(h) At the request and expense (except as provided below) of
Galileo, ViaCell and its Affiliates shall permit an independent, certified
public accountant appointed by Galileo and reasonably acceptable to
ViaCell, at reasonable times and upon reasonable notice, to examine no
more than once per year those records and all other material documents
relating to or relevant to Gross Revenues or Gross Storage Revenues in the
possession or control of ViaCell, its Affiliates or Sublicensees, for a
period of three years after such royalties have accrued. The results of
any such examination shall be made available to both parties. If, as a
result of any inspection of the books and records of ViaCell, its
Affiliates or Sublicensees, it is shown that ViaCell's royalty payments
under this Agreement were less than the amount which should have been
paid, then ViaCell shall make all payments required to eliminate any
discrepancy revealed by said inspection within forty-five (45) days after
Galileo's demand therefore. Furthermore, if the aggregate royalty payments
ViaCell made were less than ninety percent (90%) of the amount, which
should have been paid during the period in question, ViaCell shall also
reimburse Galileo for the reasonable out-of-pocket cost of such
inspection.
(i) In the event that ViaCell is required to withhold and make
payment of any tax to the tax or revenue authorities in any country in the
Territory in connection with any payment to Galileo due to the laws of
such country which payment is credited to Galileo's tax liability, such
amount paid and so credited shall be deducted from the royalty or other
payment to be made by ViaCell, and ViaCell shall notify Galileo and
promptly furnish Galileo with copies of any tax certificate or other
documentation evidencing such withholding and payment. Each party agrees
to cooperate with the other
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party in claiming exemptions from such deductions or withholdings under
any agreement or treaty in effect from time to time.
(j) If at any time legal restrictions prevent ViaCell's prompt
remittance of part or all of the royalties due with respect to any country
where a Licensed Product or Licensed Media is sold or services are
provided, ViaCell shall convert the amount owed to Galileo into U.S. funds
and shall pay Galileo directly from ViaCell's U.S. source of funds for the
amount impounded. ViaCell shall then pay all future royalties due to
Galileo from ViaCell's U.S. source of funds so long as the legal
restrictions of this Section still apply.
(k) In the event that any payment ViaCell is required to make
hereunder is not made within thirty (30) days after such payment was
originally due, ViaCell shall pay interest on the past due amount at the
rate of eight percent (8%) per annum.
5.4. RESEARCH BY GALILEO
(a) For a period of two year from the Effective Date, and thereafter
as the parties may mutually agree, Galileo shall perform the Research.
Such Research shall be performed through the 75% time of Dr. J. Stachecki,
the 20% time of Dr. Steen Willadsen, and the 20% time of Tim Schimmel
(together, the "Researchers"). Galileo shall use its best efforts to
ensure that the Research is performed on the schedule set forth in Exhibit
D.
(b) In the event that Dr. Stachecki, Dr. Willadsen or Mr. Schimmel
become unavailable to perform the Research during the Term of this
Agreement, Galileo shall use best efforts to replace such individual with
scientists of equivalent qualifications, which replacement shall be
reasonably acceptable to ViaCell.
(c) During the Term of this Agreement and for one year after its
termination, ViaCell agrees that it will not, without prior written
consent of Galileo, solicit, hire or otherwise offer employment to any
employees or consultants of Galileo.
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(d) ViaCell shall pay Galileo for the Research, in the amounts and
on the schedule as set forth in Exhibit D. The total funding per year will
be $207,000 in Year 1 and 225,000 in Year 2, payable quarterly in arrears.
(e) Galileo shall provide reasonably detailed quarterly reports to
ViaCell describing the Research performed during the preceding quarter and
shall make the Researchers available at reasonable times upon prior notice
to discuss the course and results of the Research with representatives of
ViaCell.
(f) In addition to the reports required pursuant to Section 5.4(c),
Galileo shall disclose promptly to ViaCell all Improvements made or
perfected in the performance of, or arising out of, the Research, and will
maintain adequate and current written records (in the form of notes,
sketches, drawings or as may otherwise be specified by ViaCell), properly
corroborated, to document the conception and/or first actual reduction to
practice of any Improvement. Such written records shall be made available
to ViaCell at all times. All such Improvements, patent applications and
patents covering such Improvements shall be the exclusive property of
Galileo.
ARTICLE 6
INFRINGEMENT BY THIRD PARTY
6.1. Both Galileo and ViaCell agree to notify the other in writing should
either party become aware of possible infringement of the Licensed Patents.
ViaCell shall have the first right, but not the obligation, to initiate an
action against the infringer at ViaCell's expense, either in ViaCell's name or
in Galileo's name if so required by law. ViaCell shall have sole control and
shall bear the cost of the action. If ViaCell does not choose to initiate an
action against the infringer, it shall notify Galileo as soon as practicable,
but in any event sufficiently in advance to permit Galileo to initiate such
action.
6.2. If ViaCell, its Affiliate or Sublicensee, distributor or other
customer is sued by a third party charging infringement of patent rights that
dominate a claim of the Licensed Patents or that cover the development,
manufacture, use, distribution or sale of a Licensed Product or Licensed Media,
ViaCell will promptly notify Galileo. As between the parties to this
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Agreement, ViaCell will be entitled to control the defense in any such action(s)
and shall bear the cost thereof.
6.3. If a declaratory judgment action alleging invalidity,
unenforceability or noninfringement of any of the Licensed Patent Rights is
brought against ViaCell and/or Galileo or a re-examination of any of the
Licensed Patent Rights is filed, ViaCell may elect to have sole control of the
action, and if ViaCell so elects it shall bear all the costs of such action.
ViaCell also may elect to undertake or defend any interference, opposition or
similar procedure with respect to the Licensed Patents providing it bears all
the costs of such action.
6.4. In the event ViaCell institutes a legal action pursuant to Paragraphs
6.1 or 6.2, Galileo shall fully cooperate with and supply all assistance
reasonably requested by ViaCell, including by using commercially reasonable
efforts to have its employees testify when requested and to make available
relevant records, papers, information, samples, specimens, and the like. ViaCell
shall bear the reasonable expenses incurred by Galileo in providing such
assistance and cooperation as is requested pursuant to this Paragraph. ViaCell
shall keep Galileo reasonably informed of the progress of the legal action, and
Galileo shall be entitled to representation by counsel in connection with such
legal action at its own expense.
6.5. ViaCell shall have the right to settle any claims under Section 6.1,
6.2, or 6.3, but only upon terms and conditions that are reasonably acceptable
to Galileo. Should ViaCell elect to abandon such an action other than pursuant
to a settlement with the alleged infringer that is reasonably acceptable to
Galileo, ViaCell shall give timely notice to Galileo who, if it so desires, may
continue the action at its own expenses, with the sharing of any recovery to be
determined in accordance with Section 6.6.
6.6. Any amounts paid to ViaCell by third parties as the result of such an
action pursuant to Section 6.1, 6.2, 6.3 or 6.5 (such as in satisfaction of a
judgment or pursuant to a settlement) shall first be applied to reimbursement of
the unreimbursed expenses (including attorneys' fees and expert fees) incurred
by each party. Any remainder shall be divided between the parties as follows:
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(a) To the extent the amount recovered reflects ViaCell's lost
profits or royalties, ViaCell shall retain the remainder, less the amount
of any royalties that would have been due Galileo on sales of Licensed
Media and Licensed Products lost by ViaCell as a result of the
infringement had ViaCell made such sales; and
(b) To the extent the amount recovered does not reflect ViaCell's
lost profits or royalties, ViaCell will be allowed to recoup any legal
costs incurred. The remaining amount shall be shared by the parties
ARTICLE 7
REPRESENTATIONS, WARRANTIES, INDEMNIFICATION AND INSURANCE
7.1. Galileo hereby covenants, represents, and warrants to ViaCell as
follows:
(a) There are no liens, mortgages, commitments, obligations and
encumbrances of any kind or any nature whatsoever against the Licensed
Technology other than as described in clause (b) of this Section;
(b) There are no outstanding options, licenses or agreements of any
kind relating to the Licensed Technology;
(c) Galileo has full power to grant the rights, licenses and
privileges granted herein and can perform as set forth in this Agreement
without violating the terms of any agreement that Galileo has with any
third party; and
(d) No other party will acquire any rights in any inventions that
would limit Galileo's ability to comply with the provisions of this
Agreement.
7.2. The parties agree that nothing in this Agreement shall be construed
as:
(a) a warranty or representation that anything made, used, sold, or
otherwise disposed of hereunder is or will be free from infringement of
rights of third parties; or
(b) an obligation by Galileo to bring or prosecute actions or suits
against third parties for infringement of the Licensed Technology.
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7.3. THE PARTIES HEREBY AGREE THAT GALILEO MAKES NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT
TO THE LICENSED TECHNOLOGY.
7.4. ViaCell shall indemnify, defend and hold harmless Galileo and
Galileo's officers, employees, representatives and agents against any and all
damages, losses or expenses suffered or paid as a result of any claims to the
effect that any of the services offered by ViaCell does not perform as promised
by ViaCell.
7.5. ViaCell agrees to procure and maintain, during the Term of this
Agreement and for a reasonable period thereafter, Commercial (Comprehensive)
General Liability Insurance covering the use and sale of the Licensed Media and
Licensed Products both internally and to third parties in an amount commensurate
with the risk of such activities. Such policy shall name Galileo and its
respective officers, directors, employees and agents as additional insured, and
the insurance afforded to Galileo thereunder shall be primary for all purposes.
All policies required by this Agreement shall be written by insurance carriers
approved by and satisfactory to Galileo. Within five (5) days after the
execution hereof ViaCell shall deliver to Galileo a certificate evidencing such
coverage and such status of Galileo. The certificate shall provide thirty (30)
days advance written notice of cancellation, non-renewal or termination be given
to Galileo. By requiring insurance as provided in this Section, ViaCell does not
represent that coverage and limits will be adequate to protect Galileo, its
officers, directors, employees and agents, and such limits shall not be deemed
as a limitation of ViaCell's liability to Galileo.
7.6. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF THIS AGREEMENT,
HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
ARTICLE 8
TERMINATION OF LICENSE
8.1. This Agreement and the rights and licenses hereunder shall be in
effect beginning on the Effective Date and continue on a Licensed
Product-by-Licensed Product and Licensed Media-by-Licensed Media until the
expiration of the applicable Royalty Term. Upon expiration
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of this Agreement, other than by Galileo pursuant to Section 8.2, all licenses
granted hereunder shall become fully-paid, perpetual and irrevocable.
8.2. If this Agreement is materially breached by either party, including
any monetary breach, the non-breaching party may elect to give the breaching
party written notice describing the alleged breach. If the breaching party has
not cured such breach within sixty (60) days after receipt of such notice, the
notifying party will be entitled, in addition to any other rights it may have
under this Agreement, to terminate this Agreement effective immediately;
provided, however, that if either party receives notification from the other of
a material breach and if the party alleged to be in default notifies the other
party in writing within thirty (30) days of receipt of such default notice that
it disputes the asserted default, the matter will be submitted to arbitration as
provided in Article 8 of this Agreement. In such event, the non-breaching party
shall not have the right to terminate this Agreement until it has been
determined in such arbitration proceeding that the other party materially
breached this Agreement, and the breaching party fails to cure such breach
within ninety (90) days after the conclusion of such arbitration proceeding.
8.3. Termination of this Agreement for any reason shall not release any
party hereto from any liability which, at the time of such termination, has
already accrued to the other party or which is attributable to a period prior to
such termination, nor preclude either party from pursuing any rights and
remedies it may have hereunder or at law or in equity which accrued or are based
upon any event occurring prior to such termination.
8.4. Except for equitable actions such as seeking a restraining order or
injunction to protect Galileo's Licensed Technology, all disputes,
controversies, or claims arising out of or relating to this Agreement or a
breach thereof shall be submitted to and finally resolved by binding arbitration
under the rules of the American Arbitration Association ("AAA") then in effect.
There shall be one arbitrator, and such arbitrator shall be chosen in accordance
with AAA rules. The arbitration shall take place in New York. The arbitrator
shall apply the laws of the State of New York to all issues in dispute. The
findings of the arbitrator shall be final and binding on the parties, and may be
entered in any court of competent jurisdiction for enforcement. Legal fees shall
be awarded to the prevailing party in the arbitration.
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
ARTICLE 9
CONFIDENTIALITY
The parties acknowledge that the Mutual Confidential Disclosure Agreement
between the parties dated as of March 12, 2004 and attached hereto as Appendix A
(the "CDA") shall remain in effect according to its terms following the
execution of this Agreement, except that the provision of Section 5 of the CDA
regarding termination shall be deemed to refer to a termination of this
Agreement, and the parties obligations in the event of termination under such
Section 5 shall arise upon termination of this Agreement in lieu of the
termination events described in such Section 5.
ARTICLE 10
MISCELLANEOUS
10.1. NOTICES. All notice, requests, demands and other communications
hereunder shall be in English and shall be given in writing and shall be: (a)
personally delivered; (b) sent by telecopier, facsimile transmission or other
electronic means of transmitting written documents with confirmation of receipt;
or (c) sent to the parties at their respective addresses indicated herein by
registered or certified mail, return receipt requested and postage prepaid, or
by private overnight mail courier services with confirmation of receipt. The
respective addresses to be used for all such notices, demands or requests are as
follows:
(a) If to GALILEO, to:
Galileo Research Laboratories, LLC
101 Old Short Hills Road
Suite 501
West Orange, NJ 07052
ATTN: Jacques Cohen, President
Phone No.: 646-529-7556
Fax No.: 973-322-6235
Or to such other person or address as Galileo shall furnish to ViaCell in
writing.
(b) If to VIACELL, to:
ViaCell, Inc.
245 First Street, 15th Floor
Cambridge, MA 02142-1292
ATTN: CEO
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language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
Phone No.: 617-914-3510
Fax No.: 617-914-3943
With a copy to:
Marc A. Rubenstein, Esq.
Ropes & Gray LLP
One International Place
Boston, Massachusetts 02110
Phone No.: 617-951-7826
Fax No.: 617-951-7050
If personally delivered, such communication shall be deemed delivered upon
actual receipt by the "attention" addressee or a person authorized to accept for
such addressee; if transmitted by facsimile pursuant to this Section, such
communication shall be deemed delivered the next business day after transmission
(and sender shall bear the burden of proof of delivery); if sent by overnight
courier pursuant to this Section, such communication shall be deemed delivered
upon receipt by the "attention" addressee or a person authorized to accept for
such addressee; and if sent by mail pursuant to this Section, such communication
shall be deemed delivered as of the date of delivery indicated on the receipt
issued by the relevant postal service, or, if the addressee fails or refuses to
accept delivery, as of the date of such failure or refusal. Any party to this
Agreement may change its address for the purposes of this Agreement by giving
notice thereof in accordance with this Section 12.1
10.2. SEVERABILITY. Each provision contained in this Agreement is declared
to constitute a separate and distinct covenant and provision and to be severable
from all other separate, distinct covenants and provisions. It is agreed that
should any clause, condition or term, or any part thereof, contained in this
Agreement be unenforceable or prohibited by law or by any present or future
legislation then such clause, condition, term or part thereof, shall be amended,
and is hereby amended, so as to be in compliance with the said legislation or
law but, if such clause, condition or term, or part thereof, cannot be amended
so as to be in compliance with the said legislation or law but, if such clause,
condition or term, or part thereof, cannot be amended so as to be in compliance
with any such legislation or law, then such clause, condition, term or part
thereof is severable from this Agreement all the rest of the clauses, terms and
conditions or parts thereof contained in this Agreement shall remain unimpaired.
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
10.3. NO AMENDMENT. This Agreement may not be amended or modified
otherwise than by a written agreement executed by the parties hereto or their
respective successors and legal representatives.
10.4. GOVERNING LAW. This Agreement, the legal relations between the
parties and any action, whether contractual or non-contractual, instituted by
any party with respect to matters arising under or growing out of or in
connection with or in respect of this Agreement shall be governed by and
construed in accordance with the internal laws of the State of New York,
excluding any choice of law rules that may direct the application of the laws of
another jurisdiction.
10.5. WAIVER. No waiver of a breach of any provision of this Agreement
shall be deemed to be, or shall constitute, a waiver of a breach of any other
provision of this Agreement, whether or not similar, nor shall such waiver
constitute a continuing waiver of such breach unless otherwise expressly
provided in such waiver.
10.6. HEADINGS. The headings in this Agreement are inserted for
convenience only and shall not constitute a part hereof.
10.7. COUNTERPARTS/FACSIMILES. This Agreement may be executed in one or
more counterparts, all of which taken together shall be deemed one original.
Facsimile signatures shall be deemed original.
10.8. RECITALS. The recitals to this Agreement are true and correct and
are made a part of this Agreement.
10.9. NO ENDORSEMENT. ViaCell agrees that it shall not make any form of
representation or statement which would constitute an express or implied
endorsement by Galileo of any Licensed Product or Licensed Media, and that it
shall not authorize others to do so, without first having obtained written
approval from Galileo, except as may be required by governmental law, rule or
regulation. Galileo agrees, however, that ViaCell may identify Galileo as the
inventor of the Licensed Patent Rights in any advertising or publicity material.
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
10.10. ENTIRE AGREEMENT. Except for the CDA which shall remain in effect
following the date hereof as modified by the provisions of Article 9 hereof,
this Agreement sets forth the complete agreement of the parties concerning the
subject matter hereof. No claimed oral agreement in respect thereto shall be
considered as any part hereof. No waiver of or change in any of the terms hereof
subsequent to the execution hereof claimed to have been made by any
representative of either party shall have any force or effect unless in writing,
signed by duly authorized representatives of the parties.
10.11. ASSIGNMENT. This Agreement shall be binding upon and inure to the
benefit of any successor or assignee of Galileo. This Agreement is not
assignable by ViaCell without the prior written consent of Galileo (not to be
unreasonably withheld or delayed), except that ViaCell may assign this Agreement
without the prior written consent of Galileo to any Affiliate or any successor
of, or purchaser of a substantial part of, the assets of its business to which
this Agreement pertains or services utilizing the methods within the Licensed
Patent Rights. Any permitted assignee shall succeed to all of the rights and
obligations of ViaCell under this Agreement.
10.12. THIRD-PARTY TECHNOLOGY. Nothing in this Agreement will impair
ViaCell's right to independently acquire, license, develop for itself, or have
others develop for it, intellectual property and technology performing similar
functions as the technology described in the Licensed Technology or to market
and distribute products other than Licensed Products based on such other
intellectual property and technology.
10.13. FORCE MAJEURE. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment obligations)
on account of failure of performance by the defaulting party if the failure is
occasioned by war, strike, fire, Act of God, earthquake, flood, lockout,
embargo, governmental acts or orders or restrictions, failure of suppliers,
terrorist acts or any other reason where failure to perform is beyond the
reasonable control and not caused by the negligence or intentional conduct or
misconduct of the nonperforming party, and such party has exerted all reasonable
efforts to avoid or remedy such force majeure; provided, however, that in no
event shall a party be required to settle any labor dispute or disturbance.
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
10.14. CONSENTS AND APPROVALS. Whenever provision is made in this
Agreement for either party to secure the consent or approval of the other, that
consent or approval shall not unreasonably be withheld or delayed, and whenever
in this Agreement provisions are made for one party to object to or disapprove a
matter, such objection or disapproval shall not unreasonably be exercised.
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed:
TYHO GALILEO RESEARCH LABORATORY
Date: 8/13/04 By: /s/ Jacques Cohen
____________________________ _____________________________________
Name: Jacques Cohen
__________________________________
Title: President
__________________________________
Date: 8/16/04 VIACELL, INC.
____________________________
By: /s/ Marc Beer
_____________________________________
Name: Marc Beer
__________________________________
Title: CEO
__________________________________
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
EXHIBIT A
LICENSED PATENT RIGHTS
Appln Serial #/ Issue Expiration
Issued Patent # Title Date Date
---------------- ----------------------------------- -------- ----------
US Patent Cryopreservation and cell culture 11/16/99 8/1/17
Number 5,985,538 medium comprising less than 50 mM
sodium ions and greater than 100 mM
chlorine salt
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
EXHIBIT B
MATERIALS
g/1 LITER
---------
g/1 LITER
---------
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
EXHIBIT C
RESEARCH PLAN
[To be finalized]
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
EXHIBIT D
GALILEO AFFILIATES
INSTITUTE OF REPRODUCTIVE MEDICINE AND SCIENCE, SAINT BARNABAS, LIVINGSTON, NJ,
USA
HIGHLAND PARK IN VITRO FERTILIZATION LABORATORY, HIGHLAND PARK, IL, USA
PACIFIC INFERTILITY INSTITUTE, HONOLULU, HI, USA
LONG ISLAND IVF AND MATHER HOSPITAL, PORT JEFFERSON, NY, USA
YALE UNIVERSITY MEDICAL SCHOOL, NEW HAVEN, CT, USA
CODA LABORATORIES AND CENTER FOR REPRODUCTIVE MEDICINE (CRM), LONDON, ENGLAND
IVF ITALY, NAPLES, ITALY
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this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
APPENDIX A
VIACELL, INC.
MUTUAL CONFIDENTIAL DISCLOSURE AGREEMENT
This Agreement is between ViaCell, Inc. and the undersigned party.
In connection with a possible business relationship between the parties in
the field oocyte cryopreservation, each party intends to disclose certain
confidential information to the other party. The purpose of such disclosure is
to enable each party (i) to evaluate the proposed business relationship and (ii)
to conduct any ensuing business arrangement that is actually conducted by the
parties without the benefit of a further agreement governing the treatment of
confidential information.
In consideration of each party making such confidential information
available to the other party, the parties hereby agree as follows:
1. As used in this Agreement, the term "Confidential Information" means
any technical or business information furnished by one party (the "Disclosing
Party") to the other party (the "Receiving Party") and/or both parties for
information exchanged reciprocally ("Both Parties") in connection with the
proposed business relationship, regardless of whether such information is
specifically designated as confidential and regardless of whether such
information is in written, oral, electronic, or other form. Such Confidential
Information may include, without limitation, trade secrets, know-how,
inventions, technical data or specifications, testing methods, business or
financial information, research and development activities, product and
marketing plans, designs, drawings, diagrams, flow charts, storyboards, business
relationships, and customer and supplier information.
2. The Both Parties agree that they shall:
(a) maintain all Confidential Information in strict confidence,
except that the Receiving Party may disclose or permit the
disclosure of any Confidential Information to its directors,
officers, employees, consultants, and advisors who are obligated
to maintain the confidential nature of such Confidential
Information and who need to know such Confidential Information
for the purposes set forth in this Agreement;
(b) use all Confidential Information solely for the purposes set
forth in this Agreement and for no other purposes; and
(c) allows its directors, officers, employees, consultants, and
advisors to reproduce the Confidential Information only to the
extent necessary to effect the purposes set forth in this
Agreement, with all such reproductions being considered
Confidential Information.
(d) not disclose the existence of this Agreement or the discussions
between the parties except as required by law.
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language. Omitted portions are filed separately with the Securities and Exchange
Commission.
<PAGE>
3. The obligations of the Receiving Party under Section 2 above shall not
apply to the extent that the Receiving Party can demonstrate that certain
Confidential Information:
(a) was in the public domain prior to the time of its disclosure
under this Agreement;
(b) entered the public domain after the time of its disclosure under
this Agreement through means other than an unauthorized
disclosure resulting from an act or omission by the Receiving
Party;
(c) was independently developed or discovered by the Receiving Party
prior to the time of its disclosure under this Agreement;
(d) is or was disclosed to the Receiving Party at any time, whether
prior to or after the time of its disclosure under this
Agreement, by a third party having no fiduciary relationship
with the Disclosing Party and having no obligation of
confidentiality with respect to such Confidential Information;
(e) is required to be disclosed to comply with applicable laws or
regulations, or with a court or administrative order, provided
that the Disclosing Party receives prior written notice of such
disclosure and that the Receiving Party takes all reasonable and
lawful actions to obtain confidential treatment for such
disclosure and, if possible, to minimize the extent of such
disclosure; or
(f) was disclosed by the Disclosing Party without any restrictions
or obligations relating to confidentiality.
4. The Receiving Party acknowledges that the Disclosing Party (or any
third party entrusting its own confidential information to the Disclosing Party)
claims ownership of the Confidential Information disclosed by the Disclosing
Party and all patent, copyright, trademark, trade secret, and other intellectual
property rights in, or arising from, such Confidential Information. No option,
license, or conveyance of such rights to the Receiving Party is granted or
implied under this Agreement. If any such rights are to be granted to the
Receiving Party, such grant shall be expressly set forth in a separate written
instrument.
5. Upon the termination by either party of (i) the contemplated business
discussions and, if applicable, (ii) any ensuing business arrangement between
the parties that is conducted without the benefit of a further agreement
governing the treatment of Confidential Information, the Receiving Party shall
return to the Disclosing Party all originals, copies, and summaries of
documents, materials, and other tangible manifestations of Confidential
Information in the possession or control of the Receiving Party. The obligations
set forth in this Agreement shall remain in effect for a period of five (5)
years after such termination by either party, except that the obligation of the
Receiving Party to return Confidential Information to the Disclosing Party shall
survive until fulfilled.
6. Both Parties agree that during the contemplated business discussions
and, if applicable, any ensuing business arrangement between the parties and for
a period of two (2)
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<PAGE>
years after the termination or cessation of such discussions or business
relationship for any reason, Both Parties shall not:
(a) solicit, divert or take away, or attempt to divert or take away,
the business or patronage of any actual or prospective clients,
customers, or accounts of the Disclosing Party; and
(b) directly or indirectly recruit, solicit, or hire any employee of
the Disclosing Party, or induce or attempt to induce any
employee of the Disclosing Party to discontinue his or her
employment relationship with the Disclosing Party.
7. The Receiving Party agrees that any breach of its obligations under
this Agreement will cause irreparable harm to the Disclosing Party; therefore,
the Disclosing Party shall have, in addition to any remedies available at law,
the right to obtain equitable relief to enforce this Agreement without the need
for a bond or to prove such harm.
8. This Agreement shall be governed by the laws of the Commonwealth of
Massachusetts. The parties agree that any action, suit or other legal proceeding
commenced to resolve any matter arising under or relating to any provision of
this Agreement shall be commenced only in a court of the Commonwealth of
Massachusetts (or, if appropriate, a federal court located within
Massachusetts), and hereby consent to the jurisdiction of such court with
respect to any action, suit or proceeding commenced in such court by the
Company.
Acknowledged and agreed as of this day: 3/12/04
VIACELL, INC. TYHO-GALILEO RESEARCH LABORATORIES
By: /s/ Chris Adams By: /s/ Jacques Cohen
---------------------------------- -------------------------
Name: Christoph M. Adams, Ph.D. Name:
Title: Sr. V.P. Business Development Title:
Business Address: Business Address:
131 Clarendon Street 101 Old Short Hills Road
Boston, MA 02116 Suite 501
West Orange, NJ 07052
Telephone: 617-216-9255 Telephone: 973-334-8409
Fax: 617-247-4733 Fax:
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* Confidential treatment has been requested with respect to certain portions of
this exhibit. Such portions are marked with a "[*]" in place of the redacted
language. Omitted portions are filed separately with the Securities and Exchange
Commission.