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Exhibit 10.3
MALDI-TOF MASS SPECTROMETRY
COLLABORATION AND OEM AGREEMENT
BETWEEN
PERKINELMER INSTRUMENTS LLC AND ITS AFFILIATES ("PKI")
AND
BRUKER DALTONICS INC. AND ITS AFFILIATES ("BDAL")
1. BACKGROUND
- PKI wishes to offer and distribute a MALDI-TOF system to its North American
pharmaceutical, biotech, food and chemical industry customers, as well as
to certain international markets by Q2-2000.
- PKI requires a high-quality MALDI-TOF for a diverse range of customer
applications from a supplier with a strong reputation.
- PKI has particularly strong distribution channels into pharmaceutical and
food QA/QC, pharma/biotech and chemical manufacturing, pharma/biotech drug
development, pre-clinical and clinical trials.
- PKI also has international distribution strength in certain markets where
BDAL is not well established, e.g. Latin America, Italy, Eastern Europe,
Israel, India;
- If PKI rolls out a MALDI-TOF, it intends to sell such a product in
significant numbers. Eventually, PKI wishes to sell such a product
globally.
- Based on the performance, automation and quality of its systems, BDAL has
recently become the leading MALDI-TOF company for high-end research
applications in proteomics, PKIs, and drug discovery.
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- BDAL has significant MALDI-TOF sales into universities, medical schools,
government research labs, and pharma/biotech research and drug discovery
labs.
- BDAL presently does not have strong distribution into industrial QA/QC,
manufacturing, clinical trials, and drug development, and BDAL does not
have complete international distribution coverage
- At Pittcon 2000, BDAL will introduce a high-performance, bench-top,
PC/NT-driven MALDI-TOF system called OmniFLEXT -TM-. This new product has
very good performance/price ratio compared to otherbench-top MALDI-TOFs on
the market. It is arguably "the first bench-top MALDI-TOF worth buying".
The OmniFLEX also features an attractive industrial design, and a well
thought-out intuitive GUI.
2. OBJECTIVE
PKI and BDAL wish to enter into a strategic alliance in MALDI-TOF mass
spectrometry. In particular, PKI and BDAL wish to collaborate on the
distribution of BDAL's linear bench-top OMNIFLEX -TM- MALDI-TOF system via PKI's
international distribution system.
3. TERM AND NON-COMPETE CLAUSE
Once signed by both parties this Agreement shall initially be valid
until Dec. 31, 2001 ("Phase I"). If both PKI and BDAL are satisfied with Phase I
of this Agreement, and if and when the numerical targets agreed to herein for
Phase I have been reached, then this Agreement shall be automatically extended
to Dec. 31st, 2003 ("Phase 2"). Thereafter, this Agreement is renewable for
additional two-year periods by mutual written consent.
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During the Term of this Agreement, and, except as described below, for
one (1) year following the expiration or termination of this Agreement, PKI will
not develop, manufacture, offer to sell, sell or deliver any other benchtop
MALDI-TOF system comparable to the OmniFLEX, i.e. in the selling price range
between $80,000 to $140,000, and not built by BDAL, unless BDAL cannot deliver
systems without sustained, substantial and non-solvable delivery or quality
problems which negatively impact PKI's ability to sell the OmniFLEX.
Any MALDI-TOF system manufactured and/or sold by Genomic Solutions Inc.
as part of a complete proteomics solution (presently called Investigator -TM-
proteomics solution) via PKI or other sales channels shall be specifically
excluded from this non-compete clause. Also, this non-compete clause shall not
apply if PKI acquires an instrument company with a MALDI-TOF product line if
that line represents less than 30% of the acquired company's business. Finally,
this non-compete clause shall not apply if BDAL is not willing to sell and
deliver OmniFLEX systems to PKI, for example by refusing to extend this
Collaboration into a Phase 2 (see below), even though PKI may have achieved the
minimum quantities of Phase I (see below).
4. PRODUCT DEFINITION & CO-LABELLING
The mass spectrometer that may be resold by PKI as an authorized
OEM-dealer for BDAL is a linear OMNIFLEX -TM- MALDI-TOF, as described in
Attachment A, which will meet the specifications contained in Attachment B. PKI
may also resell additional BDAL MALDI-TOF accessories, such as MAP -TM- MALDI
AutoPrep robots, AnchorChip -TM- high-sensitivity targets, various
post-processing software packages, and MALDI-TOF consumables (collectively the
"Accessories"), which are described on
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BDAL's standard U.S. MALDI-TOF price list from time to time. The linear OmniFLEX
system to be sold by PKI will be co-labeled with both, equally-sized PKI and
BDAL decals on the system.
If, during the term of this Agreement BDAL introduces a system that
replaces or supersedes the OmniFLEX or introduces new Accessories, BDAL will
sell such products to PKI under the terms of this Agreement.
PKI is specifically not authorized to sell the reflector version of the
OmniFLEX. If a research customer absolutely needs a reflector OmniFLEX system
from the beginning, then PKI will pass this customer lead on to BDAL. The only
exception to this policy is that PKI upon specific request by its linear
OmniFLEX customer, may sell the reflector upgrade to PKI linear OmniFLEX
customers who have accepted their PKI-purchased linear OnmiFLEX more than twelve
(12) months before those customers request an upgrade. The transfer price to PKI
will be the BDAL U.S. list price minus a 10% finders' fee for PKI. BDAL will
install the reflector upgrade, and provide a limited 90-day warranty on the
reflector upgrade. Moreover, PKI agrees not to incentivize its sales force or
product manager for reflectron upgrades sold via PKI to its customer base of
linear OmniFLEX customers.
For customer leads passed from PKI to BDAL which result in an accepted
purchase order for a reflectron OmniFLEX, or a reflectron upgrade, to BDAL, BDAL
will pay PKI a 5% finder's fee of the purchase order net amount, provided that
PKI played a significant and substantial role in assisting BDAL with the systems
sale (i.e. this would apply if a joint sales call took place, but it would not
apply for passing on lists of potential customers, unqualified general leads,
etc.).
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It is understood that BDAL itself will also continue to sell the
OmniFLEX, including a version with an optional reflector, and nothing contained
in this Agreement shall prevent BDAL from selling or distributing its OmniFLEX
system also via additional third-party distribution channels in the future.
PKI and BDAL agree that on-time deliveries and high quality are
important for the success of this Collaboration. If repeated substantially late
deliveries and major quality problems arise, PKI and BDAL will try to resolve
these issues mutually. If BDAL cannot deliver OmniFLEX systems to PKI without
sustained, substantial and non-solvable delivery or quality problems which
negatively impact PKI's ability to sell the OmniFLEX, then PKI can terminate
this Agreement with one hundred twenty (120) days written notice, including a
ninety (90) day period during which BDAL is afforded an opportunity to fix the
delivery or quality problems.
5. INTRODUCTION AND PHASE 1
PKI and BDAL intend to announce their strategic alliance and
simultaneously introduce the OmniFLEX at Pittcon 2000 on March 13th, 2000. BDAL
will loan an OmniFLEX shell or system to PKI for Pittcon 2000. If PKI can
provide paint color requests and decals to BDAL very soon, then BDAL will make a
best effort to have a co-labeled OmniFLEX shell or system in the PKI selected
colors at the PKI booth at Pittcon.
This strategic alliance will be announced in a joint mutually agreeable
press release, which will initially be drafted by PKI.
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For Phase 1 of this Agreement until Dec. 31st, 2001, PKI with the signing
of this Agreement places a firm, fixed minimum order with BDAL for [*](1)
systems to be delivered to PKI at a minimum rate of [*] per month for
July-October 2000, and going up to [*] per month for the thirteen month period
between November 2000 and November 2001, for a minimum total of [*] systems.
This order shall be accompanied by a non-refundable down-payment of forty
percent (40%) of the total order value, i.e. [*], which will be credited against
actual deliveries of OmniFLEX systems to PKI. Alternatively, PKI may opt to pay
a cash down-payment of forty percent (40%) for the first [*] units in the amount
of [*], plus an irrevocable letter of credit acceptable to BDAL for the
down-payment of forty percent (40%) on the remaining [*] units in the amount of
[*], with both amounts to be credited against actual deliveries of OmniFLEX
systems to PKI. The letter of credit will provide that, if PKI fails to meet its
commitment to purchase and take delivery of systems in accordance with the
agreed upon monthly delivery rate, BDAL shall have the right, after giving
thirty (30) days written notice to PKI, to call the letter of credit. The letter
of credit will be reduced quarterly on the last business day of the quarter in
an amount equal to the value of the units delivered to PKI during such quarter.
Should PKI determine that it needs more systems during Phase 1, then
PKI will advise BDAL as soon as practical on forecasting for additional systems
deliveries. Should PKI take delivery and pay for all [*] systems (or optionally
[*] systems, see below) ordered in Phase 1 well before Dec. 31st, 2001, then
Phase 2 will begin earlier, i.e.
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(1) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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whenever PKI has taken delivery and paid for the first [*](2) systems (or
optionally [*] systems, see below).
During Phase 1, PKI may re-sell the co-labeled OmniFLEX MALDI-TOF o in
the US, Canada and Mexico into
(i) the for-profit food and agriculture industries for any application,
including but not limited to research, production, product safety and
or distribution;
(ii) the for-profit chemical, petroleum and polymer industries for
applications involving
(a) the characterization of raw materials, intermediates and
products used in the production and distribution of synthetic
polymers, bulk chemicals, specialty chemicals, and
petrochemicals, and
(b) the development of analytical methods used to support the
characterizations describe in (ii)(a) above; and
(c) research laboratories only as far as these research labs are
involved in methods development for (ii)(a) and (ii)(b) above;
(iii) QA/QC, manufacturing, drug development and clinical trials in the
for-profit pharmaceutical and biotech industry for applications
specifically involving
(a) the characterization of any molecular components integral to
the manufacture and distribution of commercial products, and
(b) the characterization of any molecular component integral to
the development and evaluation of pharmacologically active
compounds for any
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(2) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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development phase after the identification of lead candidate
compounds, including characterization of polypeptides,
oligonucleotides, and carbohydrates synthesized within core
laboratories when these compounds are used as enabling tools for
any development phase after the drug discovery phase and the
identification of lead compounds.
In Phase 1, if PKI increases the minimum order from [*](3) to [*] systems
over eighteen (18) months, PKI shall have the option of adding the following
countries and fields-of-use to its authorized reselling territory:
- Central and South America to all potential customers
- Italy, Greece, Turkey, Eastern Europe, Israel, and India to all potential
customers.
In Phase 1, PKI is not permitted to re-sell the OmniFLEX into any other
country, and PKI is not permitted to re-sell the OmniFLEX in the U.S. and Canada
into pharmaceutical/biotech laboratories performing drug discovery, including
target research and discovery of new lead compounds; into chemical/polymer
research labs, except as described in (ii)(c) above; or into academic,
non-profit or governmental customer accounts.
During Phase 1, BDAL will be responsible for installation and warranty
service of the co-labeled OmniFLEX in the U.S., Canada and Mexico. If PKI elects
to add Central and South America, Italy, Greece, Turkey, Eastern Europe, Israel,
and India, then BDAL will initially be responsible for the installation, but PKI
will participate in the installation in
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(3) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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order to train its local technicians, and PKI will be responsible for the
post-installation warranty service. BDAL will provide 1-2 weeks of installation
and service training to PKI at mutually agreeable times at BDAL's Massachusetts
factory.
At the beginning of Phase 1, BDAL will generally assist PKI with
transferring marketing materials (e.g. Powerpoint presentations, brochures,
flyers, manual, advertisements) to PKI at no charge, except for direct printing
cost. BDAL retains all rights, including its copyright on these materials, but
PKI is authorized to use these materials as co-labeled materials for its own
marketing purposes, provided that any material changes in content must be
approved in writing by BDAL. However, PKI is responsible for its own
advertising, trade show and similar costs. If PKI develops additional marketing
materials (e.g. application notes, product notes, photos, etc.), PKI will
provide these materials to BDAL at no charge, except for direct printing cost.
PKI retains all rights, including its copyright, and BDAL will obtain prior
written permission from PKI if BDAL makes material changes in content. BDAL has
the right to use the PKI materials as co-labeled materials for marketing
purposes.
6. CONTINUATION AND PHASE 2
If PKI reaches or exceeds the minimum sales goal of [*](4) systems (or
optionally [*] systems) in Phase 1, then this OEM distribution model is expanded
globally for Phase 2, starting Jan. 1st, 2002, and until this Agreement is
terminated. If at the end of Phase 1 the minimum sales goal of [*] systems (or
optionally [*] systems) has not been reached
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(4) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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by PKI, then this Agreement can either be terminated by either party hereto, or
PKI and BDAL may mutually agree to extend Phase 1 by another 2 years.
At least 4 months prior to the beginning of the two-year Phase 2, as
well as at least 4 months prior to the beginning of any subsequent 2-year Phase
2 agreement period, PKI will order a two-year minimum order to be mutually
agreed upon, but in any case greater than [*](5) systems per month, to be
delivered to PKI over 2 years at a minimum rate of greater than [*] systems per
month. Unless the parties otherwise mutually agree, this two-year order shall be
accompanied with a non-refundable down-payment of forty percent (40%) of the
total order value, which will be credited against actual deliveries of OmniFLEX
systems to PKI.
Alternatively, PKI may opt to pay a cash down-payment of forty percent
(40%) for the first third (one 3rd), plus an irrevocable letter of credit
acceptable to BDAL for the down-payment of forty percent (40%) on the remaining
two thirds (two 3rds), with both amounts to be credited against actual
deliveries of OmniFLEX systems to PKI. The letter of credit will provide that,
if PKI fails to meet its commitment to purchase and take delivery of systems in
accordance with the agreed upon monthly delivery rate, BDAL shall have the
right, after giving thirty (30) days written notice to PKI, to call the letter
of credit The letter of credit will be reduced quarterly on the last business
day of the quarter in an amount equal to the value of the units delivered to PKI
during such quarter.
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5 [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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Should PKI determine that it needs more systems during Phase 2, then
PKI will advise BDAL as soon as practical on forecasting for additional systems
deliveries.
During Phase 2 and subsequently, PKI may re-sell the OmniFLEX MALDI-TOF
o in the U.S., Canada and Mexico into
(i) the for-profit food and agriculture industries for any application,
including but not limited to research, production, product safety and
or distribution;
(ii) the for-profit chemical, petroleum and polymer industries for
applications involving
(a) the characterization of raw materials, intermediates and
products used in the production and distribution of synthetic
polymers, bulk chemicals, specialty chemicals, and petrochemicals,
and
(b) the development of analytical methods used to support the
characterizations describe in (ii)(a) above; and
(c) research laboratories only as far as these research labs are
involved in methods development for (ii)(a) and (ii)(b) above;
(iii) QA/QC, manufacturing, drug development and clinical trials in the
for profit pharmaceutical and biotech industry for applications
specifically involving
(a) the characterization of any molecular components integral to
the manufacture and distribution of commercial products, and
(b) the characterization of any molecular component integral to
the development and evaluation of pharmacologically active
compounds for any development phase after the identification of
lead candidate compounds, including characterization of
polypeptides, oligonucleotides, and
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carbohydrates synthesized within core laboratories when these
compounds are used as enabling tools for any development phase
after the drug discovery phase and the identification of lead
compounds. in such other countries and geography, which may be
broader than during Phase 1, and into country-specific fields of
use as will be mutually agreed between the parties prior to the
beginning of Phase 2, provided that the monthly minimum quantity
of units will exceed the two (2) units per month of Phase 1 by a
mutually agreeable amount.
In Phase 2 and subsequently, PKI is not permitted to re-sell the OmniFLEX
globally into pharmaceutical/biotech laboratories performing drug discovery,
including target research and discovery of new lead compounds; into
chemical/polymer research labs, except as described in (ii)(c) above, or into
academic, non-profit or governmental customer accounts. During Phase 2, PKI will
be responsible for installation and warranty service of the co-labeled OmniFLEX
globally.
For post-warranty service, PKI and BDAL will adopt a two-layer service
strategy with front-line service support by PKI for straight-forward service
issues (e.g. subunit exchange, calibration, vacuum service, laser alignment,
software loading), and back-up BDAL service by factory-engineers for difficult
problems.
7. OEM PRICING AND VOLUME DISCOUNTS
Assuming that PKI herewith places a minimum order with BDAL for [*](6)
systems at the beginning of Phase 1, as discussed in section 5 above, and a
minimum order of [*]
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(6) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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systems at the beginning of the Phase 2 two-year period (or subsequent two-year
Phase 2 type periods), an OEM Discount of [*](7) shall apply, as long as BDAL is
responsible for installation and warranty service. "OEM Discount" is the
percentage discount off the U.S. list price given in Attachment A, which shall
be fixed for Phase 1, but which may increase or decrease in Phase 2 and
subsequently.
Specifically, for the minimum order of [*] systems under Phase 1, the
OEM transfer price per system to PKI shall be [*], as long as BDAL is
responsible for installation and warranty service.
During Phase 1, and as long as PKI takes delivery of [*] OmniFLEX
systems from BDAL per month, PKI's OEM Discount for other MALDI-TOF accessories,
consumables and software will be [*] off BDAL's applicable U.S. list price, as
it may be in effect from time to time.
All pricing is understood as F.O.B. BDAL's factory in Billerica, USA,
and does not include import duty, or any country or local sales tax, VAT,
Mehrwertsteuer, or similar.
As part of this Agreement, PKI grants BDAL a [*] OEM discount on
digitizers purchased by BDAL from PKI Ortec division on minimum orders of [*]
units per order. BDAL forecasts that it will wish to purchase [*] Ortec
digitizers in 2000, and [*] Ortec digitizers in the year 2001, but this forecast
shall not be contractually binding.
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(7) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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For each OnmiFLEX system for which PKI provides the warranty service,
the OEM Discount is increased to [*](8). For each OmniFLEX system for which PKI
performs installation, acceptance and warranty service, the OEM Discount is
increased to [*].
The transfer prices above includes Windows-NT workstation (present
configuration: 500 MHz Pentium PC, 19" color monitor, 256MB RAM, >8 GB hard
disk, 1.44 MB floppy, CDR drive for data archival, Ethernet connection) and a HP
1100xi laser printer. Should PKI decide to supply the Windows-NT workstation and
the laser printer, then the transfer price for each OmniFLEX system is reduced
by $2,856.00. However, PKI needs to send each Windows-NT workstation to BDAL for
complete software loading and systems final test 4-6 weeks prior to the expected
factory shipment date.
8. DEVELOPMENT, DEMONSTRATION, TESTING (DDT) DISCOUNT
For OMNIFLEX systems purchased by PKI for internal applications
development, or internal customer demonstration purposes, the DDT discount shall
be [*] off BDAL's applicable U.S. price list. For Phase 1, the DDT transfer
price to PKI is [*]. PKI may not resell any systems purchased under this DDT
discount until the earlier of two years after delivery to PKI or the termination
or expiration of this Agreement, unless there is an imminent major model change,
which would make the DDT systems in PKI's demo inventory obsolete.
9. PAYMENT TERMS
For each ONPULEX system, the payment terms for each OEM system are as
follows:
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(8) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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40% deposit N30 after order placement
30% N30 after delivery
30% N30 upon installation and acceptance
For the first [*](9) units in Phase 1, the 40% cash down payment will be
deemed to satisfy the requirement for a 40% deposit and 30% will be due N30
after delivery and 30% will be due N30 upon installation and acceptance. For the
remaining [*] units in Phase 1 subject to the letter of credit referred to in
Section 5, 70% will be due N30 after delivery and 30% N30 upon installation and
acceptance.
10. WARRANTY AND SERVICE
In Phase 1, the cost of customer site preparation according to BDAL's
site planning guide, or rigging and transportation of the system into the PKI or
customer lab, and consumables required for the installation, are not included in
the BDAL OEM price. If PKI or its customers require additional installations (in
addition to the one installation included in the normal transfer price of [*]),
then these additional installations will be billed by BDAL to PKJ, or its
customer, at normal posted BDAL service rates. In Phase 1, each system price
includes a one-year limited warranty under BDAL's standard warranty terms, a
copy of which is attached hereto as Attachment C. The period of warranty is one
year following demonstration of specifications, but in any event not more than
13 months after delivery, if the beginning of installation is delayed for no
fault of BDAL. If, however, the installation and acceptance of the system by
BDAL takes longer than 2 weeks because the OmniFLEX system does not meet its
performance
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(9) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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specifications for reasons other than siting problems, then the one year
warranty shall run from acceptance of the instrument.
Warranty covers both parts and labor.
In Phase 2, or whenever PKI is responsible for the warranty service,
PKI will supply warranty service labor, be responsible for travel and related
costs of its service technicians, etc. However, BDAL provides to PKI a limited
13 months hardware back-up warranty, beginning upon shipment by BDAL to PKI or
its customer, for all submits which are not wear-and-tear items or consumables.
This BDAL hardware warranty is for parts-exchange or BDAL depot level parts
repair service only, and does not cover field service.
After the expiration of the one-year limited warranty (or at any time
when PKI needs expert assistance with installations or warranty service for
which PKI is responsible per this Agreement) PKI, or the final customer, may
purchase additional annual Maintenance Service Agreements (MSA) or per-call
service from the BDAL service organization in each country at normal MSA or
per-call service rates, posted in each country from time to time. If a customer
requires additional response time guarantees, or 24/7 coverage, then surcharges
to the normal BDAL MSA rates will apply.
BDAL will sell to PKI any spare parts needed by PKI to service the OmniFLEX
system as long as such system is manufactured and for an additional seven (7)
years after manufacture of such system is discontinued, or for an additional
seven (7) years after the
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termination of this Agreement, whichever is earlier, at a discount level of
[*](10) off of BDAL's U.S. list price.
11. LICENSING OF BDAL'S MALDI-TOF IP FOR OEM SYSTEMS
With the purchase of each OMNIFLEX system, PKI and its final system's
customer receives a paid-up non-exclusive license for each particular OMNIFLEX
system to use this particular system under BDAL's intellectual property,
including all patents owned by or exclusively licensed by BDAL, for MALDI-TOF
mass spectrometry. Specifically, this license includes the Indiana University
patent portfolio on SVCF (Space-Velocity Correlation Focussing, by J. Reilly et.
al.), and for BDAL OEM MALDI-TOF systems purchased by PKI, the royalty cost to
Indiana University will be paid by BDAL. The sublicense agreement in Attachment
D, which will be executed simultaneously as a separate agreement, is required
for this Agreement to become valid.
Each software package sold from BDAL to PKI comes with a single CPU license
which PKI may transfer to the final customer. Details of the software licensing
and sublicensing will be subject to BDAL's standard software licensing policy,
as it may be in effect from time to time.
12. OVERSIGHT BOARD
BDAL and PKI will each appoint two members to serve on an oversight
board ("Oversight Board") with respect to this Agreement. Initially, the
representative of BDAL will be Frank H. Laukien and Victor Fursey, and the
representatives of PKI will be Dr. Robert Rosenthal and Michael Elliott. The
oversight board will meet on a quarterly basis or as otherwise agreed upon by
BDAL and PKI to review the progress under the
----------
(10) [*] Indicates information has been omitted and separately filed with the
Securities and Exchange Commission pursuant to an application for an order
declaring confidential treatment thereof.
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Agreement, to review and approve modifications to this Agreement, and attempt in
good faith to resolve any disputes that may arise before the arbitration
provisions of Section 13.9 are invoked to resolve any dispute. The Oversight
Board will also meet, in person or by telephone, to address any issues relating
to the interpretation of the field of use language in Section 5 in order to
minimize customer confusion and resolve disputes as quickly as possible.
13. GENERAL TERMS AND CONDITIONS
13.1 The terms and conditions of this Agreement are confidential, and any
press releases will be done by mutual agreement.
13.2 Neither party acquires any intellectual property rights under this
Agreement except the limited rights necessary to carry out the purposes
set forth in paragraph 11.
13.3 Both parties shall adhere to all applicable laws, regulations and rules
relating to the export of technical data and equipment. PKI shall not
export or re-export any BDAL product or technical data to any
proscribed country listed in such applicable laws, regulations and
rules unless properly authorized.
13.4 This Agreement does not create any agency or partnership relationship.
13.5 All additions or modifications to this Agreement must be made in
writing and must be signed by both parties.
13.6 This Agreement constitutes the entire agreement between the parties
with respect to the subject matter hereof and it supersedes all prior
agreements, understandings and negotiations, written or oral, between
the parties with respect to the subject matter hereof, except for a
previously signed Confidentiality Agreement. Drafts to
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this Agreement were exchanged and drafted by both parties hereto, and
accordingly this Agreement shall be considered jointly drafted.
13.7 This Agreement is made under, and shall be construed according to, the
laws of the Commonwealth of Massachusetts.
13.8 Neither party shall be liable to the other party for any special,
consequential or punitive damages, including, but not limited to, loss
of profits. The provisions of this section shall survive any
termination of this Agreement.
13.9 Neither party shall institute a proceeding in any court or
administrative agency to resolve a dispute between the parties before
that party has sought to resolve the dispute through direct negotiation
with the other party using the Oversight Board established in
accordance with Section 12. If the dispute is not resolved within
thirty (30) days after a demand for direct negotiation, the aggrieved
party may then seek relief through arbitration in Boston Massachusetts
administered by the American Arbitration Association under its
commercial arbitration rules before a single arbitrator; provided that
persons eligible to be selected as the arbitrator shall be limited to
attorneys-at-law who have practiced law for at least 15 years
specializing in either general commercial litigation or general
corporate and commercial matters. The arbitrator shall base his or her
award on applicable laws and judicial precedent and include in such
award a statement of the reasons upon which the award is based.
Judgement on the award rendered by the arbitrator may be entered in any
court having jurisdiction thereof. Both parties will share the cost of
the arbitration equally. The arbitrator may not award special,
consequential or punitive damages.
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14. NOTICE
All notices and other communications required by this Agreement shall
be deemed duly given when deposited in the mail, postage prepaid, registered or
certified First Class mail and addressed to the address given below (unless a
different address shall have been duly given previously) or sent by telephone
facsimile (with receipt confirmed by telephone):
If to BDAL, to:
Bruker Daltonics Inc.
44 Manning Road
Billerica, MA 0 1821
Attention: President
Facsimile No.: (978) 667-0985
If to PKI, to:
PerkinElmer Instruments LLC
761 Main Avenue
Norwalk, Connecticut 06859
Attention: President
Facsimile No.: (203) 761-2800
15. EXCUSABLE DELAYS
Neither party shall be liable in damages for failure to perform under this
Agreement due to any causes beyond its control and without its fault or
negligence, including, but not restricted to, acts of God, acts of war,
governmental acts, fires, floods, epidemics, quarantine restrictions, freight
embargoes, strikes, unusually severe weather, or delay of a subcontractor due to
such causes (unless the materials, supplies, or services to be furnished under a
subcontract are procurable from other sources). In the event that a party
discovers any facts which may, or could with the passage of time, result in a
delay in performance due to an event beyond its control, that party shall
immediately provide written notice to the other party of such facts (including a
description of the cause of the delay, an estimate of the duration of the delay
and a statement regarding the
20
<PAGE>
remedial steps that are being undertaken to resume performance) and shall take
all measures and precautions to reduce the effects of the delay on contract
performance. The time for performance under this Agreement shall be extended by
an amount of time equal to the period of delay; provided, however, that, if the
delay lasts more than ninety (90) days, the party whose performance is not
delayed shall have the right, but not the obligation, to terminate this
Agreement without liability.
16. NAME AND TRADEMARK
16.1. BDAL hereby grants to PKI a royalty-free, non-exclusive license under
the BDAL Trademarks, that pertain to the OmniFLEX and its Accessories,
to distribute these BDAL products to which any of the BDAL Trademarks
have been applied by BDAL; and use any documentation provided by BDAL
hereunder. No license is granted to PKI to use the name Bruker
Daltonics -Registered Trademark- as, or as part of, a corporate name
and/or a trading name.
16.2. PKI hereby grants to BDAL a royalty-free, non-exclusive license under
the PKI Trademarks, to apply the PKI Trademarks to the co-labeled
OmniFLEX before supplying them to PKI.
16.3 The BDAL Trademarks and PKI Trademarks shall be applied to the products
in accordance with such principles as may be agreed between the parties
regarding the form, location and prominence of such trademark, each
such trademark to be of equal prominence to each other.
16.4 All rights in the BDAL Trademarks are owned by BDAL, and all rights in
the PKI Trademarks are owned by PKI. All rights granted pursuant to
this Section 16 shall
21
<PAGE>
terminate upon the expiration or termination of this Agreement. This
applies to registered or unregistered trademarks.
17. PATENT INDEMNITY
BDAL shall defend, indemnify and hold PKI harmless from and against all
claims, damages, costs (including reasonable attorneys fees), or judgments
against PKI in which it is determined or alleged that the sale or the use of any
of BDAL product infringes any patent, copyright, trademark or any other
intellectual property right of any third party. PKI agrees that BDAL, at its
sole option, shall be relieved of the foregoing obligations unless PKI or its
customers (i) notifies BDAL promptly in writing of such claim, suit or
proceeding, (ii) gives BDAL available information and assistance to settle
and/or defend any such claim, suit or proceeding, (iii) gives BDAL authority
over the defense or settlement of such claim as contemplated above, and (iv)
refrains from settling such claim without BDAL's written consent. If a product
(or any part thereof) is, or in the opinion of BDAL, may become, the subject of
any claim, suit or proceeding for infringement of any patent, copyright or
trademark, or if it is determined that a product (or any part thereof) is
infringing and, as a result, its use is enjoined, then BDAL may, at its option
and expense: (i) procure for PKI the right under such patent, copyright or
trademark to distribute such product (or such part thereof) without prejudice to
BDAL's obligations above; or (ii) replace such product (or part thereof) with
other suitable parts; or (iii) suitably modify such product (or part thereof) to
make them non-infringing without modifying their capability; or (iv) if the use
of a product (or part thereof) is prevented by injunction, remove such product
(or part thereof) and refund the aggregate payment paid therefor by
22
<PAGE>
PKI less an amount to account for actual use by PKI's customer, as measured over
a sixty month (60) month life span.
18. TERMINATION
If either party shall, at any time, commit any material breach of any of
the terms or conditions of this Agreement, the non-breaching party shall give
notice of the breach to the breaching party. If the breaching party fails to
cure the breach within forty-five (45) days of said notice (or such longer
period not to exceed ninety (90) days if such breach is incapable of cure within
forty-five days, provided that the breaching party continues diligently to cure
said breach during such period), the non-breaching party may terminate this
Agreement, effective immediately.
In the event that at any time during the term of this Agreement, either
party is adjudged insolvent or bankrupt or shall make an assignment for the
benefit of its creditors, the other party hereto shall have the right, at its
election, to terminate this Agreement effective upon the giving of written
notice. In no event shall this Agreement be construed as an asset of the
bankrupt party.
Upon termination of this Agreement, PKI shall immediately cease to describe
itself as a distributor of products. BDAL shall honor its obligations under this
Agreement with respect to orders for products placed prior to the effective date
of termination or expiration, and shall fill such orders that are accepted by it
prior to the effective date of such termination or expiration.
SIGNATURES:
For PKK: /s/ Robert Rosenthal For BDAL: /s/ Frank H. Laukien
-------------------- --------------------
Name: Robert Rosenthal Name: Frank H. Laukien
Title: President & CEO Title: President & CEO
Date: March 06, 2000 Date: March 02, 2000
23
<PAGE>
ATTACHMENT A:
OMNIFLEX -TM- LINEAR BENCH-TOP MALDI-TOF MS SYSTEM
NORTH AMERICAN PRICE LIST AS OF MARCH 13, 2000
<TABLE>
<S> <C> <C>
1. TOF- 500: OMNIFLEX -TM- BENCH-TOP MALDI TOF MS:
Linear time-of-flight mass analyzer
- 120 cm linear TOF analyzer
- Positive and negative ion detection
- High sensitivity fast MCP detector system with detector
housing
- Integrated vacuum system and electronics with compact
Bench-Top footprint
Gridless MALDI source with Pulsed Ion Extraction (PIE -TM-)
- SCOUT -TM- 100 X-Y stage ion source with 100-position target
and magnifying observation optics
- Gridless design for maximum sensitivity
- Precise X-Y positioning of sample allowing access to all
target area
- Easy to use GUI for simple mouse control of system
- Automatic vacuum lock for sample target introduction
- Computer-controlled UV LASER (N2 @ 337nm)
- 4 exchangeable targets (2 x 100 position, 2 x 49 position)
Pumping system including vacuum measurement and control unit
- 70 l/sec turbomolecular pump including fore-pump
- Vacuum measurement system and control unit
Data System and Software
- 1 GHz 8-bit Digitizer
- Windows-NT workstation: 19" color monitor, 256MB RAM, greater
than 8 GByte hard disk, 1.44 MByte floppy drive, CDR drive for
data archival, EtherNet connection for external networks
- Video camera capture card for on-screen display of target spot
- Mass spectrometry software for data acquisition
(NT-Acquisition), processing (XMASS-NT -TM-), plotting, and
analysis in a networked multi-user environment
- Laser printer for data output
SYSTEM LIST PRICE 130,000.00
24
<PAGE>
OMNIFLEX -TM- OPTIONS
2. Reflectron option: intentionally left blank
3. TOF-170: MAP II (MALDI AUTO PREPARATION) SAMPLE AND LIQUID HANDLER 24,000.00
- Gilson 215 autosampler with liquid handler and injector,
customized for MALDI application with disposable tips
- Racks available for a wide variety of sample vials, and 96 and
384 well plates
- Fully computer controlled from Windows NT data station (not
included), includes all control software and all
user-interface software with Bruker MALDI applications
software
4. TOF-445: ADDITIONAL LICENSE FOR XMASS, NT VERSION 3,500.00
- License to run XMASS on one additional NT workstation, for
offline data processing, does not include installation.
5. TOF-450: MS BIOTOOLS NT BASED ANALYSIS AND INTERPRETATION PACKAGE 5,000.00
- Supports processed spectra and/or peak picking results from
FLEX -TM- III series of MALDI-TOF mass spectrometers,
BioTOF -TM- orthogonal ESI-TOF system, ESQUIRE -TM-
-LC ESI ion trap system, and APEX -TM- II series of FTMS
systems.
- Communication and File Import/Export of XMASS spectra,
FAST -TM- (post-source decay) spectra, LC ion trap profile
spectra from Bruker/Agilent ESQUIRE-LC systems, deconvoluted
single charged profile spectra, GPMAW Sequence Files
(unmodified amino acids only), and clipboard support for
spectra and data
- Annotation of spectra and sequence data to visualize and score
the match between MS/MS spectra and the sequence.
- Automatic generation of sequence tags for database searches
- Internet library searches are fully integrated in the software
using EMBL PeptideSearch and MASCOT (peptide fingerprint and
MS/MS)
- Requires Windows NT (4.0 with Service pack 3, Microsoft
Internet Explorer 4.0 or greater) PC with Pentium II CPU,
minimum 300 MHz, graphic resolution 1024 * 768 pixel with 256
colors or better, 128 MBytes of RAM or better, 4 Gbytes or
larger hard disk (SCSI recommended), 3.5" Floppy Drive with
1.44 MB capacity, CD-ROM Drive (4x or greater), and Ethernet
interface (Computer not included)
6. FACTORY TRAINING COURSE 1,800.00
- 3 day course at the factory
- Includes instrument control, data acquisition and processing
- Includes sample preparation and application-specific training
- Price is person and excludes all travel & lodging expenses
7. 100-POSITION TARGET (REF: A3315) 200.00
8. 49-POSITION TARGET (REF: A3316) 200.00
</TABLE>
25
<PAGE>
ATTACHMENT B
OMNIFLEX -TM- LINEAR BENCH-TOP MALDI-TOF MS SYSTEM
PRODUCT SPECIFICATIONS
--------------------------------------------------------------------------------
OMNIFLEX -TM-
INSTALLATION QUALIFICATION REPORT:
--------------------------------------------------------------------------------
CUSTOMER:
------------------------
------------------------
------------------------
------------------------
BASIC CONFIGURATION
TOF MASS Bench-top MALDI-TOF Mass Spectrometer
ANALYZER Pulsed Ion Extraction, PIE[logo]
120 cm linear flight path
70 l/sec turbo-molecular pump with backing pump
SOURCE AND 100-sample Scout100 -TM- X-Y stage
OPTICS Magnifying sample observation optics
337 nm Nitrogen laser with computerized attenuation positive
or negative ion analysis at 20kV acceleration
DATA Pentium computer
SYSTEM - Windows NT 4.0 Operating system
- 256 MB memory
- 10.0 GB IDE drive
- 3.5" floppy drive
- 19" VGA color monitor
- CDR drive for software upgrades and data backup
1 GHz 8 bit digitizer
XMASS -TM- data processing software
NTDS[logo] - Simultaneous real-time data acquisition
Optional printer, type: _____________________ (e.g. HP 1100xi)
26
<PAGE>
LINEAR OMNIFLEX PERFORMANCE SPECIFICATIONS OBSERVED
* Data Acquisition less than 2 min. after sample change:
_______
* MALDI mass resolution (FWHM):
greater than 3,500 for m/z = 2465 [ACTH (18-39)]
_______
* MALDI mass accuracy measured on mixture of
Angiotensin II, Angiotensin I, Substance P, Bombesin:
Internal calibration: average error less than 100 ppm
_______
External calibration: average error less than 0.02%
_______
* MALDI sensitivity: S/N greater than or equal to 10:1 for 50 fmole
at m/z = 1,047 (Angiotensin II)
_______
* MALDI mass range:
BSA dimer detected at approximately 132 kDa
_______
ADDITIONAL ACCESSORIES DELIVERED:
------------------------------------------------------------
------------------------------------------------------------
------------------------------------------------------------
ACCEPTANCE COMMENTS:
------------------------------------------------------------
------------------------------------------------------------
------------------------------------------------------------
CHECK APPROPRIATE BOX:
The O installation (O final test) is satisfactorily completed and the O warranty
period (O customer shipment) will commence.
Date:
-------------------------
------------------------------- ----------------------------
Customer (Manager) Signature TOF Engineer Signature
27
<PAGE>
ATTACHMENT C
OMNIFLEX -TM- LINEAR BENCH-TOP MALDI-TOF MS SYSTEM
STANDARD WARRANTY
28
<PAGE>
Attachment D:
OEM SUB-LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") is made and/or entered into by and
between Bruker Daltonics Inc. ("Licensor"), a Delaware corporation with its
principal place of business at Fortune Drive, Manning Park, Billerica,
Massachusetts 01821, and PERKINELMER INSTRUMENTS LLC ("Licensee") a
______________________ corporation with its principal place of business at 761
Main Avenue, Norwalk, CT 06859.
WHEREAS, Licensor is the exclusive licensee of, having the full right
to grant sublicenses to, the Patent Rights, as these are defined with
particularity herein; and
WHEREAS, Licensee desires to obtain a license under certain patent
rights held by Licensor, as defined with particularity in this Agreement;
NOW, THEREFORE in view of the promises set forth below, the parties
hereto agree as follows:
1. DEFINITIONS
Solely for the purposes of this Agreement the following terms, as used
herein, will have the meanings specified below:
1.1 "Effective Date" means the date last written below.
1.2 "Patent Rights" means those patents and/or patent
applications listed on Schedule A and any patents issuing from
such patent applications, or any related U.S. or foreign
applications or patents based upon any of such patent
applications or patents, as well as any continuations,
divisions, reexaminations, reissues, substitutes, renewals or
extensions of any of the foregoing patent applications or
patents.
1.3 "Affiliate" of a specified entity means an entity that
directly or indirectly controls, is controlled by, or is under
common control with, the specified entity. For purposes of
this Agreement, the direct or indirect ownership of more than
50% of the outstanding voting shares of an entity, the right
to receive 50% or more of the profits or earnings of an
entity, or the right to control policy decisions of an entity,
will be deemed to constitute control.
1.4 "Licensed Product" or "Licensed Products" means and
includes any apparatus, device, system, product, article of
manufacture, appliance, method or process, the practice,
manufacture, use or sale of which would
29
<PAGE>
be, but for this Agreement, covered in whole or in part by a
pending claim in a pending application within the Patent
Rights or an unexpired claim in a patent within the Patent
Rights.
1.5 "Net Sales" means the gross sales amount of all sales or
leases of Licensed Products by Licensee, Affiliates or
sublicensees to any distributors and/or customers minus any
customary quantity, trade or cash discounts actually given,
allowed returns or allowances given in lieu of allowed
returns, freight and insurance, if separately itemized on the
invoice and paid by the customer, and any value added, sales,
use or excise taxes actually included in the invoice amount,
provided, however, that no deductions will be taken for any
other costs incurred in the manufacture, offering for sale,
sale, distribution, shipment, promotion, advertisement,
exploitation or commercialization of the Licensed Products,
for any costs of collections or any uncollectible accounts, or
for any other costs, expenditures, fees or expenses. For all
Licensed Products used by Licensee as premiums to promote,
market, sell and/or lease products or processes other than
Licensed Products such premiums will be deemed to have been
sold at Licensee's customary sales price. Licensed Products
will be considered "sold" when delivered, billed out, or
invoiced, whichever comes first. In the cases of transactions
not at "arm's length" and of transactions in which the
Licensed Product is exchanged for other than a separate,
entirely-money consideration, "Net Wholesale Price" shall mean
Fair Market Value.
1.6 "Fair Market Value" as applied to Licensed Products means
the Net Sales which the Licensee (or its Affiliate) would
realize from an unaffiliated buyer typical of Licensee's (or
its Affiliate's) buyers in an arm's length sale of identical
apparatus in the same quantity and at the same time and place
as such transaction; provided, however, that Fair Market Value
shall not be lower than complete cost less the items specified
in paragraph 1.5 above to be deducted from Net Sales, to the
extent these items are included in such complete cost) plus a
normal profit factor.
2. GRANT OF SPECIAL OEM SUB-LICENSE
2.1. Licensor hereby grants an individual systems' license
to Licensee, with the right to grant sublicenses to
its Affiliates, to use and/or to re-sell each
MALDI-TOF mass spectrometer purchased by Licensee
from Licensor under a separate "MALDI-TOF MASS
SPECTROMETRY COLLABORATION AND OEM AGREEMENT" of even
date.
2.2. Pursuant to the separate "MALDI-TOF MASS SPECTROMETRY
COLLABORATION AND OEM AGREEMENT" Licensor shall be
responsible
30
<PAGE>
for the payment of all royalties to IU-ARTI on
Licensor's MALDI-TOF systems sold as OEM systems to
Licensee.
2.3. Any license granted under this Agreement shall not
constitute or be interpreted as a license to the
Licensee for manufacture, use or sale of any other
MALDI-TOF or other mass spectrometer, other than the
OEM MALDI-TOF systems specifically purchased from
Licensor under the terms of the "MALDI-TOF MASS
SPECTROMETRY COLLABORATION AND OEM AGREEMENT". In
particular, this Agreement does not waive for the
Licensee future access payments, retroactive or
future royalty payments on any other MALDI-TOF or
other mass spectrometer not specifically covered by
this Agreement.
3. PAYMENTS/LICENSE FEES AND ROYALTIES
This section is not applicable, as Licensor pays all royalties to
IU-ARTI for OEM MALDI-TOF systems sold to Licensee under the separate
"MALDI-TOF MASS SPECTROMETRY COLLABORATION AND OEM AGREEMENT".
31
<PAGE>
4. REPRESENTATION AND WARRANTIES
Licensor warrants that, to the best of its knowledge and belief, it is
the sole exclusive licensee of all rights, title, and interest in the
Patent Rights, free of any liens, encumbrances, restrictions and other
legal or equitable claims, subject, however, to any rights of
governmental authorities, including full right and authority to
sublicense the Patent Rights.
5. RECORDS, REPORTS, AND PAYMENTS
5.1 not applicable
5.2 not applicable
5.3 not applicable
5.4 not applicable
6. TERM OF THE AGREEMENT
6.1 Unless sooner canceled or terminated as herein provided,
the individual system's license granted under this Agreement
will continue for ten (10) years or for the full term of the
last expiring patent or patent application within the Patent
Rights, whichever is longer.
6.2 If Licensee becomes bankrupt or insolvent, or files a
petition in bankruptcy, or if the business of Licensee is
placed in the hands of a receiver, assignee or trustee for the
benefit of creditors, whether by the voluntary act of Licensee
or otherwise, this Agreement will automatically terminate
without any notice whatsoever to Licensee.
6.3 not applicable
6.4 Licensee will have the right to terminate this Agreement
with or without cause at any time upon six (6) months written
notice to Licensor.
6.5 not applicable
6.6 If, at any time during this Agreement, Licensee directly
or indirectly opposes or assists any third party to oppose the
grant of any Letters Patent on any patent application within
the Patent Rights or disputes or directly or indirectly
assists any third party to dispute the validity of any patent
within the Patent Rights, or any of the claims thereof,
Licensor will be entitled thereafter to terminate immediately
all or any portion of the license granted under this Agreement
by notice thereof to Licensee.
32
<PAGE>
6.7 In the event that any claim of any application within the
Patent Rights is canceled, abandoned, or otherwise disallowed
by a final non-appealable or non-appealed action of a Patent
Office having jurisdiction, or in the event that any claim of
any patent within the Patent Rights is held invalid or
unenforceable by a non-appealable or non-appealed decision by
any court of competent jurisdiction, such claim will be deemed
to have expired, as of the date of final disallowance or final
decision of invalidity or non-enforceability.
6.8 Provisions of this Agreement which by their nature
contemplate rights and obligations of the parties to be
enjoyed or performed after the expiration or termination of
this Agreement will survive until their purposes are
fulfilled. Termination of this Agreement for any reason will
not relieve either party of its obligations under this
Agreement previous to the effective date of such termination.
7. NON-TRANSFERABILITY OF LICENSES
7.1 The license granted by this Agreement can be transferred
by the Licensee, but only as part of a transaction by which
the Licensee divests itself of all or substantially all of the
business of manufacturing and/or selling Licensed Products. In
the event of such a transfer, Licensee and its Affiliates
shall thereupon cease to be Licensees hereunder, but such
termination of licenses shall not affect any obligations to
pay royalties which may have accrued prior thereto.
7.2 Should any entity or person cease to be an Affiliate of a
party, as that term is defined in paragraph 1.3 above, this
Agreement shall be terminated as to that entity or person, who
shall have no further rights or obligations under this
Agreement; provided, that such termination of Affiliate status
shall not affect any obligations to pay royalties which may
have accrued prior thereto.
7.3 The license granted in this Agreement shall be binding
upon any successor of Licensor in ownership or control of the
Patent Rights, and the obligations of Licensee, including, but
not limited to, the obligation to make reports and pay
royalties, shall run in favor of any such successor of
Licensor's benefits under this Agreement.
8. PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payment, notice, or other communication pursuant to this Agreement
will be sufficiently made or given on the date of mailing if sent to
such party by express mail or certified first class mail, postage
prepaid, made out to Bruker Daltonics,
33
<PAGE>
Inc. and addressed to it at its address below or made out to Licensee
and addressed to it at its address below as either party will designate
by written notice given to the other party:
Licensor: Frank H. Laukien, President
Bruker Daltonics Inc.
Fortune Drive, Manning Park
Billerica, MA 0 1821
Licensee: Robert Rosenthal, President
PerkinElmer Instruments LLC.
----------------------------
----------------------------
9. MISCELLANEOUS PROVISIONS
9.1 Each party hereto agrees that it will not release any
information to any third party with respect to the terms of
this Agreement without the prior written consent of the other
party. This prohibition includes, but is not limited to, press
releases, educational and scientific conferences, promotional
materials, governmental filings, and discussions with lenders,
investment bankers, public officials, and the media. Should
any third party seek to obtain any information by legal
process with respect to the existence or terms of this
Agreement from either Party hereto, such Party shall promptly
notify the other Party hereto, and shall take all appropriate
measures to avoid and minimize the release of such
information.
9.2 This Agreement will be construed, governed, interpreted,
and applied in accordance with the laws of the Commonwealth of
Massachusetts, U.S.A., except that questions affecting the
construction and effect of any patent will be determined by
the law of the country in which the patent was granted.
9.3 In the event of an adjudication to resolve a dispute over
the scope to or appropriate royalty payment (if any) under,
any of the Patent Rights licensed under this Agreement, the
Licensee may place any disputed royalty payments in an
interest-bearing escrow account mutually satisfactory to the
Licensee and Licensor, rather than paying them to the
Licensor, during the pendency of the adjudication. If the
determination of the adjudication is that no royalty payment
is owed to the Licensor, the escrowed funds, together with any
accrued interest, shall be returned to the Licensee. If the
determination of the adjudication is that a royalty payment is
owed to the Licensor, the escrowed funds, together with any
accrued interest, shall be paid to the Licensor.
34
<PAGE>
9.4 This Agreement constitutes the entire understanding
between the Parties hereto with respect to the subject matter
hereof. This Agreement supersedes any prior agreements between
the Parties hereto as to the subject matter of this Agreement
except as specifically provided herein. No modification,
extension or waiver of any provision hereof or any release of
any right hereunder shall be valid, unless the same is in
writing and is consented to by both Parties hereto.
9.5 The provisions of this Agreement are severable, and if any
provision of this Agreement is held to be ineffective,
unenforceable or illegal for any reason, such ineffectiveness,
unenforceability and/or illegality shall not affect the
validity or enforceability of any or all of the remaining
portions hereof.
9.6 This Agreement shall be construed in accordance with its
fair meaning and not strictly for or against any Party.
9.7 This Agreement may be executed simultaneously in two or
more counterparts, each of which shall be deemed an original,
but both of which together constitute one and the same
Agreement.
9.8 Paragraph titles or captions contained herein are inserted
only as a matter of convenience and for reference, and in no
way define, limit, extend, or describe the scope of this
Agreement, nor the intent of any provision thereof.
9.9 Each Party acknowledges that it has or has, had the
opportunity to consult with counsel of its choice and that in
executing this Agreement it has not relied upon any
statements, representations or agreements of any other person
other than those contained herein.
9.10 Notwithstanding Paragraph 1.5 above, at anytime prior to
the expiration of the patents licensed pursuant to this
Agreement, Licensee may challenge in a legal proceeding the
validity or enforceability the Patent Rights. Licensor may not
use in said legal proceeding this Agreement, the language
contained herein or the royalty payments previously made or
required to be made by this Agreement as an admission by
Licensee that any Patent Rights are valid, enforceable or
infringed.
9.11 Licensee agrees to mark the Licensed Products made, used
or sold in the United States with all applicable United States
patent numbers. All Licensed Products used, shipped to or sold
in other countries will be marked in such a manner as to
conform with the patent laws and practice of the country of
use, shipment, and/or sale.
35
<PAGE>
9.12 No failure or delay on the part of either Party hereto in
the exercise of any power, right or privilege under this
Agreement shall operate as a waiver thereof, nor shall any
single or partial exercise of any such power, right or
privilege preclude other or further exercise thereof or of any
other right, power or privilege.
9.13 Nothing in this Agreement shall be construed as:
(a) a warranty or representation as to the
validity, enforceability or scope of any patent by
the Licensor;
(b) a warranty or representation that any
manufacture, sale, lease, use or importation will be
free fi7om infringement of patents other than those
under which and to the extent to which licenses or
covenants are in force hereunder, including patents
of third parties;
(c) an agreement to bring or prosecute
actions or suits against third parties for
infringement;
(d) conferring any right to use, in
advertising, publicity or otherwise, any name, trade
name, trademark, service mark, symbol or any other
identification or any contraction, abbreviation or
simulation thereof,
(e) conferring by implication, estoppel or
otherwise any license or other right under any
patent, except as expressly granted herein;
(f) a representation or warranty of any kind
or the assumption of any responsibility whatsoever by
any Party with respect to the manufacture, sale,
lease, use or other disposition of any product or
method licensed hereunder (including without
limitation, claims of third parties asserting that a
product is defective or unsafe for its intended
purpose); and
(g) a representation deemed to place Licensee
and Licensor in a partnership, joint venture or
agency relationship and neither party will have the
right or authority to obligate or bind the other
party in any manner.
9.14 All notices and communications provided for hereunder
shall be in writing and shall be mailed or delivered to the
business address of the respective Parties as aforementioned,
or to such other address as any Party may designate from time
to time in writing to the other.
36
<PAGE>
9.15 Each of the Parties agrees to perform reasonably
requested actions of the other Party which are required to
effectuate the covenants and purposes of this Agreement.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands
and seals and duly executed this Agreement as of the day and year set forth
below.
LICENSEE LICENSOR
BY: /s/ Robert Rosenthal BY: /s/ Frank H. Laukien
-------------------- --------------------
Robert Rosenthal Frank H. Laukien
President & CEO President & CEO
PerkinElmer Instruments LLC Bruker Daltonics Inc.
DATE: March 06, 2000 DATE: March 02, 2000
37
<PAGE>
SCHEDULE A
<TABLE>
<CAPTION>
------------------- --------------------------- ----------------------------------------------------------
US PAT. NO. INVENTOR TITLE
------------------- --------------------------- ----------------------------------------------------------
<S> <C> <C>
------------------- --------------------------- ----------------------------------------------------------
5,504,326 James P. Reilly Spatial-Velocity Correlation Focusing in Time-of-Flight
Steven M. Colby Mass Spectrometry
Timothy B. King
------------------- --------------------------- ----------------------------------------------------------
5,510,613 James P. Reilly Spatial-Velocity Correlation Focusing in Time-of-Flight
Steven M. Colby Mass Spectrometry
Timothy B. King
------------------- --------------------------- ----------------------------------------------------------
5,712,479 James P. Reilly Spatial-Velocity Correlation Focusing in Time-of-Flight
Steven M. Colby Mass Spectrometry
Timothy B. King
------------------- --------------------------- ----------------------------------------------------------
</TABLE>
38
