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UNITED STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 10-Q/A
|X| AMENDMENT TO QUARTERLY REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE
SECURITIES EXCHANGE ACT OF 1934 FOR THE QUARTERLY PERIOD ENDED JUNE 30,
1996.
| | TRANSITION REPORT PURSUANT TO SECTION 13 OR 15(d) OF THE SECURITIES
EXCHANGE ACT OF 1934 FOR THE TRANSITION PERIOD FROM _________ TO
__________.
COMMISSION FILE NUMBER 0-19955
MOLECULAR DYNAMICS, INC.
(Exact name of registrant as specified in its charter)
Delaware 94-3050031
(State or other jurisdiction (IRS Employer Identification
of incorporation or organization) Number)
928 EAST ARQUES AVENUE, SUNNYVALE, CALIFORNIA 94086
(Address of principal executive offices and zip code)
(408) 773-1222
(Registrant's telephone number, including area code)
Indicate by check mark whether the registrant (1) has filed all reports required
to be filed by Section 13 or 15(d) of the Securities Exchange Act of 1934 during
the preceding 12 months (or for such shorter period that the registrant was
required to file such reports), and (2) has been subject to such filing
requirements for the past 90 days.
|X| Yes | | No
As of July 28, 1996, 10,208,356 shares of Common Stock of the
Registrant were outstanding.
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The Undersigned Registrant hereby amends Part II, Items 1 and
6 of its Quarterly Report on Form 10-Q for the quarter ended June 30, 1996, as
set forth below:
PART II. OTHER INFORMATION
Item 1: Legal Proceedings.
Molecular Dynamics, Inc. (the "Company") entered into a settlement
agreement dated March 20, 1996 with Meridian Instruments, Inc. ("Meridian") with
respect to the litigation initiated by the Company at the United States District
Court for the Northern District of California on December 14, 1994, Molecular
Dynamics, Inc. v. Meridian Instruments, Inc., Civil Action No. C 94-4292 SAW
(JSB) ENE, alleging that Meridian is infringing United States Patent Re. 34,214
("Patent 34,214") relating to three-dimensional images generated from confocal
microscope systems. The settlement provides for a mutual release of all claims
and counterclaims in the suit between the parties and dismissal of the case, a
grant to Meridian of a non-exclusive license under Patent 34,214 and related
patents and a grant of certain rights to shares of Meridian stock ("Shares").
The Company does not believe that disclosure of the amount or the attributed
value of the Shares would be meaningful since Meridian is a private company and
there is no current public market for the Shares. In addition, the Company
cannot exercise any rights relating to the Shares until certain conditions are
met. The Company accounted for the Shares on a cost basis and their attributed
value is immaterial. As of this date, Meridian has paid no dividend on the
Shares, nor does the Company anticipate that Meridian will pay a dividend on the
Shares in the foreseeable future.
On April 11, 1996, the Company filed a complaint against Leica, Inc.
for patent infringement in the United States District Court for the Northern
District of California, Molecular Dynamics, Inc. v. Leica Inc., Civil Action No.
C 96-20280 RMW (PVT). The complaint seeks injunctive relief and damages for the
infringement of Patent 34,214. The Company seeks its lost profits due to the
defendants' infringement of the patent, and a permanent injunction to stop the
infringing acts.
Item 6: Exhibits and Reports on Form 8-K
(a) Exhibit 10.38 - Settlement Agreement by and between Molecular
Dynamics, Inc. and Meridian Instruments, Inc., dated as of
March 20, 1996.
(b) Exhibit 11.1 - Statement re Computation of Earnings Per Share
(c) There were no reports on Form 8-K during the quarter ended
June 30, 1996.
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EXHIBIT INDEX
Exhibit No. Document
10.38* Settlement Agreement by and between Molecular Dynamics,
Inc. and Meridian Instruments, Inc., dated as of March 20,
1996.
11.1(1) Statement re Computation of Earnings Per Share
-------
"*" on such exhibits indicates that portions have been omitted
for which confidential treatment has been requested and filed
separately with the Securities and Exchange Commission.
(1) Incorporated by reference from an identically numbered exhibit
filed with the Company's Quarterly Report on Form 10-Q (File No.
0-19955) filed with the Securities and Exchange Commission on August
13, 1996
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SIGNATURE
Pursuant to the requirements of the Securities Exchange Act of 1934,
the Registrant has duly caused this report to be signed on its behalf by the
undersigned thereunto duly authorized, in Sunnyvale, California on this 10th
day of January, 1997.
MOLECULAR DYNAMICS, INC.
By: /s/ JAY FLATLEY
-----------------------------------
Jay Flatley
President, Chief Executive Officer,
Chief Operating Officer, Acting
Chief Financial Officer and Member
of the Board of Directors
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Exhibit 10.38
SETTLEMENT AGREEMENT
This Settlement Agreement is effective as of March 20, 1996, and is made and
entered into by and between: Molecular Dynamics, Inc. (hereinafter referred to
as "MOLECULAR"), a California corporation, which has offices at 928 East Arques
Avenue, Sunnyvale, California 94086; and Meridian Instruments, Inc.,
(hereinafter referred to as "MERIDIAN"), a Michigan corporation, which has
offices at 2310 Science Parkway, Okemos, Michigan 48864.
WHEREAS, litigation is currently pending in the United States District Court for
the Northern District of California, Molecular Dynamics, Inc. v. Meridian
Instruments, Inc., Civil Action No. C 94-4292 SAW (JSB) ENE (hereinafter
referred to as "District Court Action") initiated by MOLECULAR, alleging that
MERIDIAN is infringing U.S. Patent Re. 34,214 (sometimes hereinafter referred to
as "the '214 patent");
WHEREAS, MERIDIAN has asserted a counterclaim ("MERIDIAN's Counterclaim") in the
District Court Action for declaratory relief alleging that U.S. Patent Re.
34,214 is invalid, not infringed, and unenforceable;
WHEREAS, MOLECULAR represents that it is the owner of all right, title, and
interest in and to U.S. Patent Re. 34,214 and its related foreign patents and
patent applications;
WHEREAS, MOLECULAR and MERIDIAN wish to resolve all claims relating to U.S.
Patent Re. 34,214 and its related foreign patents and patent applications,
including all claims and counterclaims asserted in the District Court Action and
any claims which MOLECULAR may have against any customer of MERIDIAN;
NOW, THEREFORE, the parties to this Settlement Agreement, in reliance upon the
above-recited representations and in consideration of the terms and covenants
set forth below, agree as follows:
1. Mutual Releases
a. MOLECULAR hereby grants to MERIDIAN and its successors,
assigns, agents, distributors, and anyone acting for or on
behalf of MERIDIAN and to all of MERIDIAN's customers and
their agents, employees, representatives, and assigns, a
release from all liability owing to MOLECULAR as a result of
MOLECULAR's claims asserted in the District Court Action.
b. MERIDIAN hereby grants to MOLECULAR and its successors,
assigns, and those acting for or on behalf of MOLECULAR, a
release from all liability owing to MERIDIAN as a result of
MERIDIAN's Counterclaim asserted in the District Court Action.
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2. Dismissal of District Court Action
The parties hereby agree and stipulate that the District Court Action will be
dismissed with prejudice pursuant to a Stipulation and Order of Dismissal with
Prejudice in the form shown in Exhibit A hereto to be executed by their
respective counsel of record which will be submitted to the Court for entry but
will be effective upon execution by all counsel for the parties hereto.
3. License Grant
a. MOLECULAR hereby grants to MERIDIAN and its Affiliates a
non-exclusive transferable worldwide license under U.S. Patent
Re. 34,214 and all related foreign patents and patent
applications, and any divisions, continuations, reissues or
extensions thereof (collectively, the "Patents"), subject to
the terms and conditions of this Agreement. The term
"Affiliates" shall mean companies the majority of whose voting
shares are now or hereafter owned or controlled directly or
indirectly by MERIDIAN. A company shall be considered an
Affiliate for only so long as such ownership or control
exists.
b. Without limitation of the foregoing, such license shall
entitle MERIDIAN and its Affiliates to make, have made,
import, use, offer to sell, and sell any products, components
or subassemblies and to practice any methods or processes
within the claims of the Patents. No rights or licenses are
granted or deemed granted hereunder or in connection herewith,
other than those rights and licenses expressly granted in this
Agreement, and MOLECULAR has no obligation to provide MERIDIAN
with any information or know-how.
4. Grant of Stock
a. In consideration, MERIDIAN will issue to MOLECULAR XXXXXXX
shares of common stock of MERIDIAN Instruments, Inc.,
(hereinafter referred to as the "Shares"), within thirty days
after the effective date of this Agreement. The Shares issued
to MOLECULAR shall be subject to the terms and conditions set
forth below.
b. MOLECULAR represents and warrants to MERIDIAN as follows:
i. Investment. MOLECULAR is acquiring the Shares for
investment purposes, without a view to or for resale
in connection with, any distribution thereof.
ii. Transfers. MOLECULAR understands that since the
Shares have not been registered under the Securities
Act or applicable state securities laws, MOLECULAR
must bear the economic risk of an investment in such
securities for an indefinite period of time unless
they are subsequently registered under the Securities
Act and applicable state securities laws or an
exemption from such registration is available. In
that regard, MOLECULAR has been advised that:
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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(1) MERIDIAN has no obligation to register the
Shares under the Securities Act or any Blue
Sky Laws.
(2) MERIDIAN is not subject to the reporting
requirements of the Securities Exchange Act
of 1934, as amended, and Rule 144 is not
presently available for public release of
the Shares. It acknowledges that the Shares
must be held indefinitely unless they are
subsequently registered under the Securities
Act or an exemption from such registration
is available. It has been advised or is
aware of the provisions of Rule 144
promulgated under the Securities Act, which
permits limited resale of securities
purchased in a private placement subject to
the satisfaction of certain conditions.
iii. Ability to Bear Risk. MOLECULAR is able to bear the
economic risk of an investment in the Shares,
including, without limiting the generality of the
foregoing, the risk of losing part or all of its
investment and the possible inability to sell or
transfer the Shares for an indefinite period of time.
iv. Accredited Investor. MOLECULAR is an "accredited
investor," as that term is defined in Rule 501 of
Regulation D promulgated under the Securities Act.
v. Restrictive Legend. MOLECULAR agrees that the
certificates representing the Shares will bear the
following restrictive legend:
THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933 OR ANY STATE SECURITIES LAWS.
THEY MAY NOT BE SOLD OR OFFERED FOR SALE, PLEDGED,
HYPOTHECATED OR OTHERWISE TRANSFERRED IN THE ABSENCE
OF AN EFFECTIVE REGISTRATION STATEMENT AS TO THE
SECURITIES UNDER SAID ACT AND ANY APPLICABLE STATE
SECURITIES LAW OR UNLESS THE COMPANY HAS RECEIVED AN
OPINION OF COUNSEL SATISFACTORY TO THE COMPANY THAT
SUCH REGISTRATION IS NOT REQUIRED TO EFFECTUATE SUCH
TRANSACTION.
vi. Liquidity. MOLECULAR's financial condition is such
that the undersigned is under no present need to
dispose of any portion of the Shares to satisfy any
existing or contemplated undertaking or indebtedness.
vii. Risk Factors. MOLECULAR understands that investment
in the Shares is speculative and involves significant
risks. In addition to the general economic risks
inherent in most businesses and the uncertainties
associated with anticipating and predicting business
behavior and results, MOLECULAR has been advised that
the following factors are those
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which, at the date of this Agreement, are considered
by management of MERIDIAN to represent the principal
significant risks applicable to an investment in the
Shares, although other factors may ultimately affect
MERIDIAN or an investment in it in a manner and to a
degree which cannot be foreseen:
(1) XXXXXXXXX; requirement for XXXXXXXX.
MERIDIAN is continuing to XXXXXXXXXXXX, and
as a result, it is likely that MERIDIAN will
XXXXXXXXXXXXXXXXXXXXXXXXX. When MERIDIAN
seeks XXXXXXXXXX (i) there can be no
assurance that such XXXXXXXXXXXX will be
available or that they will be available on
favorable terms, and (ii) the XXXXXXXX of
MOLECULAR may be substantially XXXXX.
(2) Arbitrary Sales Price. The sales price of
the Shares has been arbitrarily set by
MERIDIAN and bears no relation to assets,
book value or other established criteria of
value.
(3) No Operating Control. MOLECULAR will not be
able to control operations or remove,
replace or direct management in the
activities of MERIDIAN.
viii. Sophistication. By reason of MOLECULAR's knowledge
and experience in financial and business matters in
general, the industry of which MERIDIAN is a part,
and investments of this type in particular, MOLECULAR
is capable of evaluating the merits and risks of any
investment in the Shares.
5. Stock Put
a. If any of the following conditions occurs prior to July 31,
1999, MOLECULAR shall have the right to require MERIDIAN to
purchase the Shares upon the terms and provisions hereinafter
set forth (which right of MOLECULAR is hereinafter referred to
as the "Put"), subject to the provisions of Paragraph 6(b)
hereof:
i. MOLECULAR enters into XXXXXXXXXXXXX under U.S. Patent
Re. 34,214 with XXXXXXXXXX of the XXXXXXXXX defined
by Paragraph 5(a)(iv).
ii. MOLECULAR enters into XXXXXXXXXXXXXX under U.S.
Patent Re. 34,214 with XXXXXXX of the XXXXXXXX
defined by Paragraph 5(a)(iv), and is in XXXXX
Xconcerning U.S. Patent Re. 34,214 with XXXXXXXX of
the remaining XXXXXX. MOLECULAR shall be obligated to
XXXXXXX such XXXXXXXXXXX (excluding a XXXXXXXXX
XXXXXXXXXXXXX) or until MOLECULAR shall have entered
into a XXXXXXX XXXXXXXXXX with such company.
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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iii. MOLECULAR successfully XXXXX the XXX of U.S. Patent
Re. 34,214 to XXXXXX (excluding a
XXXXXXXXXXXXXXXXXXXXXXXX) by a XXXXXXXXX against
XXXXXXXXXXX of the XXXXXX defined by Paragraph
5(a)(iv). Such condition is satisfied only if no
XXXXXXXXXX of U.S. Patent Re. 34,214 that is at issue
in such XXXXXX is found XXXXXXX XXXXXXX.
iv. The XXXXXXXXXXX referred to above in Paragraphs
5(a)(i)-(iii) are defined as follows: Upon execution
of this agreement, the XXXXX are XXXXXXX
XXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXXX.
(1) If any of the above-listed XXXXX shall
XXXXXX from the XXX
XXXXXXXXXXXXXXXXXXXXXXXXXXX U.S. Patent Re.
34,214, then a XXXXXXXX may be made at the
request of either party. Upon such request:
(a) each party will propose XXXXXXXXXX; (b)
each party will prioritize a combined list
of such XXXXXXXXXXXX; (c) the prioritized
lists will be combined to determine the
highest ranking XXXXX on the combined
prioritized lists and that XXXXXX shall be
the XXXXX. In the case of a tie, then the
XXXXXXXXXX shall be determined by lot among
the tied XXXXXX.
(2) As to each XXXX, any XXXXXXXXXXXXX must
include at all times any XXXXXX of the named
XXXX which manufactures or sells product in
the United States or which ships product to
the United States.
b. The purchase price for the Shares upon exercise of the Put
shall be the sum of $XXXXX, plus $XXXXXX per month starting
May 1, 1995.
c. In the event MOLECULAR shall satisfy any of the conditions set
forth in Paragraph 5(a) hereof prior to July 31, 1999, the
license granted to MERIDIAN under Paragraph 3 shall be subject
to the terms set forth in Paragraph 8.
d. If the Put is not exercised within 90 days of the fulfillment
of one of the conditions of Paragraph 5(a), MOLECULAR shall
retain the Shares but the right to exercise the Put
terminates.
e. In the event that MOLECULAR exercises the Put, MERIDIAN shall
pay the purchase price for the Shares purchased from MOLECULAR
according to the following payment schedule:
i. If the Put is exercised in 1996, MERIDIAN shall pay
MOLECULAR XX XX of the purchase price upon the
exercise of the Put and shall pay the remainder of
the purchase price XXXXX thereafter;
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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ii. If the Put is exercised in 1997, MERIDIAN shall pay
MOLECULAR XX-XXX of the purchase price upon the
exercise of the Put, and shall pay the remainder of
the purchase price XXXXXXXXXXXXXXXX thereafter;
iii. If the Put is exercised in 1998, MERIDIAN shall pay
MOLECULAR XXX XXXX of the purchase price upon the
exercise of the Put, and shall pay the remainder of
the purchase price XXXXXXXXXXXX thereafter;
iv. If the Put is exercised in 1999, MERIDIAN shall pay
MOLECULAR XXX XXX of the purchase price upon the
exercise of the Put, and shall pay the remainder of
the purchase price XXXXXXXXXX thereafter.
f. Upon request by MERIDIAN, MOLECULAR shall subordinate
MERIDIAN's obligation to pay the balance of the purchase price
for the Shares pursuant to such Subordination Agreement as may
be reasonably requested by any bank or other financial
institution providing financing to MERIDIAN, and any other
secured creditor of MERIDIAN.
6. Stock Call
a. MERIDIAN shall have a right to purchase, for a total price of
$XXX, the Shares if either of the following conditions occur:
i. MOLECULAR, by XXXX, fails to XXXXXXX the XXXXXXXX
specified in Paragraph 5(a)(i) or to satisfy the
conditions specified in Paragraph 5(a)(ii); or
ii. U.S. Patent Re. 34,214 is declared or otherwise found
XXXXXXXXX or XXXXXXXXXX in a XXXXXXXXXXX by a
XXXXXXXXX. Such condition is satisfied if any
XXXXXXXXXXXXX of U.S. Patent Re. 34,214 that is at
issue in XXXXXXX is found XXXXXXXXXX.
b. Upon any merger or consolidation of MERIDIAN, or a transfer of
more than 50% of the issued and outstanding common stock of
MERIDIAN or upon a sale of substantially all of the assets of
MERIDIAN, any of which transactions shall occur prior to such
time as MOLECULAR shall have the right to exercise the Put,
MERIDIAN shall have the right to purchase the Shares for a
purchase price equal to the purchase price which would be
applicable upon the exercise of the Put on such date, provided
however,
i. the entire purchase price shall be paid by MERIDIAN
within thirty days of notice of exercise of such
purchase of the Shares unless MOLECULAR shall have
given the notice contemplated by Paragraph 6(b)(ii)
hereof, and
ii. MERIDIAN shall not have such right to purchase the
Shares under the terms of Paragraph 6(b) hereof if
within fifteen days after notice by MERIDIAN to
MOLECULAR of the exercise of such right to purchase
the Shares, MOLECULAR shall notify MERIDIAN that it
is permanently and
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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irrevocably waiving any right to exercise the Put
pursuant to Paragraph 5 hereof, provided further,
that such waiver by MOLECULAR shall not affect the
rights and obligations of MERIDIAN and MOLECULAR
under Paragraph 8 of this Agreement in the event that
MOLECULAR shall satisfy any of the conditions set
forth in Paragraph 5(a) prior to July 31, 1999.
c. The rights of MERIDIAN set forth in each of Paragraph 6(a)
above and Paragraph 6(b) above are hereinafter individually,
and sometimes collectively, referred to as the "Call." In the
event of the exercise of the Call set forth in Paragraph 6(a)
hereof, or in the event of the exercise of the Call set forth
in Paragraph 6(b) hereof, if MOLECULAR does not elect to give
the notice contemplated by Paragraph 6(b)(ii),
i. the license under U.S. Patent Re. 34,214 set forth in
Paragraph 3 of this Agreement shall terminate as to
products not made prior to written notice of
exercising the Call;
ii. all products made prior to such written notice shall
have a continuing royalty-free license under U.S.
Patent Re. 34,214; and
iii. all products, regardless of when made or sold by
MERIDIAN or its Affiliates, shall be licensed under a
continuing irrevocable royalty-free license under the
related foreign patents and patent applications.
7. Other Stock Provisions
a. MOLECULAR shall grant to MERIDIAN's Chief Executive Officer or
other designee of MERIDIAN's Board of Directors an irrevocable
voting proxy on the Shares in the form attached hereto as
Exhibit B.
b. MOLECULAR waives any rights as a shareholder to any financial
statements or other reports of MERIDIAN.
c. The shares issued to MOLECULAR are not transferable and will
be subject to a legend describing the Put and Call, and all
other restrictions applicable to the Shares under this
Agreement.
8. License Provisions
The provisions of this paragraph come into effect if and when MOLECULAR shall
satisfy any of the conditions set forth in Paragraph 5(a) hereof prior to July
31, 1999. In such event:
a. MERIDIAN and its Affiliates shall continue to have a
non-exclusive transferable worldwide license under U.S. Patent
Re. 34,214 and all related foreign patents and patent
applications as set forth in Paragraph 3 of this Agreement.
b. For each Insight system or component, including the confocal
microscope, associated optics (including lenses), computers,
monitors, and software relevant to
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the generation of 3-D confocal images, but excluding
accessories or peripherals unrelated to the generation of 3-D
confocal images ("the LICENSED PRODUCTS"), made used, shipped
or sold by or for MERIDIAN in, from, or to the United States
that is within the scope of any claim of U.S. Patent Re.
34,214, MERIDIAN shall pay MOLECULAR a royalty of X% of the
net sales price of the LICENSED PRODUCTS. The royalty of this
subparagraph shall have a cap of $XXXXX for the first $XXXXX
in annual sales of the LICENSED PRODUCTS, but the cap is
eliminated for the year following any year in which the annual
sales of the LICENSED PRODUCTS exceed $XXXXXXX.
c. Every ACAS, Ultima, or similar product made, used, sold,
imported, or offered for sale by or for MERIDIAN shall be
royalty-free.
d. Every product made and sold by or for MERIDIAN entirely
outside the United States shall be royalty-free.
e. Notwithstanding Paragraph 8(b) to the contrary, MERIDIAN shall
pay no royalties with respect to products shipped to
Affiliates of MERIDIAN for the sole and exclusive use of such
Affiliates.
f. All royalty payments shall be due and payable on the 15th day
of the calendar quarter immediately succeeding the month in
which the sales price was collected. All payments shall be
made to such bank account or other location or person as
MOLECULAR may designate in writing from time to time.
g. MERIDIAN agrees to make and keep full and accurate books and
records in sufficient detail to enable royalties payable
hereunder to be determined. From time to time on reasonable
notice, MOLECULAR's certified public accountants shall have
full access to the books and records of MERIDIAN pertaining to
activities under this Agreement solely to verify the accuracy
of royalty payments. In no event shall such accountants be
entitled to make copies of any information relating to a
particular customer of MERIDIAN, and such accountants shall
not disclose to MOLECULAR the identity of, or any information
relating to, any customer of MERIDIAN. Prompt adjustment shall
be made by the proper party to compensate for any errors or
omissions disclosed by such audit.
9. Validity and Infringement of U.S. Patent Re. 34,214
a. MERIDIAN agrees not to challenge the validity, infringement,
or enforceability of U.S. Patent Re. 34,214 either directly or
indirectly so long as MERIDIAN has a license under that
patent. However, MERIDIAN may raise issues of non-infringement
for new products initially sold after December 1, 1996.
b. The parties hereby agree that in the event that any claim of
U.S. Patent Re. 34,214 is held to be invalid or unenforceable,
and such judgment is final and non-appealable, then MERIDIAN
shall pay no further royalties with respect to the sale
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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of any of MERIDIAN's products. Notwithstanding the foregoing,
MERIDIAN shall have no right to repayment of any amounts
previously paid by MERIDIAN on account of such non-infringing
or invalidated Patent, provided that the foregoing shall not
affect MERIDIAN's right to exercise the Call.
10. Most Favored Licensee
In the event that MOLECULAR grants or has granted a license under U.S. Patent
Re. 34,214 where such other license includes terms more favorable to the
licensee than those contained in this Agreement, then the terms of this
Agreement shall be adjusted to the more favorable terms of such other license,
provided, however, MERIDIAN adopts any less favorable terms and conditions of
such other license. MOLECULAR shall supply to MERIDIAN's counsel, on an
"ATTORNEYS' EYES ONLY" basis, a copy of all such licenses within thirty days of
entry into such licenses. MOLECULAR and MERIDIAN's counsel shall agree on
redacted licenses or summaries of relevant terms to be supplied to MERIDIAN.
11. Image Space Software
MOLECULAR shall offer to MERIDIAN to resell MOLECULAR's Image Space software as
an OEM at a discount of XX%. Whenever MERIDIAN sells Image Space software with a
Meridian product, the sale of such Meridian product shall be royalty free.
12. Disclosure of ENE Materials
The parties agree that the parties can disclose all communications made and
documents prepared in connection with the Early Neutral Evaluation proceeding of
November 14, 1995 to third parties under a confidentiality agreement. The
parties agree that such communications and documents shall not be used in any
connection in any other proceedings.
13. Destruction or Return of Confidential Materials
The parties and their attorneys agree that they will destroy or return to the
other party, pursuant to Paragraph 22 of the stipulated protective order in this
lawsuit, all documents originating from the other party and marked "Confidential
Information" or "Confidential -- Outside Counsel Only."
14. No Admission of Wrongdoing
Nothing in this Settlement Agreement shall be construed as an admission of
wrongdoing against any party hereto.
15. Scope and Transferability
a. This Agreement shall be binding upon and inure to the benefit
of the parties hereto, and each of them, and each of all of
their representatives, attorneys, officers, directors,
shareholders, heirs, partners, successors, assigns, licensees,
employees, affiliates and agents.
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b. The patent license set forth in this Agreement shall be
transferable without restriction in the event of a sale or
merger of MERIDIAN or a sale of substantially all of the
assets of MERIDIAN. No aspect of this Agreement shall inhibit
MERIDIAN's ability to enter into any financing agreement,
secured, unsecured, or otherwise. MOLECULAR shall promptly
sign any consent, verification, or other document reasonably
required for facilitation or closing of a sale or merger of
MERIDIAN or a financing by MERIDIAN of any type, including a
secured financing.
16. Governing Law
This Agreement shall in all respects be governed, interpreted, and construed in
accordance with the laws of the State of California without regard to its
provisions with respect to conflicts of laws.
17. Waiver
A waiver of any breach of any provision of this Agreement shall not be construed
as a continuing waiver of other breaches of the same or other provisions of this
Agreement.
18. Notices
All notices shall be in writing and shall be given by registered or certified
letter to the parties at the addresses indicated above. Either party may change
its address by giving the other party notice of such new address.
19. Entire Understanding
This Agreement embodies the entire understanding between the parties relating to
the subject matter hereof, whether written or oral, and there are no prior
representations, warranties or agreements between the parties not contained in
this Agreement. Any amendment or modification of any provision of this Agreement
must be in writing, dated and signed by both parties hereto.
20. Invalidity of Agreement
If any provision of this Agreement is declared invalid or unenforceable by a
court having competent jurisdiction, it is mutually agreed that this Agreement
shall endure except for the part declared invalid or unenforceable by order of
such court. The parties shall consult and use their best efforts to agree upon a
valid and enforceable provision which shall be a reasonable substitute for such
invalid or unenforceable provision in light of the intent of this Agreement.
21. Counterparts
This Agreement may be executed in any number of counterparts and each such
counterpart shall be deemed to be an original.
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IN WITNESS WHEREOF, the parties hereto have caused this instrument to be
executed in duplicate by their duly-authorized representatives, effective as of
the day and year first above written.
MOLECULAR DYNAMICS, INC.
Dated: March 29, 1996. By: /s/ James M. Schlater
--------------------------
Name: James M. Schlater
--------------------------
Title: Chairman of the Board
-------------------------
MERIDIAN INSTRUMENTS, INC.
Dated: March 20, 1996. By: /s/ Ian R.N. Bund
--------------------------
Name: Ian R.N. Bund
--------------------------
Title: Chairman
-------------------------
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J. WILLIAM WIGERT, JR. (047,252)
STEPHEN M. EVERETT (121,619)
MARIA S. CEFALU (107,937)
LIMBACH & LIMBACH L.L.P.
2001 Ferry Building
San Francisco, CA 94111
(415) 433-4150
Attorneys for Defendant
MERIDIAN INSTRUMENTS, INC.
Noemi C. Espinosa (116,753)
Valerie Russell (172,531)
BROBECK, PHLEGER & HARRISON
Two Embarcadero Place
2200 Geng Road
Palo Alto, CA 94303
(415) 424-0160
Attorneys for Plaintiff
MOLECULAR DYNAMICS, INC.
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
MOLECULAR DYNAMICS, INC., ) Civil Action No.
a California corporation, ) C 94-04292 SAW (JSB) ENE
)
Plaintiff, )
vs. ) STIPULATION AND ORDER OF
) DISMISSAL WTIH PREJUDICE
MERIDIAN INSTRUMENTS, INC., )
a Michigan corporation, )
Defendant. )
)
- -------------------------------------- )
)
AND RELATED COUNTERCLAIM )
)
)
- --------------------------------------
Plaintiff Molecular Dynamics, Inc. and defendant Meridian Instruments,
Inc., by their attorneys of record hereby stipulate
STIPULATION AND ORDER OF
DISMISSAL WITH PREJUDICE - 1 - C 94-04292 SAW
EXHIBIT A TO SETTLEMENT AGREEMENT
<PAGE> 13
to dismissal of all claims and counterclaims asserted in the above-entitled
action with prejudice.
BROBECK, PHLEGER & HARRISON
Two Embarcadero Place
2200 Geng Road
Palo Alto, CA 94303
(415) 424-0160
Dated: By:
------------------------ ------------------------------
Noemi C. Espinosa
Valerie Russell
Attorneys for Plaintiff
MOLECULAR DYNAMICS, INC.
LIMBACH & LIMBACH L.L.P.
2001 Ferry Building
San Francisco, CA 94111
(415) 433-4150
Dated: By:
------------------------ ------------------------------
J. William Wigert, Jr.
Stephen M. Everett
Maria S. Cefalu
Attorneys for Defendant
MERIDIAN INSTRUMENTS,INC.
IT IS HEREBY ORDERED.
Dated:
------------------------ ------------------------------
U.S. District Judge
STIPULATION AND ORDER OF
DISMISSAL WITH PREJUDICE - 2 - C 94-04292 SAW
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IRREVOCABLE PROXY
(COUPLED WITH AN INTEREST)
Molecular Dynamics, Inc., being the record owner of XXXXXXXXXXXXXXXXX
XXXXXXXXXXXXXX shares of common stock of Meridian Instruments, Inc., a Michigan
corporation, does hereby appoint Ian R. N. Bund as its proxy to execute written
consents of shareholders and to attend all meetings of the stockholders of
Meridian Instruments, Inc. with full power to vote and act for it in the same
manner and extent that it might were it personally present at said meetings.
The proxy shall have full power to substitute another person as my
proxy and to revoke the appointment of any such substitute proxy.
This proxy is given in connection with and pursuant to Paragraph 7(a)
of a certain Settlement Agreement dated January ____, 1996 between Molecular
Dynamics, Inc. and Meridian Instruments, Inc. By reason of the rights and
restrictions contained in such Settlement Agreement for the benefit of Meridian
Instruments, Inc. relating to the shares of common stock of Meridian
Instruments, Inc. owned by Molecular Dynamics, Inc., and Ian R. N. Bund being
the Chairman of the Board of Directors of Meridian Instruments, Inc., Molecular
Dynamics, Inc. hereby acknowledges and agrees that this proxy is coupled with an
interest, and therefore in accordance with Section 422(f) of the Michigan
Business Corporation Act, this proxy is irrevocable.
MOLECULAR DYNAMICS, INC.
Dated: March 29, 1996 By: /s/ James M. Schlater
--------------------------
Name: James M. Schlater
------------------------
Title: Chairman of the Board
------------------------
EXHIBIT B TO SETTLEMENT AGREEMENT
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR INFORMATION
WHICH HAS BEEN STRICKEN
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