<PAGE> 1
EXHIBIT 10.30
LICENSE AGREEMENT
This License Agreement ("Agreement") is made and entered into as of the
31st day of March, 2000, by and between Martek Biosciences Corporation, a
Delaware corporation ("Licensor"), and Abbott Laboratories, an Illinois
corporation, ("Licensee").
WITNESSETH:
WHEREAS, Licensor has developed certain technology relating to the use
of Omega-3 and Omega-6 long-chain polyunsaturated fatty acid-containing
triglycerides for incorporation into infant formula;
WHEREAS, Licensee and its affiliates are in the business of developing,
manufacturing and marketing infant nutritional products; and
WHEREAS, Licensee desires to obtain a non-exclusive license from
Licensor to use the Technology and Licensor is willing to grant such license
subject to the conditions and pursuant to the terms set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants of the parties hereto, each party hereby agrees with the other as
follows:
ARTICLE I
DEFINITIONS
Section 1.1. "Affiliate" shall mean any person, corporation, firm,
partnership or other entity which directly or indirectly owns Licensee, is owned
by Licensee or is owned by a party which owns Licensee to the extent that the
owning entity has in excess of 50% of the equity having the power to vote on or
direct the affairs of the owned entity.
Section 1.2. "Infant Formula Product" shall mean a breast milk
substitute formulated industrially in accordance with applicable Codex
Alimentarius and United States Food and Drug Administration standards (i) to
satisfy the total normal nutritional requirements of infants from birth up to
between four and six months of age and adapted to their physiological
characteristics or fed in addition to
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 1 -
<PAGE> 2
other foods to infants up to approximately one year of age and older or (ii) to
satisfy the normal nutritional requirements of infants born prematurely.
Section 1.3. "Licensed Patents" shall mean the patents and patent
applications attached hereto as Exhibit 1 and all other patents and patent
applications in the Territory owned by Licensor or licensed to Licensor (with
the right to sublicense) which cover the Technology, including all patents and
patent applications covering inventions, improvements or modifications conceived
or developed and owned by or licensed to Licensor (with the right to sublicense)
during the term of this Agreement and included in the Technology, and all
divisionals, continuations, continuations-in-part, reexaminations and extensions
thereof.
Section 1.4. "Licensee Product" shall mean any product (i) which is an
Infant Formula Product, (ii) which is developed by or for Licensee or its
Affiliates, and (iii) which would infringe one or more Licensed Patents if sold
in any country in the Territory where such Licensed Patent(s) has issued, but
for the license granted in Article II hereof.
Section 1.5. "Martek Products" shall mean triglycerides containing
Omega-3 and/or Omega-6 long-chain polyunsaturated fatty acids produced by or for
Martek, by microbial fermentation according to the Technology and Licensed
Patents.
Section 1.6 "Supply Agreement" shall mean a definitive agreement between
Licensor and Licensee, which shall set forth the terms and conditions under
which Licensor shall sell and Licensee shall purchase Martek Products. Such
Supply Agreement may pertain only to Martek Products containing arachidonic acid
("ARA Supply Agreement"), or only to Martek Products containing docosahexaenoic
acid ("DHA Supply Agreement"), or to both types of Martek Products.
Section 1.7. "Technology" shall mean the organisms, microorganisms,
specifications, biological materials, designs, formulae, processes, standards,
data, trade secrets, know-how and technology relating to the development and
production of the Martek Product, Martek's proprietary practice of incorporating
triglycerides containing Omega-3 and/or Omega-6 long-chain polyunsaturated fatty
acids, and Licensor's proprietary process by which triglycerides containing
Omega-3 and/or Omega-6 long-chain polyunsaturated fatty acids are manufactured,
purified and incorporated, into Infant Formula Products, and any modifications,
improvements, and enhancements to any of the foregoing made by Licensor, which
are proprietary
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 2 -
<PAGE> 3
to Licensor and which, in Licensor's and Licensee's mutual opinion expressed in
writing, is or are necessary or useful in the production and development of the
Martek Product.
Section 1.8. "Territory" shall mean all the countries in the world,
individually, collectively or in any combinations.
Section 1.9. "Third Party" shall mean any party other than Licensor,
Licensee and Affiliates.
Section 1.10 "Trademark(s)" shall mean the Licensor trademarks
FORMULAID, NEUROMINS, DHASCO and ARASCO. Exhibit 2 attached hereto sets forth
the Trademarks as of the date of this Agreement.
Section 1.11 "Unit of Martek Product" shall mean that quantity of Martek
Product containing one (1) kilogram of docosahexaenoic acid or one kilogram of
arachidonic acid.
ARTICLE II
GRANT OF LICENSE AND OTHER RIGHTS
Section 2.1. License. Licensor hereby grants to Licensee, under the
Licensed Patents, the Technology, and Licensor's other proprietary rights, for
the term of this Agreement and subject to the conditions of this Agreement, a
non-exclusive right and license, in the Territory, (i) to use, make *
triglycerides containing Omega-3 and/ or Omega-6 long-chain polyunsaturated
fatty acids for the production of the Licensee Product, (ii) to use the Martek
Products for purposes of producing the Licensee Product; and (iii) the right to
use, market, import, export, distribute, offer for sale and sell the Licensee
Product.
Section 2.2 Sublicense. Licensor hereby grants to Licensee, under the
Licensed Patents, the Technology, and Licensor's other proprietary rights, for
the term of this Agreement and subject to the conditions of this Agreement, a
non-exclusive right, in the Territory, to grant non-exclusive, non-transferable
sublicenses to:
(i) Affiliates to enjoy the rights set forth in Section 2.1(i)-(iii);
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 3 -
<PAGE> 4
(ii) * approved by Licensor (such approval not unreasonably withheld)
to enjoy the rights set forth in * and to * triglycerides
containing Omega-3 and/ or Omega-6 long-chain polyunsaturated
fatty acids by microbial fermentation according to the Technology
and/ or the Licensed Patents and/ or Licensee Product exclusively
to Licensee and/ or its Affiliates; and
(iii) * to enjoy the rights set forth * excluding the use of * used by
Licensor in the Martek Products, or any * contained within
Licensor's documented production process for the production of the
Martek Products, to * triglycerides containing Omega-3 and/ or
Omega-6 long-chain polyunsaturated fatty acids and/or Licensee
Product exclusively for Licensee and/ or its Affiliates;
provided that each such Affiliate * shall be subject to confidentiality
obligations at least as stringent as those set forth in Article XI of this
Agreement.
Section 2.3 Limitation of License. The right *, as granted to Abbott
within the license and rights granted under Section * and Licensee * from
Licensor for purposes of * which contains *, upon and subject to the following:
(i) Licensor shall demonstrate, to Licensee's reasonable satisfaction,
that Licensor * in compliance with Licensee's * (as provided to
Licensor prior to the date of this Agreement, and as may be
amended in good faith by Licensee from time to time);
(ii) The use by Licensee of Licensor's * of Licensee Product * shall
enable Licensee to obtain and/or maintain * for marketing Licensee
Product containing *, with no delay or added cost or obligation to
Licensee, and with the *, in comparison with Licensee's ability to
obtain and/or maintain such * for * Licensee Product * by Licensee
from a Third Party other than a * (excluding such delays, costs,
or labeling changes necessary to qualify Licensor *); and
(iii) Licensor and Licensee shall enter into an ARA Supply Agreement, in
accordance with Section * below.
Licensee shall use due diligence in working with Licensor in good faith to
satisfy the conditions set forth in Section 2.3(i), (ii), and (iii) above. The
parties agree that nothing in this Section 2.3 shall limit the right and license
granted in Section 2.1 and 2.2 above as it relates *, use or sell arachidonic
acid, or to *, use or sell
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 4 -
<PAGE> 5
docosahexaenoic acid, and nothing in this Section 2.3 shall obligate Licensee to
enter into any DHA Supply Agreement, nor to purchase any Martek Products from
Licensor or any Third-Party licensee of Licensor, which contain docosahexaenoic
acid.
Section 2.4. Licenses to Third Parties
(i) Licenses to Third Parties Generally *. Licensor shall be entitled to
grant any license to any Third Party relating to the Technology, the Martek
Products or the Licensed Patents upon any terms whatsoever; provided, however,
that Licensor shall not grant any license to any Third Party after the effective
date of this Agreement, or otherwise agree to any terms and/ or conditions with
a Third Party, for the incorporation of the Martek Products into, or for the use
of the Technology or the Licensed Patents for the production of, an Infant
Formula Product * without the prior written consent of Licensee or *.
Notwithstanding the provisions of this Section 2.4(i), Licensor shall be *
(similar to those provided in subsections * of this Agreement) without the prior
consent of Licensee and without being obligated concurrently *, if the license
to such a Third Party is territory-restricted and if the * Third Party licensee
due to the territorial restrictions applicable to use of the Technology and the
Martek Product. In the event Licensor enters into a contract or otherwise agrees
after the effective date of this Agreement to sell the Martek Products to a
Third Party *. Licensor further represents to Licensee that Licensor has not,
prior to the effective date of this Agreement, granted a license to any Third
Party for the incorporation of the Martek Products into, or for the use of the
Technology or the Licensed Patents for the production of, an Infant Formula
Product *.
(ii) Production of the Martek Products. If the conditions set forth in
Section 2.3(i), (ii), and (iii) above are satisfied, the parties shall negotiate
in good faith to enter into the ARA Supply Agreement. In addition, if Licensee
elects, at Licensee's sole discretion, to obtain Martek Products containing
docosahexaenoic acid from Licensor, the parties shall negotiate in good faith to
enter into the DHA Supply Agreement. Such Supply Agreement(s) shall govern in
case of any conflict between this Agreement and such Supply Agreement(s)
relating to the supply of the relevant Martek Product(s) to Abbott, and shall
include a provision that Licensor shall use reasonable efforts to produce the
Martek Products itself, or through a Third Party whether or not pursuant to
another licensing agreement, for the purpose of creating a sufficient supply of
the Martek Products to satisfy Licensee's and its Affiliates' requirements with
respect to their marketing and sale of the
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 5 -
<PAGE> 6
Licensee Product; provided, however, that such requirements and any increases
and decreases thereof, shall be communicated in writing by Licensee and its
Affiliates not less than twelve (12) months prior to Licensor's obligation to
satisfy such requirements or increases or decreases thereof.
(iii) Supply Payments in Lieu of Royalty. In the event Licensor and
Licensee enter into a Supply Agreement (whether an ARA Supply Agreement, a DHA
Supply Agreement, or both) and decide to use a purchase price per Unit of Martek
Product that is in lieu of the Royalty (as defined in Section 4.1(iii) below),
such purchase price shall not exceed * per Unit of Martek Product, but such
purchase price shall be subject to annual adjustments, in accordance with
increases or decreases in the most recently-available twelve (12) month
Producers Price Index published by the Bureau of Labor Statistics of the U.S.
Department of Labor, commencing on the first anniversary of the first delivery
of Martek Product to Licensee.
(iv) Transfer of Martek Products. Nothing in this Section 2.4 or in this
Agreement shall be construed to permit Licensee or its Affiliates to sub-license
the Martek Products or the Technology, except as expressly set forth in Section
2.2 above, or otherwise unilaterally to transfer to any Third Party the Martek
Products or the Technology except as the same are incorporated into or used in
the manufacture of the Licensee Product.
Section 2.5 Sublicensing. The grants to Licensee under this Article II
shall not include the right to grant sublicenses, except as expressly set forth
in Section 2.2 above.
Section 2.6. Trademarks. In addition to the license granted hereunder
relating to the Martek Products and the Technology, Licensor hereby grants to
Licensee the non-exclusive, right and license to use the Trademarks solely on
and in connection with the sale of any Licensee Product that contains a Martek
Product, with the further agreement that Licensee may elect to so use the
Trademarks at Licensee's sole discretion. If Licensee so uses the Trademarks,
the rights granted in this Section 2.6 shall be subject to the following terms
and conditions:
(i) Licensee shall not use the Trademarks as or part of its corporate or
business name or the name of any business entity which is controlled by it,
whether an Affiliate or otherwise.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 6 -
<PAGE> 7
(ii) Licensee and its Affiliates shall have no right to sublicense to
Third Parties any of the rights in the Trademarks conveyed hereunder.
(iii) Licensee and its Affiliates shall not affix or use the Trademarks
on any product other than a Licensee Product that contains a Martek Product.
(iv) Licensee recognizes and acknowledges Licensor's ownership of the
Trademarks and Licensor's intent to protect the Trademarks in the Territory. *
All use by Licensee or its Affiliates of the Trademarks in the Territory shall
inure to the benefit of Licensor, and Licensee and its Affiliates shall make no
use or apply for any registration thereof except as permitted by this Agreement.
Upon reasonable request by Licensor and at Licensor's expense, Licensee shall
assist Licensor, including execution of appropriate documents, in effectuating,
registering, and otherwise maintaining Licensor's rights in the Trademarks.
Nothing in this Agreement shall be construed so as to require Licensor to take
any actions or measures to protect or secure any rights in or obtain or apply
for registration of the Trademarks.
(v) Licensee covenants that to the extent that any Trademark is, or
Licensor notifies Licensee that any Trademark has been registered in any
jurisdiction in the Territory, Licensee will use the trademark registration
symbol (R) at least one time per label, labeling or packaging of the Licensee
Product that contains a Martek Product or on the labels, labeling or packaging
thereof and on all material originating with Licensee or its Affiliates and used
to promote the sale of any Licensee Product that contains a Martek Product in
the applicable jurisdiction, and the following legend prominently shall appear
at least once in each such Licensee Product or material in each such
jurisdiction: [Trademark](R) is a registered trademark of Martek Biosciences
Corporation. Until such time as Licensor obtains a Registration on any Trademark
in a particular jurisdiction, Licensee shall substitute the symbol "(TM)" in
place of the symbol (R) as specified herein in such jurisdiction.
(vi) Licensee covenants that Licensee Products that contain any Martek
Product manufactured for and by it and sold by it under the Trademarks shall be
of as high a quality as like other products sold by Licensee. *
(vii) Licensee shall advise Licensor of any infringement of any
Trademark of which it or its Affiliates becomes aware, but Licensee and its
Affiliates shall not
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 7 -
<PAGE> 8
bring any action with respect to any such infringement without Licensor's prior
written consent. *
(viii) Nothing in this Section 2.6 or in this Agreement shall be
construed to require Licensee or its Affiliates to use any of the Trademarks on
the Licensee Product or on the labels, labeling or packaging thereof or on
materials used to promote the sale of the Licensee Product.
Section 2.7. Services. During the first * of this Agreement, at * to
Licensee, Licensor shall provide up to * of services of its officers and other
employees at such reasonable times as requested by Licensee to provide technical
and other consultation services relating to the delivery and use of the
Technology as contemplated under this Agreement. If greater * of such technical
or other consultation services in the aggregate are required and requested by
Licensee or its Affiliates, Licensor and Licensee hereby agree that, prior to
the provision of additional technical or other consultation services, they shall
enter into good faith negotiations relating to compensation and other terms for
such additional technical or other consultation services, which compensation and
other terms shall be commensurate with industry standards.
ARTICLE III
TERM AND CANCELLATION
Section 3.1. Term. This Agreement shall commence on the date first
written above and, unless earlier terminated pursuant to another Section of this
Article III, shall terminate as to each country in the Territory in which a
Licensee Product is sold, on the twenty-fifth anniversary of the date of first
commercial sale of any Licensee Product in such country and, as to each country
in the Territory in which a Licensee Product has not been sold prior to the
twenty-fifth anniversary of the date first written above, upon such twenty-fifth
anniversary. Upon expiration of this Agreement as to each country, Licensee
shall have a fully paid, royalty free license to continue to utilize the Martek
Products and the Technology in such country as provided for in Section 2.1 and
2.2. Upon expiration of this Agreement as to each country, Licensee shall have a
fully paid, royalty free license to continue to utilize the Trademarks in such
country in accordance with in Section 2.6.
Section 3.2. Material Breach; Opportunity to Cure. Either party to this
Agreement may terminate this Agreement upon forty-five (45) days written notice
if
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 8 -
<PAGE> 9
the other party shall commit a material breach of this Agreement and shall not
cure such breach within such forty-five (45) day period, provided that if the
allegedly breaching party in good faith initiates an Alternative Dispute
Resolution ("ADR") procedure pursuant to Section 12.1 below and Exhibit 3
attached to this Agreement, relating to such alleged breach or cure, during such
forty-five (45) day period, and if the ADR procedure results in a finding that
such breach was committed and that such breach was not cured, then termination
shall be effective forty-five (45) days after the date of the ADR finding,
unless such breach is cured within such second forty-five (45) day period.
Section 3.3. Termination in Case of Infringement. Licensee shall have
the right to terminate this Agreement in a particular country within the
Territory if a court or other tribunal of competent jurisdiction determines by
final order that the Technology or any of the Martek Products infringes upon the
patent or other proprietary rights of any Third Party in such country; provided,
however, that if, prior to any such termination, Licensor develops a
non-infringing alternative or obtains a license from such Third Party, such that
Licensee could lawfully use the Technology and/ or Martek Products (as the case
may be) in connection with the Licensee Products at no additional cost or
expense to Licensee beyond that expressly provided in this Agreement, Licensee
shall not terminate this Agreement.
Section 3.4 Termination by Licensee. Licensee shall have the right to
terminate this Agreement of its own volition upon ninety (90) days prior written
notice to Licensor, provided that such termination shall be effective no earlier
than the first anniversary of the date upon which Licensee made the payments to
Licensor as required under Section 4.1(i) below.
Section 3.5. Sale of Inventory upon Termination. Effective upon the date
of termination of this Agreement (country-by-country or in whole, as the case
may be), Licensee and its Affiliates shall cease manufacturing the Licensee
Product; provided, however, that, Licensee and its Affiliates may continue to
distribute the Licensee Products manufactured by or for Licensee prior to such
date if, to the extent lawful, Licensee continues to pay the Royalty under
Section 4.1(iii) with respect to such Licensee Products and otherwise continues
to comply with the terms and conditions of this Agreement. Notwithstanding the
preceding sentence, upon the earlier to occur of (i) the sale by Licensee and
its Affiliates of all of their inventory of Licensee Products manufactured prior
to the date of the termination of this Agreement or (ii) the date which is six
months after the date of the termination of this Agreement, Licensee and its
Affiliates shall cease all use of the Technology,
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 9 -
<PAGE> 10
sale of the Licensee Product and use of the Trademark. This Section 3.5 shall
not apply in the event this Agreement expires pursuant to Section 3.1 of this
Agreement.
Section 3.6. Other Rights and Remedies.
(i) Unless another provision of this Agreement specifically provides to
the contrary, the rights of termination as herein provided shall be in addition
to all other rights and remedies which either party may have to enforce this
Agreement or to secure damages for the breach hereof, and the exercise of any
right of termination as herein provided by either party shall not relieve the
other of any of its obligations under this Agreement accruing prior to the
effective date of termination, including, but not limited to, the obligation to
pay fees and Royalties pursuant to Section 4.1 or to render reports with respect
thereto.
(ii) In no event shall either party be liable to the other for any
indirect or consequential damages, including but not limited to loss of profits
or business opportunity, whether in connection with the termination of this
Agreement or any Supply Agreement, the breach hereof or thereof, or any other
basis upon which one party may seek remedies against the other.
ARTICLE IV
PAYMENTS BY LICENSEE
Section 4.1. Fees and Royalties. Licensee shall compensate Licensor for
the license and other rights granted hereby and services provided hereunder, in
United States Dollars, as follows:
(i) A one time payment (non-refundable, but creditable
pursuant to the provisions of this Section 4.1(1)) of three million
dollars ($3,000,000), two million dollars ($2,000,000) of which is
payable within five (5) business days of the execution of this Agreement
and one million dollars ($1,000,000) of which is payable within five (5)
business days of the first anniversary date of this Agreement. Upon
Licensee's satisfaction of premarket requirements of the U.S. Food and
Drug Administration necessary to allow Licensee to sell any Licensee
Product in the United States, a portion of this one time payment equal
to Five Hundred Thousand Dollars ($500,000) shall be creditable by
Licensee against on going Royalties that are due hereunder or against
the purchase of the Martek Products pursuant to the Supply Agreement (as
the case may be);
(ii) A pre-payment (non-refundable, but creditable
pursuant to the provisions of this Section 4.1(ii)) of one million, five
hundred thousand dollars ($1,500,000) payable within five (5) business
days
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 10 -
<PAGE> 11
of execution of this Agreement, which payment shall be creditable by
Licensee against on going Royalties that are due hereunder or against
the purchase of the Martek Products pursuant to the Supply Agreement(s)
(as the case may be);
(iii) During the term described in Section 4.1(v)(A)
below, a royalty payment (the "Royalty") in an amount equal to * of the
greater of (A) the cost of goods sold applicable to the Licensee
Product, as determined using generally accepted accounting principals
and methodologies reflected on Licensee's audited annual financial
statements (the "Cost of Goods Sold"), or (B) the amount received by
Licensee or its Affiliates from the sale for value of the Licensee
Product to Third Parties, which amount received by Licensee or its
Affiliates shall not be reduced by taxes assessed on income from such
sales but shall not include: returns and allowances actually paid or
allowed by Licensee or its Affiliates; discounts, whether cash or trade;
rebates; and sales, use, excise, value added and other taxes based on
the sales price of the Licensee Products, whether or not absorbed by
Licensee or its Affiliates (the "Sales Price").
(iv) During the term described in Section 4.1(v)(B)
below, a Royalty for Licensee Product provided for use by a customer in
an amount equal to * of the greater of (A) the Cost of Goods Sold
applicable to the Licensee Product, or (B) the Sales Price of the
Licensee Product to Third Parties.
(v) (A) As to each country in the Territory in which
the Licensee Product is sold or otherwise distributed for consumer
use, until the expiration of any Licensed Patents in such country,
regardless of when such Licensed Patents may issue; provided; however,
that royalties shall be paid in every country in which any Licensee
Product is sold or otherwise distributed for consumer use, whether or
not Licensor obtains a patent in such country, for a period of not less
than ten (10) years after the date of the first commercial sale of such
Licensee Product in that country, and provided, further, that no royalty
shall be payable upon sales of a Licensee Product in a country after the
twenty-fifth (25th) anniversary of the date of the first commercial sale
of such Licensee Product in that country.
(v) (B) As to each country in the Territory in which the
Licensee Product is sold or otherwise distributed for consumer use, for
such additional period of time, if any, between the expiration of the
royalty obligation
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 11 -
<PAGE> 12
described in Section 4.1(v)(A) above and the twenty-fifth (25th)
anniversary of the date of the first commercial sale of the Licensee
Product in such country.
(vi) *
Section 4.2. Manner of Royalty Payment. All Royalty payments with
respect to each Licensee Product sold shall be made quarterly, within sixty days
of the close of each of Licensee's three month and annual accounting periods,
based on Licensee's fiscal year, with respect to Licensee's and its Affiliates'
sales occurring during such quarters, at Licensor's office as set forth below.
Quarterly royalty payments shall be made in U.S. Dollars at the sales price
applicable thereto if in U.S. Dollars or, if in another currency, such quarterly
royalty payments shall be the sum of royalties due for the three (3) months of
the applicable quarter calculated for each such month using the beginning and
ending month's published exchange rate, set one business day prior to month end,
by Reuters divided by two (if a Reuters exchange rate is not available for
certain countries, an exchange rate established by a recognized third party will
be used).
Section 4.3. Reimbursement of Expenses. Licensee agrees to pay to
Licensor, in addition to the amounts specified in Section 4.1 above, all
reasonable, verifiable traveling, living and out-of-pocket expenses, approved in
advance in writing by Licensee, for services rendered by Licensor outside of the
states of Maryland and Kentucky and requested by Licensee pursuant to Section
2.7 of this Agreement.
Section 4.4. Commercialization and Other Expenses. Licensee and its
Affiliates shall pay all expenses for the commercialization of the Licensee
Product. Licensee shall compensate Licensor for samples of the Martek Products
that are to be used for research and development purposes, and not for inclusion
in a Licensee Product for sale to consumers*
ARTICLE V
REPRESENTATIONS AND WARRANTIES
Section 5.1. Licensor's Representations and Warranties. Licensor
represents and warrants to the Licensee as follows:
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 12 -
<PAGE> 13
(i) Exhibit 1 sets forth a complete and accurate list of the Licensed
Patents as of the date of this Agreement.
(ii) Licensor has all necessary corporate power and authority to enter
into this Agreement, perform its obligations hereunder and license
the Technology, the Licensed Patents and the Martek Products
pursuant to the terms of this Agreement. Licensor's performance
under this Agreement does not conflict with any other contract to
which Licensor is bound.
(iii) Licensor has, prior to the date of this Agreement, provided
Licensee with a list of all Third Party patents and/ or patent
applications related to the Technology which are known to
Licensor.
(iv) It is Licensor's belief as of the date of this Agreement, that no
Third Party patents are infringed by manufacture or sale, in the
Territory, of the Martek Products.
Section 5.2. DISCLAIMERS. (i) LICENSOR HEREBY DISCLAIMS ANY WARRANTY OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE RELATING TO THE MARTEK
PRODUCTS OR THE TECHNOLOGY AND ANY OTHER WARRANTY OR WARRANTIES RELATING THERETO
AND NOT EXPRESSLY SET FORTH IN THIS AGREEMENT. LICENSOR MAKES NO REPRESENTATIONS
OR WARRANTIES AND HAS NO DUTY TO ENSURE THAT THE TECHNOLOGY OR THE MARTEK
PRODUCTS ARE USABLE WITH THE LICENSEE PRODUCT OR THAT THE TECHNOLOGY OR THE
MARTEK PRODUCTS ARE SAFE OR CAN BE INCORPORATED SAFELY INTO THE LICENSEE
PRODUCT. IT IS HEREBY ACKNOWLEDGED AND AGREED THAT IT SHALL BE LICENSEE'S RIGHT
AND OBLIGATION TO DETERMINE THE SAFETY AND UTILITY OF EACH MARTEK PRODUCT AS IT
RELATES TO LICENSEE PRODUCTS.
(ii) LICENSOR DISCLAIMS AND SHALL NOT BE LIABLE FOR ANY DAMAGES OF ANY
NATURE RESULTING OR ARISING FROM OR RELATING TO (A) THE USE, MANUFACTURE,
DISTRIBUTION, MARKETING, OR SALE BY LICENSEE, ITS AFFILIATES OR ANY THIRD PARTY
OF THE TECHNOLOGY, THE MARTEK PRODUCTS OR THE LICENSEE PRODUCT, OR (B) ANY
IMPROVEMENTS OR MODIFICATIONS TO THE TECHNOLOGY, THE
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 13 -
<PAGE> 14
MARTEK PRODUCTS OR THE LICENSEE PRODUCT WHICH ARE NOT MADE BY AND PROPRIETARY TO
LICENSOR, UNLESS THE LIABILITY RESULTS FROM (X) LICENSOR'S FAILURE TO PERFORM
ITS OBLIGATIONS UNDER THIS AGREEMENT OR (Y) IF LICENSEE ELECTS TO OBTAIN ANY
MARTEK PRODUCT FROM LICENSOR, LICENSOR'S FAILURE TO MANUFACTURE THE MARTEK
PRODUCT IN ACCORDANCE WITH SPECIFICATIONS MUTUALLY AGREED TO BETWEEN LICENSOR
AND LICENSEE UNDER THE SUPPLY AGREEMENT.
(iii) LICENSOR HEREBY DISCLAIMS ANY WARRANTY THAT THE TECHNOLOGY OR THE
LICENSED PATENTS ARE FREE FROM INFRINGEMENT BY THIRD PARTIES, EXCEPT AS SET
FORTH IN SUBSECTION 5.1. LICENSOR FURTHER DISCLAIMS ANY WARRANTY RELATING TO THE
PATENTABILITY OF, OR THE VALIDITY OF ANY PATENTS RELATING TO, THE TECHNOLOGY OR
THE MARTEK PRODUCTS AND MAKES NO REPRESENTATIONS WHATSOEVER WITH REGARD TO THE
SCOPE OF ANY SUCH PATENTS OR, EXCEPT AS SET FORTH IN SUBSECTION 5.1, THAT SUCH
PATENTS MAY BE COMMERCIALLY EXPLOITED WITHOUT INFRINGING OTHER PATENTS. LICENSOR
HEREBY DISCLAIMS ANY WARRANTIES WITH REGARD TO THE VALIDITY OR USE OF THE
TRADEMARKS AND MAKES NO REPRESENTATIONS WHATSOEVER WITH REGARD TO THE SCOPE OF
ANY OF THE TRADEMARKS.
Section 5.3 Licensee's Representations and Warranties. Licensee
represents and warrants to the Licensor as follows:
(i) The execution and delivery of this Agreement and the performance
by Licensee of the transactions contemplated hereby have been duly
authorized by all necessary corporate actions.
(ii) The performance by Licensee of any of the terms and conditions of
this Agreement will not constitute a breach or violation of any
other agreement or understanding, written or oral, to which it or
its Affiliates is a party.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 14 -
<PAGE> 15
ARTICLE VI
LICENSEE'S COVENANTS
Section 6.1. Compliance with Law; Regulatory Approval. Licensee
covenants and agrees that it and its Affiliates shall conduct all of their
operations dealing with the Technology, the Martek Products and the Licensee
Product in material compliance with all applicable laws, regulations and other
requirements which may be in effect from time to time, of all national
governmental authorities, and of all states, municipalities and other political
subdivisions and agencies thereof, including, without limiting the generality of
the foregoing, the Infant Formula Act of 1980, the Federal Food, Drug, and
Cosmetic Act, the regulations and other requirements of the United States Food
and Drug Administration, similar state laws and regulations and similar laws and
other requirements, including any and all amendments, as may be applicable in
any jurisdiction in which any Licensee Product is sold. * The parties recognize
and acknowledge Licensee's intent to diligently pursue the commercialization of
a Licensee Product; provided, however, that nothing in this Agreement shall be
construed so as to obligate Licensee to take any specific action or measure to
seek regulatory approval for or to market Licensee Product.
Section 6.2. Performance and Product Quality. Licensee covenants and
agrees that it and its Affiliates shall exercise a reasonable standard of care
in the testing, manufacturing, marketing, packaging, distribution and sale of
each Licensee Product. Licensee further covenants and agrees that it and its
Affiliates shall maintain quality control, provide adequate tests of materials,
provide quality workmanship, and do such other things as are reasonably required
to assure high quality production of such Licensee Products. In this regard, and
without limiting the applicability of the general indemnification provisions
applicable to the representations, warranties and covenants made by the parties
to this Agreement as provided in Article X of this Agreement, Licensee hereby
covenants and agrees to indemnify, defend and hold harmless Licensor and
Licensor's directors, officers, employees and agents from and against all
claims, actions or causes of action (whether sounding in contract, negligence or
strict liability), suits and proceedings ("Claim") and all loss, assessments,
liability, damages, and expenses incurred in connection therewith (including
reasonable attorneys' fees) ("Loss") for which Licensor or its directors,
officers, employees or agents may become liable or incur with respect to any
product liability claim asserted against Licensee, its Affiliates, Third Parties
or Licensor relating to the manufacturing, marketing, storage,
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 15 -
<PAGE> 16
packaging, distribution, sale or use of the Licensee Product, unless such Claim
or Loss results from (i) a defect in the Martek Products purchased by Licensee
from Licensor under the Supply Agreement (excluding the determination of a
defect in the safety and utility of the Martek Product relating to its use in a
Licensee Product); (ii) the failure of Licensor to manufacture the Martek
Products purchased by Licensee from Licensor in accordance with specifications
mutually agreed to by Licensor and Licensee in the Supply Agreement; (iii) any
negligence or intentional wrongdoing of Licensor; or (iv) the breach by Licensor
of this Agreement or the Supply Agreement.
Section 6.3. Licensee's Records. Licensee covenants and agrees that
Licensee will keep true and accurate records adequate to permit Royalties due to
Licensor to be computed and verified pursuant to this Section 6.3, which records
shall be made available upon prior written request by Licensor, during business
hours, for inspection by an independent accountant who is not the auditor of
record for Licensor and who is reasonably acceptable to Licensee and who shall
be bound by a confidentiality agreement with the Licensee, to the extent
necessary for the determination of the accuracy of the reports made hereunder.
For the purposes of this Section 6.3, any of the five largest accounting firms
in the United States (as of the date of the audit) shall be deemed acceptable to
Licensee, provided that the firm selected by Licensor is not Licensor's auditor
of record. The accountant shall provide Licensor with a report containing his/
her conclusions, but not the inspected records nor the information contained
therein, and shall concurrently provide Licensee with such report. Each such
inspection shall cover no more than the * calendar years prior to the date of
the request for inspection, and Licensor shall be entitled to no more than *
such inspection per calendar year, provided that, if an inspection reveals an
underpayment by Licensee of * or greater, then the accountant shall also be
permitted to inspect such records covering a * calendar year period preceding
the * year period of such inspection. Licensor shall bear the full cost of such
inspection unless an underpayment by Licensee of * or greater of Royalties due
hereunder is discovered by the accountant, in which case Licensee shall bear the
full cost of the inspection.
Section 6.4. Protection of Licensor's Proprietary Interest. Licensee
acknowledges and agrees that the Licensed Patents and the Martek Products are
proprietary to Licensor, and Licensee hereby covenants and agrees that (i)
Licensee and its Affiliates shall not use the Technology or the Martek Products
for any purpose not provided for hereunder, and (ii) shall not challenge or
cause any Affiliate or Third Party to challenge Licensor's rights to the
Technology, the
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 16 -
<PAGE> 17
Licensed Patents or the Martek Products. The provisions of this Section 6.4
shall survive the termination (but not the expiration) of this Agreement.
Notwithstanding the foregoing provisions in this Section 6.4, Licensee's
obligations as set forth in Section 6.4(ii) above shall not apply, and shall not
survive the termination of this Agreement, in any country of the Territory in
which such obligations are not enforceable in accordance with applicable law or
regulation.
Section 6.5 Product Use. Licensor covenants and agrees that it and its
Affiliates shall, throughout the term of this Agreement, use their diligent
efforts to use the Martek Products and/or the Technology with respect to the
Licensee Product in a way which is consistent with Licensee's nutritional
objectives in producing Infant Formula Products.
ARTICLE VII
PATENT PROSECUTION AND ENFORCEMENT
Section 7.1. Patent Applications. The responsibility for the prosecution
of, and the exclusive right to apply for, prosecute, maintain and enforce the
Licensed Patents shall be and remain with Licensor except as provided below.
Licensor shall exercise all reasonable efforts in this regard. Licensor shall
keep Licensee informed of the course of such patent prosecution.
Section 7.2. Infringement Notice. Licensee shall notify Licensor
promptly in writing of any infringement of any issued Licensed Patent or other
interference with Licensor's proprietary interests relating to the Technology or
the Martek Products which becomes known to Licensee. If Licensor determines that
a material infringement exists, Licensor shall communicate such determination to
Licensee in writing and take prompt action to attempt to eliminate that
infringement.
Section 7.3. Infringement Actions. If Licensor receives Licensee's
infringement notice under Section 7.2 of this Agreement and within a reasonable
time thereafter Licensor is unsuccessful in eliminating the infringement,
Licensor shall have the first right to bring, at its own expense, an
infringement action against any Third Party within a reasonable time *. If
Licensor waives its right to bring such an infringement action in writing to
Licensee or has not eliminated such infringement or initiated an infringement
suit * Licensee, after notifying Licensor in writing, shall be entitled to
bring such infringement action at its own expense. The party not bringing such
infringement action shall provide assistance, at the
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 17 -
<PAGE> 18
requesting party's expense, as may be reasonably requested by the party
bringing such action, including without limitation joining an infringement suit
as a party. * provided, however, that for purposes of Section * of this
Agreement, after Licensee has * and * (including but not limited to *) of such
infringement action, any remaining * attributable to the * of the Licensee
Product shall be considered * by Licensee or an Affiliate from the sale for
value of the Licensee Product in the period(s) to which such * relate, and *
thereon shall be deemed * by Licensee to Licensor hereunder if * Licensor
within sixty (60) days of the date on which such * are received by Licensee,
and, in the *, Licensee shall reasonably and in good faith determine the * that
represents * of the Licensee Product and such portion shall be treated as if
such portion were * attributable to * of the Licensee Product. The party
conducting such action shall have full control over its conduct, including
settlement thereof, provided that no offer of settlement, settlement or
compromise shall be binding on a party without its prior written consent (which
consent shall not be unreasonably withheld) unless such settlement fully
releases such party without any liability, loss, cost or obligation to such
party.
Section 7.4. Defense of Infringement Actions. Licensor and Licensee
hereby acknowledge and agree that each party shall be responsible for defending,
at its own expense, any infringement action brought against such party by any
Third Party, and Licensor and Licensee agree reasonably to cooperate with the
other in any such defense and in responding to any threatened infringement
action, and to provide assistance, at its own (respective) expense, as may be
reasonably requested by the defending party. In the event that Licensee is
required to defend any infringement action relating to the Technology or the
Martek Products, the Royalty owed to Licensor shall be reduced by the amount
of costs and expenses reasonably and in good faith incurred by Licensee in
defending such action. In the event that Licensee becomes obligated to pay any
amounts to any Third Party in connection with such infringement claim or
action, whether in the form of damages, royalties, other otherwise, the Royalty
owed to Licensor shall be reduced by such amounts.
ARTICLE VIII
ASSIGNMENT
Section 8.1. Assignment. This Agreement and the rights granted hereunder
shall not be assignable, in whole or in part, by either party, nor shall its
obligations hereunder be delegated, without the prior written consent of the
other party, which shall not be unreasonably withheld; provided, however, that
this prohibition against assignment shall not apply to: (i) an assignment to an
Affiliate of Licensee, (ii) an assignment in connection with the transfer of a
substantial portion of either party's business or its merger or consolidation
with another company if such party promptly notifies the other party of any such
assignment,
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 18 -
<PAGE> 19
merger or consolidation; or (iii) an assignment by Licensor of its rights, but
not its obligations under this Agreement, to a Third Party *
ARTICLE IX
PARTIES' RELATIONSHIP
Section 9.1. Relationship between Parties. Neither party to this
Agreement shall have the power to bind the other by any guarantee or
representation that either party may give, or in any other respect whatsoever,
or to incur any debts or liabilities in the name of or on behalf of the other
party, and for purposes of this Agreement, the parties hereto hereby acknowledge
and agree that they shall not be deemed partners, joint venturers, or to have
created the relationship of agency or of employer and employee between the
parties.
ARTICLE X
INDEMNITY
Section 10.1. Indemnity by Licensee. Licensee shall indemnify, defend
and hold harmless Licensor and Licensor's directors, officers, employees and
agents from and against all Claims and all Loss for which Licensor or its
directors, officers, employees or agents may become liable or incur or be
compelled to pay and resulting from of a breach of any of the Licensee's
covenants, representations and warranties or other material terms and conditions
contained herein, unless such Claim and/ or Loss results from: (i) a defect in
the Martek Products purchased by Licensee from Licensor under the Supply
Agreement (excluding the determination of a defect in the safety and utility of
the Martek Product relating to its use in a Licensee Product); (ii) the failure
of Licensor to manufacture the Martek Products purchased by Licensee from
Licensor in accordance with specifications mutually agreed to by Licensor and
Licensee in the Supply Agreement; (iii) any negligence or intentional wrongdoing
of Licensor; or (iv) the breach by Licensor of this Agreement or the Supply
Agreement.
Section 10.2 Indemnity by Licensor. Licensor shall indemnify, defend and
hold harmless Licensee, its Affiliates, and Licensee's and its Affiliates'
directors, officers, employees and agents from and against all Claims and all
Loss for which Licensee, its Affiliates or the directors, officers, employees or
agents of either of them may become liable or incur or be compelled to pay and
resulting from: (i) a
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 19 -
<PAGE> 20
defect in the Martek Products purchased by Licensee from Licensor under the
Supply Agreement (excluding the determination of a defect in the safety and
utility of the Martek Product relating to its use in a Licensee Product); (ii)
the failure of Licensor to manufacture the Martek Products purchased by Licensee
from Licensor in accordance with specifications mutually agreed to by Licensor
and Licensee in the Supply Agreement; (iii) any negligence or intentional
wrongdoing of Licensor; and (iv) the breach by Licensor of this Agreement or the
Supply Agreement, unless any of the foregoing Claims and/ or Loss results from
of a breach of any of the Licensee's covenants, representations and warranties
or other material terms and conditions contained herein.
Section 10.3 Condition to Indemnification. If either party expects to
seek indemnification under this Article X, it shall promptly give notice to the
indemnifying party of the basis for such claim of indemnification. If
indemnification is sought as a result of any third party claim or suit, such
notice to the indemnifying party shall be within fifteen (15) days after receipt
by the other party of such claim or suit (if to Abbott, notice to Abbott
Laboratories, Risk Management, D-317, 100 Abbott Park Road, Abbott Park, IL
60064-3500, with copy to the Abbott persons identified in Section 12.5 below; if
to Licensor, notice as set forth in Section 12.5 below); provided, however, that
the failure to give notice within such time period shall not relieve the
indemnifying party of its obligation to indemnify unless it shall be materially
prejudiced by the failure. Each party shall fully cooperate with the other party
in the defense of all such claims or suits. No offer of settlement, settlement
or compromise shall be binding on a party hereto without its prior written
consent (which consent shall not be unreasonably withheld) unless such
settlement fully releases such party without any liability, loss, cost or
obligation to such party.
Section 10.4 Survival of Indemnity Obligation. The indemnification
obligations provided in this Agreement, including that provided in this Article
and in Section 6.2 of this Agreement, shall survive the expiration or
termination of this Agreement, whether occasioned by the Agreement's expiration
pursuant to Section 3.1 of this Agreement or earlier termination pursuant to
the other Sections of Article III of this Agreement, for the longer of: (i) a
period of five (5) years from the date of such expiration or termination, and
(ii) a period of five (5) years from the date upon which Licensee ceases to
sell Licensee Product.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 20 -
<PAGE> 21
ARTICLE XI
CONFIDENTIALITY
Section 11.1. Disclosure of Information. All the Technology and all
other information exchanged by the parties pursuant to, and in execution of
their obligations and in exercise of their rights under, this Agreement shall be
deemed confidential. Licensor and Licensee acknowledge and agree that the value
of the Technology, the Martek Products, and the Licensee Products is based, to a
large extent, on maintaining the confidentiality of the Technology, the Martek
Products and the Licensee Products and preventing any unauthorized dissemination
to or use by Third Parties of information relating to the Technology or the
Martek Products. Disclosure of confidential and proprietary information
hereunder, whether orally or in written form, shall be safeguarded by the
recipient and shall not be disclosed to Third Parties and shall be made
available only to the receiving party's employees or other agents who have a
need to know such information for purposes of performing the party's
obligations, or for purposes of exercising the party's rights, under this
Agreement and such employees or other agents shall have a legal obligation to
the employer or principal, as applicable, not to disclose such information to
Third Parties. Each party shall treat any and all such confidential information
in the same manner and with the same protection as such party maintains its own
confidential information. These mutual obligations of confidentiality shall not
apply to any information to the extent that such information: (i) is or later
becomes generally available to the public, such as by publication or otherwise,
through no fault of the receiving party; (ii) is obtained from a Third Party
having the legal right to make such a disclosure; or (iii) is independently
developed by a party without access to the confidential information. Licensor,
Licensee or Licensee's Affiliates shall not remove from any communications or
other documents delivered by a disclosing party any proprietary notices affixed
thereto by the disclosing party.
Without the prior written approval of the other party hereto, Licensor
and Licensee shall not be permitted to disclose (including but not limited to
disclosure in response to questions), announce, or issue a press release
concerning the fact, the nature and the terms of this Agreement and the
transactions to be performed pursuant hereto to any Third Person; provided,
however, that (i) Licensor and Licensee may disclose any otherwise confidential
or proprietary information as and to the extent required by applicable law or
government agency, including, but not limited to, any applicable disclosure
requirements under the federal securities laws or regulations thereunder,
provided that the disclosing party gives no less than five
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 21 -
<PAGE> 22
(5) business days prior written notice to the other party and gives the other
party such assistance as the other party may reasonably request, in accordance
with applicable law, in order to prevent, challenge, modify or protect such
disclosure ; (ii) Licensor and Licensee may disclose the fact and the terms of
this Agreement to its attorneys and accountants; and (iii) promptly after the
date of this Agreement, Licensor and Licensee shall agree in writing upon, and
issue together, a joint press release.
Section 11.2. Post-Termination Obligations. * Licensee promptly shall
return to Licensor all the Technology, Martek Product samples, documents,
records, and all other property or documentation disclosed or delivered to
Licensee or its Affiliates pursuant to this Agreement and then in existence,
subject to the retention by Licensee of one (1) copy thereof for archival
purposes.
ARTICLE XII
MISCELLANEOUS
Section 12.1. Dispute Resolution. Licensor and Licensee covenant and
agree to use their diligent efforts to resolve any disputes that arise between
them in the future and are related to this Agreement through negotiation and
mutual agreement and, if good faith efforts to so negotiate and mutually agree
are unavailing, through binding ADR under the procedures set forth in Exhibit 3
attached to this Agreement. The results of such ADR shall be final and binding
on the parties and enforceable in any court of competent jurisdiction.
Section 12.2 Information Exchange. During the term of this agreement,
the parties shall promptly notify each other of any report of an adverse event
associated with the use of a Martek Product in any infant formula product.
Licensee shall have sole discretion in determining what action, if any, is to be
taken in connection with any such adverse event report relating to an Infant
Formula Product.
Section 12.3. Force Majeure. Neither party to this Agreement shall be
liable for damages due to delay or failure to perform any obligation under this
Agreement if such delay or failure results directly or indirectly from
circumstances beyond the control of such party. Such circumstances shall
include, but shall not be limited to, acts of God, acts of war, civil
commotions, riots, strikes, lockouts, acts of the government in either its
sovereign or contractual capacity, perturbation in telecommunications
transmissions, inability to obtain suitable equipment or
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 22 -
<PAGE> 23
components, accident, fire, water damages, flood, earthquake, or other natural
catastrophes.
Section 12.4. Construction of Agreement. This Agreement shall be
construed and the respective rights of the parties shall be determined under and
pursuant to the laws of the State of Delaware, without regard to the principles
of conflict of laws thereof. The parties expressly exclude the applicability of
the Convention on Contracts for the International Sale of Goods.
Section 12.5. Notices. Notices required under this Agreement shall be in
writing and sent by registered mail, by facsimile transmission, by nationally
recognized overnight courier service, or by hand delivery, with written
verification of receipt and date of receipt, to the respective parties at the
following addresses:
Notices to Licensor:
Martek Biosciences Corporation
6480 Dobbin Road
Columbia, Maryland 21045
Facsimile: (410) 740-2985
Attn: General Counsel
Notices to Licensee:
Ross Products Division
625 Cleveland Ave.
Columbus, OH 43215
Attn: Vice President, Business Development
and Strategic Planning
Facsimile: (614) 624-7030
With a copy to:
Senior Counsel
Ross Products Division
[same address]
Facsimile: (614) 624-3074
Abbott Laboratories
200 Abbott Park Road
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 23 -
<PAGE> 24
Abbott Park, IL 60064
Attn: President, Abbott International Division
Facsimile: (847) 935-3260
With a copy to:
Vice President, International Legal Operations
Abbott Laboratories
[same address]
Facsimile: (847) 938-1342
or to such other address as either party may designate by a notice given in
compliance with this paragraph, and shall be deemed effective when received.
Section 12.6. Entire Agreement. This Agreement, including the Exhibits
hereto, constitutes the entire agreement between the parties hereto and there
are no representations, warranties or covenants relative hereto, which shall
survive the execution of this Agreement unless fully set forth herein.
Section 12.7. Binding Effect. This Agreement shall be binding upon and
inure to the benefit of the parties hereto and their respective successors and
permitted assigns. No person, firm or corporation other than the parties hereto
and their successors and permitted assigns shall derive rights or benefits under
this Agreement.
Section 12.8. Counterparts. This Agreement may be executed in
counterparts.
Section 12.9. Severability. If any provision of this Agreement is
declared void or unenforceable by any relevant judicial or administrative
authority, such declaration shall not of itself nullify the remaining provisions
of this Agreement. Consequently, the parties shall meet to determine the effect
of any such declaration and any variations to this agreement which are mutually
desirable.
Section 12.10. Waiver. No waiver by either party of any breach of any of
the terms or conditions herein provided to be performed by the other party shall
be construed as a waiver of any subsequent breach, whether of the same or of any
other term or condition hereof.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 24 -
<PAGE> 25
Section 12.11 Headings. Section headings contained in this Agreement are
inserted for convenience of reference only, shall not be deemed to be a part of
this Agreement for any purpose, and shall not in any way define or affect the
meaning, construction or scope of any of the provisions hereof.
THEREFORE, the parties hereto have caused this Agreement to be duly
executed in their respective behalves as of the day and year first written
above.
MARTEK BIOSCIENCES CORPORATION
By:
-----------------------------------------
Print Name:
---------------------------------
Print Title:
--------------------------------
Date:
---------------------------------------
ABBOTT LABORATORIES
By:
-----------------------------------------
Print Name: Joy A. Amundson
Print Title: President, Ross Products Division
Date:
---------------------------------------
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 25 -
<PAGE> 26
EXHIBIT 1 - MARTEK PATENTS AND PATENT APPLICATIONS (4 PGS)
"ARACHIDONIC ACID AND METHODS FOR THE PRODUCTION AND USE THEREOF"
PATENTS GRANTED
<TABLE>
<CAPTION>
------------------- -------------------
COUNTRY PATENT NO.
------------------- -------------------
<S> <C>
Australia 661674
------------------- -------------------
French Africa 09909
------------------- -------------------
Indonesia ID 0000393
------------------- -------------------
Israel 100732
------------------- -------------------
New Zealand 241,358
------------------- -------------------
South Africa 92/0454
------------------- -------------------
Sri Lanka 10527
------------------ -------------------
Russia 2120998
------------------- -------------------
</TABLE>
*
PCT APPLICATION THAT HAS ENTERED NATIONAL PHASE
<TABLE>
<CAPTION>
--------------------- ------------------- ------------
SERIAL NO. PUBLICATION NO. PBL. DATE
--------------------- ------------------- ------------
<S> <C> <C>
PCT/US92/00517 WO 92/13086 8/6/92
--------------------- ------------------- ------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 26 -
<PAGE> 27
"ARACHIDONIC ACID AND METHODS FOR THE PRODUCTION AND USE THEREOF" (CIP)
PATENTS GRANTED
<TABLE>
<CAPTION>
------------------- -------------------
COUNTRY PATENT NO.
------------------- -------------------
<S> <C>
United States 5,658,767
------------------- -------------------
Singapore 42669
------------------- -------------------
</TABLE>
*
PCT APPLICATION THAT HAS ENTERED NATIONAL PHASE
<TABLE>
<CAPTION>
--------------------- ------------------ -------------
SERIAL NO. PUBLICATION NO. PBL. DATE
--------------------- ------------------ -------------
<S> <C> <C>
PCT/US96/00182 WO 96/21037 7/11/96
--------------------- ------------------ -------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 27 -
<PAGE> 28
"DOCOSAHEXAENOIC ACID, METHODS FOR ITS PRODUCTION AND COMPOUNDS CONTAINING THE
SAME"
PATENTS GRANTED
<TABLE>
<CAPTION>
------------------- -----------------
COUNTRY PATENT NO.
------------------- -----------------
<S> <C>
Australia 660,162
------------------- -----------------
Europe* 0515460
------------------- -----------------
Israel 97126
------------------- -----------------
Israel 111174
------------------- -----------------
Japan 2830951
------------------- -----------------
Philippines 31568
------------------- -----------------
United States 5,397,591
------------------- -----------------
United States 5,407,957
------------------- -----------------
United States 5,492,938
------------------- -----------------
United States 5,711,983
------------------- -----------------
</TABLE>
* Individual national applications based on this application were filed in
United Kingdom, Germany, France, Austria, Denmark, Greece, Luxembourg, Sweden,
Switzerland, Belgium, Italy, Netherlands, Spain, and Romania.
*
PCT APPLICATION THAT HAS ENTERED NATIONAL PHASE
<TABLE>
<CAPTION>
---------------------- ------------------ ------------
SERIAL NO. PUBLICATION NO. PBL. DATE
---------------------- ------------------ ------------
<S> <C> <C>
PCT/US91/00733 WO 91/11918 8/22/91
---------------------- ------------------ ------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 28 -
<PAGE> 29
"MICROBIAL OIL MIXTURES AND USES THEREOF"
PATENTS GRANTED
<TABLE>
<CAPTION>
------------------- -----------------
COUNTRY PATENT NO.
------------------- -----------------
<S> <C>
Australia 661,297
------------------- -----------------
Canada 2,101,274
------------------- -----------------
French Africa 10348
------------------- -----------------
Indonesia ID 0000174
------------------- -----------------
Israel 100733
------------------- -----------------
Israel 114253
------------------- -----------------
Japan 2731035
------------------- -----------------
Mexico 183638
------------------- -----------------
New Zealand 241,359
------------------- -----------------
Russia 2093996
------------------- -----------------
South Africa 92/0452
------------------- -----------------
Sri Lanka 10526
------------------- -----------------
United States 5,374,657
------------------- -----------------
United States 5,550,156
------------------- -----------------
</TABLE>
*
PCT APPLICATION THAT HAS ENTERED NATIONAL PHASE
<TABLE>
<CAPTION>
---------------------- ----------------- ------------
SERIAL NO. PUBLICATION NO. PBL. DATE
---------------------- ----------------- ------------
<S> <C> <C>
PCT/US92/00522 WO 92/12711 8/6/92
---------------------- ----------------- ------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 29 -
<PAGE> 30
EXHIBIT 2 (3 pp.)
TRADEMARKS
<TABLE>
<CAPTION>
--------------------- ------------------ ------------------ ------------------ ------------------
REGISTRATION
MARK COUNTRY CLASSES STATUS OR SERIAL NO.
--------------------- ------------------ ------------------ ------------------ ------------------
<S> <C> <C> <C> <C>
NEUROMINS United States 1,5,29 Reg. 12/8/98 2,209,435
--------------------- ------------------ ------------------ ------------------ ------------------
Argentina 1 Pending 2,216,944
--------------------- ------------------ ------------------ ------------------ ------------------
Argentina 5 Pending 2,216,945
--------------------- ------------------ ------------------ ------------------ ------------------
Argentina 29 Pending 2,216,946
--------------------- ------------------ ------------------ ------------------ ------------------
Brazil 1.90 Pending 821,683,080
--------------------- ------------------ ------------------ ------------------ ------------------
Brazil 5.50 Pending 821,683,098
--------------------- ------------------ ------------------ ------------------ ------------------
Brazil 29.40 Pending 821,683,101
--------------------- ------------------ ------------------ ------------------ ------------------
Canada N/A Reg. 3/26/99 510,042
--------------------- ------------------ ------------------ ------------------ ------------------
China 1 Reg. 8/14/99 1302546
--------------------- ------------------ ------------------ ------------------ ------------------
[in Chinese
characters] China 1 Reg. 8/14/99 1302547
--------------------- ------------------ ------------------ ------------------ ------------------
China 5 Reg. 8/14/99 1302800
--------------------- ------------------ ------------------ ------------------ ------------------
[in Chinese
characters] China 5 Reg. 7/28/99 1297757
--------------------- ------------------ ------------------ ------------------ ------------------
China 29 Reg. 7/14/99 1293972
--------------------- ------------------ ------------------ ------------------ ------------------
[in Chinese
characters] China 29 Reg. 7/14/99 1293973
--------------------- ------------------ ------------------ ------------------ ------------------
European
Community 1, 5, 30 Reg. 11/6/98 371,583
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 1 Pending 34764/1997
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 5 Pending 34765/1997
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 29 Reg. 1/14/99 4,229,698
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 30 Reg. 1/14/99 4,229,699
--------------------- ------------------ ------------------ ------------------ ------------------
Malaysia 1 Pending 99/03415
--------------------- ------------------ ------------------ ------------------ ------------------
Malaysia 5 Pending 99/03414
--------------------- ------------------ ------------------ ------------------ ------------------
Malaysia 29 Pending 99/03416
--------------------- ------------------ ------------------ ------------------ ------------------
Mexico 1 Reg. 7/30/97 554,719
--------------------- ------------------ ------------------ ------------------ ------------------
Mexico 5 Reg. 7/30/97 554.720
--------------------- ------------------ ------------------ ------------------ ------------------
Mexico 29 Reg. 7/30/97 554.721
--------------------- ------------------ ------------------ ------------------ ------------------
Mexico 30 Reg. 7/30/97 554.722
--------------------- ------------------ ------------------ ------------------ ------------------
Philippines 1, 5, 29 Pending 4-99-02756
--------------------- ------------------ ------------------ ------------------ ------------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 30 -
<PAGE> 31
<TABLE>
<S> <C> <C> <C> <C>
--------------------- ------------------ ------------------ ------------------ ------------------
Singapore 1 Pending 99/03166H
--------------------- ------------------ ------------------ ------------------ ------------------
Singapore 5 Pending 99/03167F
--------------------- ------------------ ------------------ ------------------ ------------------
Singapore 29 Pending 99/03168D
--------------------- ------------------ ------------------ ------------------ ------------------
South Korea 1, 5, 29 Pending 99-9995
--------------------- ------------------ ------------------ ------------------ ------------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 31 -
<PAGE> 32
<TABLE>
<CAPTION>
--------------------- ------------------ ------------------ ------------------ ------------------
REGISTRATION
MARK COUNTRY CLASSES STATUS OR SERIAL NO.
--------------------- ------------------ ------------------ ------------------ ------------------
<S> <C> <C> <C> <C>
NEUROMINS (cont'd) Taiwan 1 Pending 88-14203
--------------------- ------------------ ------------------ ------------------ ------------------
Taiwan 5 Pending 88-14212
--------------------- ------------------ ------------------ ------------------ ------------------
Taiwan 29 Pending 88-14211
--------------------- ------------------ ------------------ ------------------ ------------------
Venezuela 1 Pending 7566-1999
--------------------- ------------------ ------------------ ------------------ ------------------
Venezuela 5 Pending 7567-1999
--------------------- ------------------ ------------------ ------------------ ------------------
Venezuela 29 Pending 7568-1999
--------------------- ------------------ ------------------ ------------------ ------------------
ARASCO United States 1, 5 Reg. 5/23/95 1,894,738
--------------------- ------------------ ------------------ ------------------ ------------------
Benelux 1, 5 Reg. 9/22/94 558,581
--------------------- ------------------ ------------------ ------------------ ------------------
Canada N/A Reg. 4/22/97 475,074
--------------------- ------------------ ------------------ ------------------ ------------------
China 1 Reg. 2/28/97 952085
--------------------- ------------------ ------------------ ------------------ ------------------
China 5 Reg. 4/14/97 978613
--------------------- ------------------ ------------------ ------------------ ------------------
France 1, 5 Reg. 10/6/94 94/539.090
--------------------- ------------------ ------------------ ------------------ ------------------
France 5 Reg. 7/27/95 95/582.463
--------------------- ------------------ ------------------ ------------------ ------------------
Germany 1, 5 Reg. 6/22/95 2 908 191
--------------------- ------------------ ------------------ ------------------ ------------------
Germany 5 Reg. 10/20/97 395 30 455
--------------------- ------------------ ------------------ ------------------ ------------------
Israel 1 Reg. 7/1/96 94940
--------------------- ------------------ ------------------ ------------------ ------------------
Israel 5 Reg. 7.1.96 94941
--------------------- ------------------ ------------------ ------------------ ------------------
Italy 1, 5 Reg. 7/26/96 685002
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 5 Reg. 8/29/97 3343313
--------------------- ------------------ ------------------ ------------------ ------------------
[in Korean
characters South Korea 10 Reg. 9/27/97 3672277
--------------------- ------------------ ------------------ ------------------ ------------------
Spain 1 Reg. 5/5/95 1 923 229/2
--------------------- ------------------ ------------------ ------------------ ------------------
Spain 5 Reg. 5/5/95 1 923 231/4
--------------------- ------------------ ------------------ ------------------ ------------------
United Kingdom 1 Reg. 9/26/94 1,586,321
--------------------- ------------------ ------------------ ------------------ ------------------
United Kingdom 5 Reg. 9/26/94 1,586,322
--------------------- ------------------ ------------------ ------------------ ------------------
DHASCO United States 1 Reg. 5/23/95 1,894,739
--------------------- ------------------ ------------------ ------------------ ------------------
Benelux 1, 5 Reg. 9/22./94 558,580
--------------------- ------------------ ------------------ ------------------ ------------------
Canada N/A Reg. 4/23/97 475.803
--------------------- ------------------ ------------------ ------------------ ------------------
China 1 Reg. 2/28/97 952084
--------------------- ------------------ ------------------ ------------------ ------------------
China 5 Reg. 4/14/97 978614
--------------------- ------------------ ------------------ ------------------ ------------------
France 1, 5 Reg. 10/6/94 94/539.089
--------------------- ------------------ ------------------ ------------------ ------------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 32 -
<PAGE> 33
<TABLE>
<S> <C> <C> <C> <C>
France 5 Reg. 7/27/95 95/582.461
--------------------- ------------------ ------------------ ------------------ ------------------
Germany 5 Reg. 7/25/95 395 30 456
--------------------- ------------------ ------------------ ------------------ ------------------
Indonesia 1, 5 Reg. 5/19/95 367,623
--------------------- ------------------ ------------------ ------------------ ------------------
Israel 1 Reg. 7/1/96 94942
--------------------- ------------------ ------------------ ------------------ ------------------
Israel 5 Reg. 7/1/96 94943
--------------------- ------------------ ------------------ ------------------ ------------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 33 -
<PAGE> 34
<TABLE>
<CAPTION>
--------------------- ------------------ ------------------ ------------------ ------------------
REGISTRATION
MARK COUNTRY CLASSES STATUS OR SERIAL NO.
--------------------- ------------------ ------------------ ------------------ ------------------
<S> <C> <C> <C> <C>
DHASCO (cont'd) Italy 1, 5 Reg. 7/25/96 685003
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 1 Reg. 12/25/96 3236317
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 5 Reg. 8/29/97 3343314
--------------------- ------------------ ------------------ ------------------ ------------------
[in Korean
characters] South Korea 10 Reg. 4/23/96 337927
--------------------- ------------------ ------------------ ------------------ ------------------
United Kingdom 1 Reg. 9/26/94 1,586,323
--------------------- ------------------ ------------------ ------------------ ------------------
United Kingdom 5 Reg. 9/26/94 1,586,324
--------------------- ------------------ ------------------ ------------------ ------------------
FORMULAID United States 5 Reg. 12/21/93 1,812,662
--------------------- ------------------ ------------------ ------------------ ------------------
Benelux 5 Reg. 8/4/94 561,563
--------------------- ------------------ ------------------ ------------------ ------------------
Canada N/A Reg. 12/22/95 452,191
--------------------- ------------------ ------------------ ------------------ ------------------
China 5 Pending 950107524
--------------------- ------------------ ------------------ ------------------ ------------------
France 5 Reg. 8/22/94 94/533.500
--------------------- ------------------ ------------------ ------------------ ------------------
Germany 5 Reg. 5/15/95 2 096 416
--------------------- ------------------ ------------------ ------------------ ------------------
Indonesia 5 Reg. 5/19/95 371734
--------------------- ------------------ ------------------ ------------------ ------------------
Israel 5 Reg. 2/4/96 94166
--------------------- ------------------ ------------------ ------------------ ------------------
Italy 5 Reg. 7/25/96 684464
--------------------- ------------------ ------------------ ------------------ ------------------
Japan 5 Reg. 4/25/97 3294461
--------------------- ------------------ ------------------ ------------------ ------------------
[in Korean
characters] South Korea 10 Reg. 11/13/97 382069
--------------------- ------------------ ------------------ ------------------ ------------------
Spain 5 Reg. 10/5/95 1.918.547/2
--------------------- ------------------ ------------------ ------------------ ------------------
United Kingdom 5 Reg. 8/8/94 1581072
--------------------- ------------------ ------------------ ------------------ ------------------
</TABLE>
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 34 -
<PAGE> 35
EXHIBIT 3
Alternative Dispute Resolution
The parties recognize that bona fide disputes as to certain
matters may arise from time to time during the term of this
Agreement which relate to either party's rights and/or
obligations. To have such a dispute resolved by this Alternative
Dispute Resolution ("ADR") provision, a party first must send
written notice of the dispute to the other party for attempted
resolution by good faith negotiations between their respective
presidents (or their designees) of the affected subsidiaries,
divisions, or business units within twenty-eight (28) days after
such notice is received (all references to "days" in this ADR
provision are to calendar days).
If the matter has not been resolved within twenty-eight (28) days
of the notice of dispute, or if the parties fail to meet within
such twenty-eight (28) days, either party may initiate an ADR
proceeding as provided herein. The parties shall have the right
to be represented by counsel in such a proceeding.
1. To begin an ADR proceeding, a party shall provide written
notice to the other party of the issues to be resolved by ADR.
Within fourteen (14) days after its receipt of such notice, the
other party may, by written notice to the party initiating the
ADR, add additional issues to be resolved within the same ADR.
2. Within twenty-one (21) days following receipt of the original
ADR notice, the parties shall select a mutually acceptable
neutral to preside in the resolution of any disputes in this ADR
proceeding. If the parties are unable to agree on a mutually
acceptable neutral within such period, either party may request
the President of the CPR Institute for Dispute Resolution
("CPR"), 366 Madison Avenue, 14th Floor, New York, New York
10017, to select a neutral pursuant to the following procedures:
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 35 -
<PAGE> 36
(a) The CPR shall submit to the parties a list of not less
than five (5) candidates within fourteen (14) days after receipt
of the request, along with Curriculum Vitae for each candidate.
No candidate shall be an employee, director, or shareholder of
either party or any of their subsidiaries or affiliates.
(b) Such list shall include a statement of disclosure by
each candidate of any circumstances likely to affect his or her
impartiality.
(c) Each party shall number the candidates in order of
preference (with the number one (1) signifying the greatest
preference) and shall deliver the list to the CPR within seven
(7) days following receipt of the list of candidates. If a party
believes a conflict of interest exists regarding any of the
candidates, that party shall provide a written explanation of the
conflict to the CPR along with its list showing its order of
preference for the candidates. Any party failing to return a list
of preferences on time shall be deemed to have no order of
preference.
(d) If the parties collectively have identified fewer than three
(3) candidates deemed to have conflicts, the CPR immediately
shall designate as the neutral the candidate for whom the parties
collectively have indicated the greatest preference. If a tie
should result between two candidates, the CPR may designate
either candidate. If the parties collectively have identified
three (3) or more candidates deemed to have conflicts, the CPR
shall review the explanations regarding conflicts and, in its
sole discretion, may either (i) immediately designate as the
neutral the candidate for whom the parties collectively have
indicated the greatest preference, or (ii) issue a new list of
not less than five (5) candidates, in which case the procedures
set forth in subparagraphs 2(a) - 2(d) shall be repeated.
3. No earlier than twenty-eight (28) days or later than fifty-six
(56) days after selection, the neutral shall hold a hearing to
resolve each of the issues identified by the parties. The ADR
proceeding shall take place at a location agreed upon
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 36 -
<PAGE> 37
by the parties. If the parties cannot agree, the neutral shall
designate a location other than the principal place of business
of either party or any of their subsidiaries or affiliates.
4. At least seven (7) days prior to the hearing, each party
shall submit the following to the other party and the neutral:
(a) a copy of all exhibits on which such party intends
to rely in any oral or written presentation to the neutral;
(b) a list of any witnesses such party intends to call
at the hearing, and a short summary of the anticipated testimony
of each witness;
(c) a proposed ruling on each issue to be resolved,
together with a request for a specific damage award or other
remedy for each issue. The proposed rulings and remedies shall
not contain any recitation of the facts or any legal arguments
and shall not exceed one (1) page per issue.
(d) a brief in support of such party's proposed rulings
and remedies, provided that the brief shall not exceed twenty
(20) pages. This page limitation shall apply regardless of the
number of issues raised in the ADR proceeding.
Except as expressly set forth in subparagraphs 4(a) - 4(d), no
discovery shall be required or permitted by any means, including
depositions, interrogatories, requests for admissions, or
production of documents.
5. The hearing shall be conducted on two (2) consecutive days
and shall be governed by the following rules:
(a) Each party shall be entitled to five (5) hours of
hearing time to present its case. The neutral shall determine
whether each party has had the five (5) hours to which it is
entitled.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 37 -
<PAGE> 38
(b) Each party shall be entitled, but not required, to
make an opening statement, to present regular and rebuttal
testimony, documents or other evidence, to cross-examine
witnesses, and to make a closing argument. Cross-examination of
witnesses shall occur immediately after their direct testimony,
and cross-examination time shall be charged against the party
conducting the cross-examination.
(c) The party initiating the ADR shall begin the hearing
and, if it chooses to make an opening statement, shall address
not only issues it raised but also any issues raised by the
responding party. The responding party, if it chooses to make an
opening statement, also shall address all issues raised in the
ADR. Thereafter, the presentation of regular and rebuttal
testimony and documents, other evidence, and closing arguments
shall proceed in the same sequence.
(d) Except when testifying, witnesses shall be excluded
from the hearing until closing arguments.
(e) Settlement negotiations, including any statements made
therein, shall not be admissible under any circumstances.
Affidavits prepared for purposes of the ADR hearing also shall
not be admissible. As to all other matters, the neutral shall
have sole discretion regarding the admissibility of any evidence.
6. Within seven (7) days following completion of the hearing,
each party may submit to the other party and the neutral a
post-hearing brief in support of its proposed rulings and
remedies, provided that such brief shall not contain or discuss
any new evidence and shall not exceed ten (10) pages. This page
limitation shall apply regardless of the number of issues raised
in the ADR proceeding.
7. The neutral shall rule on each disputed issue within
fourteen (14) days following completion of the hearing. Such
ruling shall adopt in its entirety the proposed ruling and remedy
of one of the parties on each disputed issue but may adopt one
party's proposed rulings and remedies on some issues and the
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 38 -
<PAGE> 39
other party's proposed rulings and remedies on other issues. The
neutral shall not issue any written opinion or otherwise explain
the basis of the ruling.
8. The neutral shall be paid a reasonable fee plus expenses.
These fees and expenses, along with the reasonable legal fees and
expenses of the prevailing party (including all expert witness
fees and expenses), the fees and expenses of a court reporter,
and any expenses for a hearing room, shall be paid as follows:
(a) If the neutral rules in favor of one party on all
disputed issues in the ADR, the losing party shall pay 100% of
such fees and expenses.
(b) If the neutral rules in favor of one party on some
issues and the other party on other issues, the neutral shall
issue with the rulings a written determination as to how such
fees and expenses shall be allocated between the parties. The
neutral shall allocate fees and expenses in a way that bears a
reasonable relationship to the outcome of the ADR, with the party
prevailing on more issues, or on issues of greater value or
gravity, recovering a relatively larger share of its legal fees
and expenses.
9. The rulings of the neutral and the allocation of fees and
expenses shall be binding, non-reviewable, and non-appealable,
and may be entered as a final judgment in any court having
jurisdiction.
10. Except as provided in paragraph 9 or as required by law,
the existence of the dispute, any settlement negotiations, the
ADR hearing, any submissions (including exhibits, testimony,
proposed rulings, and briefs), and the rulings shall be deemed
Confidential Information. The neutral shall have the authority to
impose sanctions for unauthorized disclosure of Confidential
Information.
---------------
* The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
- 39 -
